Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. Amazon, which recently acknowledged, in a public statement, that counterfeit products on its platform are a significant issue, has recently come out with a new tool for brand owners to combat counterfeits on Amazon. The tool is Project Zero. For now, this appears to be something akin to a pilot program, but the idea is to allow approved rights owners to directly remove counterfeits from Amazon. There is also an automated scan and removal feature to the program as well. The requirements for being invited to participate in the program are registered trademarks and an Amazon Brand Registry account. If fully implemented, this appears that it may provide a helpful new tool for rights owners in the battle against counterfeit products on Amazon.
2. There is a new sheriff in town in the Western District of Texas, Waco Division. Recently confirmed District Judge Alan Albright is an experienced patent litigator, a former Magistrate Judge, and is now the only District Judge in Waco. He has indicated that he welcomes patent cases, and he has issued a patent-specific “Order Governing Proceedings” document available here. The Order is very detailed in terms of patent case management and scheduling, and has the noteworthy detail that the Claim Construction is to take place prior to the opening of fact discovery. With the new venue rules for patent cases, there may not be a lot of cases that can properly be filed in the Western District of Texas; but, recent data suggests Judge Albright is already receiving a lot of takers on his invitation to file patent cases in his court.
3. A recent Federal Circuit opinion addressed whether claim language should be limited based on statements in the specification and file history that the defendant argued limited the scope of the invention, including statements distinguishing the invention in the asserted patents from the prior art. The Court found that the patentee did not act as its own lexicographer, nor did it clearly and unmistakably disavow claim scope. In so finding, the Court noted certain non-limiting statements in the specification including, “[o]ne technique,” “for example,” and “the present invention can be carried out,” as indicating that other possibilities for the claimed process may exist within the broader scope of the claims. Thus, even with a single embodiment in the disclosure, the claims would not be limited to that single embodiment. The author notes that while there may be some panel variation on this issue among Federal Circuit judges, the ruling generally suggests that claim interpretation, absent the patentee acting as its own lexicographer or clearly disavowing claim scope, will be rather broad.
