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Has Your Patent Been Infringed?

A Step by Step Guide

If you believe another individual or company is infringing on your patent, one of the first steps to take is to compile relevant information about the type of infringement that is taking place. The relevant information should include details on how the alleged infringer is adversely impacting your business and try to conduct a general calculation of all the damages you have suffered as a result of the infringement.

1. Contact an Experienced Patent Attorney

Primarily, it is in your best interest to seek the counsel of a reputable Los Angeles patent attorney as soon as possible. Omni Legal Group is recognized as one of the premier patent law firms in Los Angeles and has extensive experience filing and protecting patents on behalf of their clients. One of Omni Legal Group’s attorneys can guide you through potential steps, such as those discussed below, that may best address the wrongful conduct.

2. Contact the Alleged Infringer

A next step is to try to contact the alleged infringer to make them aware of the alleged infringement. This communication should be limited to informing them of your patent rights. A date-specific deadline for their respond should also be provided. If the alleged infringer fails to respond or inadequately responds within the timeframe provided, you should escalate the matter.

3. File a Complaint

With the help of your patent attorney, a litigation strategy may be formed. At the outset, a complaint may be drafted and filed in a federal district court to initiate the legal proceedings. Once filed, the complaint will need to be served to the alleged infringer. This date of service will then begin to toll the deadline by which the accused must file a response to the complaint.

4. Potential Settlement

After the alleged infringer is served, there will be an opportunity to try and resolve the dispute before the case goes to trial, which is strongly encouraged by the attorneys at Omni Legal Group encourage. For example, many federal courts require the parties to engage in a pre-trial mediation or settlement conference to try and reach an amicable resolution. Having an experienced and knowledgeable patent attorney on your side can pay dividends during any dispute resolution proceeding since they can guide you through the process and help assess whether a settlement offer is reasonable or not.

If you believe your patent has been infringed, take action today by contacting the highly reputable lawyers at Omni Legal Group. Whether you hold a design patent, utility patent, or plant patent, we can help protect your rights and hold the infringing party accountable for their conduct. For further information or to schedule a consultation, please contact our office today at 310.276.6664 or visit www.OmniLegalGroup.com to learn more.

What is the new Fast Track Appeals Pilot Program for patents?

The New Fast Track Program for Patent Appeals

If you applied for a patent and your application was denied twice, you retain the option to file a formal appeal of the examiner’s decision with the Patent Trial and Appeal Board (PTAB). Generally, the appeals process can be time-consuming and is rife with inefficiencies. Fortunately, the U.S. Patent and Trademark Office launched a new, temporary pilot program to try and improve the adjudication of appeals filed with the PTAB.

The new program, known as the “Fast Track Appeals Pilot Program” went into effect on July 2, 2020. Since it is in a fledgling stage, the pilot program is limited to only 125 patent appeals per quarter.

Why the USPTO Launched the Pilot Program

The USPTO launched this new pilot program primarily due to the popularity of its Track I Prioritized Examination Program for patent applications. Under the Track I program; an applicant has the ability to file a petition with the USPTO for expedited prosecution when filing a new application. However, this process requires paying an additional fee and is limited to patent applications (not appeals). Despite the additional expense, the Track I program is extremely popular. For example, in 2019, close to 3 percent of the patent applications were filed under the Track I program.

As a result of the popularity of the Track I program, the USPTO decided to establish the Fast Track Appeals program as an analogous process that would provide patent applications on appeal a similar expedited time frame.

How To Participate in the New Pilot Program

If you are interested in participating in this new patent appeal pilot program, an applicant must file a petition and pay a fee totaling $400.  The petition may be filed any time after the notice of appeal is filed and the PTAB has docketed the appeal. However, it is important to note that your application is not eligible for this program if it was granted any other type of expedited status.

If your petition is granted, the PTAB will attempt to adjudicate your appeal within six months from the date the petition was granted. This is much faster compared to the typical time necessary to adjudicate an appeal. For example, the average appeal typically takes at least 15 months or more to adjudicate.

Pilot Program Only In Effect for Limited Duration

The fast track pilot program is expected to be in effect for around one year, or until 500 appeals are accepted, whichever occurs sooner. Though, the USPTO stated it may consider continuing the program past this limit, or may modify the program, depending on how well-utilized it is by applicants.

Have Questions about a Patent Application or Patent Infringement? Speak to an Experienced Patent Attorney Today

If you have questions about patent law or a patent application, now is the time to act and consult with the highly reputable Omni Legal Group. Whether it is a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, you can always expect the patent lawyers at Omni Legal Group to provide you with the care and attention you deserve. All of our attorneys are registered with the USPTO.

For further information or to schedule a consultation with a leading patent lawyer in Los Angeles, please contact the highly trusted Omni Legal Group at 310.276.6664 or visit www.OmniLegalGroup.com to learn more. We possess the knowledge, resources, and experience to assist you in your efforts to secure and protect your patent.

Will a years-long patent dispute prevent the development and release of a potential COVID-19 vaccine?

Moderna has been among multiple companies that have been quickly developing a potential vaccine for COVID-19. In mid-July, the biotechnology company announced that initial trials for the vaccine had found no serious side effects in human volunteers. The vaccine, known as mRNA-1273, is a novel lipid nanoparticle encapsulated mRNA that encodes for a full length, prefusion, stabilized spike protein of SARS-CoV-2. Essentially, the lipid nanoparticle carries the mRNA that encodes for whatever antigen that it is delivering (in this case, the antigen for COVID-19). Other vaccines, on the other hand, use a weakened or hollowed-out virus to act as a vector to transport the antigen payload into the body.

Moderna did not create the lipid nanoparticle technology but instead licensed it from a small company, Acuitas. However, Acuitas did not own the technology but, in turn, had licensed it from Arbutus Biopharma. The Arbutus license terminated in 2016, causing Acuitas to file a lawsuit against it. Arbutus then countersued arguing its deal with Acuitas did not cover Acuitas’ rights to license the technology to third parties, including Moderna. Acuitas and Arbutus settled out of court but the settlement terminated Acuitas’ right to use or sublicense the lipid nanoparticle technology going forward. Moderna has no other rights to Arbutus’ broad suite of lipid nanoparticle technology.

Last year, Moderna successfully overturned one legacy patent held by Arbutus and invalidated the broadest claim of another. In the most recent challenge, which is the third in a series of cases brought by Moderna against Arbutus, Moderna attempted to invalidate United States Patent No. 8,058,069, which describes “lipid formulations or nucleic acid delivery.” Specifically, Moderna filed a petition for inter partes review of the patent. Inter partes review is a trial proceeding conducted at the United States Patent and Trademark Office Patent Trial and Appeal Board to review the patentability of one or more claims in a patent on the grounds of novelty or obviousness.

The crux of Moderna’s position was that the ‘069 patent described obvious, non-novel concepts and therefore, was not worthy of patent protection. To support this position, Modern relied upon the testimony of an expert who contended that a person of ordinary skill in the art for the ‘069 patent would have specific experience with lipid particle formulation and use in the context of delivering therapeutic nucleic acid payloads and further contended that the ‘069 patent was obvious and not novel. Modern also supplied previous international patent applications and publications that support this viewpoint.

For a patent claim to be anticipated, that is, not novel, each claim element must be disclosed in a single prior art reference and the claimed combination of those elements must also be disclosed in that same reference. Prior art comprises any and all information that has been made available to the public in any form prior to the filing date of a patent. A patent claim is obvious when the differences between the claimed subject matter and the prior art as such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art to which the subject matter pertains.

Ultimately, the Patent Trial and Appeal Board ruled against Moderna in determining that Moderna had not demonstrated that all of the claims of the ‘069 patent were unpatentable as obvious or anticipated. In particular, the Board found that the teachings of the patent application and publications did not anticipate or otherwise render obvious a nucleic acid-lipid particle containing each of the recited lipid components within the claimed ranges. While the Board’s decision was final, any party to the proceeding may seek judicial review thereof.

Modern publicly claims the recent ruling will not affect its continued development of the vaccine. In particular, the company contends that its proprietary lipid nanoparticle  technology and process have advanced well beyond the technology described in the Arbutus patents and is therefore, not covered by these patents. This is a similar sentiment to what Moderna’s chief executive officer stated in 2016 Forbes article. At that time, the CEO downplayed its loss of its Acuitas license in asserting that the licensed technology “was just okay” and that Moderna’s own method of creating nanoparticle lipids was better than the Acuitas version. Recently, Moderna has further stated that it is unaware of any other significant intellectual property impediments for any products it intends to commercialize, including mRNA-1273.

Will Tiffany & Co. be required to pay a Thai jewelry company damages resulting from a 2016 pink sapphire and diamond bracelet that allegedly infringes the company’s utility patent for a “Color Changing Multiple Stone Setting”?

A lawsuit was recently filed in the United States District Court for the Southern District of New York against Tiffany & Co. for patent infringement. The complaint, filed by Jacob’s Jewelry Co. Ltd. cites its utility patent, United States Patent No. 9,609,923, for a “Color Changing Multiple Stone Setting.” At issue is a nearly $1 million pink sapphire and diamond bracelet from Tiffany & Co.’s 2016 Masterpieces Collection. While Jacob’s Jewelry claims to have been making and marketing color changing jewelry since several years prior to the issuance of its patent, the jewelry products covered by the patent allegedly “have proved to be commercially successful and valuable to Jacob’s.”

The patent asserted by Jacob’s Jewelry was filed on January 25, 2011 and granted on April 4, 2017. In the background, the applicant explains that jewelry is often created so as to enhance the appearance of individual gems contained therein. For instance, complementary stones are often mounted relative to a center stone so as to reflect or refract light in a manner that enhances the natural beauty of the center stone. Another means of accomplishing jewelry with an enhanced appearance is by way of color changing jewelry. Such pieces comprise stones that exhibit a color change when viewed in different lighting conditions, such as incandescent light, fluorescent light, sunny outdoors, cloudy outdoors, or shady outdoors. Moreover, certain stones are used to accomplish this, including alexandrite, iolite, sapphire, and garnet. Alternatively, some jewelry makers apply a coating to gems which changes color depending on the viewing angle of the observer.

In its most basic form, the patent asserted by Jacob’s Jewelry comprises three color-changing surfaces, including a first stone, a second stone, and a third stone, each set on a different plane and perpendicular to one another. The stones may be set on a base formed of a single piece or that which is formed by joining several separate pieces. Each of the first, second, and third stones face outward (presumably so as to be visible to an observer and the wearer) and change to different colors as the viewing angle changes. Further, the stones are capable of two- or three-color changes.

Utility patents protect the functional aspects of an invention and are the most common type of patent applications. Utility patents provide broad protection for multiple different variations of a product. On the other hand, design patents cover only the ornamental design of a patent. However, design patents are less expensive than utility patents and often receive protection more quickly than do utility patents. That being said, design patents can be relatively easy to design around so as to avoid infringement. In this manner, different variations of a product are typically not protected by a design patent.

Patent infringement occurs when one makes, uses, offers to sell, or sells something that contains every element of a patented claim or its equivalent while the patent is in effect. Patent infringement is willful when the complained of conduct is done deliberately and intentionally and with knowledge of the patent. If found liable for willful patent infringement, a defendant may be held liable for up to three times the amount of damages. Jacob’s Jewelry alleges Tiffany & Co. not only infringes its patent but does so willfully and deliberately. In particular, Jacob’s previously contacted Tiffany & Co. regarding the alleged infringement. According to Jacob’s, Tiffany & Co. “has not denied the [bracelet] do not infringe on the [] Patent.” Further, because Tiffany & Co. has been made aware of these accusations but has “taken no action to cease their knowing infringement,” its actions are intentional.

In the complaint, Jacob’s Jewelry seeks not only a judgment of infringement by Tiffany & Co., but also that such alleged acts of infringement be held willful and deliberate. The plaintiff also desires Tiffany & Co. to be enjoined from further infringement of the patent, which should not be problematic (should Jacob’s prevail) since the complained-of piece was from Tiffany & Co.’s 2016 collection. Jacob’s further seeks attorney’s fees, costs, and damages in the form of a reasonable royalty. Reasonable royalty is calculated as the royalty that Tiffany & Co. would have agreed to pay had there been no infringement suit but instead, a prior agreement between the parties. While no answer has been filed by Tiffany & Co. yet, according to the complaint, the 182-year old jewelry brand’s position is that the patent at issue is invalid in light of the Cartier Tourmaline brooch dating back to the 1940’s.

Are Internet domain names capable of being trademarked?

Booking.com maintains a travel reservation website under the same name. Beginning in 2012, the company filed four applications to register the mark “Booking.com” in standard character as well as in stylized forms. The United States Patent and Trademark Office (USPTO) examining attorney assigned to the travel reservation company’s applications concluded that the term “Booking.com” is generic for the services at issue and is therefore unregistrable. In particular, the USPTO Trademark Trial and Appeal Board (TTAB) noted that “booking” means “making travel reservations” and “.com” signifies a commercial website. In this manner, “Booking.com” is understood by consumers as referring to “an online reservation service for travel, tours, and lodgings,” which are the precise services offered by the applicant. The TTAB further observed that even if “Booking.com” is descriptive, instead of generic, it lacks secondary meaning and therefore, remains unregistrable.

Following the USPTO’s denial of registration, Booking.com sought review in the United States District Court for the Eastern District of Virginia. In so doing, Booking.com presented new evidence of the relevant consumer perception of its mark. As a result, the District Court held that, unlike just “booking,” “Booking.com” is not generic but instead, descriptive. Further, the District Court concluded that “Booking.com” had acquired secondary meaning as to online hotel reservation services. The USPTO appealed the District Court’s conclusion but the Court of Appeals for the Fourth Circuit affirmed the decision and rejected the USPTO’s assertion that the combination of a generic term with “.com” is necessarily generic.

Trademarks distinguish one producer’s goods or services from those of another and thereby allow consumers to distinguish among competing producers. To be registrable on the principal register, a mark must be capable of serving this distinguishing function. Trademarks fall within five categories: fanciful, arbitrary, suggestive, descriptive, or generic. Fanciful, arbitrary, and suggestive marks are capable of registration because they are considered “inherently distinctive.”

On the other hand, descriptive marks describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services offered under the mark. Descriptive marks are not eligible for registration on the principal register absent a showing of secondary meaning. Secondary meaning means that a descriptive mark has achieved significance in the minds of the public as identifying the particular applicant’s goods or services.

A generic mark is the name of the product or service itself and by its nature, is incapable of distinguishing one producer’s goods or services from those of others. As such, ordinarily, generic marks are not eligible for protection as trademarks nor for federal trademark registration. Overall, however, eligibility for trademark registration turns on the mark’s ability to distinguish goods and services in commerce. Moreover, for compound terms, the inquiry is based on the term’s meaning as a whole and not its parts in isolation. The ultimate inquiry is the consumer’s perception of the mark, that is, the primary significance of the mark  to the relevant public.

In insisting that Booking.com’s proposed mark was generic, the USPTO’s position was that “Booking.com” or any generic.com mark is ineligible for registration regardless of consumers’ perception thereof. The USPTO cited the oft-repeated principle that regardless of the amount of resources devoted to promoting merchandise under a generic term, competitors cannot be deprived of the right to call an article by its name. For instance, the USPTO compared the present situation to that in which “company” may be added as a suffix to an otherwise generic term. In such instance, a generic designation of an association, partnership, or other entity does not confer trademark eligibility.

The Supreme Court rejected the USPTO’s comprehensive rule, finding that it not only contravenes the USPTO’s past practice, it also disregards consumer perception. The Court determined that a term styled “generic.com” is generic for a particular class of goods or services only if the term has that meaning to consumers. Differently, in this case, consumers do not perceive the term “Booking.com” to indicate only online hotel reservation services but instead, recognize that this domain is associated with a specific entity.