Wednesday, January 27, 2010

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.

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).

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”?

Thursday, January 21, 2010

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.

Thursday, January 7, 2010

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.

Wednesday, January 6, 2010

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).  

Tuesday, January 5, 2010

The North Face Sues the South Butt for Trademark Infringement

The North Face Apparel Company has sued the South Butt LLC for trademark infringement in Missouri.  This links to the complaint.  South Butt will argue that its mark is a parody of the North Face, while North Face is alleging multiple claims against South Butt including trademark infringement/likelihood of confusion, dilution, misrepresentation, inducement to infringe, passing off and related state law claims.


At this point, based on the buzz around the complaint, South Butt is getting more web traffic than it ever has at  If The North Face loses the lawsuit and South Butt is allowed to continue the use of its mark, The North Face will have created increased business for South Butt that probably would not have existed had it not filed the complaint in the first place.

In Jorsache v. Hogg Wyld ltd, (LARDASHE jeans as a parody of JORDACHE jeans) the 10th Circuit held that LARDASHE did not dilute the JORDACHE mark and instead it tended to increase the public identification of plaintiff's mark with plaintiff and did not create an "unwholesome, unsavory or degrading association" context.  However, the LARDASHE case involved nearly identical marks, not nearly opposite marks.

Fine for False Marking is Per Article, not Per Ocurrance

In THE FOREST GROUP, INC., v. BON TOOL COMPANY, et al., the Court of Appeals for The Federal Circuit ("CAFC") has held that under 35 USC §292, the fine for falsely marking an item as patented must be imposed on a per article basis, as opposed to a "per decision to mark" basis.  The defendants had continued to mark its construction type stilts as patented with its US Patent No. 5,645,515, even after a district court had held that its own devices and the accused devices did not infringe its patent.

The district court only awarded $500 in damages and the CAFC has now remanded the case to  the district court to determine the number of articles falsely marked by Forest after the district court's decision and the amount of penalty to be assessed per article.  The fine is discretionary with the court so it does not necessarily need to assess a fine of the maximum of $500 per article.  This could obviously be important in situations that involve a high volume of low cost products.