BREAKING NEWS: Lanham Act Held Partially Unconstitutional

Today the United States Supreme Court held that the disparagement clause of the U.S. Trademark Act (also known as the Lanham Act) is unconstitutional.  In Matal v. Tam (formerly Lee v. Tam, but Michelle Lee recently resigned as Director of the USPTO and was replaced with Acting Director Joseph Matal), the Court affirmed the Federal Circuit's previous finding that the disparagement clause was unconstitutional.

The Government's primary argument was that Federal trademark registrations somehow constitute government speech, and the government therefore should not be required to grant marks that are disparaging.  However, the Court quickly dispatched this notion, stating:

...It is [] farfetched to suggest that the content of a registered mark is government speech, especially given the fact that if trademarks become government speech when they are registered, the Federal Government is babbling prodigiously and incoherently.

The immediate effect of the ruling is that Simon Tam will be allowed to register the mark THE SLANTS for his rock band, The Slants.  The secondary effect of the ruling is that the Washington Redskins will likely be allowed to keep its REDSKINS trademarks.  I doubt there will be a flood of new registrations for disparaging marks because, quite frankly, those products just won't sell well to the consuming public, and the market will ultimately decide which marks and how often companies pursue a registration for something that may be construed as disparaging.

The case is Joseph Matal, Interim Director, United States Patent and Trademark Office v. Simon Shiao Tam, Case No. 15-1293, June 19, 2017.

More analysis forthcoming.  Stay tuned...

From Law360:

The U.S. Supreme Court on Monday put tighter restrictions on where patent owners can file infringement lawsuits, a decision that upends nearly 30 years of established practice and will likely force many lawsuits out of the patent litigation hotbed of the Eastern District of Texas.
In an 8-0 decision, the Supreme Court reversed a Federal Circuit rule that effectively allowed a patent holder to file suit anywhere a defendant makes sales, which critics complained has fueled a plague of forum shopping and a concentration of cases in a few jurisdictions.
Ruling in favor of liquid sweetener maker TC Heartland LLC, the justices reinstated a more restrictive standard from a 1957 Supreme Court decision, saying it remained good law.

“We therefore hold that a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute,” the court wrote.

We previously reported on White Kunckle's assertion of U.S. Pat. No. 8,540,575 against EA.  Last year, EA secured a win against the patent under 35 USC 101 when the District of Utah found the claims were directed to ineligible subject matter.  That decision was appealed to the Federal Circuit, who affirmed the holding on April 6, 2017.  (Fed. Cir., Case no. 2016-2286).

EA also had an inter partes review pending against the '575 patent.  In view of the Federal Circuit's decision, White Knuckle informed the USPTO that they disclaimed every claim of the patent.  As a result, the USPTO terminated the IPR proceedings on May 12.  (IPR2016-00634).

Ineligible subject matter remains one of the most frequent attacks on patent validity.  The lines have become more clear since Alice v CLS Bank in 2014, but it is still very difficult to predict whether any particular patent claim directed to software features will survive.  White Knuckle's '575 patent did not.

Wow.  You've likely read the news today about Google suing Uber.  No?  Here's a good summary at The Verge.  Here's the post on Medium.  From the post on Medium:

We found that six weeks before his resignation this former employee, Anthony Levandowski, downloaded over 14,000 highly confidential and proprietary design files for Waymo’s various hardware systems, including designs of Waymo’s LiDAR and circuit board. To gain access to Waymo’s design server, Mr. Levandowski searched for and installed specialized software onto his company-issued laptop. Once inside, he downloaded 9.7 GB of Waymo’s highly confidential files and trade secrets, including blueprints, design files and testing documentation. Then he connected an external drive to the laptop. Mr. Levandowski then wiped and reformatted the laptop in an attempt to erase forensic fingerprints.

If these allegations are true, Uber is in for a heap of pain, which it does not need right now in the wake of the other scandals its dealing with (i.e., sexual harassment, #deleteUber campaign).

The moral of the story:

The allegations in the complaint, believe it or not, probably happen more often than you think.  As noted in the article, it was only happenstance (read: dumb luck) that Google was alerted to the alleged theft of trade secrets.  This situation is why document management systems are critical to enterprise security, including video game developers.  Can someone walk out with your code without any record or trace?  If so, you need to rethink your document repository solution.  A secure document repository (E.g., iManage is one good example) has become critical to enterprise security to track who is accessing, editing, printing, using, copying, or even exporting each and every file your company has.  If you don't have one... get one.

It's that time of year again.  PatentArcade.com (as part of Banner & Witcoff) is looking for a summer Research Intern.  Full or part-time.

Hiring criteria are simple.  Qualified candidates:

• Must be enrolled in an accredited US law school.
• Must have an interest in video game and IP law.
• Must not be eligible to take the patent bar (this is a requirement of our firm, for various reasons, which I am happy to explain if anyone has questions about it).

I've been preaching this for years.  We need people to go into computer science and electrical engineering.  Here's more proof.

Calling all computer science majors: jobs are waiting for you.

From the Smithsonian Institution:

Banner & Witcoff has an open position for a design patent attorney.  Qualified applicants must hold a a JD from an accredited law school, be admitted to practice (or eligible) in the District of Columbia, hold a USPTO registration number, have significant, substantive experience prosecuting design patents and have experience analyzing design patents for purposes of rendering legal opinions in the course of client counseling.  Ideal candidates are self sufficient at design patent prosecution, comfortable managing large dockets, and work well in team environments.

Pay based on experience.

Send me an email if interested.

In a meeting on Sunday in Orlando, Florida, the IPO Board of Directors adopted a resolution supporting legislation to amend 35 U.S.C. § 101 as follows:

101(a) ELIGIBLE SUBJECT MATTER
Whoever invents or discovers, and claims as an invention, any useful process, machine, manufacture, composition of matter, or any useful improvement thereto, shall be entitled to a patent for a claimed invention thereof, subject only to the exceptions, conditions, and requirements set forth in this Title.

101(b) SOLE EXCEPTION TO SUBJECT MATTER ELIGIBILITY
A claimed invention is ineligible under subsection (a) if and only if the claimed invention as a whole, as understood by a person having ordinary skill in the art to which the claimed invention pertains, exists in nature independently of and prior to any human activity, or exists solely in the human mind.

101(c) SOLE ELIGIBILITY STANDARD
The eligibility of a claimed invention under subsections (a) and (b) shall be determined without regard as to the requirements or conditions of sections 102, 103, and 112 of this Title, the manner in which the claimed invention was made or discovered, or the claimed invention’s inventive concept.

IPO supports legislation because the patent eligibility test created by the U.S. Supreme Court is difficult to apply and has yielded unpredictable results for patent owners in the courts and at the USPTO. IPO’s proposed legislative language would address these concerns by reversing the Supreme Court decisions and restoring the scope of subject matter eligibility to that intended by Congress in passing the Patent Act of 1952; defining the scope of subject matter eligibility more clearly and in a technology-neutral manner; requiring evaluation of subject matter eligibility for the invention as a whole; and simplifying the subject matter eligibility analysis for the USPTO, courts, patent applicants, patentees, practitioners, and the public by preventing any consideration of “inventive concept” and patentability requirements under sections 102, 103, and 112 in the eligibility analysis.