Lack of Capitalization of “internet protocol” in Claim Contributes to Invalidity Over Prior Art

US07269247_Fig1The importance of the wording of a patent claim is paramount. And, even the capitalization of the words of the claims can matter as shown in the case of AIP Acquisition LLC v. Cisco Systems, Inc., No. 2016-2371 (Fed. Cir. 2017).

Cisco Systems challenged the validity of U.S. Patent No. 7,269,247, owned by AIP Acquisition. The patent is directed to systems and methods for interconnecting otherwise incompatible telephone networks using the Internet, for example, for the purpose of placing a phone call through various networks including the “Internet or other data networks.”

A disputed portion of claim 1 provided “the second format being internet protocol” and a disputed portion of claim 16 provided “wherein said second format is Internet protocol.”

In order to distinguish the prior art and save the validity …

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Can Benefit to Provisional Patent Application be Restored When the One Year Deadline to File a Nonprovisional is Missed?

A provisional patent application is not examined by USPTO and will not result in a patent. In order to gain the benefit of the provisional application, a non-provisional application must be filed within one year of the filing date of the provisional application and must claim priority to the provisional application. But what if you fail to file the non provisional application within one year of the provisional filing date? Is all benefit of the provisional application lost? Maybe not.

The law provides a two month window after the one year deadline where the benefit of the provisional application can be restored. 35 USC 119(e), 37 CFR 1.78(b), MPEP 211.01(a)(II). But there are important limitations on the option to restore the benefit of the provisional application.

The first limitation is that the delay …

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Mark Twain on New Ideas and the Need for Novelty Searches

“Then it occurred to me that as I was not well acquainted with the history of the drama [and] it might be well for me to make sure that this idea of mine was really new before I went further.” -Mark Twain

MarkTwainVol2In the Autobiography of Mark Twain, Volume 2: The Complete and Authoritative Edition, Twain recounts the time when he came up with an idea for what he thought was a new play.

He said, “One day a splendid inspiration burst in my head and scattered my brains all over the farm…” He continued, “That wonderful inspiration of mine was what seemed to me to be the most novel and striking basic idea for a play that had ever been imagined.”

He then says that “I was going …

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Limits on Use of Crowded Market Evidence to Show Weak Trademark Rights

AMIGOSDurrset Amigos Ltd (Durrset) filed a petition to cancel Amigo Meat Distributors’ (AMD) trademark registration on the mark AMIGOS FOODS for the services of wholesale meat products distributorship.

As a basis to cancel, Durrset asserted its common law mark AMIGOS FOODS and its registration for AMIGOS in a stylized form for “prepared tortillas, taco sauce, picante sauce (hot sauce) and taco shells” and for the services of “manufacturing and packaging food to the order and specification of others.”

The TTAB (Board) found that the parties’ marks and the parties’ goods were similar in Durrset Amigos, Ltd. v. Amigos Meat Distributors, L.P., No. 92060896 (TTAB 2017). AMD tried to save its registration by asserting that Durrset’s AMIGOS FOODS mark was extremely weak due to third party uses of AMIGOS marks in the “general area of …

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$200M in Annual Sales Under Highly Descriptive Mark Insufficient to Establish Trademark Rights

When you have a highly descriptive mark, even hundreds of millions of dollars in annual sales under the mark may not be enough to establish trademark rights.

magnestiaMagnesita Refractories Company (MRC) applied to register the mark MAGNESITA in two trademark applications for refractory products in class 19 and for online services related to using refractory products in class 37.

The USPTO found that the mark was generic for refractory products in class 19, and the appeals court agreed in In re Magnesita Refractories Company, 2016-2345 (Fed. Cir. 2017).

The court also found that MRC failed to show that the mark acquired distinctiveness in connection with the class 37 services. A mark has acquired distinctiveness when “the primary significance of the term in the minds of the consuming public is …

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Opportunities for Entrepreneurs and Employees

“[C]omputers are complements for humans, not substitutes. The most valuable businesses of coming decades will be built by entrepreneurs who seek to empower people rather than try to make them obsolete.” -Peter Thiel.

ZeroToOneIn the mid-2000’s, one of PayPal’s biggest problems was that it was loosing $10 million to credit card fraud every month. Since it was processing hundreds of transactions per minute, it was impossible to manually review each one.

At first PayPal tried to create a fully automated system to detect fraud in realtime and cancel the fraudulent transactions. But the fraudsters quickly learned which transactions got canceled and changed their tactics to avoid the fraud system.

PayPal solved the fraud problem by taking a hybrid approach where the computer would flag suspicious transactions and human operators would make …

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How to Position a Trademark Application to Avoid Conflict with a Similar Mark

US_TM_Reg4137026Nikon Corporation filed a trademark application to register the mark MMD for the goods of (1) laser scanners for industrial inspection and for geometrical measurement, and not for use with land surveying equipment, and (2) software for collection and interpretation of data in the operation of laser scanners, not for use with land surveying equipment. The USPTO trademark examining attorney refused registration based on prior registration no. 4137026 of the mark MMD (and dog design, shown to the right of this paragraph) for land surveying equipment.

The Trademark Trial and Appeals (Board) found that the marks were similar because while the prior registration contained a graphical dog, words “are normally accorded greater weight because the words are likely to make an impression upon purchasers.”

The Board also found the goods of both marks were related …

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Don’t Admit that A Human Can Manually Perform the Claimed Process to Help Avoid Abstractness

US7757298_Fig1Intellectual Ventures I sued Erie Indemnity Company for infringing U.S. Patent No. 7,757,298 (the ‘298 patent). The ‘298 patent is directed to a method and apparatus for identifying and characterizing errant electronic files. It seeks to improve the prior art by providing a method and apparatus to detect “undesirable files” (such as copyrighted music files) “stored on computer storage devices” “according to pre-set criteria.”

Claim 1 provided three section criteria, “any one of which may be used to identify errant files, with selection based on: (1) size, i.e., ‘whether an aggregate size of plural identically-sized files exceeds a predetermined threshold,’ … (2) content, i.e., ‘whether content . . . matches a [certain] file type,’… and (3) naming convention, i.e., ‘whether the file comprises data beyond an end of data marker.’”

The court found that the claims of the ‘298 patent were …

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Teaching Away Requires Clear Discouragement to Counter Obviousness

US6673532_Fig1Presense Persuasion Sensing petitioned the USPTO to reexamine (invalidate) certain claims of U.S. Patent 6,673,532 (the ‘532 patent) directed to methods of measuring parameters in a cell culture. The USPTO rejected the challenged claims of the ‘532 patent as obvious in view of a combination of two references, which I will refer to as “Bamboo” and “Weigl.”

University of Maryland Biotechnology Institute (Maryland), which owns the ‘532 patent, argued that Bamboo and Weigl should not be combined because Weigl teaches away from the claimed invention. Maryland  alleged that Weigl taught away because “(1) Weigl’s carbon dioxide sensor is unstable; (2) each of Weigl’s flow-through units has only one sensor, not multiple sensors; (3) Weigl’s various outlets are inconsistent with the claimed invention’s ‘continuous volume’ limitation; and (4) Weigl’s device is …

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Tagline Not In Trademark Application Cannot Distinguish Prior Mark

P.T. Arista Latindo (“Arista”) sought to register the trademark SENSI for diapers, among other things. The USPTO refused the registration in connection with diapers on the basis of two prior registrations for the mark SENSI-CARE (Tm Reg. Nos. 2618533, 3640455) for skin care products for treating and preventing diaper rash.

Arista argued that there was no likelihood of confusion between its mark and the SENSI-CARE marks because Arista uses a tagline “Sensible way of living” on its website. It argued that customers would assume its SENI mark means “sensible,” considering its tagline, whereas consumers would see SENI in the prior SENI-CARE marks as referring to “sensitive.”

The problem is that Airsta’s tagline was not in its trademark application. On appeal, the court said that the USPTO “must only compare the …

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