Friday, July 24, 2009

11th Cir.: No Bad Faith Intent to Profit in ACPA claim (and still no word as to whether the purchase of a Google AdWord is a "use in commerce")

Southern Grouts & Mortars sells swimming pool finishes under the trademark DIAMOND BRITE. It wants to use the domain name, but 3M Company (who competes with Southern Grout) owns the domain. You see, 3M had the mark DIAMOND BRITE registered in connection with "electronically controlled display panels and signs." 3M let those rights lapse, but kept the domain name. 3M has kept the website empty at and plans to keep it that way. What to do?

Southern sued 3M under the Anticybersquatting Consumer Protection Act (15 U.S.C. § 1125(d)), which provides a cause of action for a trademark owner against a person who "has a bad faith intent to profit from that mark" and who "registers, traffics in, or uses a domain name that" is identical or confusingly similar.

"Unique Circumstances" showing 'bad faith intent to profit?'

Southern first argued that 2 unique circumstances showed 3M's bad faith intent to profit: (1) 3M could use website traffic data for visits to the domain to determine competitive information; and (2) 3M kept the domain only to keep others from using it. The district court rejected the first reason because the expert's report was not reliable. As for the second reason, simply refusing to sell a domain did not show an "intent to profit." The Eleventh Circuit agreed.

ACPA Factors

The ACPA provides 9 factors that courts may consider in determining bad faith intent. See 15 U.S.C. § 1125(d)(1)(B)(i). They broke down as follows: 5 favored 3M, 2 favored Southern, and the other 2 were inapplicable. The court then noted that its "analysis of whether a defendant had the bad faith intent to profit necessary to a cybersquatting claim is not based on a score card of the statutory factors." The Eleventh Circuit agreed that Southern had failed to show a bad faith intent to profit, and affirmed the district court's entry of summary judgment in 3M's favor.

Unfair Competition Under the Lanham Act

Finally, Southern sought to impose liability against 3M for unfair competition. Problem is, there was no evidence that 3M had used the mark in commerce. Southern argued, in part, that 3M bought a Google Adword for "diamond brite," and that purchase was a use in commerce. The 11th Circuit noted that it has not yet been decided in this Circuit whether or not the purchase of a Google Adword is a use in commerce. And this case was not the case to change that, because Southern had not properly pleaded the allegation.


Thursday, July 23, 2009

PTO provides "clarification" on patent attorney/agent fee

Last year, the PTO announced an annual fee (initially set at $118) to be paid by patent attorneys and agents. See 73 Fed. Reg. 67750. The PTO has now "clarified" that it has not decided whether or not it will be collecting the fee for fiscal year 2009 (which ends September 30, 2009).
The agency has not issued a notice to pay the annual practitionier maintenance fee for FY2009, nor has it required payment of the fee by September 30, 2009. No decision has been made to collect the fee in FY2009.

See the full release here.

Tuesday, July 21, 2009

Patent and Trademark Office opens e-Office Action program

USPTO Takes Another Step Closer to Full Electronic Patent Application Processing

e-Office Action provides faster, more efficient notification to patent applicants

WASHINGTON - The Commerce Department’s United States Patent and Trademark Office (USPTO) announced today the implementation of the e-Office Action program following a successful pilot project. Under the program, patent applicants receive an e-mail notification of office communications instead of paper mailings. An e-mail is sent to program participants when new office communications are available for viewing and downloading in Private PAIR, the patent application information retrieval system that allows applicants electronic access to the entire file history of their applications.

“We received very positive feedback from applicants who participated in the pilot program,” said Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the USPTO John Doll. “Not only have we dramatically reduced paper processing and mailing costs but also expedited notification allowing applicants to take full advantage of their time period for reply to an office action.”

The e-Office Action program minimizes the possibility of lost or delayed postal mail and makes it faster and more efficient for participants to process and docket USPTO communications in electronic format, thus reducing processing costs. During the pilot, participants were able to retrieve office communications several days faster than postal mail. Participants in the pilot program have also suggested several enhancements to the system which will be under consideration for future implementation as the IT infrastructure is strengthened.

Participation in the e-Office Action program is optional and open to any registered attorney or agent of record, or pro se inventor who is a named inventor, in a patent application associated with a customer number. Program participants also will have the flexibility to opt-out of the e-Office Action program at any time and return to receiving office communications through the postal mail.

The program includes provisional applications and non-provisional applications including utility, plant, design, and reissue applications and national stage applications. International applications, reexamination proceedings, and interference proceedings are not included in the program.

Full details are here.

The press release is here.

Is an IP address "Personally Identifiable Information?" Apparently not.

Brian Johnson, as class representative, sued Microsoft alleging unjust enrichment, breach of Microsoft's End User License Agreement (EULA), violation of Washington's Consumer Protection Act, trespass to chattels, nuisance, and interference with property. Both sides moved for summary judgment on the claim of breach of the EULA.

The EULA prohibits Microsoft from transmitting "personally identifiable information" from the user's computer to Microsoft without the user's consent. According to Johnson, because Microsoft collects user's Internet Protocol ("IP") addresses, it breached the terms of the EULA by transmitting this "personally identifiable information" back to Microsoft. Microsoft did not dispute that it collects IP addresses, but argued instead that IP addresses are not "personally identifiable information."

To know if there was a breach of contract, the Court needed first to construe the term -- what is "personally identifiable information?" Johnson grabbed a definition off of Microsoft's online security glossary, which defined "personally identifiable information" as "Any information relating to an identified or identifirable individual. Such information may include ... IP address." Microsoft countered that the security glossary was not incorporated into the EULA, and was thus irrelevant. It then pointed to 2 cases (Klimas v. Comcast Cable Comm'cns, Inc., 465 F.3d 271, 276 n.2 (6th Cir. 2006) and Columbia Pictures Indus. v. Bunnell, 2007 WL 2080419 *3 n.10 (C.D. Cal. May 29, 2007)) which sugged that an IP address, in and of itself, would not be personally identifiable information.

The Court agreed with Microsft:

Because the EULA does not incorporate the web glossary by reference, and there is no evidence that any of the Plaintiffs even read the glossary, the court finds that the web glossary is not helpful to construing the provision. Furthermore, the court finds that Microsoft’s interpretation of “personally identifiable information,” in the absence of any definition, is the only reasonable interpretation. In order for “personally identifiable information” to be personally identifiable, it must identify a person. But an IP address identifies a computer, and can do that only after matching the IP address to a list of a particular Internet service provider’s subscribers. Thus, because an IP address is not personally identifiable, Microsoft did not breach the EULA when it collected IP addresses. Plaintiffs’ contract claim on that ground must fail.

Friday, July 10, 2009

Jack (well, actually Larry) and the beanstalk

Ok, no actual beanstalk.

In 1994, Larry Proctor purchased in Mexico a package of dry beans, which contained beans of various colors and varieties, including yellow beans, which he brought back to the United States. Over the next three years, he planted and harvested the beans and their producing plants.

Mr. Proctor was issued U.S. Patent No. 5,894,079. A third-party requester (the giant, perhaps?) filed a petition for re-examination of the patent, hoping to invalidate it. The Board held that all of the claims in the '079 were invalid on several grounds, including obviousness.

The Federal Circuit affirmed the obviousness ruling:

One of ordinary skill in the art seeking to reproduce (and hopefully improve) the yellow beans that Proctor brought back from Mexico would have done what he did: plant the beans, harvest the resulting plants for their seeds, planting the latter seeds, and repeat the process two more times.

There is no indication that in taking these steps, Proctor sought to provide beans of the particular narrow range of yellow that the claims specified. To the contrary, it appears that all Proctor was attempting to do was to reproduce the yellow beans he had acquired in Mexico, and hopefully to improve them.

To do so, he followed normal and well-established agricultural methods and techniques for doing that. See KSR Int'l v. Teleflex, 550 U.S. 398, 418 ("a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.")

* * *

In KSR, 550 U.S. at 421, the Supreme Court pointed out that "rigid preventative rules that deny fact finders recourse to common sense, however, are neither necessary under our case law nor consistent with it." To reject the Board's obviousness ruling here, would be to deny the Board that very "recourse to common sense" that the Supreme Court there warned against.

Thursday, July 9, 2009

False marking case against Solo cup is done

On summary judgment, Solo convinced the Court that it could not have acted "with the purpose of deceiving the public." (via

Wednesday, July 1, 2009

In re: Mettke -- "On-Line Communication Terminal/Apparatus" is obvious

In a non-precedential decision, the Court of Appeals for the Federal Circuit affirmed the Board of Patent Appeals and Interference's rejection of Mettke's claim 6 as being obvious in light of the cited references. See In re: Mettke, 2009-1125 (June 25, 2009). U.S. Patent No. 5,602,905 issued to Mettke. Mettke applied for reissue of the '905 patent, and this appeal followed.

Claim 6 provided:
A public on-line Internet terminal comprising:
a central processing unit (CPU);
a video display monitor coupled to the CPU;
a keyboard for providing user interface coupled to the CPU;
a credit card reader swipe device coupled to the CPU for accepting payment by a user;
means for accessing the Internet and allow for user interaction;
software installed into the CPU to allow interface with the Internet and credit card service centers; and
a printer coupled to the CPU.

Mettke argued (pro se) that the prior art was non-analogous because it was not limited solely to an "Internet termina." The Court rejected this argument.

Mettke argued that the his claim could not be used as a hindsight roadmap for piecing together the prior art to show his invention. The Court agreed ("A patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." KSR Int'l v. Teleflex, Inc., 550 U.S. 398, 418 (2007)), but explained that the Board's analysis showed how the prior art taught Mettke's invention.

Finally, and the most interesting point from this case for me, Mettke argued that 93 other patents had cited the '905 patent as prior art. Mettke then argued that this indicated his patent was a technology leader, and thus this secondary (objective) consideration shows that his invention was not obvious. The Court responded:
"We draw no generalization about the significance of citations, for we agree with the Board that in this case, where every element of claim 6 is shown in the prior art, performing the same funcatino as in the claim, along with a reference showing a reason to combine the elements, this prima facie case of obviousness is not rebutted by the number of citations alone."

Board affirmed.

My first entry

This is my first test entry. My goal is to maintain a blog of relevant legal developments in Intellectual Property. As I grew up, live in, and practice in Tampa, Florida, I will likely focus on IP issues in the greater Tampa area.