Santa Fe IP

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.

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.

The U.S. Patent and Trademark Office (USPTO) has announced even further extensions under the CARES Act.  In their notice dated June 29, 2020 sets forth certain fees and filings for small and micro entities due between March 27th and September 29th will be considered timely if submitted by September 30, 2020.

The U.S. Patent and Trademark Office (USPTO) has announced further extensions under the CARES Act for small and micro entities.  The USPTO’s CARES Act Notice dated April 28, 2020 explains that the time to file certain documents or fees by small and micro entities “that would have been deemed timely filed, if filed by June 1, 2020 … will now be deemed timely filed if filed by July 1, 2020.”

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.”

Although Fossil was using Romag fasteners on Fossil products for years, Romag discovered that factories making Fossil products had begun using counterfeit fasteners and that “Fossil was doing little to guard against the practice.”  In the following suit, the district court rejected Romag’s request for the infringer’s profits finding that Fossil had acted callously, but not willfully.  Ultimately landing before the Supreme Court, the Court resolved a circuit split and unanimously rejected the finding of willfulness as a prerequisite to an award of a trademark infringer’s profits.  In a textualist’s reading of the Lanham Act, Justice Gorsuch noted that another section of the Act makes willfulness a precondition to a profits award, but the relevant §1125(a) “has never required a showing of willfulness to win a defendant’s profits,” and that the Court does not “usually read into statutes words that aren’t there.”

The U.S. Patent and Trademark Office (USPTO) has announced the availability of extensions under the Coronavirus Aid, Relief, and Economic Security Act (the CARES Act).  The USPTO’s Notice of Waiver of Patent-Related Timing Deadlines and Notice of Waiver of Trademark-Related Timing Deadlines explain that the time to file certain documents or fees is being extended 30 days for certain deadlines occurring on March 27, 2020 through April 30, 2020. The late document or fee must include the “statement that the delay in filing or payment was due to the COVID-19 outbreak.”

In particular, the statement must make clear that a person “associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment” (emphasis added).

Infringement was recently affirmed in an interesting design patent case where the defendant offered no prior art, nor proffered any jury instructions.  In Hafco Foundry and Machine Co., Inc. v. GMS Mine Repair and Maintenance, Inc., defendant GMS argued “the jury should have been instructed that ‘small differences between the accused and the claimed design’ will avoid infringement.” Such argument carried little weight as the Federal Circuit affirmed “the patented and accused designs need not be identical in order for design patent infringement to be found…. The controlling inquiry is how the ordinary observer would perceive the article.”  Not a revolutionary holding, but a good reminder of the value of design patents (and the importance of thorough lawyering).

The Federal Circuit recently affirmed a determination of inequitable conduct in GS Cleantech Corp. v. Adkins Energy LLC.  Although inventors had been warned of the on-sale bar (requiring an invention not be sold or offered for sale more than one year before filing), the inventors initially did not disclose a relevant offer.  The Federal Circuit affirmed the district court’s conclusions that:  plaintiff CleanTech knew the offer threatened patenting and took steps to hide it from the USPTO; the inventors and plaintiff’s patent firm (“firm”) withheld evidence and made false representations to the USPTO; CleanTech and the firm attempted to coerce support for their false representations; the inventors and the firm prepared a “patently false” declaration; and they failed to correct the false declaration.  Notably, the Federal Circuit affirmed the district court’s conclusion that “[t]he only reasonable inference is that [the firm] believed the [I]nventors had made an offer and, … they chose advocacy over candor.”

The Federal Circuit recently affirmed in Blackbird Tech v. Health In Motion an award of $360k in attorney fees against a patent troll “to deter future abusive litigation.” Non-practicing entity Blackbird sued Health In Motion (HIM) alleging that HIM’s exercise equipment infringed Blackbird’s U.S. Patent No. 6,705,976. Despite offering “nuisance value settlements” ranging from $80k to zero, Blackbird continued litigation for more than nineteen months. The Federal Circuit affirmed the attorney fees award because “[t]o hold otherwise would, in effect, cause [HIM] to make the untenable choice between: (1) submitting to Blackbird’s settlement demands–small as they may be; or (2) risking non-reimbursement of attorney fees accrued in defending themselves against Blackbird’s unmeritorious claims.”