News & Events

Seattle, Oct 2010 – COJK Members Jerry Nagae, Everett Fruehling and Michael Zachary recently took part in King County Bar Association’s IP Section – Intellectual Property for Everyone: Fundamentals and Trends in Intellectual Property Law. The day long event, held at the Grand Hyatt Seattle, covered a broad range of IP related topics for an audience of non-IP attorneys and business professionals. The COJK contingent presented on a number of topics including Trademark fundamentals, IP in video games, and the impact of Bilski and KSR on prosecution and litigation.

Please click here to download a copy of Jerry Nagae’s PowerPoint presentation on the legal issues surrounding video game content.

Christensen O’Connor Johnson Kindness PLLC (COJK) is pleased to announce that Steven Parmelee has joined the firm as a Member of its Life Sciences Practice. Mr. Parmelee’s primary focus is on developing biotechnology patent portfolios for companies and research institutions. He also has extensive experience conducting patent interferences at the United States Patent and Trademark Office, particularly those involving complex biotechnology matters.

Prior to joining the firm, Mr. Parmelee was a Partner at Townsend and Townsend and Crew, LLC. He founded the Seattle Office of Townsend, and served as its managing partner for 16 years. Before Townsend, Mr. Parmelee served as Patent Counsel for Genetic Systems Corporation, a Seattle biotechnology company, and Bristol-Myers Squibb Company, a multinational pharmaceutical company, with responsibility for advising management and scientists on patent issues, preparing and prosecuting patent applications relating to therapeutic and diagnostic technologies, and overseeing patent interferences and litigation. By joining COJK, he reunites with his former Townsend colleague, Brian Poor, who joined the firm earlier this year.

Mr. Parmelee holds a B.S. in Zoology (Microbiology/Immunology emphasis) from the University of Washington, an M.S. in Medical Microbiology from Creighton University, and a J.D. from the University of Denver.

“Steve’s reputation in the biotech community, his time spent in industry, and his patent interference expertise add a great deal to our growing life sciences practice,” said COJK Managing Partner, Jerry Nagae. “His experience really differentiates COJK from other local firms and reinforces our life sciences team as one of the strongest in the region”.

ABOUT COJK

Christensen O’Connor Johnson Kindness PLLC is one of the leading intellectual property law firms in the Pacific Northwest. For over 80 years, the firm has excelled at fulfilling our clients intellectual property needs. The firm advises clients’ on all aspects of intellectual property law, including patents, trademarks, copyrights, licensing, and litigation. Our clients range from solo inventors to large multinational corporations.

For more information please contact Arun Mistry, Marketing Director, Christensen O’Connor Johnson Kindness PLLC at 206-695-1750 or email arun.mistry@cojk.com.

Seattle, July 2010 – For the second consecutive year, the Minority Bar Associations of Washington Joint Committee on Law Firm Diversity (JCLFD) has recognized COJK as one of the most diverse law firms in Washington.

The JCLFD surveyed the 50 largest firms or law firm offices in Washington, as reported by Washington Law and Politics. The survey sought detailed demographic information regarding the racial/ethnic, gender, sexual orientation, and disability status of attorneys and summer associates in the law firms that were surveyed.

Firms were issued grades based on a combination of “hard factors” (i.e., demographics compared to the Washington State Bar Association’s attorney demographics, Washington State’s general population demographics, and the National Association of Law Placement’s demographics on diverse partners and associates), and “soft factors” (i.e., narrative information concerning diversity efforts and programs). COJK received an ‘A’ grade for demographics and efforts related to minority, female, and GLBT attorneys.

“COJK is proud to be recognized once again for its diversity. Our firm’s success is a result of a culture that recognizes the importance and benefits of a diverse workforce,” said COJK Managing Partner, Jerry Nagae.

The JCLFD is a coalition of eleven prominent minority bar associations: the Asian Bar Association of Washington, Filipino Lawyers of Washington, Korean American Bar Association of Washington, Latina/o Bar Association of Washington, Loren Miller Bar Association, Middle Eastern Legal Association of Washington, Northwest Indian Bar Association, QLaw (the GLBT Bar Association of Washington), South Asian Bar Association of Washington, Vietnamese American Bar Association of Washington, and Washington Women Lawyers.

For further information, please contact:
Arun Mistry, Marketing Director, +1 206 695 1750 or email:arun.mistry@cojk.com

The recent decision by the Court of Appeals for the Federal Circuit (CAFC) in The Forest Group, Inc. v. Bon Tool Co. (“Bon Tool”) has dramatically increased the liability for falsely marking a product as patented. According to the Bon Tool decision, false marking fines are to be calculated up to $500 per item, whereas prior courts assessed fines up to $500 per batch of manufactured items. This new calculation scheme markedly increases the penalty faced by patent owners found liable for false marking. What is more, any person can file a false marking lawsuit, even people who aren’t affected by the patent marking, and the courts have seen a substantial increase in filings of false marking cases since the Bon Tool decision was announced. Because of the greater risk to patent owners, we strongly recommend that our clients use caution in marking a product as patented. Manufacturers should seriously consider auditing their patent marking labels to remove reference to any expired patents, and confirm that the patent claims cover the marked product.

Patent Marking Statutes

Marking a patented article provides constructive notice to the public that the article is protected by the patent number marked thereon. Compliance with the patent marking statue, 35 U.S.C. § 287, establishes the right to collect damages for patent infringement even where the infringer is unaware of the patent. Failure to mark a patented article may reduce the available infringement damages, because damages may only begin accruing at the date the infringer has actual notice of the patent.

The benefits of patent marking are tempered by the dangers of false marking. False marking is defined in 35 U.S.C. § 292 as (1) marking on, affixing to, or using in advertising, the word “patent” (or the like) in connection with anything made, used, offered for sale, or sold in the United States when no such patent covers the product (e.g., the patent has expired or the claims of the patent do not cover the product); with (2) an intent to deceive the public. The false marking statute also prohibits marking a product as patented without the consent of the patent owner, or marking a product as “patent pending” when no application for a patent is pending.

Penalties for False Marking

The false marking statute states that the fine for false marking is not more than $500 for “every such offense.”

In the Bon Tool case, the patent owner, Forest Group, sued Bon Tool for infringement of a patent covering certain construction stilts. In a counterclaim, Bon Tool accused Forest Group of falsely marking its own stilts. The trial court found Forest Group liable for falsely marking a batch of stilts produced to fill a single manufacturing order, then assessed a fine totaling only $500 for the whole batch of stilts. Under the then-accepted interpretation of the “every such offense” language, falsely marking a “batch” of goods was viewed as a single offense.

On appeal, the CAFC evaluated the “every such offense” language and discarded the interpretation relied on by the trial court. The CAFC concluded that a $500 fine is such a paltry sum when applied to a large number of articles that it had no deterrent effect. Instead, the CAFC’s Bon Tool opinion holds, Congress intended that every individual article that is falsely marked can expose the marker to a fine of up to $500. The CAFC remanded, instructing the trial court to reassess how much it should fine Forest Group for the false marking.
Upon remand from the CAFC, the District Court assessed a fine of several thousand dollars, constituting a fine of almost $200 per falsely marked item. The falsely marked goods were each sold for a maximum retail price of almost $200, and this price was assessed as the fine per item. Presumably, if the maximum retail price would have been above $500 the court would have assessed the maximum statutory fine of $500 per item.

The “maximum retail price” method used by the District Court to calculate the fine assessed against Forest Group is not legally binding on other District Courts elsewhere in United States, but it remains an early example of how trial courts may interpret Bon Tool. Regardless of how other trial courts apply the Bon Tool decision, one certainty is that fines for false marking will now be greatly increased. For example, falsely marking 1000 copies of a product may lead to a fine of $500,000 ($500 x 1000); whereas prior to Bon Tool such false marking may have only incurred a $500 fine.

Opportunistic Plaintiffs Are Exploiting the Bon Tool Decision

The potential for increased false marking fines creates a financial liability that can arise in two different situations. Historically, the most common suits to include a false marking claim were patent infringement suits in which the defendant raised false marking as a counterclaim. Bon Tool was such a suit.

Post-Bon Tool, a second type of false marking suit is quickly rising in popularity: the qui tam suit brought by an individual on behalf of the U.S. government. The false marking statue allows any person to file an action for false marking: half of any fine goes to the plaintiff, half to the government. While qui tam false marking suits have long been available, they have never before made financial sense. But given the potential for larger fines in the wake of the Bon Tool opinion, opportunistic parties have filed a large number of qui tam false marking suits in the hope of capitalizing on companies that have not been diligent in removing expired patents from the markings on their products. Targets of recent qui tam suits include Pfizer, 3M, and Cisco. While these suits may lack merit if the patent owners had no intent to deceive the public, the appearance of an expired patent on a marked product may be enough evidence to support a false marking claim. The unfortunate product manufacturer must incur the expense of defending the suit, and may be motivated to pay a settlement to dispose of the case.

Protection Against False Marking Claims

Some best practices for protecting your company against false marking include diligence in reviewing existing markings and caution when producing products that are noted as “patented” or “patent pending.” If a product is marked with a patent that has expired, remove that patent from the marking. (There is no need to recall items already produced as of the date of the expiration of a marked patent, however.) Additionally, it is important to confirm that one or more claims of a patent actually cover the product marked with the patent number.

To guard against false marking, knowing when a patent expires is essential. As a reminder, U.S. patents filed on or after June 8, 1995 expire 20 years from filing, plus any patent term adjustment/extension, but only to the extent the patent owner has paid the periodic maintenance fees at intervals of 3.5, 7.5 and 11.5 years. Patents filed prior to June 8, 1995 expire at the longer of 17 years from issuance or 20 years from filing; but again, the patent may go abandoned earlier unless the maintenance fees have been paid. The necessary information for calculating patent term can be found on the first page of a U.S. patent. Our letters reporting the issuance of a patent include its expiration date, and unless instructed otherwise we docket and report maintenance fees when due. Furthermore, we have implemented a courtesy letter to our clients several months prior to the expiration of a patent. We also assist clients in a comprehensive audit of their patent portfolio and product marking system.

Additionally, as has been demonstrated in the recent CAFC decision in Pequignot v. Solo Cup Co., the good faith reliance on the advice of counsel can negate the inference of intent to deceive the public created by falsely marking a product. In the Pequignot decision, the court found that Solo Cup did not have the required intent to deceive the public of the false marking statute—even though it knowingly falsely marked its products—because the marking activities were informed by the advice of counsel. Therefore, obtaining the opinion of counsel regarding marking issues may provide a shield against false marking claims; particularly if no evidence of an intent to deceive the public exists. As false marking is an evolving area of the law, it is difficult to predict what the future will bring for false marking suits. However, we recommend erring on the side of caution when marking products with patent numbers, or as “patent pending.” Failure to do so may create exposure to false marking suits, and the increased fines that may result in the wake of Bon Tool.

If you have questions about patent marking issues, please contact Robert Carlson, Rhys Lawson or your COJK attorney.

June 3, 2010

Intellectual property is becoming increasingly important for companies of all sizes. Almost all businesses have some of their value associated with intellectual property, whether it is in the form of patents, trademarks, copyrights or trade secrets. Unfortunately, many businesses only realize the importance of protecting their company’s intellectual property when it is too late.

Often the best and least expensive protection is to have employees sign properly drafted employment agreements. Employment agreements are the foundation for establishing the business’s ownership of its intellectual property. This session highlighted some of the key issues for business owners, as well as examined some best practices for protecting intellectual property through employment agreements.

Topics covered included:

• Clauses and language to consider including in employment agreements
• Procedures/programs to have in place to ensure intellectual property is protected
• Available options or legal remedies when there is no employment agreement

Speaker:

Margie Aoki
Christensen O’Connor Johnson Kindness PLLC

Click to view presentation slides

The Trademark Trial and Appeal Board handed down a significant victory for Federal Corporation, allowing its application to register the MILANZA mark for use with tires, thanks in large part to COJK attorney Everett Fruehling and co-counsel W. David Shenk of Whyte Hirschboeck Dudek S.C. The February 24, 2010 ruling dismissed an opposition filed by Bridgestone Firestone North American Tire LLC and Bridgestone Corporation (‘Bridgestone’), represented by Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. The Board ruling resolves a long running dispute over Federal’s use and registration of the MILANZA mark. After Federal Corporation filed an intent-to-use application for the MILANZA mark in October of 2004, Bridgestone opposed registration of the MILANZA mark, claiming a likelihood of confusion with its POTENZA, TURANZA, and ALENZA “family of marks.”

However, finding in favor of Federal Corporation, the Board noted that Bridgestone did not claim use of the ALENZA mark until after Federal Corporation filed its MILANZA application. Furthermore, Bridgestone failed to show that its use of POTENZA and TURANZA caused the public to recognize the alleged “-NZA family of marks” prior to Federal Corporation’s application to register MILANZA. The Board also stated that Bridgestone’s own internal marketing documents failed to support the alleged “-NZA family of marks.” Thus, in the absence of the alleged trademark family, the Board analyzed likelihood of confusion solely between Federal Corporation’s MILANZA mark and Bridgestone’s POTENZA and TURANZA marks.

Despite Bridgestone’s evidence that its sales and advertising figures were “impressive” under the POTENZA and TURANZA marks and use of the marks was extensive, the Board rejected Bridgestone’s argument that the marks were particularly strong, because they were always used in tandem with, and tied to, the prominently placed BRIDGESTONE house mark. The Board stated that “[t]here is simply nothing in the record to demonstrate that the marks POTENZA and TURANZA have achieved any significant recognition independent of the BRIDGESTONE mark.” The Board also criticized Bridgestone’s survey evidence, which was alleged to show a 29.9% rate of confusion amongst survey participants. The Board held that such evidence was of “little probative value” due to the survey’s flawed methodology, which “planted the seed that the NZA suffix was significant” in the minds of participants before their exposure to Federal Corporation’s MILANZA mark. The Board also noted that “POTENZA and TURANZA appear together along with BRIDGESTONE, DUELER, FIRESTONE, BLIZZAK, AFFINITY and many other brand owned by opposers” in the marketplace, but were not shown in this manner to survey participants.

The Board ultimately held that the dissimilarity in appearance, sound, meaning [and] commercial impression,” between Federal Corporation’s MILANZA mark and Bridgestone’s POTENZA and TURANZA marks outweighed the identical nature of the parties’ goods and channels of trade, such that no likelihood of confusion existed. If you have any questions about this development, please contact a member of COJK’s Trademark practice group.

Christensen O’Connor Johnson Kindness (COJK) is pleased to announce the addition of two attorneys to the Firm’s IP Litigation Practice, Michael Zachary joins the Firm as a Member, and Michael Matesky as an Associate.  Both attorneys come to COJK from the Seattle office of Klarquist Sparkman.   Mr. Zachary’s practice has included a variety of IP litigation matters, including patent infringement cases involving medical devices (including cardiac stents and ophthalmic devices), scientific instruments, computer software, ecommerce, and electronic devices, among other areas.   He has also litigated trademark, unfair competition and trade secrets cases. Mr. Zachary earned a B.A. in History, cum laude from Columbia University in 1978, and a J.D. cum laude, from Harvard Law School in 1983.   “Michael brings a wide range of experience and adds depth to our growing IP Litigation Practice,” said COJK Managing Partner, Jerry Nagae.  “His arrival will allow us to provide even better service to clients in Washington and throughout the Pacific Northwest.”

Mr. Matesky’s practice focuses on IP litigation involving patents, copyrights, trademarks, and trade secrets.  In addition, Mr. Matesky has prosecution, enforcement, and transactional experience regarding copyrights, trademarks, and domain names, with a particular interest in arts and entertainment issues.  Mr. Matesky earned a B.A. in English, Spanish, from the University of Washington in 2001, and a J.D., Order of the Coif, from Chicago-Kent College of Law in 2005.

In re Sones: New Ruling Provides a Uniform Approach to U.S. Patent and Trademark Office (USPTO) Review of Specimens of Use When submitting a web page as a specimen for goods, the USPTO will no longer require a picture of the goods and instead, in the absence of a picture, will accept a written description of the goods for which registration of the mark is sought. As many of you know, U.S. law requires that a trademark applicant submit a specimen of use before a mark is allowed to register. The intent of the specimen is to show that the mark is used in association with the goods. This specimen must be submitted with the application or, in the case of an intent to use application, after the mark is allowed. Generally, for goods, this requires a label, tag, or container for the goods, or a display associated with the goods. Also acceptable have been catalogs, as well as electronic displays (i.e. on a web site). In order for an electronic display to be accepted, the USPTO in the past has required that the mark be used in association with a picture of the goods along with a means for purchasing the goods (for example, information on cost, and an on-line ordering and purchasing process, or a toll-free number.)

Last month, the U.S. Court of Appeals for the Federal Circuit clarified this requirement for a picture of the goods and allowed that, in the absence of a picture, a description of the goods would suffice. This overturns a standard used by the USPTO for over ten years, which required website and catalog specimens specifically to include a picture of the relevant goods to be considered acceptable. Trademark owners now have greater flexibility in proving use where the goods are sold on-line and make it all the more easier for applicants to get an acceptable specimen filed to support registration of a mark.

The Court of Appeals in In re Sones, ___ F.3d ___, ___ USPQ2d ___, No. 2009-1140, 2009 U.S. App. LEXIS 28198, at *11-13 (Fed. Cir. Dec. 23, 2009), held that there is no absolute requirement that an acceptable specimen show an actual picture of the goods, and that submissions by trademark owners of website or catalog pages that have a textual description of the goods may be perfectly acceptable to the USPTO during the application process to fulfill the statutory requirement to show use of the mark in connection with the claimed goods or services. In In re Sones, the applicant attempted to register the mark ONE NATION UNDER GOD in connection with charity bracelets, and submitted as a specimen of use a website printout that gave the name of the applicant, depicted the mark and a briefly worded description of the goods, and provided an opportunity to purchase the bracelets. Next to the description of the bracelets was a gray-shaded box that stated “photo not availble” [sic]. The USPTO Examiner and Appeal Board refused to accept this website printout as a proper specimen because it did not include a photograph of the goods, and based their determination on an interpretation of an earlier case, Lands’ End, Inc. v. Manbeck, 797 F. Supp. 511 (E.D. Va. 1992). In Lands’ End, the issue was whether catalog pages could suffice as proper specimens of use for trademarks as required by the Lanham Act, which states an applicant must show “use in commerce” by submitting evidence that the mark is “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” ₁

The Lands’ End court observed that the catalog pages in that case “include[d] a picture and a description of each item,” however, it determined that because the catalog pages allowed a customer to make a decision to purchase by sending in an order form, the pages constituted a proper display associated with the goods.

Subsequently in 1997 the USPTO instructed its examiners “to accept any catalog or similar specimen as a display associated with the goods provided that (1) it includes a picture of the relevant goods, (2) it includes the mark sufficiently near the picture of the goods to associate the mark with the goods, and (3) it includes information necessary to order the goods.” ₂

Until now, the requirement to include a picture of the goods has been repeated in the several subsequent decisions but has not been specifically challenged. The court in In re Sones has now specifically removed that requirement and admonished the USPTO to consider the evidence as a whole, consistently looking for point-of-s al e access, accurate descriptions of the goods in some form, reference to the source of the goods, and other factors as required by statute no matter what form of specimen is submitted. Although this conclusion seems obvious now, for trademark owners, I n re Sones is a welcome clarification that the actual test for an acceptable website specimen, as with all specimens, is whether it shows that the mark is associated with the goods and serves as an indicator of source; there is no absolute requirement that an acceptable specimen show an actual picture of the goods.

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₁ 11 U.S.C. Section 1127.

₂ See TMEP Section 904.03 (6th ed. Oct 12, 2009) as this test still appears in the latest version.

The Supreme Court (“the Court”) heard oral arguments last Monday in the matter of In re Bilski. For those not familiar with the case, Bilski applied for a patent with the U.S. Patent Office (“PTO”) claiming a method for commodities trading. The PTO rejected the claims on the theory they did not qualify as protectable subject matter under U.S. patent law. Following two appeals, ending with the Court of Appeals for the Federal Circuit (the country’s patent court), the PTO’s decision was upheld with Bilski’s claims ultimately failing the new “machine-or-transformation” test. As was expected, Bilski appealed to the Supreme Court.   U.S. patent law says that “any new and useful process, machine, manufacture, or composition of matter” is entitled to a patent, provided it is novel and not obvious (two requirements not at issue in this case). The question for the Court in Bilski boils down to what is a “process”?   The government’s position was that this question is adequately answered by the Federal Circuit’s “machine-or transformation” test. Additionally, the government advocated for restraint from the Court in making any broad pronouncements that might negatively affect process patents, such as finding all business methods not patentable. Bilski’s position was considerably different, taking the stance that the “machine-or-transformation” test has no statutory support or support in case law, and that it is obvious from the statute that “process” is meant to mean any process.

The Court did not seem happy with either of these positions during oral argument, causing two themes to emerge during questioning: (1) the justices were highly skeptical of Bilski’s invention; and (2) the justices were extremely bewildered as to what the test for a patenteligible process should be. Despite the Court’s confusion, the Court is almost guaranteed to deny Bilski a patent. The real mystery is on what basis will the Court do so?  While the Court, overall, seemed less concerned with the “machine-or-transformation” test than with the subject matter of Bilski’s claims, there was apprehension expressed over the apparent rigidity of the test; in particular, how will it affect future technologies.   The worry is that there may be unforeseen consequences that could stifle future innovation under the “machine-or-transformation” test. But this concern paled in comparison to the tough, and sometimes sarcastic, questions directed to Bilski’s commodities trading invention

The questions at argument strongly hint at the end result in the justices’ minds for t hi s case.  Unfortunately, there were no such hints for what the basis will be for denying Bilski a patent. One option is to stick with the “machine-or transformation” test, but wait for a more “appropriate” case to answer the question of what is a “process” under the statute. The Court may alternatively put forth a new test, with such tests as a “useful arts” test or “no abstract ideas or laws of nature” test popping up at argument. The Court may also just do away with business method patents altogether and deal with other process patents, such as software or diagnostic treatments, in later cases.

It is impossible to predict how the Court will rule in this case and what new test, if any, will come down. But going on the theory that sweeping pronouncements that will have large impacts, such as completely banning business methods, are not something the Supreme Court does often, a limited and even narrow ruling is likely the result. So, for now it should be business as usual. Innovations in processes, such as software, diagnostic testing, and even business methods should continue to be patented, but with an eye towards careful and robust patent application drafting.