On Nov. 20, 2018, Juul Labs, Inc. (“JLI”) filed a complaint at the ITC alleging violations of Section 337 of the Tariff Act of 1930, as amended. JLI, creator of JUUL ENDS devices, identifies twenty-five respondents as allegedly infringing one or more of five U.S. patents (“asserted patents”) owned by JLI. The asserted patents are each related to cartridges or “pods” for use in vaporizer devices. JLI identifies various cartridges/nicotine delivery “pods” that are manufactured for or by the respondents as the infringing articles. JLI requests from the Commission a permanent limited exclusion order to bar from entry into the United States the Accused Products, a permanent cease-and-desist order prohibiting Respondents from importing, marketing, distributing, repairing, providing warranty services, selling, offering for sale, or selling after importation into the United States the various identified ENDS products and related components.
Thursday, November 29, 2018
Friday, July 28, 2017
Earnhardt v. Kerry Earnhardt, Inc.
In Earnhardt v. Kerry Earnhardt, Inc. (CAFC 2016-1939), Teresa Earnhardt (Ms. Earnhardt) opposed the registration of Kerry Earnhardt, Inc.’s (KEI) trademark applicant to register the mark EARNHARDT COLLECTION for “furniture” with the U.S. Patent and Trademark Office (PTO) based on an asserted likelihood of confusion with her registered marks in DALE EARNHARDT for goods and services and her common law rights in EARNHARDT. Additionally, Ms. Earnhardt opposed registration because in her view EARNHARDT COLLECTION is “primarily merely a surname” under Section 2(e)(4) of the Lanham Act (the Act). The Trademark Trial and Appeal Board (Board) dismissed Ms. Earnhardt’s opposition because it found that there was no likelihood of confusion between EARNHARDT COLLECTION and Ms. Earnhardt’s marks, and it found that EARNHARDT COLLECTION is not primarily merely a surname.
Ms. Earnhardt appeals the Board’s finding that EARNHARDT COLLECTION is not primarily merely a surname. The Court of Appeals for the Federal Circuit held that it was unclear whether the Board’s analysis properly applied its decision in In Re Hutchinson Technology Inc. (Fed. Cir. 1988), and the appellate court vacated the Board’s opinion and remanded for reconsideration. The Board found that EARNHARDT COLLECTION is not primarily merely a surname because the term “collection” diminishes the surname significance of “Earnhardt” in the mark as a whole. Also, the Board found that “collection” is “not the common descriptive or generic name” for KEI’s goods and services - KEI has broad business ventures. The Board analogized the issues in this case to issues raised in Hutchinson, a case in which the Court of Appeals for the Federal Circuit found that the term “Technology” was not “merely descriptive” of Hutchinson’s goods - i.e., “technology” did not convey an “immediate idea” of the “ingredients, qualities, or characteristics of the goods” listed in the application.
Under the Hutchinson test for surnames, a mark is primarily merely a surname if the surname “is the primary significance of the mark as a whole to the purchasing public.” A mark comprised of two or more terms must be considered “in its entirety” rather than merely “consider[ing] the mark as two separate parts” - e.g., “the Board may not ‘dissect’ the mark into isolated elements.” See e.g., DuoProSS Meditech Corp. The Court of Appeals, therefore, states that “[in order] to evaluate whether the commercial impression of a mark that combines a surname with a second term is still primarily merely the surname, the PTO must determine whether the primary significance of the mark as a whole in connection with the recited goods and services is that of the surname.” And “[a] key element in such an inquiry is determining the relative distinctiveness of the second term in the mark.” “[T]he Board, [however], may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components.” The Court of Appeals for the Federal Circuit, however, did not hold that “any mark consisting of a surname and a merely descriptive term is registrable as a trademark as a matter of law, nor did [the court] find that such a mark is always primarily merely a surname and not registrable as a matter of law” - instead, a court must make the two inquiries: (1) determine whether the additional term was “merely descriptive” of the applicant’s goods and services, and (2) determine whether adding the additional term to the surname altered the primary significance of the mark as a whole to the purchasing public.
Here, that the Board failed to adequately determine whether the addition of the term “collection” to the mark EARNHARDT COLLECTION altered the primary significance of the mark as a whole to the purchasing public. Specifically, the Board, in view of Hutchinson, must determine as a part of this inquiry whether the “collection” is merely descriptive of KEI’s goods and services. The Court on remand to the Board stated that the Board should determine “(1) whether the term ‘collection’ is merely descriptive of KEI’s furniture and custom home construction services, and (2) the primary significance of the mark as a whole to the purchasing public.”
Monday, January 23, 2017
What is “Forum-Shopping?”
This is the act of a plaintiff seeking the best court to bring an action in to maximize the chance of victory. For example, in patent infringement cases, plaintiffs, on average, tend to file in the Eastern District of Texas because of the belief that this forum is best for patent owners – e.g., damages, invalidity challenges, etc. Below is a heat map for patent infringement filings in 2010.
Each forum, or court, may apply a different law or interpretation of the law, opposed to another. The plaintiff, who seeks to maximize the probability of winning, often selects the court where the law is on their side. The process that the plaintiff’s lawyer uses is called “backward induction.”
A lawyer, using this backward induction, essentially creates a decision tree for each of the available forums and looks to each forum to see which law is applicable and other consideration – statute of limitations, procedural issues (e.g., the granting of stays, motions to dismiss, summary judgment), the strength the opposing party might have with counterclaims and defenses (e.g., substantive law), and possibly the worst case scenario (attorney fees, if the case is deemed frivolous).
Then, once this detailed analysis is completed, the lawyer will assess the overall risks and probability of prevailing for each forum to select the most optimal for the client.
Additional reading:
https://www.eff.org/deeplinks/2014/07/why-do-patent-trolls-go-texas-its-not-bbq
https://patentlyo.com/patent/2010/05/patent-litigation-forum-shopping.html
https://patentlyo.com/patent/2010/05/patent-litigation-forum-shopping.html
Caveat and Disclaimer:
I am not an attorney, but a law student. Further, the materials available at this website are for informational purposes only and not for the purpose of providing legal advice. You should contact your attorney to obtain advice with respect to any particular issue or problem. Use of and access to this Website or any of the e-mail links contained within the site do not create an attorney-client relationship between myself and the user/reader. The opinions expressed at or through this site are the opinions of the individual author.
Friday, January 7, 2011
Priority and how it affects Claim analysis and prior art.
I came across a forum where a prosecuting attorney had posted a question regarding a 103 rejection. The question posted was:
“Has anyone ever seen a 103 rejection like this?
In a CIP, the independent claims were allowed with a terminal disclaimer and a number of the dependent claims were rejected under 103. The rationale the Examiner used is that the independent claims have a priority claim back to the parent and avoid the related prior art, but the dependent claims contain subject matter that was introduced in the CIP and thus cannot avoid the related prior art.
I've always thought under In re Fine (among other twenty year old Fed. Cir cases), without exception, a dependent claim cannot be rejected under 103 if the underlying independent claim is allowable. Has anyone seen anything different that they could cite to or identify?” [1]
After reading this post, I felt like I understood why the claims were rejected. It comes down to when the inventor had possession of the claimed invention.
First, let us define what a Continuation-In-Part (CIP) [3]: A CIP adds new matter to the specification, and the effective filing date of the CIP is determined for each claim based on the date which the claim can find support (i.e. satisfying the 112 ¶1 requirements [2])
see MPEP 201.08
see MPEP 201.08
Example 1:
Assume a parent application disclosed the corresponding structure of {A,B}, with sufficient written description and enablement. Later the inventor of the parent application discovers some enhancement to the previous invention, that is {A,Bsp}, where B is more specific.
He quickly files a CIP claiming priority to the previous application, however any claims directed towards Bsp would only receive the filing date of the CIP and NOT the parent. Since the Parent application does not support Bsp in view of 112 ¶1.
So assuming the parent application is filed in 01/2006 and the CIP is filed in 01/2007
Claim 1. An apparatus comprising:
A
B
Claim 2. The apparatus of Claim 1, wherein B is Bsp.
Thus,
Claim 1 would have a filing date of 01/2006
Claim 2 would have a filing date of 01/2007 - thus any prior art before this date could be used to reject the dependent claim, and Claim 1 could still be allowed - cool huh.
This example could be tweaked for other priority documents (foreign priority examples). I believe 112¶1 is quite clear what is required for determining possession of an invention.
For example an application claims priority to 2 foreign documents.
US Application filing date: 01/2006
Foreign Application 1: 01/2005
Foreign Application 2: 06/2005
Assuming sufficient support is each documents of the following features.
US Application discloses the features of {A,B,C,D,E}
Foreign Application 1 {A,B,C,E}
Foreign Application 2 {D,E}
Thus priority should be conducted on a claim by claim basis, if in the US application had the following claims
Claim 1. An apparatus comprising:
A;
B;
C; and
E.
Claim 2. The apparatus of Claim 1, further comprising D.
The priority (foreign date) would be extended to 01/2005 for claim 1, however Claim 2 would only receive the filing date of the US application. Since, both foreign priority documents fail to disclose a written description and enablement of the claimed apparatus that is how one skilled in the art would have constructed an apparatus comprising the elements {A-E}.
Assuming the examiner only discovered a single 102 prior art document that teaching the claimed invention {A-E} with a date on 05/2005. The examiner would allow claim 1. However, the examiner would reject the dependent claim 2, since the priority date is only 01/2006.
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