The USPTO recently announced that starting on August 1st, all hearings that are conducted by the Board of Patent Appeals and Interferences (BPAI) and the Trademark Trial and Appeal Board (TTAB) will no longer be closed to the public. The USPTO website will post a schedule of upcoming hearings, and the public will be admitted on a first-come, first served basis. According to Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, "The USPTO is committed in continuing to improve transparency in our operations to enhance quality and public confidence,” and “[t]he public's attendance at hearings conducted by the BPAI and TTAB is another way USPTO is providing its customers insight into the patent and trademark examination processes." The two Boards currently share 4 conference rooms, which can seat anywhere from 5 to 55 people depending on the specific room.

Official Gazette Announcement: LINK
USPTO Announcement: LINK
Board of Patent Appeals and Interferences (BPAI) Website: LINK
Trademark Trial and Appeal Board (TTAB) Website: LINK

On Wednesday, Stephen Pinkos, the Deputy Under Secretary of Commerce for Intellectual Property, and Chris Israel, the U.S. Coordinator for International Intellectual Property Enforcement, testified before Congress regarding the Strategy Targeting Organized Piracy (STOP!) Initiative. According to Chris Israel, “[f]ew issues are as important to the current and future economic strength of the United States as our ability to create and protect intellectual property,” and “[c]ombating piracy and counterfeiting is a top priority for the Bush Administration.” Stephen Pinkos provided additional comments regarding the effectiveness of the various conferences held by the USPTO, as well as the STOP! Hotline that receives and acts on telephone calls from the public. According to the USPTO, “The STOP! Initiative has five primary goals: to empower American innovators to better protect their rights at home and abroad; to increase efforts to seize counterfeit goods at our borders; to pursue criminal enterprises involved in piracy and counterfeiting; to work closely and creatively with U.S. Industry; and to aggressively engage our trading partners to join our efforts.” These comments and others were made before Senate Committee on Homeland Security & Governmental Affairs Subcommittee on Oversight of Federal Management, the Federal Workforce, and the District of Columbia.

USPTO News Release: LINK
STOP! Initiative Website: LINK
USPTO STOP! Hotline Webpage: LINK
Senate Testimony Transcript: LINK
USPTO Biography of Stephen Pinkos: LINK

American Law Institute – American Bar Association (ALI-ABA) has four upcoming conferences scheduled related to litigation and licensing of intellectual property. The first course is entitled "Trial of a Patent Case" (CM024), which will be held in Chicago on September 28-29. Topics will include opinions of counsel regarding willful infringement (focusing on Knorr-Bremse and In re Echostar), inequitable conduct, demonstrative exhibits used for damages claims, patent reform, and other topics. The second course is entitled "Intellectual Property Licensing Today" (CM049), to be held in Chicago on October 5-6. Some of the planned topics include reviews of individual license types (patent, trademark, copyright, and software), technology transfer agreements, advertising, negotiation and exit strategies, and dispute resolution. The third course is entitled "Litigating Trademark, Domain Name, and Unfair Competition Cases" (CM017), to be held in Boston on October 19-20. Topics will include false advertising, famous marks, experts, fair use, confusion, and others. A fourth course is anticipated for May 10-11, 2007 in Washington, DC, entitled "Internet Law for the Practical Lawyer" (CM045). Specific details are not yet available for that seminar. ALI-ABA also offers free IP reference information if you register for its e-mail distribution (link below). I neither represent ALI-ABA, nor do I endorse any particular course or reference (the lawyer in me just had to say that).

ALI-ABA Live Seminar Website: LINK
ALI-ABA Free IP Information Website: LINK
Knorr-Bremse Opinion (Sept. 13, 2004): LINK
In re Echostar Opinion (May 1, 2006): LINK

It was recently announced that the Ministry of Information Technology in India is focusing on the protection and enforcement of intellectual property rights held in India. According to the EE Times, “[w]hile there have been no major complaints about India's IP protection framework, it is nevertheless amending its IP rights promotion program to avoid infringement resulting from widespread use of imported technologies here. Another goal is to promote awareness about patents within the research community.” Shri S. Chandrasekaran, Controller General of Patents, Designs & Trade Marks in India, stated that he feels that “India should not try to achieve the last position in the list of developed countries,” but “[r]ather she shall fight to rise up to the first position in the list of competitors of the developed countries.” India currently has four patent offices, located in Delhi, Chennai, Kolkata, and Mumbai, where according to Express Pharma Online, 275 patent examiners are responsible for approximately 45,000 pending patent applications.

EE Times Article: LINK
Website of the Department of Information Technology, Ministry of Communications & Information Technology in India: LINK
Website of the Office of the Controller General of Patents, Designs, and Trade Marks in India: LINK
Recent Office News: LINK
Statement of Shri S. Chandrasekaran: LINK
Express Pharma Online Article: LINK

It was announced on Monday that Knoll, Inc. and Humanscale Corporation settled their patent dispute regarding sales of the Knoll Life™ chair. Knoll, the manufacturer and distributor of a range of office furniture, was sued in January by Humanscale in the U.S. District Court for the Eastern District of Texas, alleging infringement by Knoll of U.S. Patent No. 6,959,965, entitled “Ergonomic chair.” In response to the January 10th filing, Knoll sued Humanscale on January 12th in U.S. District Court for the Southern District of New York, where it sought a declaratory judgment that Humanscale’s patent was invalid and that it did not infringe the patent. Specific details regarding the settlement have not been disclosed, but as part of the settlement, Humanscale has agreed not to prevent Knoll from selling its Life™ chair.

Hemscott News Article: LINK
Yahoo! News Article: LINK
U.S. Patent No. 6,959,965: LINK
Knoll Life™ Chair Product Webpage: LINK
Humanscale Website: LINK

On the heels of rumors of a full-screen video iPod (see Good Morning Silicon Valley Article below), an application published last week may have revealed a new feature on upcoming iPod models. U.S. Patent Application Serial No. 11/240,788, entitled “Proximity detector in handheld device,” was published on July 20th and discloses several methods “for initiating floating controls on an electronic device.” According to the application, the invention relates to and includes methods for “detecting the presence of an object above and spaced away from a surface of the electronic device” that may be an “improved input means” above and beyond known input devices like “buttons, switches, keyboards, mice, trackballs, touch pads, joy sticks, touch screens and the like.” The first claim of the patent is a method “for initiating floating controls on an electronic device” that comprises “detecting the presence of an object above and spaced away from a surface of the electronic device” and “displaying a particular graphical user interface element on a display of the electronic device when the object is detected above the surface of the electronic device.” The application also claims a “user interface method, comprising: detecting an object in space; determining a user interface mode when an object is detected in space; and displaying and enabling one or more GUI elements based on the user interface mode” (claim 8). Time will tell if next generation iPods will include this touchless technology.

U.S. Patent Application Serial No. 11/240788: LINK
Apple Insider Article: LINK
Good Morning Silicon Valley Article: LINK

nQueue announced on Wednesday that it recently received a patent regarding methods and apparatuses for embedding cost recovery solutions. U.S. Patent No. 7,076,184, entitled “Expense recovery system for copier,” issued on July 11th and claims several methods, application program interfaces, and computer readable media related to accounting, expense recovery, and management regarding photocopiers. The first claim is for a “method of accounting for a job at a copier” with the steps of “receiving identifiers in the copier via an input means of the copier; comparing the identifiers to a store of the identifiers; enabling the copier with a copy enable signal,” and once the copying job is complete, the transmission of “transaction data relating to the job to an expense recovery server via a communications network.” The patent discusses that law firms typically charge clients by the photocopy, and that its copiers may utilize individual control modules because “[it] is desirable to be able to track copy jobs at a job-level for internal expense tracking, as well as from a client perspective for external expense tracking.” The patent then discloses several objects of the invention from “provid[ing] a system of copy accountability that can be managed from a central location or server” to “utiliz[ing] the built-in network connection of a copier to transmit to and receive data from this central server” and “eliminat[ing] the need for a separate copy control module at each copier.” According to Ray Zwiefelhofer, President and CEO of nQueue, “we are thrilled to have this patent issued for a technology that so many of our clients have been enjoying. This is a new era for multifunction device manufacturers, and nQueue is pleased to be included as a key value-add for their machines.”

U.S. Patent No. 7,076,184: LINK
ag-IP-news Article: LINK
nQueue Press Release: LINK

On Tuesday, Stephen Pinkos, the U.S. Deputy Under Secretary of Commerce for Intellectual Property, addressed inventors and small business owners in Nashville, TN, regarding the general risks of international IP theft. Mr. Pinkos noted that over 95% of all businesses in Tennessee are “small businesses,” and contribute to the over $19B in annual exports from Tennessee. This seminar, entitled “Conference on Intellectual Property in the Global Marketplace” (previously discussed on the Daily Dose of IP here), focused on the protection and enforcement of intellectual property rights. Mr. Pinkos noted in particular that “[i]ntellectual property theft worldwide costs American companies $250 billion a year and – by extension – hurts American workers and their families.” According to the USPTO, “[t]he Nashville seminar is the latest in a series the USPTO is hosting across the country to help educate American innovators and businesses about protecting their intellectual property.” To satisfy my own curiosity about Tennessee inventors, I researched the USPTO database and noted that in 2005, there were 905 U.S. patents issued that included at least one Tennessee inventor, and there were 475 U.S. patents assigned to Tennessee companies. These figures are down from 2004, where 1,100 U.S. patents issued that included at least one Tennessee inventor, and 585 U.S. patents were assigned to Tennessee companies.

USPTO Seminar Summary (Released July 17): LINK
USPTO Seminar Summary (Released July 18): LINK
DDIP Nashville Seminar Blog Article: LINK

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). This posting covers the sixty-sixth through the seventieth cases that were appealed from the district court level and decided by the Federal Circuit in 2006. All opinions are precedential unless otherwise indicated.

Advanced Cardiovascular Systems v. Medtronic Vascular (05/26/2006, non-precedential): claim construction and appellate standard of review, statement of disavowal during prosecution narrowing claim interpretation, scope of surrender of subject matter during prosecution, consistent claim construction across related claims, prosecution history estoppel based on disavowal

Lawman Armor Corp. v. Winner International, LLC, et al. (05/31/2006, en banc order; order here): design patents, point of novelty based on overall appearance, novelty of design patents, point of novelty, acknowledged conflict of law regarding combination of known design elements as being novel or not

Liquid Dynamics Corp. v. Vaughan Company, Inc. (06/01/2006): judgment as a matter of law, evidentiary rulings, and inequitable conduct appellate standards of review; direct infringement and inducement of infringement, direct and circumstantial evidence of infringement, analysis of challenges to expert testimony, foreign infringement, enablement and best mode regarding invalidity, determination of willful infringement and increased damages, incompetent opinions of counsel

Pactiv Corp. v. Dow Chemical Company (06/05/2006): claim preclusion appellate standard of review (law of the regional circuit), dismissal with prejudice as judgment on the merits, collateral estoppel; primarily a civil procedure case

Xerox Corp. v. 3Com Corp., et al. (06/08/2006): invalidity by anticipation, claim indefiniteness; general analysis comparing prior art to the present invention (computerized interpretation of handwritten text)

Last week, European Patent Office (EPO) President Professor Alain Pompidou provided insight as to his vision on the future of the EPO and the patent “system” in Europe. He commented in particular on smaller business, noting that roughly 90% of all EPO applicants last year were “small applicants” filing between one and five patent applications per year. He further stated that “we owe all innovative businesses in Europe a strong patent system because a strong patent fosters innovation, which in turn nurtures economic growth, and because the key to our future lies in an economy based not on raw materials but on the knowledge, ingenuity and creativity of our peoples.” He also focused on specific quality measures regarding the patent application process and of the patents which are granted, noting that “the EPO has proposed to its member states that a Europe-wide quality system be established for patents and patent-related services.” Prof. Pompidou also referred to the London Protocol and its focus on reducing the requirements for translations for patent applications in European member states, noting that translation costs of up to EUR 3,000 are not uncommon.

Alain Pompidou’s July 12, 2006 Comments: LINK
Subsequent EPO Press Release: LINK
The London Agreement (re: Costs of Translations): LINK
EPO News Release Webpage: LINK

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). This posting covers the sixty-first through the sixy-fifth cases that were appealed from the district court level and decided by the Federal Circuit in 2006. All opinions are precedential unless otherwise indicated.

Dow Agrosciences LLC v. Crompton Corp., et al. (05/05/2006, non-precedential): claim construction and infringement appellate standards of review, summary judgment, discussion on doctrine of equivalents and explanation how the accused products "perform substantially the same function in substantially the same way to obtain the same result"

Old Town Canoe Company v. Confluence Holdings Corp. (05/09/2006): declaratory judgment, noninfringement and judgment as a matter of law appellate standard of review, doctrine of equivalents as pertaining to multiple claims, claim construction analysis and determination of claim definitions, patent invalidity and unenforceability, discussion of obviousness, enablement, best mode, and inequitable conduct

Inpro II Licensing, S.A.R.L. v. T-Mobile USA, et al. (05/11/2006): claim construction and appellate standard of review, doctrine of claim differentiation, claims dictating patent scope, specification focus and impact on claim breadth, extrinsic evidence and expert testimony

Revolution Eyewear, Inc., et al. v. Aspex Eyewear, et al. (05/12/2006, non-precedential): award of attorney’s fees, jurisdiction based on "final judgment," Fed. R. Civ. P. 54(b)

Applied Medical Resources v. United States Surgical (05/15/2006): summary judgment and infringement appellate standards of review, means-plus-function claims, analysis of claim construction, infringement (literal and doctrine of equivalents)

Yesterday, the USPTO held a ribbon-cutting ceremony and presented awards to students with superior problem-solving capabilities. A new exhibit, entitled “Shoes: Innovations at Your Feet” was unveiled yesterday by Jon Dudas (Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office) and David Fink (President and CEO, National Inventors Hall of Fame (NIHF)), comprising a collection of footwear and information regarding patents from the 1800s to date. In addition to the opening of the exhibit, Jon Dudas and David Fink also presented students in grades 2-12 with the first awards from the USPTO and NIHF co-sponsored ©®EA™ contest. This contest, according to the USPTO, “is a contest and classroom guide based on invention and problem solving” for children prior to entering college. According to the NIHF website (invent.org), this contest focused on three subsets of students (in grades 2-5, 6-8, and 9-12), posing different challenges to the students regarding the transportation of people without the use of gasoline and, for the high school students, transportation using “renewable alternative sources of power.”

Exhibit Unveiling Press Release: LINK
Student Award Press Release: LINK
National Inventors Hall of Fame Website: LINK
©®EA™ Contest Information: LINK
USPTO Museum Information: LINK

In a patent application published last week, an inventor at Sony Ericsson has disclosed a cell phone with a unique twist – a swivel screen. U.S. Patent Application Serial No. 10/905,373 (Publication No. 20060148543, entitled “FLIPPER PHONE CONFIGURATION”), discloses a “mobile terminal” comprising a housing with two portions, the first portion (comparable to a flip-phone cover) with an opening that contains a module which is “movably disposed in the opening of the first portion of the housing,” allowing for two distinct positions (like screen-in and screen-out) to occur. The 16-claim application mentions several types of cell phones, including “flip” phones, “jack-knife” phones, and “slider” phones, and states some disadvantages to the different styles, including inadequate screen protection and the concealment of the screen and the keypad portion when a flip phone is closed. Fig. 4 of the application (the thumbnail image appearing above) discloses a mobile terminal, partially to fully open, with the screen swiveling between the two positions. The application does not disclose whether or not the screen would have the capability to automatically swivel as the phone opens or closes. According to its website, Sony Ericsson does not currently offer a phone with this technology.

U.S. Patent Application Serial No. 10/905,373: LINK
Gizmodo Article: LINK
Mobile Magazine Article: LINK
Sony Ericsson Product Website: LINK

On Monday, the USPTO announced its most recent effort to improve the process of obtaining a patent in the United States, focusing on “clear disclosure” of the “most relevant information” related to an invention. The changes surround the current practice of an applicant’s duty to disclosing information to the USPTO (under 37 CFR § 1.56) via Information Disclosure Statement (IDS), noting that applicants sometimes send a large number of documents and/or lengthy documents to the Examiner for review during the application review process. The current disclosure process does not require an applicant to point out why a document is being submitted or the particular portion of the document that is relevant. This newest proposal would eliminate all fees related to an IDS submission, allowing an applicant to submit up to 20 documents without additional explanation if submitted prior to the examiner’s first “communication” to the client (“first Office Action on the merits” according to the Federal Register). Any IDS documents outside of this scope (either more than 20 documents or after the first communication has been sent), the applicant could be required to identify specific areas of relevance in the document, clarify how it adds new information not previously considered, or to explain why the applicant feels that claims are patentable in view of the documents. A window for comments is open until September 8, 2006. Jon Dudas, the Under Secretary of Commerce for Intellectual Property, stated that “[c]lear, forthright disclosure benefits all, because the public – including potential investors - wants to know that a patent application has been thoroughly reviewed, applying the best data available.”

USPTO Proposal Release: LINK
Federal Register Excerpt: LINK
37 CFR § 1.56: LINK

It was announced last week that the word google is being added to the Merriam-Webster Dictionary, not as an upper-case noun to refer to the widely-used search engine, but as a lower-case verb. Along with the words biodiesel (“a fuel that is similar to diesel fuel and is derived from usually vegetable sources (as soybean oil)”), mouse potato (“a person who spends a great deal of time using a computer”), unibrow (“a single continuous brow resulting from the growing together of eyebrows”), ringtone (“the sound made by a cell phone to signal an incoming call”), and about 100 others, the word google is being added to the newest version of the dictionary. Although the word google is not included in Merriam-Webster’s recent news release on its website, the word is currently available on its web-based dictionary, defined as “to use the Google search engine to obtain information about (as a person) on the World Wide Web.” According to CNET, “[b]ecoming synonymous with an invention may hold a certain amount of historic glory for a company, but ubiquitous use of the company's name to describe something can make it harder to enforce a trademark.” The CNET article also mentions that “Bayer lost Aspirin as a U.S. trademark in 1921 after it was determined that the abbreviation for acetylsalicylic acid had become a generic term” and that “[t]he trademarks Band-Aid, Kleenex, Rollerblade and Xerox have had similar issues.” Google Inc. has several registered trademarks for the word “GOOGLE,” and also has a number of pending marks, including “GOOGLE TALK” and “GOOGLE CHECKOUT.” I note that the Merriam-Webster dictionary is not the first to include the word google, as the Oxford English Dictionary added the word Google (upper-case) on June 15th of this year, also as a verb, defined as “[t]o use the Google search engine to find information on the Internet” and “[t]o search for information about (a person or thing) using the Google search engine.” So now, when someone refers to me as a mouse potato with a unibrow who googles for ringtone websites, we will all know what those terms mean.

CNET News Article: LINK
Merriam-Webster New Words Release: LINK
Merriam-Webster Definition of “google”: LINK
Search Engine Journal Article: LINK

According to the July 6, 2006 Federal Register, the USPTO has opened a window for public comments as to whether or not the Small Business Administration (SBA) size standard is the appropriate one. For purposes of reduced patent fees, the SBA size standard is used by the USPTO when conducting analyses or certifying under the Regulatory Flexibility Act for patent-related regulations. The current proposal is to establish the SBA’s “small business concern” definition as the definition of “small business concern” under the Regulatory Flexibility Act. According to 35 U.S.C. § 41(h)(1), “fees charged under subsections (a), (b) and (d)(1) shall be reduced by 50 percent with respect to their application to any small business concern as defined under section 3 of the Small Business Act, and to any independent inventor or nonprofit organization as defined in regulations issued by the Director.” According to the Federal Register, “The USPTO is proposing to use the size standard set forth in 13 CFR 121.802 as its size standard when conducting an analysis or making a certification under the Regulatory Flexibility Act to avoid the need to collect information from patentees and patent applicants concerning whether they are a small business concern using the size standards set forth in 13 CFR 121.201.” Comments will be considered if received on or before August 7, 2006.

Federal Register Excerpt: LINK
35 U.S.C. § 41: LINK
13 CFR § 121.201: LINK
13 CFR § 121.802: LINK

On Tuesday, Tumbleweed Communications Corporation obtained a U.S. patent on its new digital signature technology. U.S. Patent No. 7,073,056, a continuation patent entitled "Apparatus and Method for Demonstrating and Confirming the Status of Digital Certificates and Other Data,” includes only one method claim for generating an interval hash tree, which is described in the specification as being constructed “where leaf nodes correspond to ranges in the list [of data items].” The claimed method “for use in an electronic communications protocol for generating a cryptographically assured confirmation that a candidate data item does not belong to a plurality of data items” not including all of the data items in a confirmation, comprises the steps of “(a) storing in a memory device, a plurality of data items; (b) deriving a plurality of leaf nodes from said data items; (c) generating an interval hash tree by associating, said leaf nodes with a plurality of intermediate nodes and at least one root node; and (d) digitally signing said at least one root node.” According to the patent, “an object of the invention [is] to greatly reduce the processing effort, network bandwidth, network latency, data storage, and data replication requirements needed to determine whether a particular certificate has been revoked.” This is the 23rd U.S. patent issued to Tumbleweed Communications.

U.S. Patent No. 7,073,056: LINK
TradingMarkets.com News Release: LINK
Tumbleweed Press Release: LINK
Tumbleweed Communications Website: LINK

According to a recently filed trademark application, KFC (Kentucky Fried Chicken) Corporation of Louisville, KY, is pursuing protection on a new version of the KFC founder, Col. Harland Sanders. This trademark application (serial no. 78909943, filed on June 16th) claims “the image of a man with a black bowtie and red apron in front of a red background,” and according to KFC spokeswoman Laurie Schalow, the uses of the new image are “still to be determined” by the company. The image to the right comes directly from the trademark application. Col. Sanders founded Kentucky Fried Chicken and his likeness has been used to advertise the brand even after his death in 1980.

Louisville Courier-Journal News Article: LINK
KFC Corporation Trademark Application: LINK
KFC Homepage: LINK

The USPTO recently announced that it is revising PTOL-85 (the Notice of Allowance and Fee(s) Due form) so that it will always show the full patent issue fee that is due regardless of whether there was previously an issue fee paid on the application. If an applicant has a provisional issue fee credit, Part B of PTOL-85 can be completed so that the previously paid fees may be applied to the current issue fee due. According to the USPTO, “[s]ome applicants, however, were confused when the form PTOL-85 specified an amount of $0 for the fee due, and failed to return the required Part B of form PTOL-85,or its equivalent. To eliminate the point of confusion, the Notice of Allowance and Fee(s)Due form (PTOL-85) will now always reflect the full issue fee amount currently due.” In addition, if the applicant previously paid a publication fee in full for the same application, the PTOL-85 will continue to show that no publication fee is due.

USPTO Information Release: LINK
PTOL-85 (Part B) Form: LINK