The Washington Post Misses the Mark on March-In Rights

The National Institute of Standards and Technology recently indicated in its “Return on Investment Initiative draft green paper” that it would issue regulations effectively ending attempts to misuse march-in rights to assert government price controls over successfully commercialized federally-funded inventions. Such an announcement was bound to elicit a reaction. That it came in The Washington Post shouldn’t be a surprise. The paper’s April 18 article, “A rare deterrent to limitless drug price…

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  • The Washington Post Misses the Mark on March-In Rights

    The National Institute of Standards and Technology recently indicated in its “Return on Investment Initiative draft green paper” that it would issue regulations effectively ending attempts to misuse march-in rights to assert government price controls over successfully commercialized federally-funded inventions. Such an announcement was bound to elicit a reaction. That it came in The Washington Post shouldn’t be a surprise. The paper’s April 18 article, “A rare deterrent to limitless drug price…

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  • Hurricane Maria Delivered the Injury to Puerto Rico, But New Tax on Foreign IP Delivered the Insult

    The year 2017 proved to be a difficult one for the territory of Puerto Rico. Even before Hurricane Maria hit in September of that year, the island was in trouble. By the end of year, the economy was predicted to shrink back to levels not seen since 2000, the average household income was a mere $19,350, one-half that of Mississippi, the poorest state in the nation. Meanwhile, the cost of living in San Juan, Puerto Rico’s capital, was 11.6% higher than in an average U.S. metropolitan area. The…

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  • 備える

                            目次はこちら

    備える

    –>有する

    (PROVIDED WITH / PROVIDE)
    $$ A wound section (8) is provided in the cable with the winding axis coincident with the pivot axis of the links. / ケーブルには、巻軸がリンクの回転軸と一致する巻部(8)が備えられる。(USP8927868)

    $$ The radiometer may be provided with an image-forming focuser assembly. / このラジオメータには画像形成用集束器アセンブリが備えられてよい。(USP6900756)

    $$ The layers are provided with electrodes for activation. / 層は、活性化のための電極を備える。(USP6833656)

    $$ In the field of spectroscopy it is known to provide a microscope which can operate in conjunction with a spectrophotometer. / 分光学の分野においては、分光光度計と組み合わせて動作することができる顕微鏡を備えることが知られている。(USP5946131)

    $$ It also provides the facilities to promote Change Packages to production. / それはまた、変更パッケージを生成環境へ送る施設も備えている。(USP5907602)

    (COMPRISE)
    $$ The first part of the tool 100 comprises a point X-ray source 110, a first X-ray shield 120 and an X-ray collimator 130. / ツール100の第1の構成部は、点状X線光源110と、第1のX線シールド120と、X線コリメータ130とを備えている。(USP6977986)

    $$ Such means might comprise an electromechanical arrangement known to a person skilled in the art. / このような手段は、当業者に知られた電気機械構成を備えていてもよい。(USP6975457)

    (HAVE)
    $$ Each adapter in the ring network of FIG. 2 has encoder and decoder sections. / 図2に示すリングネットワーク内の各アダプタは、エンコーダ部およびデコーダ部を備える。(USP6473469)

    $$ All these passageways have flared exits 60 at the end of the flame holder 30 nearer the open end 11′ of the burner tube 11. / すべてのこれらの流路は、バーナーケース11の開放端部11’の近傍で、外側へ広がる出口60を保炎器30の端部に備えている。(USP6250913)

    $$ The upper part 8 of the tank 10 has a front face 12, a rear face 14, sides 16 and 18, and a top 20. / 上記流体タンク10の上部部材8は前面壁12,背面壁14,両側壁16,18および上壁20を備えている。(USP5893487)

    (INCLUDE)
    $$ The control device 7 includes a voltmeter unit 11, to measure voltages across the first and second batteries 6a, 6b. / 制御装置7は、第1および第2電池6a,6bの電圧の変化を測定するために、電圧計ユニット11を備えている。(USP6265847)

    $$ The end closure 25 includes an integral button 26 for holding the cylinder during refilling operations. / 端部閉鎖体25は、再充填作業中にシリンダを保持するための一体ボタン26を備えている。(USP6270276)

    $$ A secondary cell includes as its active cathode material a first insertion material, such as V.sub.6 O.sub.13, into which ions are inserted during discharge. / 二次電気化学セルは、放電中にイオンが挿入されるV6 O13のような第1挿入材料を活性カソード材料として備えている。(USP5441832)

    (WITH)
    $$ The layers 13 and 14 are again the cover layers of the laminate which contains two devices 11 and 12 with the electrical contacts 15, 16 shown. / ここでも、層13、14は、図示する電気的接点15、16を備える2つのデバイス11、12を含む積層体のカバー層である。(USP5929562)

    $$ The same device with the deep anode regions is "turned on" at about 3 microseconds. / 深いアノード領域を備える同じデバイスは約3マイクロ秒で”ターンオン”される。(USP5429953)

                            目次はこちら

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  • An Entrepreneur’s Guide to Navigating California’s Complex Cannabis Industry

    As of now, ten states have legalized recreational cannabis. Twenty-one other states allow medicinal use of cannabis, many of which are expected to legalize recreational cannabis in the near future. Investors have sunk an estimated $10 billion into cannabis-related businesses in 2018, an amount that is expected to reach $16 billion this year. The fast spreading legalization of cannabis presents a unique opportunity for entrepreneurs, businesses and investors to get in on the “ground floor” of…

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  • CAFC tackles CBM issues in Trading Technologies

    The CAFC noted:


    Pursuant to § 18(a)(1)(E) of the AIA, the Board may
    only institute CBM review for a patent that is a CBM patent.
    A CBM patent is “a patent that claims a method or
    corresponding apparatus for performing data processing or
    other operations used in the practice, administration, or
    management of a financial product or service, except that
    the term does not include patents for technological inventions.”
    Id. § 18(d)(1) (emphasis added). Pursuant to its authority under § 18(d)(2), the Patent and Trademark Office
    (“PTO”) promulgated 37 C.F.R. § 42.301(b), which requires
    the Board to consider the following on a case-by-case basis
    in determining whether a patent is for a technological invention:
    “whether the claimed subject matter as a whole
    recites a technological feature that is novel and unobvious
    over the prior art” and whether it “solves a technical problem using
    a technical solution.” We review the Board’s reasoning “under the arbitrary and capricious standard and
    its factual determinations under the substantial evidence
    standard.” SightSound Techs., LLC v. Apple Inc., 809 F.3d
    1307, 1315 (Fed. Cir. 2015).

    The only issue of CBM eligibility that TT contests is
    whether its patents are for technological inventions.

    The issue

    We agree with the Board that these claims are directed
    to a covered business method and thus CBM review was
    appropriate. These claims are directed to a financial trading method used by a computer. We see no technological
    invention in this software method for trading. The claims
    require receiving bid and offer information from an electronic exchange, displaying such information (“bid indicators” and “offer indicators”), and sending an order to the
    electronic exchange based on a user input. The two claims
    differ mainly in the way the user places the order (clicking
    and dragging an “order icon” to a location on the price axis
    versus selecting a point on the price axis). In each case, the
    Board applied the considerations of § 42.301(b) and found
    that the claims do not recite a technological feature that is
    novel and unobvious over the prior art and do not solve a
    technical problem with a technical solution for essentially
    the same reasons.

    TT argues the Board erred in applying the first consideration of § 42.301(b)
    based on our decision in Versata Development Group Inc. v. SAP America, Inc., 793 F.3d 1306
    (Fed. Cir. 2015). According to TT, Versata set aside the
    novelty and nonobviousness language of the regulation,
    leaving the definition of a technological invention as one
    having a technological feature that solves a technical problem using a technical solution.
    E.g., Appellant Br. 24–25,
    No. 18-1063 (citing 793 F.3d at 1326). We need not decide
    this issue because we agree with the Board
    that the considered claims do not solve a technical problem using a technical solution.
    See Apple, Inc. v. Ameranth, Inc., 842 F.3d
    1229, 1240 (Fed. Cir. 2016) (“We need not address this argument regarding whether the first prong of 37 C.F.R.
    § 42.301(b) was met, as we affirm the Board’s determination on the second prong of the regulation . . . .”).

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  • Where will the statue of Confederate general Kirby Smith end up?

    Back on 2 July 2017, IPBiz had a post titled CBS Sunday Morning on 2 July 2017: notable for what was not said which included text:


    The Almanac feature, going back to July 2, 1864 (one year after Day 2 of Gettysburg) was of interest for what was NOT mentioned. The 1864 date was that of the authorization of the National Statuary Hall in what had been the place of the House of Representatives. Each state was authorized to submit statues of two important people from the state. Exemplars on the CBS show included Garfield and Edison from Ohio. Another inventor mentioned was Robert Fulton. Not mentioned was Florida’s included inventor John Gorrie, and Florida’s other person, Confederate General Edmund Kirby-Smith (of the Trans-Mississippi Department). Relevant to certain public debate about statues of prominent Confederates, one notes that Mississippi presented Jefferson Davis and Virginia did Robert E. Lee. South Carolina did John Calhoun and General Wade Hampton. One wonders the fate of these Southerners/Confederates in the National Statuary Hall if protests are made?

    On 19 April 2019 (nearly two years later), the Orlando Sentinel ran a story titled ‘Evil coup?’ Confederate statue sparks political fight for control of Lake County Historical Society , which included the text

    A statue of Confederate General Edmund Kirby Smith that has represented Florida for nearly a century in the U.S. Capitol is at the heart of an unlikely partisan political fight — for control of the Lake County Historical Society.

    The normally low-profile society, which runs a free historical museum in Tavares, won the right last year to display the statue when the general’s bronzed likeness is evicted from National Statuary Hall to make room for a figure of African-American educator and civil-rights activist Mary McLeod Bethune. That could be as soon as next year.

    But if the general is coming, he won’t arrive without a battle.

    “He has no place here, no connection whatsoever to Lake County,” said Mae Hazelton of Eustis, who is among more than two dozen people who have applied to be voting members of the society in hopes of reversing a decision to bring the statue to Tavares.

    Hazelton said the museum’s pursuit of a confederate statue is insulting to her and other African-Americans in Lake County, where notoriously racist Sheriff Willis McCall was elected to office seven times from 1944 to 1972.

    Within the Sentinel piece:

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  • Some New Japanese Cases on Remedies

    The November 2018 issue of A.I.P.P.I.–Journal of the Japanese Group of AIPPIincludes an article by Yasufumi Shiroyama titled Overview of Intellectual Property Judgments by Japanese Courts in the First Half of 2018.  The article itself includes brief write-ups of, among other matters, three cases on patent remedies issued in early 2018:
    1.  Judgment of the Osaka District Court, 21st Division, March 22, 2018:  The court found that 61% of the defendant’s air duster products contain absorbers with an ash content within the infringing range of 1 to 20% by weight, and thus (1) enjoined the defendant from marketing products with absorbers falling within that range, and (2) awarded damages under article 102(2) comprising 61% of the defendant’s profit from sales of air dusters.
    2.  Judgment of the Tokyo District Court, 40th Division, March 2, 2018.  The court found that the plaintiff had obtained a patent on an invention made by the defendant, and then sued the defendant for infringement; the defendant counterclaimed in tort.  The court dismissed the plaintiff’s complaint and awarded the defendant ¥5.5 million (about US$50,000).
    3.  Judgment of the Osaka District Court, 21st Division, Feb. 15, 2018.  The court recognized that, where an infringing product owes some of its success to the defendant’s improvements to the patented invention, it may be appropriate to reduce the plaintiff’s damages award; but in this case, only of the products added any inventive element, and it was of minor significance.  The court awarded the defendant’s profit, reduced by only 5% for the product embodying the minor improvement.  

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  • Beebe and Fromer: Study on the Arbitrariness of 2(a) Immoral or Scandalous Refusals

    For those who have not had the pleasure of seeing it, I recommend the fascinating and, honestly, fun, new study by Barton Beebe and Jeanne Fromer on the arbitrariness and unpredictability of the U.S. Patent & Trademark Office’s refusals of trademarks that are deemed to be “immoral” or “scandalous.”

    The study, entitled Immoral or Scandalous Marks: An Empirical Analysis, has been posted on SSRN. This paper served as the basis for Professors Beebe and Fromer’s amicus brief in Iancu v. Brunetti.

    This study follows up on Megan Carpenter and Mary Garner’s prior 2015 paper, published in the Cardozo Arts & Entertainment Law Journal and Anne Gilson LaLonde and Jerome Gilson’s 2011 article, Trademarks Laid Bare: Marks That May Be Scandalous or Immoral.  

    All of these studies come to similar conclusions: there are serious inconsistencies in trademark examiners’ application of the Section 2(a) “immoral-or-scandalous” rejection. The Beebe/Fromer study is technically 161 pages long, but it’s mostly exhibits, and it’s very accessible  – worth at least a read to see some of the examples they give, and to oggle at the bizarre interplay between Section 2(a) “immoral-or-scandalous” refusals and Section 2(d) “likely to confuse with prior registered mark” refusals.

    The issue in Brunetti is whether the Section 2(a) “scandalous-or-immoral” refusal is an unconstitutional restriction on free speech under the First Amendment.  The test for determining whether the mark is scandalous or immoral asks

    “whether a substantial composite of the general public would find the mark scandalous, defined as shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; … giving offense to the conscience or moral feelings; … or calling out for condemnation.”

    (6-7) (quoting In re Brunetti, 877 F.3d 1330, 1336 (Fed. Cir. 2017) (citations omitted)).

    To assess how the USPTO examiners make this determination (what’s “disgraceful,” for example?), the Beebe/Fromer study takes advantage of a large amount of empirical data (3.6 million trademark registration applications), and creatively uses the interplay between Section 2(a) “immoral-or-scandalous” refusals and Section 2(d) “likely to confuse with prior registered mark” refusals, to emphasize just how unpredictable and capricious the examiners have been in determining what the general public might find “shocking to the sense of truth, decency,” or what not.

    In particular, the authors show that

    the PTO routinely refuses registration of applied-for marks on the ground that they are immoral or scandalous under § 2(a) and confusingly similar with an already registered mark under § 2(d); in other words, the PTO routinely states that it cannot register a mark because the mark is immoral or scandalous and in any case because it has already allowed someone else to register the mark on similar goods. Furthermore, the PTO arbitrarily allows some applied-for marks to overcome an immoral-or-scandalous refusal while maintaining that refusal against other similar marks. …

    For example, the mark at issue in Brunetti is FUCT for apparel.  Here is what the authors say about this:

    In 2009, the PTO refused to register the mark FUK!T in connection with apparel (Class 25) and the operation of an internet website (Class 42) on the bases that the applied-for mark was immoral or scandalous under § 2(a) and confusingly similar under § 2(d) to the recently-registered mark PHUKIT for apparel (Class 25). Similarly, on June 18, 2013, the PTO registered the mark PHUC for apparel (Class 25). Four days before, on June 14, 2013, the PTO sent out an office action refusing to register the mark P.H.U.C. CANCER (PLEASE HELP US CURE CANCER) in connection with apparel (Class 25) on the bases that the mark was immoral or scandalous and confusingly similar to the about-to-be-registered mark PHUC for apparel. At no time during its registration process did the earlier-filed mark PHUC for apparel receive any immoral-or-scandalous refusal….

    My brilliant:) Akron Law Trademark Law 2019 students might call this a “Schrödinger’s cat argument” from the USPTO examiners. On the one hand, the mark FUCT is unregisterable because it’s 2(a) “scandalous”; but on the other hand, FUCT is unregisterable because we already registered a mark just like it. Doh!

    Here is another favorite example, that definitely left me scratching my head and pulling out my Spanish Dictionary (the Urban Dictionary was more helpful):

    In 2008, the PTO issued an immoral-or-scandalous refusal to an application for the mark CAJONES for dietary supplements (Class 5). It cited evidence from urbandictionary.com, among other sources, in support of the conclusion that: the proposed mark “CAJONES” means “TESTICLES” or “BALLS” and is thus scandalous because it is a commonly used vulgar slang term for a part of the male genitalia. 

    … 

    Yet in 2008 the PTO registered the mark CAJONES for party games (Class 28) without any immoral-or-scandalous objection, even though, with authorization from the applicant’s attorney, it amended the application record to include the following translation statement: “The foreign wording in the mark translates into English as drawers, and as a slang term for testicles.” Similarly, in 2005 the PTO issued no immoral- or-scandalous refusal to the mark CAJONES for beer (Class 32) and published the mark. In an office action, the PTO had asked the applicant for a translation of the mark, stating: “The following translation statement is suggested: ‘The English translation of CAJONES is drawers.’”

    Beebe and Fromer assert in their SSRN paper that these sorts of inconsistencies support that the 2(a) “immoral-or-scandalous prohibition” is being applied in an arbitrary and viewpoint- discriminatory matter” that violates the First Amendment. (They have a couple of theories for how this works under First Amendment doctrine, see pp. 27-32).

    These empirical studies by IP professors are likely to be influential on the outcome of the case. It seems clear the work has already been read by some of the Supreme Court Justices or their clerks.  For instance, as Professor and Dean of University of New Hampshire School of Law Megan Carpenter noted on SCOTUSblog, at oral arguments on Monday, April 15, Justice Gorsouch was

    particularly troubled by inconsistencies in acceptances and rejections in the PTO’s application of this provision over time, and the resultant inability to give adequate notice to trademark owners. … He added that he himself could not “see a rational line” through the refusals and registrations, and asked “is it a flip of the coin?”  

    The full transcript reveals even more that suggests the Justices are reading the Beebe/Fromer amicus or other empirical studies. From Justice Gorsuch:

    JUSTICE GORSUCH: But I can come up with several that are granted that … have phonetics along the lines you’ve described and a couple that have been denied. And what’s the rational line? How is a person — a person who wants to get a mark supposed to tell what the PTO is going to do? Is it a flip of the coin? (p. 21)

    From Justice Kavanaugh:

    JUSTICE KAVANAUGH: How …do you deal with the problem of erratic or inconsistent enforcement, which seems inevitable with a test of the kind you’re articulating? (p. 16)

    As someone who lacks a strong view on whether this provision of the Lanham Act should be struck down as unconstitutional, I am just enjoying hearing the examples…and seeing the Justices squirm a bit:

    JUSTICE GORSUCH: I don’t want to — I don’t want to go through the examples. I really don’t want to do that.
      (Laughter.)
    (p. 21)

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  • Inventor Asks Supreme Court to Review CAFC Decision on MPEP Rule Allowing Reopening of Examination After Appeal

    On April 10, inventor Gilbert Hyatt and the American Association for Equitable Treatment (AAET) filed a petition for writ of certiorari with the U.S. Supreme Court asking the Court to review a Federal Circuit case that struck down an Administrative Procedures Act (APA) claim brought by the petitioners. If the Supreme Court grants certiorari, they will determine whether a section of the U.S. Patent and Trademark Office’s (USPTO) Manual of Patent Examining Procedure (MPEP) authorizing examiners…

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  • 外から/外側から

                            目次はこちら

    外から/外側から

    –>外部から

    (FROM OUTSIDE)
    $$ Typically, a design of an advertisement is visible from outside the window while, from the inside, the design is not visible and an observer has a substantially unobstructed view out. / 一般に、広告のデザインは、窓の外から見ることができるが、内側から見ることはできず、観察者は、実質的に外から妨げられずに見ることができる。(USP6212805)

    $$ However, the Geneva drive can be driven via the drive shaft (from outside the actuator) using splines 78, to move the actuator to a new position. / しかしながら、ゼネバ駆動装置は、ドライブシャフトを介して(アクチュエータの外側から)スプライン78を用いて駆動されることができ、アクチュエータを新しい位置に移動させる。(USP8118276)

    $$ It is to be mentioned that the various arrows provided on the diagrams are indicative of the possible flow of steam from outside the devices and the particular flow paths possible inside said device. / 図に示される多様な矢印が、装置の外側からの水蒸気の可能な流れと、前記装置内部での可能な特定の流路を示していることにも言及しておく。(USP7608219)

    $$ FIG. 4 is an end view of the apparatus of FIG. 2, viewed from outside the craft’s hull, with the propellers raised for beaching; / 図4は、図2の装置の当該船舶の船殻の外側から見た端面図で、プロペラが陸揚げのために持ち上げられている。(USP6332818)

    $$ The filtration implant of FIGS. 1 to 4 is subsequently inserted from the outside (ab externo) through the slit incision. / 図1ないし4の濾過挿入管は、実質的にスリット切開を経て外側から挿入される。(USP6186974): from the outside

    $$ In this connection, it should be noted that the further blown fibre tubing (the further tubing) will have already been installed from outside the customer’s premises to the network node. / これに関係して、別な吹き出しファイバ配管(別な配管)は既に顧客施設の外側から網ノードへ据え付けられている。(USP5749565)

    (OTHERS)
    $$ An actuator 37 for an internal probe is externally mounted on the magazine 35 intermediate the inlet 36 and the interface housing 31. / 内部プローブのためのアクチュエータ37は、入口36とインターフェースハウジング31との中間のマガジン35に、外側から取り付けられている。(USP8047416): externally

    $$ The housing back 12 is of shallow convex curvature when viewed from its outer face and fits onto and is supported by the frame 14 using fixing screws 51 received in threaded holes 52 of the limb 48. / ケース後部12は取り付けた際に外側から見て僅かに凸面となる曲率を有しており、縦翼部48の通し穴52に入る固定ネジ51を用いて固定枠14に支持される。(USP5537480): from outerface

                            目次はこちら

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  • CAFC reverses D. Oregon on trademark issue

    From the opinion by Judge Newman:


    The district court held that Georgia Expo’s use of VersaTop’s trademarks
    in advertising and brochures did not
    violate the Trademark Act because Georgia Expo had not
    “affixed” the VersaTop trademarks to goods that were “sold
    or transported in commerce.” The court held that such “use
    in commerce” was required for trademark infringement liability,
    and therefore the relevant statutory provision concerning likelihood of confusion was not applicable.
    Summary judgment of noninfringement in favor of Georgia
    Expo was granted on this ground.
    We conclude that the district court erred in law. On
    the correct law, violation of the Trademark Act was established
    on the admitted facts. We reverse the district court’s
    judgment, and remand for appropriate further proceedings.

    Of relevance

    The treatise McCarthy on Trademarks and Unfair
    Competition explains that the “use in commerce” definition
    in § 1127—
    was clearly drafted to define the types of “use” that
    are needed to qualify a mark for federal registration—not as a candidate for infringement. It defines the kinds of “use” needed to acquire
    registerable trademark rights—not to infringe
    them.
    4 McCarthy § 23:11.50 (5th ed. 2018) (footnote omitted); see
    id. (“This statutory anachronism certainly was never intended to limit the scope of ‘uses’ that would constitute infringement.”).
    In Hasbro, Inc. v. Sweetpea Entertainment, Inc.,
    No. 13-3406, 2014 WL 12586021 (C.D. Cal. Feb. 25, 2014),
    the district court again stated the distinction between infringing use and the “use in commerce” requirement for
    federal registration:

    Sweetpea’s statement of the law is incorrect. The
    Ninth Circuit has explained that the definition of
    “use in commerce” in Section 1127 “applies to the
    required use a plaintiff must make in order to have
    rights in a mark . . . .” Playboy Enterprises, Inc. v.
    Netscape Commc’ns Corp., 354 F.3d 1020, 1024
    n.11 (9th Cir. 2004). Section 1127 is not, however,
    the legal standard for proving infringement.
    Id. at *9 (omission in original).
    Contrary to this precedent, the district court in this
    case incorrectly applied the definition of “use in commerce”
    that is included in the statute for purposes of trademark
    registration. This definition does not apply to trademark
    infringement. See Network Automation, 638 F.3d at 1144–
    45; Playboy, 354 F.3d at 1024 n.11

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  • Other Barks and Bites for Friday, April 19: Qualcomm Stock Soars Following Settlement with Apple, Supreme Court Cert Denials, and Trademark Suit Filings Up in Q1

    This week in Other Barks & Bites: Qualcomm stock soars 20% after settling patent litigation with Apple; the U.S. Supreme Court denies certiorari in two separate patent cases involving sovereign immunity and Section 101 invalidity determinations at the pleadings stage; the Second Circuit reopens a copyright case involving the former collage-making website Polyvore; “Lady Marmalade” songwriter seeks $20 million for unauthorized sale of music rights; a U.S. district judge rules that…

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