Fast food companies have been actively asserting their trademarks, recently highlighted by noteworthy activity by both McDonald’s and In-N-Out.

McDonald’s aggressive defense of its trademarks hit a snag recently as the EUIPO canceled their trademark for “Big Mac” for failing to provide sufficient evidence of use. In their argument, McDonald’s relied mainly on affidavits from employees, Wikipedia entries, and screenshots of posters and websites. In their ruling, the EUIPO pointed out that neither affidavits from employees nor Wikipedia entries are viewed as reliable evidence due to their biases and unreliability respectively. For screenshots, the EUIPO took issue with the limited geographic scope (only the UK, France, and Germany were represented) and the failure to show a way to purchase or provide any evidence of a purchase.

The loss came after McDonald’s attempted to assert the trademark against the Irish restaurant chain “Supermac’s” as they attempted to expand out of Ireland and into the EU. With the “Big Mac” trademark now nullified, Supermac’s is free to do so. They are not the only ones who can use the term “Big Mac” now, as its available to anyone within the EU. Burger has notably taken advantage of this, with certain locations replacing item names with variants of “Big Mac”, including “Like a Big Mac, But Actually Big”, “The Burger Big Mac Wished It Was”, and even “Kind of Like a Big Mac But Juicier and Tastier”. McDonald’s is still able to appeal the decision and will likely do so soon.

Meanwhile, In-N-Out filed a trademark infringement claim against Puma for two recently launched shoes. The subject sneakers are named the “Cali-O Drive Thru CC” and “California Drive-Thru”, are white with red and yellow accent and palm trees along the laces, and advertisements showed the shoes walking through hills of burgers. Neither shoe is still available on the Puma website. Unlike similar novelty shoes by Adidas (Game of Thrones) and Nike (NASA) made in respective partnerships, Puma and In-N-Out had made no agreement licensing the trade dress for the shoes.

On March 13, 2019, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, testified before the U.S. Senate’s Committee on the Judiciary’s subcommittee on Intellectual Property to discuss the USPTO and the current state of patent and trademark law in the United States. In their introductions, Chairman Thom Tillis and Ranking Member Chris Coons both lauded the work of Director Iancu, specifically citing the harmonization of PTAB claim construction with the ITC and District Court, the §101 patent subject matter eligibility guidance issued by the USPTO to improve reliability and predictability for inventors, and the 10 millionth issued patent celebration as noteworthy successes over the last year. Between Iancu’s opening statement and the ensuing discussions with the committee, the hearing highlighted several areas of improvement for Iancu and the legislature to focus on in the near future.

Modernization of the USPTO

One of the most involved discussions of the day was the modernization of the USPTO. Citing the continual game of catch-up in technology that the government faces, Iancu identified his goal of leapfrogging the current industry standards to help the USPTO keep pace as things continue to change. Specifically, Iancu aims to 1). Stabilize the infrastructure itself and 2). Implement new measures like Artificial Intelligence into the USPTO procedures.

Stabilizing the infrastructure has the dual goals of both reducing the likelihood of system shutdowns and increasing the speed of getting it back online. These are both vital as more of the submissions and communications rely on the electronic submission standards and as more examiners work remotely.

Regarding Artificial Intelligence, Iancu identified multiple uses for the USPTO to stay ahead of the standards. First, he cited the ability to use AI to clean up the Trademark Registry. Recent focus has been placed on foreign filings of trademark applications in bad faith with photoshopped use submissions. Iancu referenced new programming that could identify photoshopped applications and help flag them for review and reduce the clutter on the Registry. Additionally, Iancu referenced the potential use of AI to identify prior art during the patent prosecution process, to greatly reduce the burden on examiners to manually go through the related art.

In achieving these goals, Iancu referenced specific task forces for these projects, a new CIO specifically tasked with overseeing the infrastructure review and upgrade, and outside contractors assisting in all efforts.

Innovation Diversity

Spurred by a recently released USPTO analysis on female inventorship, Senator Mazie Hirono and Director Iancu discussed the issues of equal representation both in inventorship and at the USPTO itself. Citing the report’s findings, the two identified problematic statistics where only 21% of patents included at least one female inventor and only 12% of named inventors were female in 2016. Especially troubling, as noted by Director Iancu, is the fact that even when normalized for representation in the field, there is still a gap between industry representation and inventorship. These numbers are echoed in other underrepresented populations of minorities, while low income patent owners are especially exposed to serial PTAB petitions from patent trolls and deep pocket entities.

Director Iancu advocated for steps that would highlight the issue, promote national debate, and begin working on programming to bridge the gap. Noteworthy is that the most growth has occurred in isolated fields where female inventorship already existed, suggesting mentorship programs may be an effective piece of a potential solution to help guide female and minority inventors through the process. Senator Hirono referenced bills she has introduced to support minorities and women in STEM to curb the dropouts at each level of education, while Chairman Tillis emphasized the need to address the issue further while highlighting a “Women in IP” hearing this coming April.

Further Clarity On §101

Despite praising the USPTO Guidance on §101 subject matter eligibility, both Director Iancu and the committee highlighted the need for further work on the issue. While the guidance has been met with success at the USPTO in both examination and at the PTAB, uncertainty over how it will be met in the Federal Circuit could pose issues in the future.

Tillis and Coons identified forthcoming legislation as soon as this summer that may bring clarity to the issue, which Director Iancu appreciated, deferring decision making on whether codification of his decisions regarding §101, the Trial Guide, etc would be of benefit for the patent system as a whole.

All parties involved agreed that the chilling effect of uncertainty and unpredictability with respect to subject matter eligibility was a threat to the continued growth of the patent system, and in turn the economic growth and stability for the U.S. Coons was especially concerned about the area of medical diagnostics with respect to subject matter eligibility, while general agreement highlighted the impact on computer implemented devices as well.

Among the other topics discussed were the success of the TEAPP program and potential expansion for examiners in Hawaii and Alaska, protocol for Iancu to address ethical concerns as a political appointee, and the balance between fueling medicinal innovation and preventing astronomical drug pricing.

Two recent Supreme Court decisions may have far reaching consequences for those looking to assert (or avoid) copyright infringement claims.

Registration Requirement

On March 4, 2019, the Court ruled on Fourth Estate Public Benefit Corp. v. Wall-Street.com, where it held that Copyright Infringement was only available after a copyright is registered at the Copyright Office. In the case before the Court, Fourth Estate Public Benefit (FEPB) had licensed articles to Wall-Street.com (WS). After the license was cancelled, WS kept the articles on their website provoking the infringement claim. At the time of FEPB’s claim, they had already submitted the application for registration, but it had not been fulfilled by the Copyright Office yet.

The decision rested on 17 U.S.C. 411(a), which states that no action for civil infringement “shall be instituted until . . . registration of the copyright claim has been made.” Despite FEPB’s argument that application for the registration would satisfy the statute, the Court unanimously ruled that the text required completed registration. The Court did allow for certain preregistration filings for copyrights specifically vulnerable to pre-registration infringement like movies, live broadcasts, and musical compositions.

Limitations for Damages

Also on March 4, 2019, the Court handed down its decision on Rimini Street, Inc. v. Oracle USA, Inc., where it held that the $12.8 million in awarded damages for litigation expenses including expert witnesses, e-discovery, and jury consultants exceeded the statutory award. At issue here was the meaning of “full costs” available for copyright infringement under 17 U.S.C. 505. Despite the Ninth Circuit’s acknowledgment that e-discovery, expert witnesses, and jury consultants fell outside the bounds of the six categories of costs identified in 28 U.S.C. 1821 and 1920, they upheld the award as representative of “full costs”. The Court disagreed, ruling that the phrase “full costs” referred to the six categorical allowances under 1821 and 1920. In so doing, the Court removed the $12.8 million award for litigation costs, leaving Oracle with only the other $81.9 million for copyright infringement damages, attorney’s fees, and costs.

The Supreme Court has granted cert to Iancu in Iancu v. NantKwest, Inc. to resolve the question of whether all expenses incurred by the USPTO must be paid for by the applicant in a district court action under 35 U.S.C. 145 regardless of the outcome.

§145 allows for de novo review of an adverse PTAB decision in district court, instead of the direct appeal to the Federal Circuit under §141, but also states that “”[a]ll the expenses of the proceedings shall be paid by the applicant.” In this case, NantKwest’s patent application claims were rejected as obvious by the examiner at the PTO, which was upheld by the PTAB. NantKwest filed for review by the district court under §145. In a decision upheld by the Federal Circuit, the district court granted a motion for summary judgment for obviousness. Despite the USPTO’s custom of only requesting costs in both §145 and §141 appeals, the USPTO invoked the “all expenses” language to request both costs and attorney’s fees.

While NantKwest’s argument relies heavily on the “American System” and the 170 years of USPTO custom of not asking for attorney’s fees to inform the interpretation, the USPTO points to the Lanham Act and the historical meaning of expenses. Under the Lanham Act, a similar de novo review is available which also provides for “expenses” and was specifically and intentionally modeled after §145. In 2015, the 4^th Circuit ruled that the Lanham Act allowed for the recovery of attorney’s fees, creating a seeming circuit split on the issue.

After being denied attorney’s fees in the district court, the Federal circuit granted them on appeal, only to be followed by a sua sponte en banc review where the panel was overturned. This led to the now granted petition for certiorari to the Supreme Court. How this case is decided will likely impact the future choices for appellate review between §141 and §145 and bares watching as the case moves forward.

Earlier this month, Dex Media (the remaining appellee) filed a Petition for Writ of Certiorari over the Federal Circuit’s application of the one-year time-bar in Oracle Corp. v. Click-to-Call Technologies LP. According to the Federal Circuit, the one-year limit to file an IPR after being served with a complaint under 315(b) of the America Invents Act still applies even if the complaint has been voluntarily dismissed without prejudice.

While the Supreme Court mulls over a potential appeal, the decision is facing additional attacks from below. Despite the Federal Circuit’s explanation that “[s]imply put, § 315(b)’s time bar is implicated once a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events,” the PTAB has interpreted the holding in a much more limited manner.[1] In IPR2018-01331, a challenge to Realtime Adaptive Streaming, LLC’s patent by Sling TV L.L.C. and Dish Network L.L.C., the PTAB granted institution despite the patent having been asserted against the petitioner over 12 months before the petition’s filing date.

In March 2017, Realtime Data LLC assigned the subject patent to Realtime Adaptive Streaming, LLC. Then, on June 6, 2017, Realtime Data LLC filed a complaint asserting the subject patent against Petitioner. Because Realtime Data was not the current patent owner, they opted to voluntarily dismiss the complaint. The patent was then asserted by Realtime Adaptive Streaming, LLC against Petitioner in October of 2017.

According to the PTAB, the complaint served to Petitioner in June 2017 is insufficient notice to trigger the § 315(b) time-bar because the complaint was filed without standing. Per the decision “Section 315(b) specifies that the time bar is triggered when ‘the petitioner is served with a complaint alleging infringement of the patent.’ Although the statute’s text is not explicit as to who must file and serve the complaint, § 315(b) is titled ‘Patent Owner’s Action,’ thus suggesting that only service of a patent owner’s complaint triggers the one-year time bar.”[2]

[1] Oracle Corp. v. Click-to-Call Technologies LP, Slip Op at 13 (CAFC Aug. 16, 2018).

[2] Sling TV, L.L.C. et al v. Realtime Adaptive Streaming, LLC, IPR2018-01331 Paper 9 at 7 (PTAB January 31, 2019).

On Tuesday, January 22, 2019, the Supreme Court upheld the Federal Circuit’s ruling in Helsinn Healthcare v. Teva Pharmaceuticals and confirmed that Congress did not change the meaning of the term “On-Sale” when it passed the AIA in 2012. For a full description of the case’s disposition, see our previous update on the oral argument held at the end of 2018.

In the decision, the Supreme court noted that “On-Sale” had a well-established meaning before the AIA was passed that included confidential sales and that Helsinn was not challenging that pre-AIA interpretation. Instead, the Court explained that the argument Helsinn was advancing was that the addition of “or otherwise available to the public” to § 102 changed the meaning of the term “On-Sale” to require public availability.

The Court disagreed, explaining that “The addition of ‘or otherwise available to the public’ is simply not enough of a change for us to conclude that Congress intended to alter the meaning of the reenacted term ‘on sale.’… Given that the phrase “on sale” had acquired a well-settled meaning when the AIA was enacted, we decline to read the addition of a broad catchall phrase to upset that body of precedent.”[1]

In keeping the meaning the same as under pre-AIA precedent, the Court held that “Because we determine that Congress did not alter the meaning of “on sale” when it enacted the AIA, we hold that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under §102(a).”[2]

[1] Helsinn Healthcare v. Teva Pharmaceuticals USA, Inc., Slip Opinion at 8 (2019).

[2] Helsinn Healthcare v. Teva Pharmaceuticals USA, Inc., Slip Opinion at 9 (2019).

As Director Iancu promised in his recent address,  the USPTO has issued revised guidance on the evaluation of eligibility. Specifically, the guidance sheds light on how the USPTO will address §101 abstract analysis and §112 in relation to computer implemented inventions. This memo is part of Iancu’s long-stated mission of bringing greater clarity and predictability on Alice/Mayo interpretations for inventors. Per the official press release, the releases aim to ensure “consistent, predictable, and correct application of these principles”.

For §101, the guidance provides two key changes: identifying specific categories of concepts defined as abstract and providing a two-step analysis for how to deal with such concepts when determining eligibility under §101.

By listing out the specifically identified concepts defined as abstract, the USPTO hopes to bring more structure to §101 objections and force analysis to specifically identify the category and caselaw behind the objection. The concepts the guidance lists as abstract from court decisions are as follows: mathematical concepts, certain methods of organizing human activity, and mental processes.

The two-step analysis is also aimed at reigning in objections to any subject matter relating to one of those concepts. The first step prescribed by the guidance is whether the claim recites one of the identified judicial exceptions. If so, the next step is to identify whether the recitation of the abstract judicial exception is integrated as part of a practical application. If the claim recites a judicial exception with no practical application, only then should the claim be analyzed further under Step 2 of the Alice/Mayo test.

With respect to §112, the revision hones in on computer-implemented inventions to provide guidance on “proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a).”

Both the guidance memos are available in full on the USPTO website. Find §112 here and § 101 here. The USPTO is seeking written comments to this guidance to be sent to  Eligibility2019@uspto.gov on or before March 8, 2019.

The different standards between the PTAB and the ITC came to bear in a recent Federal Circuit appeal between Nobel Biocare Services AG and Instradent USA, Inc. (Appeal No. 2017-2256 ). The decision came on an appeal from an IPR where Instradent sought to invalidate Nobel’s patent relating to dental implants with a critical date of May 23, 2003. The original patent holder (Alpha-Bio Tech. Ltd) brought an estimated 200-500 catalogs describing the material to a 2003 trade show, which usually occurred in March and corresponds to the ‘March 2003’ date printed on the catalog cover.

In 2015, the ITC ruled that the testimony from the Patent Owner that the trade show usually occurred in March and the March 2003 date on the catalog was insufficient to establish the available date. In the underlying 2015 IPR, the PTAB, considering new testimony from a competitor corroborating the March 2003 date for the catalog, found sufficient evidence that it was publicly available in March of 2003, before the critical May 23, 2003 date. This allowed the anticipation rejection to stand and invalidated the subject claims. Both decisions were appealed to the Federal Circuit.

The ITC appeal was decided first, where the Federal Circuit upheld the insufficiency of the evidence for the March 2003 catalog, followed by the appeal of the IPR sufficient evidence finding which was also upheld.

In explanation of affirming the two seemingly conflicting decisions, the Federal Circuit highlighted two things. First, the panel pointed to the additional evidence of corroborating testimony from their competitors. Secondly, and more significant for decision making purposes, the panel emphasized that the standards of evidence are different between the ITC and the PTAB. In support of the IPR decision, the panel explained, “As the Board correctly observed, the evidentiary standard in its proceedings, preponderance of the evidence, is different from the higher standard applicable in ITC proceedings, clear and convincing evidence”. The panel then cited to its 1966 decision in Consolo v. Fed. Mar. Comm’n which stated that “the possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency’s finding from being supported by substantial evidence.”

The Federal Circuit’s endorsement that the different standards hold weight in application of prior art eligibility highlights the necessity of proper strategic planning when deciding how to proceed with any patent disputes.

After over a decade of outstanding service and commitment to our clients, Maier & Maier is proud to have obtained 1000 patent grants for our clients from the United States Patent & Trademark Office. The most recent in a string of successes, this achievement represents both the quality and consistency of Maier & Maier’s work.

The milestone comes during the most successful year to date for Maier & Maier. Nearly 250 grants to date in 2018, repeated successes litigating for our clients, and the addition of new partner and renowned patent expert, Steve Kunin, have all combined to make 2018 the best yet, and helped the firm earn a spot as one of U.S World & News Report’s Best Law Firms.

With continued commitment to our clients, Maier & Maier is looking forward to even greater things for years to come!