A patent was issued for a method of cooking bacon, where the cooked bacon was sold to consumers. Plaintiffs sued defendant infringer for patent infringement. Defendants counterclaimed that the patent was indefinite. The claims language that was indefinite was in the preamble to claims 1 and 3 which recites “[a] process … to produce a pre-cooked sliced bacon product resembling a pan-fried bacon product.” (as distinguished from microwaved bacon) The issued patent did not define or identify specific criteria for measuring or determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon. The district therefore ruled that the bacon patent is invalidated due to indefiniteness.
Two interesting points, first, the method of cooking bacon would have been patentable, if the patent specification defined or identified specific criteria for measuring or determining the texture, mouth feel, bite, appearance, or color of pan-fried bacon. Second, the preamble to the claims, were considered limiting on the rest of the claim. Many attorneys have been taught that preambles are not limiting. The case is HIP Inc. v. Hormel Foods Corporation et al., case number 1:18-cv-00615 (D. Del.), and can be found here.
Many clients and attorneys think filling out a copyright registration form and filing it is easy. However, if you make a mistake, it can lead to catastrophe!
In a recent case, Gold Value International Textile, Inc. d.b.a. Fiesta Fabric v. Sanctuary Clothing, LLC et al., No. 17-55818, 2019 WL 2347390 (9th Cir. Jun. 4, 2019), Fiesta alleged that defendant Sanctuary Clothing copied its fabric design, which was used to manufacture a blouse that was sold by defendant retail outlets. Sanctuary filed a counterclaim, seeking invalidation of Fiesta’s copyright. The district court and the 9th circuit both found that Fiesta’s copyright registration was invalid.
As background, a group of related works may be registered together for a single fee under some circumstances. However, published works may not be included with unpublished works. Fiesta had applied to register the copyright in the designs as part of a group of thirty-three fabric designs, certifying that none of them had been published. But, Fiesta had previously sold 190 yards of the fabric in issue as samples to “a limited group of existing and potential customers for the limited purpose of securing full production contracts.” Fiesta’s president testified that he knew of these sales but did not consider sampling to be a publication. This was the catastrophic mistake. The district court granted summary judgment in favor of defendants Sanctuary Clothing, LLC. The 9th circuit panel affirmed the district court’s conclusion that Fiesta’s copyright registration was invalid under 17 U.S.C. § 411(b) because Fiesta knowingly included inaccurate information in its copyright application that would have caused the Copyright Office to deny registration. Specifically, Fiesta knowingly included previously published designs in its application to register an unpublished collection. In addition, the Register of Copyrights indicated that it would not publish a single group of published and unpublished works. Because a valid registration is a precondition to bringing an action for infringement, the panel affirmed the district court’s grant of summary judgment in favor of defendants. The panel further held that defendants were prevailing parties, and the district court did not abuse its discretion in awarding attorney’s fees under 17 U.S.C. § 505 even though defendants prevailed on a technical defense.
Defendants were awarded attorney’s fees and costs, which the district court granted in the amount of $121,423.01 against Fiesta. The case can be found here.
The moral of the story is, make sure you understand everything you are filling out when registering a copyright, and hire an expert in copyright law.
In a copyright infringement lawsuit between Rimini Street, Inc. and Oracle USA, Inc., a jury awarded Oracle damages after finding that Rimini Street had infringed various Oracle copyrights. After judgment, the District Court also awarded Oracle fees and costs, including $12.8 million for litigation expenses such as expert witnesses, e-discovery, and jury consulting. In affirming the $12.8 million award, the Ninth Circuit acknowledged that it covered expenses not included within the six categories of costs that the general federal statute authorizing district courts to award costs, 28 U. S. C. §§1821 and 1920, provides may be awarded against a losing party. The six categories of litigation expenses that qualify as “costs” are: (1) fees of the clerk and marshal; (2) fees for the court reporters; (3) fees and disbursements for printing and witnesses; (4) fees for copies of materials used in the case; (5) docket fees; and (6) compensation of court-appointed experts and translators. See 28 U.S.C. §§ 1821, 1920. The court nonetheless held that the award was appropriate because the Copyright Act gives federal district courts discretion to award “full costs” to a party in copyright litigation, 17 U. S. C. §505.
The Supreme Court in Rimini Street, Inc. v. Oracle USA, Inc., 139 S.Ct. 873 (2019) reversed, holding that the term “full costs” in §505 of the Copyright Act means the costs specified in the general costs statute codified at §§1821 and 1920 and does not therefore include all litigation expenses such as expert witnesses, e-discovery, and jury consulting. The Rimini Street case can be found here.
Last week, I attended the American Intellectual Property Law Association (AIPLA) Trademark Boot Camp 2019. I like to take these refresher courses on intellectual property to make sure I stay up to-date on the ever changing legal landscape of intellectual property so I can continue to provide the best patent, trademark, and copyright legal services to my clients. The 2-day AIPLA Trademark Boot Camp 2019 took place June 6-7 at the AIPLA headquarters in Arlington, VA and covered the basics of trademark application filing, searching, appeals, oppositions, and cancellations. More information can be found here.
Policymakers, practitioners, and business owners interested in learning about policies and strategies to more effectively combat counterfeit goods will want to attend this free, all-day program organized by the U.S. Patent and Trademark Office (USPTO) and the McCarthy Institute on June 6, 2019. It will bring together more than two dozen experts in the fields of brand protection and anti-counterfeiting, who will take an in-depth look at such topics as:
- Fighting counterfeits in a global market
- Utilizing new technologies to protect brands
- Enlisting allies in the fight against counterfeiting
- Consumer protection and counterfeits
- What government can do to help
Featured speakers will include Under Secretary of Commerce for Intellectual Property and Director of the USPTO Andrei Iancu, and other USPTO executives.
Register here. There is no charge to attend the program, but registration is on a first-come basis. Please register in advance as space is limited, and there will be limited ability to accommodate walk-in registrations.
This program will be available for viewing remotely via LiveStream. No registration is required.
Full program agenda is available in .docx format.
A group of lawmakers released a draft bill to reform our patent law regarding subject matter eligibility. On May 22, 2019, the draft bill was released, and can be seen here.
The transformational aspect of the bill is that it would prohibit the use of “judicially created exceptions” in determining patent eligibility. The bill would also reject the consideration of other sections of the Patent Act when determining §101 eligibility. In lay terms, if this act is enacted, expect a much lower patent eligibility standard and increased patenting of software and business method inventions. Whether this bill can be enacted is to be determined!
Above is a picture of me standing in front of a robot manufacturing an engine block at EASTEC 2019.
Today I drove up to West Springfield, MA to attend EASTEC 2019. I met a lot of interesting people with very neat machines and manufacturing processes.
EASTEC 2019 is the leading Northeast manufacturing trade show and is being held May 14-16, 2019 at the Eastern States Exposition in West Springfield, Massachusetts and is produced by Society of Manufacturing Engineers (SME) and The Association For Manufacturing Technology (AMT). EASTEC has been providing solutions to manufacturing challenges for more than 35 years.
EASTEC attendees come from a variety of industries including Aircraft and Aerospace, Automotive, Medical, Defense, Industrial and Commercial Machinery, and more.
EASTEC exhibitors have the opportunity to meet face-to-face with over 13,000 attendees, of which 77% have a role in purchasing decisions with 29% having manufacturing equipment budgets of more than $200,000. More information can be found here.
I would like to congratulate my client John M. Schuld for obtaining a new patent for his “Ammunition replica bottle opener”. I was his patent attorney on this matter. The patent can be found here.
The USPTO has issued new guidelines regarding cannabis-derived goods and services. The guidelines were issued on May 2, 2019 and can be found here. The new guidelines explain that the 2018 Farm Bill exempts hemp, which is defined as cannabis plants and derivatives such as CBD that contain no more than 0.3% THC on a dry-weight basis.
Therefore, for trademark applications that identify goods and or services encompassing cannabis or CBD, the 2018 Farm Bill probably removes the CSA as a ground for refusal of the application so long as: (1) the good and/or services are derived from help; (2) The identification of goods and/or services specify that the hemp products contain less than 0.3% THC; and (3) the application was filed on or after Dec 20, 2018, except for prior filed application, the applicants have the option of amending the filing date and filing basis of the application to over the CSA as a ground of refusal.
However, be aware that hemp related goods and/or services may still raise legal issues under other laws include the Federal Food Drug and Cosmetic Act (FDCA).
Today I made an impromptu trip to MakeHaven in New Haven. A member, John, was working there and gave me a quick tour of their 5000 sqft facility. They have all sorts of tools and machinery that members can use, such as a working kitchen, homebrew area, quilting frame and CNC quilter, GNC router, injection molder, and of course 3D printers, and a bunch of other stuff. It was a very impressive makerspace. The operations manager Kath showed up, and we had a very nice chat. More information can be found here.