2020. Wow; what was that? From a scarcity of toilet paper and the flush heard round the world to civil unrest, natural disasters, November 3 rd, and of course the virus. It’s Fall already and it has been an eternity since March.
In eager anticipation of the end of the year, here we look back at 5 Interesting Intellectual Property Cases of 2020, selected subjectively because we find them interesting and hope you do too. These cases should be remembered for their relevance this year and beyond, even if we’d much rather forget 2020 altogether.
1 — United States Patent and Trademark Office v. Booking.com B.V.: Can a generic word with “.com” appended to it be trademarked?
2 — In re: Google LLC: What qualifies as a regular and established place of business? Or more succinctly, where you at Google?
3 — Illumina v. Ariosa: How should the courts determine patent eligible subject matter, especially with respect to methods of preparation?
4 — Hospira, Inc. v. Eli Lilly and Company; Dr. Reddy’s Laboratories, Ltd. v. Eli Lilly and Company; CJ CheilJedang Corp. v. International Trade Commission: When does prosecution history estoppel limit the availability of the doctrine of equivalents?
5 — Google LLC v. Oracle America, Inc.: Does copyright protection extend to a software interface, and how does fair use of a software interface apply?
1. United States Patent and Trademark Office v. Booking.com B.V. , 140 S. Ct. 2298 (2020)
What’s at stake: Can a generic word with “.com” appended to it be trademarked?
The late US Supreme Court justice Ruth Bader Ginsburg delivered this opinion of far-reaching consequences, though arguably it will be less popular than her countless notable dissents. Where an [insert].com name can be trademarked, it is possible that any .com, .us, .net, .law, .dog, or any other top-level domain can be trademarked in combination with an otherwise generic term. Our firm always recommends a RAD approach to trademarking, but where that’s not possible this case presents interesting considerations for pinning trademark protections on commercial channels and platform associations.
The U.S. Patent and Trademark Office (“USPTO”) refused trademark registration of “Booking.com” as a generic name for online hotel-reservation services*. The USPTO sought a bright-line rule where appending “.com” to a generic term would always be unprotectable, regardless of evidence based on consumer perception. The case made its way to the Supreme Court where interpretation of the Lanham Act, the federal statute governing trademarks, and its emphasis on consumer perception took center stage.
*Remember from Trademark 101 that trademark law is the law of confusion, protecting owners of source-identifying names, slogans, logos, and even smells (i.e. trademarks) from use of confusingly similar sounding, looking, or smelling marks by competitors. If you haven’t taken Trademark 101, check out our trademark blogs and media.
The Supreme Court decided on June 30, 2020, that adding “.com” to an otherwise generic term can render the term a protectable trademark. Essentially, the Court did not want to condone an unyielding categorical legal rule precluding registration of all “.com” top-level domains.
The Majority (those who voted in favor of the decision) sought to allay fears of far-reaching repercussions, writing that trademark law “hems in the scope” of marks to ensure there is no undue control over language similar to a trademarked “Booking.com” domain name (e.g. “ebooking.com,” “hotel-booking.com,” and “booking”) and asserting that these doctrines within trademark law guard against anticompetitive effects.
In reply, the Dissent argued that these doctrines are cold comfort to competitors of “generic.com” brands, writing that as the ever-expanding internet is populated by more firms, the economy may head in an anticompetitive direction where trademark registrations lead to undue control over language that effectively shuts out competitors.
How this fits with legal precedent:
The Majority and the Dissent differed in their respective interpretations of an 1888 US Supreme Court ruling that predated the Lanham Act and held that a generic term plus a generic corporate designation does not equate to a trademark-eligible mark ( Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598 (1888)).
The Majority questioned the premise of the USPTO argument that “Generic.com” is like “Generic company” that would be ineligible under Goodyear because of the nature of the domain name system (i.e. “Generic.com” refers to a specific and exclusive entity). Conversely, the Dissent maintained that the functional exclusivity of a domain name doesn’t negate the principle addressed in Goodyear.
Speaking of years, remember 1888? That year marked the start of the Fuller Court that brought us Plessy v. Ferguson, the 1896 ruling that maintained Jim Crow laws and was eventually overruled by Brown v. Board of Education. That’s the year, as the Dissent wrote, “we held…” But we digress…
Favorite quotes from Opinion of the Court and Dissenting Opinion:
Majority: “[I]f ‘Booking.com’ were generic, we might expect consumers to understand Travelocity-another such service-to be a Booking.com. . . . [W]hether a term is generic depends on its meaning to consumers. That bedrock principle of the Lanham Act is incompatible with an unyielding legal rule that entirely disregards consumer perception.” (internal citations omitted) (emphasis added)
Dissent: “The [booking.com] term as a whole is just as generic as its constituent parts.” “Terms that merely convey the nature of the producer’s business should remain free for all to use.” “[G]ranting trademark protection to “generic.com” marks threatens serious anticompetitive consequences in the online marketplace.” “At the extreme, that [anticompetitive] direction points towards one firm per product, the opposite of the competitive multifirm marketplace that our basic economic laws seek to achieve.”
Our Takeaways for People who Have Better Things to do than Geek Out Over Arcane Court Rulings:
This case is perhaps not surprising considering the Court’s major decisions in recent years to upend prohibitions on obscene and offensive marks. However, a central feature in those cases (Tams, Brunetti) was the arbitrary determinations at the examiner level of what was obscene and/or offensive and what was not. Here, a general prohibition against [insert name].[top-level domain] should be easy to uniformly enforce.
We don’t agree with the Majority’s decision. Let’s say that flashy young newco NoNose wanted to trademark “nose hair trimmers” for the sale of contoured electric hair trimmers. Ordinarily, a trademark examiner would reject this application as being generic. This Supreme Court decision provides NoNose an opportunity to trademark “nosehairtrimmers.com,” which if they are smart, they will definitely use to file Google takedown requests and obtain Amazon brand registry protection to limit anyone else from competing through digital marketing of nose hair trimmers.
2. In re: Google LLC (Fed. Cir. 2020)
What’s at stake: What qualifies as a regular and established place of business? Or more succinctly, where you at google?
Historically, patent litigators flocked in droves to the Eastern District of Texas (“EDT”), a relatively sparsely populated judicial region and strange place to wear the distinction of center of the patent universe. A recent Supreme Court ruling broke the EDT stranglehold on patent litigation, but like any good decision is now having its tires kicked to determine whether there are any holes. This case focused on whether computer servers located in the EDT entail a “place of business” that establishes EDT venue for patent infringement suits. Where is Google, and for that matter where are friends of Google, including Netflix, Twitter, and Amazon.com, located?
Super Interconnect Technologies LLC (“SIT”) sued Google in the Eastern District of Texas for patent infringement. Google sought dismissal of the case for lack of venue.
Much has been written on the topic of the EDT as a reputedly plaintiff-friendly district, including this piece co-written by Andrei Iancu (now USPTO director) pointing out several reasons for the Eastern District craze. These reasons include the District’s well-established patent rules, judges experienced in patent law, and rapid time to resolution, among other factors. The times may be changing as litigators head to other districts, but the EDT still draws patent civil actions.
According to the patent venue statute of Title 28 of the United States Code (“U.S.C.”) § 1400(b), civil action against a defendant “may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” (emphasis added)
SIT alleged venue was proper due to the latter clause; SIT maintained that Google both allegedly committed acts of infringement and has a “regular and established place of business” due to the presence of several Google Global Cache servers functioning as local data caches and hosted in datacenters not owned or operated by Google.
The U.S. Court of Appeals for the Federal Circuit (“CAFC”) on February 13, 2020 ordered that the case either be dismissed or transferred. The Court concluded that the regular, physical presence of an employee or other agent of the defendant is required to qualify the location as a “regular and established place of business.”
How this fits with legal precedent:
The Supreme Court has held that “a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute” ( TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. ___ (2017)), and the CAFC held that a “regular and established place of business” under the statute must be a “physical place in the district”, “regular and established”, and “the place of the defendant” ( In re Cray, Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017)).
New patent infringement case filings in the Eastern District have declined since the ruling of TC Heartland v. Kraft Foods, though SIT filed suit against Google after this decision. With In re: Google, the CAFC sought to clarify basic legal issues that received conflicting treatment in district court decisions.
Favorite quotes from Opinion of the Court:
“Given the absence from the record of information sufficient to understand Google’s business model, the question remains . . . whether Google’s end users become agents of Google in furtherance of its business by virtue of voluntarily or involuntarily sharing information generated on Google’s servers. If, for example, by entering searches and selecting results a Google consumer is continuously providing data which Google monetizes as the core aspect of its business model, it may be that under the analysis in which I today join, Google is indeed doing business at the computer of each of its users/customers.” (emphasis added)
3. Illumina, Inc. v. Ariosa Diagnostics, Inc. (Fed. Cir. 2020)
What’s at stake: How should the courts determine patent eligible subject matter, especially with respect to methods of preparation?
“This is not a diagnostic case. And it is not a method of treatment case. It is a method of preparation case.” So goes the opening salvo in Circuit Judge Lourie’s opinion for the court. “But characterizing the claims as a ‘method of preparation’ does not render inapplicable this court’s precedent…” So retorts Circuit Judge Reyna in his dissent. Should patent eligibility hinge upon what kind of case this is? What’s going on here?
Illumina, Inc. and Sequenom, Inc. (collectively, “Illumina”) filed suit against Ariosa Diagnostics, Inc., Roche Sequencing Solutions, Inc., and Roche Molecular Systems, Inc. (collectively, “Roche”) alleging infringement of patents ‘751 and ‘931. The inventors of these patents discovered that the small amount of cell-free fetal DNA in a pregnant woman’s serum or plasma was different in fragment size from the vast amount of cell-free maternal DNA present in the same sample.
The inventors claimed a method of enriching cell-free DNA of fetal origin from the mother’s bloodstream in order to find aberrations in the fetal genome. In particular, they claimed DNA fragment size cutoffs of 500 base pairs (‘751 patent) and 300 base pairs (‘931 patent) to prepare a fraction enriched in fetal DNA. In summary, one could say the inventors patented a standard way of isolating a naturally occurring substance.
To understand this decision, we need to dive into the U.S. Code and how it’s applied by the USPTO and courts. Title 35 of the U.S.C. § 101 governs patent subject matter eligibility of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof[.]”
We covered this in greater depth in our analysis of Athena v. Mayo, 915 F.3d 743 (Fed. Cir. 2019) in a 2019 blog post. To paraphrase, while lots of things are patentable, some are not; laws of nature, natural phenomena, and abstract ideas are considered judicial exceptions and are patentable only if the patent claims an additional inventive concept.
A two-part test called the Alice/Mayo test has been developed to determine patent eligibility. 1) Are the claims to one of the judicial exceptions? If no, then the subject matter is patent eligible. If yes, then 2) do the claims provide an inventive concept beyond the judicial exception? If yes, then the subject matter is patent eligible. If no, then the subject matter is patent ineligible. Two steps — one, two.
The CAFC on March 17, 2020 validated the claims of ‘751 and ‘931, concluding that claims are to a patent-eligible method that utilizes a natural phenomenon, and are not directed to the natural phenomenon itself. In its analysis, the Majority focused on Step 1 of the Alice/Mayo test, concluding that claims are not to one of the judicial exceptions; thus, the subject matter is patent eligible. No need to move to Step 2.
The Dissent writes that the Majority erred in its analysis under the Alice/Mayo framework-the Majority should have moved to Step 2, and during Step 2 would have found no inventive concept beyond the judicial exception, making the subject matter patent ineligible.
How this fits with legal precedent:
The Majority maintains “[t]his is not a diagnostic case” because under the Mayo ruling, the CAFC has held that diagnostic claims are unpatentable ( Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, 927 F.3d 1333,1352 (Fed. Cir. 2019; Athena Diagnostics, Inc., v. Mayo Collaborative Servs., LLC, 915 F.3d 743 (Fed. Cir. 2019); Cleveland Clinic Found. v. True Health Diagnostics LLC, 859 F.3d 1352 (Fed. Cir. 2017); Cleveland Clinic Found. v. True Health Diagnostics LLC, 760 F. App’x 1013 (Fed. Cir. 2019)).
The Majority further maintains “it is not a method of treatment case” because under the Mayo ruling, the CAFC has held that method of treatment claims are patentable ( Endo Pharm. Inc. v. Teva Pharm. UA, Inc., 919 F.3d 1347 (Fed. Cir. 2019); Natural Alternatives Int’l, Inc. v. Creative Compounds, LLC, 918 F.3d 1338 (Fed. Cir. 2019); Vanda Pharm. Inc. v. West-ward Pharm. Int’l Ltd., 887 F.3d. 1117 (Fed. Cir. 2018)).
Illumina v. Ariosa places “ method of preparation” cases squarely in the patentable category, along with a method of preserving hepatocyte cells exploiting a natural phenomenon ( Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016)).
Favorite quotes from Opinion of the Court and the Dissenting Opinion:
Majority: “We take note of Roche’s inability-despite its status as the party challenging the validity of the patents-to clearly identify the natural phenomenon that forms the basis of its challenge. . . . The claimed size thresholds are human-engineered parameters . . . to create an improved end product that is more useful for genetic testing than the original natural extracted blood sample.” (emphasis added)
Dissent: “[The resulting fraction] is made of the same natural substances present in the original sample. . . . The absence, or silence, of conventionality of an aspect of an invention in the written description does not render that aspect unconventional. . . . Here, the claims are drafted in a manner that tie up future innovations premised upon the natural phenomenon . . . .” (emphasis added)
4. Hospira, Inc. v. Eli Lilly and Company; Dr. Reddy’s Laboratories, Ltd. v. Eli Lilly and Company; CJ CheilJedang Corp. v. International Trade Commission (Pet. Writ. of Cert. S. Ct. 2020)
What’s at stake: When does prosecution history estoppel limit the availability of the doctrine of equivalents?
Petitioners in each of these three cases all filed writs of certiorari requesting that the US Supreme Court review their respective lower court’s decisions. At issue in each case is the doctrine of equivalents, a legal rule that permits findings of infringement based on equivalent features in lieu of literal claim infringement, and prosecution history estoppel, which bars invoking the doctrine of equivalents to broaden claim scope that was surrendered during prosecution in order to obtain the patent.
A patentee holds rights to their claimed invention, which is why both the claim language and the support for that language throughout the disclosure are so critical. But what happens when a product or process substitutes an indistinguishable claim element to avoid literal claim infringement?
In that case, one might say that the spirit of infringement lives on. The doctrine of equivalents addresses this and is invoked by patentees to broaden the scope of their claimed invention to include indistinguishable elements.
A patentee holds rights to the claimed invention negotiated with the USPTO during patent prosecution. During prosecution, claim language is amended for a variety of reasons, including the narrowing of claims to avoid the prior art and enable allowance. But what happens when a patentee invokes the doctrine of equivalents to broaden claim scope to capture elements impacted by claim amendment?
Enter prosecution history estoppel, which prohibits patent owners from invoking this doctrine in certain contexts.
Both Hospira, Inc. v. Eli Lilly and Company and Dr. Reddy’s Laboratories, Ltd. v. Eli Lilly and Company concern infringement under the doctrine of equivalents of a patent covering Alitma, a compound for treating cancer and mesothelioma. The dispute over whether prosecution history estoppel applies hinges on the scope of surrender during amendment-namely, whether the rationale for amendment was only tangentially related to the equivalent under a “tangential relation” exception.
CJ CheilJedang Corp. v. International Trade Commission concerns infringement under the doctrine of equivalents of a patent covering E. coli bacteria genetically engineered to enhance protein production. Some aspects of this case also hinge on the “tangential relation” exception.
Petitions for writs of certiorari were denied by the US Supreme Court on June 14, 2020 ( Hospira, Inc. v. Eli Lilly and Company and Dr. Reddy’s Laboratories, Ltd. v. Eli Lilly and Company) and June 22, 2020 ( CJ CheilJedang Corp. v. International Trade Commission).
Denial of a writ of certiorari means that the lower court’s decision is the mandatory authority within the geographical jurisdiction of that court. A denial is not an implicit approval of the lower court’s decision, nor does it establish a binding precedent. It merely means that the US Supreme Court will not grant the petition for undisclosed reasons that may be tied to the caseload management process itself.
How this fits with legal precedent:
The rulings of the lower courts in these cases align with precedent where the doctrine of equivalents and prosecution history estoppel were refined, including Warner-Jenkinson Company, Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997) and Festo Corp, v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) (“ Festo”).
In particular, Festo established the “tangential relation” exception, stating that “[t]he equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question . . . . In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence.” Thus, patent claims are to be interpreted in light of the application process.
5. Google LLC v. Oracle America, Inc. S. Ct. (2020) — pending
What’s at stake: Does copyright protection extend to a software interface, and how does fair use of a software interface apply?
Many point out that this decision will dramatically impact the tech industry.
Those supporting Oracle hope the lower court’s ruling will be affirmed, fearing that a win for Google will weaken copyright protection for software code, reducing motivation for software innovation.
Those supporting Google hope the lower court’s ruling will be overturned, fearing that a win for Oracle equates to a loss for many companies that will create a chilling effect in software development and open-source software. Many fear that an Oracle win threatens interoperability in favor of deliberate implementation of incompatible standards that would ultimately create less integrated platforms for end users.
At issue is fair use of Google’s use of Java and copyrightability of application programming interfaces (APIs). The Copyright Act of 1976 enshrined fair use in statutory law (codified at 17 U.S.C. § 107), setting four criteria for fair use of copyrighted material in limited circumstances to balance public interest with interests of copyright holders.
This billion-dollar case has a lengthy history from development of Java starting in 1990 to litigation spanning 2010 to present day. Sun Microsystems developed Java, including libraries documented via APIs that allowed for interoperability, and in the mid-2000s a licensing deal could not be reached between Sun and Google for Google to incorporate Java into its Android system.
Google developed its own version of Java Standard Edition libraries instead of licensing Java and incorporated API calls and code central to Java. Oracle acquired Sun in 2009 and litigation ensued from 2010–2015.
Since then, Google won in a District Court jury trial and Oracle appealed to the CAFC, where Oracle won and the case was remanded to the District Court to determine damages Google should pay Oracle. Google’s petition for writ of certiorari to the US Supreme Court was granted and oral arguments were postponed due to COVID-19.
The US Supreme Court heard oral arguments for this case on October 7, 2020, and since we jumped the gun on our year in review we have no definitive answer here. Some have looked into their crystal balls and divined that an affirmation of the lower court’s ruling for Oracle is in the works.
Assuming that (whichever way this goes) the tech industry doesn’t collapse and take technology and the internet with it, we’ll check back in…let’s hope for a Y2K-style non-event.
How this fits with legal precedent:
Favorite quotes from Opinion of the Court:
About the Author
Andrew Lerner joined RVL® as a registered patent agent upon completing his PhD in Biochemistry and Biophysics at the University of North Carolina, Chapel Hill. His practice areas include clearance & patentability analyses, patent prosecution, and due diligence; strategic IP portfolio development; and IP diligence for life science venture funds.
Andrew has supported faculty, researchers, and staff involved in innovation and commercialization across broad disciplines at top tier universities, and has led IP and market diligence activities for life science, biotechnology, and medical device seed funding. He serves as a reviewer for several seed stage funding mechanisms and regularly advises entrepreneurs as a mentor through Veterati, a platform that connects veterans/mentors with Service Members, Veterans, and Military Spouses.
RVL articles by Andrew:
Rockridge Venture Law®, or RVL®, was launched in 2017 to become the preeminent intellectual property and technology firm across the Appalachian Innovation Corridor. We now have offices in Chattanooga, Durham, and Nashville, and represent clients and interests globally. Our services include all aspects of intellectual property, litigation, M&A, privacy, technology transactions, and ventures.
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Originally published at https://rockridgelaw.com on November 9, 2020.