SoCal IP Law Group

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Monthly Archives: February 2012

SoCal IP Institute :: February 27, 2012 :: Anticipation by Ranges of Values and the Meaning of “No Legitimate Interests” in UDRP Proceedings

We will be discussing one Federal Circuit case and one WIPO UDRP administrative panel decision during our weekly SoCal IP Institute meeting on Monday, February 27, 2012. Brief synopses are presented below.

ClearValue, Inc. et al. v. Pearl River Polymers, Inc. et al., Case No. 2011-1078 -1100 (Fed. Cir. Feb. 17, 2012) (attached).  ClearValue accused Pearl River of indirectly infringing U.S. patent no. 6,120,690 (’690 patent) related to a process for clarifying low alkalinity water using a quarternized plymer and an aluminum polymer.  After a jury found that the ’690 patent was valid and indirectly infringed, the district court denied Pearl River’s JMOL motions of invalidity and noninfringement. Because the jury’s verdict that the ’690 patent was not invalid under 35 U.S.C. § 102 was not supported by substantial evidence, the Federal Circuit reversed the denial of the motion for JMOL of invalidity.

In particular, the Federal Circuit found that the prior art’s teaching of a similar method including clarifying water with an alkalinity range from zero to 150 parts-per-million also taught the patent’s claim of clarifying water with an alkalinity of 50 arts per million or less.  The district court’s decision was reversed for failure to recognize that this prior art anticipated the claimed invention.

Cross-Appellant ClearValue appealed the district court’s grant of JMOL that Pearl River did not misappropriate ClearValue’s Trade Secret #1.  The Federal Circuit agreed with the district court that the jury verdict was not supported by substantial evidence and, therefore affirmed.  The primary contention was that the trade secret was not, in fact, a trade secret.  An employee of ClearValue had disclosed the elements of the alleged trade secret.

LEGO Juris A/S v. Griffith, Case No. D2011-1263 (WIPO Adm. Pan. Oct. 1, 2011) (attached).  LEGO filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) of Mr. Griffith’s registration of the domain name legoworskhop.com.  LEGO s a Danish company, owner of the LEGO brands of toys and associated products.  Mr. Griffith is an individual living in North Carolina.  Mr. Griffith registered the disputed domain on February 25, 2011.  LEGO wrote to Mr. Griffith regarding the domain name several times without response.

LEGO contended that each requirement of paragraph 4(a) of the UDRP was made out.  This paragraph requires a complaintant to prove that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

LEGO contended that its mark was famous and that the “workshop” and “.com” aspects of the registration do not effect the overall impression.  LEGO further contended that Mr. Griffith has no legitimate rights in the name.  As to paragraph 4(a)(iii), LEGO pointed to the famousness of its own name, Mr. Griffith’s failure to respond to inquiries regarding the domain and the likelihood of confusion created by the registration.  Mr. Griffith’s defense was that he registered the site for the use of his 15-year-old son so that he might show off his LEGO creations.  Mr. Griffith further indicated that there was no intent to profit from the site and that offers to purchase the domain were refused.

The administrative panel found that paragraph 4(a)(i) was made out.  As to 4(a)(ii), the panel found that there was some legitimate dispute as to this element, and that some advertisements for Lego toys, Lego guns and Star Wars Lego appeared on or referred to the site.  However, given that the use was minimal and that the links appeared to have been put there by the registrar automatically before Mr. Griffith created a web page that removed of the links, the panel determined that LEGO failed to establish that Mr. Griffith had no legitimate interests in the domain.  The panel indicated that it was unnecessary to consider paragraph 4(a)(iii), but that were it to consider it, that LEGO’s showing was inadequate to indicate that Mr. Griffith had any bad faith in registering the domain name.  Accordingly, the complaint was denied.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, February 27, 2012 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 Amanda Jones by 9 am Monday morning.

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SoCal IP Institute :: February 13, 2012 :: Functionality in Trade Dress and Certification Marks

We will be discussing two recent cases during our weekly SoCal IP Institute meeting on Monday, February 13, 2012. The first is a 9th Circuit case involving trade dress and the second is a Trademark Trial and Appeal Board (TTAB) case seeking cancellation of a certification mark.  Brief synopses are presented below.

Secalt S.A. v. Wuxi Shenxi Constr. et al., Case No. 20-17007, 11-15066 (9th. Cir. Feb. 7, 2012) (attached). Tractel manufactures and sells a traction hoist, typically used for construction and external maintenance of buildings.  Jiangsu, a Chinese competitor, manufactures a very similar hoist.  Tractel brought suit claiming that Jiangsu’s hoists infringed their trade dress.  The complaint was based upon trade dress infringement under the Lanham Act, federal unfair competition and related stat law trade dress and unfair competition claims.  The district court granted a summary motion by Jiangsu finding that Tractel failed to demonstrate that the alleged trade dress was nonfunctional.  The district court also awarded fees and costs to Jiangsu as an “exceptional” case under the Lanham Act.

In order to support a claim for trade dress infringement of an overall product configuration, “the entire design must be nonfunctional.”  Leatherman Tool Grp. v. Cooper Indus., 199 F.3d 1009, 1012 (9th Cir. 1999).  Tractel claimed that the configuration of parts met at right angles to give a “cubist” appearance and that the fins added to the exterior of the motor were intended to be “modern.”  The 9th Circuit found, citing Leatherman, that these elements that may or may not be purely for appearance do not save the otherwise functional nature of the arrangement of parts.  Instead, the entire configuration of parts must be nonfunctional.  Clearly, this was not the case.

Tractel also argued that the district court should have considered the Disc Golf factors:

(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.

Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998).

The 9th Circuit considered each factor and found that Tractel had not overcome its burden to show that the design was nonfunctional.

The 9th Circuit then considered the district court’s grant of attorney’s fees and costs as an exceptional case.  Because Tractel did not provide any reasonable ground to support its trade dress claim, even after two years of discovery.  At the point the summary judgement motion was filed, the 9th Circuit reasoned, it should have been well aware that it would be unable to prevail on the claim.  The failure of proof, coupled with Tractel’s insistence on asserting its claim moved this case, the 9th Circuit reasoned, from a mere failure to prevail to an exceptional case.  However, the attorney’s fees were remanded for confirmation that they were “reasonable” because the district court failed to make a finding on that issue.  A portion of the costs were also remanded as unreasonable or unsubstantiated.

Swiss Watch Int’;. v. Swiss Watch Indus., Cancellation No. 92046786 (TTAB Jan. 30, 2012 (attached).  Swiss Watch Int’l. (Int’l.) sought cancellation of the “SWISS MADE” and “SWISS” certification marks owned by the Federation of Swiss Watch Industry (Federation). These marks were to be used on goods certified by Int’l. as having a geographic origin in Switzerland.  Int’l. sought cancellation based upon a likelihood of confusion with their own marks (applications pending for “SWISS WATCH INTERNATIONAL” and “SWISS LEGEND”), alleged misrepresentations that led to registration, fraud on the U.S. Patent and Trademark Office, a lack of legitimate control over the marks, because Federation failed to police the use of the mark, because Federation discriminates in granting use of its mark and because the marks SWISS and SWISS MADE have become generic.

The TTAB dealt with some evidentiary issues and then moved on to the substance of the dispute.  Federation was tasked by the Swiss government with ensuring that manufacturers of watches and clocks claiming to be “Swiss,” actually satisfy a number of requirements, including that their products are actually made in Switzerland.  The first claim was that Federation allows the mark to be used in ways other than as certifications.  Examples included use by “Wenger Swiss Military” and “Swiss Army” among others.  The TTAB pointed out that this is not using the mark, but using each of those parties individual marks.  The TTAB addressed the allegedly large-scale failure of Federation to police the mark by stating that it was clear from the evidence that Federation has undertaking large-scale efforts to confirm that entities adhere to its standards.  While not complete or perfect, Federation’s control was adequate.

Int’l.’s next argument is, essentially, that it disagrees with Federation’s requirement that the watch movement be cased and inspected in Switzerland.  The TTAB pointed out that disagreement with the certification standards has nothing to do with the Board.  It is not the Board’s purpose to cast judgment upon the requirements for certification, but merely to confirm that the third party has standards and adheres to them.  The TTAB also dismissed the argument that the marks had become generic.  To the contrary, the “Swiss” watch carried significant positive public perception and, though used by some non-Swiss companies, that was not diminished in its meaning for quality and geographic origin.  The argument that Federation committed fraud in procuring the registration was based upon the failure of the standards document submitted in the application to use the phrase “Swiss Made.”  Instead it used the word “Swiss.”  The TTAB found this argument unpersuasive.  Accordingly, the petition to cancel the two Federation registrations was denied on all grounds.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, February 13, 2012 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 Amanda Jones by 9 am Monday morning.

SoCal IP Institute :: February 6, 2012 :: Patentability of “Hybrid” Claims, Sufficiency of Means-Plus-Function Structure and Waiver

We will be discussing two recent Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, February 6, 2012. Brief synopses are presented below.

Dealertrack v. Huber et al., Case No. 2009-1566, 1588 (Fed. Cir. Jan. 20, 2012) (attached).  Dealertrack obtained patent protection for a process of applying for multiple loans simultaneously by filling out forms including all necessary data only once.  Dealertrack sued each of the defendants for their use of similar systems.  The defendants filed a summary judgment motion of noninfringement, invalidity as indefinite and invalidity as directed to non-patentable subject matter. The district court granted summary judgment of noninfringement and invalidity under Section 101.

On appeal, the Federal Circuit reversed the district court’s construction of “communications medium” to explicitly exclude the internet.  In addition, the court reversed the construction of “central processing means.”  In addition, the Federal Circuit agreed that the prior patent was properly incorporated by reference.  Therefore, the Federal Circuit reversed the finding of noninfringement and remanded for further proceedings in view of the revised claim construction.  The Federal Circuit also reversed the finding that claims 14, 16 and 17 were not indefinite because no algorithm was provided for “tracking” credit applications.

The Federal Circuit then turned to a discussion of patent eligible subject matter for the “computer-aided method” of claim 1.  The Federal Circuit found that the claim was not tied to a particular machine and the claim was not limited to a particular application and, therefore, was not directed to patent-eligible subject matter.  Dealertrack asserted that it was limited to credit clearinghouse applications, but the Federal Circuit rejected this argument as insufficient to confirm patent eligibility to abstract “computer implemented” ideas.  Accordingly, the Federal Circuit affirmed the district court’s grant of summary judgment of invalidity under Section 101.

HTC Corp. et al. v. IPCom GMBH & Co., KG, Case No. 2011-1004 (Fed. Cir. Jan. 30, 2012 (attached).  HTC sued IPCom for declaratory judgment that a patent asserted by IPCom was invalid.  The district court granted HTC’s summary judgment motion of invalidity as indefinite.  On appeal, the Federal Circuit reversed the grant of summary judgment and denied HTC’s attempt to assert an alternative basis for indefiniteness as waived.

The patent covers a mobile station and associated network for handling a “handover” when a mobile station switches between two base stations.  The district court granted HTC’s motion based upon an argument that a patent claim cannot be a hybrid of an apparatus and method claim.  On appeal, the Federal Circuit disagreed finding that the claim, properly construed, was clear as to which portions of the claimed elements of the apparatus and the functions they perform.  In short, the claims provided for method steps performed by the base station and also claimed an aspect of the mobile station.  Accordingly, the district court’s finding of invalidity as directed to hybrid subject matter was reversed.

HTC also argued that the claims failed to disclose corresponding structure to adequately support the means-plus-function claim elements.  The district court found that the processor and transceiver were sufficient.  The Federal Circuit disagreed finding that the processor and transceiver were sufficient structure, but that their precedent also requires that the patent disclose a specific algorithm for the means-plus-function element “an arrangement for reactivating . . . .”  However, because HTC failed to make an argument regarding the specific algorithm at the district court, the Federal Circuit found that the argument was waived on appeal.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, February 6, 2012 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 Amanda Jones by 9 am Monday morning.