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Intellectual Property Lawsuit Between Google/Waymo and Uber

Trial is moving forward in the Google/Waymo v. Uber intellectual property case. It has been thought that this lawsuit might help crown an early king of the self-driving vehicle industry, which Uber describes as potentially “the most lucrative business in history.”

In February 2017, Google spin-off Waymo sued Uber for misappropriation of trade secrets and patent infringement, stemming from the actions of former Google employee Anthony Levandowski. Levandowski was a high-level engineer in Google’s self-driving car division. He downloaded nearly 10GB of Google’s data – over 14,000 files – a few weeks before leaving Google to start his own company in January 2016. His company, Otto, was focused on autonomous truck technology. Just six months after he started the company, Uber acquired it for $680 million, and Levandowski was named to head Uber’s self-driving car work.

Not long after, one of Uber’s supplies mistakenly emailed information to Waymo about a circuit board Uber had ordered. Waymo looked at the board, thought it was a little too similar to the technology it had been working on while Levandowski was part of its team, and filed suit for a preliminary injunction against Uber.

A preliminary injunction is, essentially, a temporary restraining order. It is an order from a court temporarily preventing an entity from taking certain actions until more evidence can be gathered and a lawsuit filed (or not filed) or settlement reached. Here, Waymo requested that Uber’s work on self-driving cars be halted until Waymo could figure out possible damages and how to proceed next. Waymo won that injunction, showing a likelihood of prevailing in an eventual lawsuit and the danger of irreparable harm.

The case revolves primarily around LiDAR, which is a laser-based radar technology that allows a computer to map or “see” an environment. LiDAR has been used extensively for decades, but has recently come to prominence with autonomous vehicle developments. The trade secrets and patent claims revolve around this technology. The trade secrets claims rest, in part, on things like the designs for the printed circuit boards that Waymo developed, the position and orientation of the diodes and photodetectors on the boards, the selection and placement of optical elements for modifying LiDAR laser beams, and the laser pulse rate in the LiDAR system to create a precise resolution profile of objects in the environment. The patents (U.S. Patent Nos. 8,836,922, 9,368,273, and 9,086,273) also cover LiDAR technology. For instance, the ‘922 patent claims protection in a LiDAR device including a rotatable housing including transmit blocks and receive blocks, with a number of transmitters and detectors in them, such that light is emitted from the device and return light is gathered and collimated, or aligned, and focused back into the detectors. This technology assists in three-dimensional mapping of the environment.

Uber has several different types of LiDAR devices, and the patent claims reflected actions against them. However, in July, most of the patent claims were dropped after the judge encouraged the parties to narrow the issues, and after Uber stopped work on its “so-called” Spider technology on one of the LiDAR devices.

Last week, Waymo’s case grew more tenuous with the release of a due diligence report Uber commissioned before it acquired Otto. Although report includes dark details like Levandowski’s deletion of files and then destruction of the hard drives holding those files. Levandwoski tried to talk with Uber CEO Travis Kalanick about the hard drives, but Kalanick put up a brick wall to the discussion. Together with the report, documents regarding Uber’s designs were released, and even the judge noted that “the product is dissimilar. In many ways, it may be a vast improvement of what was going on at Waymo. So [Waymo has] come up a little short there.” In light of the documents release, trial, set to begin yesterday, has been postponed now to early December.



Are Federal Judges Disqualified From Hearing Cases Involving Trump Interests?

In 2016, Prospector Capital Partners sought to cancel a number of Donald Trump’s trademark  registrations (one of the design marks is shown to the right) for TRUMP in connection with golf courses, online retail store services featuring golf accessories, PACs, limo services, gambling services, lotion dispensers, jewelry, dress shirts, and various other goods and services. Prospector asserted that Trump had abandoned the trademark by failing to use them. Prospector did not quite set its claim correctly, however, and Trump was able to dismiss the cancellation on a technicality. The Trademark Trial and Appeal Board hearing the case granted Prospector a 20-day period to fix its error, however.

Rather than filing an amended petition to cancel, Prospector filed a motion to disqualify the entire Board on the basis that President Trump holds an interest in the trademark registrations and the judges are all appointed by the Secretary of Commerce, who serves under the President. Prospector suggested that, since Trump essentially has the ability to fire all of the judges, they could not be impartial.

The Board flatly rejected this suggestion.

First, it noted that the laws governing disqualifications of judges only apply to judges on courts. The TTAB judges are administrative judges on an administrative panel, wholly within the US Patent and Trademark Office. They are not judges on a court, and the laws pertaining to such judges therefore do not apply to them.

Second, it stated that government procedures are at least presumed to operate regularly and without improper motive.

Third, the Board countered that there were no facts indicating that the Board might be swayed by Trump’s ability to fire.

Fourth, the Board found that there was no statutory limitation in proceedings that it was incompetent to handle. Thus, the Board has the authority to determine rights of registration regardless of the owner of the registration. If such limitations were in place, the Board offered, whole classes of applicants, such as both high-level and low-level government executives, might find themselves without a forum to adjudicate their rights, which is “absurd.”

Finally, the Board highlighted the option Prospector has already: it can always appeal the Board’s decision in federal court. We’ll see if that happens….



Prompt Information Disclosure Statements

Applicants and agents appearing before the Patent Office are obligated by a duty of candor and disclosure to the Office. This means, when you file a patent application, you must continually update the contents of that application with anything that may be or become relevant to patentability. This most frequently arises in the form of submitting Information Disclosure Statement, or an IDS. An IDS is often submitted with the initial filing of an application; it will disclose a list of patents, patent application publications, foreign references, and non-patent literature that the applicant was aware of before filing, usually either because of a patentability search, pre-filing due diligence, or knowledge and experience in the industry. However, the duty to disclose relevant prior art continues during prosecution, and applicants will generally disclose prior art that surfaces. Failing to disclose does expose a patent that eventually issues from the application to the risk of invalidation.

IDSs submitted during prosecution are often spurred by parallel foreign prosecution. Because the US Patent Office can be quite slow in prosecution, foreign offices frequently will produce relevant prior art before the US. If a PCT application is filed, the International Searching Authority will usually provide its search report before the US Patent Office has begun examination. The results of such a search report should be disclosed in the US. Some foreign offices move very quickly, and examination results there should also be disclosed. This disclosure duty is not limited to prior art revealed before US examination; it continues throughout prosecution. And there are timing requirements for disclosure. The results of foreign offices should be disclosed within 3 months of production.



Firm Quoted in Newspaper Regarding Recycling

A few months ago, the firm was recognized as a Green Business Leader. Now the word is getting out. I was interviewed last week by the Arizona Republic regarding the program and recycling in Phoenix generally. You can see the article here.



Green Business Certification

This week the law firm was recognized as a Green Business by the City of Phoenix. We are the second law firm in Phoenix to be recognized for its efforts in diverting material away from area landfills. We emphasize all three important elements of reduce, reuse, and recycle to conserve resources here at the office.  We’re thrilled with the recognition, but more concerned that other businesses may be missing the opportunity to reduce their footprints.

If you’d like more information about our efforts or the efforts of the City of Phoenix, please give us a call and we’d be happy to talk with you about how you can help.



US Patent Application Filings Under the Paris Convention

A US patent application may be filed on a number of bases. Most applicants think of directly filing an original, non-provisional patent application in the US. However, roughly half of the patent applications actually are filed by non-US entities and have foreign priority claims. A foreign priority claim allows a later-filed application to adopt the filing date of an earlier-filed application, which can be valuable during examination of the application. A foreign priority claim is proper when the US application is filed under the Paris Convention or as a national phase entry under the Patent Cooperation Treaty.

When an applicant files a US application with a foreign priority claim, a copy of the foreign priority application must be submitted to the US Patent Office. The copy must be a certified copy, which means it has to be reviewed and stamped by the foreign patent office. Foreign priority documents do not need to be provided at the time of the filing, but they do need to be provided. So while timing is not of the essence, compliance is important.

There are two mechanisms for providing the priority documents. The first mechanism is simply filing and submitting the certified document with the US Patent Office. There are fees involved with obtaining a certified priority document, and it takes time to request the document, wait for it to arrive, and then ship it to the office.

The second mechanism uses the Priority Document Exchange program. Some patent offices around the world have subscribed to the PDX program, and if the earlier-filed application was filed in one of the countries, the applicant can request that the office of earlier filing electronically transmit the earlier-filed application to the office of later filing. Provided that foreign filing license and other requirements are complied with at the earlier office, that office will transmit the application. There is no governmental fee for such a request, and it can save considerable time and administrative work.



Food Truck Trademarks

No longer a trend, food trucks are here to stay as restaurant alternatives. Outside of my stomach, I have an academic interest in food trucks: they are great at branding (or they’re not great, and then they disappear) and present all sorts of trademarks issues. Food truck trademarks are great examples of unique branding that you don’t see in other industries so nearly ubiquitously.

At a festival, a concert, or any event that brings in a dozen or so food trucks, customers walk the rounds and often remember the truck with the best – or most outlandish – branding. Branding incorporates a number of things: paint schemes on the truck, structural elements or decorations, and of course, the name of the truck.

I often discover what type of food the truck actually serves long after I’ve been hit with its branding. Until I’m about 6 feet away, I can only see the truck, not the menu, which might be on a chalkboard, a sandwich board, or even just a piece of printed paper. This experience demonstrates to me that the image the truck presents is much more important in initially attracting the customer than the food itself.

You’ll see a whole variety of branding on food trucks. Some are vintage or retro – airstreams, simply-designed milk trucks. Some are insanely elaborate – decorated like real hamburgers or sushi rolls. Some have bright paint jobs, and some opt for flat matte schemes.

You’ll also see a wide range in names, from things like “That Food Truck” to “The Moose is Loose.” Perhaps it is obvious, but food truck names are incredibly important to their vitality because of the way they often advertise their location. On social media, it can be difficult to discern food trucks, and if a The Fry Guy truck says it will downtown at 3:00, but The Fry’s Guys truck says it will be midtown at lunch, you’re going to have some customers going to the wrong truck. If you’re the truck on the wrong side of this confusion, you’ll see some lost sales, maybe even no customers at all.

Food truck owners need to think about many things when launching, operating, and selling their food truck business, like:

1) Develop and protect a great name, logo, and/or slogan
Because the name is so crucial to a social media presence and the ability to advertise, food trucks have to give a great deal of thought about their names. This doesn’t just mean coming up with something catchy, it has to be protectable. If you can’t protect it, the name will become a liability. I’ve seen companies go out of business because they didn’t pick good names, and someone else with a similar job stole their customers. If a food truck starts with a bad name, it will battle uphill from the get-go to keep other trucks out of its space.

A food truck name should be clever, and it should not be descriptive of the food or the service provided. “The Food Truck” is not a good name for your business – it immediately describes the service, and protectable rights will almost certainly never vest with this business. That can represents a huge loss of value in a future sale of the business.

A food truck trademark should also be cleared by a professional trademark attorney. An attorney can give you an idea whether the name is appropriately distinct, but also whether there are similar names already registered. If there are, those other names may prevent you from protecting or even using your name.

The above goes for logos and slogans – if you’ve got a clever and distinct design or catchphrase, run it by a local trademark attorney to make cure it looks clean.

2) Develop and protect trade dress
You can protect the way your truck looks – the shape, the design, the paint scheme. If you’re planning to have several food trucks, or to franchise across states, trade dress protection could be a valuable way to prevent others from running a truck that looks like yours.

3) Use your branding correctly
This one is fairy easy for most food trucks. Placing the name on the outside of the truck, on menus, on your social media, all to advertise your food or your food truck services, is appropriate. Use your trademarks as an adjectives, not as nouns – call it “The Giant Donut foo  d truck,” not “The Giant Donut.”

4) Patrol your rights
Watch out for others using names similar to yours. Practically, you should be especially aggressive on social media. You don’t want anyone to start using a name similar to yours that might siphon customers, or might reduce your ability to signal to your loyal base where you’re stopping tomorrow afternoon. Beyond this, you need to make sure other businesses, restaurants, bars, aren’t using names like yours, and aren’t registering trademarks like yours. Cease and desist letters can be helpful ways to let other companies know they should pick a new name or change their existing name.

If you have other questions about food truck trademarks, contact a local trademark attorney, or Tom Galvani here.



What is a Notice of Allowance in a Patent Application?

A few posts ago I discussed trademark notices of allowance. On the patent side, a notice of allowance is a different instrument. It indicates that a patent application has been approved. When a patent application is filed, it is initially processed for formalities and then eventually examined by a patent examiner. The applicant works with the examiner to move prosecution of the application toward allowance. If an examiner issues a notice of allowance, that means that prosecution has, for all intents and purposes, ended and that the claims defining the scope of protection are allowable. The applicant and examiner, essentially, agree on the proper scope of protection.

However, a notice of allowance does not naturally result in the issuance of a patent. Rather, it indicates which claims can be allowed and the reasons they are allowable, or how they are different from the prior art. The notice of allowance provides a 3 month window in which the applicant can file final issue paperwork and pay the issue fees. If the paperwork and fees are lodged within that 3 month window, the patent should generally issue; if not, it will not.



Top Reasons a Patent Application Gets Rejected

There are many reasons a patent application can be rejected by the Patent Office.  Below are a few of the main reasons it could be:

  1. Invention is Obvious. “Obvious” is a technical term in the patent world. It does not indicate that the invention is obvious in the ordinary sense of the world. The test is slightly more objective than that: It means that a single reference, or the combination of several prior art references, renders the invention obvious. In other words, the invention’s claimed elements can also be found in the prior art and there is some reason to combine those claimed elements together to form or build your invention. This rejection gets made frequently and can be difficult to overcome.
  2. Lack of Novelty. A finding of novelty means there is no single reference – a past patent, application, disclosure, article, product, etc. – which is essentially the same as the claimed invention. Novelty is a problem if an invention is too close to a single something which has been done before. Novelty is different than non-obviousness, because while an obviousness rejection can be built on the combination of several references, a novelty rejection must rely on just one reference.
  3. Claims Written Incorrectly. This can be a big problem for the pro se applicant, an inventor that represents himself or herself. Claims are incredibly difficult and demanding to write – the Supreme Court itself has stated that patent claims represent the most demanding legal instrument to draft. There are a number of pitfalls when writing claims. If the claims are not punctuated correctly, they will be rejected. If the claims discuss elements that aren’t properly introduced, they will get rejected. If the claims are directed to material not discussed in the written description, they will get rejected. If the claims are directed to material not identified in the drawings, they will get rejected. If the claims use terms inconsistently, or refer to features or arrangements in the alternative, they will get rejected. If the claims are not written in a proper dependent form, they will get rejected, or may incur expensive surcharges. The claims are a potential minefield of rejections.
  4. Issues with the Drawings. Patent drawings used to have formal, rigid requirements. Many of those requirements have been loosened, but there are still a number of ways the drawings can create problems. Introduction of shading, greys, or colors will often lead to a rejection. Stray marks, blurry lines, and smudges will cause problems. If a drawing is indicated as having only pure black-and-white marks, but actually contains some grey (even grey that looks entirely black), the drawing quality will be extremely reduced when the application is published, and this can lead to a rejection.
  5. Issues with the Written Description. The written description provides support for the claims. Without adequate support, the claims cannot mature into any grant of protection. A lack of written description support can manifest in a few main ways. First, the written description may not disclose the best mode of the invention. Although this requirement has changed over the past few years, the best embodiment, or best way, of practicing the invention must be disclosed somewhere in the application. Second, the written description may fail to describe how the invention is made and used. The written description has to describe the invention with sufficient specificity such that someone skilled in the relevant industry could make and use the invention. Third, the written description must be of sufficient detail so as to clearly convey to the public that the inventor has actually invented the claimed subject matter and was in possession of the invention.
  6. Invention is for Non-Patentable Subject Matter. This rejection arises infrequently, but when it does, it is difficult to overcome. Most things are patentable. But some just aren’t. For example, you cannot patent the law of gravity, or a mathematical formula, or a method of organizing human behavior. Such rejections frequently arise in the context of software applications; software applications and processes used to be largely patentable, but the Supreme Court eroded much of their eligibility for patenting in the first half of the 2010s.


WTC Sues Ironman For Kids for Trademark Infringement

The Tampa-based Word Triathlon Corporation, owner and licensor of the IRONMAN, M DOT, and various Ironman-related trademarks, has sued a San Antonio, Texas company for using the domain name “ironmanforkids.com.”

Beyond the famous IRONMAN trademark, WTC owns the trademark for IRONKIDS and many other IRON-formative marks. My own daughter has done a couple of these IronKids fun-runs before my races. WTC alleged trademark infringement and tarnishment of its reputation. Ironman For Kids apparently seeks donations to help children. WTC likely isn’t complaining of the fact of the charity, but rather that charities outside of its selection were identified as beneficiaries; the World Triathlon Corporation often selects designated charities for certain races, so that one or a few specific charities receive a benefit from one community by design.

WTC had sent a cease-and-desist letter before filing suit, but the recipient refused to budge and instead offered to sell the domain to WTC. Such actions can often prove to be incredibly damaging, as may be considered evidence of a bad faith registration, done merely to extract a premium from a trademark owner.

Often, a UDRP proceeding is a common mechanism for taking down or transferring a domain name. I ran a search through WIPO and FORUM – the two arbitration bodies for UDRP disputes – and found no history of any cases. Thus, it appears that WTC did not seek to have the domain name taken down and transferred, but instead opted to file suit directly.