IP News

Under its obviousness argument, Cadbury asserted that the combination of menthol and WS-23 to create a flavored cooling agent was obvious in the light of a prior patent, owned by Proctor & Gamble, disclosing chewing gum that achieves a cooling effect by combining menthol with a different cooling agent, WS-3. The court found that, based on the prior art, “all that was required to obtain [the] combination [of menthol and WS-23] was to substitute one well-known cooling agent for another” and “the combination of menthol and WS-23 was the product ' of ordinary skill and common sense.” WM Wrigley Jr. Co. v. Cadbury Adams USA LLC, No. 2011-1140,
slip op. at 14-15 (Fed. Cir. 2012).

BEGGIN' Strips vs. WAGGIN' Strips Likely to Confuse

On July 9, 2012, the Federal Circuit issued its opinion in a trademark dispute between rival pet food producers. Societe de Produits Nestle (“Nestle”) owns the BEGGIN' STRIPS mark for pet treats. Midwestern Pet Foods, Inc. (“Midwestern”) filed an intent-to-use application with the PTO seeking to register the mark WAGGIN' STRIPS for pet treats. Nestle opposed the application, contending that there was a likelihood of confusion between the two marks.

The Federal Circuit found that there was substantial evidence supporting a likelihood of confusion between the two marks. Midwestern Pet Foods, Inc. v. Societe Des Produits Nestle, No. 2011-1482, slip op. at 14 (Fed. Cir. 2012). The court noted that the marks have similar pronunciations, cadences, and intonations. Id. at 11-12. The court also acknowledged that the two marks are used in connection with identical products that would be sold in the same channels of commerce to the same consumer. Id. at 12. The court further pointed out that the consumer base would be less likely to exercise diligent review of the products in making their purchases because of the low prices for each product.

The Federal Circuit noted that although the BEGGIN' STRIPS mark was not famous, it had been in use since 1988, and that products bearing the mark have been advertised and sold throughout the country. Midwestern Pet Foods, Inc., No. 2011-1482, slip op. at 10. Thus, the court reasoned that the BEGGIN' STRIPS mark “enjoyed at least a high degree of recognition that has rendered the mark distinctive and strong and entitled to a broad spectrum of protection.” Id. at 11. Ultimately, the court denied the registration of the WAGGIN' STRIPS mark.

Google, Open Source Community Escape Oracle's Copyright Claims

On May 31, Judge William Alsup of the Northern District of California entered an Order in Oracle America, Inc. v. Google Inc., No. 10-03561 determining whether “certain replicated elements of the structure, sequence and organization of the Java application programming interface are protected by copyright.” Order at 1. Oracle had sued Google and accused its popular Android platform as infringing Java-related copyrights and patents.

A jury had been instructed by the judge that the structure, sequence and organization of the accused Google software was copyrightable. Id. at 2. The purpose of this instruction, according to the Order, was to allow the Court of Appeals to reinstate the jury verdict without the need for a retrial if the judge later ruled that the code was not eligible for copyright protection. The jury found that Google infringed Oracle's copyrights, but deadlocked on whether the use of this copyrighted code was protected by fair use.

The parties then presented the question to Judge Alsup of whether these code packages were eligible for copyright protection at all, and he ruled that they are not. Id. at 41. Google's Android platform copied the functionality of 37 different pre-written programs called Application Programming Interfaces or “APIs,” but used different code to implement each. Id. at 5. Google did copy, however, the “names, organization of those names, and functionality of 37 out of 166 packages in the Java API.” Id. at 6-7. Approximately 3% of the code is identical between the two, and must be so in order to maintain interoperability between Android and Java.

Judge Alsup analyzed precedent from Congress, the Copyright Office, the Supreme Court, and the Ninth Circuit. He began with the “clear-cut rule” that “names, titles and short phrases are not copyrightable.” Id. at 14. The analysis is careful not to conflate patent and copyright law, and notes the differences between an idea (patent) and the particular expression of that idea (copyright). Id. at 35. “This order holds that, under the Copyright Act, no matter how creative or imaginative a Java method specification may be, the entire world is entitled to use the same method specification (inputs, outputs, parameters) so long as the line-by-line
implementations are different.” Id.

Because using identical lines of code in some instances was necessary to achieve interoperability, “when there is only one way to write something, the merger doctrine bars anyone from claiming exclusive copyright ownership of that expression.” Id.

Google also won a victory when Judge Alsup held that the overall organizational scheme that was copied by the Google API is not copyrightable, because it is “also a command structure for a system or method of operation of the application programming interface.” Id. at 37. Even though Google was free to organize the APIs any way it liked, the command structure of Java required that the commands be in a certain form to call a pre-assigned function. Id. Judge Alsup noted in closing:

it is important to step back and take in the breadth of Oracle's claim. Of the 166 Java packages, 129 were not violated in any way. Of the 37 accused, 97 percent of the Android lines were new from Google and the remaining three percent were freely replicable under the merger and names doctrines. Oracle must resort, therefore, to claiming that it owns, by copyright, the exclusive right to any and all possible implementations of the taxonomy-like command structure for the 166 packages and/or any subpart thereof ' even though it copyrighted only one implementation. To accept Oracle's claim would be to allow anyone to copyright one version of code to carry out a system of commands and thereby bar all others from writing their own different versions to carry out all or part of the same commands. Order at 40-41.

Apple-Motorola Trial Canceled

Judge Richard A. Posner of the Seventh Circuit, sitting by designation in the Northern District of Illinois, canceled the trial in Apple, Inc. v. Motorola, Inc. et al., No. 11-8540, ruling that neither party is entitled to relief. In light of a ruling on Daubert motions, the remaining admissible evidence with respect to damages did not create a genuine issue of material fact sufficient to withstand summary judgment for either party. Order at 1. Judge Posner also found no basis for an award of injunctive relief, because “injunctive relief would impose costs disproportionate to the harm to the patentee and the benefit of the alleged infringement to the alleged infringer.” Id. at 2. Judge Posner will issue a full opinion at a later date.

Jeffrey S. Ginsberg is a partner, Joseph Mercadante is an associate, and Malcolm Wells is a summer associate in the New York office of Kenyon & Kenyon LLP.

Wrigley's Gum Coolant Combination Obvious and Anticipated

On June 22, the Federal Circuit issued its opinion in a patent infringement dispute between WM Wrigley Jr. Co. and Cadbury Adams USA LLC. The panel was composed of Judges Pauline Newman and William C. Bryson and, sitting by designation, District Judge Jeremy Fogel of the Northern District of California. The dispute concerned, among other things, Wrigley's patent on a chewing gum composition containing a combination of menthol and a cooling agent, WS-23.

Cadbury argued that Wrigley's patent was invalid for obviousness and anticipation. Cadbury's anticipation argument was supported by prior art that covered multiple oral compositions. The oral compositions listed in the prior art included details about cooling agents and combinations thereof. WM Wrigley Jr. Co., No. 2011-1140, slip op. at 8. The prior art identified WS-23 as one of three preferred cooling agents, and menthol as being one of the most suitable flavoring ingredients. Id. Although there were a number of categories and components in the prior art related to oral compositions, the prior art identified WS-23 and menthol as a combination of cooling and flavoring elements leading the court to conclude Wrigley's patent claim was anticipated. Id.

Under its obviousness argument, Cadbury asserted that the combination of menthol and WS-23 to create a flavored cooling agent was obvious in the light of a prior patent, owned by Proctor & Gamble, disclosing chewing gum that achieves a cooling effect by combining menthol with a different cooling agent, WS-3. The court found that, based on the prior art, “all that was required to obtain [the] combination [of menthol and WS-23] was to substitute one well-known cooling agent for another” and “the combination of menthol and WS-23 was the product ' of ordinary skill and common sense.” WM Wrigley Jr. Co. v. Cadbury Adams USA LLC, No. 2011-1140,
slip op. at 14-15 (Fed. Cir. 2012).

BEGGIN' Strips vs. WAGGIN' Strips Likely to Confuse

On July 9, 2012, the Federal Circuit issued its opinion in a trademark dispute between rival pet food producers. Societe de Produits Nestle (“Nestle”) owns the BEGGIN' STRIPS mark for pet treats. Midwestern Pet Foods, Inc. (“Midwestern”) filed an intent-to-use application with the PTO seeking to register the mark WAGGIN' STRIPS for pet treats. Nestle opposed the application, contending that there was a likelihood of confusion between the two marks.

The Federal Circuit found that there was substantial evidence supporting a likelihood of confusion between the two marks. Midwestern Pet Foods, Inc. v. Societe Des Produits Nestle, No. 2011-1482, slip op. at 14 (Fed. Cir. 2012). The court noted that the marks have similar pronunciations, cadences, and intonations. Id. at 11-12. The court also acknowledged that the two marks are used in connection with identical products that would be sold in the same channels of commerce to the same consumer. Id. at 12. The court further pointed out that the consumer base would be less likely to exercise diligent review of the products in making their purchases because of the low prices for each product.

The Federal Circuit noted that although the BEGGIN' STRIPS mark was not famous, it had been in use since 1988, and that products bearing the mark have been advertised and sold throughout the country. Midwestern Pet Foods, Inc., No. 2011-1482, slip op. at 10. Thus, the court reasoned that the BEGGIN' STRIPS mark “enjoyed at least a high degree of recognition that has rendered the mark distinctive and strong and entitled to a broad spectrum of protection.” Id. at 11. Ultimately, the court denied the registration of the WAGGIN' STRIPS mark.

Google, Open Source Community Escape Oracle's Copyright Claims

On May 31, Judge William Alsup of the Northern District of California entered an Order in Oracle America, Inc. v. Google Inc., No. 10-03561 determining whether “certain replicated elements of the structure, sequence and organization of the Java application programming interface are protected by copyright.” Order at 1. Oracle had sued Google and accused its popular Android platform as infringing Java-related copyrights and patents.

A jury had been instructed by the judge that the structure, sequence and organization of the accused Google software was copyrightable. Id. at 2. The purpose of this instruction, according to the Order, was to allow the Court of Appeals to reinstate the jury verdict without the need for a retrial if the judge later ruled that the code was not eligible for copyright protection. The jury found that Google infringed Oracle's copyrights, but deadlocked on whether the use of this copyrighted code was protected by fair use.

The parties then presented the question to Judge Alsup of whether these code packages were eligible for copyright protection at all, and he ruled that they are not. Id. at 41. Google's Android platform copied the functionality of 37 different pre-written programs called Application Programming Interfaces or “APIs,” but used different code to implement each. Id. at 5. Google did copy, however, the “names, organization of those names, and functionality of 37 out of 166 packages in the Java API.” Id. at 6-7. Approximately 3% of the code is identical between the two, and must be so in order to maintain interoperability between Android and Java.

Judge Alsup analyzed precedent from Congress, the Copyright Office, the Supreme Court, and the Ninth Circuit. He began with the “clear-cut rule” that “names, titles and short phrases are not copyrightable.” Id. at 14. The analysis is careful not to conflate patent and copyright law, and notes the differences between an idea (patent) and the particular expression of that idea (copyright). Id. at 35. “This order holds that, under the Copyright Act, no matter how creative or imaginative a Java method specification may be, the entire world is entitled to use the same method specification (inputs, outputs, parameters) so long as the line-by-line
implementations are different.” Id.

Because using identical lines of code in some instances was necessary to achieve interoperability, “when there is only one way to write something, the merger doctrine bars anyone from claiming exclusive copyright ownership of that expression.” Id.

Google also won a victory when Judge Alsup held that the overall organizational scheme that was copied by the Google API is not copyrightable, because it is “also a command structure for a system or method of operation of the application programming interface.” Id. at 37. Even though Google was free to organize the APIs any way it liked, the command structure of Java required that the commands be in a certain form to call a pre-assigned function. Id. Judge Alsup noted in closing:

it is important to step back and take in the breadth of Oracle's claim. Of the 166 Java packages, 129 were not violated in any way. Of the 37 accused, 97 percent of the Android lines were new from Google and the remaining three percent were freely replicable under the merger and names doctrines. Oracle must resort, therefore, to claiming that it owns, by copyright, the exclusive right to any and all possible implementations of the taxonomy-like command structure for the 166 packages and/or any subpart thereof ' even though it copyrighted only one implementation. To accept Oracle's claim would be to allow anyone to copyright one version of code to carry out a system of commands and thereby bar all others from writing their own different versions to carry out all or part of the same commands. Order at 40-41.

Apple-Motorola Trial Canceled

Judge Richard A. Posner of the Seventh Circuit, sitting by designation in the Northern District of Illinois, canceled the trial in Apple, Inc. v. Motorola, Inc. et al., No. 11-8540, ruling that neither party is entitled to relief. In light of a ruling on Daubert motions, the remaining admissible evidence with respect to damages did not create a genuine issue of material fact sufficient to withstand summary judgment for either party. Order at 1. Judge Posner also found no basis for an award of injunctive relief, because “injunctive relief would impose costs disproportionate to the harm to the patentee and the benefit of the alleged infringement to the alleged infringer.” Id. at 2. Judge Posner will issue a full opinion at a later date.

Jeffrey S. Ginsberg is a partner, Joseph Mercadante is an associate, and Malcolm Wells is a summer associate in the New York office of Kenyon & Kenyon LLP.