Santa Fe IP

VIP Products sold a “Bad Spaniels” dog toy designed to look like a Jack Daniel’s whiskey bottle.  Following a Jack Daniel’s demand to stop, VIP Products filed a declaratory judgement arguing their parody of Jack Daniel’s bottle was protected fair use.  In Jack Daniel’s Properties Inc. v. VIP Products, the Supreme Court ultimately held parody does not receive special First Amendment protection when an accused infringer “has used a trademark to designate the source of its own goods—in other words, has used a trademark as a trademark.”  The Court explained “[t]he use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s product.”

In recently holding U.S. Design Patent No. D888,498 valid on summary judgement, a U.S. District court explained that “baseball bats do not qualify as prior art for [a baseball-bat-shaped drinking vessel] because they do not come from the same field of endeavor.”  Samiam Group, LLC v. Coopersburg. Assoc., Inc. The court continued “[w]hereas a baseball bat belongs to the field of sporting and recreational play of hitting a ball, the patented design belongs to the field of consuming beverages.” To anticipate a design, the prior art must more than resemble the claimed design – it must also be in the same field of endeavor.

In deciding In re McDonald (CAFC 2022), the Federal Circuit applied the recapture rule to § 101 rejections.  A patent may be reissued when the original patent is inoperative or invalid “through error without any deceptive intention.”  The recapture rule generally prevents recapturing claimed subject matter surrendered during prosecution to obtain the original claims, and it had previously been applied to prior art rejections under § 102 and § 103.  In the present case, original claims related to displaying search results and were amended with “a processor” to overcome a § 101 rejection.  Subsequently, a reissue application sought to broaden the claims by removing the processor limitation.  The Court held that McDonald “cannot now use the reissue application as a Trojan horse to recapture that which he deliberately gave up.”  The Court went on to explain that because “McDonald deliberately—not erroneously or inadvertently—added the ‘processor’ limitations … to overcome the § 101 rejection, the recapture rule does not permit him to now remove those limitations to broaden his claim.”

The Federal Circuit’s Junker v. Medical Components, Inc. decision is a good reminder of the importance of pursuing patent protection earlier rather than later.  Mr. Junker filed for and received U.S. Design Patent No. D450,839 for a catheter sheath.  Prior to filing, Junker sought a third party to handle the manufacture of his new design and entered into a non-disclosure agreement (NDA) with the third party.  Discussions continued over several months and a prototype was provided to Junker.  Apparently without Junker’s knowledge, the third party offered Junker’s design for sale to Boston Scientific sending a letter detailing bulk pricing information more than one year prior to filing date of the design patent. The third party’s actions created an on-sale bar that invalidated Junker’s design patent.

The Federal Circuit made quick work of applying the two step Alice inquiry to a patent application describing a method “enabling the sale of products or services which are available on the internet.”  In five pages, the court’s In re Elbaum opinion quickly affirmed the PTAB’s determination that the claimed invention (1) is directed to “an abstract idea, a commercial transaction that amounts to a method of organizing human activity,” and (2) recites “purely conventional computer functions of storing, receiving, analyzing, and processing data.”  The court explained “[i]f anything, the claim recites generic computer functions, which the specification describes are carried out by conventional computer components.”  While court’s opinion is nonprecedential and by no means groundbreaking, it is a good reminder that Alice is alive and well.

Cambell Soup prevailed at the Federal Circuit when Gamon’s design patents for soup-can dispensers were recently invalidated. In Campbell Soup Co. v. Gamon Plus, Inc. the court agreed with the PTAB’s findings that the overall designs had a label area similar to a prior art patent, but disagreed that secondary considerations rendered Gamon’s patents nonobvious. In particular, the court held that evidence of commercial success and praise lacked a nexus to the claimed designs. Here the claimed designs were only portions of a display rack’s label area, cans, and stops, while the commercially successful product (and praise thereof) was the entire display rack. The court held that because the product “undisputedly includes significant unclaimed functional elements, no reasonable trier of act could find that the [product] is coextensive with the claimed designs.” The court held that “as in the utility patent context, objective indicia must be linked to a design patent claim’s unique characteristics.”

Speedway Motors, Inc., a purveyor of speed and performance vehicle parts, has trademark registrations on three new logos. In an attempt to further protect their logos, Speedway also pursued copyright registrations but were denied. According to the Copyright Office, Speedway’s new logos fell “into a narrow area where admittedly independent efforts are deemed too trivial or insignificant to support a copyright” and therefore failed to meet the admittedly low threshold for copyright protection. Speedway brought action in Speedway Motors, Inc. v. Perlmutter (D. Neb. 2021) arguing that the Office’s decision was arbitrary and capricious. The court was not persuaded and affirmed the Office’s decision noting that “this is not a race to the bottom. Even if the Copyright Office had previously approved … a work that arguably displayed less creativity than Speedway’s logos, that does not mean that Speedway has satisfied its legal burden.”

This is not to say that no copyright protection exists for any logo.  American Airlines successfully registered their eagle-with-red-and-blue-wings logo in 2018 when the Copyright office found the logo contained “minimal, but sufficient amount of original and creative authorship.  Unfortunately there is no bright line between what creativity is sufficient and what is trivial or insignificant.

In Minerva Surgical, Inc. v. Hologic, Inc., the Supreme Court held that that the doctrine of assignor estoppel “is well grounded in centuries-old fairness … [but] … “applies only when an inventor says one thing … in assigning a patent and the opposite in litigating against the patent’s owner.” Here, the inventor filed a patent application and assigned it to his then-company Novacept, Inc. The inventor later left Novacept and founded Minerva while Hologic eventually acquired the resulting patent portfolio. Hologic broadened the scope of patent claims well after the inventor’s assignment.

The district court and the Federal Circuit agreed with Hologic’s argument that the inventor was estopped from impeaching the patent’s validity. However, the Supreme Court held “Assignor estoppel comes with limits” providing three examples, including (1) assignments made before an inventor can make a warranty of validity, (2) arrangements requiring assignment of any future inventions developed during employment, and (3) post-assignment changes in patent claims (which was the situation in this case).

The Federal Circuit’s 1998 decision in Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc. long stood for the proposition that “a patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement.”  In Red Wing, patentee HHI’s warning letters were deemed insufficient to create personal jurisdiction for a declaratory judgement action in Red Wing’s home state. 

The Federal Circuit’s recent decision in Trimble Inc. v. PerDiemCo LLC limits the reach of Red Wing.  Here, patentee PerDiemCo’s twenty-two communications with Trimble via letter, email, and telephone “over a period of three months” were deemed sufficient to establish PerDiemCo’s personal jurisdiction in Trimble’s home state.  The court held the patentee’s “actions went far beyond ‘solely … informing a party who happens to be located [in California] of suspected infringement…. Rather, PerDiemCo amplified its threats of infringement as the communications continued.’”  The court held that patentee’s attempts to extract a license “in this case are much more akin to ‘an arms-length negotiation in anticipation of a long-term continuing business relationship,’ over which a district court may exercise jurisdiction.”

The Supreme Court altered the obviousness landscape in 2007 with KSR Int’l Co. v. Teleflex Inc. The Court held that common sense may allow “a person of ordinary skill [to] fit the teachings of multiple patents together like pieces of a puzzle.”  The Federal Circuit recently revisited “common sense” in B/E Aerospace v. C&D Zodiac, which involved an airplane lavatory having two recesses allowing close positioning of an airplane seat.  The court affirmed an obviousness rejection on the grounds that it would have been common sense to incorporate a second recess when the prior art taught a first recess.  This case is a simple reminder that “common sense” may still play a role in an obviousness determination.