December 29, 2006

In a decision handed down last week, Judge John Shabaz of the U.S. District Court for the Western District of Wisconsin granted summary judgment to Google, Inc. in a patent infringement suit initiated by HyperPhrase Technologies, LLC and HyperPhrase, Inc. (collectively "HyperPhrase"). In the suit, HyperPhrase claimed that Google's AutoLink and AdSense products infringed four patents held by HyperPhrase, namely U.S. Patent Nos. 5,903,889 (claims 1 and 7), 6,434,567 (claims 35, 46, 48, 53, 56, and 63), 6,516,321 (claims 1, 24, 27, 86, 91, 182, and 190), and 7,013,298 (claims 1 and 26), all related to the storage and retrieval of electronic medical records. After a discussion of the steps of a patent infringement analysis and a discussion of the doctrine of equivalents, Judge Shabaz discusses the specific reference in the plaintiff’s patents to a singular record and that the AutoLink uses multiple records, pointing out that the plaintiff’s patents refer to “said record” and “the record.” Judge Shabaz then concludes his analysis relating to AutoLink, stating that “AutoLink performs a completely different function in a different way to achieve a different result,” and that “there is no basis to suggest that these elements [as discussed] are present by equivalence.” The discussion regarding AdSense is fairly brief, noting specifically that the claimed “referenced record” and “referencing record” that “refer” to one another is not applicable to a web page and an advertisement (the two “records” used in AdSense) as they are prepared separately and do not “refer” to one another. Judge Shabaz then concludes by granting Google’s motion for summary judgment on non-infringement, rendering the separate motion for summary judgment on invalidity moot.

Judge Shabaz’s Opinion: LINK
Chicago Tribune Article: LINK
New York Times Article: LINK
U.S. Patent No. 5,903,889: LINK
U.S. Patent No. 6,434,567: LINK
U.S. Patent No. 6,516,321: LINK
U.S. Patent No. 7,013,298: LINK

December 28, 2006

The USPTO recently announced its statistics pertaining to quality and production, hiring and training, electronic filing and processing, telework, and international relations and enforcement for fiscal year 2006. According to the USPTO, patent examiners completed 332,000 patent applications in FY2006, with a 54% allowance rate and the lowest patent allowance error rate (3.5%) in over twenty years. Final action was taken in over 378,000 trademark applications, achieving a record-low 3.6% error rate. Over 1,200 patent examiners were hired, with the goal of hiring 1,000 new examiners each year for the next five years. In addition, 87 trademark examining attorneys were hired, resulting in a total of over 400 trademark attorneys at the USPTO (the most ever). Use of the Electronic Filing System-Web (EFS-Web) jumped from 1.5% per month of total patent filings to 33% of total patent filings, and 94% of all trademark applications were filed electronically (compared with 88% in FY2005). Additional statistics, including information on examiner work outside of the office and efforts to stop intellectual property piracy, are available at the USPTO link below.

USPTO Press Release: LINK
USPTO's FY 2006 Performance and Accountability Report: LINK

December 27, 2006

It was recently announced that representatives of the USPTO and the Indian Ministry of Commerce and Industry (IMCI) recently signed a memorandum of understanding (MOU) regarding several intellectual property issues. This MOU, signed by the Under Secretary of Commerce for Intellectual Property, Jon Dudas, and the Secretary of the IMCI, Ajay Dua, is to “advance[] the objective established by President Bush and Prime Minister Singh in March for the United States and India to work together to promote innovation, creativity and technological advancement by providing a vibrant intellectual property rights regime,” according to Dudas. According to the USPTO press release (link below), this MOU contains affirmations to “strengthen” the respective offices, and that “the USPTO will help train Indian patent and trademark examiners, develop education material for the examiners and produce a manual on patent practice for use by Indian examiners and the public.”

USPTO Press Release: LINK
IMCI Website: LINK
Office of the Controller General of Patents, Designs and Trademarks (India): LINK

December 16, 2006

December 15, 2006

It was announced on Thursday that Symantec Corporation filed suit against several alleged counterfeiters of its software. The lawsuit, filed in the United States District Court for the Central District of California, alleges that a large software piracy ring, including ANYI, SILI Inc., ASP Solutions, G.T. Micro, and several individuals, committed acts of copyright and trademark infringement, fraud, false advertising, and unfair competition. The software at issue includes several different packages currently offered by Symantec, including the widely-used Norton AntiVirus software. A spokesperson for Symantec stated that “[a]side from the financial loss incurred by this activity, counterfeit software can also damage a user’s operating system due to faulty code or cause a user’s system to be wracked with security vulnerabilities,” and that “Symantec is committed to doing everything we can to protect our customers and the safety of their information, and that includes taking legal action.” According to the ag-IP-news article (link below), Symantec is seeking $15 million in damages in this case, information about other supplier affiliated with the defendants, seizure of all known counterfeit software, and an injunction against some defendants from conducting additional software-related business.

ag-IP-news Article: LINK
Symantec Press Release: LINK
New Ratings Article: LINK
Symantec Website: LINK

December 14, 2006

On Monday, daredevil Evel Knievel filed suit in the U.S. District Court for the Middle District of Florida, Tampa Division, against rapper Kanye West. In addition to West, Knievel also named Roc-a-Fella Records, LLC, Chris Milk, and AOL LLC as co-defendants, and formally alleged trademark infringement, trademark dilution, unfair competition, and unauthorized use of Knievel’s likeness. The subject of the lawsuit is West’s “Touch the Sky” music video, where West acts as “Evel Kanyevel” and attempts to use a rocket-powered motorcycle to jump over a canyon. In the lawsuit, Knievel alleges to be “an internationally famous motorcycle daredevil,” and his “likeness in his public performance attire, the world-famous personalized white jumpsuit…is instantly recognized by millions of people in the United States and world-wide,” and that his jumpsuit “is inherently distinctive” and “enjoys secondary meaning.” Knievel further alleges that West’s video contains "vulgar and offensive sexual images, language and conduct involving `Evel Kanyevel' and women apparently trying to gain his sexual interest,” and that the “vulgar, sexual, and racially-charged nature of the [music video] is directly counter to Evel Knievel’s long-established public persona, utterly inconsistent with his toy products and appeal to children, and harms the reputation of the Evel Knievel® Trademark, and the Evel Knievel Costume.” According to the Yahoo! News article (link below), Knievel refers to West’s music video as “the most worthless piece of crap I've ever seen in my life, and he uses my image to catapult himself on the public.” Knievel has three registered U.S. trademarks for the mark “EVEL KNIEVEL.”

Yahoo! News Article (via AP): LINK
Copy of the Filed Lawsuit: LINK
U.S. Trademark Reg. No. 2450740: LINK
U.S. Trademark Reg. No. 2481649: LINK
U.S. Trademark Reg. No. 2864119: LINK
Evel Knievel’s Website: LINK

December 13, 2006

The USPTO recently announced that its newest version of Private PAIR, version 7.0, will be launched next week. On December 19th at 1:00PM local time, the USPTO will be hosting a 90-minute interactive online product launch and training to introduce the newest version to its users. According to a recent press release by the USPTO, some of the features present in this new version include “Customer Number Details Online Self-Administration,” “Attorney Docket Number Online Self-Administration,” “Pending Non-Published PCT Application Search,” “Ordering of Certified Copies for Private Applications via Private PAIR,” “XML Application Data Download,” and that the “Display References Tab will have two more sections of references.” There is no charge for this online event, but pre-registration (link below) is requested.

Event Registration Webpage: LINK
USPTO Online Training Schedules: LINK
Direct Link to Private PAIR Login: LINK
Private PAIR Help & Tutorial Webpage: LINK
Private PAIR FAQ Webpage: LINK

December 12, 2006

The USPTO recently released a transcript of its online web seminar held on November 16, 2006, allowing those who did not participate in the web chat to review the questions posted and the answers provided. The transcript provides just over an hour of questions and answers, along with a number of hyperlinks to additional information provided by two “USPTO Experts.” Answers to the following questions are provided:

  • “What are the pros and cons of provisionals vs. non-provisionals?”

  • “What rights are established when a US non-provisional patent application is published? Do these rights, if any, extend outside the US?”

  • “If a US provisional application is filed, does the inventor have the right to use "patent pending' on literature and the product?”

  • “During prosecution, do examiners prefer telephone interviews or written responses to office actions?”

    Many of the answers provided are preceded with “EDITED ANSWER,” denoting that “the original on-line chat answer has been modified to ensure completeness and accuracy of the answers originally provided by USPTO staff.”

    USPTO Announcement: LINK
    USPTO “On Line Chat Transcripts” Website: LINK
  • December 11, 2006

    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 101st through the 105th 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.

    Fuji Photo Film Co., LTD. v. Benun, et al. (08/23/06) (erratum: LINK) : challenge of jurisdiction of court pertaining to preliminary junction against importing infringing products, filing of patent action in district court or before the International Trade Commission, Custom’s seizure of imported goods, general exclusion orders preventing importation of products

    Meade Instruments v. Yamcon (08/25/06, non-precedential): appeal of district court’s claim construction (no citations provided), waiver of late doctrine of equivalents argument

    Ormco Corporation v. Align Technology (08/30/06): what is and is not considered “prior art,” discussion of obviousness standard, review of specification for meaning of claim language, claim construction not limited to disclosed embodiments, dictionary definitions considered after specification reviewed, discussion of “suggestion or motivation” to combine for obviousness determination, discussion of references “teaching away” from the application, presumption of obviousness when claimed range overlaps with range in the prior art, commercial success (or other secondary considerations); discusses several arguments made during patent prosecution

    Alza Corporation v. Impax Laboratories, Inc. (06-1047) (09/06/06, non-precedential) – affirmation of claim invalidity (see also below)

    Alza Corporation v. Mylan Laboratories (06-1019) (09/06/06): ANDA case; discussion of obviousness and the “underlying factual inquiries” to be made, statutory presumption of patent validity, “motivation-teaching-suggestion” test for obviousness, finding motivation implicitly in the prior art, discussion of drug action and reasonable expectation of success, inadequate research data

    December 08, 2006

    It was recently announced that a patent held by Merck in Thailand will be the subject of a compulsory license for governmental development. Merck holds a number of patents around the world for its AIDS treatment drug efavirenz, and so that Thailand may further its efforts to develop a generic version of the drug, the public health ministry in Thailand is issuing a compulsory license to the patent for its own public drug manufacturer, the Government Pharmaceutical Organization. Production is scheduled to begin next year, and during that time, generic efavirenz will be imported from India for use in Thailand. According to the Medical News Today article (link below), Merck was not consulted prior to the issuance of the compulsory license, but will receive a 0.5% royalty on sales of the drug. It is anticipated that the over 500,000 people in Thailand living with HIV/AIDS will benefit from a 50% reduction in the cost of the drug, to approximately $38 per month, contrasted with the current $67 monthly cost. According to the IRIN Plus News article (link below), Merck has been providing efavirenz to the Thai government since 2001 at “no profit.” In the United States, efavirenz is sold by Bristol-Myers Squibb as Sustiva®

    Medical News Today Article: LINK
    IRIN Plus News Article: LINK
    Sustiva® Product Website: LINK

    December 07, 2006

    On Wednesday, the USPTO announced its upcoming 2007 revisions to the Trademark Design Code Search Manual. Approximately 80 new design search codes will be added, and several current broad design search code sections will be divided into several smaller sections. While many of the changes have to do with shapes and quantities of objects, some notable changes include sections limited to men, women and children formed by letters, numbers, punctuation or geometric shapes, whereby other “grotesque” men, women and children are separated into their own category. Cotton plants (05.13.08) and marijuana plants (05.13.09) no longer share the same classification. Sporting balls are also separated into individual categories, including soccer and volley balls (21.03.15), golf balls (and tees) (21.03.16), bowling balls (21.03.17), and basketballs (21.03.20), to name a few. In addition, the State of Texas now has its own code (01.17.12). The full list of changes (in chart form) is available at the USPTO announcement link (below). The changes are scheduled to take effect early next year.

    USPTO Announcement: LINK
    USPTO Design Search Code Manual: LINK

    December 06, 2006

    In a recent decision, Senior District Judge Gene Carter of the U.S. District Court for the District of Maine refused to grant a motion for temporary injunction against Wild Willy’s Ale Room. The owner of Wild Willy’s Burgers, James Williams, petitioned the court in an attempt to protect his registered trademark (U.S. Trademark Reg. No. 2,746,233), alleging that Wild Willy’s Ale Room was a confusingly similar name to Wild Willy’s Burgers and that the owner of Wild Willy’s Ale Room, William Paladino, should be prohibited from using that name to promote his bar. Judge Carter stated that there was enough of a difference between the two marks, and according to the Seacoast Online article (link below), the court report states that "the record is far from establishing a similarity in the type of businesses and goods marketed for sale and that the general focus of a lounge or bar operation is significantly different than that of a family-style restaurant." In addition, the article states that Williams “received several e-mails and 10 to 15 phone calls a week during the summer from customers asking about the bar in Acton,” and the three e-mails from people believing that the two businesses were related submitted into evidence were dismissed by the court “as hearsay because the individuals who sent the e-mails were unidentified and their statements weren't made under oath.” There are three Wild Willy’s Burgers locations (York, ME, Rochester, NH, and Watertown, MA), the first of which (York) opened in 2001. There is one Wild Willy’s Ale Room, located in Acton, ME, which is believed to have opened after the first Wild Willy’s Burgers location in the same state.

    Seacoast Online Article: LINK
    Judge Carter’s Decision: LINK
    Wild Willy’s Burgers U.S. Trademark Registration (Reg. No. 2,746,233): LINK
    Wild Willy’s Burgers Website: LINK
    Wild Willy’s Ale Room Website: LINK

    December 05, 2006

    John Spiegelberg, the owner of Red Raider Outfitters, recently filed a motion requesting that the District Court judge who decided the case in November remove or recuse himself from further involvement with the trademark infringement matter. Judge Sam Cummings of the United States District Court for the Northern District of Texas held last month that Spiegelberg infringed Texas Tech University’s “Wreck ‘Em Tech” and “Raiderland” marks, and awarded nearly $3 million in damages to the University. According to the KLBK-13 article (link below), Spiegelberg’s motion alleges that “Judge Cummings is a Texas Tech graduate and an avid Tech supporter,” and that he “receives free season passes and free parking passes to Tech football games.” In addition, the article states that Spiegelberg’s motion alleges that Judge Cummings “works out on campus” and that “Judge Cummings’ brother, James, is on the board of the Texas Tech Foundation, which controls millions of dollars that flow through the university.” This information was allegedly obtained from a private investigator hired by Spiegelberg to identify potential ties between Judge Cummings and Texas Tech. According to the Market Wire news article (link below), Judge Cummings has and continues to wish to be involved with Texas Tech legal matters. As of the time of this article, this motion, Spiegelberg’s motion for a new trial, and the oppositions filed against both of Spiegelberg’s trademark applications for the marks listed above have not been ruled upon by the respective courts or administrative offices.

    Daily Dose of IP Article on the Original Decision: LINK
    KLBK-13 (Lubbock, TX) News Article: LINK
    Market Wire News Article: LINK

    December 04, 2006

    The USPTO recently released its “Promoting Innovation: Today’s USPTO” video, which is available at the USPTO website link below. According to the USPTO, this is “a video program about the agency’s history, what it does, how it works and why it is a vital part of our economy and culture.” The video discusses how modern technology allows for electronic filing of applications, some of which created by patentees, and discusses the history of intellectual property law in the United States, including the Constitution and the first patent statute signed into law (April 10, 1790). The video also discusses how former U.S. Presidents impacted the patent system, and how the USPTO has grown from small beginnings to a state of the art facility, including the Patent and Trademark Museum and a memorial garden located within the center of the complex. In addition, several USPTO employees are interviewed, providing insight to the inner workings of the Patent Office. The link below is to the downloadable .zip file (approximately 70MB for a 27 minute video), noting that the links to the streaming video on the USPTO website (with and without captions) are currently not working as of the time of this article. I will update this post once I am aware that the streaming videos are once again available from the USPTO’s website.

    Downloadable Video (70MB zip file): LINK
    USPTO Video Viewing Instructions: LINK

    December 01, 2006

    On Tuesday, The Ringling Bros. and Barnum & Bailey circus ("Ringling") filed a trademark infringement lawsuit, alleging improper use of its "The Greatest Show on Earth" mark. The suit, filed in the U.S. District Court for the Southern District of New York in Manhattan against Sephora and its parent company, LVMH Moet Hennessy Louis Vuitton SA, seeks unspecified damages and $5 million in punitive damages for the unauthorized use of Ringling's mark. According to the WCBS-TV article (link below), "[t]he circus' lawsuit seeks to stop Sephora holiday advertising that it says uses its trademarks, including the phrase it uses heavily in its program books, coloring books, playing cards and stuffed animals," and that "Sephora was using "The Greatest Gift Show on Earth" and other circus references and designs in its holiday advertising in stores, on billboards, in catalogs and on the Internet." A brief search of the USPTO's trademark database shows that Ringling has nine "live" U.S. marks for "The Greatest Show on Earth," and five "dead" marks, the earliest of which (Serial No. 72100726) claiming a first use of July 21, 1897.

    WCBS-TV (New York) News Article: LINK
    Earliest "The Greatest Show on Earth" Registration (DEAD): LINK
    Ringling Bros. and Barnum & Bailey website: LINK
    Sephora's catalog 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.

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