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US Lawyers Aiding Scam Trademark Applications May Face Sanctions

by | Oct 28, 2021 |

As reported by the US Patent & Trademark Office (PTO) this past summer, since mid-2020 trademark applications from US and foreign applicants have “surged to unprecedented levels.” In December 2020 alone, the PTO received 92,608 trademark applications, an increase of 172% over December 2019. Not only has this extraordinary volume of applications created a backlog and delay in the procedural review of new US trademark application filings, but the PTO is experiencing a notable increase in what it calls “suspicious submissions ranging from inaccurate to fraudulent.”

These illegitimate trademark filings harm the quality and integrity of the trademark register and have significant legal and financial impact on legitimate brand owners whose applications may be blocked by fraudulent filings for marks that are identical or similar to their real brands. Faced with a legal obligation to defend and enforce their trademarks, legitimate brand owners are forced to dispute such illegitimate filings with letters of protest, by filing oppositions or cancellation actions in the Trademark Trial & Appeal Board, and even by taking action in the federal courts. Such enforcement and defensive actions can clog up these forums and force brand owners to take on costs that would not otherwise be necessary, and which may distract from, or reduce the budget for, real trademark disputes.

The PTO outlined various strategies and tools to review, assess, challenge and combat suspicious and fraudulent filings, including aspects of the Trademark Modernization Act of 2020. In 2019, the PTO also implemented a rule requiring any overseas trademark applicant to file with a US lawyer. The requirement for a US lawyer appears to have resulted in many foreign applicants (primarily from China) making up fake names, addresses and bar credentials for the US lawyers named in their applications. Not all named US lawyers are fake, however, as the PTO’s investigations into certain lawyers lodging a high volume of trademark filings for Chinese-based applicants have revealed that some US-based lawyers may be taking on clients from China without conducting proper diligence as to the veracity of the client’s trademark application information. For example, the PTO’s investigation of some potentially illegitimate filings from applicants in China reveal doctored or disingenuous specimens of use, including e-commerce listings for products that may not actually exist or are no longer “in stock” (and likely never were “in stock”).

In September 2021, the PTO’s investigations into US lawyers with a high volume of filings for Chinese applicants resulted in two sanctions orders. The first was issued against a lawyer found to have filed thousands of applications for overseas parties deemed fraudulent by operating as a US-based agent for a centralized “filing gateway” platform located in India. The sanction order includes a 12-month probationary period and required ethics and trademarks classes. The second sanction against a US-based lawyer specifically noted that the lawyer did not do enough to properly review the applications that they signed on behalf of an applicant based in China. It has [...]

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This Case Is Both Hot and Exceptional—Attorneys’ Fees and Inequitable Conduct

by | Oct 28, 2021 |

In a second visit to the US Court of Appeals for the Federal Circuit, after the Court affirmed a finding of unenforceability due to inequitable conduct based on “bad faith” non-disclosure of statutory bar prior sales on the first visit, the Court affirmed a remand award of attorneys’ fees based on a finding of exceptionality under 35 U.S.C. § 285. Energy Heating, LLC v. Heat On-The-Fly, LLC, Case No. 20-2038 (Fed. Cir. Oct. 14, 2021) (Prost, J.)

In its earlier decision, the Federal Circuit remanded the case after reversing a district court’s denial of attorneys’ fees, finding that while the district court correctly found that Heat On-The Fly (HOTF) committed inequitable conduct in failing to disclose to the US Patent & Trademark Office multiple instances of prior use of the claimed method, the district court failed to articulate a basis for denying attorneys’ fees other than that HOTF articulated substantial arguments (experimental use) against the finding of inequitable conduct.

On remand, the district court found the case “exceptional” because it “stands out from others within the meaning of § 285 considering recent case law, the nature and extent of HOTF’s inequitable conduct, and the jury’s findings of bad faith.” HOTF appealed.

HOTF contended that the district court abused its discretion by relying on the jury’s bad-faith finding because that finding “had nothing to do with the strength or weakness of HOTF’s litigation positions.” Citing the 2014 Supreme Court decision in Octane Fitness, the Federal Circuit rebuffed that argument, explaining that “HOTF made representations in bad faith that it held a valid patent [which] was within the district court’s ‘equitable discretion’ to consider as part of the totality of the circumstances of HOTF’s infringement case.”

HOTF also argued that the district court erroneously relied on the jury verdict in finding exceptionality because, since the jury found that HOTF did not commit the tort of deceit, it could not have engaged in inequitable conduct. The Federal Circuit rebuffed this argument as well, noting that inequitable conduct was tried to the district court—not the jury—resulting in a judgment of unenforceability that the Court affirmed in the prior appeal and that the jury’s finding of no state-law “deceit” had no bearing on inequitable conduct.

The Federal Circuit further explained that HOTF’s assertion that under the Court’s 2020 decision in Electronic Communication Technologies v. ShoppersChoice.com, the district court was not required to affirmatively weigh whether HOTF’s purported “lack of litigation misconduct” was incorrect. Rather, “the manner in which [patentee] litigated the case or its broader litigation conduct” is merely “a relevant consideration.” Under Octane, the test for whether a case is “exceptional” under § 285 is whether it is “one that stands out from others with respect to the substantive strength of a party’s litigating position . . . or the unreasonable manner in which the case was litigated.”

Finally, the Federal Circuit noted that the district court correctly explained that “[a] finding of inequitable conduct [...]

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Judge Albright Issues Updated Standing Order for Patent Cases

by | Oct 28, 2021 |

On October 8, 2021, Judge Alan Albright of the US District Court for the Western District of Texas issued a new standing order governing proceedings for patent cases, which the Court designated as version 3.5 following previous updates in February and June 2021. The Western District of Texas manages more patent cases than any other district court in the United States.

The new order contains many refinements to Judge Albright’s procedures:

  • Recharacterizes the “default” schedule to be an “exemplary” schedule that the parties’ proposed schedule is expected to track in “most cases” and adds a date eight weeks prior to trial when the parties must email the court clerk to confirm the pretrial and trial dates
  • Requires parties with discovery disputes to summarize their respective positions to the court’s clerk when calling to schedule a conference with the court
  • Specifies the procedure for preparing the required email summary of discovery disputes and adds a 500-word limit per side
  • Notes that emails are the preferred method of contact with the court and that voicemail is not regularly checked and is not recommended
  • Removes a prior requirement to show good cause for extensions longer than 45 days to respond to the complaint
  • Extends the time to file a reply brief for a motion to transfer from seven days to 14 days
  • Deletes a previous provision by which substantive briefs could be submitted via audio file
  • Adds pages limits for Daubert motions (40 pages per side) and motions in limine (15 pages per side)
  • Requires that the paper copies of Markman briefs delivered to the Court be printed double-sided.


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Means-Plus-Function Claims: Don’t Forget the “Way”

by | Oct 21, 2021 |

The US Court of Appeals for the Federal Circuit affirmed a lower court’s findings of noninfringement, in part because the plaintiff had failed to prove the “way” element of the function-way-result test for a first means-plus-function claim, and because the specification lacked disclosure of a structure for the “way” to perform a second means-plus-function claim. Traxcell Techs., LLC v. Sprint Commc’ns Co., Case Nos. 20-1852, -1854 (Fed. Cir. Oct. 12, 2021) (Prost, J.); Traxcell Techs., LLC v. Nokia Sols. & Networks Oy, Case Nos. 20-1440, -1443 (Fed. Cir. Oct. 12, 2021) (Prost, J.)

Traxcell asserted several related patents against multiple defendants in parallel litigations. One of the patents related to self-optimizing network technology for making “corrective actions” to improve communications between a wireless device and a network (SON patent). The SON patent included two means-plus-function limitations. One of the other patents related to network-based navigation in which the network, as opposed to the wireless device, determined the device’s location (navigation patent).

Traxcell asserted the SON and navigation patents against Verizon and Sprint in one action and the SON patent against Nokia in another. In both cases, the magistrate judge entered a claim construction order construing several common terms of the asserted patents and determining that the claims of the SON patent were indefinite. The lower court adopted the magistrate’s recommendations and subsequently granted summary judgment for all three defendants on each of the patents. Traxcell appealed. The issues on appeal related to infringement and indefiniteness of means-plus-function claims.

First, Traxcell disputed the lower court’s grant of summary judgment for Sprint on the SON patent, arguing that Sprint’s accused technology included a structural equivalent to the disclosed structure under the function-way-result test. The asserted claim required a “means for receiving said performance data and corresponding locations from said tower to correcting radio frequency signals of said radio tower,” the corresponding function of which was “receiving said performance data and corresponding locations from said tower and correcting radio frequency signals of said tower.” The Federal Circuit explained that the disclosed structure of this means-plus-function limitation was a “very detailed” algorithm in the patent. Citing more than two decades of precedent, the Court emphasized that infringement of means-plus-function claims requires proof of three things: That the accused structure performs the (1) identical function, (2) in substantially the same way (3) with substantially the same result, as the disclosed structure. Because Traxcell neglected to even address at least nine steps of the algorithm, i.e., the disclosed structure, with respect to Sprint’s accused system (opting instead to focus on the function and result), the Court affirmed the lower court’s finding of noninfringement.

Second, the lower court found another claim of the SON patent indefinite based on the specification’s failure to disclose the necessary structure for its means-plus-function limitation. Traxcell did not appeal the indefiniteness finding itself, but sought leave to amend the claim to cure the indefiniteness, the denial of which Traxcell raised on appeal. The Federal Circuit explained that a “means-plus-function claim is indefinite [...]

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NDA Forum Selection Clause Doesn’t Bar IPR in Response to Subsequent Infringement Suit

by | Oct 21, 2021 |

The US Court of Appeals for the Federal Circuit affirmed the denial of a preliminary injunction that would have forced the accused infringer to seek dismissal of its petitions for inter partes review (IPR) based on a forum-selection clause in an earlier nondisclosure agreement (NDA). Kannuu Pty Ltd. v. Samsung Elects. Co, Ltd., Case No. 21-1638 (Fed. Cir. Oct. 7, 2021) (Chen, J.) (Newman, J., dissenting).

Kannuu is a start-up that develops media-related products, including certain remote control search-and-navigation technology. Samsung explored licensing the technology and entered into an NDA with Kannuu. The NDA included a forum-selection clause, which stated that any legal action “arising out of or relating to this Agreement or the transactions contemplated hereby must be instituted exclusively” in a New York state or federal court. The negotiations were unsuccessful. Several years later, Kannuu sued Samsung for alleged infringement of five patents relating to the same technology and alleged breach of the NDA. Samsung petitioned for IPR of the five patents, and two of the petitions resulted in institution. Kannuu filed for a preliminary injunction to force Samsung to dismiss the IPRs that had been instituted. The district court denied the preliminary injunction. Kannuu appealed.

The Federal Circuit determined that the district court had not abused its discretion in denying the preliminary injunction, distinguishing between an NDA (which relates to confidentiality) and a patent license agreement (which relates to patent rights). The Court explained that because the forum selection clause was in an NDA, patent infringement defenses did not “arise out of or relate to this Agreement or the transactions contemplated thereby.” In other words, the patent infringement defenses were too attenuated from the subject matter of the NDA to be governed by the forum selection clause therein. The Court noted that whether any patent claim was held invalid would not affect Kannuu’s breach of contract claim arising from an alleged breach of the NDA.

In dissent, Judge Pauline Newman reasoned that a patent license was one of the “transactions contemplated” by the NDA. Therefore, she would have found that the patent infringement defenses were within the scope of the forum selection provision of the NDA.

Practice Note: The Federal Circuit noted how a failed licensing negotiation commonly leads to a subsequent infringement suit. Parties should craft provisions of the NDA regarding forum selection and related issues (e.g., choice of laws) to explicitly include or exclude potential infringement litigation from their scope.



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PTO’s Financial Benefits from IPR Don’t Render PTAB Unconstitutional

by | Oct 21, 2021 |

A split panel of the US Court of Appeals for the Federal Circuit concluded that the structure and functions of the Patent Trial & Appeal Board (PTAB) survived yet another constitutional challenge, this time based on the PTAB’s fee and compensation structure, lack of director review over the institution decision and applicability of the Takings Clause. Mobility WorkX, LLC v. Unified Patents LLC, Case No. 20-1441 (Fed. Cir.) (Dyk, J.) (Newman, J., dissenting).

With the dust barely settled after the Supreme Court’s ruling in US v. Arthrex, Inc. that the PTAB’s rendering of final written decisions without director review violated the Appointments Clause, this case presented a whole new slate of potential deficiencies with the PTAB. Although none of these deficiencies were initially raised with the PTAB, the Court exercised its discretion to nonetheless consider the challenges based on publicly available records that it could judicially notice.

The first challenge, already made in many other cases, was that the Federal Circuit remand for the director to consider a rehearing petition in view of Arthrex. This remedy, already afforded in other post-Arthrex challenges, was a simple grant. Yet, here, Mobility asked for something more, arguing that because the director did not resolve the inter partes review (IPR) within the 12-month statutory period, the director must confirm the claims or dismiss the IPR. The Court declined to rule on this issue, instructing Mobility to raise the issue on remand.

The issue receiving the most attention by the Federal Circuit was Mobility’s claims that the PTAB’s fee structure and bonus payments to administrative patent judges (APJs) based on their workload violated the Due Process Clause. According to Mobility, the APJs have a financial incentive to institute IPRs (i.e., significant fees), which provide a significant benefit to the agency. But the Court concluded that the APJs (even the leadership APJs) have only an attenuated role in budget control and thus have an insignificant interest in the financial health of the US Patent & Trademark Office as a whole. Because Congress holds the purse strings and the more significant budget responsibilities fall on the director and the president, the majority held that little connection existed between institution decisions and the agency’s overall financial health, which was consistent with the Court’s own precedent regarding reexaminations and other circuits’ precedents regarding executive agency fee collection. This attenuated connection differentiated the PTAB’s collected fees from Supreme Court cases that found due process violations based on the structure of certain executive courts presided over by a mayor who also held concomitant budget responsibilities.

Similarly, the Federal Circuit held that the APJs’ incentive to render a certain number of decisions—i.e., APJs receive bonus payments if they earn at least 84 decisional units, and the number of decisions is part of performance evaluation—did not provide an unconstitutional incentive to institute. The majority reasoned that ample alternative means existed for the APJs to earn their bonuses, namely, the ability to volunteer for non-America Invents Act (AIA) decisions (such as [...]

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Update: Absent Explicit Statutory Language? The American Rule Still Applies

by | Oct 21, 2021 |

The US Court of Appeals for the Federal Circuit updated its earlier opinion to remove language ascribing motive to a prolific inventor’s actions before the US Patent & Trademark Office (PTO). Hyatt v. Hirshfeld, Case Nos. 020-2321; -2325 (Fed. Cir. Aug. 18, 2021) (modified Oct. 12, 2021) (Hughes, J.)

The original opinion noted that Gilbert Hyatt is known for his prolific patent and litigation filings (including hundreds of extraordinarily lengthy and complex patent applications in 1995 alone) and for often “adopt[ing] an approach to prosecution that all but guaranteed indefinite prosecution delay.” The modified opinion deletes language in the original opinion ascribing to Hyatt the motive of “in an effort to submarine his patent applications and receive lengthy patent terms.”

The Federal Circuit did not alter its earlier reversal of the district court’s grant of attorneys’ fees to Hyatt (since he was not the prevailing party) or its affirmance of the district court’s denial of the PTO’s request for expert fees (after finding “[a]ll the expenses of the proceedings shall be paid by the applicant” under 35 U.S.C. § 145, not specifically and explicitly shifting expert witness fees). The rest of the text of the opinion remains unchanged.



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Oh the Horror: No Work for Hire in Friday the 13th Screenplay

by | Oct 14, 2021 |

The US Court of Appeals for the Second Circuit affirmed a summary judgment grant, ruling that an author was an independent contractor when writing the screenplay for a horror film and entitled to authorship rights, and therefore entitled to exercise his copyright § 203 termination right. Horror Inc. v. Miller, Case No. 18-3123 (2d Cir. Sept. 30, 2021) (Carney, J.)

Victor Miller is an author who has written numerous novels, screenplays and teleplays. Sean Cunningham is a producer, director and writer of feature films and is the general partner of Manny Company. Miller and Cunningham were close friends who began working together around 1976 and collaborated on five motion pictures in their first five years working together. Miller was a member of the Writers Guild of America, East (WGA) and was a signatory of their Minimum Basic Agreement (MBA), which was the collective bargaining agreement at the time.

In 1979, the success of the horror film Halloween inspired Cunningham to produce a horror film. Cunningham reached out to Miller and they orally agreed that Miller would write the screenplay for their upcoming project. The two came to an agreement using the WGA standard form. Miller then began developing the screenplay and the two worked closely together in discussing ideas for the film. Miller picked his working hours but was responsible for completing drafts based on the production schedule of the film. Cunningham had no right to assign additional works to Miller beyond the screenplay.

The dispute concerns whether, for Copyright Act purposes, Miller was an employee or independent contractor of Manny Company, of which Cunningham was the general partner. Cunningham argued that he taught Miller the key elements of a successful horror film, that he gave significant contributions and that he had final authority over what ended up in the screenplay. Miller agreed that Cunningham gave notes but stated that Cunningham never dictated what he wrote. The parties agreed that Cunningham did provide the ideas for making the movie killings “personal,” that the killer remain masked and that they kill a major character early. Miller received “sole ‘written by’ credit” as the screenwriter.

Horror Inc. (successor to Georgetown Horror) financed the project and was given complete control over the screenplay and film. Manny assigned its rights in the film and screenplay to Horror, which registered the copyrights. In the registration, Horror was listed as the film’s work made for hire author with a credit given to Miller for the screenplay. The initial film was a huge hit and has spawned 11 sequels.

In 2016, Miller attempted to reclaim his copyright ownership by invoking his termination rights under 17 U.S.C. § 203 and served notices of termination to Manny and Horror. The two responded by suing Miller and seeking a declaration that the screenplay was a “work for hire,” and therefore Miller could not give a valid termination notice. The district court granted summary judgment to Miller, stating that Miller was the author as he did not prepare the screenplay as [...]

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Design Patent Prior Art Must Be From Same or Analogous Field as Claimed Article of Manufacture

by | Oct 14, 2021 |

Finding that the Patent Trial & Appeal Board (Board) applied an erroneous interpretation of claim scope, the US Court of Appeals for the Federal Circuit reversed a Board decision upholding an examiner’s rejection of a lip implant design patent as anticipated by a non-analogous art tool. In re: SurgiSil, Case No. 20-1940 (Fed. Cir. Oct. 4, 2021) (Moore, C.J.)

SurgiSil filed a design application for a lip implant shaped like a generally cylindrical rod that tapered to a point at each end. The examiner rejected the patent as anticipated by a “stump,” an art tool of similar, almost identical, shape used for smoothing and blending areas of pastel or charcoal. SurgiSil appealed the rejection to the Board. The Board affirmed the rejection, finding that the differences in the shapes of SurgiSil’s lip implant and the art tool were minor. The Board rejected SurgiSil’s argument that the two articles of manufacture were “very different,” reasoning that it is irrelevant whether a prior art reference is analogous for anticipation purposes. SurgiSil appealed.

Reviewing the Board’s legal conclusions de novo, the Federal Circuit found that the Board erred as a matter of law. Citing 35 U.S.C. § 171(a) and the 1871 Supreme Court decision in Gorham Co. v. White, the Court explained that a design patent claim does not cover the design in the abstract, and that it is limited to the particular article of manufacture identified in the claim. The Court concluded that the claimed design was limited to a lip implant, did not cover other articles of manufacture and that the Board’s decision therefore rested on an erroneous interpretation of the claim’s scope.



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Party May Not Veil EU Individual’s Information under GDPR at the TTAB

by | Oct 14, 2021 | ,

In a rare precedential opinion, the Trademark Trial & Appeal Board (TTAB, Board) ruled that the EU General Data Protection Regulation (GDPR) does not apply in Board proceedings. Chicago Mercantile Exchange, Inc. v. Intercontinental Exchange Holdings, Inc., Opposition Nos. 91235909; 91254514 (T.T.A.B. Sept. 27, 2021) (Faint, Interlocutory Attorney).

This was a consolidated proceeding between Chicago Mercantile Exchange and New York Mercantile Exchange (collectively, CME) and Intercontinental Exchange Holdings (ICE) and brought before the TTAB. CME sought to amend the Board’s standard protective order (SPO) to allow in-house access to information and materials designated by ICE as “Confidential – Attorney’s Eyes Only” and asked the TTAB to find that the EU GDPR does not apply in the proceedings.

The Board’s SPO is automatically imposed in all inter partes proceedings. In order for the Board to disturb their SPO, CME needed to show that protection of ICE’s trade secrets will impair CME’s prosecution of its claims. ICE asserted that CME failed to show good cause for modification of the SPO and the Board agreed. As an initial matter, CME failed to provide information sufficient for the Board to determine in-house counsel’s responsibilities, including whether those responsibilities included competitive decision-making such that disclosure to in-house counsel would competitively harm ICE. Secondly, CME failed to clearly demonstrate that there was a need for access to the highly sensitive competitive information to adequately prepare its case. Accordingly, the Board denied CME’s motion to amend the protective order.

CME next raised the issue of whether ICE may redact names, email addresses and other information from documents and electronically stored information (ESI) originating in the European Union prior to its production on the basis that the GDPR requires such redaction. CME argued that because ICE waited more than 18 months to assert this objection, the objection is waived, that CME will be severely prejudiced if ICE’s objection stands and that the GDPR does not apply in inter partes Board proceedings.

For background, the GDPR is an EU regulation made effective May 25, 2018, in order to protect the privacy and security of EU citizens’ personal data by limiting the transfer of such information among member states of the European Union, as well as between the European Union and other countries, including the United States. The broad definition given to “personal data” in the GDPR encompasses “any information relating to an identified or identifiable person.” However, this class of information (an individual’s name, position, job title and email address) is generally required to be produced in discovery pursuant to the Fed. R. Civ. Pro. 26(b)(1).

In this precedential decision, the Board, citing the 1987 Supreme Court case Societe Nationale Industrielle Aerospatiale v. U.S. Dist. Court, established that a foreign country’s law precluding disclosure of evidence in US courts and tribunals will generally not deprive those courts and tribunals of “the power to order a party subject to its jurisdiction to produce evidence even though the act of production may violate that statute.”. Additionally, the GDPR does not per [...]

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