SoCal IP Law Group

The SoCal IP Law Blog

SoCal IP Institute :: September 15, 2014 :: Section 101 Patentable Subject Matter Bloodbath

Our weekly SoCal IP Institute meeting on Monday, September 25, 2014 will be a discussion of several recent cases and trends related to 35 U.S.C. Section 101 patentable subject matter.  Over the past few weeks, several financial services and software-related patents have been found unpatentable under Section 101.  A good summary article may be found here.  We will discuss a few representative cases.  Brief synopses of the cases we will discuss appear below.

Tuxis Technologies, LLC v. Amazon.com, Inc., No. 13-1771-RGA (D. Del. September 3, 2014) (available here). Amazon’s motion to dismiss for failure to state a claim on a patent on a method of “upselling” to a consumer using a computer system was found not to present patentable subject matter.  As a result, the case was dismissed on the pleadings.  The court found that the patent failed to meet the Alice criteria of providing some “inventive concept” beyond the abstract idea, in this case, of “upselling.”  The court did not find it here.

Eclipse IP LLC v. McKinley Equipment Corp., No. 14-154  (C.D. Cal. September 4, 2014) (available here). The court characterized this patent as directed to “asking someone if they are available to perform a task and then either waiting for them to complete 26 it or contacting the next person.”  The court further stated “[t]he claim recites that the method is performed ‘in connection with a computer-based notification system,’ which Eclipse argues saves the claims because ‘every asserted claim of the ‘681 patent requires a specially programmed computer system and a specially-equipped PCD to implement the invention and to achieve its benefits.'”  The two other patents relate to asking whether individuals are able to go to locations (deliver goods or pick up individuals) and, if not, seeking others to go to locations.  The court here found that these claims similarly do not provide any “inventive concept” as required by Alice. The court granted McKinley’s motion to dismiss.

Every Penny Counts, Inc. v. Wells Fargo Bank, N.A., No. 11-cv-2826 (M.D. Fl. September 11, 2014) (available here). Here, the two asserted patents “claim, respectively, a method of and a system of automated saving or automated charitable giving.” For example, the dollars and cents amount of a bank customer’s credit card purchase is “rounded up” to the next whole dollar. The difference between the dollars and cents amount of the purchase and the next whole  dollar, to which the amount is “rounded up,” is withdrawn from the customer’s bank account and deposited into a recipient account for personal saving or charitable giving.  The court describes the method as follows:

The ’849 patent’s “representative” method, Alice, 134 S. Ct. at 2359, comprises (1) electronically receiving data, including the transaction amounts,6 (2) modifying the transaction amounts in accord with a formula, (3) depositing the differences between the modified and unmodified transaction amounts into one or more recipient accounts, and (4) adjusting each account balance accordingly. The function performed by the computer at each step of the method is “purely conventional.”

In sum, the ’849 patent, a method patent, is invalid under Section 101 because the patent claims an abstract idea that is implemented by “well-understood, routine, conventional activities previously known to the industry.”

Thus, Wells Fargo’s motion for summary judgment was granted.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 15, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: September 8, 2014 :: Trademarks and Patentable Subject Matter

Our weekly SoCal IP Institute meeting on Monday, September 8, 2014 will be a discussion of a recent trademark decision and a recent decision on patentable subject matter from the District of Delaware. Brief synopses of the cases appear below. Panda Kroll, Esq., will lead the discussion on the trademark case.

Blackhorse v. Pro-Football, Inc., Cancellation No. 92046185 (TTAB June 18, 2014) (available here), involves a case of what constitutes disparaging trademarks. The marks at issue were REDSKINETTES (typeset word(s)), REDSKINS (typeset word(s)), THE REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (drawing which includes word(s)), WASHINGTON REDSKINS (typeset word(s)), and THE REDSKINS (drawing which includes word(s) in stylized form). The registrations for the marks above were issued in 1990, 1978, 1974, 1974, 1974, and 1967 respectively.

The Board applied a two-step analysis in finding that the marks were disparaging.  The steps are: “a. What is the meaning of the matter in question, as it appears in the marks and as those marks are used in connection with the goods and services identified in the registrations?” and “b. Is the meaning of the marks one that may disparage Native Americans?” The Board found that the Pro Football, Inc.’s alleged honorable intent and manner of use do not contribute to the determination of whether the term is disparaging. The record established that at least thirty percent of Native Americans found REDSKINS used in connection with Pro Football, Inc.’s services to be disparaging at the time they were registered. The Board found this number to be substantial.

 

Walker Digital, LLC, v. Google, No.: 11-318-LPS (D. Del. 9/3/2014) (available here). The plaintiff sued Google for infringing two of its patents related to facilitating employment searches. Google filed a motion for summary judgment asserting that the patents were invalid under 35 U.S.C. 101. The district court held the patents invalid.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 8, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 18, 2014 :: Detection/Prevention of Substance Abuse

Our weekly SoCal IP Institute meeting on Monday, August 18, 2014 will be a discussion on how to cope with the unique challenges of legal practice. The course will involve watching a streamed video of instructors Richard Carlton and David Mann of the California Bar discussing the topic followed by a brief discussion of the subject matter of the video.  The instructors summarize the presentation as an examination of the stress, anxiety, depression and substance abuse challenges often encounter by legal professionals, and the strategies and resources available to address these concerns.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 18, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of Detection/Prevention of Substance Abuse MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 11, 2014 :: Trade Dress in the Central District; Fed Cir. Reverses Contempt Sanctions

Our weekly SoCal IP Institute meeting on Monday, August 11, 2014 will be a discussion of a recent trade dress case in the Central District and a recent Fed. Cir. Opinion reversing contempt sanctions. Brief synopses of the cases appear below.

Brian Lichtenberg, LLC v. Alex & Chloe, Inc. Case No.: CV 13-06837 DDP (C.D. Cal. 7/25/14) (available here), involves a case of two brothers suing over trade dress.  The court in this case granted one brother’s motion for preliminary injunction in part, and denied it in part.

In EPlus Inc, v. Lawson Software, Inc., No.: 2013-1506, -1587 (Fed. Cir. 7/25/15) (available here), the Federal Circuit reversed the order for civil contempt sanctions when it found that the underlying preliminary injunction they were based upon was invalid.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 11, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 4, 2014 :: Patent infringement and Trademark oppositions

Our weekly SoCal IP Institute meeting on Monday, August 4, 2014 will be a discussion of a patent infringement case and a trademark opposition. Brief synopses of the cases appear below.

Amdocs (Israel) Limited v. Openet Telecom, Inc., No. 2013-1212 (Fed. Cir. August 1, 2014) (available here). Amdocs sued Openet for infringing four of its patents. Here, the Fed. Cir. reversed the district court’s ruling of noninfringement of three of the patents on summary judgment. In addition, the Fed. Cir. vacated and remanded the district court’s ruling of noninfringement of the fourth patent based on an erroneous claim construction.

Stoncor v. Specialty Coatings, No. 2013-1448 (Fed. Cir. July 16, 2014) (available here). Stoncor opposed Specialty Coatings mark for ARMORSTONE. The Federal Circuit affirmed the TTAB’s ruling that there is no likelihood of confusion between ARMORSTONE and STONSHIELD and that ARMORSTONE is not merely descriptive.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 4, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: July 28, 2014 :: Subject Matter Eligibility Post-Alice and Stays in view of CBM Reviews

Our weekly SoCal IP Institute meeting on Monday, July 28, 2014 will be a discussion of two Federal Circuit cases.  The first pertains to subject matter eligibility.  The second pertains to the grant of a stay during the pendency of a later-filed covered business method patents review. Brief synopses of the cases appear below.

Digitech Image Tech., LLC. v. Electronics for Imaging, Inc. et al, No. 2013-1600 etc. (Fed. Cir. July 11, 2014) (available here).  The plaintiff asserted a patent related to an “improved device profile” for the color and spatial profile of devices such as digital image processors, such as digital cameras.  On motion of several defendants, the district court found that the patent’s “improved device profile” amounted to data that was not within the categories of statutory subject matter under Section 101.

The Federal Circuit, here, agreed with the district court finding that the device profile claims were directed to data, which is not one of the identified categories and, further, that the method claims are directed to an “abstract idea” and, therefore are not eligible for patent protection.

VirtualAgility Inc. v. Salesforce.com, Inc. et al., No. 2014-1232 (Fed. Cir. July 10, 2014) (available here).  VirtualAgility sued several defendants in January of 2013. In May of 2013, some of those defendants sought review under the new AIA CBM patent review process.  Specifically, the defendants asserted that the patent was invalid under Sections 101, 102, and 103.  Shortly thereafter, the defendants sought a stay in the case.  The district court denied the motion in January of 2014, with claim construction then due to be completed in April.

The Federal Circuit entered a stay pending interlocutory appeal (available under the AIA for refusals to grant stays).  Under a very careful review of the four factors set forth in the statute, the Federal Circuit found that the district court incorrectly evaluated two of the factors and, therefore, three of the four weighed in favor of granting a stay.  Accordingly, the district court was reversed and the stay was granted pending completion of the CBM review.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 28, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: July 21, 2014 :: Guest Speakers Ari Katz and Yoav Keren to Discuss Online Brand Protection

Our weekly SoCal IP Institute meeting on Monday, July 21, 2014 will be a discussion by Ari Katz and Yoav Keren of BrandShield Ltd.  BrandShield was established to develop technology and solutions to help businesses protect their brand online from infringement.  The Company is backed by Israel’s Chief Scientist and with an R&D center based in Israel.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 21, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: July 14, 2014 :: Liens on IP do not Create Federal Questions and Receivership Over Some George Clinton Recordings Affirmed

Our weekly SoCal IP Institute meeting on Monday, July 14, 2014 will be a discussion of one 4th Circuit case regarding federal subject matter jurisdiction for liens enforced on intellectual property and a 9th Circuit decision on the appointment of a receiver and that receiver’s rights over IP held by an individual. Brief synopses of the cases appear below.

Flying Pigs, LLC v. RRAJ Franchising, LLC, No. 13-2135 (4th Cir. July 1, 2014) (available here). Through a very convoluted set of steps including foreclosure on a series of renters, two bankruptcy proceedings, an overarching settlement agreement across several parties, and removal (twice) of proceedings from Lenoir County, North Carolina Superior Court to the Eastern District of North Carolina, Flying Pigs came to bring a lien-related proceeding in Superior Court.  Defendant RRAJ removed the case under “federal question” subject matter jurisdiction.  The district court denied Flying Pigs’ remand motion and granted RRAJ a dismissal with prejudice.

The 4th Circuit vacated the district court’s dismissal order, and returned the matter to the Superior Court.  Specifically, the 4th Circuit held that the matter did not raise a federal question, but instead arose under state law–essentially as a lawsuit to enforce a lien in part against the IP.

Hendricks & Lewis PLLC v. Clinton, No. 13-35010 (June 23, 2014) (available here).  Hendricks & Lewis PLLC represented George Clinton in a series of legal matters over the course of a number of years.  Mr. Clinton failed to pay for those services. The bill totaled over $3 million, but was reduced to just over $1.5 million in arbitration proceedings in which Mr. Clinton did not participate.  A year after the arbitration, Clinton sued Hendricks & Lewis for malpractice.  They, in turn, sought to enforce the arbitration award.  The district court appointed a receiver for Mr. Clinton’s assets and authorized the license or sale of the copyrights in order to cover the fee award.

The 9th Circuit held that under Washington law Clinton’s copyrights in the masters were subject to execution to satisfy judgments made against him. The panel also held that § 201(e) of the federal Copyright Act did not protect Clinton from the involuntary transfer of his copyrighted works. The court further held that under Washington law the district court did not abuse its discretion by appointing a receiver to manage or sell ownership of the copyrights. The court also held that Clinton may raise claims of fraud on the court and judicial estoppel for the first time on appeal, but concluded that both claims were meritless. Finally, the court held that Clinton failed to raise his preemption, Erie doctrine, and due process arguments before the district court, and, therefore, they would generally not be considered, and in any event they were without merit.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 14, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: July 7, 2014 :: Copyright infringement and trade secrets

Our weekly SoCal IP Institute meeting on Monday, July 7, 2014 will be a discussion of a Supreme Court case on copyright infringement and a California Appellate opinion on trade secrets. Brief synopses appear below.

ABC v. Aereo (U.S. June 25, 2014) (available here).  The Supreme Court held that Aereo’s service, which provided subscribers the ability to view television programs over the Internet at about the same time as they were being broadcast over the air, constituted copyright infringement because the service “performed” the copyrighted work publicly under the Transmit Clause.

New Castle Beverage, Inc. v. Spicy Beer Mix, Inc.  (Cal. Court of Appeal June 17, 2014) (available here). In this unpublished opinion, the California Court of Appeal affirmed the trial court’s ruling that the spice mix was not sufficiently defined and therefore did not constitute a trade secret.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 7, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: June 30, 2014 :: Conflicts of Interest

Our weekly SoCal IP Institute meeting on Monday, June 30, 2014 will be a video presentation on Conflicts of Interest.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 30, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE Ethics credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

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