Weekly IP Takeaways

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

1. The Federal Circuit recently affirmed a grant of a motion to dismiss in which a software patent was invalidated as being directed to an abstract idea. The patent claims were directed to a method of using peer-to-peer networking to verify one’s employment history. Despite acknowledging that the patented methods provided improvements relative to the prior art or manual means of performing the method, the Court stated, “[t]he test for patent-eligible subject matter is not whether the claims are advantageous over the previous method. Even if the ’575 patent provides advantages over manual collection of data, the patent claims no technological improvement beyond the use of a generic computer network.” As previously discussed on this blog (Takeaway No. 2), the Federal Circuit’s approach to Section 101/Alice is different than that in the Patent Office. Thus, one may be able to secure a patent, but not be able to enforce it. A Biden Administration may revert to a system in which the Patent Office and the Federal Circuit are aligned. The takeaway here is to have one eye on the Federal Circuit standard when prosecuting software method patents through the Patent Office.

2. In a recent opinion from the Eleventh Circuit Court of Appeals, the Court reversed a grant of summary judgment on claims of product packaging trade dress infringement and trade dress dilution. The Eleventh Circuit ruled that the district court did not consider all available evidence on the likelihood of confusion factors on the trade dress claim. The Court also ruled that the district court’s analysis of the dilution claim was inadequate and may have been based on the wrong legal standard in which a likelihood of confusion was improperly required. The takeaway here is to make sure a district court considers all applicable evidence directed to a likelihood of confusion. While the analysis is flexible, the Court cannot ignore relevant evidence.

3. In another trade dress case, the Third Circuit Court of Appeals affirmed a summary judgment on a trade dress infringement claim where it agreed with the district court that the alleged trade dress was functional. This trade dress case was not based on product packaging trade dress, but product configuration trade dress. Specifically, the alleged trade dress was partially chocolate-covered “sticks” or elongated rods. The Court held that the product design was functional because the portion of the rod that was not covered in chocolate made the snack easier to hold. The design of the product also made it easier to eat without having to open one’s mouth very wide. The plaintiff also touted some of these elements, including a “no mess handle,” as well as other advertising taglines. The appeals court also found that the existence of alternative designs made the alleged trade dress no less functional. We are not sure we agree with this point. Nonetheless, the takeaway here is that it is demanding to bring product design trade dress claims, and one should have strong evidence of non-functionality (and secondary meaning) before bringing such claims.