National Trademark Expo - October 15-16, 2010

The US Patent and Trademark Office will have a National Trademark Expo October 15-16, 2010 at the USPTO Campus, 600 Delany Street, Alexandria, Virginia.

Events will be free and include:

1. "What Every Small Business Must Know About Intellectual Property"

2. "Why Buy 'Legit': About Counterfeit Goods"

3. "Top Mistakes in Trademark Application and How to Best Avoid Them"

4. "Trademarks 101" which covers basic facts about trademarks and trademark law

5. The pro se video featuring Jason Lott and others will play on a loop in the National Inventors Hall of Fame Museum throughout the Expo

6. "How to File a Trademark" at the Trademark Electronic Application System (TEAS) booth


 Many Exhibitors will be present including the American Intellectual Property Law Association ("AIPLA"), not to be outdone by the Cat in the Hat and the Pillsbury Doughboy.

 

CAFC reverses US District Court for the Southern District of California on Claim Construction and Satisfaction of Written Description Requirement

In THE LARYNGEAL MASK COMPANY LTD. AND LMA NORTH AMERICA, INC., v. AMBU A/S, AMBU INC., AND AMBU LTD, 10-1028 (CAFC, September 21, 2010), the CAFC reversed the US District Court for the Southern District of California on Claim Construction and Satisfaction of Written Description Requirement. The Laryngeal Mask Company Ltd. and LMA North America, Inc. (collectively, LMA) appealed the district court's summary judgment that the Aura40™, AuraOnce ™, and AuraStraight™ products made by Ambu A/S, Ambu Inc., and Ambu Ltd. (collectively, Ambu) did not infringe the asserted claims of U.S. Patent No. 7,156,100 ('100 patent) and that all claims were invalid for lack of written description under 35 U.S.C. Section 112. Laryngeal mask airway devices were pioneered in the 1980s by Dr. Archibald Brain, the inventor listed on the '100 patent. According to the '100 patent, one problem with prior art laryngeal mask airway devices is that during insertion, the leading edge of the deflated cuff will occasionally fold over on itself, allowing the more rigid end of the mask to catch the inside of the patient's throat. This can be unpleasant for the patient and may prevent the cuff from making a full seal around the patient's laryngeal inlet.

The invention of the '100 patent seeks to minimize the risk that the deflated cuff will fold over on itself by adding a reinforcing rib which serves to stiffen the leading end of the LMA-device during the course of the procedure for its insertion.

The district court construed the disputed terms of the '100 patent. Relevant to this appeal, the court construed the claim term "backplate" as "the relatively rigid mask structure surrounded by the cuff and including a tube joint."

The tube joint is the connection between the mask and the airway tube. See, e.g. , '100 patent figs. 2-3. The district court concluded that Ambu's accused devices did not have a tube joint because the mask structure and the airway tube are integral y molded. They are one continuous piece rather than two pieces joined together by a joint. Because the accused products lacked a tube joint the district court concluded they lacked a backplate.

Therefore, the court granted summary judgment that Ambu's Aura40, AuraOnce, and AuraStraight products did not literal y infringe claims 1 to 6 of the '100 patent.

The district court further granted Ambu's motion for summary judgment of invalidity for lack of written description.

The court determined that the specification failed to adequately describe a mask having at least a portion of the posterior portion of a wall of the cuff in the distal region being thicker and stiffer than other portions of the cuff, as required by claim 1. Id. at 4-6. The court thus concluded that claim 1 and its dependent claims were invalid under 35 U.S.C. Section 112,

Ambu argued that the claim limitation "back-plate" should be construed to include a tube joint.

The CAFC stated that "Although it is a close case, in light of the claim language, specification, and prosecution history, we conclude that the term backplate is not so limited. The claims themselves are limited to the mask structure. The claims require "a backplate" defining a passage."

Although there is ample discussion of the tube joint throughout the specification, there is only one place where the specification indicates that the tube joint is part of the backplate (in the preferred embodiment's description of Figures 5 and 6): The backplate 52 has a one-piece, integral spoon-shape including a bowl 90 and an external tube-joint 92 oriented proximal y relative to the bowl, as shown in FIGS. 5 and 6.

[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.). The specification does not clearly contain such a special definition.

Although the preferred embodiment includes a backplate that contains a tube joint, the CAFC held that they do not generally limit claims to the preferred embodiment.

The CAFC further found that the specification did not clearly indicate the patentee's intent to give backplate a unique meaning different from its ordinary and customary meaning to one of skill in the art.

The failure to introduce a dictionary definition for the disputed claim term did not preclude a conclusion that there exists a plain meaning to one of skill in the art.

The CAFC found that the term backplate has a somewhat self-descriptive nature. As the prior art patents indicate it is the plate on the back. In light of the claims, specification, prosecution history, and prior art patents, the court concluded that one of skill in the art would understand the claimed backplate to be "the relatively rigid mask structure surrounded by the cuff."

The CAFC then concluded that one of skill in the art would not conclude that the backplate must have a tube joint and that the inventor did not act as his own lexicographer here and clearly require the backplate to have a tube joint.

Regarding the District Court's summary judgment order on lack of an description, the CAFC stated "adequate written description requires that the applicant "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention."'

The court then concluded that the district court erred in granting summary judgment that the patent was invalid for failing the written description requirement. The Summary of the Invention does not require that the cuff reinforcement be connected to the backplate. Rather, it describes a reinforcement incorporated into the distal end of the cuff.

The Summary of the Invention further states that "[i]n a preferred aspect," the reinforcement extends from the backplate.

The court agreed with LMA that one of ordinary skill in the art could read these disclosures as providing for a cuff reinforcement in the distal region that need not be connected to the backplate. In addition, we agree with LMA that one of ordinary skill in the art could read the Cuff Wall Thickening Passage as disclosing a thickened cuff portion that need not be connected to the backplate.

US Patent and Trademark Office Online Patent Dashboard Posted

The US Patent and Trademark has posted a Data Visualization Center that shows US Patent Data at a glance in a downloadable dashboard format.

The dashboard shows a First Office Action Pendency for August 2010 of 26.2 months and a total pendency of 35.4 months.

The numbers are not very impressive but the presentation is great!

USPTO Extends Deadline to be Included in 2010 Trademark Expo

The US Patent and Trademark Office ("USPTO") has extended the deadline to file to have a trademark registration exhibited in the 2010 National Trademark Expo until August 16, 2010.

The Expo will include themed displays, exhibitors’ booths, costumed characters and much more. Exhibit themes may include, but are not limited to, celebrity trademarks, trademarks identifying products often subject to counterfeit, unusual trademarks (sound, scent, color, configurations, motion marks, etc.), certification trademarks, trademarks commonly misused as a generic term, the breadth of different types of trademarks used by one source, the evolution of certain trademarks, people behind the names of trademarks, 100-year-old trademarks, and interesting stories about trademarks and their creation.

All client trademark owners are encouraged to apply for the expo.  A link to the free application form is located here.http://www.uspto.gov/trademarks/notices/tm_expo_2010.jsp

Contact us if you would like any additional information about the expo at 1-877-445-5440 or on the web.

US Copyright Office Approves "Jailbreaking" Wireless Handsets

Under 17 USC Section 1201(a)(1), the Librarian of Congress is required every three years to determine whether there are any classes of works that are exempted from the prohibition against circumvention of technology that effectively controls access to a copyrighted work.  This provision is part of the Digital Millenium Copyright Act ("DMCA").

On July 26, 2010 the Librarian of Congress announced that among the six classes of exempted works, one includes:

"Computer programs, in the form of firmware or software, that enable used wireless telephone handsets to connect to a wireless telecommunications network, when circumvention is initiated by the owner of the copy of the computer program solely in order to connect to a wireless telecommunications network and access to the network is authorized by the operator of the network."

This exemption is important and may significantly effect wireless telephones such as iPhone, which attempt to restrict users' iPhone or iPad access exclusively to the Apple App Store. 

Although not easily done, "cracking", or "jailbreaking" a wireless phone can be done by a determined wireless device owner.  As time goes by, more information about how to crack wireless phones will inevitably become available on the Internet.  Also, while now an exempted use, such a modification of a wireless device will violate the terms of use of most, if not all, wireless phone user agreements and will therefore void the warranty of the wireless device.

This is a link to the US Copyright Office Announcement.

US Patent and Trademark Office Invites Public Comment for new Strategic Plan for 2010-2015

The Patent and Trademark Office on July 9, 2010, published its Draft 2010-2015 Strategic Plan for public comment, (link to it here) which must be submitted by August 2, 2010.  The Plan is designed to strengthen the capacity of the USPTO, improve the quality of patents and trademarks issued and shorten the time it takes to get a patent.  The plan as fully implemented will enhance and accelerate the innovation and job growth needed to transform the U.S. economy, foster competitiveness and drive the creation and growth of U.S. businesses.

US Supreme Court Decides in Bilski - Business Methods Still Patentable Subject Matter

The US Supreme Court today decided in Bilski et al. v. Kappos, that business method patents are eligible subject matter under Section 101 of the Patent Statute 35 USC.

Oral arguments were presented on this case in November of last year and the decision has been eagerly awaited by the Patent Bar and by many in the public.

The Court rejected the Federal Circuit's an exclusive machine or transformation test, but instead affirmed the Federal Circuit's decision based on the subject matter being an abstract idea.  The claimed subject matter involved a procedure for instructing buyers and sellers how to protect against the risk of price fluctuations in a discrete segment of economy.

The majority of the Court supported the following language:

"Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable “process,” beyond pointing to the definition of that term provided in §100(b) and looking to the guideposts in Benson, Flook, and Diehr.

"And nothing in today’s opinion should be read as endorsing interpretations of §101 that the Court of Appeals for the Federal Circuit has used in the past. See, e.g., State Street, 149 F. 3d, at 1373; AT&T Corp., 172 F. 3d, at 1357. It may be that the Court of Appeals thought it needed to make the machine-or-transformation test exclusive precisely because its case law had not adequately identified less extreme means of restricting business method patents, including (but not limited to) application of our opinions in Benson, Flook, and Diehr. In disapproving an exclusive machine-or-transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text."


This case brings us back to the analysis provided in Benson, Flook and Diehr and it will be interesting to see how the invitation from the Supreme Court to the Federal Circuit to develop "limiting criteria" to evaluate patentable subject matter is treated in future Federal Circuit cases.

A copy of the Bilski opinion is located here.

Inventive Eats: Incredible Food Innovations Now on Display at the USPTO

The US Patent and Trademark Office ("USPTO") opened a new exhibit yesterday at the Inventor's Hall of Fame, at the Madison Building in Alexandria, Virginia.  The exhibit is the first major exhibit installation to come to the Hall of Fame since it was relocated to Alexandria from Akron, Ohio in 2009.

The exhibit shows how our breakfast cereals, sandwiches, dinner entrees, and more have been transformed by significant events, discoveries and inventions.  It features the important role many of the National Inventors Hall of Fame inductees have played in the array of appetizing innovations that have made the food we eat safer, healthier and more economical.

The exhibit includes:

A full-size Mr. Peanut® character costume from the 1960s, used for Planters marketing, and additional Mr. Peanut artifacts

• A 1950s fully stocked walk-in kitchen
• 19th century patent models, including models of a refrigerator, an egg beater, a flour sifter, and the original Mason jar
• Displays of other well-known trademark food characters, such as the Pillsbury Doughboy® and the Green Giant®
• A Tappan vintage microwave from 1955, the first for home use
• A 19th century patented beehive

If you are near Washingon, DC or Northern Virginia consider stopping by the Inventors Hall of Fame!

USPTO Teams up With Google to Provide Free Patent Information

The United States and Trademark Office ("USPTO") announced last week that it has entered into a no-cost, two-year agreement with Google to make bulk electronic patent and trademark public data available to the public in bulk form.   Under this agreement, the USPTO is providing Google with existing bulk, electronic files, which Google will host without modification for the public free of charge.   This bulk data can be accessed at http://www.google.com/googlebooks/uspto.html.

 This arrangement is to serve as a bridge as the USPTO develops an acquisition strategy which will allow the USPTO to enter into a contract with a contractor to retrieve and distribute USPTO patent and trademark bulk public data.  The contractor will be capable of acquiring this bulk data and providing it to the public.

Until now, USPTO’s public data in bulk form has been provided solely as a fee-based service. The USPTO estimates that nearly ten terabytes of information will be made available.  Examples of the type of data that will be available through Google include:
 *   Patent grants and published applications
 *   Trademark applications
 *   Trademark Trial and Appeal Board (TTAB) proceedings
 *   Patent classification information
 *   Patent maintenance fee events
 *   Patent and Trademark assignments

Patent searching data, however, is still difficult and inefficient to search on the USPTO website and a new searching engine is not a part of the Google deal.  For patent searching purposes, for example to determine patentability, right to use, validity or infringement, a search is most efficiently and effectively performed at the USPTO Public Search facility in Alexandria, Virginia.  Contact our office for more information about searching, applications, or enforcement assistance.

USPTO Expands Green Technology Pilot Program to More Classes of Inventions

The United States Patent and Trademark Office ("USPTO") has announced that it is revising its Green Technology Pilot Program to allow more categories of technology to be eligible for expedited processing under the program.  Eligibility for the pilot program, which was designed to promote the development of green technologies, had previously been limited to applications within a select number of U.S. classifications.  Inventions are classified at the USPTO according to what is known as the Manual of Classification.  The USPTO has now removed that requirement. By allowing more inventions related to green technologies to be accorded special status and receive expedited examination, the Green Technology Pilot Program will accelerate the development and deployment of green technology, create more green jobs and promote U.S. competitiveness in this vital sector.


Under the Green Technology Pilot Program, pending patent applications in green technologies are eligible to be accorded special status and given expedited examination.  Patent applications are normally taken up for examination in the order that they are filed. Under the pilot program, for the first 3,000 applications related to green technologies in which a grantable petition is filed, the agency will examine the applications on an expedited basis. 
When the Green Technology Pilot Program was announced in December 2009, the program was limited to inventions in certain classifications in order to assist the USPTO in balancing the additional workload and to gauge the resources needed for the program.  The USPTO has determined that the classification requirement is unnecessary because the workload has been balanced with other mechanisms, and the requirement was causing the denial of petitions for a number of green technology applications that would have otherwise qualified for the program.  

To date, more than 950 requests have been filed by applicants who wish for their application to be eligible for the Green Technology Pilot Program.  Only 342 of those have been granted, primarily because many of the inventions weren’t in classifications that were eligible.  The lifting of the classification requirements is expected to allow many more applications to be eligible for the program.

The full announcement is available here.

Patent Law Hits Primetime Drama with Kathy Bates on Harry's Law

Kathy Bates will play a former patent attorney in the upcoming prime time TV show, Harry's Law.  She will play a cranky former patent attorney who changes direction to practice criminal defense.  Here is a clip:

US Patent Application Pendency by Technical Area

The following table shows the average First Office Action Pendency and Total Average Pendency for pending patent applications to date for Fiscal year 2009, broken down by technology center.

PATENT PENDENCY STATISTICS (FY 2009)

Pendency Statistics by Technology Center (in months)	Average First Action Pendency	Total Average Pendency
Total Pendency	25.8	34.6
Tech Center 1600 - Biotechnology & Organic Chemistry	22.5	35.1
Tech Center 1700 - Chemical & Materials Engineering	25.9	37.4
Tech Center 2100 - Computer Architecture, Software & Information Security	29.4	40.7
Tech Center 2400 - Networks, Multiplexing, Cable & Security	28.6	47.7
Tech Center 2600 - Communications	33.0	42.7
Tech Center 2800 - Semiconductor, Electrical, Optical Systems & Components	20.8	29.7
Tech Center 3600 - Transportation, Construction, Agriculture, & Electronic Commerce	24.4	35.1
Tech Center 3700 - Mechanical Engineering, Manufacturing & Products	26.5	35.5

According to data published by the USPTO in the Performance and Accountability Report Fiscal Year 2009Management's Discussion and Analysis the 2009 pendency goals at the US Patent and Trademark Office ("USPTO") are:

First Official Action:  27.5 months.
Overall Disposal (Issued or abandoned): 37.9 months.

Steps that are being taken to reduce the patent pendency include:
Hiring additional examiners, which is largely dependent upon the passage of a Congressional Bill into law that would give the USPTO the authority to set fees, but not allow Congress to "siphon off" fees collected by the USPTO.

First action interview program to provide interviews early in the prosecution to identify patentable subject matter early to result in an early disposition of the application.

Changing the patent examiner count system to discourage Continued Prosecution Applications.

With over 800,000 patent applications pending, and another 70,000 filed each year, it is time to get the gears of the USPTO up to speed again, for the benefit of Inventors, Entrepreneurs, Businesses of all sizes and the American Public.

CAFC Affirms District Court - Two Verizon Patents Invalid and Four Not Infringed

On April 16, 2010 the Court of Appeals for the Federal Circuit ("CAFC") upheld the District Court for the Eastern District of Virginia jury verdict that the asserted claims of two Verizon patents (US Patents 6,282,574 and 6,104,711) were invalid and the asserted claims of four Verizon patents (US Patents 6,430,275; 6,292,481; 6,137,869 and 6,636,597) were not infringed.  See Verizon Services Corp. et al. v. Cox Fibernet Virginia, Inc. et al., 2009-1086, -1098 (CAFC, April 16, 2010).

The six patents at issue relate generally to packet-switched telephony ─technology for providing telephone calls by breaking up voice signals and sending the resulting data in packets, not all of which need traverse the same path, through a network. Packet-switched telephony increases the efficiency of the underlying network over traditional circuit switching, which relies on a dedicated path between endpoints of a call.

On appeal, both parties challenged the district court’s denial of their respective motions for judgment as a matter of law and motions for new trial.

US Patents 6,282,574 and 6,104,711 both relate to a server with an expanded variety of translation services over a traditional domain name server, allowing for a wider range of routing options over packet-switched networks. This additional functionality allows providers of VOIP to offer enhanced features, such as call-forwarding and voicemail, to which users of traditional telephone service have become accustomed.
 

US Patents 6,430,275; 6,292,481 and 6,137,869 provide for bundling the traditionally separate databases of usage recording, pricing, and authorization into a single logical database in order to ensure scalability of the system, reduce the potential for fraud, and allow mechanisms for network support infrastructure, pricing, call flow, and billing.

US Patent 6,636,597 provides a method for providing services over a packet-switched network by dynamically allocating resources to vary the quality of service on a call-by-call basis.

In 2003, Cox began to provide telephone service over its private cable network using a packet-switched technology called PacketCable.  In January 2008, Verizon sued Cox for willfully infringing its patents by deploying Cox’s packet-switched telephone service.

Verizon argued that Cox improperly argued to the jury about the scope of the claims.  Specifically, Verizon alleged that Cox and it experts repeatedly argued that the scope of the asserted claims was limited by the intent of the inventors.  The CAFC rejected Verizon's arguments stating: "we are not persuaded that the district court abused its discretion by refusing to order a new trial on the basis of Cox’s arguments to the jury. Validity and infringement were vigorously litigated, with extensive testimony, physical exhibits, and argument from both sides." Slip op. at 13.  The CAFC added, "Verizon did not, during the trial, request a limiting instruction based on Cox’s allegedly improper claim scope arguments. Nor did Verizon object to any arguments made during Cox’s closing. Finally, Verizon had the opportunity, in its own closing, to rebut any improper or misleading statements it perceived in Cox’s closing arguments but instead said nothing."

The CAFC also affirmed the District Court's verdict of obviousness of the asserted claims of US Patents 6,282,574 and 6,104,711 based on expert testimony that related to public domain articles concerning the claimed elements.

Verizon's arguments that Cox infringed claim 1 of US Patent 6,292,481 were rejected by the CAFC because the evidence did not prove that Cox's system included all elements of the asserted claim.

Proposed House Legislation Allows USPTO to Set Fees but Does Not Prevent Congressional Diversion

Tomorrow the House is expected to take up a bill that would allow the US Patent and Trademark Office ("USPTO") to set its own fees for its operations, but would not bar Congress from diverting some of the fees for other purposes.

Both the American Intellectual Property Law Association ("AIPLA") and The Coalition for 21st Century Patent Reform ("CCPR") oppose the proposed legislation.  The CCPR includes major companies such as DuPont, General Electric, Motorola, Merc and 3M.

The USPTO is in drastic need of reformation.  The AIPLA and the CCPR are in favor of legislation that would allow the USPTO to set its own fees for operations, but the legislation needs to prohibit Congress from diverting fees collected by the USPTO to other government programs.  Since 1982, Congress has diverted over $900 milliion from the USPTO.  Those fees were paid by inventors, patent owners and trademark applicants.  The fees should be used to pay examiners, increase the number of examiners and upgrade the antiquated Information Technology infrastructure of the USPTO. 

Unless Congress is prohibited from diverting funds from the USPTO, the bill would simply turn the USPTO into a cash cow to be used as desired by Congress for programs that are unrelated to innovation and entrepreneurship in American.

Federal Circuit Judge Urges Congress to Repay the US Patent Office to Preserve American Economic Security

Paul R. Michel is the Chief Judge of the United States Court of Appeals for the Federal Circuit ("CAFC").  The CAFC is the court of exclusive jurisdiction of all patent cases that are appealed from federal district courts from across the country.  In a speech delivered to the Patent Examiners at the US Patent and Trademark Office ("USPTO") in Alexandria, Virginia last month, Judge Michel urged Congress to repay the $900 million that has been diverted away from the fees collected by the USPTO since 1982.  The figure recommended was actually $1 Billion.  The full text of Judge Michel's speech can be found here.

American economic security is being threatened by an outflow of jobs, talent, technology and production.  We must boost invention and make new products Americans and the rest of the world will need, want and buy.  The answer is to provide faster, sounder and clearer patents, plus faster, stronger enforcement.  Such improvements can be made if we improve the USPTO and the Federal Courts.  Patents have been the main engine of economic growth and technological progress since 1790 when the First Congress passed the first Patent Act.

Among the problems identified are:

• Delay: in some technologies it is taking 4-6 years to get a patent and the product life-cycle may be shorter than that.  The gears of the USPTO seem to almost be seized up.
• Antiquated technology:  It is ironic that the government entity that examines state of the art technology is using 30 year old computer technology.
• Backlogs:  There are over 700,000 patent applications that sit unread in a warehouse in Alexandria, Virginia, often for years.  Almost 400,000 new applications are being filed each year, which adds to the backlog.
• Employee turnover: Most examiners leave after only 3 years for better pay and working conditions in the private industry.  The average experience level of the 6,000 examiners has fallen to only about 3 years, but it takes that long to become experienced and competent.  Inexperienced examiners harm the system by rejecting claims that should be allowed and allowing claims that should be rejected.
• Fee diversion:  Since 1982 Congress has diverted over $900 Million from the USPTO.  Even this fiscal year, Congress will not allow the USPTO to keep the fees that it collects from inventors and patent owners.  An estimated $150-250 million will be diverted from the USPTO to other government programs.  

The solution proposed is to:

• Provide a one-time capital investment of $1 billion.  In view of what has already been diverted, such an investment by congress would be a repayment of money already taken from fees that have been collected by the USPTO.
• Guarantee that Congress will stop diverting fees away from the USPTO. 
• Hire thousands of additional patent examiners.
• Provide salary increases to retain experienced examiners.
• Modernize the 30 year old computer system.
• Increase space to house the additional patent examiners.
• Open satellite offices in major cities such as Houston and Detroit.
• Hire unemployed engineers who are already experienced in patent matters.
• Exclude scientists and engineers from the restrictive General Pay Schedule so that the pay can be increased for examiners to be more competitive with private industry.
• The Director should be given greater authority to give earlier examination to patent applications in promising new technologies and individual applications for pioneering inventions.

Judge Michel closes by saying that it is time for Congress to "prime the pump" -- only then can private investment take over.  This is perhaps the best and perhaps only way to increase innovation and reverse competitive decline in America.  It could restore us as the technology leader of the world, increase private and public revenues and stock value and create millions of new jobs.

Broadest-Construction Rubric Coupled with Term "Comprising" Does not Give USPTO Unbridled License to Expand Scope of Claims

The Court of Appeals for the Federal Circuit ("CAFC") held in In re Suitco Surface, Inc., 2009-1418 (CAFC, April 14, 2010) that the "broadest broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”).

The CAFC remanded the US Patent and Trademark Office ("PTO") claim interpretation that was made during a reexamination proceeding.  The reexamination was for US Patent 4,944,514 ("the '514 patent"), the representative claim 4 follows:

4. On a floor having a flat top surface and an improved material for finishing the top surface of the floor, the improvement comprising:
at least one elongated sheet including a uniform flexible film of clear plastic material having a thickness between about one mil and about twenty-five mils and
a continuous layer of adhesive material disposed between the top surface of the floor and the flexible film, the adhesive layer releasably adhering the flexible film onto the top surface of the floor. (emphases added).

During reexamination, the Board of Patent Appeals and Interferences ("the Board") affirmed the patent examiner's rejection of claim 4 based on US Patent 3,785,102 ("Amos") or US Patent 4,543,765 ("Barrett").  Amos shows a plurality of plastic sheets, each containing an adhesive layer.  Individual layers are removed after they have been used to collect dirt or other debris from the soles of shoes by people entering a clean or sterile room.  Barrett shows the use of a clear plastic connected to a floor with an adhesive layer.  The clear plastic in Barrett is used to temporarily protect a floor during construction.

In its rejection, the Board construed the term “material for finishing the top surface of the floor” to mean “requiring a material that is structurally suitable for placement on the top surface of a floor.” Under that construction, according to the Board, the “material for finishing the top surface of the floor” could be any layer above the floor regardless of whether it was the top or final layer. The Board also construed the term “uniform flexible film” to mean “including, for example, a flexible film having the same thickness throughout, as well as a flexible film having the same textured surface throughout.” 

The CAFC disagreed, stating the express language of the claim and the specification require the finishing material to be the top and final layer on the surface being finished. See, e.g., ’514 patent, col.1 ll.15-20 (“The present invention is directed generally to a material and method for quickly and easily producing a transparent wear resistant finish on a smooth flat surface subject to wear and more particularly to a material and method for finishing a floor . . . .”). The PTO’s proffered construction therefore fails.  Slip Opinion at pages 8-9.

Federal Circuit Reverses $21 Million East Texas Judgment Against Nintendo

In Anascape LTD., v. Nintendo of America, Inc., 2008-1500 (Fed. Circ., April 13, 2010), the Federal Circuit ("CAFC") reversed the US District Court for the Eastern District of Texas, which held that certain Wii, Wavebird and GameCube Nintendo video game controllers infringed US Patent 6,906,700 ("the '700 patent").  The District Court decision awarded $21 million to Anascape, Ltd., a small Texas-based company.

The '700 patent was a continuation-in-part application that claimed priority to US Patent 6,222,525 ("the '525 patent").  The '700 patent claims multiple input members that operate in six degrees of freedom.  The issue was whether the claims in the '700 patent were supported by the '525 patent.  The CAFC found that the '525 patent did not provide support for the '700 patent because it only disclosed a single input member that operates in six degrees of freedom.  The changes provided in the application that issued as the '700 patent would have been considered new matter if entered in the application that issued as the '525 patent.  There were a total of twenty explicit statements that the '525 invention is directed to a single input member that is operated in six degrees of freedom [emphasis added].

Intervening prior art, which was sold by Sony before the application that issued as the '700 patent did include multiple input members that operate in six degrees of freedom provided the basis for invalidating the '700 patent.

Failure to File Section 8 Declaration of Use Does Not Negate Evidence of Intent Not to Abandon Mark

In THE CRASH DUMMY MOVIE, LLC v. MATTEL, INC. (CAFC 2009-1239, April 16, 2010), the Federal Circuit found that Mattel's failure to file a timely Section 8 declaration of use did not negate Mattel's intent to resume its use of the mark.


Mattel, via its predecessor in interest Tyco, had registered the mark CRASH DUMMIES for games and playthings in 1991.  Mattel failed to file a declaration under Section 8 and as a result, the USPTO canceled its mark on December 29, 2000.  On March 31, 2003 Crash Dummy Movie, LLC ("CDM") filed an intent-to-use trademark application for the mark CRASH DUMMIES for games and playthings.  Mattel opposed CDM's application, claiming priority, based on common law rights and an intent not to abandon its CRASH DUMMIES mark.

The Trademark Trial and Appeal Board ("TTAB") found a prima facia abandonment of the CRASH DUMMIES mark, based on three years of nonuse, beginning at the earliest on December 31, 1995, and ending at Mattel’s actual shipment of CRASH DUMMIES toys in December 2003.

However, the Board concluded that Mattel rebutted the presumption of abandonment of its common law trademark rights by showing “reasonable grounds for the suspension and plans to resume use in the reasonably foreseeable future when the conditions requiring suspension abate.”

The CAFC agreed with the TTAB and affirmed its holding based on the following factors:

First, in 1998, Mattel entered into discussions with KB Toys about becoming the exclusive retailer of CRASH DUMMIES toys. Mattel considered the relative merits of exclusive sales through KB Toys and the high cost of retooling Tyco’s product line to meet Mattel’s stringent safety standards.

Second, common sense supported the conclusion that Mattel would not have recorded Tyco’s trademark assignment with the USPTO in 1998 unless it intended to use the CRASH DUMMIES mark within the foreseeable future.

Third, substantial evidence supported the Board’s finding that Mattel’s research and development efforts from 2000 to 2003 indicate its intent to resume use of the marks.

Although this case does not give reasons not to file the necessary maintenance and renewal documents, it does provide support for establishing an intent not to abandon a mark under common law.

Federal Circuit ("CAFC") Affirms Description is Separate from Enablement in Patent Specification

In an en banc, 9-2 decision, the CAFC, affirmed that Section 112, first Paragraph of 35 U.S.C. requires that a a patent specification not only describe the manner of making and using a claimed invention, but also separately requires a written description of the claimed invention.  Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., Fed. Cir., No. 2008-1248, 3/22/2010.

The court emphasized that if Congress had intended enablement to be the sole description requirement of section 112, first paragraph, the statute would have been written differently.  Furthermore, the rationale for a patent grant is a quid pro quo exchange between the inventor and the US Government.

The court found that a "vague functional description and an invitation for further research does not constitute a written description of a specific inhibitor."  Slip Op. at page 33.

This case illustrates the hazards of rushing, too soon to file a patent application in a rapidly developing technology.  If the application is filed too soon, before sufficient disclosure is available to support the claims, the validity of the claims could be challenged successfully.  On the other hand, the application should still be filed as soon as possible to avoid a priority of invention contest at the US Patent and Trademark Office.

This case arose in the context of the pharmaceutical technologies where some applications are filed before specific examples are available to support species (dependant) claims.  The impact of this case is not limited to pharmaceuticals however.  Many Internet, business method patents were filed with specifications that lacked in depth details concerning the claimed subject matter or some of the claims.  The validity of many of the business method patents claims may now be at risk.

Workflow may Pickup at US Patent and Trademark Office by the Third or Fourth Quarter of this Year

The workflow at the US Patent and Trademark Office ("USPTO") has slowed down dramatically over the past couple of years.  First Office Actions, which historically issued within 12-18 months after filing a new patent application are now taking over two years.  Even though the delays are added to the patent life under the American Inventors' Protection Act, the delay creates problems for inventors and patent owners because they do not know know the extent of the patentability of their inventions until the USPTO issues an opinion on patentability or when a patent actually issues.

In an effort to speed up the slow turning gears at the USPTO, a hiring campaign in underway.  The hiring is targeting people who either have patent examining experience or experience working in the Intellectual Property field and who have the skills necessary to examine patent applications.  The recent announcement drew in over 4,000 applications.  The USPTO has published a schedule that describes when decisions should be made on who will be hired from the large bank of applicants.  According to the schedule, individuals who are hired could start work as early as May 10th, June 7th or July 6th, 2010.

This is all potentially great news to the patent community and to inventors and invention owners.  We will all benefit when the USPTO returns to a reasonably paced workflow.

Social Networking Patents Emerge from US Patent and Trademark Office (“USPTO”)

Amazon, Google and Facebook have each recently been granted US Patents for social networking related patents.  Each of the patents have issued in the wake of the important case of In re Bilske, 545 F.3d 943 (Fed. Cir. Oct. 30, 2008), cert. Granted sub nom. Bilski v. Doll, 129 S. Ct. 2735 (June 1, 2009) (No. 08-964), renamed Bilski v. Kappos, No. 08-964.  A decision on the Bilske case is expected sometime this spring. 

The issue in the Bilske case involves what test or set of criteria governs the determination of whether a claim to a process is patentable under 35 USC § 101.  Specifically, the questions now before the US Supreme Court are:

1.      1.   [w]hether the Federal Circuit erred by holding that a ‘process’ must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (‘machine-or-transformation’ test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for ‘any new and useful process beyond excluding patents for ‘laws of nature, physical phenomena, and abstract ideas’,” and

2.       2. “[w]hether the Federal Circuit's ‘machine-or-transformation’ test for patent eligibility…contradicts the clear Congressional intent that patents protect ‘method[s] of doing or conducting business.’ 35 U.S.C. § 273.” See Bilski v. Kappos, No. 08-964 (June 1, 2009) at  http://origin.www.supremecourtus.gov/qp/08-00964qp.pdf.

US Patent 7,606,725 (“the Amazon patent”) issued October 20, 2009 for a networked computer system that provides various services for assisting users in locating, and sharing information with other users.  The system provides a user interface through which users can establish contact relationships with other users. The system also provides functionality for users to identify contacts of their respective contacts. For example, in one embodiment, each respective user can conduct a search of contacts of the respective user. The search may be limited in scope to users that satisfy one or more particular search criteria, such as users that reside in a particular region or are affiliated with a particular group.

US Patent 7,668,832 (“the Google patent”) issued February 23, 2010 for a computer-implemented method of determining and using geolocation information to target advertisements, determine scoring and pricing information about the advertisements.

US Patent 7,669,123 (“the Facebook patent”) issued February 23, 2010 for generating news items regarding activities associated with a user of a social network environment and attaching an informational link associated with at least one of the activities, to at least one of the news items, as well as limiting access to the news items to a predetermined set of viewers and assigning an order to the news items. The method further may further include displaying the news items in the assigned order to at least one viewing user of the predetermined set of viewers and dynamically limiting the number of news items displayed.

The US Supreme Court decision could render the validity in doubt of many business method patents, including the Amazon, Google and Facebook patents.  

The US Patent and Trademark Office issued Interim PatentSubject Matter Eligibility Examination Instructions on August 24, 2009 after the CAFC Bilske decision.  In the examples provided, example claim 5 is determined to be eligible subject matter because comparing is performed using a microprocessor, whereas example claim 6 is not eligible subject matter even though it provides method steps that include sorting, ranking and comparing, but does not explicitly state using a microprocessor.  Based on this criteria, the Facebook patent may be at risk because the only reference to a computer is in the second paragraph, “storing the plurality of activities in a computer…”  The Amazon and Google patents by comparison, do satisfy the criteria by performing transformational processes by a computer.

Business method patents will be front and center soon after the US Supreme Court issues its ruling and there will be plenty at stake.

US Patent and Trademark Office (“USPTO”) issues guidelines for Computer Readable Media

The USPTO has suggested amending any claim that is drawn to a computer readable media that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 USC § 101 by adding the limitation “non transitory” to the claim.  The Notice isavailable here.

The suggestion follows the case of In Re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), in which signals were claimed that were watermarked.  That is, the original signals were manipulated so as to imbed the signal with additional data.  Because patent claims during examination at the USPTO are interpreted as broadly as possible, if claims are not limited to being non-transitory, the USPTO will reject them as being non-patentable subject matter.

The only situation where the suggested amendment could raise issues of new matter, is when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment.

Federal Circuit Equates Specific Intent with Deliberate Indifference for Inducement to Infringe a Patent

IN SEB S.A. and T-FAL Corporation v. Montgomery Ward et al., the Court of Appeals for the Federal Circuit (“CAFC”) considered the appeal of a host of issues concerning the infringement of US Patent 4,995,312 (“the ‘312 patent”) relating to a jury verdict and the district court’s post-trial rulings. The ‘312 covered deep fryers having a metal pan surrounded by an air cavity that sits within a plastic material housing that can be ordinary-grade plastic that does not have high heat resistance.

Pentalpha was one of three named defendants. The other two defendants, Montgomery Ward and Global-Tech Appliances were buying deep fryers from Pentalpha that were accused of infringing the ‘312 patent. In addition to questions of claim construction and infringement, the Court had to consider on appeal whether Pentalpha acted with sufficient intent to be liable for inducement to infringe the ‘312 patent by Montgomery Ward and Global-Tech Appliances.

The CAFC first cited its precedent that inducement requires a showing of “specific intent to encourage another’s infringement” Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 699 (Fed. Cir. 2008) (quoting DSU Medical, 471 F.3d at 1306). But the CAFC then relied upon Crawford-EL v. Britton, 951 F.2d 1314, 1318 (D.C. Cir. 1991) for the proposition that “specific intent” in the civil context is not so narrow as to allow an accused wrongdoer to actively disregard a known risk that an element of the offense exists. And further, specific intent is equated to deliberate indifference.

Based on the facts of the case, the CAFC found that even though the SEB had not produced direct evidence that Pentalpha SEB acted with deliberate indifference based on the following:

It had purchased an SEB deep fryer in Hong Kong and copying all but the cosmetics.

It failed to inform its patent counsel that it copied the SEB deep fryer when it requested a freedom to operate search opinion.

Its Its president, John Sham, was well versed in the U.S. patent system and understood SEB to be cognizant of patent rights as well. Sham testified that he was the named inventor on 29 U.S. patents and that Pentalpha and SEB had an earlier business relationship that involved one of Pentalpha’s patented steamer products.

The CAFC also noted that the case did not “purport to establish the outer limits of the type of knowledge needed for inducement” A patentee may only need to show, as the Insituform case suggests, constructive knowledge with persuasive evidence of disregard for clear patent markings may be enough.

BLACK MAIL refused for Lack of Proof of Bone Fide Intent to Use the Mark

Research in Motion Limited ("RIM"), well known owner of the BLACKBERRY mark, opposed the registration of the mark BLACK MAIL by the NBOR Corporation ("NBOR"). Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 to application Serial No. 77090059 filed on January 24, 2007.

Applicant filed the mark BLACK MAIL for: "computer software for facilitating interactive communication, namely, chat, electronic mail, voice, instant messages, text transfer, multi-media transfer, live collaboration, motion pictures, and sound over a global computer information network and other networks"

RIM opposed the registration of BLACK MAIL on two grounds,

• likelihood of confusion with its mark BLACKBERRY under 15 USC § 1052(d); and
  
• lack of a bone fide intent to use the mark in commerce.
  

The Trademark Trial and Appeal Board ("TTAB") did not reach the issue of likelihood of confusion because it found that NBOR could not establish by a preponderance of the evidence that it had a bone fide intent to use BLACK MAIL in commerce.

The TTAB listed the following as what NBOR did not provide to prove a bone fide intent to use the mark:

• it has not offered any goods or services for sale under the involved mark;
  
• the mark has not been used and no plans have been made as to how the mark may be used;
  
• there is no projected date of first use in commerce;
  
• no channels of trade have been formulated or planned for the future;
  
• the classes of consumers and geographic areas of sales have not yet been determined;
  
• applicant has not undertaken any market studies, surveys, or focus groups; and
  
• no documents exist regarding plans for expansion and growth of the product and service lines under the mark.
  

NBOR had previously filed two trademark applications for the same mark and both applications were abandoned because no Statements of Use were filed. NBOR's argued that its previously filed applications and twenty-three letters or emails to its attorney relating to the present and applications a bone fide intent to use the mark. The TTAB rejected its argument:

Evidence bearing on bona fide intent is "objective" in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant's testimony as to its subjective state of mind. That is, Congress did not intend the issue to be resolved simply by an officer of applicant later testifying, "Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future."

J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19:14 (4th ed. 2009).

This case provides a reminder that a trademark application under Section 1(b) of the Lanham requires objective documentation of a bone fide intent to use the mark no later than the beginning of the opposition period and objective steps should be taken to use the mark at the time the application is filed.

CAFC Expands Ruling to Leave Open Question of Abandoned versus Dedicated to the Public

The Court of Appeals for the Federal Circuit (“CAFC”) found the District Court for the Southern District of New York erred in its claim construction of critical claim terms in Shindler Elevator Corp. et al. v. Otis ElevatorCompany,  2009-1146 (CAFC, January 15, 2010).  As a result, the District Court’s summary judgment of non-infringement by Otis of US Patent 5,689,094 (“the ‘094 patent”) ruling was vacated.   The accused elevator control system was installed at 7 World Trade Center in New York City.

The ‘094 patent includes two independent claims, both of which include the disputed terms at issue:   “information transmitter” and “recognition device”.

In Fig. 2, the recognition devices 5 mounted in access areas 33 and 34. When a passenger 35 is recognized in access area 33, an elevator is dispatched, and a display device 18, which is mounted above the elevator door and/or at an input device 19, tells the passenger which elevator to take. A proposed destination floor is announced acoustically or is displayed visually on display device 18. If the passenger wishes to change his destination floor, he may do so manually at input device 19.

Claim 1 is representative of the asserted claims and includes the disputed claim elements “information transmitter” (and “recognition device”. 

1. An elevator installation having a plurality of elevators comprising:

a recognition device for recognizing elevator calls entered at an entry location by an information transmitter carried by an elevator user, initializing the entry location as a starting floor of a journey;

a control device receiving the recognized elevator call and allocating an elevator to respond to the elevator call, through a predetermined allocating algorithm;

a call acknowledging device comprising one of a display device and an acoustic device to acknowledge recognition of the elevator call and to communicate a proposed destination floor to the elevator user;

the recognition device, mounted in the access area in the vicinity of the elevators and spatially located away from elevator doors, actuating the information transmitter and comprising a unit that independently reads data transmitted from the information transmitter carried by the elevator user and a storage device coupled between the unit and the control device;

the recognition device one of transmitting proposed destination floor data, based upon the data transmitted from the information transmitter, to the control device, and, transmitting elevator user specific data,  based upon individual features of the elevator user stored in the storage device, to the control device.

The District Court’s Claim Construction:

The district court construed “information transmitter” to mean “a device that communicates with a recognition device via electromagnetic waves, after being actuated by that recognition device, without requiring any sort of personal action by the passenger.”  It construed “recognition device” to mean “a device that actuates and reads data transmitted by an information transmitter without requiring any sort of personal action by the passenger.” Id. In the claim construction order, the district court declined to specify the particular kind of “personal action” prohibited under its construction, but stated that it “rules out, not just standing in front of the recognition device, or inputting data into the information transmitter by hand, but any and all types of personal action by the passenger.”

The district court issued its summary judgment ruling on November 17, 2008. Although it had previously said that “any and all types of personal action” were prohibited under its construction, the district court refined its understanding of “personal action” on summary judgment to expressly permit “walking into the monitored area.”

The CAFC Claim Construction and Analysis:

The CAFC majority held that the District Court’s claim construction was too narrow and construed the claims to allow the user to take “personal action” to the extent that he or she brings the “information transmitter” within range of the “recognition device”.

The majority relied upon the claim language, the specification and the file prosecution history to construe the claims.

Claim Language:

The majority found that in claim 1, the term “information transmitter” itself suggests that the transmitter is a thing, separate and apart from an “elevator user”, which transmits information. The claim also provides that “elevator calls [are] entered at an entry location by an information transmitter.” Thus, at least with regard to the transmission of information and the entry of calls, it is the information transmitter—not the elevator user—that performs these tasks.

Carrying a transmitter is thus a type of “personal action” that is expressly required in the claims. The majority held that nowhere does claim 1 limit the act of carrying to any specific manner of carrying.

Claim 7 depends from claim 1 and adds the phrase “wherein the recognition device reads a key having a code.”  Because a user would need to use his hands to bring the transmitter key within range of the recognition device to unlock the door, or to clock in or out of work, these types of personal action are implicitly permitted in claim 7 and, by extension, in claim 1.

Specification:

The phrase “personal action” is used only once in the specification, in the following sentence:

The advantages achieved by the invention reside in the fact that the desired journey destination is communicated automatically to the elevator control by [(1)] the information transmitters carried by the elevator users or by [(2)] the recognition of features of the elevator users without any personal action being required by the passenger.

The majority supports the broad reading of personal action, because a passenger would need to place his hand on the optical recognition device for it to read his fingerprints, this cannot be the “personal action” to which the sentence refers.

Prosecution History:

The majority interpreted the prosecution where it describes the invention as operating “automatically, contactlessly, and independently of the orientation of the information transmitter” as modification actions that take place only after the passenger has brought the transmitter within range of the recognition device—specifically, the actuation of the transmitter, the entry of call commands, and the selection of a destination floor.  The majority therefore concluded that applicants’ statement during the prosecution did not constitute a “clear and unmistakable” disavowal of personal action for the limited purpose of bringing the transmitter within range of the recognition device. Instead, the majority read the prosecution history in this case “as support for the construction already discerned from the claim language and confirmed by the written description.” citing 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1365 (Fed. Cir. 2008).

Dissent:

The dissent agrees that the “without requiring any sort of personal action” construction imposed by the district judge unduly limited the scope of the claims.  Dependent claim 7 contemplates using a key (or a card swipe) to enter the building and at the same time transmitting the user’s elevator data.  In other words, the device would be “hands-free” and “automatic” even though the user has to take elaborate action to bring the device within range.

The specification and prosecution history make no such distinction, and consistently emphasize the hands-free and automatic nature of the device without regard to whether it is in range or not.

The majority disputes the dissent’s position in footnote 2, stating that “The embodiment was not “abandoned,” it simply was never claimed in the application that led to this particular patent.” 2009-1146 at page 11, fn 2. 

That raises the question of how does abandoned compare with the well established rule that disclosed, but unclaimed matter is dedicated to the public. Johnson & Johnston Associates, Inc. v. R.E. Service Co., Nos. 99-1076, -1179, -1180, 2002 WL 466547 (Fed. Cir. Mar. 28, 2002) (en banc) (per curiam).   There were no divisional patent applications filed from this application that resulted in the ‘094 patent, so according to Johnson & Johnson, the embodiment was dedicated to the public.  This case leaves open the question:  what is the difference between “abandonment” and “dedication to the public”?

CAFC Constructs Patent Term Extension Provision of 1999 AIPA to Benefit Inventors

The Court of Appeals for the Federal Circuit (“CAFC”) has interpreted the 1999 American Inventors Protection Act (“AIPA”) to benefit inventors in contrast to the position asserted by the US Patent and Trademark Office (“USPTO”).  Wyethet al. v. David J. Kappos et al., 2009-1120 (CAFC, January 7, 2010).

In 1999, the American Inventors Protection Act amended 35 U.S.C. § 154(b) to address the problem of reduced patent terms caused by delays be the USPTO.  Prior to the passage of the AIPA, the patent term in the US was 17 years from the date of issue of the patent.  The AIPA provides a patent term of 20 years from the date of filing of the application. 

The AIPA, 35 U.S.C. § 154(b)(1) provides:

(A) Guarantee of prompt Patent and Trademark Office responses.--Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to [meet deadlines specified in clauses (i)-(iv)] . . .

the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.

(B) Guarantee of no more than 3-year application pendency.--Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States . . .

the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.

(C) Guarantee or adjustments for delays due to interferences, secrecy orders, and appeals.--Subject to the limitations under paragraph (2) . . .

the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.

Paragraphs (A) and (B) are at issue.  Paragraph (A) is referred to as the A delay and paragraph (B) is referred to as the B delay.  The USPTO interpreted the B delay to start at the time of filing the patent application, not three years later.  The resulting USPTO calculation was the greater or the A delay and the B delay, less delays by the applicant.   

The District Court for the District of Columbia found that “The problem with the PTO’s interpretation is that it considers the application delayed under [the B guarantee] during the period before it has been delayed.” Wyeth v. Dudas 580 F. Supp. 2d 138, 141 (D.D.C. 2008) (citing Merck & Co. v Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996)).

The CAFC agreed with the District Court and constructed the statute to require the adding the A delay plus the B delay less delays by the application.  Although this may sometimes result in patent terms that are greater than 17 years, such a patent term is supported in the legislation.  Specifically, the statute provides that the statute “includes a new provision guaranteeing diligent applicants at least a 17-year term…”  H.R. Rep. No. 106-464, at 125 (1994) (emphasis added).  The USPTO’s interpretation effectively created a 17-year term cap where B delays are greater than A delays.

Means Plus Function Claims Still Limited to Structure Described in Specification

The Court of Appeals for the Federal Circuit ("CAFC") this week in RESTAURANT TECHNOLOGIES, INC. v. JERSEY SHORE CHICKEN and KLEE’S BAR & GRILL, have essentially held that means plus function claims cover the structure as disclosed in the specification.

The case involved an invention that relates to the supply and disposal of cooking oil for use with restaurant fryers. Restaurant Technologies, Inc. ("RTI") owns the patent in suit, US Patent 5,249,511 ("the '511 patent"), that is directed to a system for the distribution, filtering, removal, and disposal of cooking oil.  The system enhances safety to workers and efficiency to deep frying operations.

The primary disputed claim term involved a squeezable trigger valve, which RTI argued would be equivalent to a lever, button, or some other structure, including either the pump or the dipstick with a triggering button of the accused product.   The CAFC disagreed, "although the dipstick assembly, in conjunction with the pump, may perform the identical function as the squeezable trigger valve, the differences between the dipstick assembly plus a pump on the one hand, and a squeezable trigger valve with a nozzle, on the other, are not insubstantial. For example, the dipstick assembly and pump are activated with a push button on the dipstick assembly that energizes the pump; fluid pressure in the line then overcomes a spring-loaded check valve to pour into the fryer. The accused system thus uses a pump and fluid pressure to overcome a check valve, whereas the patent claims a valve that is squeezed. Thus, no reasonable fact finder could have found that the dipstick assembly, alone or in conjunction with the pump, meets the limitations of claim 1, paragraph (d)(iii)."

Additional claim terms were in dispute but all were construed according to the specific structure and then evaluated for equivalence based on the insubstantial difference test.  Having found insubstantial differences between the claimed elements in the '511 patent and the accused device, the District Court Judgment of Non-infringement was affirmed and we are again reminded that means plus function format claims are still limiting claims.

A Picture on a Website is Not Necessarily Required for a Trademark Specimen

The Court of Appeals for the Federal Circuit ("CAFC") has held in In Re Michael Sones that a photograph is not necessarily required in a specimen to support a Statement of Use.  In the Sones case, the trademark applicant applied to register the mark "ONE NATION UNDER GOD" for use on Charity Bracelets (Serial No. 78/717,427).  The application was filed under Section 1(b) of the Lanham Act on the basis of a bone fide intent to use the mark in commerce.  The mark was allowed after being published for opposition for the required 30 day opposition period.  

The applicant filed a Statement of Use together with a "specimen" showing the mark as used in commerce. The specimen consisted of a web page that included the mark and the description "Charity Bracelet".

The USPTO rule for Internet specimens is provided in the Trademark Manual of Examining Procedure at § 905.06:

Displays may be used as Specimens, provided:

1. A picture of the relevant goods is included;
2. The mark is sufficiently near the picture of the goods to associate the mark with the goods; and
3. Information necessary to order the goods is provided.

This is known as a point of sale display specimen and was adopted by the USPTO after the Internet began to be used for interstate commerce.   At that time, the USPTO was strict in their acceptance of Internet specimens for purposes of supporting a Statement of Use.

During oral arguments, the Court asked the USPTO attorney interesting questions regarding the practical need for photographs in an Internet specimen.  For example, Judge Linn asked whether a picture of a point of sale display in a store would be rejected if the photograph consisted of  the mark near a stack of plain boxes, each of which included the mark.  The USPTO attorney said that it probably would.  Oral arguments are available to listen to online here.

The operative question, according to the CAFC is whether the mark is associated with the goods on which the mark is used.  On remand, the CAFC has ordered the CAFC to consider the evidence as a whole to determine if applicant's specimen associates his mark with his charity bracelets so as to "identify and distinguish the goods."  citing Bellsouth, 60 F.3d at 1569; see also Damn I'm Good, Inc. v. Sakowitz, Inc., 514 F. Supp 13587 (S.D.N.Y. 1981).