Reply to Mr. Ohman concerning patent dispute with Lance Armstrong Foundation

Mr. Chris Ohman expressed concern about the facts presented in yesterday's posting concerning his dispute with the Lance Armstrong Foundation. This posting is directed to the concerns he raised.

Mr. Ohman responded to yesterday's posting, expressing concerns as to the accuracy of its content. In an email message to me, he said that his design patent was amended because the USPTO simply asked him to choose one design of the three he originally filed, that he was not "forced" to amend his claims, and that the Patent Office did not refuse anything. See Yesterday's Posting. He also stated that he felt the information in yesterday's posting to be defamatory and libel. It was certainly not the intent of the posting to cause any hurt feelings. But, the discussion of the prosecution of Mr. Ohman's patent-in-suit is factually accurate. To make the record on this site clear and complete, I've prepared the following summary of the prosecution history of the design patent that Mr. Ohman asserted in his lawsuit against the Lance Armstrong Foundation.

The entire prosecution history can be viewed by those interested in the details on the PTO website. USPTO Public Pair Portal. The record shows that on 2/21/2007, the Patent Office did reject the then-pending claim to a pet collar with the LIVESTRONG marking, citing to evidence of LAF's prior use of the design on its web-site. The record also shows that in response to this rejection, the applicant cancelled two figures and renumberd one so as to claim the BARKSTRONG marking instead of the LIVESTRONG marking.

The only patent that Mr. Ohlman's complaint alleges has been infringed is United States Design Patent No. D556,389. Mr. Ohman filed the original application that gave rise to this patent on July 6, 2005. The application number was 29/233,646. In the application, he tried to obtain claims to pet collars with three different marks: Fig. 1 - LIVESTRONG; Fig. 2 - BARKSTRONG; and Fig. 3 PURRSTRONG.

On 12/1/2006, the Patent Office issued a restriction requirement. A restriction requirement requires the applicant to select one invention for one patent, and, if he wishes to pursue other inventions, to pay additional application fees for processing those inventions. On 12/12/2006, Mr. Ohman elected to pursue Group I, which was the design using the phrase LIVESTRONG.

Remarks Made in Election of Fig. 1 U.S. Patent and Trademark Office

On 2/21/2007, the Patent Office issued a rejection to the claim. Page 3 of the rejection states "[t]he claim is rejected under 35 U.S.C. 103(a) as being unpatentable over the "LIVESTRONG" logo depicted on the Lance Armstrong Foundation website as of May 6, 2004.

On 5/21/2007, in response to the rejection by the Patent Office, the applicant submitted an amendment, in which he cancelled the LIVESTRONG and PURRSTRONG drawings from the application, and changed "FIG. 2" for BARKSTRONG to "FIG. 1." The applicant's stated reason for this change was that "[t]he Office Action objected to the specification, claim, and drawings due to informalities." See Response at 5. The response made no mention of the pending 103 rejection.

The claim to the BARKSTRONG design was then allowed. On 10/2/2007, before the patent issued, Mr. Ohman appears to have filed two continuing applications, numbered 29/292,189 and 29/292,189.

In his comment to yesterday's post, Mr. Ohman notes that there is "no mention or claim of the divisional patent (LIVESTRONG) in this suit." Technically, that statement is true. The only patent asserted in the lawsuit Mr. Ohman filed against the Lance Armstrong Foundation is the one claiming the "BARKSTRONG" design. The two continuing applications filed on 10/2/2007, presumably one of which is the divisional application referred to by Mr. Ohman, have not issued as patents and are not currently available to the public. However, Mr. Ohman's reference to a "divisional patent (LIVESTRONG)" implies that he is presently seeking to obtain a design patent for the "LIVESTRONG" design. Because no such patent has issued, there is of course no such patent at issue in Mr. Ohman's current lawsuit.

About the author

    Chris Ryan is an intellectual property lawyer at the law firm of Vinson & Elkins, LLP. His practice is chiefly focused on patent litigation where Chris represents both plaintiffs and defendants, but Chris has also advised clients in matters of patent, copyright, and trade secret licensing. Prior to practicing law, Chris worked as a business strategy consultant with McKinsey & Co., advising clients on matters of business and technology strategy, organization, and operations. Click here for Chris' official law firm bio. The postings on this site were created for informational purposes only and do not constitute legal advice. Disclaimer.

     

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