Patent, Trademark, and Copyright Deadlines Extended Due To COVID-19

Patent, Trademark, and Copyright deadlines extended due to the COVID19 crisis.

The United States Patent and Trademark Office today extended certain deadlines in connection with patent and trademark related matters due to the COVID19 crisis.  Similarly, the United States Copyright Office has announced modifications to deadlines in light of the crisis.

Patent Deadlines Extended

The USPTO exercised authority granted to it under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to extend certain deadlines.  Specifically, deadlines for certain events that fall between March 27, 2020 and April 30, 2020, will be extended by 30 days if the applicant includes a statement that the delay in filing or payment was due to the COVID-19 outbreak.  The USPTO provided the following in defining what it means to be “due to the COVID-19 outbreak”:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The response deadline extension covers a number of events, including pre-examination processing notices for small or micro entities, non-final and final office actions, issue fees, notices of appeal, appeal briefing, requests for oral hearing before the Patent Trial and Appeal Board, maintenance fees for small or micro entities, or requests for rehearing before the PTAB.

Notably, the extension does not apply to original filing deadlines, PCT deadlines, national stage filing deadlines, non-provisional filing deadlines, or the deadlines to file an inter partes review petition.

The USPTO has also announced that it is waiving certain petition fees for patent owners and applicants who were unable to timely file a response because of the COVID-19 crisis.

The USPTO also reminded everyone in its notice that it remains open for filing of USPTO documents and fees.  The Patent notice is here.

Trademark Deadlines Extended

The USPTO exercised the same authority under the CARES Act to extend certain trademark deadlines.  The deadline to respond to certain events that was due between March 27, 2020 and April 30, 2020 will be extended 30 days from the initial date it was due, provided the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.  The USPTO again defined what it means by “due to the COVID-19 outbreak” in the context of trademark deadlines:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The response deadline extension covers a number of events, including office action responses, notices of appeal, statements of use or requests for extension of time to file a statement of use, notice of oppositions or requests for extension of time to file them, priority filing, and affidavits of use or excusable nonuse.

For Trademark Trial and Appeal Board issues, while deadlines are not automatically extended, requests or motions to extend deadlines may be made.

As with the Patent notice above, the USPTO reminds everyone that it remains open to receive filing and fees.  The Trademark nice is here.

Copyright Deadlines Extended

The U.S. Copyright Office has also made adjustments under the authority of the CARES Act.  For those copyright applicants able to submit electronic copyright applications with electronic deposit copies, no changes have been made.  But for those applicants who must submit a physical deposit copy, the Copyright Office will accept an electronic application and a declaration or similar statement certifying, under penalty of perjury, that the applicant is unable to submit the physical deposit and would have done so but for the national emergency.  The applicant must set forth “satisfactory evidence” in support of this statement.  The Copyright Office provided the following examples of “satisfactory evidence:”

·      statement that the applicant is subject to a stay-at-home order issued by a state or local government

·      a statement that the applicant is unable to access required physical materials due to closure of the business where they are located

If an applicant is unable to submit an electronic application, the applicant may do so after the Acting Director of the Copyright Office has announced the end of the COVID-19 disruption, so long as the applicant includes a declaration or similar statement certifying, under penalty of perjury, that the applicant was unable to submit an application electronically or physically and would have done so but for the national emergency, and providing “satisfactory evidence” in support.  This “satisfactory evidence” may include:

·      a statement that the applicant did not have access to a computer and/or the internet

·      a statement that the applicant was prevented from accessing or sending required physical materials for reasons such as those noted above

The Copyright notice is here.

Is Identifying An Allegedly Infringed Claim Sufficient To Survive Dismissal?

Not necessarily.

Advanced Screenworks, LLC sued Gold Star Ventures and its owner for alleged infringement of U.S. Patent 8,146,647 for "Screen Clipping System and Clips Therefor."   Advanced alleges that Gold Star infringes the '647 Patent by:

making, using, offering to sell, and selling products, methods, and apparatuses for the screening of windows, doors, pool cages, and patios, including [Defendant's] "Screening Buddy Dual Purpose Screen Retainer System" ... which comes within the scope of the ['647 Patent] without authority or license from [plaintiff].

Advanced further alleges that Gold Star has infringed on "at least claims 1, 2, and 3 of the '647 Patent."  But identifying the patent and the specific claims infringed was not sufficient to survive dismissal:

An allegation of direct patent infringement is “insufficient under Twombly and Iqbal if it simply recites some of the elements of a representative claim and then describes generally how an accused product operates, without specifically tying the operation to any asserted claim or addressing all of the claim requirements.” Blue Water Innovations, LLC v. Fettig, 2019 WL 1904589, *2 (S.D. Fla. Mar. 8, 2019) (citation omitted).

Because Advanced "does not sufficiently tie any specific operation to a patent claim," Gold Star's motion to dismiss is granted.  The Court did grant leave to file a Second Amended Complaint.

Advanced Screeworks, LLC v. Mosher, Case No. 2:19-civ-758-FtM-29MRM (M.D. Fla. Mar. 12, 2020) (J. Steele)

Are Rule 11 Sanctions Warranted If Plaintiff Names the Wrong Defendants?

Yes.

RooR International Bv and Sream, Inc (collectively "RooR") have filed dozens (more? - a recent search suggests over 100 such cases) of suits throughout Florida asserting trademark rights for purported counterfeit sales of its water pipes. 

Recently, RooR asserted such claims against Nipa Enterprise, Inc. and and Ashmaul Hosna for such alleged counterfeit sales at their store in 2016.  But Nipa and Hosna did not own the store in 2016.  Indeed, Nipa Enterprise, Inc. was not formed until 2017.  Defendants filed their Rule 11 motion after waiting for the Rule 11 safe harbor period to elapse.

RooR responded by seeking leave to file an Amended Complaint.  That Amended Complaint named different defendants, and no longer named Nipa and Hosna.  The Court then took up Nipa and Hosna's Rule 11 motion.

Nipa and Hosna claim there is no factual basis for the Complaint because they did not own the store when the counterfeit sale happened. (Doc. 34 at 2-3). Rather than deny or disputing this claim, Roor and Sream filed an Amended Complaint identical to the original Complaint, except it replaces Nipa and Hosna with new defendants. (Doc. 38). So Roor and Sream implicitly admit that the new defendants owned the store at the time of the sale—not Nipa and Hosna. On that basis, the Court concludes that the original Complaint was objectively baseless. See Busse v. Lee Cty., Fla., No. 2:07-cv-228-FtM29SPC, 2007 WL 4350863, at *2-3 (M.D. Fla. Dec. 11, 2007) (finding plaintiff’s claim, that defense counsel perpetuated fraud before she was born, objectively baseless)

RooR likely did not help itself by failing to respond to the sanctions motion:

Roor and Sream also should have known that Nipa and Hosna were the wrong parties. See Attwood v. Singletary, 105 F.3d 610, 613 (11th Cir.1997) (per curiam) (“Rule 11 requires [litigants] to make reasonable inquiries into the veracity of information filed before the court[.]”). A simple public record search could have easily fixed the error. Instead, Nipa and Hosna were named defendants for three months. RooR and Sream wasted three months of Nipa’s, Hosna’s, and the Court’s time and resources. And RooR and Sream have failed to respond as to why they did so when given the chance. The Court thus finds sanctions warranted and will award Nipa and Hosna reasonable costs and attorney’s fees. See Donaldson v. Clark, 819 F.2d 1551, 1556 (11th Cir. 1987) (Rule 11 sanctions can be “viewed as a form of cost-shifting, compensating opposing parties injured by the vexatious or frivolous litigation” or “as a form of punishment imposed on those who violate the rule[.]”).

The Court then imposed liability on plaintiffs' counsel to pay defendants' reasonable costs and attorney fees.

Motion for sanctions, granted.
RooR International Bv v. Ullah Business, Inc., Case No. 2:19-cv-222-FtM-38MRM (M.D. Fla. July 31, 2019) (J. Chappell)

Do You Need To Threaten Litigation To Trigger Declaratory Judgment Subject Matter Jurisdiction?

No.

Erbaviva, LLC, a California LLC, sent a demand letter to Era Organics, a Florida company.  The letter identified a number of Erbaviva federal trademark registrations, and "request[ed]" Era Organics:

1. Request the USPTO expressly abandon certain Era Organics trademark registrations;
2. Permanently refrain from using ERA ORGANICS, or any similar mark, in connection with certain goods;
3. Provide written assurances Era Organics will comply with these "requests"

The letter then concluded:

Provided we receive Era Organics' full and prompt cooperation, as well as confirmation that the above action has been performed, our client is prepared to give Era Organics a reasonable amount of time to transition to a new company name/trademark and sell through its remaining inventory.

The letter demanded compliance within 11 days.

Instead of changing the name it had been using for at least 4 years, Era Organics filed suit, seeking a declaratory judgment that there was no trademark infringement.  Erbabviva sought dismissal, arguing there was no jurisdiction to hear the dispute, as there was no "actual controversy."  Erbabviva argued its letter did not create any such dispute:

Nowhere in the letter did Defendant threaten litigation or suggest that it intended to take any formal action.  To the contrary, Defendant indicated that it was concerned about confusion in the marketplace and expressed a willingness to work with Plaintiff on resolving the dispute informally and amicably.  Plaintiff never responded to Defendant's letter but instead rushed to Court to file the present action.  In doing so, Plaintiff effectively jumped the gun.

The Court was not persuaded:

Defendant's letter described the likelihood of confusion between its products as "substantial" and "perhaps inevitable," and requested that Plaintiff cancel its federal trademarks and "permanently refrain" from using its own mark, among other things.  Dkt. 1, p. 14.  An actual controversy exists.

Motion To Dismiss for Lack of Jurisdiction, Denied
Era Organics, Inc. v. Erbaviva, LLC, Case No. 8:18-CV-2219-T-30SPF (M.D. Fla. Jan 4, 2019) (J. Moody)

Are the Pleading Standards for Method Claims More Rigorous in the Context of Rule 11?

No.

Micro Processing Technology, Inc. sent a letter to Plasma-Therm alleging that Plasma-Therm was infringing MPT's patent.  Plasma-Therm filed a declaratory judgment action seeking a declaration that it did not infringe.  Six months into the litigation, MPT served preliminary infringement contentions, which were based "[u]pon the information currently available to MPT and its belief."  MPT twice amended its infringement contentions. 

Plasma-Therm then moved to strike MPT's infringement contentions, arguing MPT lacked diligence in their preparation.  The Court denied the motion to strike, noting that while the contentions were "sparce," they gave notice of MPT's preliminary theories.  The Court also noted that the parties would have an opportunity to serve final contentions later in the litigation.

A month later, MPT filed its counterclaims asserting patent infringement (and other claims).    Plasma-Therm moved to dismiss those counterclaims.  Two weeks later (before MPT responded to the motion to dismiss), Plasma-Therm sought sanctions pursuant to Rule 11 for MPT's failure to conduct a proper pre-suit inquiry before asserting its patent infringement counterclaims.

The next day, the Court construed a number of terms the parties has disputed, adopting Plasma-Therm's constructions.  Shortly thereafter, MPT voluntarily dismissed its counterclaims and the case settled in full, but for resolution of the sanctions motion.

MPT offered four defenses to the sanction motion:

1. its counterclaims were compulsory, so it had to file them at an early stage of the litigation;
2. the sanctions motion is better resolved as a motion to dismiss;
3. the standard for pre-suit investigations is different for method patent claims than product claims; and
4. its pre-suit investigation was reasonable in light of its "good faith constructions.

As to the counterclaim being compulsory:

the fact that a counterclaim may be compulsory does not excuse a litigant or counsel from compliance with Rule 11.  See e.g. View Eng'g, Inc. [v. Robotic Vision Sys], 208 F.3d 981, 986 (Fed. Cir. 2000) (affirming Rule 11 sanctions on defendant who filed counterclaims of patent infringement without reasonable inquiry following plaintiff's declaratory action seeking to have defendant's patent declared invalid, or in the alternative, a finding of no infringement).

As to the sanctions motion being better resolved as a motion to dismiss:

The Court disagrees.  With respect to patent infringement claims, Rule 11 asks whether there was, at a minimum, a reasonable basis for a finding of infringement.  Thought not the only factor, the content of the pleadings is relevant to that analysis.

As to the legal standard for sanctions in connection with method claims:

None of the cases MPT cites support its theory that a different pre-filing standard exists with respect to patent infringement claims involving a method. Q-Pharma, Inc. [v. Andrew Jergens Co.], 360 F.3d 1295, 1300-01 (Fed. Cir. 2004) (analyzing a patent “directed to a method” and stating that “[i]n the context of patent infringement actions, we have interpreted Rule 11 to require, at a minimum, that an attorney interpret the asserted patent claims and compare the accused device with those claims before filing a claim alleging infringement”); PPS Data, LLC [v. Athenahealth, Inc], 2012 WL 601208, at *1 (describing pre-filing analysis). Other case law on the topic of Rule 11 sanctions does not support MPT’s assertion, either. See, e.g., Judin v. U.S., 110 F.3d 780, 784 (Fed. Cir. 1997) (analyzing whether claimant and attorney adequately compared accused devices with patent claims involving a method). Therefore, the Court finds no basis to adopt MPT’s contention that it did not need to conduct a factual inquiry prior to filing suit.

As to the reasonableness of its pre-suit analysis:

Here, MPT has not shown why, prior to filing suit, MPT believed its claim of infringement was meritorious. MPT has not compared any product, process, or method utilized by Plasma Therm to the patents-in-suit. Nor has MPT even identified any such product, process, or method utilized by Plasma-Therm against which the patents-in-suit could have been compared. See Judin, 110 F.3d at 784 (Viewing an alleged infringing device “may have been sufficient to put Judin on inquiry about whether the Government was using a device that infringed his patent. But Rule 11 requires more. It requires that the inquiry be undertaken before the suit is filed, not after.”). 

The only explanation MPT gives as to why it believed it had a reasonable chance of proving infringement is provided in a footnote, in which MPT states that “if Plasma-Therm practiced the disputed claims in the way Plasma-Therm implies it did in its claims constructions it would infringe the claims as construed by MPT.” Doc. 111 at p. 2, n. 3. But Plasma-Therm’s claim construction brief does not explain its own products, processes, or methods. Rather, PlasmaTherm’s claim construction brief describes only the patents-in-suit, including the specification and prosecution, to explain why the disputed claim terms should be construed as Plasma-Therm suggests. To the extent MPT draws inferences about Plasma-Therm’s product, processes, or method from Plasma-Therm’s advocacy of certain claim constructions, this is not explained. Nor would such inferences have necessarily been reasonable and sufficient for MPT to meet its burden under Rule 11 given the Court’s rejection of MPT’s claim constructions. See Source Vagabond Sys. Ltd. [v. Hydrapack, Inc.], 753 F.3d 1291, 1302 (Fed. Cir. 2014).

Summarizing its analysis, the Court noted that "neither MPT nor its counsel even suggest that they attempted to apply the claims of the patents-in-suit to any accused device, method, process, or product of Plasma-Therm.  The failure of MPT and its attorneys to make a reasonable inquiry before filing the frivolous infringement counterclaims warrants Rule 11 sanctions."

Motion for sanctions granted.
Plasma-Therm, LLC v. Micro Processing Technology, Inc., Case No. 8:15-CV-2785-T-36TBM (M.D. Fla. Oct. 23, 2018) (J. Honeywell)

Can The Manager of a Florida LLC Represent the Corporation in Litigation?

If she or he is not a lawyer, no.

David Boggs, LLC and Mac Mar, LLC sued Matthew Soltis and his company My Affordable Roof, LLC for trademark infringement concerning the mark "MY AFFORDABLE ROOF."  Soltis appears to have opted to defend himself.  He has submitted a number of filings to the Court captioned as requests for extension of time, motions to dismiss for lack of subject matter jurisdiction, and answers.  He has submitted these filings both on behalf of himself, and on behalf of his corporation.

On plaintiffs' motion, the Court struck the first such filing on behalf of the corporation:

Soltis is not an attorney so cannot represent this entity under Local Rule 2.03(e). (Doc. 16, pp. 1–3.) See Local Rule 2.03(e) (“A corporation may appear and be heard only through counsel admitted to practice in this Court pursuant to Rule 2.01 or Rule 2.02.”); see also Energy Lighting Mgmt., LLC v. Kinder, 363 F. Supp. 2d 1331, 1332 (M.D. Fla. 2005) (applying Local Rule 2.03(e) to limited liability companies).

Undeterred, Soltis tried again, moving for an extension of time on behalf of himself and his corporation to respond to the complaint.  The Court again reminded Soltis that a corporation must be represented by counsel:

Defendant Soltis has again filed a Motion on behalf of My Affordable Roof, LLC in violation of the local rules. The Motion filed on behalf of Defendant, My Affordable Roof, LLC is unauthorized. 

Soltis then filed a motion to dismiss the complaint as to him, and tried filing an answer on behalf of the Corporation.  The Court struck the corporation's answer, and denied Soltis' motion:

On review, the Court finds the Motion is due to be denied. First, the Motion is untimely. Indeed, Soltis’ approach to this case reveals a pattern of disregarding court orders, despite repeated extensions and opportunities for compliance. This latest Motion appears to be another delay tactic, as the Court flatly denied Soltis leave to file it. (See Doc. 22.) Moreover, Soltis’ argument that the Court lacks subject matter jurisdiction here is meritless. Plaintiffs’ Complaint alleges violations of the Lanham Act based, in part, on Defendants’ engagement in interstate commerce. (E.g., Doc. 1, ¶ 20.) Accepting these allegations as true, subject matter jurisdiction exists here. See Stalley ex rel. U.S. v. Orlando Reg’l Healthcare Sys. Inc., 524 F.3d 1229, 1232–33 (11th Cir. 2008) (announcing standard of review for facial subject matter jurisdiction attacks where the defendant does not use material extrinsic to the pleadings). 

Motion to dismiss, granted.  Motion to strike corporation's answer, granted.  Amended motion for default as to corporation, granted as well.

[Practice pointer -- a corporation may not represent itself in the Middle District of Florida; it must engage counsel.]

David Boggs, LLC v. Soltis, Case No. 6:18-CV-687-ORL-37GJK (M.D. Fla. Oct. 1, 2018) (J. Dalton, Jr.)