Trademark, Intellectual Property Litigation, and Patent Updates for the Non-U.S. US Counselor Brad R. Maurer and Louis T. Perry Abigail M. Butler Kevin Erdman Friday, June 5, 2009 www.bakerdaniels.com 1
United States Trademark Practice Considerations for the International Client Brad R. Maurer and Louis T. Perry www.bakerdaniels.com 2
U.S. Trademark Prosecution Historic i U.S. Rule: Trademark owners must use a mark in commerce before they can obtain a federal registration Registration recognizes rights that a trademark owner has already created through actual use of a mark in commerce 3
U.S. Trademark Prosecution Exceptions: Section 1(b) Applications ( Intent t to Use ) Section 44(e) Applications (based on foreign application or registration) Section 66(a) (Madrid Protocol extensions) But importance of actual use lingers use must be shown to maintain the registration use must exist to enforce the registration ti 4
U.S. Trademark Prosecution: Use and Maintenance International registrants should commence use of a mark in U.S. as soon as possible Statutory presumption of abandonment after three years of non-use (risk of cancellation?) International registrants, like a U.S. registrant, must file affidavits of use to maintain a registration 5
U.S. Trademark Prosecution: Use and Maintenance (cont d) Affidavits of Use: When? Between the fifth and sixth year following the registration date and at the end of each successive ten-year period Why? U.S. protection focused on actual use, therefore requirement to confirm ongoing use of the mark in U.S. commerce for every good and/or service listed Consequences: Failure to file affidavit of use results in cancellation of a registration in its entirety Failing to file an accurate affidavit of use exposes the registration to potential cancellation for fraud. See Medinol Ltd. V. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003) 6
U.S. Trademark Prosecution: Pitfalls for the Madrid Registrant Affidavit of Use and Renewal: For a U.S. registration, renewal/use filed together Under Madrid, renewal takes place at IB BUT TO MAINTAIN THE U.S. EXTENSION, AN AFFIDAVIT OF USE MUST ALSO BE FILED WITH USPTO TEN YEARS AFTER REGISTRATION Consequences: Failure to file affidavit of use = cancellation Late filing grace period also different for a Madrid Extension: no grace period for 5/6 year, and only 3 months for 10 year Filing window difference at 10 year (6 months vs. 12 months) 7
U.S. Trademark Prosecution: Pitfalls for the Madrid Registrant Other Differences from Section 1 and 44 based applications: Not eligible for Supplemental Register Vague description of goods/services and International Classification by IB Response to Office Action due within 6 months regardless of when IB forwards (first OA sent to IB) No possibility to amend mark (Section 1 and 44 possibility for amendment if not material ) 8
US U.S. Trademark kp Prosecution: Suggestions for International Owners Current registrations Audit U.S registration portfolio considering use and fraud. If an important mark appears vulnerable, consider filing an additional application with a goods and services description that provides the required coverage but does not highlight hli ht fraud vulnerability in prior registration Looking forward Registration under 44(e) and 66(a) does not relieve the trademark owner of its responsibility to demonstrate actual use in U.S. commerce with respect to the listed goods and services ENFORCEMENT DEMANDS USE ANYWAY Because of classification restrictions, foreign trademark owners should consider filing applications for their most significant marks directly in the United Statest 9
US U.S. Trademark kp Prosecution: Look Before Leaping Pre-filing Search and Opinion A comprehensive search conducted by a reputable vendor is one of the tools available to assess the risk of whether similar trademarks are registered or used in connection with similar goods or services by a third party (no guarantee, however) Comprehensive searches can cost approximately $500 for word marks and upwards of $1,000 for design marks The cost of an analysis of the search results and the preparation of an opinion letter varies with the extent and nature of the results, but generally ranges in between $1,500 and $3,000. 10
U.S. Trademark Prosecution (cont d) Trademark watch service Notice of potentially conflicting trademark applications and registrations when published for registration Monitor status of applications of interest 11
Enforcing Rights: Protecting a Mark Administrative: Opposition and Cancellation Proceedings Filed with the TTAB Damages are unavailable relief is limited to cancellation or refusal to register the mark Only concerned with registration of a mark Judicial: U.S. Courts Injunctive relief, statutory damages and/or attorneys fees, other damages Typically filed with federal district courts Ci Criminal i penalties for trademark counterfeiting 12
Enforcing Rights: Protecting a Mark Cease and Desist Letter Contents and possible declaratory judgment Be willing to carry out threats or lose credibility Likelihood of Confusion Multi-factor test Will you need a survey, and at what cost? Intent 13
Enforcing Rights: Protecting a Mark Anti-Dilution Statutes for Famous Trademarks Identical or similar mark Blur the capacity of the famous mark to identify and distinguish its goods Tarnish i the reputation ti No need to show likelihood of confusion 14
QUESTIONS? www.bakerdaniels.com 15
Considerations In U.S. Patent Litigation Abigail M. Butler www.bakerdaniels.com 16
Major stages of U.S. Patent Litigation Jurisdictional Requirements and Foreign activities that may infringe U.S. patents Strategic considerations for co-pending patent litigation www.bakerdaniels.com 17
In a Nutshell Time Consuming D. Ct.: 3-5 years Appeals and Returns: 7-10 years Expensive Average cost of $2.6M if $1M or more is at risk 18
1. Pleadings 2. Discovery period 3. Claim construction and Markman proceedings 4. Summary Judgment and other pretrial motions 5. Final pretrial proceedings 6. Trial 19
Pleadings Complaint Answer to Complaint Motions to Dismiss Lack of personal jurisdiction Lack of subject matter jurisdiction Adequacy of pleadings 20
General Jurisdiction Most common way foreign defendants are pulled into U.S. Requires systematic & continuance contacts Prior business contacts Activities of domestic subsidiary 21
Jurisdiction Based On Internet Use Sliding Scale - Interactive v. Passive 22
Interrogatories Discovery Document Requests Depositions Site Inspections Expert Discovery 23
International Discovery Requests 28 U.S.C. 1782 governs production of evidence in the U.S. for use in a foreign or int l tribunal Twin Aims: to provide efficient means of assistance to participants in int l litigation in U.S. Federal Courts and to encourage similar means of assistance from foreign countries 24
International Discovery Requests Allows Court to order deposition testimony and production of documents May be available to private international arbitration proceedings Parties to an international arbitration agreement may wish to expressly preclude 25
Claim Construction & Markman Proceedings Markman v. Westview Instruments Judges should perform claim construction Vitronics Corp. v. Conceptronics Introduced hierarchy of evidence to be used in construing claims Cybor v. FAS Technologies Federal Circuit overrides District Court 26
Timing Considerations Typically done before or in conjunction with Motions for Summary Judgment What is considered? Words themselves Patent specification File history Extrinsic evidence Involves exchange of briefs and a hearing 27
Summary Judgment A motion for judgment without a trial Proper if undisputed d facts warrant judgment as a matter of law Infringement, validity, enforceability 28
Final Pretrial Proceedings Witness & Exhibit lists Stipulations Motions in Limine Trial Brief No surprises! 29
Trial Jury Selection (voir dire) Opening Arguments Witnesses (fact and expert) Closing Arguments Deliberations 30
Creativity Is Rewarded A picture is worth a million words (and maybe a million dollars) Select a theme and stick to it Shotgun v. Sniper-rifle 31
Tell A Story Unify and explain why people did what they did Motivate the listener 32
Judicial Research Experience level, e.g., Rocket Docket Education Utilize local bar 33
Appeal Route Federal Circuit, circa 1982 (Fed. Cir.) Jurisdiction based solely on subject matter rather than geographical location Provides uniformity Binding precedent throughout U.S., unless superseded by Supreme Court or by applicable changes in the law 34
Foreign Activities That May Raise U.S. U S Infringement Issues 35
Making, using, or selling a U.S. patented product or process in another country does not, by itself, infringe a U.S. patent, but. 36
Importing a patented product into the U.S. is an act of direct infringement Includes products made by a U.S. patented process Remedy is Damages and/or Injunction 37
2 Ways To Stop Infringing Imports Litigation in federal district court Filing a proceeding with the International Trade Commission 38
ITC Proceedings v. District Court Litigation Personal Jurisdiction District Courts must have personal jurisdiction over the alleged infringer ITC has national in rem jurisdiction over all products imported into the U.S. 39
SUBJECT MATTER ITC DISTRICT COURTS Judge Administrative Law Judge (deals with nothing but IP cases) Judge may not be well-versed with the technology, or with patent cases in general. Deals with a wide variety of cases Evidence Relaxed evidentiary rules (allows all evidence which seems useful and relevant, including hearsay). Also allows worldwide discovery beyond named parties FRE and Discovery is generally limited and governed by the FRCP (But, see 28 U.S.C 1782.) Style of Proceeding Formal, evidentiary hearing which does not necessarily include Markman proceedings Pretrial hearings and motions, Markman proceedings, and trial Damages May issue C&D Order; or Exclusion Order which may apply to violators beyond those named by respondent Injunctive Relief (limited by ebay) and Monetary Damages Appeal Route Federal Circuit Federal Circuit 40
Infringement In The U.S. With Sales Outside The U.S. May be awarded damages based on sales of a patented product made outside U.S. U S when infringer exports a component of the product abroad Allows the U.S. patentee to avoid the expense and risk of filing multiple lawsuits in different countries, while still recovering sales where no patent protection was obtained 41
Strategic Considerations for Co-Pending Patent Litigation 42
Statements made under oath in one proceeding may be admissible elsewhere Molins PLC v. Textron, Inc. Jurisdictional Differences in Claim Construction Improver Corp. v. Remington Consumer Prods. Effect of Foreign Judgments and Settlements Vas-Cath, Inc. v. Mahurkar 43
Thank you! www.bakerdaniels.com 44
FICPI Patent Update By: Kevin Erdman Partner, BAKER & DANIELS LLP www.bakerdaniels.com 45
Substantive Patent Update Design Patent change in infringement Old standard Point of Novelty New standard Ordinary Observer Lay Jury prominent in decision Favors Design Patent Owner 46
Substantive Patent Update Evolving Nonobviousness standards KSR plays out in different technologies Chemical Mechanical Electrical Biotech Software 47
Substantive Patent Update Written description for means plus function elements and ordinary elements under the doctrine of equivalents Courts are holding patent terms to explicit definitions Single embodiments often constrain definition of claim terms Multiple embodiments and explicit disclosures of equivalent structures important in specification 48
Procedural Patent Update Tafas update, what happened to the new rules Court banned limit on continuations Court allowed other aspects of new rules Patent Office withdrew new rules Further rules likely to shift burdens and costs to patent applicants 49
Procedural Patent Update Information Disclosure Statements Include English language equivalents where possible McKesson decision held withholding information from related prosecutions (office actions and responses) was inequitable conduct Obligation to report on related proceedings including office actions and responses 50
Procedural Patent Update Electronic filing and timing issues All documents may be submitted electronically, forward scanned documents with signatures rather than physical documents Specifications best provided as Word documents, or PDF with embedded text Priority documents and prior art must be submitted earlier in the process 51
Impact of KSR v. Teleflex KSR v. Teleflex, 127 S.Ct. 1727 (2007) Issue: For combination patents, determining when it is appropriate to combine teachings from the prior art for purposes of an obviousness analysis. Holding: Reversed Court of Appeals for Federal Circuit s rigid application of teaching-suggestion-motivation gg test ( TSM test ). The correct test is an expansive and flexible one. Renewed focus: Person of Ordinary Skill in the Art who exercises common sense. 52
The way it was pre-ksr Explicit finding of a teaching, suggestion, or motivation in the prior art that would compel a PHOSITA to combine prior art elements. This was known as the TSM test. POINT: to address obviousness and avoid hindsight bias. 53
The way it is today The Supreme Court in KSR rejected any rigid application of the TSM test. TODAY: The test is expansive and flexible. Common sense is the key inquiry. An explicit reference is no longer required. 54
How does KSR impact you? ANSWER: It Depends. Different fields of art seem to be impacted differently. Compare: mechanical, electrical, software, chemical, and biotech. 55
MECHANICAL PATENTS TREND: Patent claims are easier to invalidate under the obviousness doctrine. Recent BPAI and Federal Circuit decisions that use KSR have most often found claims were obvious because the results were predictable. 56
Representative Mechanical Case Ex Parte Bernard, Appeal 2008-2609, 2008 WL 4823235 (Bd. Pat. App. & Inter. Nov. 5, 2008): Invention at issue: The fastening components at certain joints in a motor vehicle powertrain. Holding: Board affirmed the examiner's finding that the claims at issue were obvious. 57
Representative ti Mechanical Case Ex Parte Bernard, 2008 WL 4823235 (BPAI Appeal 2008-2609) (Nov. 5, 2008): In light of KSR, these claims were simply a combination of old elements, "each performing the same function it had been known to perform." Quoting KSR, the Board held that when elements work together in "an unexpected and fruitful manner," the invention is not obvious. Using language from KSR, the combination did nothing more than "combine known elements for their known functions to yield, predictably, a mechanical assembly of the components at critical joints of a vehicle powertrain." 58
Considerations for Mechanical Claim Drafting Predictability of the operation and use of mechanical elements creates difficulties. Therefore, applicants should direct examiner to the unknown uses of the claimed mechanical elements. Additionally, point to unexpected performance characteristics of those elements. And do so in either the specification or by affidavit during prosecution. 59
ELECTRICAL PATENTS TREND: Similar to mechanical patents. Predictability of the art appears to be creating a trend of invalidity. BUT The examiner is still required to point to some articulated reasoning to support a conclusion of obviousness. See Ex Parte Assaf Govari, Appeal 2008-6324, 2009 WL 789956 (Bd. Pat. App. & Interf., March 23, 2009). 60
Representative Electrical Case In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) (reh'g and reh'g en banc denied, Jan. 24, 2008). Invention at issue: multiplexer circuitry. Holding: Affirmed the BPAI s obviousness rejections. 61
Representative Electrical Case In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) (reh'g and reh'g en banc denied, Jan. 24, 2008). The court began by noting that "a person of ordinary skill is also a person of ordinary creativity, not an automaton." In re Translogic at 1260 (citing KSR at 1742). No explicit motivation required; nor does the obviousness analysis require one to point to the prior art for precise teachings directed to the specific subject matter of the challenged claim. Id. At 1262 (citing KSR at 1741). 62
Representative Electrical Case In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) (reh'g and reh'g en banc denied, Jan. 24, 2008). Now, a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. Id. Here, the problem solved by the patentee yielded nothing more than predictable results, and could be achieved by a PHOSITA pursuing known options within his or her technical grasp. Id. 63
Considerations for Electrical Claim Drafting Similar considerations as for mechanical patent claims. Additionally, the specification may include both the known uses of the disclosed circuits and then articulate differences in how and why the circuit elements are used in the claimed combination. 64
TREND: SOFTWARE PATENTS Once again, because software is considered a relatively predictable art, a trend similar to that of mechanical and electrical patents is emerging. 65
Representative Software Case Ex parte Conversagent, Inc., Appeal 2009-1291, 2009 WL 1346272 (Bd. Pat. App. & Interf., May 12, 2009). Invention at Issue: [S]ystems for interactively responding to queries from remotely located users, e.g., by accessing local and/or remote data sources." (Citing patent t abstract.) t Holding: Affirmed examiner s obviousness rejections. 66
Representative Software Case Ex parte Conversagent, Inc., Appeal 2009-1291, 2009 WL 1346272 (Bd. Pat. App. & Interf., May 12, 2009). The primary obviousness issue revolved around embodiments of the patent indicating that instant messages which were processed by a message processor were used to respond to the remote user's s queries. The examiner combined several prior art references to reject the claims-at-issue on obviousness grounds. These combinations were held to be clearly within the ability of one of ordinary skill in the art. Id. at *4 (citing KSR at 1740). 67
Considerations for Software Claim Drafting Similar il to electrical. l Disclose how known software components are used in different ways than previously known in the art. 68
TREND: CHEMICAL PATENTS The chemical arts are unpredictable Few situations that involve finite, predictable results Recent BPAI and Federal Circuit decisions most often find claims not obvious 69
Representative Chemical Case Ex Parte Warren, 2008 WL 3874499 (BPAI Appeal 2008-3108) (Aug. 19, 2008): Invention at issue: Filter material comprising a dye to be used in conjunction with night vision equipment Holding: The Board reversed the examiner's rejection of appellants' patent claims and found that the claims were not obvious 70
Representative Chemical Case Ex Parte Warren, 2008 WL 3874499 (BPAI Appeal 2008-3108) (Aug. 19, 2008): Using KSR language: [O]ne skilled in the art would not have found the claimed invention obvious over" the prior art because "[s]ubstituting the prior art elements would have yielded results that were not predictable There were no finite number of identified, predictable solution to the problem solved by the Appellants Using KSR s rejection of a rigid T-S-M test, there was no motivation to substitute the Co 2+ compound from one prior art reference with the dye in another prior art reference 71
Considerations for Chemical Claim Drafting Specifically for obvious to try allegations, these should be rebutted by including both positive and negative examples to show how the results are actually different and thus not obvious to try. 72
TREND: BIOTECH PATENTS Like the chemical arts, the biotech arts are unpredictable Few situations that involve finite, predictable results Claims recently litigated before the BPAI or the Federal Circuit are frequently found to be not obvious 73
Representative Biotech Case Ex Parte Mertz, 2009 WL 524950 (BPAI Appeal 2008-3751) (Feb. 27, 2009): Invention at issue: Method for determining cancer prognosis and categorizing cancer patients based on the expression of ERR<<alpha>> Holding: Board reversed examiner s rejection of obviousness 74
Representative Biotech Case Ex Parte Mertz, 2009 WL 524950 (BPAI Appeal 2008-3751) (Feb. 27, 2009): KSR's s :" [O]bvious to try may be sufficient when there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions." Prior art was not related to ERR<<alpha>> Was obvious to try comparing the amount of ERR<<alpha>> to other cancer patients based on the teachings of the prior art But only one of the prior art references discussed ERR<<alpha>> and mechanisms underlying cancer are unpredictable 75
Considerations for Biotech Claim Drafting Similar to chemical claims, showing negative examples to rebut predictability is key to successful prosecution. 76
SUMMARY KSR reinforces the elementary principle that broad claims are amenable to invalidity attacks. For the predictable arts, this is particularly true. However, in unpredictable arts like biotech and chemical, KSR s impact may be less forceful. And this can be amplified with negative examples. 77