On Your Mark

admin — Wed, 29 Apr 2009 14:46:00 GMT

Trademark holders, start your engines! - Internet search engine that is. After the Second Circuit's decision in Rescuecom Corp. v. Google Inc., trademark holders may finally be able to go after entities like Google for trademark infringement. Don't race off to the courthouse just yet though. Taking the facts alleged in the complaint as true (as required on the appeal of a 12(b)(6) motion), the Rescuecom court found that Google's sale of Rescuecom's mark to its competitors as an Internet search term constituted a "use in commerce" sufficient to state a claim under the Lanham Act. However, Rescuecom can only succeed on that claim if it can prove that Google's use of its trademark is likely to cause confusion.

Rescuecom's claims arose out of the way Google sells ads. Google identifies important Internet search terms and then sells them to its advertisers as "keywords." An advertiser's purchase of a particular keyword causes the advertiser's ad and link to be displayed (along with other results) on the user's screen after the term is entered into the Google search engine. Google gets paid when the user clicks on the link to connect to the advertiser's Web site. Google uses a Keyword Suggestion Tool to help advertisers identify terms that consumers are likely to use when doing searches related to the advertiser's areas of commerce. Google used its Keyword Suggestion Tool to sell Rescuecom's mark to Rescuecom's competitors.

In its complaint, Rescuecom claimed the Google advertising system infringed its trademark rights. Relying on the decision in 1-800 Contacts, Inc. v. WhenU.com., Inc, the lower court dismissed Rescuecom's complaint for failure to state a claim on the grounds that Rescuecom did not show Google's "use in commerce" of its mark. Reversing, the Second Circuit stated that the 1-800 decision was never intended to stand for the proposition that the use of a trademark in an internal software or computer directory would always be insulated from consideration of "use in commerce" and trademark liability.

Rather, because Google displays and offers Rescuecom's mark to its advertising customers when selling its advertising services and actually recommended and sold Rescuecom's trademark to advertisers, "use in commerce" sufficient to satisfy the requirements of the Lanham Act occurred. The court said nothing about the medium where the mark is in use changes that, and any other reading of the "use in commerce" language violates logic and the intent of the trademark laws. (The court also authored a lengthy "dicta" appendix addressing the confusion surrounding the term "use in commerce" in trademark cases.)

Trademark holders may want to wait out the rush to gain front-runner status after Rescuecom. There's a myriad of uncertainties left to be decided in the remanded Rescuecom litigation. In order to succeed on its trademark infringement, Rescuecom will need to show that consumers are likely to believe, mistakenly, that the ads or Web sites generated from Google's keywords are sponsored by, or affiliated with Rescuecom. How well Rescuecom meets that challenge - along with the individual circumstances of any trademark infringement litigation under contemplation - will determine whether such follow-on litigation unnecessarily "jumps the gun."

The best bet for the long run when it comes to Rescuecom inspired trademark infringement litigation? Whether pursuing or defending a claim, "Get Set" by seeking the advice of experienced intellectual property counsel before giving your battle "Go!"

This Token Good for One Remand

admin — Fri, 11 Jan 2008 22:17:00 GMT

In Hyperphrase Technologies LLC v. Google, Inc., the Federal Circuit gave patent holder Hyperphrase what it needs to take one more trip on the patent litigation merry-go-round - but restrictions do apply. Opponent Google gets off the hook for most of its alleged acts of infringement and the opinion is nonprecedential. Nonetheless, the Federal Circuit's decision-wherein the district court's grant of summary judgment to Google for non-infringement was affirmed in part, vacated in part and then remanded-offers some interesting tactical lessons, particularly to those getting ready for their own appellate ride.

The patents at issue in Hyperphrase covered systems and methods for contextually linking computerized records. Hyperphrase alleged that two Google search-related products-AutoLink and AdSense-infringed its patents. AutoLink serves the general public. It identifies strings of characters called tokens within a web page and automatically turns each of them into a hyperlink to a specific uniform resource locator ("URL"), essentially directing the user's web browser to send the token to Google's servers. Once Google's servers receive the token, it redirects a properly formatted URL to the user's browser to allow access to relevant information from a different source.

The AdSense product is targeted at corporate clients wishing to advertise on the web. It coordinates advertiser content with contextually related web pages. Advertisers supply Google with online advertisements for a fee. When a user accesses a web page, AdSense automatically scans the webpage's content, reading all the words on the page and looking for frequently repeated or recognized combinations of words. From this data, AdSense attempts to discern the general topic of the web page and uses this analysis to select and then display advertisements of likely interest.

The district court determined that summary judgment was appropriate by using restricted constructions of two key patent claim terms. The first term the district court focused upon was "data reference." It construed the term as referencing a link to a single specific record; i.e., one and only one record. Under that definition, the district court found that Google's AutoLink did not infringe because, in many circumstances, the tokens were linked to multiple records and references. Using a similarly restricted definition of the patent claim term "address format," the court determined that AutoLink did not infringe one of the asserted patents which required the use of a common address format by both the processing device and the database.

As for AdSense, the court held that the product's topical and key word analysis did not infringe because it did not directly link any references on the web page to other records, but rather used the analysis of the website as only the initial step in determining whether to link particular advertisements.

On appeal, the Federal Circuit affirmed the district court's decision regarding those patent claims containing the "address format" limitation and further affirmed the district court's decision with regard to the AdSense product. The Federal Circuit reversed and remanded, however, with regard to the issue of infringement of the AutoLink product.

Key to Hyperphrase's (albeit) limited success was its ability to successfully persuade the Federal Circuit that the district court had imposed an unduly narrow claim construction of the term "data reference." First, it focused upon the exact wording of the definition in the patent specification. The specific language used contained no limitations or requirements that a reference be linked to "one and only one" record. Hyperphrase also directed the Federal Circuit to a few examples in the specification whereby a link was made to multiple records. Given these arguments, the Federal Circuit had no trouble determining that the district court had improperly imported limitations from the preferred embodiment onto the claim.

However, the Federal Circuit remanded the ultimate issue of infringement to the district court because there was no record with regard to the presence of any other claim limitation. The Federal Circuit was unwilling to render a determination of infringement without an adequate record. Now, Hyperphrase faces an additional round of briefing and proceedings. Hyperphrase would have been well served to either seek admissions from Google regarding these other elements or to have included within its appellate brief sufficient materials for the court to address the other claim elements. It is unclear whether any of those other claim elements were in dispute, and if so, what steps Hyperphrase took to force the district court to confront those issues as well, under the rationale that claim construction should not be conducted in a piece-meal fashion.

In affirming the district court's decision of non-infringement regarding those patent claims which contained the "address format" limitation, the Federal Circuit did not rely upon any particular construction of the term. Rather, the court focused at great length upon how the AutoLink product operated similarly to the prior art that was discussed in the specification of the patent. In particular, the Court noted that the patent specification had criticized prior art systems which required an intermediate processing step involving address translation, rather than using a common address. The Court thus adopted a very common sense approach to the infringement issue. Litigants often focus upon a fine parsing of claim language to assess infringement, often ignoring the fact that a patent's discussion of how the claimed subject matter is an improvement over the prior art can serve as an effective tool for framing claim construction and infringement arguments.

Finally, the Federal Circuit noted that the district court's conclusion that the AdSense product did not infringe was not based upon any particular construction of the term "data reference," but simply on the fact that neither AdSense's topics nor key words referred to any of the advertisements ultimately linked to them. The Federal Circuit's decision to affirm this conclusion is striking in that it is not tied to any particular claim language, but rather to general characterizations about how the patented system operates. Using an Elvis Presley example, the Federal Circuit noted that a web page dedicated to Elvis Presley's movies could generate an ad for Apple's online music store because both the page and the ad relate in some way to the subject of "rock music artists." The accused product generated this contextual relationship even though neither that phrase nor any words in the actual ad ever appears anywhere on the original web page.

Without going into great detail, the Federal Circuit concluded that the general linking of related topics somehow fell outside the teachings of the patent, or a fair understanding of the word "reference," even under the doctrine of equivalents (e.g., "Both AdSense topics and key words are so far a field of the meaning of data reference as used in the asserted claims that no reasonable fact finder could conclude that AdSense performs substantially the same function in substantially the same way"). The decision does not reflect what type of record, if any, Hyperphrase marshaled with regard to the doctrine of equivalents. However, the cursory treatment by the Federal Circuit suggests that more can or should have been done with regard to this issue. While the AdSense product may not have used the web page content as the sole basis for a linked reference, it clearly had some impact on which advertisement would be ultimately linked to the page. The issue should have been whether the additional steps performed by the AdSense product somehow changed the essential character of the initial step of the analysis. Clearly, how the inquiry was framed had a significant impact on the Court's conclusion.

Hyperphrase's insights into patent litigation practice offers up some interesting strategic guidance for all patent litigation practitioners, making it, we believe, more than worthy of the token of our attention.

APaTS : Google

On Your Mark

This Token Good for One Remand