Seattle Patent Attorney | Seattle Trademark Lawyer

Ruttler Mills PLLC

Seattle Patent Attorneys and Trademark Lawyers

206-838-6400 Complimentary 15 Minute Consultation

The Ruttler Mills Blog

Federal Circuit Appeals Court Finds 3rd Case of Eligible Subject Matter in Software

Jim Ruttler, Patent Attorney

Posted Monday, June 27, 2016 by Jim Ruttler

The Federal Circuit today issued its decision in Bascomb where it found for the third time that software can be patent eligible. After the broad language of the Supreme Court decision in Alice, many thought that software could be no longer patent eligible. The appeals court in charge of patents has again stated that this is not the case and that software remains patent eligible.

Here, the claims in Bascomb were directed toward a network traffic filtering system. Older systems placed the filtering software on the client, which allowed for customization. Some efforts at centralizing the filtration software on servers had resulted in a one-size-fits-all approach. The claims here solved that problem by allowing customization of filtration rules while centrally locating the filtering software.

The Court held that while filtering was something old and well known, the specific application here added more and didn’t preempt all filtering.

Judge Newman issued a concurring opinion calling for the need to return to a focus of the statute and on novelty and non-obviousness instead of eligibility. The eligibility test has become unpredictable and is conflating other areas of the Patent Act. This reflection is accurate and welcome in what has become a really confusing area of the law.

Permalink to this entry

Brexit Vote Likely to Delay European Patent Courts

Jim Ruttler, Patent Attorney

Posted Friday, June 24, 2016 by Jim Ruttler

The European Unitary Patent and Unified Patent Court system was set to be ratified within the next few months. One can currently obtain a European Patent through the European Patent Office, but this patent must be separately enforced in each country of the EU. Obviously, this is not efficient when an infringer is operating in two countries or more. The Unified Patent Court would have provided a single court system that allowed for enforcement across all of the EU.

According to leading UK magazine, IAM Media, The Unified Patent Court system has been placed on hold now after the Brexit vote. It could take at least two years or more for implementation of the Unified Patent Court and it may never happen now that the UK is planning to exit the EU.

This means that the United States remains the largest single market of coverage for patent assets and that the recent rush to European patents may not result in as large a benefit as hoped.

Permalink to this entry

Cuozzo SCOTUS Decision BRI is OK

Jim Ruttler, Patent Attorney

Posted Tuesday, June 21, 2016 by Jim Ruttler

Yesterday the Supreme Court decided Cuozzo and held that the broadest reasonable interpretation is fine during inter partes review proceedings. Cuozzo had wanted a more narrow standard during the proceedings, which are well known for being unfavorable toward patentees.

What standard of review is used during the proceedings is really irrelevant. Once your patent is pulled into one of these proceedings, the Patent Office is most likely going to invalidate most if not all of your patent - under whatever standard they apply.

The real issue here is that these PTO proceedings are unconstitutional because they take private property (patents) outside of the court system. If you get a patent, then the law since late 1800’s says that it is your private property. As private property, it can’t be revoked by the executive branch and is only subject to being taken away through the judicial system.

Unfortunately for the Patent Office, the Cuozzo win will likely be short lived as two new cases are up for review by the Supreme Court challenging the constitutionality of the entire inter partes review framework: Cooper and MCM. Cooper asks the Court to limit any Patent Office decisions as being advisory to a federal court judge. MCM asks the Court to outright invalidate the entire inter partes review.

We should know within a couple of months whether the IPR framework will remain or whether it will be scaled back.

If it isn’t scaled back, then there are many options for patent owners to minimize the downside risks of IPRs. We’ll save those for another post in the event that I’m wrong and IPRs are maintained by the Courts.

Permalink to this entry

Supreme Court Revives Treble Damages: Halo

Jim Ruttler, Patent Attorney

Posted Tuesday, June 14, 2016 by Jim Ruttler

In a significant victory for innovators, the U.S. Supreme Court this week made it easier for patent owners to obtain treble damages for infringement. Since 2007, the Federal Circuit Appeals Court and the lower District Courts have been applying a strict standard for treble damages. Essentially, they required clear and convincing evidence of willful infringement without any reasonable defense. Of course, it was easy for most patent litigators to concoct some reasonable defense after the fact during trial, so even the most egregious willful infringement avoided treble damages.

However, the Supreme Court has laid this test to rest and changed the rule to permit the lower District Courts considerable discretion in determining whether to avoid penalizing treble damages. The new test requires only that the case be out of the ordinary considering the behavior and actions of the infringer at the time of infringement. The standard has been lowered to preponderance of evidence (more likely than not) and infringers can’t escape by producing some reasonable defense later during trial. Furthermore, the District Court’s decision to institute treble damages is entitled to significant deference during any appeal of the damage award.

In short, this is a significant pro-patent change in the law. Now, any infringer who knows about a patent and the existence of infringement will have the potential for a very heavy toll of 3 times the total damages and the possibility of attorneys fees.

We are currently waiting for the decision by the Supreme Court in Cuozzo, which will likely result in significant limitations on the inter partes review proceedings at the Patent Office, further increasing the strength of patents. Also, the Supreme Court should be deciding whether to take up Cooper and MCM to possibly declare the entire inter partes review proceedings as unconstitutional.

My expectation is that the Supreme Court will limit inter partes review proceedings to be mini-court proceedings which apply the same post-grant court standards. I think also that the inter partes review proceedings will be held constitutional, so long as all the parties consent to the Patent Office’s jurisdiction. This will effectively permit parties to choose whether to litigate via the Patent Office or the Courts, but will prevent patent owners from being drug into the Patent Office against their will.

Permalink to this entry

Using Twitter Is Not a Regsiterable Trademark for Online Community Service

Daniel Mills, Trademark Attorney

Posted Friday, May 20, 2016 by Daniel Mills

When a trademark applicant sets up a social media account on Twitter in order to advertise or promote its business via a social-networking website, is it the applicant or Twitter that is providing the service of “creating an on-line community for users” interested in the applicant’s business? The answer is Twitter!

Thus began a recent decision by the TTAB that upheld a refusal to register SAY IT YOUR WAY application by FTD for its Twitter account for “Creating an on-line community for registered users to participate in discussions, get feedback from their peers, form communities, and engage in social networking featuring information on flowers, floral products and gifts.” (International Class 042)

The decision cited a recent update to Section 1301.04(h)(iv)(C) of the Trademark Manual of Examining Procedure(“TMEP”)in April 2016. The section states:

Some applicants may mistakenly mischaracterize their services as ‘social networking’ because they assume that advertising or promoting their non-social-networking services via a social-networking website means they are providing social-networking services. For instance, an applicant may mistakenly file an application for ‘online social-networking services’ and provide a Facebook® webpage as a specimen when, in fact, they operate a pet store and are only using the Facebook® website to advertise the pet store and communicate information to and messages with actual and potential customers. Such a specimen is not acceptable for the social networking services since it does not demonstrate that the applicant is providing these services

FTD’s position was that it’s use of Twitter created a sub-community within the Twitter universe, but the Board was not convinced that this use constituted “creating on online community” and held that Twitter is creating the service of on online community, not FTD. the Board noted that FTD “does not provide a platform by which its followers can create a profile, establish a homepage, and attract further followers.” Furthermore the Board agreed with the examining attorney that FTD was Applicant “simply acting to further the sale of its flowers, floral products and gifts by using its Twitter account to engage with consumers and potential consumers and promote its retail services.”

So the lesson here is that simply using a social media site even if that use is detailed, voluminous, and integrated into a business’s marketing plan, is not the same as creating a separate online community that creates a registrable trademark for that service.

Permalink to this entry

Ruttler Mills PLLC
One Union Square, 1730, 600 University Street, Seattle, Washington 98101 US
Phone: (206) 838-6400

News and Announcements

Tuesday, January 24, 2017
More Rumors and No Answers Regarding Director Lee learn more +
Thursday, January 19, 2017
Michelle Lee Rumored to Be Staying as PTO Director learn more +
Tuesday, August 30, 2016
U.S. Patent Office: China Is Working Toward Strong Patent System learn more +
Tuesday, June 14, 2016
Supreme Court in Halo: Treble Damages are Back learn more +