April 30, 2007

On May 12th and 13th, the USPTO and the National Inventors Hall of Fame Foundation will be hosting the 12th Annual Independent Inventors Conference at the New York Academy of Sciences (7 World Trade Center) in New York City. Although the formal program agenda has not yet been finalized, this conference will feature a number of top USPTO officials, several independent inventors who have experienced success through their patent efforts, and experts in the fields of intellectual property marketing and licensing. This conference will feature traditional seminar-style presentations as well as the opportunity for participants to speak one-on-one with a number of the expert presenters. There is one registration fee (reduced for seniors) for this program covering all seminars, two lunches, and a networking reception on the evening of May 12. Registration information is available through the “Conference Registration” link below through the USPTO Museum Store. Last year’s conference featured several prominent USPTO officials, including the Deputy Under Secretary of Commerce for Intellectual Property (Stephen M. Pinkos), the Commissioner for Patents (John J. Doll), and the Commissioner for Trademarks (Lynne G. Beresford). I will update this blog post once the formal conference agenda is announced.

USPTO Conference Notice: LINK
Conference Website: LINK
Conference Registration: LINK

April 27, 2007

On Wednesday, World Wrestling Entertainment Inc. (WWE) filed suit against Dale R. Gagner, aka Dale Gagne, alleging infringement of the American Wrestling Association (AWA) trademarks previously held by a company run by former professional wrestler Vern Gagne. The lawsuit, filed in the U.S. District Court for the District of Minnesota, alleges that Dale Gagne is a “serial infringer” of the AWA trademarks purchased by WWE back in 2003. According to the Star Tribune article (link below), the suit alleges that Gagner dropped the “r” from his last name in an attempt to appear to be related to Verne Gagne, and that Gagner’s acts, including the sales of wrestling videos bearing the AWA marks, are "blatant attempt[s] to trade on the name and popularity of Verne Gagne.” A court previously issued an injunction against Gagner for promoting wrestling events using the AWA name, and according to the article below, the lawsuit alleges that Gagner is disregarding the earlier injunction prohibiting him from using the AWA marks. Gagner also currently operates two websites using the AWA mark, namely www.awastars.com and www.myspace.com/awastars, with information on professional wrestlers and wrestling in general. The introductory webpage on the former website shows Verne Gagne in the foreground with several recognizable former wrestlers in the background, and the latter website shows several lesser-known wrestlers in the foreground and several well known wrestlers in the background, including Gagne and the Road Warriors. WWE is the owner of one registered U.S. trademark for AWA (namely U.S. Trademark No. 1,401,633) and nine pending U.S. trademark applications (four for AWA and five for AWA AMERICAN WRESTLING ASSOCIATION). WWE is seeking a permanent injunction, profits from the infringement, fees and additional unspecified damages.

Star-Tribune (Minneapolis-St. Paul) Article: LINK
U.S. Trademark No. 1,401,633: LINK
World Wrestling Entertainment Website: LINK

April 19, 2007

Posts on the Daily Dose of IP blog will continue on Friday, April 27. Thank you for visiting and for sharing this blog site with your friends and colleagues.

April 18, 2007

It was recently announced that China will soon be releasing its formal plan to protect the 2008 Beijing Olympic Games logo in an attempt to curb the amount of pirated goods relating to the Olympics. In the Business Week article (link below), the deputy head of the trademark department under the Chinese State Administration for Industry and Commerce (SAIC), Zhao Gang, stated that “[w]e will issue a new plan soon to prevent the infringement of the Olympic logo," and that “[d]uring the 2008 Olympic Games, we will launch effective measures to ensure that this great sports event is as free as possible of any IPR violations." According to the China Daily news article (link below), Zhao also stated that "[i]t is incorrect to say that China is only serious in protecting IPRs [intellectual property rights] related to the Olympic Games … [a]ctually, we have been very consistent and serious about IPR protection in all areas." This article also noted that in 2006 alone, over 50,000 counterfeiting “incidents” were investigated in China, resulting in the destruction of over 30 million counterfeit goods. Specific details on the SAIC plan have not yet been released.

Business Week Article: LINK
China Daily News Article: LINK
SAIC Website: LINK
Official Beijing 2008 Olympics Website: LINK

April 17, 2007

It was recently announced that Venali, Inc. of Coral Gables, Florida, obtained a patent for its Junk Fax Filter” technology. This patent (U.S. Patent No. 7,184,160, entitled “Spam fax filter”) includes 10 claims for spam fax filters, methods for filtering spam faxes, and machine readable storage media with spam filtering software. According to the Yahoo! Finance article (link below), [i]ncoming fax transmissions are processed using Venali's proprietary technology to compare incoming faxes to characteristics of reported junk faxes,” and [t]he accuracy of the system is based on the analysis of millions of faxes and the system continues to improve itself each day as it processes thousands of faxes for Venali's corporate clients.” The first claim of this patent claims a spam fax filter comprising “a fax transformation processor configured to transform rasterized fax images into non-rasterized representations of fax images,” a “knowledge base of fax characteristics” having spam and non-spam fax characteristics contained therein, and a comparator configured to “compare non-rasterized representations of fax images produced by said fax transformation processor with at least one of said fax characteristics to detect spam fax in the spam fax filter.” The knowledge base comprises characteristics from faxes, including fax transmission pages, image patters and image intensity. According to the patent, “it would desirable to dynamically detect spam fax in a self-learning manner without requiring manual intervention,” like manual review of numerous digitized fax images. According to the article below, “[d]espite the passage of the Telephone Consumer Protection Act (TCPA) in 1991 and the Junk Fax Prevention Act of 2005, unsolicited junk faxes are still too prevalent,” and that “[s]ome competitors in this space continue to offer fax blasting services to their customers, which can facilitate the distribution of junk faxes, while pretending to fight them at the same time.” According to the Venali press release (link below), the technology within this patent “detects and eliminates unsolicited faxes with virtually 100% accuracy.”

Yahoo! Finance Article: LINK
U.S. Patent No. 7,184,160: LINK
Venali, Inc. Website: LINK
Venali Press Release: LINK

April 16, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 15th calendar week of 2007 (and including the Bass Pro case from the Friday prior). All opinions are precedential unless otherwise indicated.

Bass Pro Trademarks v. Cabela's (04/06/2007): appeal of contempt order for violation of settlement agreement and consent judgment (vacated); discussion of patent related to a vest with a built-in seat portion (U.S. Patent No. 5,620,227, entitled “Vest Garment With Pivotable Seat Member”); “grant of a contempt order for violation, by a modified device, of an injunction against infringement requires that the modified device infringes the patent, either literally or by application of the doctrine of equivalents”; prosecution history stresses term used in preamble of claim, and the district court erred in holding that the term at issue (“vest”) as included within claim 1 was not a material limitation to the claim; “redesigned device could not reasonably be found to literally infringe the subject patent” so the contempt order (and sanctions) were vacated

F&G Research, Inc. v. Paten Wireless Technology, Inc. (order) (04/11/2007, non-precedential): responses by both parties to the court’s orders as to whether or not appeals filed should be dismissed; patent infringement suit filed, but no answer filed so district court entered default judgment; defendant filed notice of appeal and case was reinstated; defendants appeal dismissed because defendant no longer wished to pursue its appeal; appeals dismissed because filed prematurely, because “[i]f a case is not fully adjudicated as to all claims for all parties and there is no express determination that there is no just reason for delay or express direction for entry of judgment as to fewer than all of the parties or claims, there is no final decision under 28 U.S.C. § 1295 (a)(1) and therefore no jurisdiction”

Acumed LLC v. Stryker Corporation, et al. (04/12/2007): appeal of jury finding of willful infringement and issuance of permanent injunction (affirmed-in-part, vacated-in-part, and remanded); discussion of patent related to orthopedic devices to treat upper arm fractures (U.S. Patent No. 5,472,444, entitled “Humeral nail for fixation of proximal humeral fractures”); discussion of claim construction of the terms “curved” and “sharp” as used within the specification and the claims; “[T]he presence of a dependent claim that adds a particular limitation raises a presumption that the limitation in question is not found in the independent claim” and “[t]hat presumption is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim”; discussion of the terms “perpendicular” and “transverse” as relating to holes within the device; “[f]avorable opinions of counsel normally present a well-grounded defense to willfulness, but the protection they afford is not absolute, as there are “cases where willful infringement is found despite the presence of an opinion of counsel generally involve situations where opinion of counsel was either ignored or found to be incompetent”; district court determination of infringement and willfulness affirmed, but the permanent injunction was vacated and remanded for reconsideration in light of eBay v. MercExchange

April 13, 2007

You’ve most likely heard the buzz about “Utah” and “trademarks,” but you may not know the details regarding the new law in Utah. In summary, the Utah legislature recently approved a new law by unanimous vote (the Trademark Protection Act), which was then signed into law on March 19, 2007. This Act provides for the initiation of a trademark registry that aims to “prevent rival advertisers from capturing the attention of people who type a search query on another company or its products” according to the Yahoo! news article (link below). Under the Act, companies may create an “electronic” trademark and prevent their competitors from using those trademarks in electronic commerce.

According to the legislation itself (S.B. 236, link below), a “new type of mark” is established, “called an electronic registration mark, that may not be used to trigger advertising for a competitor and creates a database for use in administering marks.” It also “defines terms; addresses the fees for an electronic registration mark; [and] prohibits the use of a registered electronic registration mark to trigger advertising for a business, goods, or services of the same class as those represented by the electronic registration mark.” Furthermore, “[a]n electronic registration mark is valid for one year from the day on which the electronic registration mark is registered; [r]egistration of an electronic registration mark may be renewed annually by paying the fee for renewing an electronic registration mark described in Section 70-3a-203,” [a]n electronic registration mark that is not renewed reverts to a trademark and expires five years after the day on which the mark was originally certified unless renewed under [the applicable] Subsection; and [a]ny existing trademark or service mark that otherwise qualifies for registration as an electronic registration mark may be converted to an electronic registration mark by paying the electronic registration mark fee under Section 70-3a-203.” Provisions for civil liability of users of the electronic trademark without permission are also provided, as well as details regarding the creation of a searchable electronic trademark database.

An example of one company, 1 800 Contacts Inc., may benefit from this Act as it is noted that this company, located in Utah, has taken at least one internet advertiser to court for unauthorized use of its company name in advertising. According to the Utah Senate Majority Whip, Republican Dan Eastman of Bountiful, "[y]ou put 1 800 Contacts into Google and you get 47 different contact lens makers.” There does not appear to be a carve-out in the law that would allow otherwise legal advertising practices to continue, like for example allowing Subway restaurants to continue to advertise that it has X number of sandwiches with less fat than a McDonald’s Big Mac during its comparative advertising campaigns. It is noted that a number of search engines, including Google, allow companies to “bid” on the right to use another company’s product or brand names in its own advertising, noting that the higher the bid, the closer to the “top” of the list the advertisement will appear on a search results webpage.

On The Senate Site blog (the “Unofficial Voice of the Utah Senate Majority”), Matthew Prince, an Adjunct Professor of Law at the John Marshall Law School, responds to recent commentary by Eric Goldman, a Professor at the Santa Clara University of Law, regarding the constitutionality of this new Act. While not personally taking any “side” on this debate, I will highlight some of the arguments for and against this new Act.

Prof. Goldman starts his article by stating that “no legislature has passed more [censored] Internet laws than Utah's,” and references prior Utah internet laws regarding digital signatures, access limits to pornographic websites, and laws preventing certain e-mails to children. He then references the 2004 Spyware Control Act, amended in 2005 “to merge it with trademark law,” which was subsequently rejected by the Second Circuit in 1-800 Contacts, Inc. v. WhenU.com, Inc. According to Goldman, Utah’s Trademark Protection Act “creates a new intellectual property right called an "electronic registration mark," defined as a "word, term, or name that represents a business, goods, or a service,” and that “[t]his definition may be broad enough to protect domain names even if the domain names are otherwise generic or unprotectable under TM law.” Goldman concludes his article after a detailed description of why he does not support the legislation with the statement that “keywords are a uniquely empowering tool to enable consumers to express their interests more accurately, concisely and cheaply than other alternatives, which in turn enables intermediaries like search engines to cater to their informational interests,” which results in “lower search costs for consumers, which in turn creates big social welfare payoffs by making more socially beneficial matches between consumers and producers. So as a matter of social policy, we should be encouraging the use of keywords, not banning it.”

Prof. Prince takes an opposing viewpoint, explaining why Prof. Goldman’s view that this new law “may be a violation of the so-called Dormant Commerce Clause” is “wrong.” First, Prince notes that there has been no allegations that the Act discriminates against out-of-state businesses, so critics are focusing on the Dormant Commerce Clause. However, Prince notes that critics “are likely wrong for two fundamental reasons,” namely that (1) no burden was created by the statute that would “unduly burden” interstate commerce, and (2) “in order to violate the Dormant Commerce Clause a statute must not be authorized by Congress or be a traditional state police power. Regarding this latter point, Prince notes that not only is the right of state to pass their own legislation on trademarks recognized by history, but that the Lanham Act itself also permits it. Prince further notes that “given the Lanham Act’s clear designation, overwhelming precedent, and the traditional history of state trademarks, the Commerce Clause analysis would likely never come into play.” Prince concludes his discussion by stating that “[t]he best ideas rise to the federal level,” and that “I don’t know whether the Utah Trademark Protection Act will rise to this level, but the level of attention it has drawn from trademark holders and search engines alike indicates that this is at least an issue that warrants discussion.”

Again, I take no stance either way on the Act, but I do encourage interested persons to read the Act, as well as the commentary (including the two viewpoints discussed herein) to form your own opinion. I do agree with Prof. Prince in that “this is at least an issue that warrants discussion,” so it will be interesting to see how the Act works, or fails to work, in practice.

Utah Trademark Protection Act: LINK
Yahoo! News Article: LINK
Eric Goldman’s Blog Article: LINK
1-800 Contacts, Inc. v. WhenU.com, Inc. Appellate Decision: LINK
The Senate Site (Utah) Blog Entry (by Matthew Prince): LINK

April 12, 2007

As previously reported by the Daily Dose of IP (link here and below), the Katonah Village Improvement Society (KVIS) was considering a challenge to Martha Stewart’s attempt to register the mark “KATONAH” with the USPTO. As reported by the New York Journal News (link below), the KVIS decided to do so, and yesterday it filed its formal Notice of Opposition to Stewart’s applications. According to the article, Martha Stewart Living Omnimedia officials stated that “Stewart is trying to honor the hamlet by choosing its name and that the trademark plans won't harm the community in any way,” but that the planned registrations “have upset some local residents who don't want their community name to be branded by Martha Stewart Living Omnimedia.”

KVIS filed its Notice of Opposition on April 11th, opposing the registration of the four pending KATONAH trademark applications, namely U.S. Trademark Application Serial Nos. 78727049, 78727052, 78727061, and 78727068, noting that the remaining two KATONAH applications (78727055 and 78727070) were previously abandoned. In the Opposition, KVIS notes that it was charted by the State of New York in 1886, and has used its name ever since in associate with not-for-profit services for residents in Katonah, New York. Four separate counts are provided in the Opposition, namely that (1) “Applicant’s Mark is Likely to Cause Confusion with Opposer’s mark” because the KATONAH mark “is so similar to Opposer’s KATONAH VILLAGE IMPROVEMENT SOCIETY trade name and trademark, in sight, sound, overall appearance, and commercial impression” as to cause confusion; (2) “Applicant’s Mark is Merely Descriptive of the Goods” by, in part, not serving as a source identifier; (3) “Applicant’s Mark is Merely Geographically Descriptive of the Goods,” noting that Katonah, New York, “is a well known geographic location,” and that Martha Stewart “lives in Katonah, New York and is responsible for the creation of the proposed KATONAH Mark and the products listed in the subject applications”; and (4) “Applicant’s Mark is Primarily Geographically Deceptively Misdescriptive of the Goods” because the Applicant’s goods are not from Katonah, NY, but that customers of the goods “are likely to believe that the goods originate from Katonah, New York.” I will continue to watch these applications and will report updates from time to time.

DDIP “KATONAH” Article: LINK
New York Journal News Article: LINK
KVIS Opposition: LINK

April 11, 2007

On Tuesday, the USPTO and the National Inventors Hall of Fame Foundation (NIHFF) launched its new campaign focusing on new ideas developed by children. This program, called Inspiring Invention, is geared to “tweens” (children from ages 8 to 11), and according to the USPTO press release (link below), is focused on “how [the children’s] imaginations can lead to the technological advances of the future” and “that there is a role for every kind of unique curiosity and imaginative idea as it relates to invention.” This campaign uses several media avenues, including television, radio and internet advertising that depict innovative children solving everyday problems. The advertisements lead the public to the InventNow website (link below), where people can learn about the program, invention submissions, play a “World Creation” game, and more. The website also includes the two current television and radio advertisements, including a “Lost Cat Magnet,” the “Insta-do” instant hair styler, and a robot that distracts children with a talking teddy bear jingling a bell while a robotic arm reaches out and snatches off the child’s bandage. The President & CEO of the Ad Council, Peggy Conlon, is quoted in the article below, stating that “[r]esearch conducted for our new campaign found that children are naturally curious and inventive, but they do not realize the impact of their creativity," and that her organization is “proud to join with the United States Patent and Trademark Office and the National Inventors Hall of Fame Foundation on this wonderful effort to help children see that there are no limits to their creativity and imagination and that they can have a role in the technological advances of our future if they just 'keep thinking."

USPTO Press Release:
LINK
InventNow Website: LINK
National Inventors Hall of Fame Foundation Website: LINK
Ad Council Website: LINK

April 10, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the final three patent cases (the third to be covered next week as the opinion is “temporarily unavailable”) that were appealed from the district court level and decided by the Federal Circuit during the 14th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Immersion Corp. v. Sony Computer Entertainment America v. Internet Services, LLC (04/04/2007, non-precedential): appeal of dismissal of claim by licensee for lack of standing (affirmed); discussion of two patents related to video game systems (U.S. Patent Nos. 6,275,213 and 6,424,333, both entitled “Tactile feedback man-machine interface device”); counterclaims seeking declaratory judgments of non-infringement, invalidity, and unenforceability asserted by defendant, but a jury found the patents not invalid and infringed by the defendant; “exclusive licensee” (third party) involvement in patent infringement case; licensee only has rights to software claims, but the patent claims require software and hardware claims; dismissal of claims affirmed as licensee to only part of a patent does not have standing to sue for infringement because its interest “differs from the type of interest traditionally associated with an exclusive licensee

Korsinsky v. Dudas (04/05/2007, non-precedential): appeal of expiration of patent for failure to pay maintenance fees (affirmed); discussion of patent related to a video computer (U.S. Patent No. 4,736,447, “Video Computer”); plaintiff’s patent expired for failure to timely pay maintenance fees; district court granted PTO’s motion for summary judgment on the Administrative Procedure Act (“APA”) claim and the court dismissed the remaining claims pursuant to Fed. R. Civ. P. 12(b)(6); patentee failed to make first patent maintenance payment (3 ½ years), and 12 years later, patentee seeks to reinstate the patent; “maintenance fees and the patent system put in place by Congress and the PTO do not conflict with the Constitution”; patentee’s motion for reconsideration denied for several reasons, including its untimeliness and no proof how an agreement with his wife prevented him from paying maintenance fees

Bass Pro Trademarks v. Cabella's (04/06/2007): [opinion temporarily unavailable on the Federal Circuit’s website; discussion to be included in next week’s posting]

April 09, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first four patent cases that were appealed from the district court level and decided by the Federal Circuit during the 14th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Central Admixture Pharmacy Services v. Advanced Cardiac Solutions (04/03/2007): appeal of several summary judgment orders regarding willful infringement, dismissal of counterclaims, invalidity, false marking or false advertisement, and inequitable conduct and patent misuse (affirmed-in-part, reversed-in-part, vacated-in-part, and remanded); discussion of patent related to a chemical solution used during heart surgery (U.S. Patent No. 4,988,515, “Cardioplegic solution”); failure to comply with the requirements of the Bayh-Dole Act (and the government’s discretionary authority to take title to a patent); invalidation of a certificate of correction for impermissible broadening; use of the word “about” in claims for claim construction purposes; inequitable conduct defense and failure to plead it with requisite particularity; invalidity defense and failure to plead it with clear and convincing evidence

Black & Decker v. Robert Bosch Tool Corporation (order) (04/03/2007, non-precedential): district court entered a document entitled “Judgment in a Civil Case” relating to infringement and invalidity, but the unenforceability counterclaim remained pending (so no final judgment entered); dismissal of appeal because district court had not yet entered final judgment; district court bifurcation of unenforceability counterclaims from the trial on infringement and invalidity

In re Advanced Micro Devices, Inc., et al. (order) (04/03/2007, non-precedential): suit involving claims of willful patent infringement and breach of several license agreements; petition for writ of mandamus for district court to issue protective order to conditionally stay defendant CEO’s depositions; denial of a motion seeking protective order that lower-level employees could be interrogated instead of the CEOs because the CEOs “did not possess any unique knowledge to this matter”; regional circuit law applies regarding the review of a grant of a motion for a protective order; petition for writ of mandamus denied because the defendant “cannot show that its right to a particular result is clear and indisputable” relating to the district court’s exercise of its discretion to grant or deny a motion for a protective order

In re Mediatek, Inc. (order) (04/03/2007, non-precedential): suit involving claims of infringement of a number of patents related to CD-ROM chips; petition for writ of mandamus for district court to vacate orders requiring production of allegedly privileged attorney-client communications; opinions by counsel relating to the allegedly infringing chips; scope of opinions deemed “related to infringement and/or invalidity of the patents in suit” and ordered to be produced; no “clear and indisputable right to mandamus” shown by defendant relating to its contentions that it did not rely on additional opinions of counsel, that the opinions did not concern the accused products, and that “requiring production of the additional opinions would chill design-around attempts (petition for writ of mandamus denied)

April 06, 2007

Please enjoy the following patents and trademarks in celebration of Easter.

U.S. Patent No. 4,419,103, entitled “Method and apparatus for coloring Easter eggs” – issued on December 6, 1983 to Thelma Balkan, and discloses “a method and apparatus for coloring Easter eggs in which the eggs are swirled while wet with liquid dye inside a container having numerous spaced projections from a surface that is non-absorbent of the liquid dye.”

U.S. Patent No. 5,074,239, entitled “Easter eggs decorating and coloring kit” – issued on December 24, 1991 to Verlene Law, and discloses an egg coloring kit comprising a “plurality of dye chambers are integrally formed and arranged adjacently in a linear orientation, each of the dye chambers being sized and configured for receipt of a dye solution and an egg to be dyed therein.”

U.S. Patent No. 5,895,679, entitled “Egg holder and tray for coloring eggs” – issued on April 20, 1999 to John Pender et al., and discloses a tray having the advantages of “allow[ing] the user to create overlapping patterns and colorations on the egg surface,” “providing multiple colors to an egg at selected locations on the egg surface,” “minimiz[ing] inadvertent dye coloration of the hands,” and being easy to use and reusable.

U.S. Patent No. 6,386,138, entitled “Spill-proof coloring container” – issued on May 14, 2002 to Michael Schramm, and discloses a “spill-proof coloring container [ ] that because of its unique geometry and design, will when oriented in any position prevent spillage of liquid contents when filled to predetermined amount.”

U.S. Trademark No. 1,130,508 for “TAKE HOME A LOVABLE EASTER BUNNY” – registered on February 5, 1980 to Gund, Inc. for a stuffed rabbit toy figure.

U.S. Trademark No. 2,556,238 for “EASTER EGGSTRAVAGANZA” – registered on April 2, 2002 to Hershey Chocolate & Confectionery Corporation for pressed coconut, baking coconut, candy, cocoa, chocolate, and baking chocolate.

U.S. Trademark No. 2,737,517 for “NOBUNNY KNOWS EASTER BETTER THAN CADBURY!” – registered on July 15, 2004 to Cadbury Limited for non-medicated confectionery (namely chocolate and candy), biscuits, pastries, ice cream, frozen confections, and rice and wheat based snack foods.

And last, but not least…

U.S. Trademark Nos. 1,219,337 for “MARSHMALLOW PEEPS” (registered on December 7, 1982), 2,229,060 for “PEEPS” (registered on March 2, 1999), and 2,185,581 for the design shown in the upper right corner of this post (registered on September 1, 1998), all to Just Born, Inc. for “candy” or “marshmallow candies.”

April 05, 2007

On Tuesday, Reebok International Ltd. filed suit against Nike Inc. for infringement of its patent relating to “collapsible shoe” technology. This lawsuit, filed in the U.S. District Court for the Eastern District of Texas (see also Patently-O link below re: this popular choice of venue), alleges that 11 of Nike’s shoe models, including several of its “Free” shoe products like “Free Trainer” and “Free Trail,” infringe Reebok’s patent. The patent at issue (U.S. Patent No. 7,168,190, entitled “Collapsible Shoe”) issued on January 30, 2007, and includes 13 claims for an “article of footwear” comprising a number of “flexure lines” allowing the shoes to readily flex and curve. According to the patent, the collapsible shoe contains a “flexible sole and upper allows the article of footwear to be rolled, folded or collapsed on itself so that the article of footwear may be easily stored, packed or distributed,” and “may be conveniently sold in areas frequented by those who have left or forgotten athletic shoes while traveling such as airports, train stations, and hotels.” According to the Boston.com article (link below), Nike’s “Free” products account for approximately $100 million in annual sales, and that “Nike likely would suffer no major hit to its sales regardless of the outcome of the patent case.” A quick search of the USPTO website shows that Reebok obtained 16 U.S. patents last year and 3 U.S. patents so far this year.

U.S. Patent No. 7,168,190: LINK
Boston.com Article: LINK
Patently-O Article “Patent Venue and Jurisdiction: Why E.D. Texas?”: LINK

April 04, 2007

As mentioned in a DDIP post back in February (link here), the proposed changes to Patent Cooperation Treaty (PCT) practice referenced in the USPTO’s earlier notice took effect on April 1. According to the recently released Official Gazette notice (link below), “[i]n that the proposed changes to the U.S. rules of practice will not become effective until after the effective date of the changes to the PCT regulations, the USPTO is hereby giving notice of the interim procedures that it will follow until such time as the proposed changes to title 37 of the Code of Federal Regulations becomes final.” Regarding the means for applicants to insert missing portions of international applications without losing the international filing date, the rule changes will be implemented under 35 U.S.C. § 364(a), and “the specific provisions relating to the later submission of drawings currently present in 37 CFR 1.437(a) and (b) are hereby waived, sua sponte, pursuant to 37 CFR 1.183 in favor of the more applicant friendly provisions of amended PCT Rule 20.” Requests for the restoration of the right of priority will be treated under 37 C.F.R. § 1.182 until the proposed changes are finalized. Such requests must be filed within 2 months from the date of expiration of the priority period (under new PCT Rule 2.4), and must be accompanied by a $400 fee, a notice under PCT Rule 26bis, and a statement that the filing delay was unintentional. Regarding the changes to search fees and supplemental search fees, those fees currently in effect shall remain in effect until the final rule(s) become effective.

USPTO Official Gazette Notice: LINK
February 21, 2007 DDIP Post: LINK
February 16, 2007 Federal Register Excerpt: LINK

April 03, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the final three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 13th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Merck & Co., Inc. v. HI-TECH Pharmacal Co., Inc. (03/29/2007): this case presents the question of “whether a patent term extension under the Hatch-Waxman Act, 35 U.S.C. § 156, may be applied to a patent subject to a terminal disclaimer under 35 U.S.C. § 253, filed to overcome an obviousness-type double-patenting rejection” (yes it may); discussion of patent relating to carbonic anhydrase inhibitors, including dorzolamide, for the treatment of glaucoma (U.S. Patent No. 4,797,413, entitled “Thieno thiopyran sulfonamide derivatives, pharmaceutical compositions and use”); 35 U.S.C. § 156 (patent term extension statute) does not expressly reference terminal disclaimers; Hatch-Waxman extensions run from the patent expiration date (as adjusted under 35 U.S.C. § 154(b) to make up for specific USPTO delays); “[t]he legislative history of § 156 indicates that Congress was aware of concerns over the effects of extending related patents—at least as to parent, continuation, and continuation-in-part patents—and chose to provide the patentee with the option to select to extend the term of only one of either the parent patent or a continuation patent”; court held that a patent term extension under
35 U.S.C. § 156 may be applied to a patent subject to a terminal disclaimer

AFG Industries, Inc., et al. v. Cardinal IG Company, Inc., et al. (03/30/2007, non-precedential): appeal of decision on remand for infringement of patent (affirmed as to some products but not others, so remanded to district court); discussion of patent relating to transparent electrically conductive laminated products (U.S. Patent No. 4,859,532 “Transparent laminated product”); product claims “generally are not limited by how the product is produced” but “exceptions may arise when the product's distinction from the prior art depends on how it was produced, for when the validity of the patent depends on use of a particular process, the claims are construed in the manner that will sustain their validity, when such construction is supported by the record”; judgment of infringement affirmed as to products whose central zinc oxide core is produced by a single sputter deposit, but not to products produced from at least two sputtering deposits, based upon claim construction

Teva Pharmaceuticals USA, Inc. v. Novartis Pharmaceuticals Corporation, et al. (03/30/2007): appeal of dismissal of declaratory judgment action because no reasonable apprehension of imminent suit established (reversed because declaratory judgment test for non-infringement or invalidity conflicts with the recent MedImmune v. Genentech decision); discussion of five patents relating to the active ingredient in Famvir® (Novartis product) and methods of therapeutic use (U.S. Patent Nos. 5,246,937, 5,840,763, 5,866,581, 5,916,893 and 6,124,304); declaratory judgment action under 35 U.S.C. § 271(e)(5) and 21 U.S.C. § 355(j)(5)(C) to establish “patent certainty” brought by Abbreviated New Drug Application (“ANDA”) applicant; “in a declaratory judgment action, “all the circumstances” must demonstrate that a justiciable Article III “controversy” exists”; discussion of three standing requirements under Article III; discussion of two-part test to determine if an “actual controversy” exists in a general declaratory judgment action for patent non-infringement or invalidity; discussion of five circumstances contributing to Teva’s justiciable controversy is Novartis’ pending infringement litigation; reversal of district court’s decision to dismiss the declaratory judgment action because “Teva has experienced real and actual injury”

April 02, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 13th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Sandisk Corp. v. Stmicroelectronics, Inc., et al. (03/26/2007): appeal of grant of motion to dismiss claims relating to declaratory judgment action of noninfringement and invalidity for failure to present an actual controversy (decision vacated and remanded); discussion of several patents related to flash memory storage products; determination of actual case or controversy within the meaning of the Declaratory Judgment Act (28 U.S.C. § 2201(a)); specific Article III case or controversy here giving rise to declaratory judgment jurisdiction because “ST sought a right to a royalty under its patents based on specific, identified activity by SanDisk”; discussion of promise not to sue for patent infringement; district court’s dismissal of declaratory judgment action improper

EON-NET, L.P., et al. v. Zimmerman, et al. (order) (03/26/2007, non-precedential): appeal of grant of summary judgment of non-infringement (because plaintiff did not demonstrate evidence of infringement) which led to sanctions; no infringing products listed in complaint; plaintiff’s failure to conduct adequate pre-filing investigation led to sanctions; plaintiff did not meet burden of strong likelihood of success (or that the harm factors weigh in its favor) to obtain a stay pending appeal; motion to stay sanctions pending appeal denied

Citizen Electronics Company, LTD. v. Osram GMBH, et al. (03/29/2007, non-precedential): appeal of dismissal of declaratory judgment action for lack of subject matter jurisdiction, barring the complaint under the doctrine of res judicata because the issue of subject matter jurisdiction was already litigated (affirmed); discussion of several patents relating to white light emitting diode technology (U.S. Patent Nos. 6,066,861, 6,245,259, 6,277,301, 6,576,930, 6,592,780, 6,613,247 and 6,812,500); “a prior dismissal for lack of subject matter jurisdiction precludes relitigation of the same jurisdictional issue in a later suit, unless the doctrine of “curable pleading defects” applies”; since CE estopped from relying on OSRAM’s filing of patent infringement suit against CE in Germany and OSRAM’s web report and press release, the district court did not err in holding that “service of process did not cure its lack of subject matter jurisdiction over CE’s DJ action”

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The DDIP Author





Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

Click HERE to view my full professional bio at Reichel IP LLC.


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