The U.S. Supreme Court voted last week on whether or not it would hear one or more of three separate cases involving issues related to subject matter eligibility under U.S. Patent Laws.

As noted in last weeks blog, the cases in which Petitions for Certiorari were under consideration were: HP Inc. v. Berkheimer; Hikma Pharmaceuticals USA Inc. et al. v. Vanda Pharmaceuticals USA, Inc.; and Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC.

The Court denied the petitions for cert in each of the cases, without opinion.

According to a recent study by Lex Machine (a LexisNexis Company), trademark litigation in the United States has reached a four-year high, and for the second consecutive year, has exceeded patent cases.  Namely, Lex Machina reports that over 4,300 trademark cases were brought in district courts last year (2019), and that the Southern District of Florida was one of the top five (5) venues, reporting in at 269 filings.  Among the most active caseloads of individual judges were none other than Southern District of Florida Judges Roy Altman and Rodney Smith, both with 32 cases, respectively.    

The U.S. Supreme Court is scheduled to hold certiorari votes on Friday, January 10, to decide which cases it will or will not consider. Among them are three cases involving patent eligibility, and if the Court chooses to hear even one of these cases, it could significantly impact how Section 101 of the Patent Laws is applied for years to come.

In no particular order, the cases and questions presented are as follows:

In HP Inc. v. Berkheimer, the Court has been asked to consider whether patent eligibility is a question of law for the court based on the scope of the claims, or a questions of fact for the jury based on the state of the art at the time of the patent. 

See Petition for a Writ of Certiorari here.

Hikma Pharmaceuticals USA Inc. et al. v. Vanda Pharmaceuticals USA, Inc. present the question of whether patents that claim a method of medically treating a patient automatically satisfy Section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.

See Petition for a Writ of Certiorari here.

Finally, in Athena Diagnostics, Inc. et al. v. Mayo Collaborative Services, LLC the Court is asked to consider whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.

For more, see Petition for a Writ of Certiorari here.

We, along with the rest of the Intellectual Property Community, will be watching closely to see what the Court decides and why, and we will provide an update in a future blog.

For some, buying a Rolex or other high quality watch is a statement in self and brand identity in it of itself. For others, a need arises to truly distinguish such a purchase by means of customization. For these others, a range of deemed "watch customizers" exist to re-paint, re-fit, skeletonize, or otherwise modify high quality timepieces or watches. Recently, this customization has become a large trend and it seems that watch manufacturers are paying attention.

In watch manufacturers paying attention, such a watch customizer, La Californienne is now being sued by Rolex for trademark counterfeiting, infringement and false representation.

La Californienne markets themselves as a company that at least, replaces original watch crystals, refashions watch bezels and alters the (watch) dials by stripping the paint and finish from the original watch face dials, and repainting and refinishing them in various vibrant colors (reinstalling Rolex marks and original indicia). In interpretation, La Californienne obtains an original watch, such as a Rolex, and modifies portions of the watch, then re-sells the creation.

At the time of writing, examples of their creations can be found here and in the images below.

Rolex asserts, La Californienne modified watches (although derived and customized from original Rolex watches) should be deemed "Counterfeit." This deeming comes from at least examination of two separate La Californienne modified Rolex watches. In examination, Rolex was able to determine La Californienne had at least reprinted or re-attached some of Rolex's registered trademarks, and more subsequently, installed non-genuine products of Rolex on the watches such as a crystal, refinished the dial surface, which may lead to debris in the movement of the watch to affect time keeping ability, and improperly fitted a bezel, which may allow water to leak through the watch adversely affecting the watch. Importantly, Rolex also noted that La Californienne added their name to a dial on one of the watches. Rolex also utilized La Californienne’s web presence to determine how they modify Rolex watches.

In assertion, Rolex is claiming that La Californienne is confusing and deceiving the public because their use of Rolex Registered Trademarks tends to and does create the erroneous impression that La Californienne's products and services emanate or originate from Rolex and/or that the products and services are authorized, sponsored or approved by Rolex, even though they are not. In legal terms, Rolex is claiming that a likelihood of consumer confusion is created by La Californienne which may cause irreparable harm to Rolex and the Rolex Registered Trademarks.

As Rolex believes La Californienne is being unjustly enriched by illegally using and misappropriating Rolex's intellectual property for their own financial gain, Rolex seeks damages, La Californienne's profits, and attorney's fees.

 

 

More on the case can be found here: Rolex Watch U.S.A., Inc. v. Reference Watch LLC d/b/a/ La Californienne et al

 

On Friday, November 8, the Supreme Court granted the federal government's petition for review in U.S. Patent and Trademark Office v. Booking.com. The issue to be reviewed is whether the addition of the generic top-level domain ".com" to a generic term can create a protectable trademark.


The dispute first arose when Booking.com applied to register trademarks containing the term BOOKING.COM in connection with online hotel reservation services. The USPTO refused registration on the ground that the term "booking" is generic for the underlying services in the application and that the addition of the generic top-level domain ".com" did not create a protectable mark. The decision was reviewed by the United States District Court for the Eastern District of Virginia, which held that BOOKING.COM was non-generic and potentially protectable as a trademark. The Fourth Circuit affirmed.

The case of Romag Fasteners v. Fossil is scheduled for argument before the Supreme Court of the United States during the court's October 2019-2020 term.  At issue is whether, under the Lanham Act, willfulness is a prerequisite for an award of the infringer’s profits.  Under the current landscape, the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits have held that willfulness is not an absolute requirement in order for the plaintiff to recover profits.  On the other hand, the Second, Ninth, Tenth, and District of Columbia Circuits have disagreed, stating that a willfulness finding is required in order to award the infringer’s profits to the plaintiff.  The Supreme Court’s ultimate ruling on the issue will potentially resolve the sharply divided circuit split, and provide trademark owners a clearer roadmap in terms of damages and financial recovery following a finding of infringement.

Wednesday, 30 October 2019 15:10

AI vs. IP

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The U.S. Patent and Trademark Office (“PTO”) recently issued a second request for public comments on the impact of artificial intelligence on intellectual property laws and policies, this time with a focus on copyright and trademark related issues.

Among the questions recently posed by the PTO:

Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law? Why or why not?;

Would the use of AI in trademark searching impact the registrablity of trademarks? If so, how?; and

Are there any other AI-related issues pertinent to intellectual property rights (other than those related to patent rights) that the USPTO should examine?

You may submit comments in writing through December 16, 2019. The full list of questions is presented in the Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation, available in the Federal Register here.

The PTO previously issued a Request for Comments on Patenting Artificial Intelligence Inventions, available here, and has extended the deadline to submit comments through November 8, 2019.

This past offseason, Lebron James began sharing videos on social media of his family’s “Taco Tuesday” dinner gatherings.  The videos went viral, with James inviting other celebrity guests and NBA players for the “Taco Tuesday” dinners, and even making apparel with the quote “Its Taco Tuesday.”  Lebron James’ company, LBJ Trademarks, subsequently filed a trademark application seeking to register the term, with the underlying goods and services involving "advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels."

On Wednesday, September 11, 2019, the USPTO refused the trademark application filed by LBJ Trademarks, stating that TACO TUESDAY  "is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.”  However, the USPTO’s decision was not treated as a loss for the James’ camp.  In fact, a spokesperson claimed that the rejection was the intended result:  “Finding 'Taco Tuesday' as commonplace achieves precisely what the intended outcome was, which was getting the U.S. government to recognize that someone cannot be sued for its use.”  Under that approach

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