Month: January 2017

Christina Y. K. Kwok[1]

Introduction

The Supreme Court and the Court of Appeals for the Federal Circuit have long grappled with the scope of patent eligibility, especially with the patent eligibility of so-called “business methods”.

Previously, the Supreme Court in Mayo reversed a Court of Appeal’s decision and held patent claims invalid for claiming underlying laws of nature.[2]  Later in Alice, the Court reaffirmed its precedent on the patent-ineligibility of merely abstract ideas, specifically, that “if a patent’s recitation of a computer amounts to mere instruction to ‘implement’ an abstract idea ‘on…a computer,’ that addition cannot impart patent eligibility.”[3]  These two Supreme Court cases established the Mayo/Alice test for determining the scope of patent eligible claims.  The Court did, however, leave open some questions of the patent eligibility of technological improvements and business methods by suggesting that “claims ‘purport[ing] to improve the functioning of the computer itself,’ or ‘improv[ing] and existing technological process’ might not succumb to the abstract idea exception.”[4]

Recently, however, the Court of Appeals appears to have resolved the uncertainty, considering whether certain software improvements can be patent eligible inventions and, if so, what guidelines would help determine the scope of patent eligibility.  In Enfish v. Microsoft, the Court of Appeals re-confirmed the Mayo/Alice test, and went a step further by clarifying the scope of patent eligible subject matter.

Enfish v. Microsoft

In 2012, Enfish, LLC sued Microsoft Corporation for infringement of two Enfish patents.[5]   Enfish alleged that Microsoft’s ADO.NET infringed Enfish’s patents for a “self-referential” database because ADO.NET’s interface “creates and manipulates self-referential tables as part of its operation.”[6]  Microsoft®[7] countered alleging that Enfish’s patents claims were invalid.

One notable claim at issue, claim 17 of the ‘775 Enfish patent, reads:

A data storage and retrieval system for a computer having a memory, a central processing unit and a display, comprising: means for configuring said memory according to a logical table, said logical table including: a plurality of cells, each said cell having a first address segment and a second address segment; a plurality of records, each said attribute set including a series of cells having the same second address segment, each said attribute set including an object identification number (OID) to identify each said attribute set; a plurality of records, each said record including a series of cells having the same first address segment, each said record including an OID to identify each said record; and means for indexing data stored in said table.[8]

The United States District Court for the Central District of California found all Enfish patent claims ineligible under 35 U.S.C. §101.[9]  On appeal, the Court of Appeals reversed the district court’s summary judgment in part, vacated in part, and remanded in part.[10]

Court of Appeals Analysis

In its analysis, the Court of Appeals refused to read Alice “so broadly,” stating there is “no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract…”.[11]  The Court of Appeals noted the Supreme Court had stated that “an invention is not rendered ineligible for patent simply because it involves an abstract concept” and that previous attempts to patent software were thwarted because the “claims at issue amount[ed] to ‘nothing significantly more’ than an instruction to apply the abstract idea…using some unspecified, generic computer.”[12]  In its opinion, the court asserted that “[s]oftware can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route.”[13]  It concluded that a majority of computer-related technology should not automatically be categorized as “abstract” and pushed aside in step one of the Mayo/Alice test, while only a few passing this hurdle may be considered in step two of the Mayo/Alice test.[14]

The existing Mayo/Alice test that the court had applied is a two-step test for patent eligibility established by the Supreme Court.  The first step is to “determine whether the claims at issue are directed to a patent-ineligible concept.”[15]  The step one inquiry is to filter claims, “in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” [16] If the claims do not pass the first inquiry, or fall into one of the categories of “abstract ideas,” then step two is to “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application” and do not remain abstract ideas.[17]

The Court of Appeals ultimately resolved whether to apply step one or step two of the Mayo/Alice test to the Enfish claims by asking “whether the focus of the claims is on specific asserted improvement in computer capabilities (ie., the self-referential table for a computer database) or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”[18]

After a close examination of claim 17 of the ‘604 patent and the district court’s ruling, the Court of Appeals concluded that certain of the “Enfish claims” were patent eligible and “are directed to a specific improvement to the way computers operate, embodied in the self-referential table.”[19]  Further, the court refused to describe the “claims at such a high level of abstraction and untethered from the language of the claims.”[20]  It warned that defining the claims at such high level of abstraction “ensure[s] that the exceptions to §101 swallow the rule.”[21]

The court’s decision also concluded that the “improvement of an existing technology  is bolstered by the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements.”[22]   It differentiated the Enfish claims from the claims in Alice and Versata, which could “readily be understood as simply adding conventional computer components to well-known business practices”[23]  In contrast, the Enfish claims are “directed to a specific improvement to computer functionality.”[24]

Lastly, even though the court did not reach step two of the Mayo/Alice test, it did recognize that should the question arise, courts should analyze “whether there are arguably concrete improvements in the recited computer technology [that] could take place under step two.”[25]

Conclusion

In reaching its conclusion in Enfish, the Court of Appeals goes a step further than the Mayo/Alice test and acknowledges the viability of software as well as other improvements in computer-related technologies as not necessarily “inherently abstract.”[26]  The question to ask in determining if the software improvements for so-called business methods passes step one of the Mayo/Alice is “whether the focus of the claims is on a specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.”[27]

[1] The information contained in this article does not constitute legal advice or legal opinion, but has been prepared for general information purposes only.  Any opinions expressed in this article shall not be construed to represent the legal opinion of this firm, its attorneys or any of its clients.  The receipt of this article does not create an attorney-client relationship.  ©2017 Wyatt & Associates, LLP.

[2] See Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. __, 132 S. Ct. 1289, 1293 (2012) (“‘[l]aws of nature, natural phenomena, and abstract ideas’ are not patentable”).

[3] See Alice Corporation Pty. Ltd. v. CLS Bank International et. al., 573 U.S. __, 134 S. Ct. 2347, 2358 (2014) (“Stating an abstract idea ‘while adding the words ‘apply it’ is not enough for patent eligibility.  Nor is limiting the use of an abstract idea ‘to a particular technological environment.  Stating an abstract idea while adding the words ‘apply it with a computer’ simply combined those two steps, with a deficient result.”).

[4] Enfish, LLC v. Microsoft Corporation, 822 F.3d 1327, 1335 (Fed. Cir. 2016).

[5] Id. at 1330.

[6] Enfish, LLC, 822 F.3d 1327, 1333 (Fed. Cir. 2016); see also ADO.NET Overview, at https://msdn.microsoft.com/en-us/library/h43ks021(v=vs.110).aspx (“ADO.NET provides consistent access to data sources and data-sharing consumer applications to connect data sources.  ADO.NET allows users to connect to a database and manipulate data into individual or interdependent components.”).

[7] Microsoft® is a registered trademark of Microsoft Corporation.  Wyatt & Associates, LLP is not associated with Microsoft Corporation.

[8] U.S. Patent 6,163,775 (issued December 19, 2000) (emphasis added).

[9] 35 U.S.C.§101 (1999) (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”).

[10] See Enfish, LLC, 822 F.3d 1327, 1330 (Fed. Cir. 2016).

[11] Id. at 1335.

[12] Alice Corporation Pty. Ltd., 134 S. Ct. 2347, 2354, 2360 (2014).

[13] See Enfish, LLC, 822 F.3d 1327, 1335 (Fed. Cir. 2016).

[14] Id. (seeing “no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor…[does] Alice so directs.”).

[15] Id. at 1334.

[16] Id. at 1335 (re-affirming the Court’s decision in which patent ineligible subject matter includes laws of nature, natural phenomena, and abstract ideas).

[17] Id. at 1334.

[18] Id at 1335-1336.

[19] Id at 1336-1337 (“The district court concluded that the claims were directed to the abstract idea of ‘storing, organizing and retrieving memory in a logical table,’ or more simply, ‘the concept of organizing information using tabular formats.”).

[20] Enfish, LLC, 822 F.3d 1327, 1337 (Fed. Cir. 2016).

[21] Id. (noting from previous cases that it would “tread carefully in construing this exclusionary principle” and cautioned “overgeneralizing claims” in making all patents unpatentable.).

[22] Id.

[23] Id. at 1338. (re-affirming the Supreme Court’s ruling in Versata  that claims are not patent eligible when the computer “perform[s] ‘purely conventional’ steps to carry out claims directed to the abstract idea….).

[24] Id. (“[t]he claims are directed to a specific implementation of a solution to a problem in the software arts.”).

[25] Id. at 1339.

[26] Id  at 1335.

[27] Id. at 1336 (emphasis added).

Kimberly R. Endelson[1]

It is often a question asked by fashion designers, “How do I protect my designs?”  Many understand that trademark law can protect their company’s brand name and logo, but are not aware of the options available for protecting the actual designs.  One option is through U.S. trademark law by registering for “trade dress,” and another option is through U.S. patent law by obtaining a design patent.

TRADE DRESS

Trademark law offers common law and federal protection for a word, symbol or phrase used by producers to identify their product.  Common law protection is obtained by using the mark in association with a product or service.  Federal protection can be obtained under Section 43(a) of the Lanham Act[2] by applying for registration of a trademark through the United States Patent and Trademark Office (USPTO).

Trademark law can protect aspects of a product, such as trade dress.  According to Two Pesos, Inc. v. Taco Cabana, Inc., “[t]he ‘trade dress’ of a product is essentially its total image and overall appearance.”[3]  Trade dress may include product features such as “size, shape, color or color combinations, texture, graphics, or even particular sales techniques.”[4]

Trade dress is able to protect the visual characteristics of a product as long as those characteristics are distinctive.[5]  A mark can either be inherently distinctive or have acquired distinctiveness through use.  A mark is inherently distinctive and entitled to protection if its “intrinsic nature serves to identify a particular source of a product…”[6]  For example, the “square size, bright coloring, pebbled texture, polar bear and sunburst images” on the packaging of a Klondike®[7] ice cream bar was held to be inherently distinctive.[8]  A mark can also acquire distinctiveness, otherwise known as secondary meaning, by creating, through substantial or extended use, an association in the mind of the public between the mark and the goods or services the mark is identifying.[9]

In addition, trade dress can protect only non-functional product design.[10]  A product feature is functional and cannot serve as a trademark “if it is essential to the use or purpose of the article or if it affects the cost and quality of the article.”[11]

One is able to register a mark for trade dress through filing an application with the USPTO.  The application includes a drawing, a description of the mark, an identification of goods or services, and a specimen, if there is one.[12]

Trade dress may be used to protect not only the “dressing” or packaging of a product but also the design of a product[13] such as shoes,[14] handbags[15] and fabric patterns.[16]

Trade Dress Protection for Shoes

[17]

A recent case provides an example of how trade dress was used to protect a shoe design.  In Christian Louboutin S.A. v. Yves Saint Laurent America Holding Inc., Christian Louboutin used trade dress law to protect the design of his red-soled shoes.[18]  In January 2008, the USPTO granted Christian Louboutin a trademark for his design and stated, “The color(s) red is/are claimed as a feature of the mark.  The mark consists of a lacquered red sole on footwear.”[19]  Then in 2011, Yves Saint Laurent prepared to market a line of monochrome shoes.  One of these shoes was entirely red, including the “upper” portion of the shoe and the bottom of the shoe called the “outsole.”  In 2011, Louboutin sued YSL in the United States District Court for the Southern District of New York, claiming that YSL’s design infringed his trademark.  YSL replied that the Louboutin trademark was not valid.

In Louboutin, the District Court considered whether a single color may serve as a legally protected trademark, and in particular, as the mark for a particular style of high fashion women’s footwear.  The District Court held that a single color can never serve as a trademark in the fashion industry.[20]  The District Court stated, “Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.”[21]

Louboutin appealed the lower court decision to the United States Court of Appeals for the Second Circuit.  The Court of Appeals affirmed in part, reversed in part and remanded the case to the District Court.  The Court of Appeals based its decision on the Supreme Court case Qualitex Co. v. Jacobson Products, Co., which held that a single color alone can serve as a trademark, as long as that color has acquired secondary meaning and identifies the brand.[22]  In making its determination of whether the red color on Louboutin’s shoes had acquired secondary meaning and identified the brand, the Court of Appeals examined factors such as the company’s advertising expenditures, media coverage and sales success.[23]  The Court of Appeals held that Louboutin’s signature red shoe sole had indeed acquired secondary meaning, saying it was a “symbol”[24] that had acquired secondary meaning and become “uniquely” associated with the brand.[25]  The court decided that trademark protection would extend only to designs in which the red sole (the “outsole”) contrasted with the color of the shoe (the “upper”).  The court stated that “the trademark, as thus modified, is entitled to trademark protection.”[26]

Trade Dress Protection for Handbags

[27]

Trade dress may also be used to protect the overall appearance or shape of a product, such as the shape of the Hermès®[28] Birkin®[29] handbag.  In Hermès International v. Emperia, Inc., the French luxury goods manufacturer Hermès International sought to use trade dress law to protect the design of one of their highly coveted handbags called the Birkin® handbag.  Hermès filed suit against Emperia, Inc., Anne-Sophie, Inc., and Top’s Handbag, Inc. in the United States District Court for the Central District of California for infringing on its trademark.[30]  Hermès had obtained a trademark through the USPTO on the shape of its Birkin® handbag, specifically on “the configuration of a handbag, having rectangular sides, a rectangular bottom, and a dimpled triangular profile” as well as on the top of the bag and the lock.[31]  Hermès was successful and the District Court permanently enjoined the defendants from manufacturing the infringing handbags.

Trade Dress Protection for Fabric Patterns

[32][33][34]

Trade dress may also protect a particular pattern, such as a pattern of cloth used as part of a product, as long as it serves to identify the source of the product.  For example, British luxury designer Burberry Limited uses trade dress law to distinguish their designs by incorporating their trademark check pattern[35] into different products.  The USPTO has granted Burberry Limited numerous trademark registrations for its trademark check pattern, stating that the mark has acquired distinctiveness.[36]  Thus it is arguable that over time, through sales and advertising, the company has created an association between the check pattern and the Burberry®[37] brand so that the pattern identifies the source of the product as Burberry.

It may be necessary to show secondary meaning when protecting your design mark.  Accordingly, before registering for the mark, it may be wise to consider how you or your company will market the product.  Trade dress protection may or may not be a viable option for an emerging designer depending on whether the designer can prove that the mark is well-recognized by consumers and one can show an association between the product and the brand.  An alternative option for an emerging designer or a well-established company that is coming out with a new product is to apply for a design patent.

[1] The information contained in this article does not constitute legal advice or legal opinion, but has been prepared for general informational purposes only. Any opinions expressed in this article shall not be construed to represent the legal opinion of this firm, its attorneys or any of its clients. The receipt of this article does not create an attorney-client relationship. ©2016 Wyatt & Associates, LLP

[2] 15 U.S.C. §1125(a) (1982).

[3] Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.1 (1992) (quoting Taco Cabana Int’l v. Two Pesos, Inc., 932 F.2d 1113, 1118 (5^th Cir. 1991)).

[4] Id. at 765 n.1 (quoting John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11^th Cir. 1983)).

[5] Id. at 768.

[6] Two Pesos, 505 U.S. at 768.

[7] Klondike® is a registered trademark of Conopco, Inc.

[8] Id. at 787, citing AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1536 11^th Cir. 1986).

[9] Wal-Mart Stores, Inc. v. Samara Bros. Inc., 529 U.S. 205, 213-216 (2000) (quoting Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851, n.11 (1982)).

[10] Inwood Labs., Inc. v. Ives Labs., 456 U.S. 844, 863 (1982).

[11] TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32 (2001).

[12] Trademark Manual of Examining Procedure (TMEP), § 1202.02, April 2016.

[13] Wal-Mart, 529 U.S. at 209.

[14] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2d Cir. 2012).

[15] Hermès Int’l v. Emperia, Inc., 14-CV-03522 (C.D. Cal. 2014).

[16] Burberry Limited’s Trademark Check Pattern: U.S Reg. No. 1,241,222 (registered June 7, 1983); U.S. Reg. No. 2,732,617 (registered July 1, 2003); U.S. Registration No. 2,022,789 (registered Dec. 17, 1996).

[17] United States Patent and Trademark Office, www.uspto.gov. U.S. Registration No. 3,361,597 (registered Jan. 1, 2008).

[18] See generally, Louboutin, 696 F. 3d 206.

[19] U.S. Registration No. 3,361,597 (Registered Jan. 1, 2008).

[20] Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 451, 457 (S.D.N.Y. 2011).

[21] Louboutin, 778 F. Supp. 2d at 449.

[22] Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).

[23] Louboutin, 696 F.3d at 226.

[24] Id. at 227, see Qualitex, 514 U.S. at 162.

[25] Louboutin, 696 F.3d at 226, see Two Pesos, 505 U.S. at 766 n.4.

[26] Louboutin, 696 F.3d at 212.

[27] United States Patent and Trademark Office, www.uspto.gov. U.S. Trademark Registration No. 3,936,105 (registered Mar. 29, 2011).

[28] Hermès® is a registered trademark of Hermès International.

[29] Birkin® is a registered trademark of Hermès International.

[30] Hermès International v. Emperia, Inc., 14-CV-03522 (C.D. Cal. 2014).

[31] U.S. Trademark Registration No. 3,936,105 (registered Mar. 29, 2011).

[32] United States Patent and Trademark Office, www.uspto.gov. U.S Reg. No. 1,241,222 (registered June 7, 1983).

[33] United States Patent and Trademark Office, www.uspto.gov. U.S. Reg. No. 2,732,617 (registered July 1, 2003).

[34] United States Patent and Trademark Office, www.uspto.gov. U.S Reg. No. 3,529,814 (registered Nov. 11, 2008).

[35] Burberry Limited’s Trademark Check Pattern: U.S Reg. No. 1,241,222 (registered June 7, 1983); U.S Reg. No. 2,022,789 (registered Dec. 17, 1996); U.S Reg. No. 1,855,154 (registered Sept. 20, 1994); U.S Reg. No. 2,015,462 (registered Nov. 12, 1996); U.S Reg. No. 2,689,921 (registered Feb. 25, 2003); U.S Reg. No. 2,845,852 (registered May 25, 2004); U.S Reg. No. 3,529,814 (registered Nov. 11, 2008); Burberry Limited’s Trademark Check Pattern (no color designation): U.S Reg. No. 2,612,272 (registered Aug. 27, 2002); U.S Reg. No. 2,732,617 (registered July 1, 2003); U.S Reg. No. 2,728,709 (registered Jan. 24, 2003).

[36] Id.

[37] Burberry® is a registered trademark of Burberry Limited.