Quick reminder that Alice is alive and well

The Federal Circuit made quick work of applying the two step Alice inquiry to a patent application describing a method “enabling the sale of products or services which are available on the internet.”  In five pages, the court’s In re Elbaum opinion quickly affirmed the PTAB’s determination that the claimed invention (1) is directed to “an abstract idea, a commercial transaction that amounts to a method of organizing human activity,” and (2) recites “purely conventional computer functions of storing, receiving, analyzing, and processing data.”  The court explained “[i]f anything, the claim recites generic computer functions, which the specification describes are carried out by conventional computer components.”  While court’s opinion is nonprecedential and by no means groundbreaking, it is a good reminder that Alice is alive and well.

Secondary considerations not M’m! M’m! Good!

Cambell Soup prevailed at the Federal Circuit when Gamon’s design patents for soup-can dispensers were recently invalidated. In Campbell Soup Co. v. Gamon Plus, Inc. the court agreed with the PTAB’s findings that the overall designs had a label area similar to a prior art patent, but disagreed that secondary considerations rendered Gamon’s patents nonobvious. In particular, the court held that evidence of commercial success and praise lacked a nexus to the claimed designs. Here the claimed designs were only portions of a display rack’s label area, cans, and stops, while the commercially successful product (and praise thereof) was the entire display rack. The court held that because the product “undisputedly includes significant unclaimed functional elements, no reasonable trier of act could find that the [product] is coextensive with the claimed designs.” The court held that “as in the utility patent context, objective indicia must be linked to a design patent claim’s unique characteristics.”

Copyrighting logos not a race to the bottom

Speedway Motors, Inc., a purveyor of speed and performance vehicle parts, has trademark registrations on three new logos. In an attempt to further protect their logos, Speedway also pursued copyright registrations but were denied. According to the Copyright Office, Speedway’s new logos fell “into a narrow area where admittedly independent efforts are deemed too trivial or insignificant to support a copyright” and therefore failed to meet the admittedly low threshold for copyright protection. Speedway brought action in Speedway Motors, Inc. v. Perlmutter (D. Neb. 2021) arguing that the Office’s decision was arbitrary and capricious. The court was not persuaded and affirmed the Office’s decision noting that “this is not a race to the bottom. Even if the Copyright Office had previously approved … a work that arguably displayed less creativity than Speedway’s logos, that does not mean that Speedway has satisfied its legal burden.”

This is not to say that no copyright protection exists for any logo.  American Airlines successfully registered their eagle-with-red-and-blue-wings logo in 2018 when the Copyright office found the logo contained “minimal, but sufficient amount of original and creative authorship.  Unfortunately there is no bright line between what creativity is sufficient and what is trivial or insignificant.

SCOTUS reaffirms but narrows assignor estoppel

In Minerva Surgical, Inc. v. Hologic, Inc., the Supreme Court held that that the doctrine of assignor estoppel “is well grounded in centuries-old fairness … [but] … “applies only when an inventor says one thing … in assigning a patent and the opposite in litigating against the patent’s owner.” Here, the inventor filed a patent application and assigned it to his then-company Novacept, Inc. The inventor later left Novacept and founded Minerva while Hologic eventually acquired the resulting patent portfolio. Hologic broadened the scope of patent claims well after the inventor’s assignment.

The district court and the Federal Circuit agreed with Hologic’s argument that the inventor was estopped from impeaching the patent’s validity. However, the Supreme Court held “Assignor estoppel comes with limits” providing three examples, including (1) assignments made before an inventor can make a warranty of validity, (2) arrangements requiring assignment of any future inventions developed during employment, and (3) post-assignment changes in patent claims (which was the situation in this case).

Stepping over Red Wing Shoe to a home forum

The Federal Circuit’s 1998 decision in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc. long stood for the proposition that “a patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement.”  In Red Wing, patentee HHI’s warning letters were deemed insufficient to create personal jurisdiction for a declaratory judgement action in Red Wing’s home state. 

The Federal Circuit’s recent decision in Trimble Inc. v. PerDiemCo LLC limits the reach of Red Wing.  Here, patentee PerDiemCo’s twenty-two communications with Trimble via letter, email, and telephone “over a period of three months” were deemed sufficient to establish PerDiemCo’s personal jurisdiction in Trimble’s home state.  The court held the patentee’s “actions went far beyond ‘solely … informing a party who happens to be located [in California] of suspected infringement…. Rather, PerDiemCo amplified its threats of infringement as the communications continued.’”  The court held that patentee’s attempts to extract a license “in this case are much more akin to ‘an arms-length negotiation in anticipation of a long-term continuing business relationship,’ over which a district court may exercise jurisdiction.”

KSR still flies

The Supreme Court altered the obviousness landscape in 2007 with KSR Int’l Co. v. Teleflex Inc. The Court held that common sense may allow “a person of ordinary skill [to] fit the teachings of multiple patents together like pieces of a puzzle.”  The Federal Circuit recently revisited “common sense” in B/E Aerospace v. C&D Zodiac, which involved an airplane lavatory having two recesses allowing close positioning of an airplane seat.  The court affirmed an obviousness rejection on the grounds that it would have been common sense to incorporate a second recess when the prior art taught a first recess.  This case is a simple reminder that “common sense” may still play a role in an obviousness determination.

SCOTUS reserves registration for BOOKING.COM

The U.S. Patent and Trademark Office (PTO) rejected Booking.com’s trademark application on the grounds that BOOKING.COM is generic.  In deciding whether a given “generic.com” term is indeed generic, the Supreme Court, focused on whether consumers “perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”  In holding that “consumers could understand that a given ‘generic.com’ term to describe the corresponding website or to identify the website’s proprietor,” the Court rejected the PTO’s rule that combining a generic term with “.com” yields a generic mark.

Further USPTO extensions under the CARES Act

The U.S. Patent and Trademark Office (USPTO) has announced further extensions under the Coronavirus Aid, Relief, and Economic Security Act (the CARES Act).  The USPTO’s Notice of Extended Waiver of Patent-Related Timing Deadlines and Notice of Extended Waiver of Trademark-Related Timing Deadlines explain that the time to file certain documents or fees is being extended to June 1, 2020 for certain deadlines occurring on March 27, 2020 through May 31, 2020 – provided that the delay “was due to the COVID-19 outbreak.”