Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent opinion from the Federal Circuit Court of Appeals, the Court reversed ruling from Judge Connolly of the District of Delaware in which he granted a motion for judgment on the pleadings that a remote user multi-factor authentication method patent was invalid as an abstract idea under Section 101/Alice. In a move that created some buzz in the patent community, and which was highlighted in Judge Reyna’s dissent, the Federal Circuit panel majority side-stepped Step 1 of the Alice test and focuses solely on Step 2 (whether the elements of the claim transform an otherwise abstract idea into a patent-eligible invention). Here, the panel majority found that it did, in part by noting that the patented method provided a technological improvement over conventional authentication methods, and that substantial portions of the representative claim were not shown by the District Court to be conventional. Thus, in a relatively rare occurrence, the Federal Circuit reversed a Section 101/Alice invalidation. The takeaway here is that folks should continue to seek patent protection for networking and software patents, and rigorously examine for accuracy everything the Patent Office or a judge may assert is “conventional.”

2. In another Section 101/Alice ruling by Judge Connolly of the District of Delaware, he granted a motion for summary judgment that patents related to methods of determining organ transplant rejection via DNA markers in the patient’s blood as opposed to biopsies were invalid under Section 101/Alice. This is a very challenging area of law for a number of reasons, as we previously blogged about. The question applied to medical diagnostic patents that present methods for detecting natural phenomena, is whether the methods themselves are innovative (as opposed to standard or conventional). As someone with a background in biomedical research, this is troubling. Just because the techniques used to perform a method are standard or conventional should not mean that what the method is used to accomplish should be found to be standard or conventional. There is still creative thinking and problem solving taking place in order to make the method reliable and useful. Rulings like this, and those on which it relied (e.g., Mayo v. Prometheus, Athena v. Mayo, Ariosa v. Sequenom), do not help the advancement of science and medicine, discourage significant R&D expenditures, and do not benefit mankind. The Supreme Court had a chance to step in and squash the Section 101/Alice invalidation of medical diagnostic patents in Ariosa v. Sequenom, but did not take up the case. It is time that the Supreme Court or Congress does something about this detrimental line of cases.

3. In an IP case involving NBA superstar Giannis Antetokounmpo, the Southern District of New York issued a ruling in connection with a default that Giannis be awarded his attorneys’ fees of about $10,000, and a permanent injunction preventing the defaulting defendants from dealing in any products bearing the GREEK FREAK trademark (or marks substantially similar thereto). Giannis’ nickname, because he is an amazing basketball player, is the GREEK FREAK. He registered that trademark, and a variant of it, GREEK FR34K. Giannis has also endorsed a Greek food and spice company. The defendants were alleged to have infringed on Giannis’ marks by offering a GREEK FREAK spice blend for sale, without authorization from Giannis. Giannis sued and the defendants defaulted. The Court awarded Giannis his attorneys’ fees and a permanent injunction recognizing his trademark rights in his nickname. The takeaway here is that athletes can and should be highly protective of their nicknames and related trademark rights. As Giannis did here, however, such rights need to be policed in order to be truly valuable.