IP Law Bulletin

Summary: Two recent Federal Circuit cases serve as a reminder that the means-plus-function doctrine should be at the forefront of practitioners’ minds when drafting or evaluating patent claims, particularly in the case of computer-implemented inventions. These cases also demonstrate yet another weapon for invalidating functionally-claimed software patents.

The doctrine of “initial interest confusion,” scorned by many legal commentators and rejected by numerous courts, is alive and well in the Ninth Circuit, as evidenced by its recent usage by a watch manufacturer to overcome a summary judgment motion by online retailer Amazon. The initial interest confusion doctrine holds that a defendant can be deemed liable where a plaintiff can demonstrate that consumers are likely to be confused by a defendant’s conduct at the time of the consumers’ initial interest in a product or service, even if that initial confusion is corrected prior to an actual purchase. The doctrine is prevalent in so-called “keywords” cases in which one company pays the proprietor of an Internet search engine (e.g., Google) to prominently display the paying company’s website(s) in Internet searches conducted by consumers that include keywords such as a competitor’s company name or products. Alternatively, in the present case, the proprietor of the searchable website uses particular keywords associated with one company or product to drive consumer traffic to a similar product offering.

Arguing that its invalidated diagnostic patent claims were “collateral damage in what is properly a war on frivolously broad claims directed to things like correlation tables and actual strands of human DNA,” on August 13, 2015, Sequenom petitioned the Federal Circuit for an en banc review of its June 12 holding in Ariosa Diagnostics, Inc. v. Sequenom, Inc. In that strikingly sweeping decision, a Federal Circuit panel invalidated U.S. Patent 6,258,540 (the ’540 patent) as being directed to ineligible subject matter. Sequenom now warns that the panel decision “reads recent Supreme Court precedent to create an existential threat to patent protection for an array of meritorious inventions” beyond those in the personalized medicine and diagnostics industries:

If this Court does not step in and draw this line, the panel’s rule threatens to swallow many more meritorious inventions along with this one. The core of nearly every major innovation is the discovery of a fact about the natural world that motivates inventors to combine existing techniques to achieve new practical results.

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) released a set of proposed rule changes that affect the post-issuance patent review proceedings governed by the Patent Trial and Appeal Board (PTAB). As noted in a blog post announcing the release, this is the second iteration of rule changes concerning the America Invents Act (AIA)-created inter partes review (IPR), post-grant review (PGR), and transitional program for covered business method patents (CBM)—the first included a few “quick fixes” enacted earlier this year. While the proposed changes have no effect until a final rulemaking in the future, the USPTO encourages practitioners to review the developments and, if inspired, participate in the comment period that is open until October 19, 2015.

In the recent Federal Circuit decision in Circuit Check v. QXQ Inc., the Court discusses the bounds of analogous art when considering the scope and content of the prior art in an obviousness determination. In making the determination whether a claim is obvious, the fact finder is required to decide, among other things, the scope and content of the prior art. This is because not every potential disclosure that pre-dates the invention can be considered prior art; the disclosure must be analogous to the claimed invention. It is well-established that the test for whether prior art is analogous is “if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” The Federal Circuit used the Circuit Check decision to iterate that there are indeed limits to determining what is “reasonably pertinent” to the particular problem the inventor is trying to solve.

Summary: Recently the United States Trademark Trial and Appeal Board (TTAB) considered the implications of competing filings that occurred on the same day. In particular, a trademark applicant filed an express abandonment of its trademark application, and, later that same day, a third party filed an opposition against the trademark application. While the TTAB agreed with the applicant and both dismissed the opposition without prejudice and allowed the application to be abandoned without prejudice, the timing of the filings played no role in reaching this decision. To the contrary, the TTAB stated that it “shall not take cognizance of fractions of a day” and assumed that the parties’ opposition and express abandonment filed on the same day were filed at the same instant. What impact did the decisions being “without prejudice” as opposed to “with prejudice” have on the parties though?

On July 30, 2015, Drew Hirshfeld was appointed to the position of Commissioner for Patents for the United States Patent and Trademark Office (USPTO).  Mr. Hirshfeld reports directly to Michelle Lee, the Director of the USPTO, and according to the USPTO website, he “is responsible for managing and directing all aspects of this organization which affect administration of patent operations, examination policy, patent quality management, international patent cooperation, resources and planning, and budget administration.”