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.