Month: June 2014

Patent Office Issues Guidelines for Products and Laws of Nature

The United States Patent Office (USPTO) has issued a new set of training materials to provide guidance to patent examiners on whether patent claims improperly encompass laws of nature, natural phenomena and principles, or products of nature.

The training materials are based on the US Supreme Court’s recent decisions in Molecular Pathology v. Myriad Genetics and Mayo Collaborative Services v. Prometheus Laboratories, Inc.

The new guidelines will have an impact on patent applications now pending.

According to the USPTO, the proper test for patentability is:

  • “whether a claim reflects a significant difference from what exists in nature” (patent eligible), or
  • “whether a claim is effectively drawn to something that is naturally occurring” (not patent eligible).

The PTO provided a flowchart to illustrate the analysis and included an example:

The Amazonian cherry tree is a naturally occurring tree that grows wild in the Amazon basin region of Brazil. The leaves of the Amazonian cherry tree contain a chemical that is useful in treating breast cancer. However, to be effective, a patient must eat 30 pounds of the leaves per day for at least four weeks. Many have tried and failed to isolate the cancer-fighting chemical from the leaves. Applicant has successfully purified the cancer-fighting chemical from the leaves and has named it amazonic acid. The purified amazonic acid is structurally identical to the amazonic acid in the leaves, but a patient only needs to eat one teaspoon of the purified acid to get the same effects as 30 pounds of the leaves…

In the USPTO’s view, a claim to the purified acid would not be patent-eligible because:

  • there is no structural difference between the acid in the leaves and the purified acid, and
  • the claim does not include features to show that the purified product is markedly different from the natural one.

Commentators have questioned why the USPTO is apparently seeking to make patent-ineligible purified or isolated natural products that have been considered patentable in the US for at least 100 years and are patentable in many other countries.

If you have questions about patentability, contact our office to arrange a free initial consultation with one of our patent attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “A montage displaying the five major branches of natural science: Chemistry (represented by the center image of flasks containing chemicals), Astronomy (top left picture of stars), Earth Science (top right picture of erupting volcano), Physics (bottom right picture of spinning top), and Biology (bottom left picture of fish).” By Misc is licensed under CC BY 2.0.

Court Says CrossFit May Have Violated Copyright Act by Basing Takedown Notice on Trademark Rights

The US District Court for the Northern District of California has ruled that the exercise company CrossFit may have violated the Digital Millennium Copyright Act (DMCA) when it submitted a takedown notice to Facebook based on alleged infringement of its trademark rights rather than on a violation of its copyrights.

The case arose out of a dispute between CrossFit and Jennie Alvies, a mother of four. Alvies wrote a blog at the URL crossfitmamas.blogspot.com and also created a Facebook page called “CrossFit Mamas.” She shared with her readers updates about her high-intensity interval training regimen.

Alvies also used her blog to sell fitness-related products and advertisements using Google AdWords.

CrossFit contacted Alvies and demanded that she stop using their name. Alvies agreed, but CrossFit sued her anyway, alleging causes of action for trademark infringement, trademark dilution, cyberpiracy, and false description of origin.

CrossFit also submitted a takedown notice to Facebook, asking the company to remove Alvies’ page.

Under a “Safe Harbor” provision of the DMCA, an online service provider (OSP) may avoid liability for copyright infringement due to material posted on its site by third parties if the OSP:

  • does not receive a financial benefit directly attributable to the infringing activity,
  • is not aware of the presence of the infringing material, and
  • upon receiving a notice from a copyright owner, acts expeditiously to remove the allegedly infringing material.

Alvies filed a counterclaim against CrossFit alleging that its takedown notice violated the DMCA.

The DMCA imposes liability on a party that knowingly makes a takedown request based on material misrepresentations. Alvies claimed that CrossFit’s claims based on trademark infringement, rather than copyright infringement, were improper under the DMCA.

CrossFit moved to dismiss Alvies’ counterclaim, arguing that Facebook allowed trademark-based takedown notices as well as copyright-based takedown notices. Thus, said CrossFit, Alvies suffered no injury due to the DMCA request because Facebook would have taken her page down anyway.

The court denied CrossFit’s motion, finding that Alvies had a viable claim. The court noted that it could not be assumed that Facebook would necessarily have taken down her page pursuant to a trademark-based takedown request.

If you have questions about takedown requests based on either copyright or trademark law, contact our office to arrange a free initial consultation with one of our attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Force athlétique” by Greg Westfall is licensed under CC BY 2.0.

Trademark Appeal Board Says “Pretzel Crisps” is Generic

The Trademark Trial and Appeal Board (TTAB) has ruled that the product name “Pretzel Crisps” is generic and cannot be registered as a trademark.

The issue arose in a dispute between snack-food titan Frito-Lay Inc. and Princeton Vanguard LLC, a much smaller New Jersey snack company.

Princeton had tried to register the trademark for its gourmet flat pretzels.

The TTAB determined that consumers considered “pretzel crisp” to be a generic name for a type of pretzel cracker snack, rather than as a brand name associated with Princeton’s specific product.

Princeton introduced its crisps in 2004, after owners Warren and Sarah Wilson obtained a patent for the flat pretzels, claiming the ornamental design for a “pretzel cracker.” The Wilsons, who got their start selling funnel cakes at fairs in 1969, also invented bagel chips.

Frito-Lay’s own Rold Gold pretzels and Stacy’s Pita Chips compete with Pretzel Crisps. When the Wilsons tried to register the trademark for their product name, Frito-Lay challenged the proposed mark.

In a 2010 motion, Frito-Lay wrote that “Like ‘milk chocolate bar,’ the combination of ‘pretzel’ and ‘crisp’ gains no meaning as a phrase over and above the generic meaning of its constituent terms.”

The TTAB agreed, saying, “We find that ‘Pretzel Crisps,’ as used by defendant, would be understood by the relevant public to refer to ‘pretzel crackers.’”

The TTAB also held that it was irrelevant that Princeton was apparently the first company to use the term “Pretzel Crisps.” “The law does not permit anyone to obtain a complete monopoly on use of a descriptive or generic term simply by grabbing it first.”

Although it is easier to protect “fanciful,” made-up words like “Kodak” as trademarks, the value of more descriptive terms, like “Pretzel Crisps,” has increased in the internet era, when consumers look for products on the Web.

Princeton spent over $1 million in legal fees trying to obtain the Pretzel Crisp trademark. Retail sales of Pretzel Crisps are more than $100 million per year and growing.

Sales of Rold Gold pretzel products have declined in recent years, and Frito-Lay’s attempts to market its own flat pretzel products have been unsuccessful.

If you have questions about trademark law, or if you anticipate being involved in trademark litigation, contact our office to arrange a free initial consultation with one of our attorneys.

 

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Michael Jordan Flying High After Reversal of Trial Court Decision in Trademark Case

Basketball superstar Michael Jordan will get a second bite at the apple in a case involving the use of his identity by a Chicago supermarket chain.

In 2009, Sports Illustrated published a special commemorative issue devoted to Jordan’s career, in recognition of his induction into the Basketball Hall of Fame.

Jewel Food Stores, Inc. was offered free advertising in the magazine in exchange for agreeing to sell it in its stores.

Jewel ran a full-page ad on the inside back cover of the magazine congratulating Jordan on his induction. The ad included a pair of “23” sneakers as well as Jewel’s trademarked logo and slogan.

Jordan sued, claiming that the ad (which used his well-known jersey number) was a misappropriation of his identity for Jewel’s commercial benefit. He brought claims under the federal Lanham Act (which governs trademark law) and also under the Illinois Right of Publicity Act.

Jordan sought $5 million in damages, plus punitive and treble damages under the Lanham Act.

Jewel claimed that its ad was a form of non-commercial speech entitled to First Amendment protection. A federal district court agreed, and Jordan appealed to the Seventh Circuit.

The parties agreed that if Jewel’s speech was non-commercial in the Constitutional sense, then the First Amendment would provide a defense to Jordan’s claims.

The Seventh Circuit noted that it did not necessarily agree with the parties on this point but that the commercial/non-commercial distinction was potentially dispositive:

If the ad is properly classified as commercial speech, then it may be regulated, normal liability rules apply (statutory and common law), and the battle moves to the merits of Jordan’s claims. If, on the other hand, the ad is fully protected expression, then Jordan agrees with Jewel that the First Amendment provides a complete defense and his claims cannot proceed. The district court held that the ad was fully protected noncommercial speech and entered judgment for Jewel.

The court reversed and remanded the case to the trial court for further proceedings. In doing so, the appellate court found that Jewel’s ad was in fact commercial speech:

Jewel’s ad … prominently features the “Jewel-Osco” logo and marketing slogan, which are creatively and conspicuously linked to Jordan in the text of the ad’s congratulatory message. Based on its content and context, the ad is properly classified as a form of image advertising aimed at promoting the Jewel-Osco brand. The ad is commercial speech and thus is subject to the laws Jordan invokes here.

If you have questions about whether you can use the names or likenesses of famous people, contact our office to arrange a free initial consultation with one of our attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Michael Jordan” by Diegoestefan97 is licensed under CC BY 3.0.

Schlumberger Claims Its Corporate Counsel Stole Trade Secrets

Schlumberger Ltd.,the world’s largest oilfield services company, has sued its former deputy general counsel in charge of intellectual property, claiming that she stole the company’s trade secrets before leaving the company to join Acacia Research Group.

Former Schlumberger counselCharlotte Rutherford is now a senior vice president at Acacia. She had been with Schlumberger since 1996.

Acacia is a firm that acquires and licenses patents and engages in patent litigation. The firm has been called “the mother of all patent trolls” and it has generated over $1 billion in revenue.

Schlumberger claims that Rutherford copied confidential trade secret information onto USB flash drives and deleted the information from her company-owned laptop just before she left for Acacia.

Schlumberger also claims that Rutherford asked Schlumberger’s information technology department to help her extract files from her company laptop, and that she took hard copies of confidential documents.

Acacia’s CEO said the case was without merit and a “bullying tactic” in response to a patent infringement case against Schlumberger.

Schlumberger admitted that the recent filing of a patent case against it had led it to investigate Rutherford, but did not identify the specific case.

On February 4, Schlumberger was sued for infringing a Dynamic Geosolutions patent in a case filed in Austin, Texas. The patent at issue is for a “Method and system for dynamic, three-dimensional geological interpretation and modeling,” and is used to analyze oil and gas reservoirs.

The inventors entered into a partnership with Acacia to license and enforce the patent in 2013.

The complaint charges that instead of seeking to license the invention, Schlumberger and other companies began using their own infringing software to provide consulting services and training to customers.

If you are concerned about whether your company is taking adequate steps to protect your trade secrets, contact our office to arrange a free initial consultation with one of our attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: ”Brazil – The first 100% Brazilian oil platform, the P-51 will produce about 180 thousand barrels of oil and 6 million cubic meters of gas per day when operating at full load.” by Divulgação Petrobras / ABr is licensed under CC BY 3.0.

Ninth Circuit Holds that Copyright Registration for Collective Work Includes Component Parts

The Ninth Circuit Court of Appeals has ruled that copyright registration of a collective work also registers the component parts within it.

The case involved Alaska Stock, a stock photography agency that registered large number of photographs with the copyright office at one time by registering CD catalogs of the photos. For “name of author” on the copyright registration form, Alaska Stock listed only three specific names and added “& 103 others.”

Under conditions specified by the US Copyright Office, large groups of published photographs can be registered together using a single form and by paying a single fee.

Alaska Stock licensed Houghton Mifflin Harcourt Publishing Co. to use the registered pictures in exchange for a fee based on the number of publications the photos were used in.

When Houghton Mifflin and its printer greatly exceeded the number of publications, Alaska Stock sued for copyright infringement.

Even though Alaska Stock’s form of registration was consistent with the Copyright Office’s procedure for more than 30 years, the district court dismissed its claims because it had not provided the names of each photograph and photographer.

The district court stated that the Copyright Office’s administrative practice did not supersede the clear statement of the copyright statute that required titles and authors to be listed individually.

The Ninth Circuit reversed, deferring to the Copyright Office’s interpretation of the law, noting that:

A longstanding administrative interpretation upon which private actors have relied aids in construction of a statute precisely because private parties have long relied upon it.

The court also noted that:

We are not performing a mere verbal, abstract task when we construe the Copyright Act. We are affecting the fortunes of people, many of whose fortunes are small. The stock agencies through their trade association worked out what they should do to register images with the Register of Copyrights, the Copyright Office established a clear procedure and the stock agencies followed it. The Copyright Office has maintained its procedure for three decades, spanning multiple administrations. The livelihoods of photographers and stock agencies have long been founded on their compliance with the Register’s reasonable interpretation of the statute. Their reliance upon a reasonable and longstanding administrative interpretation should be honored. Denying the fruits of reliance by citizens on a longstanding administrative practice reasonably construing a statute is unjust.

If you have questions about the registration of collective works, or copyright law in general, contact our office to arrange a free initial consultation with one of our copyright lawyers.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution:”Contact sheet of 35mm (24×36 mm) black-and-white film” by Satashi (きたし) is licensed under CC BY 3.0

Federal Circuit Rejects $3.5 Million Patent Verdict against Safeway Subsidiary

The Federal Circuit Court of Appeals has rejected a $3.5 million patent infringement jury verdict against Blackhawk Network Inc., a subsidiary of Safeway Inc.

InComm, a prepaid product and transaction services company, sued Blackhawk in 2009, alleging that it had infringed two claims of InComm’s patent for a “System and Method for Authorizing Stored Value Card Transactions.”

Blackhawk, based in Pleasanton, California, operates gift card “malls” selling prepaid gift cards, debit cards, and telephone calling cards via grocery stores, “big box” stores, convenience stores, and other retailers and online outlets.

The damages were based on what the jury determined to be a “reasonable royalty” if Blackhawk had licensed use of the patent.

The suit related to eight lines of source code that were part of Blackhawk’s gift card activation platform. Blackhawk claims that the code was not actually used.

After the jury award in 2012, Blackhawk (which described itself as “not a technology company”) apologized to the jury and said that it would take steps to remove infringing source code from its platform.

Blackhawk also appealed the jury verdict.

The Federal Circuit ruled that the district court had misconstrued a claim in InComm’s patent that covered how InComm’s computer program determined whether a retailer’s point-of-sale device (e.g., a cash register) was authorized to make a gift card transaction.

According to the Federal Circuit’s opinion, InComm had conceded during the patent re-examination process that its claim required the use of point-of-sale device identifiers.

According to the Federal Circuit, there was no dispute that “Blackhawk’s accused product fails to use the terminal identifier when making such [an authorization] determination.”

If your company has been accused of patent infringement, or if you anticipate being involved in patent litigation, contact our office to arrange a free initial consultation with one of our patent lawyers.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Marina Safeway in Hamilton” by Caldorwards4

PTO Glossary Program Will Expedite Software Patent Application Process

The US Patent and Trademark Office is introducing a pilot program to use glossaries to speed up the processing of software-related patent applications.

The program will launch on June 2 and run until December 12.

The Glossary Initiative arose out of a Software Partnership Meeting held by the USPTO at UC Berkeley School of law in October of 2013.

According to the PowerPoint Presentation at that meeting, the use of glossaries is intended to clarify “potentially ambiguous, distinctive, and specialized terms.”

The USPTO noted that although some favor the use of glossaries, the majority of patent applicants oppose them, as in the following example:

Requiring an applicant to put a glossary of “potentially ambiguous, distinctive, and specialized terms” in the specification seems to handcuff an applicant to using terms that are actually defined, limited the language that could be used in the claims.

The Patent Office conducted a study on the use of glossaries in patent applications and found:

  • No significant difference in the occurrence of patentability errors based on the presence/absence of glossaries or definitions
  • The presence of a glossary did not impact either the pendency or ultimate disposition of a patent application.

However, in the study definitions were not standardized in any way as to form and content, and there were too many variables for a controlled evaluation.

Thus, the Patent Office concluded that there was a need for a pilot program under more controlled conditions.

According to Michelle Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, the USPTO recognizes “that a patent with clearly defined boundaries provides notice to the public to help avoid infringement, as well as avoid costly and needless litigation down the road.”

Patent applications accepted into the pilot program will be given expedited treatment.

If you plan to submit a software-related patent application and would like to be included in the pilot program, contact our office to make an appointment for a free initial consultation with one of our patent lawyers.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Sketch” by Bill Bradley (billbeee) is licensed under CC BY 3.0

In Lexmark Case, Supreme Court Says False Advertising Claims Not Limited to Competitors

The US Supreme Court has ruled that standing in a federal false advertising case is not limited to the advertiser’s competitors. The court held that it is sufficient for standing if the plaintiff has a commercial injury “flowing directly from the deception wrought by the defendant’s advertising.”

The case arose out of a dispute between Lexmark International Inc., a maker of laser printers and printer cartridges, and Static Control Components Inc., which sells parts and supplies for reusing used printer cartridges (including Lexmark’s).

For certain expensive printers, Lexmark offered a “Prebate” program under which buyers could get print cartridges at a discount if they agreed to return them to Lexmark for refilling.

To prevent users from having the cartridges refilled by third parties at a lower cost, Lexmark included a function on a computer chip on each cartridge. A refurbished cartridge would not work unless Lexmark replaced the chip.

Static made a “Smartek” chip that mimicked the effect of the Lexmark chip and sold it to third parties that refurbished Lexmark cartridges. The Static chip included an exact copy of Lexmark’s Toner Loading Program.

Lexmark first sued Static for copyright infringement in 2002, and in 2003 won a preliminary injunction against Static. In 2004, Static filed an action seeking a declaration that its redesigned chips did not infringe Lexmark’s copyrights. Lexmark responded with counterclaims including claims of patent infringement.

Under the Lanham Act (which governs false advertising and trademark claims), Static alleged that Lexmark had engaged in two types of false or misleading conduct:

  • Lexmark “purposely misleads end users” by leading Prebate customers to believe that they are legally required to return cartridges to Lexmark after use, and
  • Lexmark “sent letters to most of the companies in the toner cartridge remanufacturing business” falsely alleging that it was illegal to sell refurbished Prebate cartridges and to use Static’s products to refurbish the cartridges.

Static alleged that Lexmark had disparaged its business and products by alleging that Static’s products infringed Lexmark’s patents and that its business was therefore illegal.

The Supreme Court determined that statements like Lexmark’s (given the requisite intent and resulting harm) can be the basis for an action for false advertising even though Static and Lexmark are not competitors in the chip market.

The Supreme Court’s “zone of interest and proximate cause” approach probably expands the scope of federal false advertising claims.  This is significant because libel (including trade libel) is still generally covered in CGL insurance policies.

If you have questions about false advertising, copyright infringement, or patent infringement, contact out office to arrange a free initial consultation with one of our intellectual property attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Ink-jet printer” by Julo

Supreme Court Rules Patent Holders Have Burden of Proof in Licensing Cases

The US Supreme Court has ruled that patent owners have the burden of proof when a patent licensee sues seeking a ruling that the patent is invalid and has not been infringed.

In the case of Medtronic Inc. v. Boston Scientific Corp. et al., Medtronic had licensed defibrillator patents from Boston Scientific Corp.  Boston Scientific had previously licensed the same patents from Mirowski Family Ventures LLC.

Medtronic sought a declaratory judgment that its new products were not covered by some of the Mirowski patents.  The terms of the license prohibited Mirowski from filing patent infringement counterclaims against Medtronic.

A lower court found that Mirowski had the burden of proving that Medtronic’s new products were covered by the Mirowski patents and also found that Mirowski had failed to meet that burden.

The Federal Circuit (which specializes in patent cases) vacated that ruling and held Medtronic had the burden of showing that it did not infringe.

The Supreme Court disagreed with the Federal Circuit, holding that the burden of proof of infringement still falls on the patent holder, even if the patent holder can’t bring an infringement claim against the licensee.

According to the opinion by Justice Stephen Breyer,

In our view, the burden of persuasion is with the patentee, just as it would be had the patentee brought an infringement suit. Simple legal logic, resting upon settled case law, strongly supports our conclusion.

Justice Breyer noted that, since patents can be complicated, the patent owner is in a better position than the alleged infringer to specify why and how a product infringes:

Until he does so, however, the alleged infringer may have to work in the dark, seeking, in his declaratory judgment complaint, to negate every conceivable infringement theory.

The case will now go back to the federal district court for further proceedings, including a determination on the infringement issue.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.