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Amazon.com: A Retail Giant With Major Counterfeit, Piracy and Data Privacy IssuesIt’s not just counterfeits of gadgets or luxury fashion items available for sale on Amazon, lining the already deep pockets of Bezos. As we’ve noted in other reports, there are plenty of counterfeit items that mimic badges and official documents from law enforcement agencies like the Federal Bureau of Investigations and the Secret Service. But…
PayPal Secures Patent for Augmented Reality GlassesThe unusual direction of innovative developments in the field of fintech is underscored by U.S. Patent No. 9953350, called Augmented Reality View of Product Instructions, which was issued to PayPal in late April. This patent protects a method by which an augmented reality view of an identified object is generated to include promotional material, recommendations,…
Patent Applications 101: Drawings Really Should be RequiredBetter practice remains to file applications with any and all drawings necessary to understand the invention. The best practice is not only to file what is necessary, but to also file drawings that go beyond what is minimally necessary. You never know later on during prosecution what details you may wish you had explained in…
Industry Reaction to WesternGeco LLC v. ION GeoPhysicalWe reached out to our distinguished panel of industry insiders, and the initial reaction is this decision is a clear win for patent owners. Efrat Kasznik: "The expansion of lost profits to include foreign lost profits enhances the ability of a patent owner to recover the appropriate amount damages that would make them whole, without…
Supreme Court win for Patent Owners on Lost Foreign Profits in WesternGeco v. ION GeophysicalEarlier today the United States Supreme Court issued a decision in WesternGeco LLC v. ION Geophysical Corp., which in a 7-2 decision ruled that a patent owner may recover lost foreign profits for infringement under 35 U. S. C. 271(f)(2). The question decided, as set forth in the opinion by Justice Thomas, writing for the…
Denying Inducement to Infringe in Face of a Drug Label: A Fool’s Errand?Proving inducement to infringe requires showing that the accused infringer possessed “specific intent” to infringe. In pharmaceutical cases, particularly those arising in the Hatch-Waxman framework, specific intent may be supplied by the wording of a drug label. Vanda sheds light on several issues relevant to inferring inducement to infringe based on a drug’s label. For…
USAA Asserts Mobile Check Deposit Patents Against Wells FargoUSAA alleges that Wells Fargo Mobile Deposit remote deposit capture system, which was released years after either of USAA’s remote deposit services were first offered, infringe upon the asserted patents. Wells Fargo Mobile Deposit has been downloaded more than 10 million times from the Google Play Store alone and by February 2018, Wells Fargo had…
Has Big Tech Finally Become Too Big for the FTC to Ignore?Some of the questions the FTC is interested in investigating and discussing during this inquiry include whether changes in the economy and evolving businesses have created competition and consumer protection issues in communication and information technology networks, market power and entry barriers in markets featuring "platform" businesses, the role of intellectual property in competition, and…
Courts Can Consider Prevailing Party’s Litigation Conduct When Deciding to Award Attorney’s FeesThe court will consider the totality of the circumstances, including the prevailing party’s conduct in the litigation, such as the nature and timing of its relevant allegations, when awarding attorney’s fees under Section 285. The post Courts Can Consider Prevailing Party’s Litigation Conduct When Deciding to Award Attorney’s Fees appeared first on IPWatchdog.com | Patents…
Federal Circuit Denies Petition for Rehearing En Banc in Xitronix Appeal on Walker Process ClaimsOn Friday, June 15th, the Court of Appeals for the Federal Circuit denied a petition for panel rehearing and rehearing en banc in Xitronix Corporation v. KLA-Tencor Corporation. The petition for rehearing was filed by KLA-Tencor after the Federal Circuit first decided Xitronix back in February of this year, where the appellate court held that…
The 700 Million Dollar Boomerang LawsuitThis is where the drama begins its teaching. Title Source believed its own narrative, in which it was a victim of HouseCanary’s breach... Why didn’t Title Source see the potential disaster when deciding whether to sue? The answer almost certainly lies in the emotional content of disputes where information has been shared between companies. The…
Creating Better Applications Through Patent StrengtheningEvents along the prosecution process create multiple windows of opportunity for strengthening a portfolio. Decisions are based on indications of market adoption using evidence from specialized technical analysis and subject matter experts who examine products in the market that potentially use your teaching and proposed claims. There are four key factors to consider during the…
The Government Entrepreneur’s Dilemma Ironically, now that the Trump Administration's prioritizing economic as well as scientific returns on investment from federal research, one of EPA's best examples is gone. Others who share this faith are waiting to see what becomes of the Administration's ROI initiative. One thing's for certain, it's going to take more than lofty pronouncements to steer this…
Patent Eligibility Determinations in Life Sciences Patent CasesThis article examines Supreme Court and Federal Circuit analyses of patent eligibility under 35 U.S.C. § 101 where the patent claims at issue were directed to Life Sciences-related technologies. I first examine this topic in the context of composition of matter patent claims and then in the context of method claims. As reflected in the…
USPTO issues guidance on patent eligibility of method of treatment claims in light of Vanda PharmaceuticalsOn June 7, 2018, the USPTO issued new guidance to its examining corps in the form of a memorandum discussing the Federal Circuit’s April 13, 2018 decision in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed. Circ. 2018). The memo indicates that it is intended to “addresses the limited question of how to…
FTC v. Actavis: Where We Stand After 5 YearsIt has been five years since FTC v. Actavis. In that landmark ruling, the Supreme Court held that settlements by which brand-name drug companies pay generics to settle patent litigation and delay entering the market could have “significant anticompetitive effects” and violate the antitrust laws. What has happened in these five years? For starters, the…
SafeBreach Announces Issuance of Breach and Attack Simulation Patents After $15 Million Round of Investor FundingSafeBreach recently announced the issuance of three U.S. patents in the field of breach and attack simulation. This news follows weeks after SafeBreach closed a $15 million series B round of funding involving backing from major payment solutions firm PayPal. The post SafeBreach Announces Issuance of Breach and Attack Simulation Patents After $15 Million Round…
Guest Post by Prof. Tim Holbrook: WesternGeco’s Implications for Patent Law and BeyondGuest post by Timothy Holbrook, Asa Griggs Candler Professor of Law at Emory University School of Law. Professor Holbrook authored an amicus brief in WesternGeco v. Ion. When the Supreme Court agreed to review WesternGeco LLC v. ION Geophysical Corp., it was unclear how sweeping the decision would be. The case had clear implications for…
Boilerplate Language in PatentsThe specification of U.S. Patent No. 10,000,000 is short – only about three pages long. However, the patentee made room for the following boilerplate: Although specific advantages have been enumerated above, various embodiments may include some, none, or all of the enumerated advantages. [O]ther technical advantages may become readily apparent to one of ordinary skill…
WesternGeco v. Ion: Supreme Court holds that foreign lost profits available for infringement under 271(f)By Jason Rantanen WesternGeco LLC v. Ion Geophysical Corp. (2018), 2018 U.S. LEXIS 3842 Download OpinionMajority: Thomas (author), Roberts, Kennedy, Ginsburg, Alito, Sotomayor, and Kagan. Dissent: Gorsuch, joined by Breyer. In its final patent-related opinion of this term, the Supreme Court held that 35 U.S.C. § 284 permits the award of lost foreign profits. In…
Patently-O Bits and Bytes by Juvan BonniRecent Headlines in the IP World: Renae Reints: Take a Look at the 10 Millionth U.S. Patent (And the First) (Source: Fortune) Jennifer Gronwaldt: Marshall Gerstein Secures Victory for PopSockets at the International Trade Commission (Source: Business Wire) Andrew Chung: Schlumberger Oil Services Wins in U.S. Supreme Court on Patent Damages (Source: Reuters) Bryan Menegus: Bizarre…
Will US Trade Wars Create a Rocky Road for International Patent Rightsby Dennis Crouch In recent remarks at the 10M patent ceremony, Rep. D. Issa discussed a White House trade meeting focusing on problems caused by weak enforcement of patents in Canada. For Issa, this is emblematic of a global problem with the U.S. patent system. Just today we had a number of people at the…
Supreme Court Opens Door for Taxation of Interstate Commerceby Dennis Crouch Important non-patent Supreme Court case for businesses operating online: South Dakota v. Wayfair, Inc (Supreme Court June 21, 2018) Holding: The “physical presence” rule of Quill Corp. v. North Dakota, 504 U. S. 298 is overruled. While states may not impose undue burdens on interstate commerce, the constitution does not prohibit taxation…
Biting into PTAB decisionsSirona Dental Systems GMBH v. Institut Strauman AG (Fed. Cir. 2018) In its Final Written Decision, the PTAB partially invalidated Sirona Dental Systems U.S. Patent No. 6,319,006 (claims 1-8 obvious over two prior art references; claims 9-10 patentable). Following cross-appeals, the Federal Circuit the Federal Circuit found no error in these ultimate conclusions, but did…
Registering ZERO: Trademarks mean Nothing to MeRoyal Crown Dr. Pepper, and Seven Up v. Coca Cola (Fed. Cir. 2018) This case stems from Royal Crown’s opposition of Coca-Cola’s attempt to register various trademarks with the term ZERO. These include, among others, SPRITE ZERO, FANTA ZERO, COKE ZERO, PIBB ZERO, and my favorite COKE ZERO ENERGY. Coke uses the ZERO mark on…
Infringement-by-manufacture requires complete — not merely substantial — manufactureby Dennis Crouch The United States government is not directly liable for patent infringement under the Patent Act. However, 28 U.S.C. 1498(a) represents a partial waiver of sovereign immunity — allowing patent owners to sue the US Government for its unlicensed use of a U.S. patent. 149a(a) Whenever an invention described in and covered by…
U.S. Patent No. 10,000,000By Dennis Crouch Today the USPTO issued U.S. Patent No. 10,000,000 covering a new form of LADAR invented by Joseph Marron and assigned to Raytheon. [patent10million]. The patent is the 10 millionth issued since the current numbering system was established in 1836. Although the count has been going for 182 years, one-half of the patents have…
12:01 Tuesdayby Dennis Crouch Patent attorney Aaron Feigelson named his occasional blog 12:01 Tuesday. The inside-reference is directed to the USPTO’s standard practice for the past several decades “like clockwork, every Tuesday after midnight” the USPTO issues a new set of patents. These are released to the USPTO web servers and rapidly distributed through various other mechanisms…
When are Confidential Sales Prior Art?by Dennis Crouch In the pending case of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., et al., No. 17-1229 (Supreme Court 2018), the petitioner has asked the Supreme Court to offer its statement on whether Congress altered the “on sale bar” to now apply only to non-confidential sales or offers. Question Presented: Whether, under…
PGS Geophysical: Partial Institution and Remandby Dennis Crouch PGS Geophysical AS v. Iancu, Appeal No. 16-2470 (Fed. Cir. June 7, 2018) (PGS I) (precedential)PGS Geophysical AS v. Iancu, Appeal No. 17-1582 (Fed. Cir. June 18, 2018) (PGS II) (non-precedential) Our timeline for theses appeals probably began with WesternGeco’s infringement lawsuit against its Norwegian competitor PGS. In the S.D.Tex. lawsuit, PGS counterclaimed…
TTAB Test: Is NIGHT Confusable with NOCHE for Wine?The USPTO refused to register the mark NIGHT for wine, finding it likely to cause confusion with the registered mark NOCHE, also for wine. On appeal, Aaplicant argued the doctrine of equivalents should not be applied, and even if it is applied, the other differences between the marks require reversal of the refusal. How do…
CAFC Vacates and Remands: TTAB Applied Wrong Test in Finding ZERO Not Generic for Soft DrinksThe CAFC vacated the TTAB's decision of May 23, 2016 [TTABlogged here], in which the Board found that opposers failed to prove that the term ZERO is generic for soft drinks and sports drinks. The Board also found that Applicant Coca-Cola had established acquired distinctiveness in the term ZERO for soft drinks. The appellate court,…
Trademark Expo July 27-28 Includes Free CLE on Right of Publicity and on EthicsThe Smithsonian's National Museum of American History, in collaboration with the United States Patent and Trademark Office, will host the 2018 National Trademark Exposition on July 27 and 28 at the National Museum of American History, 1300 Constitution Ave. N.W., Washington, DC 20560. The exposition is a free, family-friendly event featuring educational workshops, exhibits and…
TTAB Test: Are Collectible Toy Figures Related to Plush Toys For Purposes of Section 2(d)?The USPTO refused registration of the mark PINT SIZE HEROES in standard character and Stylized form for "Collectable toy figures," finding confusion likely with the registered mark PINT SIZE PRODUCTIONS & Design for “plush toys; stuffed and plush toys; stuffed toy animals" [PRODUCTIONS disclaimed]. On appeal, applicant argued that it was not seeking to register…
TTAB Test: Is "FOUNDIT THEFT RECOVERY" Confusable With "IFI I FOUND IT" for GPS Tracking Devices?The USPTO refused registration of the mark FOUNDIT THEFT RECOVERY for "GPS tracking devices, namely, personal asset tracker, personal tracker, vehicle tracker" (THEFT RECOVERY disclaimed), finding it likely to cause confusion with the registered mark IFI I FOUND IT (in stylized form with design) for "electronic devices for locating and tracking lost articles using radio…
TTAB Sustains Opposition to SCOTTSDALE TAXI: Geographically Descriptive and Lacks Acquired DistinctivenessThe Board sustained an opposition to registration of the mark SCOTTSDALE TAXI for "taxi transport" services [TAXI disclaimed], finding the mark to be "highly geographically descriptive" and lacking in acquired distinctiveness. Despite applicant's use of the alleged mark since 1994, its evidence of advertising and extent of use was inadequate and it failed to prove…
