By Jay G. Taylor

Oral argument in the KSR International Co. v. Teleflex, Inc. case was held on November 28, 2006 before the Supreme Court. At issue is the Federal Circuit's requirement that the prior art provide the teaching, suggestion or motivation (TSM) for the combination of prior art references to find the combination obvious. The questions by the court suggest that the court is troubled by the Federal Circuit’s holding that the TSM test must be satisfied for the combination of prior art to be deemed obvious. Most vocal in his criticism of the test was Justice Scalia who stated the test is "meaningless," "irrational" and "gobbledygook." Justice Kennedy thought the TSM test served a purpose, but suggested that it could be supplemented with other ways of showing obviousness. Justice Ginsberg also suggested that the TSM test should not be the exclusive test of obviousness. Justice Souter was troubled that the TSM test has been around so long that, even if error, it may now be accepted law that should not be easily overturned. Justice Breyer was especially concerned because he viewed the claimed combination (a prior art auto accelerator pedal with a prior art electronic control) as "pretty obvious" and "fairly obvious" to him. Chief Justice Roberts asked what makes the decision to place the electronic control on a non-moving part non-obvious and didn't appear satisfied by the answer. Justice Alito was concerned because the TSM test had been used in the Dembiczak case to uphold the validity of a patent on a garbage bag that looked like a pumpkin which case patentee's counsel admitted was an outlier. Thus, while the Court's questions are often a poor basis to predict the outcome of a case, it is safe to say that a majority of the court is very troubled by the TSM test and will likely reduce its prominence in obviousness determinations.

Jay Taylor is a Partner with Ice Miller focusing his efforts on patent, trademark, copyright, and trade secret litigation.

Oral Argument Transcript: LINK

It was recently announced that IsoTis S.A., a Swiss orthobiologics company, obtained a U.S. patent on bone tissue repair. U.S. Patent No. 7,132,110, entitled “Tissue repair compositions and methods for their manufacture and use,” was issued this month to IsoTis OrthoBiologics, Inc., and includes 86 composition and method claims on the preparation of an osteogenic compound for the treatment of damaged bone tissue. According to the patent, “[a]n osteogenic composition is prepared by a process including the steps of subjecting demineralized bone to an extraction medium to produce an insoluble extraction product and a soluble extraction product, separating the insoluble extraction product and the soluble extraction product, drying the soluble extraction product to remove all or substantially all of the moisture in the soluble extraction product, and combining the dried soluble extraction product [] with demineralized bone particles.” This technology addresses the “need in the art for additional tissue repair compositions that employ tissue repair factors that are substantially freed of the cross-linked DBM [demineralized bone matrix] collagen network and that do not require complicated extraction and purification steps.”

U.S. Patent No. 7,132,110: LINK
IsoTis Press Release: LINK
IsoTis Website: LINK
Yahoo! News Article: LINK

It was recently announced that three inventors at the Carnegie Institution in Washington, D.C., obtained a patent related to the manufacture of a single-crystal diamond. U.S. Patent No. 7,115, 241, entitled “Ultrahard diamonds and method of making thereof,” includes seven method claims relating to diamond manufacture. The first claim of the patent is a method for manufacture a hard single crystal diamond comprising “growing a single crystal diamond; and annealing the single crystal diamond at pressures in excess of 4.0 GPa and a temperature in excess of 1500 degrees C to have a hardness in excess of 120 GPa.” According to the patent, “natural diamonds have a hardness between 80 [and] 120 GPa,” and “[m]ost grown or manufactured diamonds, regardless of the process, have a hardness of less than 110 GPa.” According to the ag-IP-news article (link below), the inventors are members of a high-pressure research team and “[t]hey and their colleagues subject matter to intense pressures and temperatures and have discovered previously unknown fundamental properties and structures of matter, while creating entirely new substances along the way.” The three inventors on this patent are Russell Hemley, Ho-kwang Mao, and Chih-Shiue Yan.

U.S. Patent No. 7,115,241: LINK
ag-IP-news Article: LINK
Carnegie Institution Press Release: LINK
Carnegie Institution Website: LINK

The World Intellectual Property Organization (WIPO) has recently released its series of guides regarding the use and protection of intellectual property. According to the WIPO Outreach Guides webpage (link below), "[t]he Guides offer a structure for planning IP-related outreach campaigns, and provide examples of successful initiatives worldwide." The Guides are divided into three sections, including “Planning a Public Outreach Campaign,” “Using Communications Tools Effectively,” and “Outreach in Practice.” The three guides focus on outreach campaigns including "Increasing Use and Understanding of Intellectual Property," "Countering Piracy and Counterfeiting," and "Promoting Creativity and Innovation," each containing several additional webpages with information pertinent to each topic. For example, the "Countering Piracy and Counterfeiting" campaign contains linked information for academic institutions, consumers, governments, music and movie fans, parents, retailers, and the like. This information is contained within the main “Public Outreach” webpage, which also contains publications on IP, available film and multimedia products, and links to upcoming outreach events.

Main WIPO Guides Webpage: LINK
“Planning a Public Outreach Campaign” Guide Section: LINK
“Using Communications Tools Effectively” Guide Section: LINK
“Outreach in Practice” Guide Section: LINK
Main WIPO Public Outreach Webpage: LINK

The USPTO announced on Friday that it and the European Patent Office (EPO) will be launching a new service to allow priority documents to be exchanged electronically between the two patent offices. This service, which is announced as “pav[ing] the way for faster and more efficient processing in each office,” will be free of charge to applicants and will apply to priority documents that “have to be filed when applicants wish to claim an earlier filing date in one patent office based on a prior filing in another.” According to USPTO Director and Under Secretary of Commerce Jon Dudas, “[b]y leveraging our electronic file management systems, we can streamline our internal processing while providing our applicants with the substantial benefits of reduced expenses and paperwork.” This service is expected to be available starting in January 2007.

USPTO Announcement: LINK
European Patent Office Website: 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 ninety-sixth through the one hundredth patent cases that were appealed from the district court level and decided by the Federal Circuit in 2006. All opinions are precedential unless otherwise indicated.

Tegic Communications v. Bd. of Regents of the Univ. of Texas System (08/10/2006): Eleventh Amendment providing a sovereign immunity from suit, application of Eleventh Amendment to patent and trademark infringement lawsuits, waiver of immunity by submitting to jurisdiction of a federal court, procedural nature of declaratory actions, the customer suit exception, assertion of Eleventh Amendment immunity to declaratory action suit

Korsinsky v. Microsoft Corp. (08/16/2006, non-precedential): patent expiration for failure to pay maintenance fee; dismissal of infringement case based on asserted expired patent, 35 U.S.C. § 286 (no recovery for infringement committed more than six years before filing complaint or counterclaim for infringement)

Monsanto Company v. Scruggs, et al. (08/16/2006): summary judgment appellate standard of review, infringement standard and defenses, first sale/patent exhaustion doctrine, implied license to use patented technology, seller cannot grant broader license than obtained from patent holder, validity and written description requirement, enablement requirement and experimentation, antitrust laws and permissible conduct within scope of patent protection, tying arrangements and unlawful monopolization under the Sherman Act, waiver of counterclaim arguments for failure to develop them within the briefs, permanent injunctions

Conoco v. Energy & Environmental International (08/17/06): appellate review of claim construction, requirement of clear intent to disclaim claim scope within the specification, "consisting of" having its own construction (MPEP § 2111.03) and discussion thereon, doctrine of equivalents and prosecution history estoppel, amendment-based and argument-based estoppel, contempt proceedings

Cook Biotech v. Acell (08/18/06): summary judgment, denial of a judgment as a matter of law, and claim construction appellate standards of review; two-step determination of patent infringement, claim construction review based on language within the patent specification, incorporation of documents by reference and their impact on claim construction, doctrine of equivalents

On Monday, the U.S. Supreme Court denied author Lewis Perdue's Petition for a Writ of Certiorari for further review of his claims against Dan Brown, the author of "The Da Vinci Code." In his original countersuit, Perdue claims that Brown infringed his copyright, alleging that his earlier work "Daughter of God" was substantially similar to Brown's work, of which over 60 million copies have been printed worldwide. According to the Albuquerque Tribune News Article (link below), "Perdue had alleged that Brown copied the basic premise of "Daughter of God," including notions that history is controlled by victors, not losers, and the importance of the Roman Emperor Constantine in requiring a transition from a female to a male-dominated religion." This lawsuit began when Brown and Random House sought a declaratory judgment in the U.S. District Court for the Southern District of New York in Manhattan that Brown's work did not infringe Perdue's work, and Perdue filed a countersuit alleging infringement and requesting $150 million in damages. In August, 2005, the District Court held that there was no copyright infringement, and in April 2006, the U.S. Court of Appeals for the Second Circuit agreed.

The Albuquerque Tribune News Article: LINK
November 13, 2006 Supreme Court Order List (Denial - p. 11): LINK

The Intellectual Property Owners Education Foundation (IPOEF) and the Intellectual Property Owners Association (IPO) have scheduled two upcoming patent and trademark conferences the first week of December. These conferences, both held at the Ronald Reagan Building & International Trade Center in Washington, D.C., offer a combined 12.5 CLE credit hours (approximate) and will cover several areas of patent and trademark practice. The first conference, entitled "PTO Day - 17th Annual Conference on Patent and Trademark Office Law and Practice," will be held on December 4, 2006. This conference is presented by the IPOEF and includes general patent and trademark sessions in the morning and two sets of breakout sessions in the afternoon, including "Tips on Filing and Prosecuting Patent Applications," "Practicing Before the Trademark Trial and Appeal Board (TTAB)," and "Professional Responsibility for Intellectual Property Practitioners," to name a few. The second conference, entitled "Patent Interferences Rules & Practice Conference - Interference Cases Before the USPTO Board of Patent Appeals and Interferences," will be held on December 5, 2006, and includes sessions entitled "Introduction to the Trial Section," "Motions Practice During an Interference," "Cross Examination," and "Surviving the Pitfalls of 35 U.S.C. § 135(b)," among others. Registration information is available at the IPO website (link below). I neither represent IPOEF or IPO, nor do I endorse any particular CLE course.

Conference Website: LINK
Program Brochure: LINK
Registration Form: LINK
Ronald Reagan Building & International Trade Center Website: LINK

On Monday, attorneys for Jimmy Buffett filed suit against an alleged infringer of Buffett’s marks. The lawsuit, filed in the U.S. District Court for the Southern District of Texas, Galveston Division, accuses Robert Akard of infringement of Buffet’s name and likeness to sell merchandise without Buffett’s permission. According to the E! Online article (link below), Buffett has taken Akard to court previously, even obtaining a court order against him in Nevada, but the court order was not broad enough to extend to Akard’s subsequent ventures in New York, Texas, and Florida. The lawsuit, according to the Reuters article (link below), asks the court “to order Akard to stop using the singer's name and likeness, account for his profits, turn them over to Buffett and pay unspecified damages.” Akard’s website does include a number of Jimmy Buffett and tropical-themed items, and some of the web pages include the disclaimer that “Jimmy Buffett, Jimmy Buffett Margaritaville and Parrothead are all registered marks of Jimmy Buffett” and that “Under One Hut is not affiliated or associated with Jimmy Buffett, Jimmy Buffett Margaritaville or Jimmy Buffett affiliated companies.” Buffett has applied for hundreds of trademarks in the United States, including those listed above, WASTIN' AWAY AGAIN IN MARGARITAVILLE, PERFECT MARGARITA, IT'S FIVE O'CLOCK SOMEWHERE, and BLEW OUT MY FLIP FLOP . . . STEPPED ON A POP TOP!, among others.

Reuters News Article: LINK
E! Online Article: LINK
Jimmy Buffett’s Margaritaville Website: LINK
Akard’s UnderOneHut Website: 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 ninety-first through the ninety-fifth patent cases that were appealed from the district court level and decided by the Federal Circuit in 2006. All opinions are precedential unless otherwise indicated.

Eolas Technologies v. Microsoft Corp. (07/31/2006): reassignment of patent infringement case to different district court judge, application of regional circuit law to the inquiry, unique nature of 7th Circuit law regarding reassignment, application of Circuit Rule 36 to remands

Pfizer, Inc. v. Ranbaxy Laboratories, Limited (08/02/2006): claim construction and subsequent infringement determination appellate standards of review, express disavowal of chemical structure in patent application, statements made during foreign counterpart patent applications are irrelevant to claim construction of U.S. patent, statements made during similar but not formally related or incorporated by reference are irrelevant to claim construction, patent term extension under Hatch-Waxman Act, claims not rewritten by a court to preserve validity, claim invalidation under § 112, paragraph 4, for improper dependency

Amgen v. Hoechst Marion Roussel (now known as Aventis Pharmaceuticals) (08/03/2006): review of claim construction of "therapeutically effective amount", claim construction begins with the words of the claims themselves, items courts should consider when performing claim construction (the claims themselves, the remainder of the specification, prosecution history, and others), anticipation appellate standard of review after bench trial (question of fact, reviewed for clear error), anticipation references must also be enabled, patentee burden of rebutting Festo presumption, discussion of requirements to rebut presumption, dissent regarding claim construction necessity as pertaining to this case

Pennington Seed v. Produce Exchange No. 299, et al. (08/09/2006): assertion of Eleventh Amendment immunity for patent infringement by University, potential state law remedies for infringement regarding lack of violation of due process rights, liability for infringement for government employees acting within official capacity, sufficient nexus required between official actions and infringement activity, personal jurisdiction over university officials, due process analysis of non-resident defendant

Serio-Us Industries v. Plastic Recovery Technologies (08/10/2006): two-step patent infringement analysis, claim construction appellate standard of review, review of objection to jury instructions, request for new trial in the absence of Rule 50 and 59 motions, discounting expert testimony if conflicting with claim construction mandated by the claims, appellate review of a judgment as a matter of law, federal preemption of state law claims, notifying potential infringers of infringement in good faith violates no protected right, review of exceptional case and fees claim

On Thursday, Budejovicky Budvar NP ("Budvar"), a brewer in the Czech Republic, announced that it successfully obtained a trademark for "Budweiser Budvar" in Portugal. Budvar initially applied for the mark in 1999, and U.S. brewer Anheuser-Busch Cos. Inc. opposed Budvar's trademark application. According to the International Herald Tribune article (link below), "[i]t's another win for [Budvar] over Anheuser-Busch in Portugal after the patent office there [the Instituto Nacional da Propriedade Industrial] accepted its objections to Anheuser-Busch patent applications for the "Budweiser" and "Budweiser King of Beers" trademarks in 2003." According to Budvar's website, "Budweiser Budvar has to defend its historical rights to the registered trademarks against legal attacks from the Anheuser-Busch company in more than 40 legal disputes and a further more than 70 administrative proceedings currently before patent offices throughout the world." It is noted that Budvar currently uses logos of "Budejovicky Budvar", "Budweiser Budvar", and "Bud" with reference to is numerous beer types.

International Herald Tribune News Article: LINK
Portuguese Patent and Trademark Website (English version): LINK
Budweiser Budvar Website: LINK
Budweiser Budvar Trademarks Website: LINK

Last Friday, a jury in the U.S. District Court for the Western District of Tennessee ruled that a subsidiary of Comdata Corp. did not infringe a patent regarding the activation of gift cards. Barry Fiala Inc. (“Fiala”) sued Stored Value Systems (“SVS”), now known as Comdata’s Stored Value Solutions, alleging that SVS infringed U.S. Patent No. 5,918,909, entitled “Package for card with data-encoded strip and method of using same.” After a three week trial before Judge Samuel H. Mays, Jr., the jury not only ruled that SVS did not infringe the patent, but also, according to the Comdata press release (link below), the jury “found that patent is invalid for failure to name all of the inventors, and that the patent is unenforceable due to inequitable conduct before the United States Patent and Trademark Office.” In April of 2005, Fiala was successful in its infringement lawsuit against Card USA Inc. In the same Court before Judge Jon P. McKalla, Fiala was awarded over $1.3M in damages for infringement of the same patent.

U.S. Patent No. 5,918,909: LINK
Nashville Business Journal News Article: LINK
Comdata Press Release: LINK
Comdata Website: LINK

On Friday, the USPTO announced via the Federal Register that it will eliminate the Disclosure Document Program effective February 1, 2007. This program, implemented in 1969, allowed “an inventor to file a document with the Office which includes a written description and drawings of his or her invention in sufficient detail to enable a person of ordinary skill in the art to make and use the invention to establish a date of conception of an invention in the United States under 35 U.S.C.104 prior to the application filing date.” According to the Federal Register, provisional applications are available and have been since June of 1995, noting that provisional applications are “more useful to an inventor” as they “establish a constructive reduction to practice date with respect to an invention claimed in a nonprovisional application.” To memorialize this change, 37 CFR § 1.21(c) will be removed and reserved for future use.

Federal Register Excerpt: LINK
37 CFR § 1.21: LINK
MPEP § 1706 (“Disclosure Documents”): LINK

It was announced last week that authorities in Malaysia have detailed three phone dealers for illegally downloading songs on the internet for profit. A raid occurred in Kuala Lumpur and ended with several arrests of people who resold the illegally downloaded music as mobile phone ringtones across the world. According to the Associated Press article (link below), the men arrested were earning more than $150 each day selling these illegal ringtones, and if found guilty of copyright infringement in Malaysia, they could each face up to 5 years in prison and fines exceeding US$5,000. Additional mobile phone dealers are being pursued in Malaysia for similar practices, and according to this same article, "Malaysia is one of 36 countries on a U.S. watch list of serious copyright violators, and music and movie industry officials have expressed concern over the prevalence of piracy [in Malaysia]."

Associated Press Article (via MSN Money): LINK
BruneiDirect.com News Article: LINK
Intellectual Property Corporation of Malaysia (MyIPO) Website: LINK
Malaysian Copyright FAQ Webpage: LINK

I would like to thank John Welch, author of The TTAB Blog, for his kind words regarding the Daily Dose of IP blog. As you may know, John writes about each Trademark Trial and Appeal Board decision soon after it is handed down, providing his own commentary for further review and discussion. If you practice trademark law and are not yet familiar with John's blog, I recommend that you visit his blog as it is a useful resource.

On Wednesday, Forgent Networks announced that it settled all of its remaining claims in the cases regarding its JPEG patent. In a brief two-paragraph press release, Forgent mentioned that it and "all of the parties in the cases" regarding U.S. Patent No. 4,698,672 ("Coding system for reducing redundancy") reached a settlement as to all claims being litigated. Although the press release states that "Forgent is precluded from disclosing the terms of the agreement," several sources, including the CNET news article (link below), report that a spokesperson for Forgent announced the settlement was for $8 million. It was reported that 15 of the 45 initial defendants settled with Forgent prior to this most recent settlement. Since acquiring the patent in 1997, Forgent has obtained over $110 million in royalties on this patent alone.

U.S. Patent No. 4,698,672: LINK
Forgent Networks Press Release: LINK
Forgent Networks Website: LINK
CNET News Article: LINK

On Tuesday, Judge Kent Jordan of the U.S. District Court for the District of Delaware held that Eastman Kodak Co. ("Kodak") did not infringe a patent held by Ampex Corp. The case, filed in October of 2004, alleged that Kodak infringed claims 7, 8, and 10-15 of U.S. Patent No. 4,821,121, entitled "Electronic still store with high speed sorting and method of operation." Judge Jordan granted Kodak’s summary judgment motion, acknowledging Kodak’s assertion that the terms "video image," "data," "directly," "an input port and an output port," and "external port" were not practiced, but making the decision that Kodak did not literally infringe Ampex’s patent based on the term "data." Kodak argued that their cameras did not satisfy the "data" limitation because of the processing that takes place prior to the image storage in permanent memory, and according to Judge Jordan, "[s]ince the numeric values representing at least some of the pixels in an image are changed before storage in permanent memory, Defendants’ cameras cannot literally infringe any of the claims asserted by Ampex." In addition, Kodak was deemed not to infringe under the doctrine of equivalents, noting that specific amendments to defeat a 35 U.S.C. § 112 rejection by adding "the" and "said" to modify "data" in the claims led to the application of prosecution history estoppel "in every claim asserted by Ampex regardless of whether it was ever amended."

According to a recent World Intellectual Property Organization (WIPO) press release, the 900,000th trademark under the Madrid system has been registered. Madrid registration no. 900,000 (Gryphon logo shown here) was registered to Chaozhou Fengxi at the Jinbaichuan Porcelain Crafts Factory for "Glassware for everyday use, including cups, plates, kettles and jars included in this class; liqueur sets; ceramics for household purposes; services (tableware), not of precious metal; toilet utensils; China ornaments; spice sets; pots, not of precious metal; vases, not of precious metal; flower pots." It is estimated that the 1,000,000th trademark registered under the Madrid system will be registered within the next three years, noting that less than 34,000 international trademark applications were filed in 2005. The Madrid system, administered by the International Bureau of WIPO, functions under the 1891 Madrid Agreement and the 1989 Madrid Protocol.

WIPO Press Release: LINK
Trademark No. 900,000: LINK
WIPO's Madrid System Webpage: LINK
Current Members of the Madrid Union: LINK