Troy & Schwartz Attorneys-At-Law

In Dec. 2020 the U.S. Court of Appeals for the Ninth Circuit held that the publication of a trade secret in a patent application extinguishes trade secret status.  Attia Architect PC, et al.  v. Google LLC, et al.   Architect Attia developed a system and method for automated design, fabrication, and construction called Engineered Architecture (EA).    In 2010 Attia entered into a partnership with Google wherein he disclosed his trade secrets related to the technology to Google.  A year later, Google filed patent applications related to the technology’s trade secrets.  Attia executed patent assignment agreements effectively transferring any rights in the patents to Google.  The patent applications were published 18 months from the filing date pursuant to 35 U.S.C. § 122(b)(1)(A) making the alleged trade secrets publicly available.  Google then allegedly excluded Attia from the project and used EA to create a platform for use by building professionals to streamline the design process by relying on artificial intelligence.

Attia sued Google for trade secret misappropriation under California’s trade secrets statute and the federal Defend Trade Secrets Act (DTSA). The district court dismissed his federal claims with prejudice and declined to exercise supplemental jurisdiction over state law claims.  Under both California state trade secrets law and the DTSA, the disclosure of the alleged trade secrets in the published patent application publication extinguished their status as protectable trade secrets.  (Click here for a previous blog concerning the same decision which  addressed another issue involving the DTSA). Nor was this a situation where Google had filed the patent applications without Attia’s permission.

Is it possible for trade secrets and inventions to co-exist?  Maybe.  Inventors may try to maintain what they as deem as trade secrets by failing to disclose key elements of the invention in the patent application and specification.  This approach can be difficult to navigate because inventors may risk invalidating a patent by withholding critical information from the patent examiner during prosecution of the patent.   But see Pike v. Texas EMC Management, LLC (Texas state appellate court finding that EMC had “purposely excluded certain information” from its patent application in order to maintain it as a trade secret and was thus entitled to maintain its claim against Pike for trade secret misappropriation.

Any information disclosed in a patent application publication or issued patent, is by definition, published and not subject to trade secret protection.   If the invention disclosed in a patent application is or will not be the subject of a foreign application, the patent applicant can file a non-publication request under 37 CFR 1.213(a) to prevent its publication 18 months later after the filing date.  For utility applications relying on the filing date of a provisional patent application (PPA), the clock starts ticking from the PPA’s filing date.  The non-publication request will allow the application to be maintained as a trade secret over the invention during the patent application prosecution process which can take many years.

If a patent does not issue, trade secret protection will continue until when and if the trade secret(s) become publicly available, through e.g., the inventor’s failure to maintain the trade secret in confidence.  If, on the other hand, the examining attorney concludes that claims are patentable, the inventor can make the determination as to whether issuance is “worth” giving up trade secret rights in the published patent document by deciding to withdraw the patent from issuance under 37 C.F.R. § 1.313.

Take Aways

• Dlsclose any trade secrets related to your invention to your patent attorney.  Ask the attorney whether inclusion of the trade secrets in the patent application is essential to meet the USPTO’s invention disclosure requirements.
• Consider filing a non-publication request providing you have no intention of filing a foreign application. If you do end up filing a foreign patent application, remember that that your U.S. patent application may also become subject to publication.
• Be sure to continue safely guarding your trade secrets quite apart from any confidential patent application.  Trade secret protection is an on-going endeavor
• Contact us for a complimentary trade secret checklist to get you started in understanding trade secret protection.

THANK YOU FOR YOUR INTEREST IN THIS BLOG.  AS USUAL THE CONTENT IS FOR   INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.

Intellectual property law is a complex area of the law.  Contact us for a complimentary consultation on patents, trademarks, trade secrets, and copyrights.  Our mission is to serve innovators and creators in protecting the fruits of their hard work and ingenuity through our Client Creed:  Conscientious, Rigorous, Energic, Empathetic, and Diligent representation.

May you and your loved ones stay safe & be well during these challenging times.

© 2021 by Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

On Dec. 16, 2020 in Attia, et al.  v. Google, LLC, et al.,  the Ninth Circuit Court of Appeals held that a misappropriation claim under the Defend Trade Secrets Act of 2016, §18 U.S.C. 1836, et seq. (“DTSA”) may be brought for misappropriation that started prior to the DTSA’s enactment as long as the claim also arises from post-enactment misappropriation or from the continued use of the same trade secret.

The DTSA mirrors the Uniform Trade Secrets Act (“UTSA”) and also expands the Economic Espionage Act, which criminalizes misappropriation of certain trade secrets. Many states, including Florida, have based their trade secrets laws on the UTSA.  Until the enactment of the DTSA in 2016, trade secret misappropriation claims were generally brought under state statutes, e.g., Florida’s Uniform Trade Secret Act (“FUTSA”).

The DTSA allows plaintiffs to bring a federal claim for any trade secret misappropriation that occurred on or after May 11, 2016.   In Attiva v. Google, LLC, the Ninth Circuit decided that a claim under the DTSA can still be brought, even if the misappropriation actually started before the enactment of the DTSA, as long as the misappropriation continued through the DTSA’s enactment date (May 11, 2016) and involved the same trade secret.  In reaching its decision, the Ninth Circuit explained that the Uniform Trade Secrets Act (“UTSA”), includes an anti-continued use provision while the DTSA lacks a similar provision.  Noting that Congress was aware of the UTSA at the time the DTSA was enacted, the court concluded that the apparently deliberate omission of an anti-continued use provision indicated that the DTSA was not intended to be limited in this way.  In its reasoning, the Ninth Circuit pointed out that the DTSA language discussing “a continuing misappropriation constitutes a single claim of misappropriation” relates only to a statute of limitations argument and does not intrinsically prohibit DTSA misappropriations claim from being brought on the basis of continued use.

Although the DTSA is a relatively new statute and has not “seen” much litigation, the Attiva decision clearly expands the DTSA’s reach and is expected to be relied on by other federal courts asked to rule along the same lines.   Additionally, the decision represents a significant shift in trade secrets law which may cause more plaintiffs to commence trade secrets misappropriation actions in federal court because:

• it allows for claims of trade secrets misappropriation to be brought under the DTSA at least in district courts “under” the Ninth Circuit even if the misappropriation began before the 2016 enactment of the DTSA;
• it expands potential liability for defendants of trade secret claims under the DTSA;
• it provides plaintiffs with protection where state statutes following the UTSA may not.

WE THANK YOU FOR READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE.  If you have any questions about trade secret misappropriation as either a potential plaintiff or defendant, contact us for a consultation.  Also contact us for a complimentary trade secret checklist to ensure you or your company are taking the appropriate steps to protect your trade secrets.

©2021

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

(305) 279-4740

The Trademark Modernization Act of 2020 (“TMA”) was signed into law by President Trump on Dec. 27, 2020 as part of the COVID-19 relief and government funding package.  This article summarizes the several significant benefits provided to trademark owners under the TMA.

1. Presumption of Irreparable Harm to a Trademark Owner by an Infringer

The TMA makes it easier for a trademark owner to obtain injunctive relief against an infringer. Prior to the new law, trademark owners were required to prove that they will be “irreparably harmed” if the infringer is not enjoined from further use of the infringing mark.  Now, as long as the owner can demonstrate infringement, the owner will enjoy a legal presumption that the harm caused by continued infringement will be irreparable, thereby increasing the owner’s likelihood of obtaining injunctive relief.   Many times, an owner’s main goal is simply to stop the infringement through injunction rather than proceed with an expensive drawn-out trial.  The TMA should help facilitate this objective.

2. Trademark Applications Originating from Outside the United States

A couple of years ago the United States Patent & Trademark Office (“USPTO”) made it an administrative requirement that foreign trademark applicants must be represented by a U.S. licensed attorney. This was done to help reduce fraud on the USPTO by some foreign applicants whose applications too often indicated that they were actually using their marks in the United States, a requirement under U.S. law, when in fact they were not.

The TMA now tackles this on-going problem legislatively.  Due to on-going concern regarding the proliferation of applications and registrations (particularly emanating from China) for trademarks that are not actually in use in United States commerce, the TMA also calls for the USPTO to implement new procedures that will allow third parties to more readily challenge pending applications and issued registrations that may be suspect.  Under current practice, challenges to pending applications are limited in scope, and challenges to registrations require costly cancellation proceedings.  The commentator has successfully represented clients in cancellation proceedings before the Trademark Trial and Appeal Board which generally involve adherence to the Federal Rules of Civil Procedure.   And yes, these proceedings can take a while to complete.

A potential bona fide trademark applicant may find that a third party has a registered mark that will likely prevent registration of the applicant’s mark on likelihood of confusion grounds.  The applicant could attempt to obtain cancellation of the registered mark, but again such a proceeding can be costly and take a long time.  The TMA provides streamlined procedure for challenging issued registrations.

The TMA also calls for a broadening of the scope of evidence that a third party may submit for consideration by the examining attorney during examination of another pending application (including evidence of non-use).  Both changes will help clear the way for legitimate trademark users to obtain registration of their marks.

Finally, the TMA requires the Government Accountability Office to conduct a study regarding the problem of false and inaccurate claims of use in trademark applications and registrations, and to report to Congress recommendations based on the results of the study as to any changes to trademark law that will improve the accuracy of the Trademark Register or reduce inaccurate or false claims of use.

3. Take-Home Points

• Foreign trademark applicants need to understand that the U.S.’s requirement for bona fide trademark use within the U.S. is a requirement for both obtaining registration of the mark and maintaining registration of the mark. Any foreign trademark applicant should utilize the services of a U.S. trademark attorney who will presumably require proof of usage in the U.S. as part of the documentation provided to the USPTO.
• Thanks to the TMA, trademark applicants now have more options to contest suspect registrations. This can be particularly beneficial to smaller business owners by reducing the overall costs involved.
• Thanks to the TMA, registered trademark owners need not prove irreparable harm to obtain an injunction providing the other elements are met. Again, this can be particularly beneficial to smaller business owners by reducing the overall costs involved.

Questions About Trademark Matters?

Contact Susan Troy at 305-279-4740 for legal matters involving trademark applications and trademark infringement.  We are here to serve you and answer your questions related to intellectual property & business law.  See her reviews at www.avvo.com where she has received Client’s Choice Badges for both 2019 and 2020.  She is also a registered patent attorney.

WE THANK YOU READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, CONSULT WITH AN ATTORNEY.

©2021

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

(305) 279-4740

Posted by Susan Dierenfeldt-Troy, Esq.

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

Patent claims may be rejected on anticipatory grounds under 35 U.S.C § 102 and/or on obviousness grounds under 35 U.S.C. § 103.  This blog discusses the USPTO’s obligations when making rejections on obviousness grounds, an area of patent law that can be particularly confusing as a November 9, 2020 decision by the CAFC demonstrates.

Background

In order for a reference to be proper for use in an obviousness rejection, the reference must be analogous art to the claimed invention.   This does not require that the reference be from the same field of endeavor as the claimed invention, in light of the Supreme Court’s instruction that “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.”  KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007).  Rather, a reference is analogous art to the claimed invention if:  (1) the reference is from the same field of endeavor (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention).   However, in order for a reference to be “reasonably pertinent” to the problem, it must “logically have commended itself to an inventor’s attention in considering the problem.”  In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).

The Case

These requirements were re-visited by the U.S. Court of Appeals (CAFC) in its Nov. 9, 2020 decision in Donner Technology, LLC v. Pro Stage Gear, LLC.  Donner had petitioned the Patent Trial & Appeal Board (PTAB) for an inter partes review (IPR) of U.S.  patent no. 6,459,023 (the ‘023 patent), asserting that the various claims of the ‘023 patent were obvious under 35 U.S.C. § 103 in view of U.S. Patent No. 3,504,311 (Mullen).  The ‘023 patent is directed to guitar effects pedals, electronic devices that affect the amplified sound of a guitar.  The specification explained that there was a need for “ ‘an improved pedals effect board which  allows easy positioning and changing of the individual guitar effects while providing a confined and secured area for cable routing and placement.’ ”

The Mullen reference related to electrical relays where an “ ‘object of the invention is to provide an improved support for supporting one or more relay structures and for providing wiring-channel space for receiving wires that would be connected to the relay structures to connect the relay structures in various controlled structures.’ ”  Donner contended that figures in the Muller patent depict a structure that is analogous to the structure claimed in the ‘023 patent which includes surfaces for mounting relays, cable connection openings, and areas for accommodating routing cables.

The PTAB found in favor of Pro Stage Gear, finding that Donner had not shown that Mullen falls within the scope of analogous art under either of the two tests.  On appeal to the CAFC, the parties did not dispute that the 023 patent and Mullen were not from the same field of endeavor.  The only issue on appeal was whether Mullen was “reasonably pertinent to one or more particular problems to which the ‘023 patent relates.”

The CAFC found that the PTAB had failed to establish whether it had meaningfully considered all of the evidence Donner had put forth, including expert testimony, to try and establish that Mullen was reasonably pertinent to the problems faced by the 023 patent’s inventor.   Additionally, the PTAB also failed to “properly identify and compare the purposes to which Mullen and the ’23 patent relate.”

Proper analysis requires that the “problems to which the claimed invention and reference relate must be identified and compared from the perspective of a person having ordinary skill in the art.”  Making conclusory statements without more is insufficient to determine whether a reference is analogous art.  Here, the PTAB merely asserted that the ordinary skilled person would have a “relatively low level of skill and would have had “a poor understanding of Mullen’s relay technology.”  Interestingly, the PTAB had acknowledged that there may be “ ‘pertinent similarities between Mullen and the ‘023 patent but concluded that those similarities, even if credited, did ‘not establish why a person of ordinary skill would have considered a reference from a different technology and time.’ ”  The CAFC disagreed, explaining that such a person may consult a reference.  The issue is not whether the person would have understood every last detail of a reference but “whether she understood portions of the reference relevant to solving the problem well enough to glean useful information.”

The CAFC concluded that the PTAB had applied the wrong analogous art standard.  It declined to hold that “no reasonable fact finder could conclude under the reasonably pertinent standard, that Mullen is not analogous art.”  Instead, it vacated the PTAB’s decision and remanded for consideration of the proper standard for analogous art.

Conclusion

Here is a simple example of analogous art.  An inventor files a patent application for a collapsible ski pole and the examining attorney cites analogous prior art for a collapsible tent pole patent. Here the tent pole patent would likely be reasonably pertinent to the problem the ski pole inventor was trying to solve: to provide less unwieldy, more readily transported poles.   Whether or not the ski pole will qualify for patent protection will depend on structural differences between the two poles and whether any ski pole structure would have been obvious over the prior art.

The patents at issue in the Donner matter of course involve more complex structures than the ski pole/tent example.  Whether or not Mullen, an invention from the 1970s, is reasonably pertinent to the problem the guitar pedal effects patent was trying to solve will now be assessed by the PTAB using evidence and expert testimony.   If yes, then the PTAB will evaluate whether the ‘023 patent is obvious over the Mullen patent.   Unfair in this situation? Is it likely that the ‘023 patent inventor found and “used” what was shown in the Mullen patent for a structure related to improving guitar effects pedals? The PTAB’s first decision suggested that it was not “pleased” with this particular IPR.  The 023 invention must have value in the market place for Donner to have spent the money involved so far on legal fees to try and invalidate the ‘023 patent.   Stay tuned for an update on the PTAB’s new decision.

Take Home Points

Whether dealing with the prosecution of a patent application or an IPR proceeding involving an existing patent, the USPTO must apply the appropriate standards in considering analogous prior art. Failure of the USPTO to do so during patent application prosecution can provide the patent applicant with the opportunity to try and overcome the USPTO’s reliance on the cited analogous prior art.  In an IPR proceeding, failure of the PTAB to properly apply the two analogous art tests may well result in an appeal of the matter to the CAFC as in the Donner Technology, LLC v. Pro Stage Gear, LLC matter by the losing party in the IPR proceeding.   

THANK YOU FOR YOUR INTEREST IN THIS BLOG.  AS USUAL THE CONTENT IS FOR   INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.

Call us at (305) 279-4740 for a complimentary consultation on matters related to obtaining patent protection or handling a legal dispute before the PTAB or the CAFC.  

May you and your loved ones stay safe & be well during these challenging times.

© 2020 by Troy & Schwartz, LLC

Picking a company name that meets the above criteria is often easier said than done.   The last thing a new company needs is a legal dispute involving the alleged infringement of someone else’s trademark.  Anybody who has been involved in a lawsuit understands that they are costly, stressful, and can take on a life of their own.  A registered trademark owner may of course give you the chance to comply with an initial cease and desist letter.  However, your compliance will generally require you to stop using the mark, transfer any domain name rights, etc.  The upshot?  You’ll have to start over in branding your business.

Here are some tips on getting your company off and running with a viable name.

1. Do a Google search on the name to see what other companies may already using the same or a similar name.
2. Do a search of your state’s corporate or limited liability company records in the states where the company will do business to see if anyone is using the same or similar name. Also check the state’s registered trademark records since some companies do obtain state-registered marks.  For Florida, this information can be found here.
3. Do a search of the U.S. Patent & Trademark Office (USPTO) for federal trademark registrations of your proposed name. Do not think that merely changing a letter in your proposed name or reversing the order words in a multi-word work will save you from a legal dispute with the owner of the registered mark.  Additionally, if you plan to file a trademark registration application for your company name with the USPTO, you should select a name that has a solid chance of meeting the USPTO’s trademark registration requirements.  This means that your mark must not be confusedly similar to a registered mark.
4. Do a search of domain name registrar websites such as GoDaddy.com to see if the domain name you want is available. Not only are domain names a necessity in today’s e-commerce world, but domain names also may have associated trademark rights.  Therefore, a minor change in the registered domain name, e.g., by registering the plural form (sABC) of the registered domain name (ABC) could result in a trademark dispute.
5. The best company name is one that is distinctive and memorable for both branding purposes and obtaining valuable registered trademark rights.
6. Come up with at least three names you like and get the reactions of trusted individuals.
7. If you plan to have a logo designed, ensure that there is a contract in place assigning all of the creator’s intellectual property rights to your company.
8. If you are a non-US company planning to expand into the United States, note that US trademark law will apply to you.
9. Watch out for cultural implications involving your mark if you plan to register it in other countries.
10. Consider having an intellectual property law attorney do a professional trademark search.

We are proud of the legal services we provide to our business and entrepreneurial clients on all matters related to trademark law.  Contact us at 305-279-4740 to discuss your questions on trademark law matters.   Doing things right the first time in selecting a company name and building your brand could save you some real headaches and a lot of money down the road.  

Troy & Schwartz, LLC

Attorneys-at-Law

Miami, Florida

Where Legal Meets Entrepreneurship™

This blog is for informational purposes only and does not constitute legal advice.