Weekly IP Takeaways

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

1. In a recent decision from the Trademark Trial and Appeal Board (TTAB), Spotify prevailed in its opposition to registration showing that the applied-for mark POTIFY (used in connection with location, review, and other information for medical marijuana dispensaries) would dilute the distinctiveness of the famous SPOTIFY mark. The takeaway here is that, as tempting as it may be, business owners should in many instances steer clear of using marks that are similar to famous marks, even if used in connection with different goods or services.

2. In a recent decision by Judge Albright in the Western District of Texas, the Court denied the prevailing plaintiff’s motion for attorneys’ fees following a successful jury trial. By and large, Judge Albright, writing like a person with substantial experience as a patent litigator, found the plaintiff’s arguments that the defendant’s substantive positions and litigation conduct warranted an exceptional case finding to be overblown. He found that the alleged discovery disputes were quite typical, that defendant’s non-infringement and invalidity positions to have some level of merit, and that vague assertions to the contrary by the moving party were inadequate. As such, Judge Albright said, “it is not unreasonable for NCR to defend itself in a Court based on its good-faith non-infringement and invalidity positions, instead of implementing a design-around.” One noteworthy aspect of the opinion is that the jury did find the defendant’s infringement to be willful, but Judge Albright cited established Federal Circuit case law that a finding of willfulness does not mandate a finding that a case is exceptional. The takeaway here is that while patent litigation is expensive, that does not require a fee motion to be brought by every prevailing party. The “exceptional” case standard for a fee award in patent (and trademark) cases is not an insignificant hurdle.

3. In a recent decision from Judge Albright of the Western District of Texas, the Court took the rare, if not previously unprecedented step, of granting summary judgment in favor of a defendant on a Section 101/Alice challenge to a patent, on the eve of trial. The asserted patent was directed to a method of predicting the intent of a visitor to a webpage; or, to put it another way, a method of providing content that a web user wants to see. On a summary judgment motion filed by Facebook, Judge Albright found that the asserted patent was directed to data collection and analysis, that the subject matter of the claims were abstract, that they provided a non-technical solution that was not unique to solving a problem on the internet, and that the patent was light on technical methods, but rather, was the proverbial black box of functionality. He said that, “the ‘300 patent claims simply recite ‘mere result[s]’ without reciting specific steps that accomplish the results. Judge Albright also found that under Step Two in the Alice analysis that the claims provided nothing more than standard, well-known, routine computer and network technology, and that there was no “something more” than the abstract idea. Summary judgment for Facebook was granted. The takeaway here is that patents claiming black boxes of functionality are likely to be invalidated under Section 101/Alice, which is a point having implications for patent prosecutors and litigators.