One of the most common defenses to patent infringement is that the asserted patent is invalid. The reasons for invalidity regularly range from lack of utility, to incorrect inventorship, and even to fraud (as I’ve recently written about). Often, the defendant asserts that the patent is invalid for lack of novelty or non-obviousness–pointing to some piece of evidence that the defendant says conclusively shows that the invention was already in the public domain before the plaintiff even applied for the patent. That evidence is called invalidating “prior art.”

Prior art can spell the unexpected demise of an otherwise valid patent, and it comes in many forms. For several decades, published prior art (not to be confused with prior art in the form of prior uses or sales) consisted of already-existing patents (and applications), trade journals, drawings, articles, websites, standards, whitepapers, etc. But Congress expanded the scope of published prior art dramatically in passing the America Invents Act in 2012. Whereas before prior art consisted merely of “printed publications,” post-AIA, prior art also encompasses things that are “otherwise available to the public.”

The larger–and more modern–universe of possible published prior art is easy to imagine. For example, prior art references are no longer limited to traditional publications and documentary evidence. Instead, additional forms of multimedia come into play–which is fitting in today’s multimedia-packed times. Videos, movies, broadcasts, and recordings all now qualify as prior art, so long as they are available to the public.

But despite this expansion, litigants have not yet fully taken advantage of the change. There have been a few recent uses of video as prior art, such as the iconic iPhone keynote speech made by the late Steve Jobs demonstrating a technology described in an Apple patent. Ironically, in commenting on the “bounce-back” effect that was the subject of the patent, Steve Jobs stated, “boy have we patented it.” But Apple failed to patent it fast enough after the speech.

https://youtu.be/-3gw1XddJuc?t=29m7s

Samsung used clips from Stanley Kubrick’s 2001: A Space Odyssey to argue that Apple’s design patent for the shape of a tablet was invalidating prior art.

Apple really seems to be taking the brunt of video prior art challenges.

Just one week ago, a Federal district judge in the Northern District of Florida addressed–apparently for the first time–whether a YouTube video could constitute prior art. The court, in HVLPO2, LLC v. Oxygen Frog, LLC, 4:16-CV-336 (MW/CAS) (Dkt. No. 133), held that a YouTube video can constitute prior art and that YouTube videos are “sufficiently accessible to the public interested in the art.” Not exactly a groundbreaking finding to someone of my generation, who grew up with YouTube and the internet. Indeed, the USPTO’s own training guides (slide 15) specifically state that YouTube videos are a perfectly acceptable form of prior art. The USPTO has stated that videos qualified prior to the AIA, but there is conflicting authority.

The plaintiff in HVLPO2 had argued that the particular YouTube video in question was uploaded on a random account, so no one interested in the art would have found it. The court pushed back in eccentric fashion, stating:

It appears that Plaintiff is unfamiliar with how YouTube works. A familiar user would know that you don’t need to search for a particular channel to watch the videos uploaded on it. For example, if you want to watch a video of a cat skateboarding, you can search “cat skateboarding”; you don’t need to know that it might have been “CatLady83” who uploaded the video you end up watching.

The court held that the YouTube video in question appeared within the first 20 videos when using appropriate search terms on the site. “Surely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the ‘reasonable diligence’ that the law expects of a hypothetical prior art subject.” I couldn’t agree more, and I recommend this fun cat skateboarding video:

But even though most YouTube videos are generally accessible, not all are available to the public. For example, YouTube videos may be “private” or “unlisted,” potentially removing them from the “otherwise available to the public” category or at least undermining the argument for their accessibility. Thus, as even the court in HVLPO2 noted, the defendant still has to prove the existence of public access to the video prior to the applicable date. This can be accomplished by proffering screenshots of the video in the browser and evidence of that video’s publication date (which is disclosed on the YouTube website and many other video sharing platforms).

Besides the above, there are few other examples of videos (online or otherwise) being used as prior art. This is probably due in part to the current difficulty of searching the vast amount of video and audio–as opposed to text, for example–available on the internet. But as computer learning gets better and better, I expect audiovisual prior art will play a bigger role in both patent prosecution and litigation, so long as that prior art is “otherwise available to the public.”

Toward the end of last week, a couple of friendly ironmongers (John Welch and Ron Coleman) had an interesting dialogue on Twitter, with some great insights about creativity and the law.

John noted that copyright’s requirement of “originality” is not the same as the requirement of “novelty” in patent law. Ron then weaved in some nice insights about creativity and trademark.

The heady discussion led me to rediscover a blog post of mine from more than nine years ago dubbed: The Paradox of Brand Protection: Knowing When to Hit the Consumer Over the Head.

If you can get past the congested text from this beginner’s first few weeks of blogging, it’s actually worth a complete read for the content, but for now, here’s an excerpt with some better spacing:

“I often remind branding professionals that trademark law rewards their creativity. Some seem to perk up with this subtle encouragement. After all, everyone likes to be rewarded, right? Well, one of the unobvious rewards for creativity comes in the prompt timing of when trademark ownership begins.

Being able to own and enjoy exclusive rights on “day one”—meaning, either the first day of use, or even before first use, upon the filing of a federal intent-to-use trademark application—is a big deal in the world of trademark and brand protection. In fact, timing can be everything.

Even a single day can be the difference between having the right to exclusivity and owning nothing at all (except perhaps, the losing end of a lawsuit and a pile of product and packaging ordered to be destroyed).

On the other hand, when rights are not available on day one, you may have an uncontrollable situation; one where competitors and others have an opening to copy or mimic before enforceable rights attach, and in some cases, these actions can make it difficult, if not impossible to obtain exclusive trademark rights at all.

So, the timing of when trademark rights are acquired is quite important, and those in the business of creating brands play an important role in when those rights may come to be.”

Those remarks aren’t ideally suited for the character limit in Twitter, but I’m thinking they reinforce Ron’s point that priority of trademark rights can be impacted by creativity/novelty.

As to my above remarks about federal intent-to-use trademark applications, I’m also mindful of this little dialogue shared with Ron a few years back, but nowhere near nine years ago.

So, the good news for the day is that the law, especially intellectual property law (copyright, patent, and trademark) does reward creativity, in a variety of ways, and each in their own way.

We’re looking forward to continuing this discussion, among many others, with those interested, at the upcoming Meet the Bloggers XIV unofficial INTA event near INTA in Seattle next month.

During the official portion of the INTA program, I’ll be reflecting on the impact of a creative legal theory that consumed lots and lots of lawyers’ hours (billable/non-billable) for a quarter century.

And, finally, let’s not forget about Duey’s little friend, right over here:

 

 

Five months ago to the day, I predicted that the U.S. Supreme Court would uphold inter partes review (“IPR”) proceedings at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) as constitutional in Oil States v. Greene Energy. On April 24, 2018, the Court so-held.

Back in November, the questions at oral argument in Oil States raised numerous intriguing issues:

  • Whether IPR proceedings are “examinational” rather than “adjudicatory.”
  • Distinctions between “public rights” and “private rights.”
  • The relevance of 19th-century cases on patents, such as McCormick v. Aultman.
  • The interplay of due process, given a patentee’s usually-substantial investment in the patented invention and reliance on the patent grant.
  • Opportunities for subsequent appellate review.

So which of these became the deciding issues in the Court’s opinion? Ironically, Justice Thomas–who has been known to refrain from questions at oral argument and was the only Justice not to ask a question during oral argument in this case–wrote for the 7-Justice majority. Justice Gorsuch wrote a dissenting opinion.

First, the majority held that IPR proceedings do not violate separation of powers by invading the sphere of the Judiciary under Article III of the Constitution:

When determining whether a proceeding involves an exercise of Article III judicial power, this Court’s precedents have distinguished between “public rights” and “private rights.” Those precedents have given Congress significant latitude to assign adjudication of public rights to entities other than Article III courts.

Recognizing that the Court has not been clear on this distinction, the Court provided some clarity:

[T]he public-rights doctrine applies to matters “‘arising between the government and others, which from their nature do not require judicial determination and yet are susceptible of it.’” Inter partes review involves one such matter: reconsideration of the Government’s decision to grant a public franchise.

Inter partes review falls squarely within the public-rights doctrine. This Court has recognized, and the parties do not dispute, that the decision to grant a patent is a matter involving public rights—specifically, the grant of a public franchise. Inter partes review is simply a reconsideration of that grant, and Congress has permissibly reserved the PTO’s authority to conduct that reconsideration. Thus, the PTO can do so without violating Article III.

The Court went on to incorporate Article I, Section 8, Clause 8 of the Constitution, which gives Congress the power to “promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”:

Congress can grant patents itself by statute. And, from the founding to today, Congress has authorized the Executive Branch to grant patents that meet the statutory requirements for patentability. When the PTO “adjudicate[s] the patentability of inventions,” it is “exercising the executive power.”

Inter partes review is “a second look at an earlier administrative grant of a patent.”  The Board considers the same statutory requirements that the PTO considered when granting the patent…. So, like the PTO’s initial review, the Board’s inter partes review protects “the public’s paramount interest in seeing that patent monopolies are kept within their legitimate scope,” Thus, inter partes review involves the same interests as the determination to grant a patent in the first instance.

The primary distinction between inter partes review and the initial grant of a patent is that inter partes review occurs after the patent has issued. But that distinction does not make a difference here. Patent claims are granted subject to the qualification that the PTO has “the authority to reexamine—and perhaps cancel—a patent claim” in an inter partes review. Patents thus remain “subject to [the Board’s] authority” to cancel outside of an Article III court.

This Court has recognized that franchises can be qualified in this manner. For example, Congress can grant a franchise that permits a company to erect a toll bridge, but qualify the grant by reserving its authority to revoke or amend the franchise.

The Court then went on to distinguish 19th-century cases appearing to state that patents are private, not public, rights:
To be sure, two of the cases make broad declarations that “[t]he only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent.” (citing McCormick) But those cases were decided under the Patent Act of 1870. That version of the Patent Act did not include any provision for post-issuance administrative review. Those precedents, then, are best read as a description of the statutory scheme that existed at that time. They do not resolve Congress’ authority under the Constitution to establish a different scheme.

The Court also noted that even the English legal system, from which the U.S. derives many of its principles, contained a similar patent revocation process by petition to the Privy Council:

The Patent Clause in our Constitution “was written against the backdrop” of the English system. Based on the practice of the Privy Council, it was well understood at the founding that a patent system could include a practice of granting patents subject to potential cancellation in the executive proceeding of the Privy Council. The parties have cited nothing in the text or history of the Patent Clause or Article III to suggest that the Framers were not aware of this common practice. Nor is there any reason to think they excluded this practice during their deliberations.

For similar reasons, we disagree with the dissent’s assumption that, because courts have traditionally adjudicated patent validity in this country, courts must forever continue to do so.

The Court also rejected the argument that because IPR “looks like” the exercise of Article III judicial power, it is infringing on that power. And it “emphasize[d] the narrowness of [its] holding,” noting that appellant Oil States had not raised a due process challenge. Finally, the Court held that IPR proceedings do not abridge the “right of trial by jury” under the Seventh Amendment because Congress properly assigned the matter of patent rights to adjudication before the PTAB.

Justices Breyer, Ginsburg, and Sotomayor concurred, stating only that the opinion “should not be read to say that matters involving private rights may never be adjudicated other than by Article III courts, say, sometimes by agencies.”

Justices Gorsuch and Chief Justice Roberts dissented:

Today, the government invites us to retreat from the promise of judicial independence. Until recently, most everyone considered an issued patent a personal right—no less than a home or farm—that the federal government could revoke only with the concurrence of independent judges. But in the statute before us Congress has tapped an executive agency, the Patent Trial and Appeal Board, for the job. Supporters say this is a good thing because the Patent Office issues too many low quality patents; allowing a subdivision of that office to clean up problems after the fact, they assure us, promises an efficient solution. And, no doubt, dispensing with constitutionally prescribed procedures is often expedient. Whether it is the guarantee of a warrant before a search, a jury trial before a conviction—or, yes, a judicial hearing before a property interest is stripped away—the Constitution’s constraints can slow things down. But economy supplies no license for ignoring these—often vitally inefficient—protections. The Constitution “reflects a judgment by the American people that the benefits of its restrictions on the Government outweigh the costs,” and it is not our place to replace that judgment with our own.
This dissent is not at all surprising, given that during oral argument both Justices asked questions that suggested they doubted that patents were public rights. It goes on to say:
Article III, explains that the federal “judicial Power” is vested in independent judges. As originally understood, the judicial power extended to “suit[s] at the common law, or in equity, or admiralty.” From this and as we’ve recently explained, it follows that, “[w]hen a suit is made of the stuff of the traditional actions at common law tried by the courts at Westminster in 1789 … and is brought within the bounds of federal jurisdiction, the responsibility for deciding that suit rests with” Article III judges endowed with the protections for their independence the framers thought so important.
The dissent disputed the relevance and value of the references to the Privy Council, colorfully stating that the cases cited by the majority “represent the Privy Council’s dying gasp in this area.” And Justice Gorsuch embarked on a history lesson about the early years of our Republic. Wrapping up, the dissent expressed concern:
Today’s decision may not represent a rout but it at least signals a retreat from Article III’s guarantees. Ceding to the political branches ground they wish to take in the name of efficient government may seem like an act of judicial restraint. But enforcing Article III isn’t about protecting judicial authority for its own sake. It’s about ensuring the people today and tomorrow enjoy no fewer rights against governmental intrusion than those who came before. And the loss of the right to an independent judge is never a small thing. It’s for that reason Hamilton warned the judiciary to take “all possible care … to defend itself against” intrusions by the other branches. It’s for that reason I respectfully dissent.
As demonstrated by the Court’s opinion and the dissent, the primary issue was whether patents were public or private rights. The majority held they were public, between the government and the grantee, and its other holdings flowed from that decision. The dissent deemed patents private, akin to land grants and other personally-held rights, citing cases such as McCormick. In the end, due process did not play a role in the majority’s decision, but seemed to justify the dissent’s view that IPR proceedings are a form of Executive Branch encroachment. Given the majority’s explicitly-narrow holding and the dissent’s concerns, my guess is that the Court will be revisiting Oil States on a related issue in the near future. As always, stay tuned!

 

On Monday, November 27, 2017, the U.S. Supreme Court heard argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712. The case presents a direct challenge to the U.S. Patent and Trademark Office’s (“USPTO’s”) “inter partes review” (“IPR”) process, under which third parties can petition the USPTO’s Patent Trial and Appeal Board (the “PTAB”) to cancel one or more claims of an already-issued patent.

Photo Credit: Fox

ScotusBlog recently offered a brief introduction to Oil States’s “remarkably pedestrian” backstory:

Petitioner Oil States sued respondent Greene’s Energy, contending that Greene’s Energy was infringing a patent that Oil States holds on technology useful for preserving wellhead equipment in the oil and gas industry. Predictably, Greene’s responded by seeking inter partes review, hoping that the PTO would invalidate the Oil States patent. When the PTO concluded that the patent in fact was invalid, Oil States raised the stakes, arguing that Congress violated Article III and the Seventh Amendment when it authorized an administrative agency to invalidate the patent without affording Oil States an opportunity for a jury trial.

If the Supreme Court decides that IPR is unconstitutional, the holding will have major consequences. As an initial matter, many would-be litigants have chosen to pursue IPR petitions instead of patent defenses or claims in court because the IPR process is faster and more cost-effective than federal litigation. For example, a typical medium-sized patent dispute costs around $3M to litigate in federal court, but IPR proceedings are one-tenth the cost. The average time to trial is around 2 years, 3 months, whereas IPR proceedings take just over half as long to conclude. In addition to offering advantages to litigants, IPR proceedings have played a significant role in lightening the federal patent docket, addressing more than 1,000 patent cases with dispositive effect. Usually, patent cases are stayed pending an IPR proceeding. Thus, the IPR process in many cases eliminated the need for protracted federal litigation.  

As Oil States neared oral argument, several commentators offered their take on how the case might turn out. But the Justices’ questions at oral argument provide better hints at whether affirmance or reversal will result:

Right out of the gate, Chief Justice Roberts asked the petitioner, Oil States, to explain its distinction between the USPTO’s post-grant procedures that are “examinational” in nature, versus those which are adjudicative. The distinction relates to the federal government’s separation of powers between its three branches, with the judiciary serving the role of adjudicating disputes–as provided by Article III, which vests the “judicial power” in the federal courts. Getting to the heart of the matter, Justice Sotomayor asked, “What is so fundamentally Article III that changes [the IPR] process into an Article III violation?” Suggesting an answer to her own question, the Justice stated, “Both [IPR processes and other post-grant processes] are just informing the PTO of the nature of its error and giving it an opportunity to correct its error.” Justice Ginsburg later chimed in: “[IPR] is geared to be an error correction mechanism and not a substitute for litigation.” Justice Breyer appeared to agree, stating, “I thought it’s the most common thing in the world that agencies decide all kinds of matters through adjudicatory-type procedures often involving private parties. So what’s so special about this one…?” Justice Kagan remarked, “it seems a little bit odd to say, sure, the government can reexamine this…but there’s some line that falls short of what” is constitutional.

Justice Gorsuch suggested that the distinctions between permissible examination and impermissible adjudication could be avoided by focusing on whether there is a private or public right involved, the idea being that public rights (e.g., licenses) need not be adjudicated by an Article III court. Justice Kennedy asked, “[C]ould Congress say…we will grant you a patent on the condition that you agree to this procedure; otherwise, we don’t give you the patent?” Justice Alito later asked a similar question. Justice Kennedy followed up, “Could Congress say that we are reducing the life of all patents by 10 years?” When counsel for Oil States answered yes, he responded, “Well, then that–doesn’t that show that the patent owner has limited expectations as to the scope and the validity of the property right that he holds?” Justice Gorsuch begged to differ, however, stating “we have a number of cases that have arguably addressed this issue…in which this Court said the only authority competent to set a patent aside or to annul it or to correct it for any reason whatever is vested in the courts of the United States.” But Justice Sotomayor, seemingly rejecting that argument, stated that at least one of the cases cited by Justice Gorsuch (McCormick v. Aultman) did not involve determinations of constitutional law, nor did it involve statutory analysis of post-grant procedures because none were applicable or available at the time that case was decided.

Turning to the respondent, Greene’s Energy, Justice Breyer fired off the first question, asking whether it was a “problem” that a company could invest $40B in developing a patent and could have it for 10 years before an IPR proceeding cancelled the patent. He asked, “Is there something in the Constitution that protects a person after a long period of time and much reliance from a reexamination at a time where much of the evidence will have disappeared,” suggesting a due process-flavored argument. Chief Justice Roberts followed up, asking whether Greene’s Energy’s position is that “If you want the sweet of having a patent, you’ve got to take the bitter that the government might reevaluate it at some subsequent point.” Finding agreement, he said, “Well, haven’t our cases rejected that…proposition? I’m thinking of the public employment cases, the welfare benefits cases. We’ve said you…cannot put someone in that position.”

The discussion shifted to whether the availability for subsequent judicial review of the PTAB’s IPR decisions bears on IPR’s constitutionality. Justice Sotomayor remarked, “That..was what troubled me deeply about you telling Justice Kagan that, without judicial review, that this would be adequate. I mean, for me, this–what saves this, even a patent invalidity finding, [is that it] can be appealed to a court….[H]ow can you argue that the…PTO…has unfettered discretion to take away that which it’s granted?”

Justice Gorsuch again brought up the public-private rights distinction, noting that “there’s an abundance of law going back 400 years. Justice Story says it. I mean, you know, this is not a new idea, that once [a patent is] granted, it’s a private right belonging to the inventor.”

Finally, the Court turned its attention to the Government’s argument. Justices Gorsuch and Roberts asked about the “bitter with the sweet” argument. The Government responded that employment and welfare decisions are often made by executive officials and must always comport with due process, but need not be adjudicated by courts in the first instance.

Justices Breyer and Roberts then steered the conversation toward factors that might help distinguish private rights from public rights. Justice Breyer expressed the view that the large investment underlying a patent might justify a due process or takings clause argument, but the Government responded that there is no as-applied challenge in this case.

The Government also brought up the adjudication versus examination point, arguing that IPR is distinct from typical judicial functions, which involve determining liability between private litigants and assessing monetary damages. For example, an infringement action involves determining liability for use of a patented idea and the reasonable royalty damages that should be paid for that use. IPRs, on the other hand, merely address patentability and do not involve liability or damages. The Government also noted that the executive frequently employs adjudicative proceedings to take appropriate executive action. IPR is no different.

In the end, as always, divining the eventual decision from the Justices’ questioning is more art than science–no puns intended. Justices Sotomayor, Ginsburg, Breyer, and Kagan all appear to endorse the view that IPR proceedings do not violate separation of powers. Justices Kennedy and Alito also seem to fall in the same camp. On the other hand, Justices Breyer, Roberts, and Sotomayor’s questions suggest that these Justices think there may be serious due process concerns. Only Justices Gorsuch, Breyer, and Roberts were interested in the public rights versus private rights distinction, but two of those Justices expressed doubts about the distinction’s defining features. If I had to call it, I would guess that the Court will find that IPRs, as currently structured, do not violate separation of powers or due process and are therefore constitutional. Stay tuned for updates on this important case.

Have you ever seen an ad for something and thought to yourself, “Hey, I had that idea years ago!” Some people take that thought a step further. One Florida man claims to have invented the iPhone in 1992, and is suing Apple to the tune of over $10 billion.

Thomas Ross filed a patent application for an “Electronic Reading Device” having a backlit LCD screen in 1992. Below are some images from Ross’s original filing, as presented in his Complaint against Apple.

1-main

1-main2

The application was ultimately abandoned in 1995 for failure to pay required fees. Ross therefore does not hold a patent on his invention. A patent application alone, without a resulting issued patent, does not itself grant any actionable rights. Even if Apple did copy the disclosed design in Ross’s patent application, he would not have a cause of action for patent infringement based on his abandoned application.

Since Ross cannot sue for patent infringement, he instead appears to hang his case entirely on copyright infringement. In 2014, Ross registered the drawings and text from his abandoned patent application for copyright protection. Importantly, copyright protection attaches to a work when it is initially “fixed” or written. Therefore, any copyright rights that Ross holds in the drawings and text originated when he initially wrote them in 1992.

However, copyright and patent are two very different animals. Copyright protects creative works, such as literary, musical, dramatic, pictoral, graphic, and sculptural works. Copyright protection is not available for ideas, facts, or utilitarian aspects of an item. Ross’s copyright rights cannot protect the workings of an iPhone-like device itself. Copyright is not a substitute for a failure to obtain patent protection.

While Ross may have a valid copyright in the shape and other creative physical aspects of his Electronic Reading Device, an allegation of copyright infringement requires proof of actual copying.   That is, a plaintiff must show that the defendant actually copied the plaintiff’s copyrighted work, which may be shown by access to the plaintiff’s work and similarity between the works. This is required because copyright law does not protect against independent creation. If two people separately create the same glass vase or write the same poem, entirely independent of one another, they may both hold a copyright for the work. Ross does not appear to provide any evidence toward proving that Apple actually copied his works.

Based on the facts presented in Ross’s Complaint, he is unlikely to succeed in the copyright allegations.  The text of Ross’s 1992 patent application reveals what was likely an innovative design. He describes the device “greatly improve[ing] ready access to reading material without the traditional inconvenience of bulk associated with accessibility of large amounts of printed text, and bundled in a light, compact and easily portable device that would additionally function as a note-book (optionally), calendar, clock, timer, calculator, factsimile [sic] devices, cellular phone, [and] message handler.” Surely an innovative concept in 1992. Unfortunately, an idea itself, no matter how revolutionary, is not protectable intellectual property. Ross’s failure to obtain patent protection for his invention has led to a lack of enforceable rights.

 

– Nicola Hill, Browne Jacobson

Season’s Greetings one and all! Welcome to the Christmas Day DuetsBlog, where you can find a spot of light-hearted IP cheer being brought to you direct from the fireside in the United Kingdom.

Now, I hope that Father Christmas has been good to all of our readers this year and that you have received everything you hoped for. I also wonder whether any of you actually encountered the red-suited fellow last night, or whether, once again he was elusive, leaving only his tell-tale empty glass and a few cookie crumbs behind?

If, like me, you are yet to spot Saint Nick as he emerges from the chimney and deposits his gifts, fear not, because I think I have found the answer… We can all be on stand-by, prepared and ready for next year, as I have discovered the patented device we all need in our homes for Christmas Eve 2016:

SANTA CLAUSE DETECTOR

 Santa Patent

 

 

 

 

 

 

 

 

 

 

 

 

 

 

US Patent 5523741

“A children’s Christmas Stocking device useful for visually signalling the arrival of Santa Claus by illuminating an externally visible light source having a power source located within said device.”

 

Now, one cannot doubt the novelty of this invention, (if there was ever a ‘novelty’ product on the market, this is surely it). The USPTO clearly thought it patentable subject matter too, and who could blame them – I am not sure that any invention before it has so boldly asserted that it can ‘visually signal the arrival of Santa Claus’ by means of a Santa-sensor.

In terms of the other tests for patentability, the usefulness of this invention is beyond doubt. I have already alluded to the fact that there are hundreds of us out there hanging out (their stockings) in the hope of a glimpse of that white beard. But, I hear you cry, isn’t it obvious? Well, sure, with the benefit of hindsight, but hey, as the old adage goes, ‘why has no-one done it before?’

What would Santa himself think of this invention, however? It is, after all, a bit of a spoiler don’t you think? Off he goes, down the chimney when suddenly the lights from all of the kids’ santa clause detectors blare out at him, causing temporarily blindness and sending him into confused disorientation. Cue the kids jumping out from behind the sofa: Santa’s cover well and truly blown, the magic of Christmas lost forever.

When put like that, perhaps it doesn’t seem such a great invention after all… On second thoughts, I think we can do without the Santa detector in our house for another year!

I would just like to take this opportunity to thank you for taking the time to read the DuetsBlog, particularly on Christmas Day. All that remains is for me to wish you a Merry Christmas one and all, and here’s to a very happy, productive and IP-filled 2016!

Disclaimer: Please note: The US clearly take xmas MUCH more seriously that the UK because we found no similar such patent this side of the pond – but please feel free to email us if you do find any!

If you are a member of the Cult of Apple, like tech, or even just watch the news, you’re probably aware that yesterday was Apple’s big fall event where they announce new product launches and updates.  The event showcased a new iPhone with enhanced photo features (as this Wired article aptly puts it “Because selfies.”), new iPads (including a BIG one – which I’m kind of intrigued by), an updated Apple TV, and one totally new product just in time for back to school – the $99 Apple Pencil.

ApplePencil

Yes, it’s a stylus.

Yes, at a whopping $99, I know I’ll probably lose it.

And, yes, they’ve applied for patents for a stylus in the past.  See, e.g., here.  But in addition to the technical advances of the new stylus, what about trademark protection?  Layering IP protection with patents, design patents, trademarks, and trade dress protection is a highly recommended strategy to protect all facets of the IP for a product.  Apple knows this strategy well – filing even on icons and relying on their design patents to mount an expensive intellectual property attack against Samsung.

In advance of an Apple event, I like to review trademark filings to see what Apple may have coming up.   It’s one of the best ways to determine what might be launched at a new event since patents are not published until at least 18 months after they have been filed.  A recent review of applications filed in 2015 identified nothing really out of the ordinary, aside from the TUE 9 marks, which actually are design marks referring to the “look and feel” of at least part of the Apple Watch graphic user interface – the TUE 9 being letters and numbers in the calendar and an interesting topic itself, but I digress.  There are no pending applications (as of a search last night) for APPLE PENCIL, or even PENCIL for a stylus.  So why might that be?

Well, a search for “stylus” as the good and PENCIL as the mark reveals a prior registration:  PENCIL BY FIFTYTHREE.  The registration, issued on November 18, 2014, is owned by FiftyThree, Inc. for “computer stylus; stylus for portable electronic devices including tablets.”  Their product is available for purchase on their website and through Amazon.

pencil_fiftythree

 

 

FiftyThree…FiftyThree…now where have I heard that before?  Oh right, I wrote a prior post on the launch of Facebook Paper.  While I’m on the subject, where did that “next greatest thing” disappear to? (I guess it still exists.)   Facebook’s adoption of Paper was challenged in a blogpost by FiftyThree, which had a registration for PAPER BY FIFTYTHREE for various computer software and smartly filed an application for PAPER in the wake of Facebook’s announcement of the Facebook Paper app. There’s a thunderstorm in the Twin Cities as I write this, so I can’t help but to ask – does lightning ever strike in the same spot twice?  This sure looks like a rare example of that.

Will we see a PENCIL filing by FiftyThree and some challenging words?  Maybe so.  An internet search revealed that a product recently sold as Pencil By FiftyThree was available on the Apple Store, but clicking on the link provides an error page.

YahooPencilFiftyThree

I always prefer to err on the side of optimism, so given Apple’s obvious knowledge of FiftyThree’s product, I’d like to assume that these two are collaborating.  FiftyThree has yet to take to their blog like they did with the Facebook Paper issue, but VentureBeat blatantly called Apple out on copying and a spokesperson provided comment, although quite different in tone than the Facebook Paper blogpost.

Every Pencil needs Paper. We’re excited to launch the all-new Paper on iPhone and iPad tomorrow http://www.fiftythree.com/coming-soon, after which creative thinkers everywhere will see their phones and their ideas in a new light. We believe pen-and-touch input is the foundation for a new type of productivity geared towards creative thinking. Our and Apple’s products open up these tools to even more people, which we support. We at FiftyThree are excited to reveal where we think the next chapter of productivity is headed.

As you can gather from these comments, FiftyThree’s success is dependent upon Apple’s iPad and iPhone success.  It likely significantly relies on the iPad, and therefore the App Store, for sales of its Paper app.  The Pencil is for use with the Paper app, so the sales of the Pencil are entwined with the Paper.

I guess where lightning strikes twice, you should THINK to buy a lottery ticket.  Seriously, how can a company get copied twice at such a high level by two of the most highly valued companies in the world?

I’d love to read what people think about Apple’s recent branding – the  iPod, iPhone, and iPad to now the Apple Watch, Apple TV, Apple Music, and Apple Pencil.  Recognizing that one of the keys to Apple’s success is minimalist, user-friendly design, and their branding strategy pairs well with that, do you think they need to get more creative with their product names?

I’m also curious which design you like better – the Apple Pencil or the Pencil by FiftyThree?  Personally, I like the carpenter or utilitarian pencil appearance of the Pencil by FiftyThree over the more traditional Apple Pencil.

A Hoppy Halloween from all of us ghoulish folks here at DuetsBlog!

Spending for Halloween this year is likely to hit $11 billion dollars, possibly more than is spent decorating for Christmas.  This fact is easily witnessed in many neighborhoods around town, especially this one where just about every house has some sort of Halloween decoration.

Although not pictured here, I also found a creepy Santa statute with a bloody head mere blocks from where a drunken zombie Santa recently traumatized some teenagers by unwittingly breaking into their home after a rough night out.

So with all this spending on Halloween, and the number of novelty items that can be purchased for the holiday, I thought it might be fun to peruse patents and patent applications for your trick-or-treating necessities.

First, there is the all-important costume.

In the age of Frozen, Transformers, Teenage Mutant Ninja Turtles, and Spiderman, you have to wonder what Disney, Marvel and Hasbro make off of costume licensing.

For your child, you’ll probably want something “weather and climate adaptive,” breathable, and reflective.

Your teenage boy probably wants something that oozes blood.

And you may just want something funny.

You’ll need a vessel for collecting candy.

The bigger and easier to haul around, the better.  Wheels and a handle?  Check.

Don’t forget to say “Trick or Treat.”

Here’s a patent application for a candy bag incorporating a speaker activated by a remote managed by the parent, where you can zap (er, gently remind) your trick-or-treater to say those magic words (along with a “thank you”).

But be wary of what may lurk in the yard.

This is a little creepy.

 

 Have a safe and sugary Halloween!

 

As the court ruled, and repeatedly reminded: "Toilet paper. This case is about toilet paper."

Just last week the United States Court of Appeals for the Seventh Circuit enjoyed applying only a modicum of potty humor while deciding Georgia Pacific Consumer Products LP v. Kimberly-Clark Corporation, a case involving alleged non-traditional trademark rights in Georgia-Pacific’s Quilted Diamond Design embossed on the surface of toilet paper (shown above):

  • "Georgia-Pacific unrolled this suit against Kimberly-Clark, alleging unfair competition and trademark infringement under the Lanham Act, for Kimberly-Clark’s introduction of its redesigned toilet paper."
  • "We review the district judge’s grant of summary judgment de novo, viewing all facts in favor of the nonmoving party. . . . Therefore, despite the fact that the judge dutifully plied her opinion, we now wipe the slate clean and address Georgia-Pacific’s claims."

Actually, I think the court could have enjoyed itself even more with this case, since most agree double ply humor is far superior than single ply, especially when it’s on a roll.

Returning to the substance in hand, the Seventh Circuit Court of Appeals agreed with the district court that Georgia-Pacific’s Quilted Diamond Design, found on the surface of Quilted Northern brand toilet paper — and made recognizable from the television commercials with cartoon quilters — "is functional and therefore cannot be protected as a registered trademark."

It is unfortunate for Georgia-Pacific that it was unable to capture both patent protection for a limited term and trademark protection for eternity. They are not necessarily mutually exclusive intellectual property rights, but as this decision painfully demonstrates, if planning, coordination, and great care is not exercised, any hope of eternal trademark protection will be wiped away.

As you may recall, I’ve emphasized the importance of legal and marketing types working together in graceful collaboration to stand a reasonable chance of avoiding the many pitfalls in creating valid and protectable traditional and non-traditional trademark rights (Furminator, Smash Burger, and Bawls Guarana).

But, this decision, rejecting trademark protection for the above-depicted federally-registered design trademarks, highlights the importance of not only having talented legal and marketing types working together for common intellectual property goals, but also, the equally strong need for very close collaboration between patent counsel and trademark counsel.

Continue Reading Quilted Toilet Paper Design Flushed As Functional

If the "Soup Nazi" were employed as a Trademark Examining Attorney at the USPTO, he might be heard crabbing at the makers of Samuel Adams Boston Lager, were they to attempt to register or claim as a trademark the shape of their "new" beer glass from 2007, now almost four years old: "No trademark for you!" ("Best of Soup Nazi" on Seinfeld, here). Why?

Not because the glass hasn’t yet been in use in commerce for five years (after all, it’s possible to establish acquired distinctiveness with less than five years use in some circumstances).

And, not because of any interesting discussion about whether the shape or configuration of a beer glass is capable of enjoying immediate trademark rights upon first use, as a form of inherently distinctive product packaging or trade dress for liquid courage, instead of being subject to the U.S. Supreme Court’s stated prohibition on inherently distinctive product configuration trademarks (applicable, I suppose, if you’re selling empty beer glasses as opposed to beer from a tap).

Anyway, were such trademark protection and registration sought, any refusal would more likely result from some unfortunate marketing statements I recently noticed in Sam Adams advertising and on their branded cardboard restaurant and bar coasters, complete with arrows attributing these statements to various apparently functional features of the beer glass itself:

  • "Outward turned lip delivers beer to front of tongue where sweetness (malt) is tasted."
  • "Bead inside rim creates turbulence to release flavor and aroma as beer enters mouth."
  • "Narrowing the glass at the top retains the hop aroma and sustains the head."
  • "Rounded shape collects aromas."
  • "Thinner walls and rounded shape maintain proper beer temperature longer."
  • "Laser etchings on bottom create bubbles for constant aroma release."

The Sam Adams website also features a page entitled "Function Over Form" showing a blueprint of the beer glass design and noting, it is: "The result of two years of scientific research, thousands of hours of taste tests and dozens of rejected styles. And that’s just the glass."

These statements are particularly interesting in light of the apparently quite literal "Better Glass of Beer" tagline for Samuel Adams beer and glasses. (Note how the tagline still resides on the Supplemental Register for beer in Int’l Class 32, but it somehow obtained federal registration without a showing of acquired distinctiveness in connection with beverage glassware in Int’l Class 21).

Now, some of you might be aware of the fact that the makers of Sam Adams already have design patents on their beer glass shapes and they recently asserted them in an ITC (International Trade Commission) proceeding against San Tan Brewing Company and others, so who needs trademark protection anyway, right?

Wrong. Trademark protection potentially lasts forever and is not subject to any term limits as is the case with patent protection. In addition, although I don’t consider myself a patent type by any stretch of the imagination, I’m left wondering whether the overt marketing statements identifying functional features of the beer glass design could be useful in attempting to invalidate the issued patents, or at least, narrow their scope of protection, since design patent protection extends only to the ornamental non-functional aspects of a design.

So, to sum it up, these kinds of marketing statements (loaded with functional references) remind me of yet another example of when marketers and trademark types may not be in close collaboration or on the same page, as appeared to be the case with the previous and unfortunate Furminator, Smash Burger, and Bawls Guarana marketing statements.