Intellectual Property

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On May 10, 2013, the Federal Circuit, sitting en banc, handed down its opinion in CLS Bank Int’l v. Alice Corp., No. 2011-1301, slip op. (Fed. Cir. May 10, 2013). The majority of the Federal Circuit judges agreed on little other than that the method and computer-readable medium claims involved in the dispute were patent ineligible. Essentially, Alice Corporation owned patents that the Federal Circuit found to be nothing more than abstract ideas based on use of escrow accounts and record keeping associated with the settling of transactions. However, the Court failed to agree on the reasoning as to why such claims were ineligible subject matter with the judges evenly split regarding the eligibility of comparable computer systems claims.
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Continue Reading CLS Bank: Software Patents at Risk?

In its ruling of May 9, 2012, the Sixth Circuit Court of Appeals affirmed the district court’s conclusion that Maker’s Mark Distillery, Inc.’s registered trademark consisting of the signature red dripping wax seal is due protection. The Samuels Family founded the Maker’s Mark Distillery in Loretto, Kentucky, and has been producing whiskey since the Eighteenth Century. Bill Samuels formulated the recipe for the Maker’s Mark bourbon in 1953. His wife, Margie, conceived of the red dripping wax seal. The company has bottled bourbon for commercial sale under the Maker’s Mark name and has used a red dripping wax seal on the bottle since 1958. In 1985, Maker’s Mark registered a trademark for the dripping wax seal component of its trade dress which is described it as a “wax-like coating covering the cap of the bottle and trickling down the neck of the bottle in a freeform irregular pattern.”

In 1995, Jose Cuervo began producing premium tequila entitled “Reserva de la Familia.” The tequila bottle had a wax seal that was straight edged and did not feature drips. However, in 2001, Cuervo began selling its tequila in the United States in bottles with a red dripping wax seal similar to the seal of the Maker’s Mark bottle.
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Continue Reading Whiskey vs. Tequila: Courts find Cuervo’s Seal Infringes Maker’s Mark Red Wax Seal Trademark

Social networks like Facebook, YouTube and Twitter are transforming the way companies communicate with consumers. Facebook, YouTube and Twitter can be powerful business tools, but you must be mindful of certain legal limitations and guidelines.

The words “Facebook,” “YouTube,” and “Twitter” are proprietary to the companies that own them. “Facebook,” “YouTube,” and “Twitter” are all…

Ever since the Supreme Court handed down its decision in Bliski v. Kappos, 130 U.S. 3218 (2010), practitioners have grappled with the line between eligible and ineligible patent processes. Two recent cases, one eligible and one not will undoubtedly be cited to describe the divide as it relates to a business process.

In August,…

Today, the ICM Registry launched the new sponsored top-level domain – .XXX. The .XXX domain is being launched specifically for the adult entertainment industry; however, the .XXX launch is also important for individuals, businesses, and organizations owning trademark rights. Trademark owners will have a short, fifty-two (52) day period (“Sunrise B period”) to protect their…

In Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc, 617 F.3d 1296 (Fed. Cir. 2010), the Federal Circuit reversed a district court’s summary judgment decision that no patent infringement occurred when a US company made an offer to sell to another US company when the sale negotiations occurred outside of the US.

Transocean filed suit for infringement of patents related to an improved apparatus for conducting offshore drilling. In order to drill for oil and other offshore resources, drilling rigs must lower several components to the seabed including the drill bit, casings, BOB’s, and the drill string. A conventional offshore drilling rig utilizes a derrick with a single top drive and drawworks that can only lower one element at a time in a time consuming process. Transocean patented a specialized derrick to improve the efficiency of lowering the above components. The specialized derrick included “two stations – a main advancing station and an auxiliary advancing station that can each assemble drill strings and lower components to the seabed.” Id. at 1301. This duel-activity rig could significantly decrease the time required to complete a borehole. Id at 1302. Transocean sued Maersk rig for infringement of the specialized derrick patent.
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Continue Reading Parties Cannot Avoid Patent Infringement by Conducting Negotiations Outside the United States for Products that will be Delivered and Utilized in the United States

In the United States, patent owners or licensees are required to inform alleged infringers of their possibly infringing behavior prior to being able to recover damages for the infringement of a valid U.S. patent. (1)  Marking a product with the applicable patent number provides the requisite notice. (2)  However, failure to monitor products marked with…

In one of its last acts before its summer 2010 recess, the United States Supreme Court issued its opinion in the long-awaited case of Bilski v. Kappos (S.Ct. 2010 80-964). In the Bilski case, the inventor was seeking to obtain a patent on a method of hedging risk. The Supreme Court found that the method was not patentable because it was merely an abstract idea. In earlier jurisprudence from the Court of Appeals for the Federal Circuit (CAFC), the CAFC had used a “machine-or-transformation test” to determine whether business methods were patentable. In Bilski, the Supreme Court refused to say that the machine or transformation test was the sole test for determining patentability, and the Court did not reject the machine or transformation test. Instead, the Bilski court stated that the machine or transformation test is a useful tool, but not the only tool, for evaluating whether an invention is proper subject matter for patent protection.
Continue Reading Supreme Court Decides Long-Awaited Patent Case

The Fifth Circuit Court of Appeals recently addressed the standard for a declaratory judgment action in the context of trademark rights. In Vantage Trailers, Inc. v. Beall Corporation, 567 F.3d 745 (5th Cir. 2009), Vantage filed civil action seeking declaratory judgment finding that its designed for a new aluminum bottom dump trailer would not infringe on any valid trademark rights of Beall Corporation.  Beall manufacturers and sells an aluminum bottom dump trailer which is protected by a registered trademark.  In early 2006, Vantage began designing its own aluminum bottom dump trailer.  In July 2006, Beall’s vice president sent a letter to Vantage stating that if your company places any trailers into service that violate any of Beall’s trademarks we will pursue legal action to stop the infringement. In response to the letter, Vantage filed a civil action seeking a declaratory judgment that Beall’s trademark is invalid and that the design of Vantage’s trailer did not infringe on any intellectual property rights of Beall’s.
Continue Reading Declaratory Judgment Action Still Requires Case or Controversy