IP Law Daily, WORTH NOTING—Other IP law developments, (Jun 16, 2023)

By WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community.

PATENT—Fed. Cir.: A patent application claiming methods for displaying advertising content was properly rejected for obviousness, under 35 U.S.C. § 103 (pre-2011 version), in light of three prior-art references, the U.S. Court of Appeals for the Federal Circuit has determined in affirming a Patent Trial and Appeal Board decision. Representative claim 1 requires “a device” and a “second app installed on the device . . . [that] function[s] to display the advertising content as an overlay” to content being streamed on a display. The key prior-art reference, Hu, describes a method for a “content delivery system” that can perform a variety of functions, including overlaying an advertisement over content streamed on a display. The sole dispute on appeal turned on whether substantial evidence supported the Board’s finding that Hu teaches that the overlay module can be installed on a third device disclosed as a component of Hu’s content delivery system. Hu teaches that the third device itself can include “a third control unit,” which can “execute[] a third software” that “provides the intelligence of the content delivery system 100.” The examiner and the Board reasonably determined that this intelligence includes overlaying, performed by the overlay module as part of the intelligence that can be on the third device and the applicant offered no evidence to contradict this finding. The applicant also forfeited an argument about motivation to combine by failing to raise it before the Board (In Re: Universal Electronics, Inc., June 14, 2023, Taranto, R.).

TECHNOLOGY/INTERNET—11th Cir.: A Florida district court correctly ruled that Section 230 of the Communications Decency Act barred a defamation claim filed against Amazon.com by two individuals who operated a storefront on Amazon’s marketplace, according to the U.S. Court of Appeals in Atlanta. The sellers sought to hold Amazon liable for refusing to remove an allegedly defamatory review posted by an individual (also was named as a defendant) after they provided evidence contradicting the false statement that a scarf purchased on seller’s storefront was “fake” and not “authentic Burberry.” However, Amazon had no part in creating or developing the defamatory review and its customer feedback rules did make not Amazon responsible for content of the review. The sellers also sought to hold Amazon liable for failing to take down the objectionable review. However, that is “exactly the kind of claim that is immunized by the CDA—one that treats Amazon as the publisher of that information.” Finally, the district court did nor err in concluding that it lacked personal jurisdiction over the individual who posted the defamatory review from her home in Illinois. The mere fact that the individual knew that the sellers resided in Florida “was not sufficient to show that Florida was targeted as the focal point of the statements.” There was no allegation that the individual targeted Florida readers; the review was posted on Amazon, which was accessible in all 50 states (McCall v. Zotos, June 12, 2023, per curiam).

TRADEMARK—5th Cir.: In a breach of contract and trademark infringement suit, web hosting service provider GoDaddy.com was not entitled to compel production of a “pilot survey” and related documents created by an expert witness, who had been hired by website security services provider SiteLock to conduct a consumer survey to analyze whether GoDaddy’s alleged use of SiteLock’s trademark was likely to confuse customers, The U.S. Court of Appeals for the Fifth Circuit has determined. The “pilot survey” consisted of 20 questions sent to “between 50 and a hundred” people to determine “their understanding of the survey itself.” The expert used the pilot survey to hone the 17-question final survey she used as the basis for her report. GoDaddy argued that the pilot survey was a non-privileged “testing method or testing material” subject to disclosure under Federal Rule of Civil Procedure 26(a). after conducting an in camera review, a magistrate judge denied GoDaddy’s motion to compel production, concluding that the pilot survey constituted a “draft survey” that was protected from disclosure under Rule 26(b)(4)(B). The magistrate also denied GoDaddy’s request for production of certain communications between the expert and SiteLock’s attorneys. In overruling the GoDaddy’s objections, the district court discerned no error the magistrate judge’s findings. The district court’s “detailed order” overruling GoDaddy’s objections to the magistrate judge’s was neither arbitrary nor clearly unreasonable (SiteLock, L.L.C. v. GoDaddy.com, L.L.C., June 13, 2023, per curiam).

TRADEMARK—S.D.N.Y.: The federal district court in New York City has issued an amended opinion and order that supersedes a prior opinion and order the court issued on September 7, 2022. The amended opinion and order corrects citation errors in the original and does not modify the analysis or conclusion of the original (Solid 21, Inc. v. Richemont North America, Inc., June 14, 2023, Schofield, L.).

USPTO PATENT NEWS: The USPTO has issued a final rule modifying the patent rules of practice to require that a patent term adjustment statement regarding information disclosure statements be submitted on this USPTO form (PTO/SB/133) using the appropriate document code (PTA.IDS). The final rule applies to any statement under 37 CFR 1.704(d) filed on or after July 17, 2023. The use of the Office form and document code will streamline certain aspects of prosecution by more accurately capturing and accounting for the patent term adjustment statement without unnecessary back-and-forth between the Office and applicant. When an applicant uses the Office form and document code, the patent term adjustment computer program will be able to determine when the statement under 37 CFR 1.704(d)(1), as required for the “safe harbor” of 37 CFR 1.704(d), has been filed in the application. Applicants who submit their own statement under 37 CFR 1.704(d)(1) without using the Office form or the appropriate document code will need to request reconsideration of the patent term adjustment under 37 CFR 1.705(b) for the information disclosure statement to not be considered a failure to engage in reasonable efforts to conclude the prosecution (processing or examination) of the application (88 Fed. Reg. 39172, June 15, 2023).

USPTO PATENT NEWS: The USPTO on June 6 published a Request for Comments (RFC) in the Federal Register that seeks public feedback regarding the establishment of an additional United States Patent and Trademark Office (USPTO) regional office in the southeast region and four new community outreach offices as authorized by the Unleashing American Innovators Act of 2022. However, due to a publishing error, The Office has republished the RFC with an updated link to the electronic form for stakeholders wishing to submit comments. The Office has also extended the deadline for submission of comments from July 11, 2023 to July 17, 2023 (88 Fed. Reg. 38847, June 14, 2023).

Attorneys: James J. Lukas, Jr. (Greenberg Traurig, P.A.) for Universal Electronics, Inc. Omar Farooq Amin, USPTO, for Katherine K. Vidal. Nathan Michael Wheat (Murray Morin & Herman, PA) for Angela Zotos. Armen N. Nercessian (Fenwick & West, LLP) for Amazon.com, Inc. Patrick Alan Train-Gutierrez (McGrail & Bensinger LLP) for Solid 21, Inc. John Paul Margiotta (Fross Zelnick Lehrman & Zissu, PC) for Richemont North America, Inc. Thomas Graham Schultz (Kellogg, Hansen, Todd, Figel & Frederick, PLLC) for SiteLock, LLC and Rhonda Harper. Jeffrey M. Monhait (Cozen O'Connor, P.C.) for GoDaddy.com, LLC.

Companies: Universal Electronics, Inc.; Amazon.com, Inc.; Solid 21, Inc.; Richemont North America, Inc.; SiteLock, LLC; GoDaddy.com, LLC

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