Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. Following up on Takeaway No. 3 from last week, after the Federal Circuit ordered Judge Albright of the Western District of Texas to rule on a motion to transfer, and with Judge Albright then denying the motion, the defendant again sought mandamus relief from the Federal Circuit seeking a transfer order based on alleged errors in Judge Albright’s transfer analysis. In response to the new petition, the Federal Circuit issued an order that Judge Albright did not abuse his discretion in denying the transfer motion, and that there were no other circumstances (e.g., first-to-file rule) that required overturning Judge Albright’s order. The takeaway here is to note that while the Federal Circuit rebuked Judge Albright for not ruling on the transfer motion in a timely manner, its rebuke did not color its assessment of the merits of the decision, which is reassuring and what lawyers and parties want to see from the courts.
2. In the context of a covered business method (CBM) patent review by the Patent Trial and Appeal Board’s decision, on appeal, the Federal Circuit recently issued an opinion finding that all claims directed to a consumer loyalty program in which the system secured a product selected by the consumer with loyalty points were invalid under Section 101/Alice. This was a fairly standard opinion in which the Court found that conventional computer components were simply programmed to do that which was a previous and longstanding practice in which a consumer would redeem points and order the product themselves, and that this was an “abstract idea” under Section 101. The takeaway here is that practitioners must be mindful of the unconventional technical components of inventions and include them in patent applications for software.
3. In a recent decision of the Trademark Trial and Appeal Board (TTAB), an opposition to a descriptive and geographically descriptive mark was sustained. What is noteworthy about the TTAB’s Final Decision is that it relied upon materials from the Wayback Machine to support the finding of descriptiveness of the mark. The TTAB determined that the Wayback Machine fell within the business records exception to the hearsay rule, and also that the Wayback Machine printouts were sufficiently authenticated by a declaration from the opposer. The takeaway here is that, properly authenticated, Wayback Machine records can be powerful evidence in TTAB or other proceedings.