Justia Intellectual Property Opinion Summaries

Applicants Ray and Amanda Tears Smith appealed a final decision of the Patent Trial and Appeal Board which affirmed the rejection of claims 1–18 of U.S. Patent Application No. 12/912,410 for claiming patent-ineligible subject matter under 35 U.S.C. 101. Applicants filed the ’410 patent application, titled “Blackjack Variation.” According to the application, “[t]he present invention relates to a wagering game utilizing real or virtual standard playing cards.” The examiner concluded that the claims represented “an attempt to claim a new set of rules for playing a card game,” which “qualifies as an abstract idea.” Because the claims covered only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards, the Federal District Court of Appeals affirmed. View "In re: Smith" on Justia Law

Appellants Ulf Bamberg, Peter Kummer, and Ilona Stiburek (collectively, "Bamberg") appealed the Patent Trial and Appeal Board’s consolidated interference proceeding decision refusing to allow their claims to four patent applications because the specification failed to meet the written description requirement of 35 U.S.C. 112. The involved claims disclose a method for the transfer of printed images onto dark colored textiles by ironing over a specialty transfer paper. During the interference proceeding, Appellees Jodi Dalvey and Nabil Nasser (collectively, "Dalvey") filed a motion alleging that Bamberg’s claims were unpatentable for lack of written description. Dalvey alleged that the claims recited a white layer that melted at a wide range of temperatures, but Bamberg’s specification only disclosed a white layer that did not melt at ironing temperatures (i.e., below 220°C). Therefore, Dalvey argued that Bamberg’s specification failed to meet the written description requirement because it did not disclose an invention in which the white layer melted at temperatures below 220°C. The Federal Circuit Court of Appeal concluded that the Board properly construed the claims, and substantial evidence supported the Board’s determination that Bamberg failed to meet the written description requirement, and because it was not an abuse of discretion to deny Bamberg’s motion to amend. View "Bamberg v. Dalvey" on Justia Law

Tam, the “front man” for Asian-American rock band, The Slants, sought to register the mark THE SLANTS and attached specimens featuring the name set against Asian motifs. The examining attorney found the mark disparaging to people of Asian descent (15 U.S.C. 1052(a)) and denied registration. The Trademark Trial and Appeal Board dismissed for failure to file a brief. Tam filed another application, seeking to register the mark THE SLANTS for identical services and claiming use of the mark since 2006. Attached specimens did not contain Asian motifs. The examining attorney again found the mark disparaging and declined to register it. The Board affirmed. On rehearing, en banc, the Federal Circuit vacated, finding Section 2(a) of the Lanham Act unconstitutional. The government may not penalize private speech merely because it disapproves of the message, even when the government’s message-discriminatory penalty is less than a prohibition. “Courts have been slow to appreciate the expressive power of trademarks. Words—even a single word—can be powerful. With his band name, Tam conveys more about our society than many volumes of undisputedly protected speech.” The regulation at issue amounts to viewpoint discrimination; under strict scrutiny or intermediate scrutiny review, the disparagement proscription is unconstitutional, because the government has offered no legitimate interests to justify it. View "In Re:Tam" on Justia Law

DiStefano’s patent application claims a method that enables an individual to design a web page without having to “learn HTML or to interact extensively with a web page designer.” Its primary embodiment includes a graphical user interface with a primary display screen and an overlaid design plate that has menu buttons to assist in editing and a design place to edit web assets, such as Java applets, scripts, stock art, background images, and textures. Web assets can come from a web asset database, be uploaded directly by users, or be obtained from independent websites. When the user finishes editing a web asset, it is dragged from the design plate onto the website. The Patent Trial and Appeal Board rejected claims under 35 U.S.C. 102, for anticipation. The Federal Circuit vacated, rejecting application of the printed matter analysis and a conclusion that “web assets’ origination from third party authors and the user cannot patentably distinguish (i.e., cannot breathe novelty into) the claimed method, particularly because the web assets’ origins have no functional relationship to the claimed method.” Although selected web assets likely communicate some information, the content of the information is not claimed; the information’s “origin,” is not part of informational content. Nothing in the claim calls for origin identification to be inserted into the content of the web asset. View "In re: DiStefano" on Justia Law