June 28, 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 last two patent cases that were appealed from the district court level and decided by the Federal Circuit during the 25th calendar week of 2007. All opinions are precedential unless otherwise indicated.

International Rectifier Corporation v. Samsung Electronics Co., LTD, et al. (06/21/2007, non-precedential): appeal of reduced fees & cost award (this particular appeal in the string of intellectual property litigation is not patent-specific)

Bender v. Dudas (06/21/2007): appeal of district court’s decision granting summary judgment upholding a USPTO disciplinary action barring Bender from practicing before the USPTO (affirmed); discussion of actions taken by an invention promoter affiliated with an attorney licensed to practice before the USPTO; the USPTO has statutory authority to suspend or exclude “from further practice before the Patent and Trademark Office, any person, agent, or attorney shown to be incompetent or disreputable, or guilty of gross misconduct, or who does not comply with the regulations established under section 2(b)(2)(D) of this title”; discussion of prosecution of patents as design application when inventors requested utility patent applications; discussion of “money-back guarantee” that a patent would issue; failure to notify clients of receipt of final office actions until after the expiration of the initial three-month window; general discussion of sufficiency of information gathered by USPTO in order to proceed with sanctions against an agent/attorney; discussion of the sanction of exclusion from practicing before the USPTO; district court’s decision affirmed because the findings of the USPTO were supported by substantial evidence, because the action was not arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law

June 26, 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 two patent cases that were appealed from the district court level and decided by the Federal Circuit during the 25th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Omegaflex, Inc. v. Parker- Hannifin Corporation (06/18/2007, non-precedential): appeal of grant of summary judgment of infringement and patent validity and the issuance of a permanent injunction (reversed and remanded); discussion of patent related to pipe fitting technology (U.S. Patent No. 6,079,749, entitled “Preassembled fitting for use with corrugated tubing”, and U.S. Patent No. 6,428,052, entitled “Fitting for use with corrugated tubing”); "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art" (KSR citation); "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does” (KSR citation); due to the existence of multiple genuine issues of material fact, the district court's grants of summary judgment was reversed, its grant of a permanent injunction was vacated, and the case was remanded

Biomedino, LLC v. Waters Technologies Corporation, et al. (06/18/2007): appeal of judgment that specific claims of the patent at issue are invalid for indefiniteness under 35 U.S.C. § 112, paragraph 2 (affirmed); discussion of patent related to a device and method for removing blood from a species (U.S. Patent No. 6,602,502, entitled “Methods and devices for removing species”);“[i]f an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of § 112;” “[w]hen a claim uses the term “means” to describe a limitation, a presumption inheres that the inventor used the term to invoke § 112, ¶ 6”; “[W]hile it is true that the patentee need not disclose details of structures well known in the art, the specification must nonetheless disclose some structure;” the claim limitation “control means” had no corresponding structure described in the specification as required by 35 U.S.C. 112, paragraph 6

June 25, 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 sole patent case that was appealed from the district court level and decided by the Federal Circuit during the 24th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Entegris, Inc. (formerly known as Mykrolis Corporation) v. Pall Corporation (06/13/2007): appeal of contempt order for violating preliminary judgment and cross-appeal from the order dissolving the preliminary injunction (appeal dismissed for lack of jurisdiction and affirmed order dissolving the preliminary injunction); discussion of patents related to filtration systems for semiconductor manufacturing (U.S. Patent No. 6,068,770, entitled “Disposable separation module with quick connect capability,” and U.S. Patent No. 6,378,907, entitled “Connector apparatus and system including connector apparatus”); “[28 U.S.C.] Section 1292(a)(1) will, of course, continue to provide appellate jurisdiction over orders that grant or deny injunctions and orders that have the practical effect of granting or denying injunctions and have ‘serious, perhaps irreparable, consequence’”; “the usual rule is that an interlocutory civil contempt is not appealable”; no jurisdiction found because contempt order at issue did not fall into any category of appealable interlocutory orders and because defendant did not allege any “irreparable consequence” for not being able to appeal at the present time; several citations regarding interlocutory appeals provided; no abuse of discretion by dissolving the preliminary injunction because defendant asserted an invalidity defense that the patentee did not challenge as lacking substantial merit

June 21, 2007

According to the ag-IP-news Agency article (link below), Bahrain, via the Bahraini Industrial Property Office, has started accepting claiming priority for trademark and industrial design applications filed in Bahrain. This new practice, beginning on June 7th, was not part of Bahrain’s prior practice even though Bahrain has been a member of the Paris Convention since 1997. According to the source providing the content to Abu-Ghazaleh Intellectual Property (AGIP) as reported by ag-IP-news, in the case of claiming priority in Bahrain, “a certified copy of the priority application is to be filed within six months from the filing date of the foreign application,” noting that under the Paris Convention for the Protection of Industrial Property, “if an application for the registration of a trademark or an industrial design has been filed at any contracting state of the Convention, the applicant or his successor may, within a period of six months as of the filing date, apply for protection in Bahrain with respect to the same trademark or industrial design.”

ag-IP-news Agency Article: LINK
AGIP News Webpage: LINK
Bahrain IP Office Contact Information: LINK
Text of the Paris Convention for the Protection of Industrial Property (via the World Intellectual Property Organization website): LINK

June 20, 2007

It was announced yesterday that ABC, Inc., in response to its receipt of a cease-and-desist letter from Dr. Seuss Enterprises, has decided to change the name of its upcoming television series “Sam I Am” to “Samantha Be Good.” According to the Yahoo news article (link below), “Samantha Be Good” will star Christina Applegate as a woman suffering from amnesia. An attorney for Dr. Seuss Enterprises confirmed that a trademark infringement claim was asserted via cease-and-desist letter last month, noting that “Sam-I-Am” is the main character in the popular children’s book “Green Eggs and Ham” written and illustrated by Dr. Seuss (Theodor Geisel). According to the Jam! Showbiz article (link below), there was a concern that “the trademark value might be diluted if people began to associate the name with a successful TV show instead of only the gleeful purveyor of colourful vittles.” Although ABC, Inc. confirmed the name change, it did not publicly announce any specific reasons for the name change. According to the USPTO trademark database, Dr. Seuss Enterprises has filed over 200 trademark applications, three of which include “Sam I Am,” and of those three applications, two were abandoned prior to registration and the third was cancelled in 2002.

Yahoo News Article: LINK
Jam! Showbiz Article: LINK
Official Dr. Seuss Website: LINK
“Green Eggs and Ham” Wikipedia Entry: LINK
ABC’s “Untitled” Fall 2007 Show Webpage: LINK

June 18, 2007

The USPTO, the U.S. Chamber of Commerce, and Michigan Senator Carl Levin will present a news conference today to discus the importance of intellectual property rights and the impact counterfeiting and piracy has on businesses. This forum will target small businesses, as according to the USPTO press release (link below), small businesses "represent more than 98% of employer firms in the State of Michigan," noting further that those small businesses "are most at risk for counterfeiting and piracy because they often lack the knowledge and expertise to combat these problems." Speakers include Senator Levin, Jon Dudas (the Under Secretary of Commerce for Intellectual Property and Director of the USPTO), Brian Moskowitz (U.S. Immigration and Customs Enforcement), George Webber (Ford Motor Company), and Katie Wilson (Communications Manager for the Global Anti-Counterfeiting and Piracy Initiative of the U.S. Chamber of Commerce). This free conference will begin at 10:00AM today at the Detroit Regional Chamber on Woodward Avenue in Detroit.

USPTO Press Release: LINK
StopFakes.Gov Small Business Website: LINK

June 14, 2007

The Daily Dose of IP Blog will continue on Monday, June 18th. In the interim, I'll be enjoying the predicted wonderful weather at the U.S. Grand Prix in Indianapolis. Thank you for visiting the DDIP Blog!

June 12, 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 (or orders issued) by the Federal Circuit during the 23rd calendar week of 2007. All opinions are precedential unless otherwise indicated.

Fuji Photo Film Co., LTD v. Benun, et al. (order) (06/08/2007, non-precedential): Fuji moved to dismiss Benun’s appeal and moved for sanctions, of which Benun opposed and Fuji replied; Benun also moved for a stay pending appeal of the execution of contempt sanctions, of which Fuji opposed; during this litigation, Benun was preliminarily enjoined from selling disposable cameras outside of the U.S. for reimportation, and when Fuji learned of over one million reimports, it sought a contempt order and received it, also requiring Benun to provide an accounting; Benun’s accounting was that he was selling cameras at a loss; although district court’s judgment on disgorgement remained pending, the court directed Benun to pay Fuji’s attorney fees of over $117k; Benun seeks review of attorney fee award and contempt determination, but “an award of attorney fees ordered before entry of a final judgment on the merits is not appealable until after final judgment is entered”; “a district court order directing payment of a contempt fine, in part to the injured party and in part to the court, for violation of a preliminary injunction in a patent case ‘was clearly punitive and in vindication of the authority of the court’ and was thus appealable; if the fine is ordered payable only to the party injured by the disobedience, then ‘it is to be regarded as merely an interlocutory order, and to be reviewed only on appeal from the final decree’”; Fuji’s motion to dismiss is granted, the motion for a stay pending appeal is moot, and the motion for sanctions is denied

Stevenson v. Neighborhood House Charter School (order) (06/08/2007, non-precedential): at the district court level, the court directed Stevenson to respond regarding the jurisdiction of the court, of which she responded and requested various relief; Neighborhood then responded to the court’s order and moved to dismiss; transfer to First Circuit not appropriate here; Stevenson appears to have attempted to appeal the district court’s denial of her motion for summary judgment; “[a]n order denying a motion for summary judgment is interlocutory, non-final, and non-appealable”; “[w]henever a civil action . . . or an appeal . . . is noticed for or filed with such a court and that court finds that there is a want of jurisdiction, the court shall, if it is in the interest of justice, transfer such action or appeal to any other court in which the action or appeal could have been brought at the time it was filed or noticed . . . .”; Neighborhood’s motion to dismiss granted, Stevenson’s motion to proceed in forma pauperis is granted, and Stevenson’s motions for various relief are denied

Custom Metalcraft, Inc. v. Hoover Materials Handling Group, Inc. (order) (06/08/2007, non-precedential): district court certified judgment of noninfringement, and plaintiff appealed; defendant cross-appealed requesting review of order granting summary judgment that the patent was not invalid on certain grounds; after appeal filed, district court denied defendants motion to certify its disposition of its invalidity counterclaims; because no final judgment disposing of invalidity counterclaims, Hoover’s appeal is to be dismissed; court of appeals ordered that the motion to dismiss the appeal be granted and the motion to stay be denied

June 11, 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 two patent cases that were appealed from the district court level and decided (or orders issued) by the Federal Circuit during the 23rd calendar week of 2007. All opinions are precedential unless otherwise indicated.

NMT Medical, Inc., et al. v. Cardia, Inc. (06/06/2007, non-precedential): appeal of grant of summary judgment to defendant Cardia that it’s accused device did not infringe the asserted patent (of which the plaintiff’s are assignees); summary judgment vacated for district court error by finding no triable issues of fact as to most of the asserted claims and by erroneously construing the other claim at issue; discussion of patent related to implanted medical devices used to repair heart defects (U.S. Patent No. 5,451,235, entitled “Occluder and method for repair of cardiac and vascular defects”); “[c]onstruction of a means-plus-function claim limitation requires the court to identify the claimed function and then to locate structure in the specification which has been clearly linked to that function”; once a means-plus-function claim is construed, literal infringement is analyzed by determining whether “the accused device employs structure identical or equivalent to the structure disclosed in the patent and . . . the accused device performs the identical function specified in the claim”; a triable issue of fact on the question of substantial differences between the devices remains, so summary judgment that claims 1-5 were not infringed is vacated; “[T]he prosecution history can often inform the meaning of the claim language by demonstrating . . . whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be”; courts have “declined to apply the doctrine of prosecution disclaimer where the alleged disavowal of claim scope is ambiguous”; correct construction of claim 12 doesn’t require a “direct” connection, and since the district court relied on an incorrect construction of claim 12, summary judgment of noninfringement as to claim 12 is vacated; request for summary judgment for infringement denied

Pfizer, Inc. v. Mylan Laboratories, Inc., et al. (order) (06/08/2007, non-precedential): Mylan moved for summary reversal of the judgment and amended judgment of the district court, of which Pfizer opposes; in a separate case (Pfizer, Inc. v. Apotex, Inc.) decided at the Federal Circuit earlier this year, the Federal Circuit held that the claims asserted by Pfizer in the same patent are invalid; the Federal Circuit also denied Pfizer's petition for rehearing en banc in that case and the mandate issued; Mylan's motion for summary reversal is granted, and the district court's judgment and amended judgment are reversed

June 08, 2007

The USPTO recently announced that it plans to begin its Peer Review Pilot program on June 15th in attempt to “expedite and improve the examination process in computer technology.” This Pilot program, which according to the USPTO press release (link below) is a joint initiative with the New York Law School’s Community Patent Review Project (CPRP), will allow technical experts in the computer field to register with the CPRP and provide content to the USPTO pertaining to up to 250 published patent applications which have been volunteered to participate in the Pilot and with consents of the respective applicants allowing third-parties to provide direct commentary pertaining to the pending applications. According to the press release, the “USPTO supports expanding the ability of third parties to submit to the USPTO information they believe is pertinent to a pending application, a concept included in patent modernization legislation now under consideration in the U.S. Congress,” and that “[i]n combination, the peer review pilot, applicant quality submissions and expanded third party submissions encourage a highly participatory examination process that will lead to more efficient and effective review of patent applications.” Additional details are provided in the Official Gazette Notice (“Pilot Concerning Public Submission Of Peer Reviewed Prior Art”) PDF link below, including the specific requirements an applicant must meet in order to participate in the program.

USPTO Press Release: LINK
Official Gazette Notice of the Peer Review Pilot Program: LINK

June 06, 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 22nd calendar week of 2007. All opinions are precedential unless otherwise indicated.

Haberman v. Gerber Products Company (05/29/2007, non-precedential): appeal of final judgment of patent invalidity for anticipation and cross-appeal judgment of infringement, denial of motion to amend answer to assert inequitable conduct and denial of attorney fees (affirmed-in-part, reversed-in-part, vacated-in-part, and remanded); discussion of patent related to children’s spill-proof drinking containers (U.S. Patent No. 6,116,457, entitled “Drinks containers”); regarding anticipation, “extrinsic evidence used to fill a gap in a reference must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill”; judgment of anticipation reversed because no sufficient evidence presented from which a reasonable jury could have found that a prior art valve was necessarily operable by suction; “[l]ack of factual support for expert opinion going to factual determinations, however, may render the testimony of little probative value in a validity determination”; judgment as a matter of law on the issue of infringement because “the district court erred in concluding that no reasonable jury could have reached a verdict of no infringement” based on the evidence presented; no error for court’s refusal to allow amended answer and refusal to award attorneys fees; judgment of invalidity reversed and remanded for obviousness determination

Motionless Keyboard Company v. Microsoft Corporation, et al. (05/29/2007): appeal of summary judgment of noninfringement (literal or under doctrine of equivalents) and that the patents-in-suit were invalid based on public use and obviousness (affirmed-in-part and reversed-in-part); discussion of two patents related to ergonomic input devices (U.S. Patent No. 5,178,477, entitled “Ergonomic keyboard input device”, and U.S. Patent No. 5,332,322, entitled “Ergonomic thumb-actuable keyboard for a hand-grippable device”); no literal infringement because the allegedly infringing devices do not have a concave housing and a keyboard within the cavity; “[t]o avoid a grant of summary judgment of non-infringement by equivalents, the patentee must present "particularized evidence and linking argument as to the 'insubstantiality of the differences' between the claimed invention and the accused device, or with respect to the 'function, way, result' test"”; no evidence presented to show “that the differences between the joysticks and the claimed elements are insubstantial, or that the joysticks perform 'substantially the same function in substantially the same way to obtain the same result’”; affirmed determination of noninfringement on summary judgment; “[p]ublic use includes “any [public] use of [the claimed] invention by a person other than the inventor who is under no limitation, restriction or obligation of secrecy to the inventor”; "a confidentiality agreement will not preclude application of the public use doctrine, if the device was disclosed for commercial purposes"; “[a] terminal disclaimer simply is not an admission that a later-filed invention is obvious” (trial court erred on this point and the determination that the ‘322 patent is invalid for obviousness was in error); claim construction and summary judgment of noninfringement affirmed, but summary judgment ruling of invalidity and determination of invalidity for obviousness due to the terminal disclaimer reversed

Automated Technologies, Inc. v. Knapp Logistics & Automation, Inc., et al. (05/31/200, non-precedential): appeal of final judgment granting summary judgment of non-infringement (affirmed); discussion of patent related to a method and apparatus for automatically filling prescription drug orders (U.S. Patent No. RE37,829, entitled “Automated prescription vial filling system”); only issue on appeal was whether or not the district court’s claim construction was in error; claim at issue discusses a vial labeler, which is described in the specification as labeling vials after they are filled (“[t]he system … automatically fills one or more vials with one or more drugs, and then automatically labels and caps the vials…”); the use of the word “then” within the specification was deemed to mean that the vials are full of drugs prior to labeling; the district court’s claim construction considered to be correct

June 05, 2007

The USPTO recently announced that it along with the United States Chamber of Commerce will be presenting two free seminars outside of the Washington, DC, area regarding intellectual property counterfeiting and piracy. The first seminar will be held on Wednesday, June 13th in Raleigh, North Carolina, and the second will be held on Monday, June 18th in Detroit, Michigan. According to the USPTO, “[c]ounterfeiting and piracy cost the U.S. economy between $200 and $250 billion per year in lost sales, and that “It is responsible for the loss of 750,000 American jobs and poses a real threat to health and safety.” Speakers at the Raleigh conference include Jon Dudas, the Director of the USPTO and Under Secretary of Commerce for Intellectual Property & Director, U.S. Patent and Trademark Office, Rob Calia, the Senior Manager of the Global Anti-Counterfeiting and Piracy Initiative at the U.S. Chamber of Commerce, Lynn Crutchfield, the President of The Brand Protection Alliance, and Brian Monks, the Vice President of Anti-Counterfeiting Operations for Underwriters Laboratories. Speakers at the Detroit conference include Dudas, U.S. Senator Carol Levin, Brian Moskowitz, the Special Agent in Charge for the U.S. Immigration and Customs Enforcement, and Katie Wilson of the U.S. Chamber of Commerce. Registration information is available for each conference at their respective links below.

USPTO General Announcement: LINK (scroll to middle of page)
Raleigh, NC Conference Webpage: LINK
Raleigh, NC Conference Agenda (PDF): LINK
Detroit, MI Conference Webpage: LINK

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Copyright 2006-2010, Mark Reichel. The Daily Dose of IP is my personal website, and I am not providing any legal advice or financial analysis. Any views expressed herein should not be viewed as being the views of my employer, Ice Miller LLP. Any comments submitted to this blog will not be held in confidence and will not be considered as establishing an attorney-client relationship. Information submitted to this blog should be considered as being public information, and the submitter takes full responsibility for any consequences of any information submitted. No claims, promises, or guarantees are made or available regarding the completeness or accuracy of the information contained in this blog or otherwise available by searching from or linking away from this blog.

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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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