Changes in Patent / Trademark Law

The fields of patent law and trademark law are continually evolving. By monitoring these changes on a weekly basis, our attorneys are able to mold strategies that are in line with the current state of the law. Below are some of latest decisions from the Federal Circuit and the Supreme Court with precedential importance.

At issue is whether an assignment of a patent deprived the original owner from the right to sue. The court stated that “where an exclusive license transfers less than ‘all substantial rights’ in the patents to the exclusive licensee, the exclusive licensee may still be permitted to bring suit against infringers, but the patent owner is an indispensable party who must be joined.” In this case, the original patent owner gave an exclusive license to a patent and subsequently attempted to bring suit using the licensed patent. “Either the licensor did not transfer ‘all substantial rights’ to the exclusive licensee, in which case the licensor remains the owner of the patent and retains the right to sue for infringement, or the licensor did transfer “all substantial rights” to the exclusive licensee, in which case the licensee becomes the owner of the patent for standing purposes and gains the right to sue on its own.”

In this case, one party copied claims from another patent in order to invoke an interference hearing. At issue was which disclosure should be used to construe the claims? The decision stated that “when a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language.”

At issue were a set of claims ruled invalid under the enablement requirement. 35 USC 112 states the enablement rule as “[t]he specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” The specification of a patent must teach one of ordinary skill in the art how to make and use an invention without undue experimentation. Reasonable experimentation does not preclude one from obtaining a patent. The decision then provided the factors in determining undue experimentation: “(1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.”

Some claims for a reissued patent were invalidated based on the rule of recapture. As the court noted, “[u]nder the rule against recapture, a patentee’s reissue claims are invalid when the patentee broadens the scope of a claim in reissue to cover subject matter that he surrendered during prosecution of the original claims.” Therefore, if during prosecution of the original set of claims, the applicant deliberately withdraws, abandons, or amends a set of claims, the applicant is not entitled to recapture the subject matter during a reissue.
The court applied a three part test to apply the rule against recapture: “[f[irst, the court construes the reissued claims to ‘determine whether and in what ‘aspect’ the reissue claims are broader than the [original] patent claims.’ Second, if the reissue claims are broader, the court determines whether the patentee surrendered subject matter and ‘whether the broader aspects of the reissued claim relate to [the] surrendered subject matter.’ To determine whether a patentee surrendered subject matter, we ask ‘whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee’s amendment or argument was to overcome prior art and secure the patent.’ If the patentee surrendered by argument, he must clearly and unmistakably argue that his invention does not cover certain subject matter to overcome an examiner’s rejection based on prior art. Third, a court must ‘determine whether the reissued claims were materially narrowed in other respects to avoid the recapture rule.’”

One issue in this case was a finding of actual reduction to practice. “’In order to establish an actual reduction to practice, the inventor must prove that: (1) he constructed an embodiment or performed a process that met all the limitations of the interference count; and (2) he determined that the invention would work for its intended purpose.’ Cooper v. Goldfarb,154 F.3d 1321, 1327 (Fed. Cir. 1998). The inventor must also ‘contemporaneously appreciate that the embodiment worked and that it met all the limitations of the interference count.’ Id. With the exception of very simple inventions (which pulse oximetry is manifestly not), demonstration that the invention works for its intended purpose requires testing. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996). As the junior party to the interference, Yorkey had the burden of proof of establishing actual reduction to practice by a preponderance of the evidence. 37 C.F.R. § 41.121(b) & 41.207(a)(2); see also Bosies v. Benedict, 27 F.3d 539, 541 (Fed. Cir. 1994).”

Appellant was arguing that preamble language “for permitting” should have been construed as a limitation on the scope of the claims. “The preamble language indicates that the intended use of the scratch-off labels was ‘for permitting a user to write thereon without the use of a marking implement.’ But use descriptions such as this are rarely treated as claim limitations. As we said in Bicon, Inc. v. Straumann Co., ‘[p]reamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim.’ For apparatus claims, such as those in the ’448 patent, generally patentability ‘depends on the claimed structure, not on the use or purpose of that structure.’ Catalina Marketing Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). Here, the preamble language only added an intended use, namely, that the scratch-off layer may be used for writing.”

At issue is infringement based on a design patent. “If the patented design is primarily functional rather than ornamental, the patent is invalid. However, when the design also contains ornamental aspects, it is entitled to a design patent whose scope is limited to those aspects alone and does not extend to any functional elements of the claimed article… Richardson’s multi-function tool comprises several elements that are driven purely by utility. As the district court noted, elements such as the handle, the hammer-head, the jaw, and the crowbar are dictated by their functional purpose… those are purely functional elements whose utility has been known and used in the art for well over a century.” With regards to infringement “design patent infringement is a question of fact, which a patentee must prove by a preponderance of the evidence.”

Two patents for Ajinomoto were affirmed invalid under 35 USC 112 for failing to comply with the best mode requirement and one patent unenforceable due to inequitable conduct. “To satisfy the best mode requirement, an inventor must disclose the preferred embodiment of his invention as well as preferences that materially affect the properties of the invention. The disclosure requirement, however, is limited to ‘the invention defined by the claims.’ Subject matter outside the scope of the claims falls outside of the best mode requirement”. After defining the invention, there is then a two-prong inquiry to determine compliance with the best mode requirement. “First, the court must determine whether, at the time the patent application was filed, the inventor possessed a best mode of practicing the claimed invention. United States Gypsum Co. v. Nat’l Gypsum Co., 74 F.3d 1209, 1212 (Fed. Cir. 1996). This prong is highly subjective; it focuses on the inventor’s own personal preferences as of the application’s filing date. N. Telecom, 215 F.3d at 1286. Second, if the inventor has a subjective preference for one mode over all others, the court must then determine whether the inventor 'concealed' the preferred mode from the public.”

Echostar aka Dish Network was found to violate several of Tivo’s patents relating to DVR software functionality. A permanent injunction was issued and Echostar was found to be in violation of the injunction. On appeal, the Court found that Echostar had successfully designed around the claims of the prior action and that Tivo instead was pursuing the injunction on “entirely different from the theories, evidence, and positions in the contempt proceeding. Tivo should not be able to bootstrap its new, previously abandoned infringement theory to that verdict. If Tivo believes that Echostar’s new design still infringes its patent, it should file a new infringement suit, not attempt to short circuit a full proceeding. In its current form, this decision discourages good faith efforts to design around an infringement verdict.”

Apple Inc. has filed suit against rival phone maker HTC for infringing upon 20 patents issued to Apple. The patents at issue include patents: 7362331, 7479949, 7657849, 7469381, 5920726, 7633076, 5848105, 7383453, 5455599, 6424354, 5915131, 6343263, 5969705, 5946647, 5929852, 5566337, 6275983, 5519867, and 5481721. It remains to be seen whether the patents will be upheld in court.

The case regarded the ruling of invalidity of patents 5,803,501 and 6,142,532 due to obviousness. The court affirmed the ruling. The patents related to sports memorabilia cards that included trading cards with a piece of memorabilia related to the photograph of the person. The prior art included: “ (a) a trading card with a picture of Marilyn Monroe and a diamond attached to the card (“Monroe”); (b) a piece of a sheet purportedly slept on by one of the Beatles attached to a copy of a letter on Whittier Hotel stationery declaring authenticity (“Whittier”); (c) a piece of fabric purportedly belonging to a Capuchin Friar named Stephen Eckert attached to paper stock including a picture of the friar (“Eckert”); and (d) a greeting card fashioned to look like a novelty item that ostensibly includes a piece of jeans material belonging to James Dean (“Dean”).” Defendants tried to argue that the prior art was unrelated to sports trading cards. However, the “Defendants submitted testimony that a trading card designer of ordinary skill routinely used the concepts found in other card industries for trading cards.” Accordingly, the court ruled that “Media Tech’s assertion that a person of ordinary skill would not have combined the references—or applied them to a sports card—must fail.”

At issue was design patent infringement. The Court stated that the ‘point of novelty’ test should not be used in the analysis of a claim of design patent infringement. Instead, the ‘ordinary observer’ test is the only test for determining whether a design patent has been infringed. The ordinary observer test is also the test for anticipation. The ordinary observer test states that “in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other…. When the differences between the claimed and accused design are viewed in light of the prior art, the attention of the hypothetical ordinary observer will be drawn to those aspects of the claimed design that differ from the prior art. And when the claimed design is close to the prior art designs, small differences between the accused design and the claimed design are likely to be important to the eye of the hypothetical ordinary observer”.

The Court conducted an obviousness examination of the claims of Perfect Web’s patent which were previously ruled to be obvious. The Court stated that “the Supreme Court observed that common sense can be a source of reasons to combine or modify prior art references to achieve the patented invention”. Common sense does not require a “specific hint or suggestion in a particular reference,” only a reasoned explanation that avoids conclusory generalizations. An obviousness inquiry may look to market forces, design incentives, the interrelated teachings of multiple patents, any need or problem known in the field at the time of the invention and addressed by the patent, and the background knowledge, creativity, and common sense of the person of ordinary skill.
“…we find that the predicate evidence on which the district court based its ‘common sense’ reasoning appears in the record, namely the facts that step (D) merely involves repeating earlier steps, and that a marketer could repeat those steps, if desired…. In claim 1, steps (A)-(C) involve targeting a group of recipients, sending e-mail to those recipients, and calculating the number of successfully delivered e-mails. Perfect Web concedes that prior art references disclose these three steps. Step (D), the only remaining step, recites ‘repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.’ Thus, this last step, and the claim as a whole, simply recites repetition of a known procedure until success is achieved. Recognizing this, the district court explained: ‘If 100 e-mail deliveries were ordered, and the first transmission delivered only 95, common sense dictates that one should try again. One could do little else.’”

Back on October 31, 2007, the USPTO sought to introduce a set of new rules to limit claims filed in an application, number of continuations, RCEs, etc. These new rules were meet with an injunction the day the rules were to come into effect and have since been in litigation limbo on appeal. Many thought these rules were overly restrictive and would ripple change throughout the patent system. This decision dismisses the action as the USPTO has decided to withdraw the new rules. Whether the USPTO seeks to introduce modified rules in the future or will look to Congress remains to be seen. It appears that there will be no new rules in the immediate future.

Today oral arguments are being presented to the Justices of the Supreme Court in this very highly anticipated decision.

The Court ruled that the mark Mattress.com was generic. The simple addition of the ".com" to a generic term did not provide any additional meaning. "The relevant public would understand MATTRESS.COM to refer to a commercial website for selling mattresses, the key focus of the services."

Several federal reserve banks did not infringe a software company's check counterfitting invention by was of the banks' association and ultimate use of the invention by the federal treasury. As such, the use of the patent/invention was held to be "by or for the United States" and under 28 U.S.C. §1498(a), the infringement action could only be brought in federal court.

A patent that was the subject of an infringement litigation was invalidated because the patent did not meet the enablement requirement. Specifically, the application did not provide a specific utility. "The enablement requirement of 35 U.S.C. § 112, ¶ 1 requires that the specification adequately discloses to one skilled in the relevant art how to make, or in the case of a process, how to carry out, the claimed invention without undue experimentation. The utility requirement of 35 U.S.C. § 101 mandates that any patentable invention be useful and, accordingly, the subject matter of the claim must be operable. If a patent claim fails to meet the utility requirement because it is not useful or operative, then it also fails to meet the how-to-use aspect of the enablement requirement." The utility requirement eliminates the ability to patent research proposals or general ideas. Here the application noted a drugs usefulness in treating amnesia, but the patented drug was for treating Alzheimer's. Because the utility for treating Alzheimer's was not disclosed, the Court held the patent did not contain sufficient enablement. Animal studies were conducted after the application was filed.

At issue is when a document is publicly available to be cited for a prior art rejection. The inventor copyrighted a document containing the same information as the patent application which was filed over one year after the copyright. The Copyright Office retained a copy of the manuscript in Washington, D.C., that was available upon request to be inspected by the public. Precedent was discussed, whereby materials in a library that were not shelved or indexed were not considered prior art whereas other materials that had been shelved and indexed were considered prior art. "[I]n this case, any member of the public who submits a proper request is capable of gaining access to the manuscript without any need for special authorization. Second, we have previously recognized that a reference can be considered publicly accessible even if gaining access to it might require a significant amount of travel... Users of the Westlaw and Dialog databases could perform keyword searches of the titles, but not the full texts, of the works." However, because no date could be shown as to when the searchable databases contained the manuscript, the court reversed the rejection.

The court applied a Bilski reasoning to determine if a patent fell within statutory patentable subject matter. "A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. The machine-or-transformation test is a 'two-branched inquiry,' i.e., the patentee 'may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article.' The machine-or-transformation test has two further aspects: 'the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope to impart patent-eligibility,' and 'the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity.' Bilski, 545 F.3d at 961-62. 'This transformation must be central to the purpose of the claimed process.'" The Court found that the "transformation is of the human body following administration of a drug and the various chemical and physical changes of the drug’s metabolites that enable their concentrations to be determined. Because the claimed methods meet the transformation prong under Bilski, we do not consider whether they also meet the machine prong." The claims related to methods of treatment which the court found to be a transformation. Specifically, the claims contained a step for determining metabolite levels within the body which fell within the transformation step. The court ruled that this was not mere data gathering, "[m]easuring the levels of 6-TG and 6-MMP is what enables possible adjustments to thiopurine drug dosage to be detected for optimizing efficacy or reducing toxicity during a course of treatment." There were further administrating steps also discussed.

At issue was a res judicata action that prevents one from bringing action on a matter that has already been litigated. "For claim preclusion in a patent case, an accused infringer must show that the accused product or process in the second suit is 'essentially the same' as the accused product or process in the first suit. 'Colorable changes in an infringing device or changes unrelated to the limitations in the claim of the patent would not present a new cause of action.'" In this case, the product evolved and was improved over time, however the defense maintained that the claim limitations at issue were the same as those used in the first action. Since the product remained materially identical and the claims were similar, the second action was not permitted.

Bose initiated trademark application cancellation action for the HEXAWAVE mark because of likelihood of confusion with the Bose WAVE mark. Hexawave counter-claimed stating that Bose fraudulently renewed its mark claiming use of the mark on goods that were no longer manufactured or sold. “A trademark applicant commits fraud in procuring a registration when it makes material representations of fact in its declaration which it knows or should know to be false or misleading.” However, the clarified that the "should know" erroneously lowered the fraud standard, because this standard would then become a negligence standard and negligence is not sufficient for a finding of fraud. The affidavit claiming use of the goods was signed knowing that the goods were no longer sold, but under knowledge that the goods were still being repaired and these repairs were made "in commerce". The court stated "[t]here is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive. Sullivan testified under oath that he believed the statement was true at the time he signed the renewal application."

A previous decision dismissed with prejudice the prosecution's infringement claims and the defendants counter-claims with each party responsible for their own attorney fees. The defendant however sought to recover attorney fees. “The determination of whether a case is exceptional and, thus, eligible for an award of attorney fees under § 285 is a two-step process. First, the district court must determine whether a case is exceptional, a factual determination reviewed for clear error. After determining that a case is exceptional, the district court must determine whether attorney fees are appropriate, a determination that we review for an abuse of discretion. A district court abuses its discretion when its decision is based on clearly erroneous findings of fact, is based on erroneous interpretations of the law, or is clearly unreasonable, arbitrary or fanciful.” The court found no exceptionality and thus no attorney fees were rewarded.

The Court conducted an obviousness analysis in line with the KSR ruling. "When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." "First, an invention would not have been obvious to try when the inventor would have had to try all possibilities in a field unreduced by direction of the prior art." In other words, KSR required that the number of possibilities be "small or easily traversed". "Second, an invention is not obvious to try where vague prior art does not guide an inventor toward a particular solution."

At issue is what constitutes a bar date for an action submitted by the USPTO. A Board order denying request for rehearing was decided on May 30, 2008 but not mailed until June 2, 2008. An Appeal was filed on August 1, 2008. The Court determined that the mail date of June 2, 2008 began the timeline for submitting the subsequent response and not the decision date of May 30, 2008. "[O]nly when an opinion is released to the public (or at least the parties) is it truly decided...."

The service mark hotels.com was denied registration because the mark was generic for the services it represented and because the mark had not acquired distinctiveness. The court stated that the term "dot com" does not convert the generic term "hotel" into a brand name. "A generic term is the common name for the genus of goods or services being sold." Descriptive terms describe a thing whereas generic terms name it. The word hotel was found to be a key component of the applicant's services and that the words hotel and dot com did not produce a new meaning in combination.

In this case, inventorship, specifically conception of the invention, was at issue. Conception "is the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice." Conception occurs when the inventor has a definite idea that allows one of ordinary skill in the art to understand the invention. Thus, the inventor has to have a complete mental picture, but the inventor does not need to know if the invention works at the time of conception (see reduction to practice). For a joint invention, "each inventor must contribute to the joint arrival at a definite and permanent idea of the invention as it will be used in practice." The court found that only two of the inventors conceived the idea and the others merely assisted in reducing it to practice and thus they could be removed as inventors.

At issue was a trademark application's false connection with "persons, living or dead, institutions, beliefs, or national symbols". Specifically, the issue before the Court was whether the Shinnecock Indian Nation is to be classified as an institution. The Court found that the Shinnecock Indian Nation should be classified as an institution as the term is "broad enough to include a self-governing Indian nation."

This case is a simple reminder why patent assignments are necessary. Both University of Pittsburgh ("Pitt") and Carnegie Mellon had rights to the same patent. Pitt attempted to enforce those rights again Varian without joining Carnegie Mellon in the suit. Varian had the suit dismissed since Carnegie Mellon was not joined in the suit. Appeal had to be made to the Federal Circuit to get Carnegie Mellon joined into the suit.

The Supreme Court has elected to review the Bilski decision by the Federal Circuit. At issue are the validity of business method patents and the proper test to be used in determining patent eligible subject matter. Read more at our blog: LAPatentGroupBlog

At issue is claim construction. Specifically, whether the term "data acquisition unit" refers to a single structure or an assemblage of inter-related components. The court found support for multiple structures by looking at other claims whereby "the separate recitation of a physiological monitor in claim 29 and the recitation of 'removably secured' elements in claim 7 can be read to suggest persuasively that the data acquisition unit may be multiple structures." The court also found support for multiple structures in the specificaiton.

At issue are "have made" rights in a patent license. The license agreement did not explicitly provide a right to have the licensed product made by a third party. The license agreement forbid the licensee from assign, sublicensing, or transferring any rights to a third party and the licensor was entitled to all rights not expressly granted to licensee. However, the license did provide that the licensee owns a technological improvement by a third party whose services have been contracted by licensee. The issue was whether the licensee was in breach by contracting a third party to make the product of the license. The court found that the licensee was entitled to contract third parties to make the product and did not breach the license in doing so. "The right to 'make, use, and sell' a product inherently includes the right to have it made by a third party, absent a clear indication of intent to the contrary." The court did note that the state contract law governs in these matters, but that no such precedent existed in the state governing the license. "[A] right to have made is not a sublicense, as the contractor who makes for the licensee does not receive a sublicense from the licensee."The court also found no intent to exclude "have made" rights from third parties.

Teva attempted to market a generic version of a P&G patented osteoporosis compound. Teva claimed the P&G patent was invalid in light of a prior P&G patent disclosing structural properties similar to the patent at issue. To prove obviousness, one of ordinary skill in the art would have selected the prior art compound claimed to have the structural similarities as a lead compound as there were multiple compounds disclosed in the prior patent. Then, "at the time of invention, a person having ordinary skill in the art would have had 'reason to attempt to make the composition' known as risedronate and 'a reasonable expectation of success in doing so'". However, there were structural differences in the compounds and the Court found that there was no support in the prior art to suggest making the modifications to yield the compound of the patent at issue. The Court also found that even if the modification was obvious, there was "an insufficient showing that a person of ordinary skill in the art would have had a 'reasonable expectation of success' in synthesizing and testing risedronate." As stated in KSR, "[w]hen a person of ordinary skill is faced with 'a finite number of identified, predictable solutions' to a problem and pursues 'the known options within his or her technical grasp,' the resulting discovery 'is likely the product not of innovation but of ordinary skill and common sense.'" The Court found that even if Teva could establish a prima facia case of obviousness, P&G introduced sufficient evidence of unexpected results to overcome the showing of obviousness.

A continuation application was rejected under reference patents with a single common inventor by way of obviousness double patenting. The Examiner applied a one-way test to reject the claims for obviousness-type or non-statutory double patenting. Applicant attempted to overcome the rejections by claiming that the Examiner should have applied the two-way test for obviousness-type double patenting. The Examiner did not apply the two-way text because Applicant did not “argue, much less provide evidence that, the issuance of the [Vogels] patents prior to the instant application was due to administrative delay on the part of the PTO.” The Board had affirmed the rejection because the Applicant presented no evidence or reason why the claims could not have been filed in the original application in the series which would have predated the references. For the one-way test, the Examiner asks "whether the application claims are obvious over the patent claims." In the two-way test, the Examiner also asks "whether the patent claims are obvious over the application claims." The two-way test is only appropriate when the USPTO is "solely responsible for the delay in causing the second-filed application to issue prior to the first". The two-way test rose out of the concern "to prevent rejections for obviousness-type double patenting when the applicants filed first for a basic invention and later for an improvement, but, through no fault of the applicants, the PTO decided the applications in reverse order of filing, rejecting the basic application although it would have been allowed if the applications had been decided in the order of their filing." In this case, since the Applicant dictated the rate of prosecution, he was not entitled to the two-way test.

At issue was whether the MOSKOVSKAYA mark for vodka was geographically deceptive. The Board had applied the doctrine of foreign equivalents to make the determination. Under this doctrine, the term is analyzed under its English translation. The translated term means "of or from Moscow". However, Applicants admitted that the product was not produced, sold, or otherwise associated with Moscow. Under the doctrine of foreign equivalents, the impact of the translated work or phrase must be material and that any misdescription materially affects a substantial portion of the intended public in deciding whether to purchase the goods. The Court found that the Board improperly concluded that since 706,000 Americans spoke Russian (according to 2000 census) that a substantial portion of consumers would be misled. The Court remanded on the basis that if the target audience was Russian speaking, then it could be likely that a substantial number would be misled. However, if the intended audience was the populace at large then only a quarter of one percent of the population would be misled. Hence, the lower court failed to determine whether the intended public was Russian speaking.

At issue was whether the "use in commerce requirement is met when an applicant uses a service mark in the preparatory stages of a service’s development, but never offers the service to the public." In this case, the planned Airflite service was never disseminated to the general public. Service mark owner in prepatory stages only, acquiring service providers and toll free telephone numbers. Additionally, the registration of the service mark registration describes the services rendered under the mark as “arranging for individual reservations for flights on airplanes." No such arrangements were ever made. For service marks, the “use in commerce” requirement is met when (1) a mark is “used or displayed in the sale or advertising of services” and (2) either (i) the services are “rendered in commerce” or (ii) the services are “rendered in more than one State or in the United States and a foreign country and the person rendering those services is engaged in commerce in connection with the services.” The advertising or publicizing must relate to “an existing service which has already been offered to the public." “Mere adoption (selection) of a mark accompanied by preparations to begin its use are insufficient . . . for claiming ownership of and applying to register the mark.” Intermed, 197 USPQ at 507; see Blue Bell, 497 F.2d at 437. “At the very least,” in order for an applicant to meet the use requirement, “there must be an open and notorious public offering of the services to those for whom the services are intended.”

At issue was whether claims of a patent application describing new properties and new uses for a 15 base-long sense oligodeoxynucleotide were properly rejected in light of a reference that had previously disclosed every 15 base-long oligodeoxynucleotide in a known nucleic acid. The reference did not teach the specific properties or uses. The Court held that the reference need not demonstrate the invention's utility when the claims recite compositions of matter and the reference discloses the composition. "The compositions described in the ’493 application are simply not new—they were described in Wraight’s enabling disclosure. As we explained in In re Schoenwald, Gleave’s contribution, at best, is 'finding a use for the compound, not discovering the compound itself.' 964 F.2d 1122, 1124 (Fed. Cir. 1992). If the use Gleave discovered is new, he will be able to patent that method of use—“any more would be a gratuity.” Rejection was affirmed.

At issue was whether a marketing paradigm is statutory patentable subject matter in view of the In Re Bilski Supreme Court precedent. Court reiterated the four categories of patentable subject matter: processes, machines, manufactures, and compositions of matter. Per Bilski, a process is deemed patentable under the machine-or-transformation test. This test is used to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. Specifically, "a claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." A marketing force is not a machine or apparatus. "A machine is a '‘concrete thing, consisting of parts, or of certain devices and combination of devices'". The Court also found that the claims did not transform any article into a different state or thing, the "methods are directed to organizing business or legal relationships in the structuring of a sales force". This finding fell outside the definition of patentable subject matter because “[p]urported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.” The useful, concrete, and tangible result test was explicitly rejected by the court because it focuses on the result of the invention rather than the invention itself. The argument that a company is a machine was rejected by the court stating that a company is not a thing that can be touched. Thus the marketing paradigm was deemed a business model and not patentable subject matter.