SoCal IP Law Group

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Monthly Archives: May 2012

SoCal IP Institute :: May 21, 2012 :: Inherent Characteristics of Prior Art and Deference to Federal Agencies

We will be discussing one Federal Circuit case and one Ninth Circuit case during our weekly SoCal IP Institute meeting on Monday, May 21, 2012. Brief synopses are presented below.

In re Montgomery, Case No. 2011-1376 (Fed. Cir. May 8, 2012) (attached).

The examiner rejected appellant’s claims in a patent application towards a method for treatment or prevention of stroke by administering the drug ramipril.  The claims were rejected as anticipated by four prior art references that described the administration of ramipril to subjects at risk of stroke, but did not specifically disclose treating or preventing stroke with ramipril.  The Board of Patent Appeals and Interferences affirmed the rejection stating that ramipril inherently treats or prevents stroke and it does not matter that those of ordinary skill may not have recognized these inherent characteristics.

The Federal Circuit affirmed the Board’s decision stating that a reference may anticipate inherently if a claim limitation that is not expressly disclosed is necessarily present in the single anticipating reference.  They continued by stating that one of the prior art references discloses a protocol for the administration of ramipril to stroke-prone patients, and administering ramipril to stroke-prone patients inevitably treats or prevents stroke.  Thus, the Federal Circuit held that the prior art inherently anticipated the claims at issue.

Pom Wonderful LLC v. The Coca-Cola Co., Case No. 10-55861 (9th Cir. May 17, 2012) (attached).

Pom Wonderful sued Coca-Cola, the makers of the Minute Maid brand, for false advertising under the Lanham Act and state-law unfair competition and false advertising claims.  Minute Maid advertised their product as “Pomegranate Blueberry” when it only contained 0.3% pomegranate juice and 0.2% blueberry juice.  The district court held that because the Food and Drug Administration had approved of the Minute Maid labels, it barred pursuit of both the name and labeling aspects of Pom’s Lanham Act claim.  The district court also held that Pom lacked standing to bring the state-law claims because Pom did not meet the prerequisite of being entitled to restitution.

On appeal, the Ninth Circuit affirmed-in-part and held that the naming component of Pom’s claim was barred because FDA regulations authorize the label name Coca-Cola had chosen.  However, the Court vacated the district court judgment as to Pom’s state-law claims pointing out that the California Supreme Court had recently made clear that standing to sue under state-law unfair competition and false advertising claims does not depend on eligibility for restitution.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, May 21, 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 Elisha Manzur by 9 am Monday morning.

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SoCal IP Institute :: May 14, 2012 :: Public Use or Sale and Recapture Rule

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, May 14, 2012. Brief synopses are presented below.

Leader Tech., Inc. v. Facebook, Inc., Case No. 2011-1366 (Fed. Cir. May 8, 2012) (attached).

This patent infringement case relates to software that allows users on a network to communicate and collaborate through “boards” that are accessible through an Internet browser.  In 2008, Leader sued Facebook alleging infringement of their ’761 patent.  The jury in the district court trial found that the ’761 patent was not entitled to the priority date of the provisional application.  The jury also found that the claims of the ’761 patent were invalid for being in public use and on sale more than one year prior to the date the patent application was filed.

On appeal, Leader argued that Facebook failed to offer clear and convincing evidence that the version of Leader’s software offered for sale or used prior to December 10, 2002 fell within the scope of the asserted claims.  The Federal Circuit held that there was legally sufficient evidence to support the jury’s verdict that the version of the plaintiff’s product demonstrated and offered for sale prior to the critical date was an embodiment of the asserted claims.  The court pointed to interrogatory responses and the deposition of Leader’s founder in which Leader admitted that offers for sale of a software product fell within the scope of the asserted claims.

In re Youman, Case No. 2011-1136 (Fed. Cir. May 8, 2012) (attached).

An examiner’s rejection of claims in a reissue patent application for improperly recapturing subject matter surrendered during prosecution of the parent was affirmed by the Board of Patent Appeals and Interferences.

The Board applied the three-step recapture rule analysis.  Under step one, the Board found that the reissue claim was broader than the issued claim, but narrower than the original claim.  Under step two, the Board determined that the broadening related to the surrendered subject matter.  For step three, the Board concluded that other narrowing limitations in the reissue claims were not overlooked during the prosecution and therefore could not avoid the recapture rule.

The Federal Circuit vacated the Board’s decision stating that the Board did not properly conduct step three of the recapture rule analysis.  The Court stated step three as follows: if the patentee modified the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim the recapture rule does not bar reissue.  The case was remanded to determine whether the applicant avoided the recapture rule bar on reissue by materially narrowing the claims relative to the original claims.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, May 14, 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 Elisha Manzur by 9 am Monday morning.

SoCal IP Institute :: May 7, 2012 :: Trademark Infringement for Keyword Advertising and Examiner Allowance Rates

We will be discussing one Fourth Circuit case and one Law Review article during our weekly SoCal IP Institute meeting on Monday, May 7, 2012. Brief synopses are presented below.

Rosetta Stone Ltd. v. Google, Inc., Case No. 10-2007 (4th Cir. April 9, 2012) (attached).

Rosetta Stone sued Google in 2009 over the search engine’s sale of advertising space “keyed” to searches on the ROSETTA STONE trademark through its AdWords program, claiming direct and contributory trademark infringement and trademark dilution, among other claims.

Rosetta Stone argued that consumers were confused by the AdWords advertisements into believing that Rosetta Stone was behind ads that in fact were for counterfeit Rosetta Stone software or competitors’ products.  Rosetta Stone also submitted survey evidence showing that consumers were confused, and pointed to internal Google studies acknowledging that consumers were confused about the source or sponsors of AdWords advertisements.

The district court rejected Rosetta Stone’s claims and granted summary judgment to Google, holding that: (1) Google’s keyword ad practices were protected by the “functionality” doctrine of trademark law, (2) Google could not be liable for dilution because it did not compete with Rosetta Stone and, because Rosetta Stone’s mark became more well-known during the period at issue, it couldn’t show actual dilution, and (3) Rosetta Stone’s anecdotal, survey, and documentary evidence of confusion was de minimis and could not support a finding of confusion at trial.  The appellate court reversed the lower court on each of these points.

The Fourth Circuit stated that the lower court misunderstood and misapplied the functionality doctrine in granting judgment for Google. The functionality doctrine protects functional product design features, and “it is irrelevant whether Google’s computer program functions better by use of Rosetta Stone’s nonfunctional mark.”

The Court also held that the lower court erred in ruling for Google on the grounds that it did not use the ROSETTA STONE mark on its own products.   However, U.S. trademark dilution law applies even where the parties do not compete and the statute does not require that the defendant use the mark on its products, but only “in commerce.”

Google had argued that Rosetta Stone’s brand awareness dramatically grew over the relevant timeframe, but the Court pointed out that the law does not require proof of actual harm, but rather only a likelihood of dilution.

The appeals court also found error in the district court’s treatment of the “fair use” exclusion to dilution. It said that the lower court in effect presumed that any non-trademark use was necessarily fair use, and instructed it to “reexamine the nominative fair use defense” on remand, keeping in mind that Google has the burden to prove it.

In sum, the Fourth Circuit corrected various legal errors in the lower court’s opinion and gave the court plenty of direction for its consideration of the evidence on remand.

Sean Tu, Luck/Unluck of the Draw: An Empirical Study of Examiner Allowance Rates, 20 Stan. Tech. L. Rev. (forthcoming) (attached).

The author of this article studied the allowance rates of specific examiners by art unit, technology center and the PTO as a whole.  He looked at over 1.5 million patents in an attempt to analyze every patent ever issued in the last 10 years (from January 2001-July 2011).

The author found two populations of examiners: (1) Examiners who on average, issue a disproportionately small number of patents per year (low allowance rate examiners), and (2) a small but significant population of examiners who issue a disproportionately large number of patents per year (high allowance rate examiners).

The first population of low allowance rate examiners consists mainly of secondary examiners (junior examiner usually with less than 5 years of experience and no signatory authority).  These examiners, on average, issue a very small number of patents per year (less than 5 patents per year).

The second population of high allowance rate examiners consists mainly of primary examiners (senior examiners usually with more than 5 years of experience and full signatory authority).  These examiners, on average, issue a high number of patents per year (more than 50 patents per year).

The author argues that the incentive system may play a role in creating these two distinct populations of examiners. Additionally, he proposes a holistic pre-grant prosecution history review of both low and high allowance rate examiners to ensure a more consistent application of patentability rules.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, May 7, 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 Elisha Manzur by 9 am Monday morning.