Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In a recent opinion from the Ninth Circuit Court of Appeals in a trademark infringement case, the Court reversed a district court order granting summary judgment in favor of Dropbox and against trademark owner Ironhawk in connection with the trademark SmartSync. Ironhawk trademarked SmartSync in 2007 in connection with certain data compression and transfer software. In 2017, Dropbox began offering a feature it called Smart Sync. Ironhawk sued, and the district court granted summary judgment that there was not a likelihood of confusion between the companies’ marks and respective uses of the marks. The Ninth Circuit reversed finding that the inquiry was too fact intensive for a grant of summary judgment, and noting that a likelihood of consumer confusion was possible under a reverse confusion theory. Reverse confusion is where the junior user is sufficiently dominant in the market that consumers actually believe the senior user is the infringer, or affiliated with the junior user. At any rate, the Ninth Circuit, in a 2-1 panel decision reversed the district court. The takeaways here are that summary judgment in trademark cases remains challenging, and if a smaller plaintiff is pursuing a larger defendant in a trademark case, a reverse confusion argument should at least be considered if the facts warrant.
2. In another recent opinion involving Dropbox as a party, the Federal Circuit Court of Appeals affirmed a grant of Dropbox’s motion to dismiss based on Section 101/Alice. The patent owner alleged Dropbox’s infringement of its patent that backed up data from the “cloud” essentially to a local computer. The District of Delaware granted Dropbox’s motion to dismiss where the patent was directed to ineligible subject matter. The Federal Circuit affirmed finding that the system of data storage and transmission was an abstract idea and not done in a way that was anything other than routine via the use of generic computer technology. In response to the patent owner’s assertion that the “onsite backup of data” was eligible subject matter as a technological advance and not an abstract idea, the Federal Circuit noted that, “The specification does not, however, explain the technological processes underlying the purported technological improvement. Instead, as the district court correctly explained, the claims ‘rely on the ordinary computer storage and transmission capabilities of computers within a network and apply that ordinary functionality in the particular context of onsite backup.’” The takeaway here is that any purported technological advances or improvements in computer-related inventions should be clearly articulated in the specification, and included in at least some of the claims of the patent.
3. In a recent opinion from the Federal Circuit Court of Appeals, the Court reversed an obviousness determination of the Patent Trial and Appeal Board, finding that the prior art did not enable the invention under attack as obvious. The opinion notes that absent other evidence of enablement, each reference must enable that for which it is relied upon, and the prior art as a whole needs to enable a skilled artisan to make the claimed invention. The takeaway here is that even though the Federal Circuit reviewed a PTAB decision, litigants may be able to apply similar reason to district court obviousness determinations (i.e., are the references relied upon to show obviousness enabling of the invention under attack).