Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. A recent decision from the Federal Circuit appears to have rightly invalidated a patent directed to technology to notify consumers when a delivery or pickup is ready, finding that the patent was invalid as an abstract idea under Section 101/Alice. The Federal Circuit noted that the patent claim at issue was abstract because “not only because it is a longstanding commercial practice, but also because it amounts to nothing more than gathering, storing, and transmitting information,” which has been determined to be an abstract idea in a number of previous cases. Slip Op. at 6-7. The patent owner argued that the fact that its patent sailed through the Patent Office, and was even, in a sense, re-approved by the Patent Office upon request by the patent owner, was irrelevant to the consideration of whether the patent claim was valid under Section 101. At least this panel of the Federal Circuit did not seem even remotely persuaded that the ease of examination in the Patent Office was a worthwhile consideration for Section 101 purposes. Overall, this case reaffirms that old processes that are more or less merely automated on a computer are not going to pass the Section 101 hurdle.
2. A recent opinion from the Eleventh Circuit Court of Appeals reversed a grant of summary judgment by the Southern District of Florida where the district court found that the registered mark ENGINEERED TAX SERVICES was not inherently distinctive, but rather, merely descriptive, and thus, not valid without a showing of secondary meaning. The Eleventh Circuit’s opinion goes through a common issue in trademark cases, which is whether a mark is suggestive (and thus, inherently distinctive) or merely descriptive. The line between the two is often blurry, and the Court addressed both the “imagination” test (whether some leap of logic or thought is needed to understand the nature of the mark holder’s services), and the “third party use” test (whether third parties need to use the mark in describing their services) in finding that the mark was inherently distinctive. Two items of note: (1) the USPTO found the mark inherently distinctive during the application process, and (2) the infringement concern arose out of a Google Ad Word campaign that wound up listing the plaintiff’s and defendant’s companies in adjacent search results with the same title. This should be a helpful case to further illuminate the suggestive/merely descriptive boundary.
3. In an Order from the Northern District of California awarding attorneys’ fees in a patent case, the Court simultaneously confirmed that fees were warranted because the plaintiff took contrary claim construction positions in the Patent Trial and Appeal Board (PTAB) and in the district court (i.e., a narrow construction to preserve validity in the PTAB, but a broader construction to support the infringement claims in the district court). The Court, while finding the case exceptional, said the fee claims of Apple and Cisco were too high, and referred the fee issue to a special master for handling, and included directions to the parties on the nature of the submissions needed to support the fee award. Apple received most of what it asked for following submission to the special master. Cisco, however, had its fees reduced by 50% because its submission did not conform to the Court’s instructions. The combined award was approximately $4.2 million. The takeaway here is – be careful about advocating contrary claim constructions in the PTAB relative to the district court.
