Justia Intellectual Property Opinion Summaries

In 2004, the Patent and Trademark Office issued JobDiva’s 917 registration for the service mark JOBDIVA for “personnel placement and recruitment” services. In 2005, it issued JobDiva’s 235 registration for a service mark for “personnel placement and recruitment services; computer services, namely, providing databases featuring recruitment and employment, employment advertising, career information and resources, resume creation, resume transmittals and communication of responses thereto via a global computer network.” JobDiva’s software provides a database of employment applications and employs automated “harvesters” to find potential job candidates. It analyzes resumes and helps hiring managers directly communicate with job candidates; it also recommends openings to job candidates and provides automated resume feedback. JobDiva’s software-as-a-service is delivered over the Internet without downloading software. Users pay for the computing as a service rather than owning the machines and software. The Board cancelled JobDiva’s marks in a proceeding that JobDiva initiated, challenging a registration owned by Jobvite. The Board granted Jobvite’s counterclaim stating, “[a] mark shall be deemed to be ‘abandoned’ . . . [w]hen its use has been discontinued with intent not to resume such use,” 15 U.S.C. 1125, and that JobDiva provided software, not “personnel placement and recruitment” services. The Federal Circuit vacated. The question is whether JobDiva, through its software, performed personnel placement and recruitment services and whether consumers would associate JobDiva’s registered marks with personnel placement and recruitment services, regardless of whether the steps of the service were performed by software. View "In re: JobDiva, Inc." on Justia Law

MOVA technology can capture an actor’s facial performance for use in motion picture special effects and video games; it is secured by trademarks, copyrights, and patents, and is reflected in hardware, source code, and physical assets. VGHL claims that Perlman, the head of Rearden, declined to acquire the MOVA assets from OL2 and proposed OL2 sell to a Rearden employee, LaSalle. Perlman introduced LaSalle to Rearden’s corporate attorney who helped LaSalle establish his own company, MO2, and negotiated with OL2. Perlman later demanded that LaSalle convey the MOVA assets to Rearden and terminated LaSalle’s employment when LaSalle refused. MO2 sold the MOVA assets to SHST, which hired LaSalle, and began selling the technology. The Rearden parties claimed that SHST never obtained ownership and that LaSalle was simply hired to handle the acquisition on Rearden’s behalf. SHST sued, alleging that Rearden had made “false or misleading representations ... concerning the ownership of the MOVA Assets ... to mislead the public and actual and prospective users and licensees” and had falsely recorded assignments of the MOVA patents. During discovery, SHST moved to compel Rearden to produce documents exchanged between MO2 and Rearden’s corporate attorney. The district court granted the request, concluding that Rearden had not shown entitlement to assert attorney-client privilege on behalf of MO2 and that LaSalle waived privilege when he shared documents. The Federal Circuit denied a petition for mandamus. Rearden's arguments failed to carry the high burden required on mandamus to overturn the court’s discovery determination. View "In re: Rearden, LLC" on Justia Law

In 2005, the Church, within five miles of the Illinois–Wisconsin border, began selling caps and shirts, emblazoned with the phrase “ADD A ZERO” as part of a fundraising campaign. The Church obtained two federal trademarks for the “ADD A ZERO” mark, based on actual use of the marks in commerce, not intent to use the marks in commerce. In 2009, Adidas sought a clothing trademark for the phrase “ADIZERO.” The Trademark Office refused the application for likelihood of confusion with the Church’s “ADD A ZERO” marks. Adidas brought an action; the Trademark Trial and Appeal Board cancelled the marks, based on the Church’s failure to use the marks in commerce before registration. The Board considered the Church’s proffered evidence of a cancelled check with a printed Wisconsin address for the sale of two “ADD A ZERO”-marked hats for $38.34 in February 2005, before the Church applied for its marks, but concluded that the “de minimis” sale did not evidence the requisite “use in commerce” under the Lanham Act. The Federal Circuit reversed. The Lanham Act defines commerce as all activity regulable by Congress; the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause. View "Christian Faith Fellowship Church v. Adidas AG" on Justia Law

Illumina’s 794 patent, covering DNA assay optimization techniques, issued in 2011. In 2010-2011, Ariosa provided Illumina, as a prospective investor, with information on its efforts to develop a noninvasive prenatal diagnostic test. Seven months after the 794 patent issued, Illumina agreed to supply consumables, hardware, and software to Ariosa for three years, providing Ariosa with a non-exclusive license to Illumina’s “Core IP Rights in Goods,” specifically excluding “Secondary IP Rights … that pertain to the Goods (and use thereof) only with regard to particular field(s) or application(s), and are not common to the Goods in all applications and fields.” The agreement’s arbitration clause excluded “disputes relating to issues of scope, infringement, validity and/or enforceability of any Intellectual Property Rights.” Illumina never indicated that Ariosa needed to license the 794 patent . Ariosa launched the Harmony Prenatal Test, using materials supplied by Illumina. Verinata and Stanford sued, alleging that the Test infringed other patents. Illumina later acquired Verinata and accused Ariosa of breaching the supply agreement by failing to license Secondary Rights. Ariosa filed counterclaims, asserting invalidity and non-infringement; breach of contract; and breach of the covenant of good faith and fair dealing. The district court concluded that the counterclaims were not subject to compulsory arbitration. The Federal Circuit affirmed. The counterclaims depend on the scope determination of licensed intellectual property rights, which is expressly exempt from arbitration. View "Verinata Health, Inc. v. Ariosa Diagnostics, Inc." on Justia Law

Cordua owns and operates five restaurants branded as “Churrascos,” the first of which opened in 1988. The restaurants serve South American dishes, including grilled meats; the menu describes chargrilled “Churrasco Steak” as “our signature.”.Cordua obtained the 321 registration for the service mark CHURRASCOS (in standard character format) in 2008, for use in connection with “restaurant and bar services; catering.” In 2011, Cordua filed a trademark application, seeking protection of the stylized form of CHURRASCOS for use in connection with “Bar and restaurant services; Catering.” The trademark examiner rejected the application as merely descriptive and on the basis that “the applied-for mark is generic for applicant’s services,” barring registration under Lanham Act, 15 U.S.C. 1052(e)(1).. The examiner concluded that the term “churrascos” “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.” The Trademark Trial and Appeal Board agreed and held that Cordua’s underlying 321 Registration had no bearing on whether the stylized form of CHURRASCOS was generic. The Federal Circuit affirmed, finding that the stylized form of CHURRASCOS generic as applied to restaurant services and, therefore, trademark-ineligible View "In re: Cordua Restaurants, Inc." on Justia Law

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

Two appeals involved U.S. Patent No. 6,349,291, which named Samir Varma as the inventor and was owned by InvestPic LLC (collectively, Varma). The ’291 patent stated that many “conventional financial information sites” on the World Wide Web furnish information derived from “rudimentary statistical functions [that] are not useful to investors in forecasting the behavior of financial markets because they rely upon assumptions that the underlying probability distribution function (‘PDF’) for the financial data follows a normal or Gaussian distribution, which is generally false.” The Patent Trial and Appeal Board of the Patent and Trademark Office cancelled certain claims of the ’291 patent in two related reexamination proceedings: one initiated by International Business Machines Corp. and SAS Institute Inc.; the other by SAS alone. Varma’s appeals centered on two claim phrases: (1) a “bias parameter” that “determines a degree of randomness in sample selection in a resampling process”; and (2) “a statistical analysis request corresponding to two or more selected investments.” The Federal Circuit Court of Appeals agreed with Varma that the Board erred regarding both claim phrases. Correcting the first error, the Court reversed the cancellation of claims 1–5, 8–16, 19–21, and 24. Correcting the second error, the Court vacated the cancellation of claims 22, 23, 25, and 29–31 and remanded for further proceedings on those claims. View "In re Varma" on Justia Law

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