Kaufhold & Dix Patent Law

As discussed in a previous post, in June 2023 in the case of Jack Daniel’s Properties, Inc. v. VIP Products, Inc., Jack Daniel’s prevailed in its assertion of trademark dilution. The Supreme Court agreed that VIP had no defense to the claim that VIP’s “Bad Spaniels” dog chew toy with a humorous reference to defecation resulted in dilution by tarnishment of Jack Daniel’s famous mark. The war did not end there as VIP is proceeding with a new argument that dilution laws as a general concept are unconstitutional. This argument is actually a relatively old argument that has been discussed academically. The idea is that trademark dilution is very abstract and serves only to favor large companies while unnecessarily restricting freedom of speech. This is a very interesting argument as the heart of the case moves from trademark issues to freedom of speech. As is well known, freedom of speech, for both individuals and companies, is a powerful right that can only be restricted in very narrow circumstances. For example, freedom of speech usually can be reasonably restricted with respect to time, manner, and place, but not generally due to content. For example, a person can critique a politician’s viewpoints, but generally cannot show up at the politician’s house at 3:00 AM with spotlights and 20-foot speakers. VIP is arguing in its current case in Arizona federal court that the trademark dilution claim by Jack Daniel’s—and thus trademark dilution law generally—is an improper restriction on freedom of speech due to content, i.e., VIP’s “speech” on its dog chew toys is only unacceptable because the content is offensive. Jack Daniel’s is arguing the restriction is an acceptable manner-type restriction to protect commerce in the U.S., i.e., VIP can make fun of Jack Daniel’s whiskey all they want, just not in a way that benefits VIP commercially while harming Jack Daniel’s reputation in the eyes of consumers. The case has not been decided, so what do you think? Is trademark dilution a giveaway to the biggest corporations in our country at the expense of one of our most basic freedoms, or does it serve an important purpose to ensure that companies can invest in a brand without risking substantial damage to the reputation? I have a feeling VIP’s argument will be unsuccessful, but it certainly is a case to watch. If you would like to know more about patents, trademarks, and copyrights, please feel free to contact our offices for a no cost consultation.

Normally, when a person claims in a patent application an invention already disclosed in a previously filed patent or patent application to another inventor, the person is not entitled to a patent on the claimed invention. The previously filed patent or patent application is considered prior art, and the invention is no longer considered novel when the later-filed patent application is submitted. An exception to this rule is that the previously filed patent or patent application is not considered prior art if the person making the later filing already publicly disclosed the invention. But what counts as public disclosure and what does not? In a recent decision, the Federal Circuit provided clarification as to what constitutes a public disclosure. In Sanho Corp. v. Kaijet Technology International Limited Inc., the court held that a private sale does not qualify as a public disclosure and therefore could not be used to invalidate an earlier-filed patent application from acting as prior art for a later-filed patent application. In the case, a patent to Sanho was challenged in an inter partes review proceeding using a reference patent application by Kuo which disclosed the same material claimed by the Sanho patent. The Sanho patent had a priority date of April 27, 2017, while the Kuo application had a filing date of December 13, 2016. Therefore, the Kuo application met the definition of prior art, meaning that the invention claimed by Sanho was not novel and the Sanho patent was invalidated. Sanho attempted to invoke the exception mentioned above by arguing that the inventor of the Sanho patent already made a sale of several thousands of units of a device embodying the claims before Kuo’s filing date. However, the two individuals involved in the sale communicated privately and no teaching of the features of the invention took place. There was also no testimony discussing whether the order was fulfilled or if the devices were actually manufactured. The court thus found that the private sale did not amount to a public disclosure sufficient to negate the effect of the Kuo application as prior art. In making this holding, the court underlined the policy rationale behind the law. One objective of the patent system is to have inventors make their inventions available to the public. In return, they get a limited monopoly on their inventions. The court asserted that “priority should be given to the patentees who make their invention available to the public before a patent application filing by another,” and the private sale described could not be characterized in such a manner.

This is part 13 in our series reviewing subject matter eligibility. We continued our focus on medical inventions by looking at CareDx, Inc. v. Natera, Inc., 40 F.4th 1371 (Fed. Cir. 2022), in which claims for using a link between cfDNA in the body and the likelihood of organ transplant rejection were held to be ineligible for patent protection. Basically, when a transplanted organ is rejected, the recipient’s immune system destroys the donor cells, releasing cfDNA into the recipient’s bloodstream. CareDx was an exclusive licensee to several patents claiming methods for detecting an organ donor’s cell free DNA (cfDNA) in a transplant recipient, to predict if the recipient was rejecting the donated organ. The claimed method basically included steps of (1) obtaining or providing a sample from the recipient that contains cfDNA, (2) genotyping the transplant donor and/or the recipient to develop profiles of their DNA, (3) sequencing the cfDNA from the sample using specific types of sequencing methods, and (4) determining or quantifying the amount of donor cfDNA. CareDx argued that the claimed advance was an improvement to the measurement methods over the prior art. However, the specification stated that these measurement techniques were conventional and could be performed using unmodified existing technology. The written description specifically stated that the claimed steps were conventional techniques, well within the skill of the art. CareDx also conceded that it did not invent or discover the relationship between donor cfDNA and the likelihood of organ transplant rejection. For these reasons, the Court felt the claims were indistinguishable from other ineligible claims. Like the Ariosa case we reviewed last week, the claims boiled down to collecting a bodily sample, analyzing the sample using conventional techniques, identifying naturally occurring DNA, and using natural correlations between the amount of DNA and a particular health risk (here, a recipient’s organ transplant failure, and in Ariosa, a fetus’s genetic defects.) Applying standard techniques in a standard way to observe natural phenomena does not provide an inventive concept. The language used in the specification to describe the laboratory techniques is crucial to the Court’s patent eligibility analysis. Come back next week as we continue our review! In the meantime, contact us for your free consultation to determine the best steps for protecting your own intellectual property. #linkinbio #innovation #pharmaceuticals #patents

With increasing investment in private space exploration and the possibility of people spending extended periods of time in off-planet environments becoming an increasingly likely reality, questions loom over how the law will adapt to govern activities which do not take place on Earth. Intellectual property law is a chief component of these concerns, as technological innovations will be a significant driver behind the advancement of humans spending more time farther from Earth, including the moon and possibly even Mars. How will intellectual property law handle a drug that will work only while orbiting Earth, a plant adapted to grow in zero gravity, a method of building structures on the moon, or other such ideas? Much of intellectual property law has been significantly territorial. Patents, trademarks, and copyrights exclude others from engaging in certain activities in particular jurisdictions. So, for inventions which would be made on Earth and brought to space, inventors may find it prudent to obtain patents in all of the space-faring jurisdictions. However, for activities which take place entirely off-world, there currently is no framework for restricting making, using, or selling an invention, for example.  Some treaties even specify that no one owns space or any of the celestial bodies within it. One strategy may be to protect innovations primarily through trade secrets, but that will only provide protection for certain kinds of innovations for so long. If private companies continue to explore space for resource extraction, space tourism, and other business pursuits, their activities will only become more visible to others. It’s possible that current-day maritime law may serve as a guide to countries as space becomes more inhabited; zones might be established in an extraterrestrial equivalent to international waters. But it is difficult to predict how such laws will be formed at this stage. As space-faring industries continue to develop, it is likely that significant changes in the law will follow closely behind.

Check out this video with a great summary of patentable subject matter! If your idea is a new and useful process, machine, manufacturing method, or composition of matter, contact us today for your free consult to develop a strategy for protecting your invention and making it marketable #linkinbio #innovation #patentlaw

In June 2023 in the case of Jack Daniel’s Properties, Inc. v. VIP Products, Inc., the Supreme Court ruled in favor of Jack Daniel's, finding that VIP’s “Bad Spaniels” dog toy constituted trademark dilution. The Court determined that VIP had no defense to the assertion by Jack Daniel’s of trademark dilution. This long-standing case involves a dog chew toy that is shaped like a bottle of Jack Daniel’s whiskey, but with a humorous twist in that the name is “Bad Spaniels” and the tagline “Old No. 7 Tennessee Whiskey” has been replaced with “The Old No. 2 on Your Tennessee Carpet.” Due to the reference to defecation, Jack Daniel’s argued dilution by tarnishment. Trademark dilution is the idea that unauthorized use of a mark similar to an existing mark could be prohibited if such use harms the distinctiveness or reputation of the existing mark. These laws are most commonly applied to famous trademarks with an established reputation and identity in the marketplace. Dilution by tarnishment specifically addresses harm to reputation by association with inferior products or offensive content. The Supreme Court ruling highlights the balance between free expression and trademark rights. Generally speaking, parody is an example of a use of a trademark that is exempted from trademark dilution claims. Parody is also allowed for use of copyrighted material. A party therefore can make a parody of trademarks or copyrighted material without harming intellectual property rights. For example, without parody protection, “Weird” Al Yankovic would not have had a music career! However, parody of a trademark must fall under non-commercial use to be a defense to trademark dilution. In that regard, the Court noted in this particular case that VIP’s “Bad Spaniels” imagery was not merely a parody, but rather a commercial use of a trademark to identify a source of products. In other words, the Court was of the opinion that VIP was essentially using a parody of the famous Jack Daniel’s trademark as its own trademark. This dispute is far from settled and ongoing in the lower courts as VIP has argued a broader free speech defense, which will be discussed in a future post. If you would like to know more about patents, trademarks, and copyrights, please feel free to contact our offices for a no cost consultation. #linkinbio #innovation #trademarks #iplawyers

This is part 13 in our series reviewing subject matter eligibility. We continued our focus on medical inventions by looking at Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371 (Fed. Cir. 2015), in which a method for detecting fetal DNA in a mother’s plasma was held to be ineligible for patentability. Sequenom owned US Patent 6,258,540, which claimed certain methods of amplifying cffDNA (or cell-free fetal DNA, which is found naturally in maternal plasma and serum, includes paternally inherited DNA, and can be used to determine certain fetal characteristics). The patent specifically described using the amplified cffDNA to determine whether the fetus has certain genetic defects. To achieve these results, the claims recited laboratory techniques which were well-understood, routine, and conventional at the time the patent was filed, albeit applied to the newly discovered, paternally inherited cffDNA. The claims in the patent were directed to a multistep method that started with a naturally occurring, unaltered fetal DNA which circulates freely in the blood stream of a pregnant woman. The existence of cffDNA in maternal blood was undisputedly a natural phenomenon. The scientists who discovered that cffDNA could be used to determine certain fetal characteristics did not alter anything about the naturally occurring cffDNA sequences. The claimed method ended with paternally inherited cffDNA, which was another naturally occurring phenomenon. The specification also supported the conclusion that the claims were directed to naturally occurring substances. The claims were merely directed to detecting the presence of this naturally occurring substance. Therefore, the claims failed Alice step 1. In the step 2 analysis, the Court concluded that the laboratory techniques described in each step of the method claims were routine and conventional at the time the patent was written. The specification even described these steps as standard techniques. The only “new” thing was the naturally occurring cffDNA. Therefore, the claims failed Alice step 2 and could not be found to be patent eligible. This case again teaches us the importance of using the specification to define and interpret the claims. The Court relied heavily on the characterizations of both the cffDNA and the laboratory techniques in the specification when concluding that the claims were directed to natural phenomena. Come back next week as we continue our review! In the meantime, schedule your free consultation to learn more about leveraging your own intellectual property! #linkinbio #patents #trademarks #iplaw #innovation

This is part 12 in our series reviewing subject matter eligibility. We continued our focus on medical inventions by looking at Rapid Litigation Management Ltd. V. CellzDirect, Inc. 827 F.3d 1042 (Fed. Cir. 2016), in which a claimed process for re-freezing liver cells was held patent eligible under both Alice steps. The specific patent at issue was US Patent No 7,604,929. Liver cells are naturally capable of surviving multiple freeze-thaw cycles. However, the claims were not merely directed to the discovery of that natural law. Instead, the claims specified a particular new and useful laboratory technique for cryogenically preserving liver cells. The inventors did not merely stop at the discovery that liver cells were capable of being frozen and thawed multiple times. The end result of the claims was not merely detection or observation of that natural ability of liver cells. Instead, the ‘929 patent claimed a particular method of achieving a desired outcome. The Court went on to evaluate the claims under Alice step 2, even though the claims passed Alice Step 1. The claimed method did, in fact, provide an improvement to the existing laboratory techniques for cryogenically preserving liver cells, transforming the process into an inventive application of the natural phenomena. Specifically, the claimed method allowed users to create liver cell preparations that no longer exhibited an unacceptable loss of viability. The claimed method also allowed researchers to pool samples together in advance and preserve them for later use, a distinct advantage over previous methods. This case teaches us that the particular combination of steps which are included in a method claim are what makes the claim patentable. Claims should be written to highlight the human intervention with natural phenomena, and the ingenuity with which that intervention is applied to improve the state of the relevant art. Come back next week as we continue our review! For more information about protecting your own intellectual property, schedule your free initial consultation with one of our attorneys. #linkinbio #patents #patenteligibility #iplaw

The U.S. Court of Appeals for the Federal Circuit (CAFC) made some waves in an October 3rd decision that the Lanham Act can apply to false claims that a party holds a patent when used in connection with advertising. It is not permissible to mark a product with a patent number or “patent pending” status, and 35 U.S.C. 292 provides a statutory fine for each violation. Unfortunately, patent trolls had been abusing this provision to go after large numbers of businesses and individuals simply for mislabeling products, so the America Invents Act (AIA) severely restricted the ability of parties to seek and recover damages for such violations. Enter the CAFC in a court battle between footwear maker Crocs, Inc. and competitor Double Diamond Distribution, Dawgs, Inc. (Dawgs). Though there are numerous filings between these two opponents, the notable decision involved a claim by Dawgs that Crocs was liable for damages due to false advertising under Section 43(a) of the Lanham Act, which states that a party can be liable for false advertising if such advertising “misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities.” Dawgs asserted that Crocs marketed its shoes as being made of patented material, even though Crocs did not have a patent for the material. Dawgs argued that this was false advertising because it was intended to deceive or mislead customers into thinking Crocs footwear was made of unique or special material, which would lead customers to believe they were purchasing a product made of superior materials. The CAFC agreed with Dawgs that the false statement about patent status was indeed meant to mislead consumers about “the nature, characteristics, or qualities of its product.” The CAFC established in this decision that while a party generally cannot pursue damages simply for another party improperly mark a product as being covered by a patent or pending patent application, damages may be available when it can be shown that the improper marking is intended to provide a competitive advantage in the marketplace. While a Dawg will not usually win a battle with a Croc, score this one for the canines! If you would like to know more about patents, trademarks, and copyrights, please feel free to contact our offices for a no cost consultation.

The Federal Circuit recently affirmed in Broadband iTV, Inc. v. Amazon .com, Inc. (Broadband) that several patents were invalid as claiming patent-ineligible subject matter. The holding is consistent with precedent that claims combining more than one abstract idea into a claim does not transform the claim into significantly more than a patent-ineligible abstract idea. The patents in question were owned by Broadband iTV, Inc. (“Broadband”), who sued Amazon. com, Inc. and related entities (“Amazon”) for infringement of those patents. Four of the patents claimed various implementations of devices which received metadata and organized the display of video content based on that metadata. Limitations included displaying the video content in particular ways via a user interface. However, no limitations were provided which presented a patentable improvement to the structure and function of the user interface. The patents instead relied on the abstract ideas of (1) receiving metadata and (2) using the metadata to organize content as the limitations which would have made the invention novel and nonobvious. The Federal Circuit found that implementing the abstract ideas did not provide a technological solution to a technological problem or improve any computer-related function and distinguished the case from two other cases, Core Wireless and Data Engine.  In Core Wireless, the Federal Circuit held that claims directed to an improved user interface, including the size and location of the user interface, were not abstract. In Data Engine, the Federal Circuit held that a specific method for navigating through three-dimensional electronic spreadsheets were not abstract. In both of these cases, structure or function of the prior art was modified in order to provide a technological solution to a technological problem. However, in Broadband, there was no improvement to the user interface itself.