Category: Blake’s Patents, Trademarks, and Copyrights

Hi All,

On June 15 at 11 am to noon (Eastern Time), the United States Patent and Trademark Office will be offering a free Inventor Chat.  The topic will be an introduction to Trademarks.  More information can be found here.

I would like to congratulate my client Marcy’s Tennis Academy, LLC, of Shelton, CT for obtaining a registered trademark for their mark “MTA Serving Up Fun”.  The mark can be seen here.

I would like to congratulate my client Andrew Powell from New Milford, Connecticut on receiving a patent for his Fireplace Gas Insert invention. The patent can be seen here.

I continually strive to stay on top of current developments in Patent, Trademark and Copyright law.  As part of my continuing legal education, on Thursday April 27, 2017 I will be at the Joint Patent Practice Seminar in NYC.  The presenters include: Andrew Hirshfeld, Commissioner for Patents for the U.S. Patent and Trademark Office; and the Honorable Richard Linn, Senior Circuit Judge, United States Court of Appeals for the Federal Circuit.  More information on the seminar can be found here.

I would like to congratulate Kirk Matson of Lebanon, CT on receiving a patent for his Buoyant Ice Transport Vehicle.  I worked on Kirk’s patent application when I was a professor at the UCONN School of Law Intellectual Property and Entrepreneurship Clinic.  Kirk’s patent can be seen here.

I started the Law Offices of Michael A. Blake, LLC back on April 1, 2004 in West Hartford, CT.  In November of 2004 we moved to Milford, CT and have been here ever since then.  I would like to thank all my clients for making my patent and trademark law practice a success!  As I enter my 14th year, I look forward to providing valuable patent and trademark services to the people and businesses of Connecticut, New England, and the United States!

Last night was the first night of my first Milford adult education class on Patents, Trademarks and Copyrights.  We had a great class, and covered patents last night.  The attendees had insightful questions, and we had a great discussion.  On Thursday, March 30, 2017 at 6:30 pm, the 2nd class will cover trademarks and copyrights.  You can still sign up, go here for sign up information.

Edward Florczak, of Shelton, CT, recently obtained a patent for his palm shelf insert invention.  Ed’s invention is related to handguns and the patent can be seen here.  Congratulations Ed!

My client Shark Cage AS, formerly Mobile Shelter Systems AS, just received an issued patent for their Storage and Transport Container.  Shark Cage AS is based in Fornebu, Norway with offices in San Antonio, Texas–my old stomping grounds.  The patent can be seen here.

On March 1, 2017, (in a nonprecedential opinion) the court of appeals federal circuit (“CAFC”) invalidated 3 patents owned by Smartflash and asserted against Apple.  A jury found that Apple was liable for $533 in damages to Smartflash.  The CAFC threw out those damages when it found the patents ineligible.

At pages 7-8 the court laid out the relevant law and the test for patent eligibility:

     “Section 101 of the Patent Act states that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. In interpreting this statute, the Supreme Court has held that the broad language of this provision is subject to an implicit exception for “laws of nature, natural phenomena, and abstract ideas,” which are not patentable. Alice, 134 S. Ct. at 2355.

     “To determine whether the exception applies, the Supreme Court has set forth a two-step inquiry. Specifically, courts must determine (1) whether the claim is directed to a patent-ineligible concept, i.e., a law of nature, a natural phenomenon, or an abstract idea; and if so, (2) whether the elements of the claim, considered “both individually and ‘as an ordered combination,’” add enough to “‘transform the nature of the claim’ into a patent eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).”

At pages 9-10 the CAFC went on and applied inquiry (1) of the Alice rule:

     “In Alice, the Supreme Court explained that “fundamental economic practice[s]” and other “method[s] of organizing human activity” are not patent-eligible because they are abstract ideas. 134 S. Ct. at 2356–57. … Following this guidance, we have noted that when considering claims purportedly directed to “an improvement of computer functionality,” we “ask whether the focus of the claims is on the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016);…             

“…The district court correctly concluded that “the asserted claims recite methods and systems for controlling access to content data, such as various types of multimedia files, and receiving and validating payment data.” Smartflash, 2015 WL 661174, at *8. As such, the asserted claims are directed to the abstract idea of conditioning and controlling access to data based on payment.”

At page 12, the CAFC applied inquiry (2) of the Alice rule:

“…As such, merely storing, transmitting, retrieving, and writing data to implement an abstract idea on a computer does not “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355.


“….There, we found that the claims were patent eligible because they transformed the manner in which a hyperlink typically functions to resolve a problem that had no “pre-Internet analog.” Id. at 1258. …As we noted there, the Ultramercial claims were “directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–16). Nevertheless, those claims were patent ineligible because they “merely recite[d] the abstract idea of ‘offering media content in exchange for viewing an advertisement,’ along with ‘routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet.’” Id.”

Since the two step inquiry of Alice came out, my goal has been to try my best to make sure that the claims are NOT directed to an “abstract idea” but rather, try to write the claims so they are directed to a tangible result, namely “a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” as stated in 35 §101–in this way, one can hopefully avoid the entire Alice problem.  The opinion can be found here.