OP-IP

Wednesday, January 8, 2014

iPhone "dressed" in Blackberry's clothing? The 'keys' to understanding a 'case' for trade dress infringement

Never let it be said that the arguably geeky CES (ConsumerElectronics Show) does not have widespread appeal. And what electronics rollout would be complete if there were not a little controversy. Thank you, Blackberry, and start-up tech company, Typo, for saving the day in an otherwise boring 2014 CES show. I mean, after the first demonstration of a 100+ inch curved-screen ultrahigh definition television, do I really need to see another?

Typo keyboard case

At the CES show, amiss the new TiVo devices and Roku® boxes, start-up company, Typo introduced its iPhone keyboard case which provides a "real" qwerty keyboard as an add-on to iPhone. (See picture to the right.)

Blackberry has filed a lawsuit in the Northern District of California, alleging, among other things, that the Typo iPhone keyboard case infringes Blackberry's “trade dress.” Taking a page from the Apple vs. Samsung design patent infringement cases, Blackberry alleges that instead of developing its own keyboard design, Typo chose to copy BlackBerry’s innovative style and design, including the keyboard layout and the surface shaping of the keys.”

Blackberry

To prevail on an alleged trade dress infringement claim, Blackberry must prove that Blackberry's keyboard features in the Typo cases are (1) non-functional, (2) distinctive* (inherently or have acquired "secondary meaning") , and that (3) there is a likelihood of confusion between Blackberry and the Typo trade dress based on the (1) non-functional and (2) distinctive features.

In its complaint, Blackberry alleges that its keyboard has non-functional and distinctive features, present in the Typo cases to produce a likelihood of confusion between Blackberry and the Typo trade dress.

From the Blackberry Complaint the alleged infringed trade dress includes:

a keyboard product configuration with:

a keyboard with an overall symmetrical design around the vertical center line, comprising several horizontal dividing bars above rows of sculpted keys, the last row of which is rounded on the bottom edge;

several horizontal bars in contrasting color and finish set above the horizontal rows of keys;

several top rows of roughly square shaped keys having little horizontal space between them;

a bottom row of roughly rectangular shaped keys having curved bottoms edges and little horizontal space between them;

keys with planar areas away from the vertical center line of the keyboard and sculpted curves closer to the center line;

one larger rectangular key in the center of the bottom row having a u-shaped planar area; and

keys having distinct lettering or graphical icons printed on the surface.

You be the judge...

Typo iPhone keyboard/case

Blackberry

Does the iPhone keyboard case have non-functional, distinctive features of the Blackberry keyboard or are the Blackberry identified features functional or common to other old school tackle keyboards from smartphones of yesteryear. If the former, do the non-functional, distinctive features lead to a likelihood of confusion between the Blackberry trade dress and the Typo keyboard case's trade dress?

Mere similarity between the Blackberry keyboard and the Typo keyboard is not enough for trade dress infringement. Typo is entitled to include non-functional, non-distinctive features of the Blackberry product. And Typo can even include distinctive features of the Blackberry product to the extent that there is no likelihood of confusion between the trade dress of the Blackberry product and that the Typo product.

Take-home lesson:

Determining whether a case of trade dress infringement exists is not a simple task. Therefore, a prudent step when launching a new product is to seek legal counsel from an Intellectual Property attorney, especially if the new product is similar in function and design to that of a competitor's product.

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Tuesday, December 31, 2013

Happy New Year 2014!

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Tuesday, December 17, 2013

Déjà vu all over again: Patentablity of computer implemented software

The U.S. Supreme Court will weigh in (again) on what constitutes patent eligible subject matter (under 35 U.S.C. § 101) when it hears the case of Alice Corp. v. CLS Bank. Like the movie, Groundhog Day, the U.S. Supreme Court will once again decide what "things" are patentable.

Distilling down the issue in CLS, the Supreme court will decide whether a general purpose computer (think PC, Mac, or server) programmed to conduct financial transactions is eligible for patenting. Claim 1 (below) is exemplary of the patent claims in suit.

1. A data processing system to enable the exchange

of an obligation between parties, the system

comprising:

a data storage unit having stored therein information

about a shadow credit record and

shadow debit record for a party, independent

from a credit record and debit record maintained

by an exchange institution; and

a computer, coupled to said data storage unit, that

is configured to:

(a) receive a transaction;

(b) electronically adjust said shadow credit

record and/or said shadow debit record in order

to effect an exchange obligation arising

from said transaction, allowing only those

transactions that do not result in a value of

said shadow debit record being less than a

value of said shadow credit record; and

(c) generate an instruction to said exchange

institution at the end of a period of time to adjust

said credit record and/or said debit record

in accordance with the adjustment of said

shadow credit record and/or said shadow debit

record, wherein said instruction being an irrevocable time invariant obligation placed on said exchange institution.

But we all (including the Supreme Court) have seen the exercise of determining patent subject matter eligibility before. For example, Gottschalk v. Benson, 409 U.S. 63 (1972) (decimal to binary number converting programmed computer); Parker v. Flook, 437 U.S. 584 (updating an alarm); Diamond v. Dierh, 450 U.S. 175 (1981) (curing rubber) ; Bilski v.Kappo, 130 S.Ct. 3218 (2010) (hedge fund business method); Mayo v. Prometheus, 566 U.S. ___ (2012) (correlating drug metabolism); and Association for Molecular Pathology v. Myriad Genetics, 569 U.S. ___ (2013) (isolated DNA). So what is new here to decide?

The en bank Fed. Cir. (lower court decision that is the subject of the CLS appeal), found the above claim 1 ineligible for patenting (articulated in the plurality opinion as a machine/computer/apparatus that purportedly implements an abstract financial method and subsumes the entire general abstract idea). This all sounds eerily familiar. It echoes to the past as if from the ghost of Supreme Court Justice Douglas past (Douglas being the opinion writer in Benson finding that implementing a mathematical principle on a physical machine, e.g. a computer, is not a patentable application of that principle).

If I were to predict the outcome in CLS, based on the most recent S.Ct. patent cases, I would say that the Supremes will (1) find the CLS computer implementing financial transactions (apparatus/data system/"machine") claims are invalid under § 101 as being abstract (per se) as subsuming the general abstract financial transaction "idea", citing Benson, and the other aforementioned S.Ct. decisions above, and (2) find the Fed. Cir. plurality opinion regarding the specific framework and/or standard for analyzing an apparatus claim for § 101 patent subject matter eligibility (i.e. extraction of the general idea of a claim and then determine whether the idea is abstract and subsumes the general idea) is not valid.

Happy Christmas!

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Thursday, August 8, 2013

Patent Wars: Episode III- Laissez-faire Strikes Back

(A Midsummer Night's Dream or Nightmare?, Act III)

Act I

Act II

Michele Boldrin and David K. Levine of the Federal Reserve Bank of St. Louis, Research Division, last fall published a "working paper" entitled, "The Case Against Patents." These authors "make a case" that market forces (e.g. lead time/ being the first one to the market) and less government involvement are the keys to innovation and economic development, not a strong patent system.

The opening paragraph of the working paper states,

The case against patents can be summarized briefly: there is no empirical evidence that they serve to increase innovation and productivity, unless the latter is identified with the number of patents awarded– which, as evidence shows, has no correlation with measured productivity. This is at the root of the “patent puzzle”: in spite of the enormous increase in the number of patents and in the strength of their legal protection we have neither seen a dramatic acceleration in the rate of technological progress nor a major increase in the levels of R & D expenditure...

...there is strong evidence, instead, that patents have many negative consequences. Both of these observations, the evidence in support of which has grown steadily over time, are consistent with theories of innovation that emphasize competition and first-mover advantage as the main drivers of innovation and directly contradict Schumpeterian” theories postulating that government granted monopolies are crucial in order to provide incentives for innovation....

...The initial eruption of small and large innovations leading to the creation of a new industry – from chemicals to cars, from radio and TV to personal computers and investment banking – is seldom, if ever, born out of patent protection and is, instead, the fruits of highly competitive-cooperative environments. It is only after the initial stages of explosive innovation and rampant growth end that mature industries turn toward the legal protection of patents, usually because their internal grow potential diminishes and the industry structure become concentrated.

Are Boldrin and Levine correct? Are patents more a hindrance to innovation and economic development than an aid? Was Thomas Jefferson wrong when he drafted the U.S. Constitution, Article I, § 8, clause 8), giving Congress the power to "promote the useful arts" (i.e. inventions) "by securing for limited Times to ... Inventors the exclusive Right to their respective ... Discoveries?
Is it laissez-faire time?

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Monday, July 29, 2013

Expanding markets and product line puts company "Over a Barrel"

Expanding markets and product line allegedly puts company "Over a Barrel"

Update- The U.S. Court of Appeals for the Seventh Circuit upheld the preliminary injunction barring use of the mark Cracker Barrel Old Country Store for use in connection with ham products to be sold in supermarkets

Original Post:

A district court judge has granted Kraft Food's request for a preliminary injunction against Cracker Barrel Old Country Store restaurant chain from selling its branded meats in grocery stores. Kraft's request is based on its claim that there would be costumer confusion between its Cracker Barrel ® brand cheese and Cracker Barrel's meats. For now, the expansion of Cracker Barrel Old Country Store meats into grocery stores has it "over a barrel."

Kraft federally registered its mark, CRACKER BARREL for cheese in 1957. Twelve years later in 1969, Cracker Barrel Old Country Store started using its name/mark for restaurants and has subsequently obtained federal trademark registrations for its mark for restaurants and various food items. For almost half a half century, these two companys' marks lived in harmony with each other, one for grocery store sold cheese and the other for restaurants. What changed? Cracker Barrel Old Country Store decided to expand its business from resturants to offering its meats in grocery stores. Even though the food products are different (meat for Cracker Barrel Old Town Country Stores and cheese for Cracker Barrel ® Brand Cheese), the district court judge, in granting the prelimianry injunction at least found it plauable or likely that Kraft will prevail and that consumers will be confused between the two marks.

Lessons to be learned

What is the take home lesson? If you have a mark (e.g. name) similar to another's, even if your products are different (cheese vs. meat), you may not be able to use your mark in new markets or for new products or services, if the other user has been using the mark longer and/or the other user has superior rights (e.g. a mark with strong consumer recognition (think McDonald's and now Kraft's Cracker Barrel)). And, of course, choose your mark wisely and do your due diligence to discern whether there are other users of your proposed mark/name before you start using it.

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Monday, July 22, 2013

Possible Software Patent Wars Truce...A death blow for software patents?

Software Patent Wars Truce...A death blow for software patents?

(A Midsummer Night's Dream or Nightmare?, Act II)

Does the possible truce in the endless patent litigation between Apple and Samsung mark the end of the debate regarding the patenting of software? As many of you know, Apple and Samsung have been waging war against each other for allegedly infringing each other's software patents. For just two examples, Apple accuses Samsung of infringing its "bounce-back" feature and Samsung alleges Apple of infringing its 3G connectivity software.

With the two warring factions about to stop enforcing their respective software patents against the other's largest competitor, the big question is whether we need software patents in the first place?

Would we be susceptible to carpal tunnel syndrome every time we make a purchase online, making a "second" or even a "third" click to check out our "virtual shopping cart" because Amazon.com would not have "invented" the patented "one-click" check-out method without the incentive of patent protection?

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Thursday, July 18, 2013

A Midsummer Night's Dream or Nightmare?...The Current Patent System

Countless words have been written regarding the state of the patent system, both in the U.S. and internationally. Typically, even the most positive proponents or critical opponents of the patent system acknowledge some cons and pros, respectively. As we experience the sultry summer days, this blog seeks reader participation to weigh in on whether the patent system is a midsummer night's dream, nightmare or somewhere in between.

One issue that has been raised by opponents of the patent system is that certain technologies should not be eligible for patenting at all. For example, some say that computer software should not be eligible for patent protection. Others believe that computer hardware should be eligible for patent protection but perhaps for a shorter term than the current 20 years of patent protection, e.g. 5 or 10 years.

Regular reader to this blog have on no less than two prior occassions (now three) been exposed to the reason we, in the U.S. have a patent system. The Framers of the United States Constitution knew of the importance of technological progress.

The Congress shall have the power...

To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. (U.S. Constitution, Article I, § 8, clause 8).

This provides inventors with an incentive to create new products and processes. It also gives companies and investors (e.g. venture capitalists and stockholders), incentive to invest capital looking for a return on their capital investment.

Congress has limited the duration of the monopolistic protection. In return for the protection, the inventor must disclose his or her invention to the Patent Office which, in turn, discloses the information to the general public.

The U.S. Patent Act was drafted to accomplishes two goals. First, it encourages innovation and discovery through its incentive of limited monopoly. Second, the patent system promotes the disclosure of useful technology to the general public by putting it in the public domain.

While patents can be misused and perhaps 20 years may be too long for certain technologies, e.g. some argue that software and possibly, hardware inventions, the core idea of any patent system, going back to our U.S. Constitution is to "provide an incentive" to people to create new and useful inventions, by (1) granting a limited monopoly in exchange for (2) disseminating the knowledge to the public.

But is this working out as the Framers intended?

Things to consider are:

Would people (inventors and companies) continue to invest time and money to create "inventions" if someone could copy the ideas without having to invest his or her own time and money?
Is the public really getting a benefit from the information described in the patent, building on the information and know-how, and/or learning from it?
Would information currently being disseminated through the patent system still be disseminated to the public if the current patent system were curtailed or altered?

Proponents of the patent system, e.g. companies spending precious capital to secure patent protection, including biotechnology and semiconductor manufacturing companies, consider the limited monopoly essential to give their companies a competitive advantage and necessary to recoup research and development costs. Without the limited term monopoly, these proponents would argue that they would never be able to recoup the investment as competitors could swoop in and easily copy the technology that the company spent many dollars and years to discover and develop.

Opponents say that at least some technologies do not need a patent system as companies and inventors will still create the technology regardless of whether a patent system exists. Some such opponents cite start-up companies which do not have sufficient capital to patent their ideas but still spend money on research and development.

Some opponents believe that the patent system actually stifles innovation and competition. They argue that competitors would create competing products but do not in fear that they may be sued by a patent holder for patent infringement. Some look to patents for technologies in mobile devices like the iPhone and Android devices when arguing that more companies would be creating hardware and software, spurring mobile communication innovation and driving down prices if not for the threat of possible patent infringement.

Still other opponents argue that the 20 year term is too long of a monopoly, especially in today's immediate access information age. Further, opponents say that, with some technologies, after 20 years, the technology is so obsolete that no one even cares about it anymore.

A quick rebuttal to this last opponent argument is that the public still benefits from the knowledge disseminated in the disclosure of a patent, even if, arguendo, after the 20 years, the originally disclosed technology may be obsolete. Likely, 20 year in the future technology is based on, build from, or has ties to past technology. Over the 20 years the patent holder has exclusivity, others in the public have access to the information in the patent, can learn from it, improve it, and advance technology. If the past technology was never created, future technology may not exist.

In view of the foregoing, I pose several questions for discussion.

Question #1: Do we need patent protection for certain technologies?
Question #2: Would people still invent if patent protection were not available?
Question #3: Will investors still invest in companies if patent protection, i.e. exclusivity, is not possible to prevent others from entering the marketplace?
Question #4: Should the patent term be less for certain technologies?
Question #5: If yes to question #4, which technologies and what should the length of the patent term be?

Please post your answers to these five questions, the three "Things to consider" items above, post your own questions, or post a comment or remark to this blog. We look forward to a spirited discussion.

Coming up....ACT II