Tuesday, August 8, 2023
Universal Life Church Monastery Storehouse v. American Marriage Ministries, No. 22-1744, Courtroom 201
American Marriage Ministries ("AMM") filed a Notice of Opposition of Universal Life Church Monastery Storehouse's ("ULC") application to register the GET ORDAINED trademark in connection with Class 35 (online retail store) and 45 (ecclesiastical) services. The opposition was based on several grounds including that the mark was "merely descriptive," "generic," "comprise[d] matter that, as a whole, [was] functional," "failed to function as a mark," "not inherently distinctive," and, fraud. The Trademark Trial and Appeal Board dismissed the fraud and functionality claims. The remaining claims were reviewed at trial. After trial, the Board found that GET ORDAINED was descriptive "without proof of acquired distinctiveness" and failed to function as a mark in connection with ULC's services. Specifically, "[b]ecause 'get ordained' is so commonly used in the field of ministerial ordination . . . for its ordinary meaning, i.e., 'become ordained' or 'become a minister,' consumers will not perceive the phrase as a source indicator pointing uniquely" to ULC. The Board did not address whether GET ORDAINED was generic, because it sustained the opposition on other grounds. ULC appealed.
On appeal, ULC argues the Board erred in finding that the GET ORDAINED mark was merely descriptive in connection to "Class 35 services because AMM did not raise that claim at trial," thus, waiving the claim. ULC also argues that "[t]he Board's threadbare analysis of Class 35 services . . . was not supported by any record evidence," and that "the Board applied a mistaken legal framework in analyzing mere descriptiveness." ULC further argues that the Board erred in concluding that GET ORDAINED failed to function as a mark of the Class 35 services for similar reasons stated above—AMM failed to raise the claim at trial, the Board failed to address GET ORDAINED in the context of Class 35 services, and "the Board's factual conclusions were unsupported by substantial record evidence." Thus, ULC concludes that the Board's decision to not register GET ORDAINED should be reversed; or, alternatively, remanded so that the proper legal framework can be applied in connection to Class 35 services.
AMM responds that the Board did not err in its analysis, and "correctly and logically found that the phrase 'get ordained' is descriptive of the claimed services, which all relate to getting ordained, and that GET ORDAINED fails to function as a trademark when used in connection with offering these services." Further, AMM asserts that ULC "argu[es] for the first time on appeal that the evidence should be regarded differently" for the Class 35 versus Class 45 services. AMM notes that it contested ULC's GET ORDAINED trademark application with respect to all services; thus, ULC's waiver argument fails. In addition, AMM asserts that "[a]t no point during the opposition proceeding did ULC file a motion to divide its multi-class application into separate applications, as it could have done." Overall, AMM agrees with the legal standard the Board applied and that the Board's decision denying registration for both classes should be affirmed.
Thursday, August 10, 2023
Masimo Corporation v. Apple, Inc., No. 22-1972, Courtroom 201
Apple, Inc. filed four petitions for inter partes review (IPR), covering four Masimo Corporation patents, on 35 U.S.C. § 103 grounds. The four patents, U.S. Patent Nos. 10,624,564 ("the '564 patent"); 10,702,194 ("the '194 patent"); 10,702,195 ("the '195 patent"); and 10,709,366 ("the '366 patent") involve Masimo's Rainbow® technology relating to data collection systems including noninvasive sensors that communicate with patient monitors. The Patent Trial and Appeal Board determined that all the challenged claims were unpatentable based on combinations of prior art references and Apple's expert's declaration describing the combinations. Masimo appealed.
On appeal, Masimo argues that the Board erred in invalidating the patent claims with "[t]he consistent thread across those decisions" being "a willingness to disregard the four corners of the references." Specifically, Masimo argues that "the Board did not reconcile Apple's expert's admissions, the teachings in the prior art, and the Board's own findings" regarding one combination of references. In addition, Masimo asserts that, for another combination of references, that the prior art and expert testimony established the opposite of what the Board found. Masimo concludes that the Board's decision should be reversed.
Apple responds by asserting that "Masimo's arguments on appeal relate to factual determinations," and thus, the substantial evidence standard applies. Apple, further contends that the Board's findings are supported by substantial evidence, and that "Masimo's substantive rebuttals on these issues all suffer the same fatal flaw—in each instance, the Board found Apple's expert testimony more credible than Masimo's." Apple reminds the Court that the Board determines questions of fact; and, that the Court should not re-weigh the facts. Apple concludes that the Board's decision should be affirmed.
Thursday, August 10, 2023
HLFIP Holding, Inc. v. York County, PA, No. 22-1940, Courtroom 201
HLFIP Holding, Inc. filed suit against York County, Pennsylvania in the Middle District of Pennsylvania, alleging infringement of U.S. Patent No. 10,291,617 ("the '617 patent"). Specifically, the alleged infringement involved HLFIP's patented MailGuard technology, which "provide[s] services and technology to eliminate the original postal mail addressed to inmates . . . by scanning the mail and distributing it electronically to inmates." York County moved for judgment on the pleadings, asserting "that the patent at issue claims patent-ineligible subject matter pursuant to 35 U.S.C. § 101." The court applied the Alice test. For step one, the court found that because "the claim limitations here recite the conventional, historically manual method of processing inmate mail, screening it for contraband, and distributing it to inmates," claim 1 is directed to an abstract idea. For step two, the court expressed that "restat[ing] known, conventional steps, but doing so on a computer, is insufficient to transform the claims—otherwise directed to an abstract idea—into an inventive application." Overall, the court found that the '617 patent was invalid under 35 U.S.C. § 101 and granted York County's motion. HLFIP appealed.
On appeal, HLFIP argues that the district court erred in its application of the Alice test. For step one, the court "[i]gnored or overlooked" specific claim elements and oversimplified the language of claim 1. Further, the court "[i]gnored or overlooked" evidence that the patented processes "are impossible to perform manually, deciding disputed issues of material fact . . . incorrectly." For step two, HLFIP argues that the court erred by not "properly considering each limitation of the patent claim" and by overlooking "unconventional claim elements" that constituted "a patentable improvement in the art." HLFIP asserts that the question of whether the elements of claim 1 are directed to a conventional method is a question of fact. Finally, HLFIP argues that it "may be appropriate to bypass" Alice step one "when it is clear that an inventive concept is present." Overall, HLFIP concludes that the district court's decision should be reversed.
York Country responds to HLFIP's Alice step one argument by asserting that the technology described in the patent "is a fundamental human practice." Moreover, the '617 patent fails to "improve the functioning of a computer." For Alice step two, York County argues that "[t]he claims lack an inventive concept." Overall, York County agrees with the district court's analysis; specifically, that the court did not oversimplify the '617 patent claims. Further, "the limitations purportedly ignored by the district court are legally insufficient to confer" subject matter eligibility anyway. With respect to the issue of disputed questions of fact, York County argues that § 101 matters are often "resolved on a Rule 12(b)(6) or (c) motion where the undisputed facts . . . require a holding of ineligibility." York County concludes that the Federal Circuit should affirm the district court's decision.
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