The document summarizes several topics discussed at a prosecution group luncheon in November 2012. It discusses a warning from the USPTO about non-USPTO solicitations, the issuance of the October 2012 edition of the Trademark Manual of Examining Procedure, and a trademark opposition case involving a priority dispute and the "illegal use doctrine." It also summarizes several patent law cases and issues, including factors for determining obviousness, when a lease may constitute a sale under patent law, the first published supplemental examination request, and a district court ruling on the effect of requests for continued examination on patent term adjustment.

1. Prosecution Group Luncheon
November 2012

2. USPTO Warning: Non-USPTO Solicitations
• Expanded warning page about non-USPTO
Solicitations – lists 13 examples/companies
• Suggests filing a complaint with FTC if client
receives a misleading solicitation
• Requests report misleading solicitations to
USPTO at TMFeedback@uspto.gov
• See also WIPO website for warnings about
international examples

3. TMEP – Oct. 2012 Edition
• The USPTO has issued the Trademark
Manual of Examining Procedure (v. October
2012), with an effective date of October 31,
2012.
• the current version of the TMEP is now
identified by the month and year in which it is
issued.
• the new online interface is now the exclusive
interface and search tool for the TMEP.

4. Illegal Use Gives Priority?
• Opposition involved a priority dispute involving the
identical marks PARLAY for wine
• Churchill Cellars claimed priority b/c Graham, although he
used the mark first, did not obtain COLA (certificate of
label approval) from Dept. of Treas. until after Churchill
used its mark (w/ COLA).
• “illegal use doctrine” is narrowly applied. TTAB will “ hold
a use in commerce unlawful only when the issue of
compliance has previously been determined by a court or
government agency having competent jurisdiction under
the statute involved, or where there has been a per se
violation of a statute."
• Churchill Cellars, Inc. v. Brian Graham,
Opposition No. 91193930 (October 19, 2012)

5. ITU Assignments – actual product?
• The Lanham Act prohibits the assignment of intent-to-use
trademark applications prior to the filing of a SOU, …
except for an assignment to a successor to the business
of the applicant, or portion thereof, to which the mark
pertains, if that business is ongoing and existing.
• Court stated that that a product must already exist before
the application can be assigned:
– “even that transfer is only permissible if the applicant actually
has such a business, i.e., if the applicant is already
providing the goods or services recited in the application.”
• Ab Coaster Holdings, Inc. v. Greene, Nos. 2:10-CV-38, 2:10-CV-234 (S.D.
Ohio Sept. 25, 2012).
• Incorrect Holding ???

6. PC ON A STICK?
• descriptiveness refusal of the mark PC ON A STICK for "computer
software …; computer storage devices, namely, blank flash drives
…; and computer hardware."
• EA: dictionary definitions, online articles, and Applicant's
specimens support that PC is a commonly-recognized reference
to "personal computer," that STICK is a slang expression for a
memory module, such as a USB stick, and that PC ON A STICK
directly informs consumers that goods "enable the user to carry
the essence of their PC with them on a flash drive. The product
enables a flash drive to function as a virtual PC."
• TTAB: definitions show meanings of PC and STICK; Applicant's
mark means "a personal computer installed on, contained within,
held upon or otherwise connected to a memory storage device
such as a flash drive or other compact data storage medium."

7. • TTAB reverses:
– the mark suggests the function and purpose of the goods, but it
does not do so "forthwith and with immediacy."
– “Rather, the mark is both elliptical and exaggerative. The term PC
is used elliptically to stand in for "all of the data and software
content of a PC." PC is also exaggerative, as the mark suggests
that the product is the equivalent of a PC actually contained within
a STICK ...." In order to understand the meaning of the mark in
the context of these goods, a customer must undertake a
multistage reasoning process, through which he or she may
appreciate the suggestion that the STICK does not contain a PC,
but rather all of the data and software content of a PC. The
indirect way in which the mark conveys this information renders it
suggestive rather than descriptive of the nature of applicant's
computer storage devices.”
In re Lockheed Martin Corporation, Serial No. 85073741 (November 15, 2012) [not
precedential].

8. Objective Indicia of Nonobviousness
• Transocean Offshore Deepwater Drilling, Inc. v.
Maersk Contractors USA (FC 2012) (Transocean II)
• Transocean I: FC overturned summary judgment of obviousness as
improper in view of “secondary indicia” of nonobviousness
– Remand: jury award, but court grants JMOL on obviousness
• FC reinstated jury verdict on substantial objective evidence
– Commercial success (customers willing to pay premium or require
rigs with patented features)
– Industry praise and unexpected results
– Copying (including by defendant Maersk)
– Industry skepticism, licensing, and long-felt but unsolved need
• "Few cases present such extensive objective evidence of non-
obviousness, and thus we have rarely held that objective evidence is
sufficient to overcome a prima facie case of obviousness. . . . This,
however, is precisely the sort of case where the objective evidence
establishes that an invention appearing to have been obvious in light
of the prior art was not."

9. When is a "Lease" a "Sale" Under Section 271?
• Transocean II did not reach contested issue of whether
a “lease” is a section 271(a)“sale” or “offer to sell”
– Maersk "leased" and offered to "lease" its rig
• Leases can be tantamount to a sale, but those cases
involved transfer of property indefinitely or for entire
useful life (e.g. the common software "license")
– See Minton v. Nat'I Ass'n. of Secs. Dealers, Inc., 336 F.3d
1373, 1378 (Fed. Cir. 2003).
• Maersk argued (1) lease did not last for entire useful
life of the drilling rig, and (2) contract was for provision
of drilling services and at all time Maersk maintained
possession of the rig. The court ignored the issue,
referring to the transaction as a "sale" without comment

10. Supplemental Examination Request Published
• No. 96/000,007, filed Oct. 31, re US Patent No. 7,909,641
• (1) Why so few filings? PTO estimated 1,400 requests per year
– Ex parte requests filed just before the fee increase in September
– High cost, procedural novelty, weakening of inequitable conduct
doctrine
• (2) Why is this request the first to publish?
– Per PatentlyO research, several rejected for rule non-compliance
• The seven-page 96/000,007 petition included:
– $21,260 filing fee ($16,120 reimbursed if no reexamination ordered);
– Submission of seven references;
– Explanation of references vis á vis the patent, with claim chart; and
– Explanation of how the claims are still valid over the references
• PTO’s deadline is Dec. 31, 2012 to decide if references raise SNQP
– If yes, reexamination commences
– If no, first supplemental examination certificate to be issued

11. Satellite USPTOs
• Detroit: currently running with about 50
examiners, 10 administrative patent judges
• Google deputy GC Michelle Lee appointed
Director of the Silicon Valley (San Jose) office
• Continuing toward offices in Dallas and
Denver as well

12. Patent Issues for Lame Ducks
Patent Law Treaties Implementation Act of 2012
• Implements Geneva Act of Hague Agreement Con-
cerning International Registration of Industrial Designs
– (1) Extension of design term by 1 year (15 years from
issue)
– (2) Allowing up to 100 design inventions in one int’l
application
– Commentator: better ability to attack knockoff products in
producing countries, while also able to attack such
knockoffs in consumer countries
• Implements provisions of procedural Patent Law
Treaty (major change: revival of unintentionally
abandoned int’l applications)

13. Patent Issues for Lame Ducks
• AIA Amendment(s) (no proposed text available)
– Possible topics: (1) reducing estoppel associated with PGR;
(2) expanding scope of prior-user rights; (3) defining
"otherwise publicly available" and "disclosure" in new
Section 102; (4) allowing IPR during the first 9 months after
issuance for pre-AIA patents
• Other Potential Patent Reforms
– Fee shifting in software and computer hardware suits (H.R.
6245)
– Infringement exception for automotive repair parts (H.R.
3889)
– Design Rights for fashion under copyright laws (S. 3523)
– Federal civil cause of action for trade secret theft involving
interstate or international commerce (S. 3389)

14. Effect of RCE on PTA
• Exelixis, Inc. v. Kappos, No. 1:12cv96, 2012 U.S.
Dist. LEXIS 157762 (E.D. Va. Nov. 1, 2012)
• Recall: Patent term adjustment (PTA, §154(b))
provides 1 day of extra term for each day of pre-
issuance pendency beyond three years
– An exception involves filing of an RCE, which can cut
short such term adjustments
• Court held that RCE filing after three-year-pendency
date does not stop the PTA; only impacts patents
where RCE filing occurred after that three-year mark
• Note that in prior Wyeth case, PTO did not alter
calculations or offer guidance until after Federal
Circuit’s confirmation of lower court decision