Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. A recent opinion from the Federal Circuit Court of Appeals vacated a grant of summary judgment of non-infringement and reversed the denial of a motion for judgment on the pleadings based on Section 101/Alice. The plaintiff asserted a patent directed to an improved heart monitoring device that allowed for T wave signals from electrocardiograms to be filtered so that they would not be mistaken for R waves, which are often used to determine heart rate. If a human operator observed T waves of excessive height, a filtering process could be triggered to alter wave heights so as to minimize error with heart rate measurements. The district court denied a Section 101/Alice motion finding that the technology was tied to a machine, and thus, was not abstract. On appeal, the Federal Circuit noted that the patent was directed to data filtering and that there was no specific details about how to determine when to activate the T wave filter. The Federal Circuit, thus, invalidated the patent as being directed to an abstract idea under Section 101/Alice. The takeaway here is that, by now, practitioners should know that filtering data is likely patent ineligible, and that any steps of significance in a potentially abstract idea need to be spelled out with substantial detail. Even then, it may not save the claim. Nonetheless, Alice seems here to stay, and despite some loosening under former United States Patent and Trademark Office (USPTO) Director Iancu in connection with patent examination, the courts have not adopted the same standards, and are much more stringent on Section 101/Alice issues.
2. In a recent opinion from the Ninth Circuit Court of Appeals, the Court affirmed a grant of summary judgment in favor of the defendants on a trade secret misappropriation claim, finding that the plaintiff did not prove that the alleged conduct “caused any damages.” While a damages expert calculated the alleged damages, liability was assumed, and no evidence for causation was presented. The takeaway here is that in trade secret cases, a plaintiff needs to be able to establish causation, and the standard for showing that seems on the high side.
3. In a word of caution to trademark practitioners, the United States Patent and Trademark Office (USPTO) recently sanctioned two lawyers for their involvement in filing (or potentially filing in one instance) a series of fraudulent trademark applications on behalf of non-U.S. interests. One of the lawyers apparently filed thousands of fraudulent applications on behalf of a platform in India. The other apparently filed applications on behalf of an applicant in China without properly reviewing the applications. This is important because trademarks are a very important aspect of commerce, and when there are thousands of fraudulent, illegitimate marks being applied for, it potentially clogs things up not only in terms of speed, but name availability, for legitimate business endeavors. The bottom line is that whether an applicant is domestic or foreign, practitioners should have the applicant (not counsel) sign the declaration attesting to details about the mark, and make sure the specimens are real.