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.