Enablement, indefiniteness, and privity are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Enablement of Provisional. IPR institution denied after Board applies a provisional date, disqualifying asserted art. The Board cited Petitioner argument regarding what was known in the art as evidence of enablement for the Patent Owner’s provisional application. GEMoaB Monoclonals GMBH v. University of Maryland, Baltimore, IPR2020-00233, Paper 16 (Jun. 17, 2020) (Hulse, joined by Tornquist and Majors).

Board Declines to Give Advisory Opinion on Indefiniteness.  IPR institution denied because Petitioner provided string cites to alleged structure for means-plus-function claims without specifying alleged structure. Board held it “in effect, seeks an advisory opinion from the Board as to whether the challenged claims are indefinite.”  Callminer, Inc. v. Mattersight, Inc., No. IPR2020-00272, Paper 8 (Jun. 18, 2020) (McShane, joined by Turner and Arbes).

Privity.  IPR institution denied for failure to file within one year of a privy of Petitioner being served with a complaint. Petitioner agreed to indemnify district court defendants. The Board held that Petitioner had the opportunity to control the district court litigation, was in privity with the district court defendants for purposes of § 315(b), and failed to file the Petition within one year of its privy being served with the complaint. Ericsson, Inc. v. Regents of the University of Minnesota, No. IPR2017-01186, Paper 58 (Jun. 19, 2020) (Weinschenk, joined by Bisk and Boudreau).

IPR Instituted based on Fintiv Factors. IPR instituted even when similar issues are being litigated in parallel district court cases. Applying the Fintiv factors, see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential, designated May 5, 2020), the Board determined that the district court litigations were at early stages and that the resolution of the similar issues by the Board in the IPR proceedings may be beneficial to the district court proceedings. Medtronic, Inc. et al v. Teleflex Medical Devices S.A.R.L., IPR2020-00127, Paper 20 (Jun. 26, 2020) (Snedden, joined by Tornquist and Paulraj).  

IPR Institution Denied based on Fintiv Factors. IPR institution denied when the petition presented substantially overlapping invalidity issues presented in a parallel district court proceeding. Applying the Fintiv factors, the Board determined that because the district court and the parties already invested substantial resources for the district court proceeding and because the jury trial was scheduled to begin eleven months before the statutory deadline for the Board’s decision, an institution would likely create a duplication of effort and a potential for inconsistent results. Supercell Oy v. GREE, Inc., IPR2020-00513, Paper 11 (Jun. 24, 2020) (Wieker, joined by Kim and Browne).

IPR Institution Denied for a Lack of Particularity. IPR institution denied when the petition failed to identify with particularity what disclosure was relied on from each of the cited references, failed to describe how the disclosures would be combinable, and failed to describe why the proposed combination would have been obvious to a person ordinary skill in the relevant technology. Although the Board determined that only four out the twenty grounds did not satisfy the particularity requirement, it infected the proceeding sufficiently to deny an IPR institution on all grounds. EIK Engineering Sdn. Bhd. v. Wilco Marsh Buggies & Draglines, Inc.,IPR2020-00344, Paper 7 (Jun. 23, 2020) (Grossman, joined by Browne and Moore).

As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.  

By Evi T. Christou

On June 30, the U.S. Supreme Court decided by a vote of 8-1, that generic words coupled with “.com” may be eligible for federal trademark registration so long as consumers do not perceive such words as generic.  U.S. Patent and Trademark Office v. Booking.com B. V., No. 19-46, 591 U.S. ___ (2020).


In 2011 and 2012, Booking.com, a digital travel company, sought to federally register “Booking.com” for hotel reservation services with the U.S. Patent and Trademark Office (“USPTO”).  The USPTO denied Booking.com registration under the longstanding rule that generic words (the name of a class of products or services) are not eligible for federal trademark registration.  The USPTO’s Trademark Trial and Appeal Board affirmed, concluding that “Booking.com” was generic because consumers would understand its “primary significance” as “an online reservation service for lodgings” generally. 

Booking.com sought review of the USPTO’s decision in the U.S. District Court for the Eastern District of Virginia and introduced consumer survey evidence and evidence of Booking.com’s reputation, marketing and commercial success to demonstrate that consumers do not view “Booking.com” as a generic name for hotel reservation services, but rather, identify it with Booking.com’s brand.  The district court agreed, holding that Booking.com was not generic for hotel reservation services and was therefore entitled to federal registration.  The U.S. Court of Appeals for the Fourth Circuit affirmed.


A longstanding and fundamental doctrine in trademark law provides that generic words are not entitled to trademark protection.  Unlike a trademark, which identifies the source of a good or service, a generic term names a “class” of products or services.  The doctrine protects competitors’ ability to use the terms they need to describe their competing products.  Therefore, even when a long period of exclusive use or an extensive advertising campaign has persuaded consumers to understand a generic term as a brand name, the USPTO has set forth a categorical rule against federal registration of such terms.

In this case, the parties did not dispute that the word “booking” was generic for hotel-reservation services.  Therefore, the question before the Court was whether the combination of a generic word (in this case, “booking”) and “.com” is generic.  The Court ultimately ruled that “Booking.com” as a whole was not generic because consumers do not perceive “Booking.com” to signify a class of online hotel reservation services.  According to the evidence presented by Booking.com in the lower courts, 74.8% of respondents in a consumer survey identified Booking.com as a brand rather than a generic term.  Respondent’s Brief, at 12.  The Court also rejected the USPTO’s categorical rule that adding “.com” to a generic term does not convey additional meaning that would distinguish one provider’s services from those of other providers.  As the Court noted, because only one entity can occupy a particular domain name at a time, a consumer who is familiar with that aspect of the domain name system can infer that “Booking.com” refers to some specific entity and can distinguish it from other online hotel reservation providers.

The Court also rejected the USPTO’s principal concern that affording protection for a term like “Booking.com” would hinder competitors’ ability to use generic marks.  The Court reasoned that anticompetitive harms would be mitigated because trademark infringement requires the trademark owner to show a likelihood of confusion, and consumers would be less likely to be confused by similarities between the generic or highly descriptive components of a generic.com mark and other businesses’ uses of similar words or symbols.  Moreover, the Court noted that even if a trademark owner of a mark comprising a generic term and “.com” sued a competitor whose domain name incorporated the generic term, doctrines such as the fair use doctrine could be replied on in attempt to shield the competitor from liability.

Key Takeaway

  • Carefully designed consumer surveys, dictionary definitions, usage by consumers and competitors, and any other source of evidence bearing on how consumers perceive a term’s meaning are central to showing how the public perceives trademarks comprising generic words and “.com.”

Managing Intellectual Property has recognized Banner Witcoff and 17 of its attorneys in the 2020 edition of “IP Stars,” a guide to the world’s top intellectual property firms and practitioners.

Nationally, the guide ranked Banner Witcoff for its patent prosecution and Patent Trial and Appeal Board (PTAB) litigation practices. Managing IP also “highly recommended” Banner Witcoff for its trademark practice in Illinois, and for its patent prosecution work in Illinois and Washington, D.C. In addition, the guide recommended the firm in the patent contentious practice area in both jurisdictions.

Earlier this spring, the publication recognized the following 17 Banner Witcoff attorneys as 2020 “IP Stars” in their respective geographic and practice areas:

Marc S. Cooperman, Ross A. Dannenberg, Michael J. Harris, John P. Iwanicki, Sarah A. Kagan, Robert S. Katz, Christopher L. McKee, Timothy C. Meece, Frederic M. Meeker, Helen Hill Minsker, Darrell G. Mottley, Joseph M. Potenza, Christopher J. Renk, Joseph M. Skerpon, Richard S. Stockton, J. Pieter van Es, and Bradley C. Wright.

The “IP Stars” rankings are based on information MIP’s analysts obtain from thousands of law firms, practitioners, and their clients through interviews, surveys, and other research.

Banner Witcoff attorney Liz Brodzinski was quoted in a pair of articles detailing a recent surge of applications seeking to trademark the slogans “Black Lives Matter” and “I Can’t Breathe.”

According to the articles published by Bloomberg Law and WTTW, the U.S. Patent and Trademark Office (USPTO) has received more than two dozen requests to trademark the slogans since May 25, when George Floyd was killed by a Minneapolis police officer.

Liz told the publications that attempts to trademark the phrases date back more than five years ago and that the USPTO has rejected previous attempts. She said the recently-filed applications may be rejected if the USPTO acts consistently with its prior decisions.

The June 24 Bloomberg Law article, “‘Black Lives Matter’ Trademark Applications Surge After Protests,” is available online to subscribers. The June 29 WTTW article, “‘Black Lives Matter’ Wine? Teddy Bears? Trademark Law Shows You Can’t Always ‘Just Do It’,” can be viewed online.

Banner Witcoff is a professional services sponsor to the Maryland Energy Innovation Accelerator (MEIA), an initiative of the Maryland Clean Energy Center whose mission is to catalyze innovation in support of the state’s clean energy and climate goals.

In late 2019, the MEIA launched a cohort-based virtual accelerator program to focus on commercializing early stage technologies. Six teams made up MEIA’s inaugural cohort and three progressed to the virtual pitch competition that took place on June 23. Alchemity was named the winner for its technology that will substantially reduce carbon emissions produced during the gas-to-liquids (GTL) processing.

As part of Cohort 1, the teams spent six months having their technologies examined by a group of experienced energy executives to determine the market potential and fastest path to market.

As a sponsor, Banner Witcoff mentored the teams on intellectual property strategies for statups and provided pro bono counseling in areas including IP licensing and patent due diligence.

For more information about MEIA and its pitch competition, visit its website.

We are experiencing a critical moment in our nation’s history following the senseless deaths of George Floyd, Breonna Taylor, Ahmaud Arbery, and others. These and other recent troubling events underscore a long history of violence against the Black community despite the great strides our nation has made to advance justice and equality.

At Banner Witcoff, we recognize the gravity of this moment and reiterate our unwavering rejection of racism, bigotry and discrimination in any form. This moment demands that we share a message of solidarity with our Black colleagues and members of the Black community. This moment also demands that we all do more.

To start, we’d like to reaffirm Banner’s dedication to our core values and founding principles—a steadfast commitment to advancing diversity, equality and inclusion. Recognizing that words alone are not enough, we commit to taking action. Our Diversity & Inclusion Committee has engaged in initial conversations about our plan moving forward, and below are just a few of the actions we will take in the coming weeks and months:

  • Educate. Our Diversity & Inclusion Committee will work with Banner Witcoff’s Board of Directors to educate our employees on Black history and racism. We closed our offices on June 19 in recognition of Juneteenth and provided educational resources to our employees on the significance of this day that commemorates the end of slavery in the United States.

We also will work to convene programming throughout the year to discuss these important issues. We expect these conversations to be uncomfortable, and welcome it. We do this with the intention of gaining trust, building bonds, and lifting each other up. We also do this with the intention that everyone can learn how to contribute to change, listen and learn.

  • Donate and Volunteer. We will make an immediate contribution of $25,000 to the Equal Justice Initiative (EJI). This Alabama-based human-rights organization was founded in 1989 by Bryan Stevenson, a prominent civil rights attorney. EJI focuses its efforts on eliminating excessive and unfair sentencing, confronting abuse of the incarcerated and mentally ill, and educating the public on topics of racial injustice and equality.

Beyond our donation to EJI, we will continue to look for opportunities to donate to and volunteer with organizations dedicated to fighting for racial equality and justice. This will include exploring volunteer and pro bono opportunities in the communities where we have offices.

  • Listen. We will work to create a safe space for our employees to share their experiences and honest feedback about what we, as an employer, can do better. We will survey employees to help us learn how we can improve and how we can open the dialogue to ensure employees at all levels of our firm have a platform to express themselves.

This is our initial plan for action. We expect and hope that it will evolve over time as we continue to listen, learn and seek out additional opportunities for meaningful ways to contribute as individuals and a law firm. We will share our progress and plans along the way.

Banner Witcoff’s patent prosecution and litigation practices are recognized in the 2020 edition of the IAM Patent 1000: The World’s Leading Patent Professionals, along with nearly a dozen of the firm’s attorneys.

The guide ranks Banner Witcoff among the top firms nationally for patent prosecution. It also ranks the firm for litigation and patent prosecution in Illinois, and recommends the firm for patent prosecution Washington, D.C.

The following Banner Witcoff attorneys are recognized in the guide as leading professionals in their practice area and jurisdiction:

Joseph J. Berghammer and Binal J. Patel for prosecution and litigation in Illinois; Robert S. Katz and Frederic M. Meeker for prosecution and litigation in Washington, D.C.; Ross A. Dannenberg and Darrell G. Mottley for prosecution in Washington, D.C.; John P. Iwanicki for prosecution in Massachusetts; John R. Hutchins for litigation in D.C; Michael J. Harris and Timothy C. Meece for litigation in Illinois. Rob and Darrell are also recognized nationwide for their design patent work.

The guide which is based on extensive research involving more than 1,700 interviews and feedback from market sources notes, “Hard to beat for substantive IP expertise, storied boutique Banner Witcoff has all the prosecution, strategy and litigation skills you could want.”

PTAB’s handling of Federal Circuit remand, prosecution history with overlapping prior art, and level of skill in the art are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Motion to Dismiss Denied Despite Federal Circuit Remand. Motion to dismiss denied when Federal Circuit remanded IPR proceeding to dismiss as time-barred, but the Federal Circuit’s judgment was subsequently vacated by the Supreme CourtPTAB explains “regardless whether we technically have jurisdiction, we conclude that it would be imprudent to act in advance of the Federal Circuit addressing the Supreme Court’s order.”

Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., IPR2015-00826, Paper 51 (June 5, 2020) (Boucher, joined by Bisk and Quinn)

Motion to Exclude. Motion to exclude inventor testimony is denied even when the named inventor is not qualified as an expert in the field because the inventor nonetheless testified, from a marketing standpoint, with personal knowledge of at least some aspects of the claimed invention, including its alleged conception and diligence towards reduction to practice, and because an inter partes trial is before factfinders rather than a jury, and the risk that a decision will be unfairly affected by the admission of arguably unqualified testimony is far less than in a jury trial.

Fidelity Information Services, LLC et al v. Groove Digital, Inc., IPR2019-00050, Paper 65 (April 30, 2020) (Beamer, joined by Moore and Margolies)

Level of Skill in the Art. In its decision instituting trial, PTAB explains that education and experience are but two of the numerous aspects to be considered to determine the level of skill in the art, including type of problems encountered in the art, prior art solutions to those problems, rapidity with which innovations are made, sophistication of the technology, etc., and the level of skill in the art is only useful if tied to an obviousness analysis.

Intel Corporation v. XMTT, Inc., IPR2020-00145, Paper 11 (May 20, 2020) (Kauffman, joined by Wormmeester and Dougal)

Motion for Joinder. Motion for joinder granted when petitioner showed that the petition (1) is substantively identical to the petition in the instituted IPR, (2) contains the same grounds based on the same evidence, and (3) relies on the same declaration. Petitioner has also agreed to join the IPR as a passive understudy and granting petitioner’s joinder motion does not create an additional proceeding.

Samsung Electronics America, Inc. v. Uniloc 2017 LLC, IPR2020-00340, Paper 10 (May 27, 2020) (Dirba, joined by Chung and Boudreau)

Institution Despite Prosecution History.  No discretionary denial of institution when the same reference that was discussed in the background section of the patent at issue and discussed by the examiner in the notice of allowance was asserted as the primary reference for all grounds, but was combined with two other references that taught the elements that the examiner found to be missing.

Volkswagen Group of America, Inc. v. Michigan Motor Technologies LLC, IPR2020-00159, Paper 8 (June 2, 2020) (O’Hanlon, joined by Weatherly and Tartal)

Rehearing.  Request for rehearing denied when basis for rehearing request was an allegedly incorrect claim construction of a claim term that had no express construction proposed by either party, only an implied construction relied upon by petitioner. 

Chemco Systems, L.P. v. RDP Technologies, Inc., IPR-2019-01562, Paper 13 (June 4, 2020) (Tornquist, joined by Abraham and Heaney)

As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.  

On June 16, 1980, the U.S. Supreme Court issued a landmark decision in Diamond v. Chakrabarty, holding for the first time ever that a living, genetically-altered microorganism constituted patentable subject matter.

A predecessor firm of Banner Witcoff represented the inventor before the Supreme Court in this seminal case, which is widely credited for contributing to the rise of the modern biotechnology industry. While it may not be well-known outside the intellectual property and biotech fields, the Court’s decision in this case has incentivized numerous breakthroughs in medical therapies, the development of bioengineered plants and food, and the issuance of thousands of patents.

The case deals with patent rights an inventor, Dr. Ananda M. Chakrabarty, had sought for a genetically engineered microorganism that breaks down crude oil. The U.S. Patent and Trademark Office rejected his patent claim on the ground that living organisms are not patentable.  The Supreme Court, however, disagreed, holding that a patent may be obtained on “anything under the sun that is made by man.”

Banner Witcoff attorney Dale H. Hoscheit, who served on the legal team in this case, said, “It was an honor to be involved in such a pivotal case that is celebrated and remembered four decades later.”

He added, “Although the Court’s decision focused on a relatively narrow issue, it created important protections for biotechnological inventions that impact the daily lives of so many, whether through medical innovations or genetically engineered crops.”

Click here to read an article, written by former Banner Witcoff attorneys, summarizing the case and highlighting its significance. The article was published in 2005 for the 25th anniversary of the Court’s decision.

Greg Clark

In May, Banner Witcoff awarded Inductive Intelligence free legal services for the preparation and filing of a U.S. patent application. The firm offered this as part of our sponsorship of the 2020 AlphaLab Gear Hardware Cup, an international pitch competition for early-stage hardware startups.

Banner Witcoff’s Justin Philpott interviewed Greg Clark, CEO of Inductive Intelligence, about his company and winning the firm’s patent application award.

Q: Can you briefly describe Inductive Intelligence’s product?

Greg Clark:  Inductive Intelligence offers a smart inductive power technology for autonomous and personalized heating and cooking experiences.  Our technology enables closed loop cooking that is convenient, safe and sustainable.

Q:  When was the moment you first realized you had something unique with Inductive Intelligence?

Greg:  Inductive power technology has been around for a long-time, and our CTO, Dave Baarman, has played an integral role in making it popular globally by way of his inventions leading to the Qi wireless charging standard.  However, it was clear that transmitting data from an object to an inductive base had applications well beyond charging devices.  The technology could bring the same level of convenience to a whole host of other segments, namely foods and beverages.

Q:  How important is intellectual property (IP) for Inductive Intelligence’s growth?

Greg:  Licensing is a core part of our business model, and therefore IP is absolutely essential.  You simply can’t have a licensing business without a series of patents to protect the space in which you plan to license.

Q:  What does the Banner Witcoff Patent Application Award mean to your company?

Greg:  Each patent we file plays an integral role in establishing a network of patents to secure a broader market.  In this case, that market is for fully automated or personalized heating and cooking, which is already on the way to being an absolutely enormous opportunity.

Q:  What is something that you think will surprise future customers about your product?

Greg:   When people use products equipped with our technology they are simply amazed by how simple it is to use and how great the results are.  Of course, the technology isn’t simple, but the experience is always surprisingly simple.

To contact Greg and learn more about his company, visit Inductive Intelligence’s website.