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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., 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 :: March 17, 2014 :: Failure to Consider Distinct Claims and Functionality in Trademark Applications

Our weekly SoCal IP Institute meeting on Monday, March 17, 2014 will be a discussion of patent infringement and venue. Brief synopses appear below.

Wells Fargo v. ABD Insurance, Case No. 13-15625 (9th Cir. Mar. 3, 2014) (available here).  Here, Wells Fargo purchased a company called ABD Insurance and Financial.  Wells Fargo began the process of integrating ABD into Wells Fargo and, as a part of that process, started rebranding.  However, Wells Fargo maintained the website, still used the name in marketing materials and accepted payments under the name.  The prior owners of ABD started a new company shortly after Wells Fargo allowed the ABD trademark registration to lapse.

Wells Fargo sought a preliminary injunction and the district court considered the trademark claim (only) and denied the injunction.  The 9th Circuit reversed stating that false advertising and trademark infringement are separate claims that must be analyzed independently of one another.  The 9th Circuit also gave some guidance on consideration of actual confusion evidence at the preliminary injunction phase and remanded for further consideration.

In re Delta T,  Serial No. 77839055 (T.T.A.B. March 7, 2014) (available here). Delta T sought to register a yellow “fan tip” as a design mark.


The fan tip was already the subject of a U.S. patent.  The application was refused registration on three bases: (1) failure to respond to a request from the examining attorney, (2) functionality, and (3) failure to provide a specimen corresponding to the applied-for mark.  Delta T appealed to the TTAB.

First, the TTAB disposed of the “failure” to respond by saying that the examining attorney had sought a specimen showing the mark prior to “application” to the fan.  The attorney for Delta T responded that nothing was applied prior to the fan coming into existence and, as such, could not respond to the request other than to say that it was impossible to comply.  The TTAB agreed, stating that the explanation was sufficient respond to the examining attorney’s request.

Next, the TTAB tackled the functionality issues with the test from Morton-Norwich: which includes the following factors:

  1. the existence of a utility patent disclosing the utilitarian advantages of the design;
  2. advertising materials in which the applicant touts the design’s utilitarian advantages;
  3. the availability to competitors of functionally equivalent designs; and
  4. facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.

Here, a patent existed and the functional features were touted in marketing materials.  Delta argued that yellow was not functional, but the TTAB indicated that this does not convert a functional mark into a non-functional one.

Finally, the TTAB found that the specimen (showing the mark in three dimensions as applied to a fan) differed from the mark applied for (in two dimensions).  The specimen can be seen here:

PowerFoil X copy

Accordingly, the refusal was affirmed on the final two bases.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March 17, 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.