An Action-Packed Summer for PTAB

uspto_seal_full_colorBy Don Wang

If you spent this past summer looking forward to the most recent Fantastic Four movie, I am deeply sorry for the utter disappointment. However, if you have been following the news of the Patent Trial and Appeal Board (PTAB) instead, this has been a truly great summer! Following the roll-out of the American Invents Act, the United States Patent and Trademark Office (USPTO) started to solicit public comments for a proposed rule change package for trials before the PTAB and has proposed a pilot program to have a single Administrative Patent Judge determine the institution of an Inter Partes Review. Continue reading

“Don’t Copy My Style!” Exxon’s Trademark “Style” Infringement Claim Against Fox

exxonBy Chike Eze

Consumers associate a trademark with a familiar experience associated with a specific source. For example, consumers associate the “golden arches” symbol with McDonald’s cheeseburgers and fries. To protect such profitable associations, an owner of a well-known trademark may file for federal registration with the United States Patent and Trademark Office (“USPTO”). USPTO requires the trademark owner, among other things, to police its mark by challenging others who impermissibly copy and use the mark. Therefore, it is not particularly newsworthy that Exxon Mobil Corporation (“Exxon”), an owner of several federally-registered trademarks, brought a complaint against 21st Century Fox et. al. (“Fox”) alleging federal trademark infringement, inter alia. However, Exxon makes an unusual argument that Fox infringed Exxon’s marks by copying the marks’ common “style.” Continue reading

Can Kris Jenner Trademark “Momager”?

kris_jenner By Denise Kim

We love them, or we hate them. Either way, we see them everywhere. I am referring to the one and only Kardashian family. Every month, members of the Kardashian-Jenner family are in the news for one reason or another. In May, Kris Jenner, the Kardashian matriarch filed legal documents to trademark the word “momager”. According to the Urban Dictionary, a “momager” is a manager that is your mom. Kris Jenner hopes to trademark the word in order to launch a new business platform and lifestyle brand to empower moms.

Kris Jenner would not be the first to capitalize on her celebrity status. Football player Tim Tebow successfully trademarked “Tebowing”, Paris Hilton trademarked the catchphrase “That’s hot”, and basketball player Anthony Davis trademarked “fear the brow” and “raise the brow”. In fact, this is not even the first time a member of the Kardashian-Jenner family registered a trademark. Earlier in May, Kylie and Kendall Jenner filed to trademark their names. Celebrities often seek trademark protection to protect their likeness and to prevent marketing that may dilute their image. However, Kris Jenner is attempting to trademark a new, hybrid word as opposed to her personal name. Continue reading

CAFC Invigorates the Already Popular Inter Partes Review Proceedings


By Vijay Kumar

The United States Court of Appeals for the Federal Circuit (“CAFC”) recently handed down its first decision regarding an appeal from an inter partes review (“IPR”) at the Patent Trial and Appeal Board (“PTAB”). The majority decision resulted in a win on all fronts for the Patent and Trademark Office (“PTO”), as well as those parties challenging patents.

The case, Garmin International v. Cuozzo Speed Technologies, concerned an IPR that was requested the first day that IPRs were made available under the America Invents Act (“AIA”). In its petition, the patent’s challenger, Garmin, sought to invalidate four claims from Cuozzo’s patent no. 6,778,074 (“the ‘074 patent”) based on the obviousness of combining the prior art. The PTAB took up arguments on three of the claims and, following a trial, ruled in Garmin’s favor, deeming the claims obvious and thus unpatentable. The PTAB also denied Cuozzo’s motion to amend its claims. Cuozzo appealed both decisions to the CAFC. Continue reading

The Ultramercial Decision: Closing The Door Even Further On 101

Screen Shot 2014-12-16 at 12.09.47 PMBy Vijay Kumar

The Federal Circuit recently issued its opinion for the Ultramercial v. Hulu case, further closing the door on patentees for what business methods qualify as being patent eligible under 35 § U.S.C. 101. Using the two-prong test outlined by the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International, the Federal Circuit held that Ultramercial’s ‘545 patent did not claim patent-eligible subject matter. (The ‘545 patent covered a method for distributing copyrighted content over the Internet where the consumer receives the content for free in exchange for viewing an advertisement, and the advertiser pays for the content.) While not completely unexpected, the Ultramercial decision is important because it continues to stir up debate as to what software and Internet related methods are still eligible for patent protection. Following the decision, inventors, patent attorneys, and even patent examiners are still unsure of what type of claim limitations are required to overcome the §101 threshold.

Section 101 has enjoyed substantial debate over the last four years. Including the Bilski decision in 2010, the Supreme Court has taken up four subject matter eligibility challenges, “endeavoring to right the ship and return the nation’s patent system to its constitutional moorings.” Alice, 134 S. Ct. at 2357. The Court’s most recent patent-eligible decision, Alice, used a two-prong test to distinguish business method patents that claim abstract ideas from those that claim patent-eligible applications of those concepts. (We covered the Alice decision last summer.) The first prong of the test determines whether the claims at issue are indeed directed to an abstract idea. If they are, the second prong of the test then asks whether the claims do significantly more than simply describe that abstract idea. In other words, the additional features for the second prong’s analysis must be more than “well-understood, routine, conventional activity.” Alice clearly took away some of the patent-eligible grounds that were previously available to applicants. But more importantly, it also led to some confusion among patent practitioners and examiners at the U.S. Patent and Trademark Office (PTO) as to the patent-eligibility of certain business method patents for software and Internet-based patents. Continue reading