On October 15, 2019, the Patent Trial and Appeal Board issued a Final Written Decision upholding all 19 remaining claims at issue as valid over 101 and 112 arguments in PGR2018-00061. The challenged patent, 9,700,793, “relates to a recording medium storing a game program, a game processing method, and an information processing apparatus.” The petition proposed three grounds of rejection (one under §101 and two under §112), and the Board upheld the patents validity against all three.

Maier & Maier successfully argued that the Petitioner’s claim construction improperly omitted aspects of the claims. This was crucial to the Board’s Alice analysis, where they were convinced the claims were directed towards patentable subject matter. Supercell’s proposed §112 rejections also failed because the Board found that Petitioner had not sufficiently established that one of ordinary skill in the art would not understand the claims in light of the specification under § 112(a), and because the claims were not lacking antecedent basis under § 112(b).

This proceeding was part of an ongoing arms race in the social gaming technology field. In total, Supercell Oy filed eighteen PTAB petitions against GREE’s portfolio. Supercell Oy tapped Fenwick & West to represent them, while GREE countered with Maier & Maier PLLC (4 proceedings), Ropes & Gray (4 proceedings), Kilpatrick Townsend & Stockton LLP (4 proceedings), Oliff PLC (3 proceedings), and Oblon McClelland Maier & Neustadt, LLP (1 proceeding).

Overall ten of the eighteen petitions were instituted, with Maier & Maier earning two of the non-institution decisions. With this victory, Maier & Maier successfully helped GREE defeat 75% of the petitions by Supercell, dwarfing usual outcomes in both institution rates (50% denied for GREE compared to the average of 26.8%) and full trial outcomes where up to 80% of claims are ultimately invalidated.

All the above statistics and information about the individual PTAB proceedings was obtained using the PostGrant Portal.

 

The 5G Standard Essential Patent (SEP) Declaration efforts are ongoing as companies around the globe are vying for position in the 5G IP game. The standard looks to define the patents necessary to implement 5G technology into the market to organize future licensing arrangements and portfolio evaluations. The declaration process is being overseen by 3GPP, a partnership of seven different telecommunications standard development organizations.[1]

The 5G SEP efforts focus on innovations lowering latency, increasing reliability, and providing efficient, low cost coverage to support baseband and radio technologies exceeding 6GHz. Previous connectivity in 4G technologies used sub-6GHz wavelengths, overlapped with existing radio access networks. The shift from 4G to 5G above that threshold requires a massive leap in performance and energy efficiency, and a heavy investment in infrastructure to support the new network.

The investments made in 5G center around enabling the necessary technology to advance beyond 4G and mobile devices and move to 5G which aims to integrate a wide variety of everyday items and the internet of things.[2] There are a significant number of subcategories/element technologies necessary to achieve this goal:

• • NOMA
  • Massive MIMO
  • Separation of C plane and U plane
  • URLCC implementation
  • Network slicing / NFV
  • 5G reference signal
  • Millimeter wave band
  • Signal waveform
  • Unlicensed band usage
  • Initial access
  • mMTC/IoT
  • D2D/V2X
  • Frame structure
  • Data flow aggregation for multiple connectivity
  • Flexible duplex

The 5G SEP Declaration process is likely to continue until the mid 2020’s, with over 300,000 declared patents thus far. [3] Of this pool, several companies have made substantial contributions to the total.[4] This includes major global companies like Huawei (17.1%), Ericsson (14.7%), Samsung (13.1%), Qualcomm (11.7%), and Nokia (10.2%), among others. How each continues to develop 5G SEP technology will play a significant part in their ability to leverage the 5G SEP landscape moving forward.

[1] https://www.3gpp.org/about-3gpp/partners

[2] https://www.cybersoken.com/file/5G-SEP-ENG.pdf

[3] https://www.lexology.com/library/detail.aspx?g=e1dc4072-1695-4279-b7fa-3fe3e19982b8

[4] https://www.twobirds.com/~/media/pdfs/news/articles/2019/determining-which-companies-are-leading-the-5g-race.pdf?la=en&hash=8ABA5A7173EEE8FFA612E070C0EA4B4F53CC50DE

On September 12, 2019, the Federal Circuit upheld the District Court of New Jersey’s finding that a design patent’s scope is limited by the language in its claims, rather than just its figures. The decision, in Curver Luxembourg, SARL v. Home Expressions Inc., heightens the importance of titles and claim language used when drafting design patents, rather than limiting the scope to solely the figures themselves. This holding should be carefully read by applicants and practitioners alike to inform their drafting and responses during examination.

In the case, Curver Luxembourg was attempting to assert a design patent, D677,946 against Home Expressions for the “Y” design pattern they used on baskets. The problem was that the design patent was entitled “Pattern for a Chair” and claimed “ornamental design for a pattern for a chair”. The District Court granted Home Expressions’ motion to dismiss under Rule 12(b)(6) for failure to state a claim.

On appeal for the dismissal, Curver Luxembourg argued that the figures showed only a pattern not the article it was on. They argued that because the pattern was all that was shown in the figures, it should not be limited in its application to solely chairs. This argument was not persuasive, especially considering the prosecution of the application.

Originally, the application was submitted with the title “FURNITURE (PART OF-)” and claimed a “design for a furniture part”. The examiner had objected to the title under the Patent Office’s Manual of Patent Examining Procedure (MPEP) § 1503(I) stating that design patents must designate a “particular article”. The examiner suggested the final title and claims, which the applicant accepted. This language was included by the District Court as part of the “Ordinary Observer” test for design patent infringement. Since the basket was not a chair, the District Court found no reasonably plausible infringement and dismissed the suit.

On appeal, the Federal Circuit explained that “Curver’s argument effectively collapses to a request for a patent on a surface ornamentation design per se.” Balking at the idea of doing so, the decision declines “to construe the scope of a design patent so broadly here merely because the referenced article of manufacture appears in the claim language, rather than the figures.”

Under the America Invents Act, one of the new programs put into effect in 2011 was the Prioritized Examination Track. This Pilot Program allowed applicants to petition for special status in examination, placing it on a separate special docket with a goal of 12 months to issue.

In order to qualify, the applicant must comply with certain requirements. Most notably, they must pay an additional fee ($4,000). Additionally, the program limits the number of claims in the application to a maximum of 4 independent claims and 30 claims total.

The USPTO is expanding this program based on its tremendous popularity and success, with more applicants petitioning each year. The current expansion comes at a time when the USPTO would likely have met the previous maximum of 10,000 grants well before the end of the calendar year.

The increase went into effect on September 3, 2019 and affords more applicants the opportunity to take advantage of this growingly popular program. For more information or to see if Track 1 status may be right for your application, reach out to us at our contact page.

The 16^th Annual Summit on Protecting Innovations in the Financial Services Industry took place July 24^th-25^th in New York City. Andrei Iancu, the Director of the USPTO, joined other notable members of the FinTech industry including Tariq Hafiz, Group Director of 3600 Tech Group at the USPTO, inhouse counsel for major industry members, and private practitioners. The discussion focused on developments in FinTech IP practice including updates on the Updates on IP Policy and Law at the USPTO and Prosecution Practice Tips.

IP Policy and Law

The main theme that Iancu emphasized was the importance of establishing a culture of innovation in the U.S. from early childhood straight through to the boardrooms across the country. Supporting this culture should be the primary purpose of patent law and policy, and in order to properly serve that role, there needs to be clarity and consistency in the field. This need is highlighted in the FinTech industry, where uncertainty in Subject Matter Eligibility led to a substantial dent in the consistent 6% annual growth the industry saw before the Alice decision in 2014.

Solutions to this issue may come from a variety of places. He cited the 2019 Guidance issued by the USPTO as one step forward, though it has not yet been endorsed in the Federal Circuit but emphasized that he was open to others as well. He specifically pointed to pending legislation in Congress which would adjust the statutory language to provide more consistent rulings on the issues but noted that those would not come until after the August recess at the earliest. In the meantime, practitioners must take ownership of their cases, and make sure that examiners are properly applying the USPTO guidance to applications.

Iancu also highlighted the steps being taken by the USPTO to provide greater consistency and reliability in trademarks along with patents. There have been fraudulent trademark filings at the USPTO (audits conducted have found fraud in 50% of the applications reviewed). Multiple initiatives have been taken to address this concern including both additional requirements for foreign filings and new technological applications to identify potential fraud.

Prosecution Practice Tips

After Final Consideration Pilot 2.0: For cases near allowance after final rejection, the USPTO introduced the AFCP 2.0 program for additional consideration time (3.0 hours for utility and plant applications, 1.0 hour for design applications). However, even after that additional allotment has been allowed, examiners may request additional time from their SPE in order to resolve the application. Practitioners should not be afraid to initiate this process and potentially gain an earlier allowance for their client.

Automated Interview Request: In order to expedite the examination process, the USPTO launched the Automated Interview Request (AIR) which allows for remote video interviews to be scheduled much more efficiently between examiners and practitioners.

Full First Action Interview Pilot Program: After filing applications, applicants can file for a first action interview. In the program, the examiner addresses the merits of the application before issuing an official first office action in an interview. This can be used to great effect for RCE applications, where the applicant may take advantage of discussing the merits to make any necessary amendments and achieve a condition of allowance for the application significantly faster than by waiting for standard examination.

101 Guidance: The USPTO issued guidance to examiners on how to handle 101 rejections in light of recent Federal Circuit decisions. Most notably in the guidance were 1). the requirement to properly cite assertions made in rejections and 2). the need to identify a specific category of abstract behavior for claims. If examiners fail to follow the guidance correctly, practitioners may request another non-final rejection to correct the errors made in guidance application.

New Informative decisions: Since passing the 2019 101 Guidance, the PTAB has designated five subsequent PTAB decisions as informative on its application. These 5 cases address how to properly analyze the subject matter of the claims in accordance with the guidance:

Ex parte Smith, 2018-000064 (Feb. 1, 2019)

Ex parte Olson, 2017-006489 (Mar. 25, 2019)

Ex parte Kimizuka, 2018-001081 (May 15, 2019)

Ex parte Savescu, 2018-003174 (Apr. 1, 2019)

Ex parte Fautz, 2019-000106 (May 15, 2019)

The Supreme Court has granted certiorari to two cases that could have significant impacts on trademark litigation. In Lucky Brands Dungarees, Inc., et al. v. Marcel Fashions, Inc., the Court will address whether new, un-litigated defenses in response to newly asserted claims are permissible with federal preclusion principles. Meanwhile, in Romag Fasteners, Inc. v. Fossil, Inc. et al., the Court hear arguments on whether willfulness is required for awarding infringing profits for false designation of origin of false descriptions.

Lucky Brands Dungarees, Inc. et al. v. Marcel Fashions, Inc.

For Lucky Brands, the dispute at issue arose when Marcel Fashion Group, Inc. (“Marcel”) sued Lucky Brand Dungarees, Inc. and affiliates (“Lucky Brand”) under the Lanham Act in 2011. Marcel alleged that Lucky Brand infringed their mark for “Get Lucky” with their use of the word “Lucky” on apparel, but the district court dismissed the claim as previously settled per a 2003 agreement. On appeal, the Federal Circuit ruled that the district court erred because Lucky Brand was precluded from bringing the defense.

After the settlement agreement in 2003, Marcel had brought another suit in 2005 for Lucky Brand’s use of “Get Lucky”. Lucky Brands asserted the settlement defense multiple times early on in the litigation, but failed to do so in its Motion for Summary Judgment or to the jury. The jury found for Marcel, which Lucky Brands did not appeal.

In 2011, Marcel then filed the present lawsuit, asserting their “Lucky” trademark. After initially winning with other defenses before it was remanded after appeal, Lucky Brands was dealt a second amended complaint by Marcel. In response, Lucky Brands asserted the affirmative 2003 settlement defense for the first time in this litigation. Marcel argued Lucky Brands’ argument was precluded res judicata due to the 2005 disposition. The judge ruled that issue preclusion did not apply because the issue was not actually litigated and resolve by the 2005 action. Similarly, the judge found that claim preclusion did not apply because Lucky Brand was not asserting a claim against Marcel.

On appeal, the Second Circuit reversed the district court ruling. The Second Circuit relied on the fact that Lucky Brands could have raised the defense in the 2005 lawsuit. This created a circuit split with the Eleventh and Ninth Circuits, which had ruled the opposite way in similar cases.

In its petition for certiorari, Lucky Brands argued that no Supreme court precedent allows for issue or claim preclusion for defenses which were not resolved in previous litigation, emphasizing the different cause of action as particularly noteworthy. Additionally, Lucky Brands points out that the inconsistency of relying on preclusion for purposes fairness and efficiency. To the efficiency argument, this precedent would require defendants to raise any and all defenses in every single lawsuit for fear of additional unrelated lawsuits that may overlap with a defense that could have been used in that case, resulting in more litigation. On the fairness angle, Lucky Brands argues that the ruling raises the requirements of defenses even higher than that of counterclaims, because counterclaims must only be brought when arising from the same transaction or occurrences of the initial claims, which is not the case here since the trademark being asserted is not the same one.

The Supreme Court ruling here will be of significant interest to both plaintiffs and defendants since it would have profound impact on the arguments being made, anticipated, and precluded in the course of litigation.

Romag Fasteners, Inc. v. Fossil, Inc. et al.

In Romag, Romag Fasteners, Inc. (“Romag”) sued Fossil, Inc. et al (“Fossil”) for both patent and trademark infringement in the District of Connecticut. The jury found that Fossil liable for both, but that the trademark infringement was merely “callous”, not “willful. Based on this finding, the district court ruled against awarding profits for the trademark infringement. After being appealed and remanded on grounds relating to the patent infringement award and a new relevant Supreme Court decision coming down, the case was again appealed to the Second Circuit to challenge the willfulness requirement.

Romag argued that the precedent relied upon for the decision, George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1540 (2d Cir. 1992), was no longer good law. They based this argument on the amendments to the Lanham Act that occurred in 1999, seven years after the relevant precedent.

The Federal Circuit found no reason to discuss what it viewed as settled law again, citing that “when a court decides upon a rule of law, that decision should continue to govern the same issues in subsequent stages in the same case” (citing to, among others, Arizona v. California, 460 U.S. 605, 618 (1983).

However, contrary to the assertion of it being settled law, the decision results in a 6-6 Circuit split. The Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits have no willfulness requirement for an award of profits, while the First, Second, Eighth, Ninth, Tenth and D.C. Circuits fall in line with the Federal Circuit ruling.

The highly divided circuit split and how the Supreme court resolves it, especially with its significant implications for damage awards, bare watching moving forward.

On July 3, 2019 the Federal Circuit issued its en banc decision in Athena Diagnostics, Inc. et al. v. Mayo Collaborative Services, LLC. The decision came down 7-5 against rehearing on the patent’s eligibility, with a staggering eight separate written opinions (four concurring and four dissenting). The common refrain amongst the opinions, concurrences and dissenting alike, was the need for intervention from the Supreme Court or Congress to address the current binding precedent from Mayo.

The petition arose from a District of Massachusetts case where Athena Diagnostics asserted claims relating the diagnosis of disorders relating to antibodies to a muscle-specific tyrosine kinase (MuSK) in U.S. Patent 7,267,820. Mayo challenged the eligibility of such claims, which was appealed to the Federal Circuit, where they were deemed ineligible by Judges Newman, Lourie, and Stoll. Athena and its co-petitioners petitioned for the case to be re-heard en banc, resulting in the 7-5 denial. Those in favor were Judges Lourie, Reyna, Chen, Prost, Taranto, Hughes, and Chen, while Judges Moore, O’Malley, Wallach, Stoll, and Newman opposed.

In the dissents, the judges emphasized that there was no disagreement in the deliberations as to whether the claims should be eligible. Judge Moore explains that “This is not a case in which the judges of this court disagree over whether diagnostic claims, like those at issue in Athena, should be eligible for patent protection. They should. None of my colleagues defend the conclusion that claims to diagnostic kits and diagnostic techniques, like those at issue, should be ineligible.” He goes on to lament the fact that since Mayo, the Federal Circuit has held every single diagnostic claim before it to be ineligible, and cites the many serious research subjects that are negatively impacted by such precedent including breast cancer, tuberculosis, down syndrome, and many more.

On the concurring side, Judge Hughes succinctly represented the court’s current and unfortunate position. Per his opinion, “[T]he bottom line for diagnostics patents is problematic. But this is not a problem that we can solve. As an inferior appellate court, we are bound by the Supreme Court. I, for one, would welcome further explication of eligibility standards in the area of diagnostics patents. Such standards could permit patenting of essential life saving inventions based on natural laws while providing a reasonable and measured way to differentiate between overly broad patents claiming natural laws and truly worthy specific applications. Such an explication might come from the Supreme Court. Or it might come from Congress, with its distinctive role in making the factual and policy determinations relevant to setting the proper balance of innovation incentives under patent law.”

The Federal Circuit’s emphatic cry for help gives greater importance to the current 101 reform initiatives in congress.