October 31, 2007

Today will be an interesting day in the world of patent rule changes. In the case we are all watching (consolidated cases of Tafas and SmithKlineBeecham (d/b/a GlaxoSmithKline) vs. Jon Dudas and the USPTO), the not-so-long awaited temporary restraining order/preliminary injunction hearing will occur this morning at 10:00 in the U.S. District Court for the District of Virginia. Will the new patent rules go into effect tomorrow or will the TRO be granted? We’ll have to wait and see.

A number of my fellow bloggers have followed this case step by step and have provided us with some excellent references and commentary. The following is a brief summary of references I have used as I have followed this particular case.

IPWatchdog, a blog run by Gene Quinn of White & Quinn, P.C., has provided us all with a concise list of most, if not all, of the documents filed in the case. Gene has set up a separate blog page for this case (link HERE), including the Complaint, the Motion for Temporary Restraining Order & Preliminary Injunction, the Motion for Continuance by the USPTO, GlaxoSmithKline’s Response, and the Order Granting the Motion for Continuance, among others.

The Patent Docs, a consortium of patent attorneys from McDonnell Boehnen Hulbert & Berghoff LLP holding doctorate degrees in an array of sciences, started following this case soon after the original complaint was filed, and about a week ago provided us with a good summary (link HERE) about the case to date. In the summary, the Patent Docs discussed the declaration filed by Harry Manbeck, Jr., discussing the various types of authority for rule making and a detailed history of continuation practice. Kevin Noonan (one of the Patent Docs) also recognized Gene Quinn (in a post available HERE) in a recent post letting us know that the temporary restraining order/preliminary injunction hearing will occur this morning at 10:00.

Dennis Crouch, the author of my favorite IP blog (Patently-O), has also followed the developments in this case. Last week Dennis wrote a good summary of the AIPLA’s position in the case, noting that the AIPLA filed an Amicus brief in support of GSK’s motion for temporary restraining order and preliminary injunction. Dennis also provided us with copies of declarations from David Kappos (IBM counsel) and Burt Magen (representing SanDisk Corporation) referencing how those two practitioners feel the rule changes will impact their respective clients’ patent portfolios. Dennis also provided us with links to Tafas’s Reply to Defendant’s Memorandum in Oppositon and in Further Support of Entry of Preliminary Injunction and GSK’s Reply Memorandum in Further Support for a Temporary Restraining Order and Preliminary Injunction in a recent post (link HERE).

I’m sure there are a number of other bloggers out there who are following this case, and if you are one of them, kudos to you. Send me a note sometime – I’d love to hear from you.

October 29, 2007

The European Patent Office (“EPO”) recently provided details as to how its new patent information policy will make documentation more accessible to all. In the EPO article (link below), Curt Edfjall, the Vice President of the EPO, stated that “ensuring barrier-free public access to the information contained in patent documents” is a “key element” of the recently approved new patent information policy. The policy has the effect of making patent documents more accessible to small and medium-sized businesses, and at a recent EPO Patent Information Conference, Edfjall stated that he would like to see “an emphasis on making patent data understandable, and on removing any remaining barriers that exist for those needing access to it.” He also outlined a number of areas that the EPO will be focusing on, including the facilitation of “high quality patent applications” through “better access to data,” and the development of “new tools for less experienced searchers.” Additional comments, as well as external links to the European Patent Network and additional information regarding European patent practice, are available at the link below.

EPO News Article: LINK

October 26, 2007

As reported by CBS affiliate WCCO in Iowa (link below), the Campbell Soup Company has requested that Burlington City, Iowa, Councilman Mike Campbell change how he promotes himself as a candidate for re-election. Mr. Campbell’s campaign website, voteformikecampbell.com (link below), contains a number of elements used by the Campbell Soup Company, including the script word “Campbell” similar to the script “Campbell’s” as used by the Company, the words “CITY COUNCIL” in gold block lettering underneath “Mike Campbell” having a similar appearance to the word “CONDENSED” as used by the Company on its canned soup products, the phrase “M’m! M’m! Good Decision!” in the campaign website similar to the phrase “M’m! M’m! Good! as used by the Company, and a primarily red and white website layout similar to the red and white colors used throughout Campbell Soup Company’s products. According to the WCCO report, Campbell Soup Company has sent a letter to Mike Campbell requesting that he stop using the Company’s trademarks, and according to a spokesperson for the Company, “We expect him to make some changes.” A brief search of the USPTO trademark database shows 178 live and dead trademark applications and registrations, including the script word mark “CAMPBELL’S” for “condensed soups” (U.S. Trademark Reg. No. 48,664) and the word mark “M'M! M'M! GOOD!” for “soups” (U.S. Trademark Reg. No. 1,411,535).

WCCO (Iowa) News Article: LINK
Mike Campbell’s Campaign Website: LINK
Campbell Soup Company Website: LINK
U.S. Trademark Reg. No. 48,664: LINK
U.S. Trademark Reg. No. 1,411,535: LINK

October 24, 2007

As we all know, the Colorado Rockies had a pretty good run at the end of the season and during the playoffs to make it to this year’s World Series. As reported by the Orlando Sentinel (link below, views therein not my own), and recognizing that “Rockies” and “October” share a similar sound, the Colorado Rockies Baseball Club, Ltd., recently filed four U.S. trademark applications for ROCKTOBER. The four applications (U.S. Trademark Application Nos. 77296639 (IC 025), 77296649 (IC 016), 77296661 (IC 028), and 77296664 (IC 041)) cover a broad range of items, including clothing (caps, hats, visors, knitted headwear, headbands, bandannas, shirts, T-shirts, tank tops, blouses, sweaters, etc.), paper goods (trading cards, posters, stickers, decals, temporary tattoos, bumper stickers, score books, scorecards, printed baseball game programs, magazines, books, etc.), toys (stuffed toys, plush toys, bean bag toys, soft sculpture foam toys, foam novelty items, namely, foam fingers, puppets; balloons, checker sets, chess sets, dominoes, cribbage game, board games, etc.), and entertainment services (including baseball games, competitions, tournaments and exhibitions rendered live and through broadcast media including television, radio, satellite, wireless, audio and video media, telephone, fiber optics, wireless fidelity and other electronic media and via a global computer network or a commercial on-line service, etc.). The Colorado Rockies currently use the mark ROCKTOBER on the team’s official website (link below), recognizing the team as the “2007 National League Champs.” It is noted that all four ROCKTOBER applications were filed in October, 2007.

Orlando Sentinel Article: LINK
U.S. Trademark Application No. 77296639: LINK
U.S. Trademark Application No. 77296649: LINK
U.S. Trademark Application No. 77296661: LINK
U.S. Trademark Application No. 77296664: LINK
Colorado Rockies Official Website: LINK

October 23, 2007

The U.S. Department of Justice (“DOJ”) recently announced that it will be holding a regional conference in Bangkok, Thailand, with an emphasis on international intellectual property crimes. As noted in the USPTO link below, the Department of Justice is gathering police and customs officials from the U.S. and a number of countries, including, China, Japan, Thailand, Singapore, and others for a week long conference hosted in part by the DOJ, the USPTO, the U.S. Department of State, and the Association of Southeast Asian Nations (“ASEAN”). One of the purposes of the conference, as noted in the link below, is to “enhance cross-border cooperation in the fight against IP theft through the establishment of an Intellectual Property Crimes Enforcement Network (IPCEN).” According to James Finch, the Assistant Director of the Cyber Division of the FBI, “Counterfeit products not only result in harm to world economies, but also represent a serious threat to the health and safety of the people of all nations,” and that the FBI is “fully committed to the IPCEN’s collaborative approach to combating serious intellectual property crimes.” Additional details regarding this conference, as well as hyperlinks to information on the DOJ’s Task Force on Intellectual Property, are available at the link below.

Department of Justice Conference Announcement: LINK

October 22, 2007

The USPTO recently announced that a number of business organizations and companies, including the American Intellectual Property Law Association (AIPLA), the Intellectual Property Owners Association (IPO), Microsoft Corporation, and others will commemorate the 25th anniversary of the Trilateral Cooperation with a conference to be held on November 8, 2007. According to the USPTO (link below), the USPTO, the Japanese Patent Office (JPO), and the European Patent Office (EPO) in 1983 created a Trilateral Cooperation to recognize that those three offices share the same “challenges and goals.” Those three patent offices, in combination, review over half of all international patent applications. The anniversary conference, entitled “Trilateral Cooperation… Successes, Opportunities, and Challenges” will be held at the Ronald Reagan Building and International Trade Center in Washington, DC, and will feature speakers from a number of conference sponsors, each of the three national patent offices referenced above, international companies, and law firms. Registration for this event can be facilitated via the conference webpage link below.

USPTO Announcement (mid-page): LINK
Conference Webpage: LINK
Conference Agenda (PDF): LINK

October 18, 2007

While searching the World Intellectual Property Organization (WIPO) website for a particular form reference, I noticed a hyperlinked entry for “Life Sciences” under the “PATENTSCOPE” menu. As previously reported by the DDIP blog (link below), PatentScope is the PCT search engine provided by WIPO to allow its users to search a database of over one million PCT applications by keyword, inventor name, filing date, and various other criteria.

The Intellectual Property and Life Sciences webpage (link below) provides a general overview of the field as it pertains to intellectual property (IP), a list of activities by WIPO in the field of life sciences intellectual property, and links to additional reference material. In the overview, WIPO notes that advances in life sciences, using biotechnology as an example, has “resulted in new disciplines such as genetic engineering, and promise[s] innovative solutions to fundamental challenges related to medicine, food, agriculture and environment.” In addition, WIPO views the “role of intellectual property” from several perspectives, including legal and ethical standards, administrative and procedural issues, life sciences IP management, the need for analytical tools, and others. Furthermore, WIPO’s Intellectual Property and Life Sciences webpage notes several activities it is engaged in, including the development of public information materials (including surveys, background studies, patent landscapes, and the like), providing technical advice and training on a broad range of IP issues, and its cooperation and collaboration with other international organizations (including the World Health Organization and several others).

There are also several links to additional information regarding Life Sciences IP. For example, WIPO has developed an “Advanced Course on Biotechnology and Intellectual Property” (DL-204, link below) aiming to “illustrate how you can use the current IP system to protect and commercialize your biotechnological invention.” This course covers several topics, including but not limited to the range of different types of IP, specifically “how patent law protects biotechnological inventions”, and how to obtain technical and patent information from database searches. In addition, WIPO hosts a series of “Symposia on Life Sciences and IP Policy” (link below), and on November 16, 2007, one particular symposium (the “Symposium on Intellectual Property and Life Sciences Regulation”) will be held in Geneva, Switzerland. This particular symposium will include discussions regarding policy and legal choices, a WHO perspective, linkages between generic approval and the patent system, and others. Previous symposia have included “IP and Bioethics” (held on September 4, 2007), and “Current Issues in Intellectual Property and Public Health” (held on September 19, 2007).

The descriptions above are by no means exhaustive of the Life Sciences information available on the WIPO website. I encourage you to browse the WIPO website (and the Life Sciences information in particular) if you are interested in this area of intellectual property law.

WIPO Intellectual Property and Life Sciences Webpage: LINK
WIPO Advanced Course (DL-204) Webpage: LINK
Symposia on Life Sciences and IP Policy Webpage: LINK
“Symposium on Intellectual Property and Life Sciences Regulation” Webpage: LINK
DDIP PatentScope Article: LINK

October 17, 2007

By Brad Stohry

The Fifth Edition of the Trademark Manual of Examining Procedure ("TMEP") has recently been posted on the USPTO's website at http://tess2.uspto.gov/tmdb/tmep/. An outline of the differences between the Fifth Edition and the Fourth Edition can be found at http://tess2.uspto.gov/tmdb/tmep/changes.htm. Most of the amendments are minor, such as language revisions, amendments to include new case citations, renumbering, etc. However, some of the amendments are significant. The following are, in the opinion of the author, some of the more pertinent amendments:

TMEP § 505: When the recordation of an assignment does not automatically update the ownership field in the USPTO's electronic records for a registered mark, the USPTO will update Trademark Reporting and Monitoring (“TRAM”) System and Trademark Applications and Registrations Retrieval (“TARR”) database to identify the new owner of a registered mark only if the new owner: (1) records the appropriate document; (2) files a written request that TRAM and TARR be updated; and (3) pays the required fee.

TMEP §§ 602.01, 602.04 and 602.07: Clarifies that if an applicant is represented by an attorney, any new attorney who wishes to take action must file a new power of attorney and revocation of the previous power. The power of attorney/revocation cannot be signed by the new attorney; rather, it must be signed by the applicant. Further, the power of attorney/revocation must be filed before the USPTO will accept filings by, or correspond with, the new attorney.

TMEP 705.05: Clarifies that while a non-precedential decision is not binding on the TTAB, such a decision may be cited for its persuasive value

TMEP § 708.01: Previously this section included a statement that indicated that an examining attorney would expedite examination of a response if the applicant responds to a priority action within two months of the mailing date. Apparently this is no longer the case because this statement has been deleted.

TMEP § 708.02: Provides that an examining attorney must fully discuss all refusals and requirements with the applicant before issuing a priority action.

TMEP § 712.01: Provides that an examining attorney will no longer presume that a proper person signed a response to office action. Rather, an examining attorney must determine that the record clearly establishes the authority of the signer of the response.

TMEP § 718.02(a): Clarifies that if the fees in a multiple-class application are insufficient to cover all the classes, and the applicant fails to respond to an office action requiring submission of additional fees, the entire application will be abandoned.

TMEP § 806.03: Clarifies that an applicant may not amend from §1(a) to §1(b) after a statement of use has been filed.

TMEP § 807.07(f): Clarifies that the USPTO will accept drawings that contain the color gray, or stippling that produces gray tones, even if color is not claimed as a feature of the mark.

TMEP § 812: Provides that if an applicant owns one or more registrations for the same mark, the initial TEAS Plus application must include a claim of ownership. If this claim is not included in the initial application, the applicant must pay an additional fee to have the application examined as a regular TEAS application.

TMEP § 813: Provides that if a mark includes an individual’s name or portrait, the initial TEAS Plus application must include either: (1) a statement that identifies the living individual whose name or likeness the mark comprises and a written consent of that individual; or (2) a statement that the name or portrait does not identify a living individual. If neither of these statements are included in the initial application, the applicant must pay an additional fee to have the application examined as a regular TEAS application.

TMEP § 904.02(a): Provides that electronically filed specimens may now be submitted in .pdf or .jpg format.

TMEP § 1004.01: Clarifies that a §44(e) applicant must submit a copy of a document that has been certified by the intellectual property office in the applicant’s country of origin before the application will be published for opposition. A printout from the intellectual property office’s website or a photocopy of the office’s publications is not sufficient, nor is an English translation of a foreign registration without a copy of the underlying document.

TMEP §§ 1104.09(c) and 1109.13: Provides that if the goods/services identified in the application are omitted from an amendment to allege use or statement of use filed through TEAS, the examining attorney should not issue any inquiry with respect to the omitted goods/services. Further, the applicant may not reinsert the omitted goods/services.

TMEP §§ 1201.02(c) and 1201.03(c): Clarifies that an application may be amended to correct the applicant’s name if the party listed as the applicant did not exist as a matter of law on the application filing date, and the application was filed by the party who owned or was entitled to use the mark, albeit under an incorrect name or with an incorrect entity designation. However, if an application is filed in the name of a wholly owned subsidiary, and the parent corporation owns the mark, the application is void as filed because the applicant is not the owner of the mark.

TMEP § 1213.08(b): Clarifies that separate disclaimers of adjacent components of a mark may be accepted where the components do not form a grammatically or otherwise unitary expression.

TMEP § 1402.02: Provides that an application will be denied a filing date if the goods/services are identified as “business” or “business services.” Further, clarifies that if an applicant claims use in a particular class and yet only uses the mark on some of the goods/services, the resulting registration could be void.

TMEP § 1402.07(a): Provides that if the identification of goods/services is merely a repetition of the entire general class heading for a given class, the USPTO will look to the ordinary meaning of the words for the purposes of determining the scope of the identification. The USPTO will not permit the applicant to amend to include any item that falls in the class, unless the item falls within the ordinary meaning of the words identified.

TMEP § 1609.02(e): Clarifies that a drawing originally submitted in black-and-white may be amended to include a claim of color, as long as the amendment does not constitute a material alteration.

TMEP § 1609.10: Provides that an original certificate of registration should not be submitted with a request for correction. If an original certificate of registration is submitted with a request for correction, it will be destroyed.

Brad Stohry is an attorney with Ice Miller focusing his efforts on trademark prosecution and intellectual property licensing.

October 16, 2007

The USPTO announced yesterday that the most recent revisions to the Manual of Patent Examining Procedure (MPEP) are now available via the USPTO website. The sixth revision of the Eighth Edition (abbreviated “E8R6”) contains updates to the Blue Pages, the Title Pages, Chapters 700, 1800, and 2100, Appendices II (List of Decisions Cited), L (Patent Laws), R (Patent Rules), T (Patent Cooperation Treaty), and AI (Administrative Instructions Under the PCT), and the Index. Links to the revised sections are provided below in PDF format (noting that the USPTO website has not yet incorporated these revisions into its HTML version of the MPEP, which is still the E8R5 version). Links to E8R5 of the MPEP, in PDF and HTML format, are included in the first link below.

USPTO Announcement: LINK
Blue Pages (E8R6, PDF): LINK
Title Pages (E8R6, PDF): LINK
Section 700 (E8R6, PDF): LINK
Section 1800 (E8R6, PDF): LINK
Section 2100 (E8R6, PDF): LINK
Appendix II (E8R6, PDF): LINK
Appendix L (E8R6, PDF): LINK
Appendix R (E8R6, PDF): LINK
Appendix T (E8R6, PDF): LINK
Appendix AI (E8R6, PDF): LINK
Index (E8R6, PDF): LINK

October 12, 2007

In its recent complaint filed in the U.S. District Court for the District of Columbia, the Sheet Metal Workers International Association (“SMWIA”) alleged that West Coast Choppers, its popular figurehead Jesse James, and other defendants have infringed its long-standing federally-registered trademark. According to the complaint (contained within The Smoking Gun article linked below), the SMWIA, organized in 1888 and including tradesmen and industrial workers as its members, registered its association logo with the USPTO in 1961 (U.S. Trademark Reg. Nos. 718,265 and 718,364, both registered on July 11 of that year) and has used it in connection with association membership and “to identify plaintiff’s aforesaid services [including workplace safety, health and retirement benefits, and apprenticeship and training, all for its members], publications and web-site, as well as for items such as shirts, hats, jackets, watches, jewelry, accessories and union paraphernalia.”

More recently, a logo was made including the phrases “JESSE JAMES UNION” and “LESS TALKING MORE WORKING,” (instead of “SHEET METAL WORKERS’ INTERNATIONAL ASSOCIATION” as shown in the plaintiff’s logo), and has been used in connection with products and services of West Coast Choppers. The SMWIA alleges in the complaint that the defendants’ mark “was designed by copying from plaintiff’s aforesaid mark,” that it is “a simulation and colorable imitation of plaintiff’s federally registered mark,” and that the defendants’ acts “are likely to cause confusion, mistake or deception in that persons are likely to believe that defendants’ products and services are from plaintiff or are sponsored or approved by plaintiff or in some way related to plaintiff…” The SMWIA’s complaint concluded with a request to enjoin future use of the mark, to deliver up for destruction “all calendars and other materials bearing a colorable imitation of plaintiff’s mark,” and that the defendants’ pay plaintiffs all gains, profits, enrichments and advantages, three times the amount of all damages, and costs, fees, and disbursements related to the filed action. The SMWIA’s logo and the defendants’ logo appear in the upper right corner of this article for reference (click to enlarge).

The Smoking Gun Article: LINK
U.S. Trademark Reg. No. 718,265: LINK
U.S. Trademark Reg. No. 718,364: LINK
West Coast Choppers Website: LINK

October 10, 2007

Last Friday, the U.S. Circuit Court of Appeals for the Second Circuit ruled that copyright infringement claims may proceed against Mary J. Blige. This case began in December, 2003, when songwriter Sharice Davis filed suit against Blige and a number of music publishers and distributors, claiming that Blige used two of her songs on her 2001 album “No More Drama.” Davis’s complaint alleged that the defendants infringed her copyright to the two compositions by recording and subsequently registering copyrights on two Mary J. Blige songs, and for falsely attributing authorship to some of the individual defendants. She also alleged that the defendants falsely designated the origin of their goods (in violation of the Lanham Act § 43(a), 15 U.S.C. § 1125(a)), engaged in unfair competition, were unjustly enriched, and that their acts were intentionally designed to mislead the public in violation of a New York statute.

Following discovery, the defendants moved for summary judgment on the grounds that Chambliss, a co-author with Davis of the two compositions allegedly infringed by the defendants, transferred his rights to the disputed compositions to one of the defendants (Miller) via oral agreement before the compositions were used by Miller, or, in the alternative, that the written transfer agreements (executed after suit was filed) retroactively conveyed the copyrights to Miller. This retroactive transfer conveyance, according to the defendants, made Miller a co-owner of the compositions as of the date of the creation of the compositions. As such, the defendants argued, Davis's suit is barred against Miller and those parties to whom Miller licensed the disputed compositions (including Blige and other named defendants), because Davis cannot sue a co-owner of the copyright for infringement.

The U.S. District Court for the Southern District of New York granted the defendants’ motion for summary judgment, agreeing that because the transfer agreements were in place, Davis became a co-owner of the disputed compositions with Miller, effectively barring her suit against Miller and others. In its 2005 memorandum and order, the District Court declined to determine whether the written ratification of a prior oral transfer could satisfy the Copyright Act’s requirement that transfers of copyright ownership be in writing (17 U.S.C. § 204(a)) or whether the transfer agreements indeed ratified a prior oral agreement between Chambliss and Miller, instead holding that Chambliss could “cure past infringement” through the grant of a retroactive assignment of the copyright.

The Second Circuit disagreed, holding that a written confirmation of an earlier oral transfer agreement cannot extinguish a copyright owner’s accrued infringement claims. As noted by the New York Law Journal article (law.com via Yahoo!, link below), the Second Circuit noted that an action for infringement against a co-author of a song could not "be defeated by the 'retroactive' transfer of copyright ownership from another co-author to an alleged infringer." In its conclusion, the Second Circuit stated that “[i]nasmuch as the alleged retroactive written agreements purporting to transfer Chambliss’s copyright interests to Miller could not also transfer Davis’s copyright interests, Davis’s accrued causes of action for infringement were not affected by the agreement between Chambliss and Miller.” Because the District Court was deemed to have erred in its grant of summary judgment, the District Court’s order was vacated and the case was remanded for proceedings consistent with the opinion.

Law.com Article (via Yahoo!): LINK
Second Circuit Opinion (Davis v. Blige): LINK

October 08, 2007

The USPTO announced last Thursday that it plans to review production goals of its examiners in an attempt to improve operations. According to the USPTO press release (link below), this announcement coincides with the report “Hiring Efforts are not Sufficient to Reduce Patent Application Backlog” recently released by the Government Accountability Office.” In that report, the GAO recommends that the USPTO "undertake a comprehensive evaluation of the assumptions that the agency uses to establish its productions goals”, suggestion that the USPTO work with examiners and user communities during its review. The Director of the USPTO, Jon Dudas, acknowledges the GAO’s report and stated that “I am pleased that, after careful study, the GAO agrees with our assessment that hiring alone will not reduce the backlog of patent applications. By far, our most valuable resource is our employees. We believe that our 5-year strategic plan identifies initiatives that effectively protect innovation while promoting a quality workplace that attracts and retains employees. That is why many of our most current initiatives incentivize applicants and the public to provide the best information to patent examiners early in the examination process.” The USPTO has hired over 3,600 new patent examiners in the last three years, and according to Dudas, “[a] next logical step in bringing the USPTO fully into the 21st century is to reevaluate how these initiatives [hiring and automation, for example] impact our goals."

USPTO Announcement: LINK
GAO Report Abstract: LINK
Full GAO Report (PDF): LINK

October 05, 2007

As of October 1st, major changes to trademark practice in the UK have taken effect. The primary change, as summarized in the first link below from the United Kingdom Intellectual Property Office (“UK IPO”), is that the UK IPO will no longer refuse to register a new trademark application because of the existence of "an earlier conflicting trademark," unless the owner of the earlier mark successfully opposes the new application. Examiner will continue to perform their searches and forward search results to applicants, but “[i]f the examiner considers that there may be any potential earlier conflicting marks already on the register, the applicant must choose between continuing with the application, restricting the list of goods and services to try to overcome the clash with the earlier mark, or withdrawing it.” An applicant who decides to continue prosecution, the UK IPO will notify UK owners of the conflicting marks in the search report when the applied-for mark is published in the Trade Marks Journal, noting that EU owners will need to “opt-in” to receive such notices. According to the UK IPO, “[w]hen the mark is advertised in the Trade Marks Journal, the owners of any earlier marks or rights can oppose the application if they think that the use of the new mark will infringe their earlier mark or right,” and “[i]f there is a successful opposition, the applicant could be liable for costs and may not be able to get their mark registered.” According to Lord Triesman, the Intellectual Property and Quality Minister, “The new system will make it easier for businesses wanting to launch new products and protect them with UK trade marks. It will also help users by aligning the UK regime with the European one.” Summaries of this change and changes to UK trademark opposition practice are provided in the links below.

UK IPO Announcement: LINK
UK IPO “Changes to Examination FACT SHEET” (PDF): LINK
UK IPO “Changes to Opposition FACT SHEET” (PDF): LINK
UK IPO Lord Triesman Press Release: LINK

October 04, 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 three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 36th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Toshiba Corporation v. Juniper Networks, Inc. (09/06/2007, non-precedential): appeal of final judgment of non-infringement (affirmed); discussion of patents related to methods and devices to send communications across disparate types of networks. (U.S. Patent No. 5,835,710, entitled “Network interconnection apparatus, network node apparatus, and packet transfer method for high speed, large capacity inter-network communication”, U.S. Patent No. 6,343,322, entitled “IP over ATM system using control messages to set up cut-through paths or bypass pipes in routers”, U.S. Patent No. 6,598,080, entitled “Network interconnection apparatus network node apparatus and packet transfer method for high speed large capacity inter-network communication”, and U.S. Patent No. 6,341,127, entitled “Node device and method for controlling label switching path set up in inter-connected networks”); “[w]ithout the ability to resolve the import of various terms, we will follow the general course that if we affirm the district court’s construction of any appealed term in a particular claim, we may affirm the judgment of noninfringement as to that claim”; “[b]ecause the district court correctly construed at least one term in each independent claim, we affirm”

Automotive Technologies International, Inc. v. BMW of North America, Inc., et al. (09/06/2007): appeal of grant of summary judgment of invalidity of claims and summary judgment of noninfringement as to some defendants, with cross-appeal by two defendants for denial of motion for summary judgment of noninfringement (affirmed); discussion of patent related to crash sensors (U.S. Patent No. 5,231,253, entitled “Side impact sensors”); “[the] enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation”; “[i]t is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement”; “Because we conclude that the asserted claims of the ’253 patent are invalid for lack of enablement, we affirm the decision of the district court granting summary judgment of invalidity. Because of that conclusion, the infringement appeal and cross-appeal are moot.”

Gillespie v. DYWIDAG Systems International, USA (09/06/2007): appeal of final judgment that asserted claims are literally infringed (reversed); discussion of two patents related to mine roof bolts (U.S. Patent Nos. 5,230,589 and 5,259,703, both entitled “Mine roof bolt”); “[p]recedent establishes that no deference is owed to the district court's claim construction or to any underlying factual findings predicate to construing the meaning and scope of the claims”; “[t]he words of a claim are generally given the ordinary meaning that they would have to a person of ordinary skill in the field of the invention … and are read in view of the specification, of which they are a part”; “[t]he public notice function of a patent and its prosecution history requires that a patentee be held to what he declares during the prosecution of his patent”; in reviewing claim construction in the context of infringement, the legal function of giving meaning to claim terms “always takes place in the context of a specific accused infringing device or process"; the appellate court modified the claim construction, and under the modified construction, literal claim construction could not be found, so the judgment of infringement was reversed

October 02, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 36th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Mitutoyo Corporation, et al. v. Central Purchasing, LLC (09/05/2007): appeal of grant of summary judgment of infringement and awarding damages using a 29.2% royalty rate, and cross-appeal of the judgment dismissing willful infringement claim, dismissing MAC as a party, and denying lost profit damages (affirm-in-part, reverse-in-part, and remanded); discussion of patent related to a system for measuring the relative movement of one object with respect to another (U.S. Patent No. 5,620,227, entitled “Measuring device for capacitive determination of the relative position of the two with respect to one another movable parts”); the “specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’”; “[w]illfulness does not equate to fraud, and thus, the pleading requirement for willful infringement does not rise to the stringent standard required by Rule 9(b).”; in order for a licensee to have co-plaintiff standing, it must hold “at least some” of the proprietary rights under the patent; “[b]ecause the trial court erred by dismissing Mitutoyo’s willful infringement claim and including HFTUSA’s sales in the royalty base, but rendered a proper judgment in all other respects, we affirm-in-part, reverse-in-part, and remand”

Forest Laboratories, Inc., et al. v. Ivax Pharmaceuticals, Inc., et al. (09/05/2007): appeal of order of district court entering judgment upholding the vailidity of reissue patent-in-suit and enjoining Ivax and Cipla from infringing the patent (affirmed, but injunction modified); discussion of patent related to an antidepressant composition (U.S. Patent No. RE34,712, entitled “Pharmaceutically useful (+)-1-(3-dimethylaminopropyl)-1-(4'-fluorophenyl)-1,3-dihydroiso benzofuran-5-carbonitrile and non-toxic acid addition salts thereof”); “[a] reference that is not enabling is not anticipating”; “a change in a reissue application that is only clerical does not necessarily broaden the scope of the claims and so does not render the patent invalid”; “[c]omparison of the scope of the reissue claims with the claims of the original patent is a matter of claim construction, and it is performed from the perspective of one having ordinary skill in the art”; “[a]lthough the standard of review for the issuance and scope of an injunction is abuse of discretion, whether the terms of the injunction fulfill the mandates of Federal Rule of Civil Procedure 65(d) is a question of law that this court reviews de novo”; “[w]e affirm the district court’s entry of judgment on validity and its entry of an injunction as to both Ivax and Cipla, but we modify the injunction to apply only to escitalopram oxalate”

Data Encrytption Corporation v. Microsoft Corporation, et al. (09/06/2007, non-precedential): appeal of decision granting summary judgment of noninfringement (affirmed); discussion of patent related to computer systems that encrypt and decrypt files. (U.S. Patent No. 5,584,023, entitled “Computer system including a transparent and secure file transform mechanism”); “the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance . . ., the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive”; in light of the inventor’s disavowal of claim scope, the district court’s grant of summary judgment of noninfringement was affirmed

October 01, 2007

One of the PCT databases I use most often is PatentScope, available through the World Intellectual Property Organization (WIPO) database (search link below) as it includes documents such as written opinions of the International Search Authority, international preliminary report on patentability (Chapter I), published copies of PCT applications (with and without international search reports), and priority documents when then become publicly available. Late last month, WIPO announced that has expanded the types of documents made available through PatentScope to now include an applicant’s informal comments on the written opinion of the international search authority. According to WIPO (announcement link below), the informal comments “are now available … for any PCT international applications filed on or after January 2004,” noting further that “these documents are only available after 30 months from the first priority date.” A sample is also made available via hyperlink from the WIPO announcement. For those of you who do not already know, PatentScope is an ever-growing digital library of well over one million PCT applications, allowing a user to search based on a number of parameters including publication number, application number, publication date, applicant name, inventor name, description, and claims, to name a few of the 29 total different search parameters.

PatentScope Search Link: LINK
PatentScope Digital Library Contents: LINK
WIPO Announcement: 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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