I/P Tidbits

Pete Lattman's Wall Street Journal Law Bog reports on August 26, 2006 that "Examiners at the U.S. Patent & Trademark Office have used Wikipedia to help determine a patent application’s validity on everything from from car parts to chip designs. But on Aug. 15, reports Business Week’s Lorraine Woellert, the PTO told its examiners that they could no longer use the controversial online encyclopedia as an accepted source of information." Here's why.

Ocean Tomo, LLC's Fall 2006 Live Intellectual Property Auction Catalogue contains information on the 275+ patent, trademark, domain name and copyright assets to be auctioned on October 26, 2006. Auction lots with patent and trademark numbers are listed by market sector here.

The TTAB Rules Blog summarizes the July 25, 2006 meeting between the AIPLA, IPO, ABA (IP Section), INTA, and USPTO to discuss continuing concerns with the proposed TTAB Rules.

The Patently-O Blog summarizes the current briefing in KSR v. Teleflex.

"2005 Trademark Decisions of the Federal Circuit" by Stephen Baird

Brown & Michaels have a new patent glossary.

The USPTO's EFS-Web has received over 145,000 submissions since its launch. Thirty percent of all new filings are now received via EFS-Web. The USPTO will be conducting free online EFS-Web training for its web-based patent application and document submission solution Thursday September 7th and Tuesday September 19th at 1:00 pm, Eastern Daylight Time. Register in the the Evenet Center at https://websurveyor.webex.com

On June 16, 2006, security officers at a stadium in Stuttgart (acting at the behest of the Fédération Internationale de Football Association's) made more than 1,000 male fans of the Dutch soccer team remove their pants becuase their their bright orange lederhosen with lion's tails (in honor of Holland's national color and mascot) included chest straps emblazoned with a logo for a Bavaria beer that was not a world cup sponsor.

Time Management for Attorneys

Thanks to Bob Ambrogi at the Law.com Blog Network for pointing to the second of the American Bar Association's litigation section audio podcasts on "Time Management," presented by Francisco Ramos Jr., partner in the Miami office of Clarke Silvergate Campbell Williams & Montgomery.

There is also a free one-hour video on Time Management from Massachusetts School of Law educational forum. More videos on time management are available here.

Empirical Evidence of Hindsight Bias

Thanks to Peter Zura's Two-Seventy-One Patent Blog for uncovering "Patently Non-Obvious: Empirical Demonstration that the Hindsight Bias Renders Patent Decisions Irrational," where Gregory N. Mandel discusses an experiment in which participant mock-jurors were given a hypothetical fact scenario concerning an invention. The scenarios were each based loosely on the facts of actual issued patents that were challenged on non-obvious validity grounds in litigation and were the subject of a reported decision.

Each participant received only a single scenario in one of three different conditions. The "foresight condition" (or control condition) included all of the lead-up information and ended with the scenario character trying to solve the identified problem. The "hindsight condition" was identical to the foresight condition except that it had one additional sentence at its end which stated that the character had come up with a solution, and stated what the solution was. The "debiasing condition" was identical to the hindsight condition, but the questions following the scenario included instructions based on Model Patent Jury Instructions that informed the participant of the hindsight problem, warned him or her about it, and advised him or her not to use hindsight in answering the questions.

According to Professor Mandel,

Because the only thing that varied between the foresight and hindsight
conditions was the presence of information concerning achievement of the
invention (i.e., because all other factors were controlled for), any differences
between the foresight and hindsight groups’ responses can be attributed to the
presence of this information. Similarly, because the only thing that varied
between the hindsight and debiasing conditions was the presence of the debiasing
jury instruction, any differences between the hindsight and debiasing groups’
responses can be attributed to the presence of this instruction.

. . . As expected, participants rated inventions non-obvious significantly more frequently in foresight than in hindsight in both the baseball scenario (chi-squared=25.203, Fisher’s p < .001) and the fishing lure scenario (chi-squared=10.623, Fisher’s p < .01). Descriptive statistics are presented in Table 1. For the baseball scenario 24% (10 out of 42) of participants in the foresight condition thought that a solution to the problem was obvious, while 71% (59 out of 83) of participants in the combined hindsight conditions thought that a solution was obvious (see Table 1). Results were similar for the fishing lure scenario: 23% (9 out of 40) of participants in the foresight condition thought that a solution to the problem was obvious, while 54% (44 out of 82) of those in the combined hindsight conditions thought that a solution was obvious (see Table 1).

. . . As expected, debiasing instructions had no significant effect on judgments of obviousness in both the baseball scenario (chi-sqauared = 1.079, Fisher’s p = ns) and the fishing lure scenario (chi-squared=.785, Fisher’s p = ns). Combining the hindsight and debiasing data across both scenarios similarly demonstrated no significant effect of debiasing instructions (?2 = 1.813, Fisher’s p = ns). Participants were no more likely to consider an invention non-obvious in the debiasing condition than they were in the hindsight condition.

Among Professor Mandel's extrapolations from this, and other, data:

1. hindsight bias distorts patent decisions far more than anticipated, and to a greater extent than other legal judgments;
2. neither the Federal Circuit’s suggestion test nor the Supreme Court’s Graham requirements solve the hindsight problem;
3. the admission of secondary consideration evidence does not cure the hindsight bias;
4. jury instructions that explicitly identify and warn against the hindsight bias do not ameliorate its impact; and,
5. the hindsight problem pervades patent law to an extent not previously recognized—it biases decisions under the doctrine of equivalents, claim construction, the on-sale bar, and enablement.

Post-Publication Correction of U.S. Trademark Applications

On August 28, 2006, The U.S. Patent and Trademark Office announced new "Procedures for Submitting Amendments/Corrections to Trademark Applications After Publication."

Under the new procedures, once an application has been “approved for publication” by the examining attorney, all amendments and requests for corrections are processed as amendments/corrections after publication. All such post-publications amendments/corrections should be submitted no later than 6 weeks after the publication date to insure that the amendment/correction can be considered prior to the issuance of the notice of allowance or registration certificate.

Any requests for an amendment/correction should be faxed to Post Publication Amendments/Corrections at 571-270-9007 to ensure that they become part of the record for the relevant application. Requests to correct minor typographical errors entered by the USPTO, inquiries regarding the procedure for submitting a post-publication amendment, or questions regarding the status of a post-publication amendment can be e-mailed to TM Post Pub Query@uspto.gov.

Call the Trademark Assistance Center at 1 800 786-9199 for help on trademark matters.

China Launches Infringement Hotline

According to Liu Li writing for ChinaDaily on August 29, 2006, "a unified nationwide reporting and complaint hotline for intellectual property rights (IPR) violations was established yesterday. Now individuals or companies will be able to call 12312 to report any suspected IPR infringements. . . ."

Patents and the Takings Clause

In Zoltek v. United States (2006, 04–5100) the Federal Circuit held that Zoltek could not allege patent infringement by the government as a Fifth Amendment taking under the Tucker Act. According to the per curium opinion,

In Schillinger v. United States, 155 U.S. 163 (1894), the Supreme Court rejected an argument that a patentee could sue the government for patent infringement as a Fifth Amendment taking under the Tucker Act. Id. at 169. Schillinger remains the law.

Dennis Crouch's Patently-O Blog promptly noted that there was "lots more more here for a law review article," and Professor Adam Mossoff has kindly obliged with his 35-page take on why the Federal Circuit got it wrong.



In "Patents as Constitutional Private Property: The Historical Protection of Patents under the Takings Clause," Mossoff argues that federal court decisions in the 19th century, such as in McKeever v. United States, 14 Ct. Cl. 396 (1878), held that patents were secured under the Takings Clause as constitutional private property:

This history establishes that courts and scholars have been relying on incorrect historical claims to justify their decisions and policy prescriptions today. This is significant, because patented drugs and other inventions are increasingly the subject of regulations, and thus the constitutional security in these legal entitlements is a particularly salient issue in our public policy debates. Following September 11, 2001, for instance, the federal government threatened to suspend Bayer’s Cipro patent in order to obtain cheaply vast quantities of the antibiotic that best treats anthrax. Given the status of patents as property, these and other state actions raise questions concerning the constitutional limitations imposed on the government vis-à-vis the patents it grants to inventors.

"Ultimately, this paper has profound implications today," boasts Mossoff. "Lots of patents, such as pharma patents, are the subject of increasingly restrictive regulations. This paper reveals how patentees have long-standing expectations in the constitutional security in their property, which would be central to a regulatory takings assessment today under the investment-backed expectation prong of the Penn Central test."

But don't bet the pharm just yet. Professor Mossoff himself also acknowledges that

It is unlikely that the James Court intended to overrule McKeever, Cammeyer, Burns, or McClurg when it acted as if this jurisprudence, reaching back to the antebellum era, did not even exist. In fact, the absence of any references to McKeever, Cammeyer, Burns, or McClurg is striking, particularly given that the Circuit Court repeatedly cited these cases in the decision on appeal. Second, and more significant, Justice Bradley’s musings were only dicta, as the Court ended its brief discussion of the takings issue by noting that "the conclusion which we have reached in this case does not render it necessary to decide this question." Perhaps the Justices did not feel compelled to review the Court’s own precedents on this
constitutional issue given that it was unnecessary to decide the case before
them.

In any event, it is difficult to argue that these remarks were intended to overrule the prior patent-takings jurisprudence when they were made in dicta. In the end, though, Justice Baldwin’s unprecedented musings succeeded in muddying the waters, and subsequent cases relied on James only, continuing to call into question the right of patentees to sue under the Takings Clause and continuing to disregard the earlier nineteenth-century precedent directly on point. See, e.g., Palmer v. United States, 128 U.S. 262 (1888) (holding that patentees could not sue except on the basis of a contract with the government, citing only Burns); Schillinger v. United States, 155 U.S. 163 (1894) (holding, without any acknowledgement of Burns, Cammeyer, or McKeever, that patentees were precluded from suing under the Takings Clause); Crozier v. Fried Krupp Aktiengesellschaft, 224 U.S. 290 (1912) (repeating Schillinger holding and citing only cases decided after James).

A Brief History of Standards for Patentability

According to John F. Duffy, in "Inventing Invention: A Case Study of Legal Innovation," the chart below summarizes some of different standards for patentable invention that have been employed in the last half millennium:

Obviousness doctrine will be least important in societies where (1) patent rights are expensive to obtain and to enforce, (2) the pace of social change is relatively slow, (3) few inventors are likely to working on similar projects, and (4) patent rights are kept relatively narrow. These conditions prevailed prior to the 19th century, and during that period, a clear conception of obviousness did not exist. As patents became easier to obtain and broader, inventors more numerous, and society less static, the need for obviousness or some similar doctrine grew more dire. Still, the progress toward a worldwide obviousness standard was not linear. . . .

Subjective tests look to the inventor’s own efforts. Such tests have been employed only occasionally throughout history. In the United States, a subjective approach to judging patentability is now precluded by the last sentence of § 103(a). The tests in the right column are objective; they are not contingent on any efforts or qualities of the inventor. Roughly, the tests listed lower in the columns are more difficult to satisfy.

Get more from the IP Central blog.

In other parts of the world, the Japanese Examination Guidelines require consideration of whether a person skilled in the art could have easily arrived at a claimed invention based on the cited inventions after precisely comprehending the state of the art in the field to which the invention pertains at the time of the filing.

The European Patent Office generally applies the "problem-solution approach" in order to decide whether an invention involves such an "inventive step," by

1. identifying the closest prior art, i.e. the most relevant prior art;
2. determining the objective technical problem, i.e. determining, in the view of the closest prior art, the technical problem which the claimed invention addresses and successfully solves; and
3. examining whether or not the claimed solution to the objective technical problem is obvious for the skilled person in view of the state of the art in general.

In the United Kingdom, the Court of Appeal in Windsurfing International Inc. v Tabur Marine (GB) Ltd. [1985] RPC 59, required

1. Identifying the inventive concept embodied in the patent;
2. Imputing to a normally skilled but unimaginative addressee what was common general knowledge in the art at the priority date;
3. Identifying the differences if any between the matter cited and the alleged invention; and
4. Deciding whether those differences, viewed without any knowledge of the alleged invention, constituted steps which would have been obvious to the skilled man or whether they required any degree of invention.

The U.S. Supreme Court in Graham et al. v. John Deere Co. of Kansas City et al., 383 U.S. 1 (1966) held that obviousness should be determined by looking at

1. the scope and content of the prior art;
2. the level of ordinary skill in the prior art;
3. the differences between the claimed invention and the prior art; and
4. objective evidence of nonobviousness.

In addition, the Court outlined factors that show "objective evidence of nonobviousness". They are:

1. commercial success;
2. long-felt but unsolved needs; and
3. failure of others.

Other U.S. courts have considered additional factors as well. See Environmental Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 697-98, 218 USPQ 865, 869 (Fed. Cir. 1983) (considering skepticism or disbelief before the invention as an indicator of nonobviousness); Allen Archery, Inc. v. Browning Mfg. Co., 819 F.2d 1087, 1092, 2 USPQ2d 1490, 1493 (Fed. Cir. 1987) (considering copying, praise, unexpected results, and industry acceptance as indicators of nonobviousness); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 679, 7 USPQ2d 1315, 1319 (Fed. Cir. 1988) (considering copying as an indicator of nonobviousness).

At present, sixteen briefs have been filed before the U.S. Supreme Court in KSR INTERNATIONAL CO. V. TELEFLEX INC., ET AL. where the question presented is

Whether the Federal Circuit has erred in holding that a claimed invention cannot be held "obvious", and thus unpatentable under 35 U.S.C. § l03(a), in the absence of some proven "'teaching, suggestion, or motivation' that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed."

An entirely different aproach would be to consider the resulting "Level of Invention," defined by TRIZ author G. S. Altshuller around 1946, as a relative degree of change to the previous system (or solution) as a result of solution of inventive problem (one containing a contradiction).

ITC Exclusion Order Did not Divest Divest Court of Jurisdiction to Issue Importation Injunction

In Fuji Photo Film Co., LTD. v. Benun, et al. (August 23, 2006), the Federal Circuit affirmed the jurisdiction of a federal district court to issue an injunction against the importation of patent infringing goods after the U.S. International Trade Commission had issued an exclusion order.



According to the opinion by Judge Rader,

The parties and remedies associated with a general exclusion order differ markedly from a civil action seeking a preliminary injunction to remedy patent
infringement. A general exclusion order merely excludes goods from entry. In
some cases the Commission can order seizure of the goods, for example if an
importer twice attempts to import the same goods. 19 U.S.C. § 1337(i) (2000); 19
C.F.R. § 12.39(c) (2006). Where the importer ultimately challenges such a
seizure in the Court of International Trade, the action is against the United
States. See 28 U.S.C. § 1581 (2000) (Civil actions against the United States and
agencies and officers thereof). The Government is, of course, not involved in a
normal patent infringement action like the one before the district court in this
case. Moreover, a finding of infringement by a district court can give rise to
damages and attorney fees remedies. Finally, the violation of a preliminary
injunction may trigger a contempt proceeding against the infringing importer
with a potential of both civil and criminal sanctions. . . .

Finally, 28 U.S.C. § 1659 (2000), entitled "Stay of certain actions pending disposition of related proceedings before the United States International Trade Commission," supports the district court’s proper exercise of jurisdiction in this case. That section states:

(a) Stay.—In a civil action involving parties that are also parties to a proceeding before the United States International Trade Commission under section 337 of the Tariff Act of 1930, at the request of a party to the civil action that is also a respondent in the proceeding before the Commission, the district court shall stay, until the determination of the Commission becomes final, proceed-ings in the civil action with respect to any claim that involves the same issues involved in the proceedings before the Commission, but only if such request is made within [a specified time].

By requiring the district court to stay the proceedings "until the determination of the Commission becomes final," section 1659 necessarily suggests that after a final determination by the Commission, the district court may resume its consideration of the civil action. Thus, section 1659 places limits on the timing of parallel actions involving the Commission and a district court. Specifically, the district court must await a final decision from the Commission before proceeding with its action. Section 1659 does not state, or even suggest, that the results of the Commission’s final decision might alter the jurisdiction of the district court. Thus, a final decision to issue a general exclusion order does not alter the district court’s authority to proceed with remedies that may affect the same goods.

Because the district court possessed jurisdiction under 28 U.S.C. § 1338(a), and because Ribi Tech has raised only a jurisdictional challenge, this court affirms the district court’s decision.

Copyright Lawsuits Up 93% in 2005

According to The Third Branch newsletter of the federal courts, a total of 12,184 copyright, patent and trademark cases, under the general category of protected property rights, were filed in federal district courts in Fiscal Year 2005, up 27 percent from FY 2004.

The greatest increase in filings was seen in copyright cases, which rose 92.8 percent from FY 2004 to FY 2005. The majority of these cases were filed by music industry companies against individual defendants.

Statistics on "protected" (intellectual) property rights and other civil filings in the federal courts are available on-line in the publication, Judicial Business of the United States Courts, in Table C-2A, www.uscourts.gov/judbus2005/appendices/c2a.pdf

Seventh Circuit Leads with RSS Feeds

Thanks to Robert Ambroji's Lawsites for pointing to an August 2006 in "The Third Branch" newsletter of the federal courts announcing the Seventh Circuit's inauguration of new RSS feeds of opinions and audio recordings of oral arguments at www.ca7.uscourts.gov/ca7_rss.htm:

Over a decade ago, the Seventh Circuit was the first federal circuit with a bulletin board, a type of pre-Internet system that allowed users to exchange
messages and read news over a phone line. The circuit was the first to require attorneys to submit briefs on floppy disks. They also were one of the first to make audio of arguments available online. With the addition of an RSS feed, audio of oral arguments is now available the same day, and the Seventh Circuit is again leading the way.

The Seventh Circuit is clearly out front when it comes to publishing. "We're just trying to make it easier for folks to get what they need," Clerk of Court Gino Agnello reportedly told Third Branch. Can the Federal Circuit be far behind?

Kudos to Mr. Agnello, and heads up to the Federal Circuit Bar Association.

Is Jon Dudas really dreamy?

According to Managing Intellectual Property on August 23, 2006, "Not many in the IP community can claim to have a fan site, but The Invent Blog has found one [YTMND fan] devoted to USPTO director Jon Dudas - or 'Dreamy Dudas,' as he is called." What do you think?

Is John Dudas really dreamy?
	Yes
	No
Free polls from Pollhost.com

TGIF for "Gimme the Mermaid"

This You Tube piece was reportedly commissioned by the experimental sound collage group Negativland for the video compilation, "Our Favorite Things," soon to be released. The track had been cut by Negativland several years before, an audio document of their problems with copyright/trademark issues concerning their U2 record incident. Negativland is an experimental music and sound collage band which originated in the San Francisco Bay Area in the late 19702.

Thank Goodness It's Friday (and don't try this at your gym),

--Bill Heinze

USPTO Forum on Proposed Strategic Plan

On August 24, 2006, the United States Patent and Trademark Office (USPTO) released for public comment its proposed five-year strategic plan for 2007 through 2012. A public forum on the draft strategic plan will be held on Tuesday, September 26, 2006 at USPTO headquarters. Details are included in the Federal Register.

According to the accompanying press release, the proposed strategic plan takes a multi-pronged approach to ensuring quality and timeliness in the patent review process:

• First, there must be a common understanding between the USPTO and its stakeholders of what defines quality. That definition must recognize the inherent realities of limited time and money, and must then be translated into concrete programs.
• Defining an acceptable time frame from filing to final decision also is important.
• Additionally, hiring, training and retaining highly skilled patent examiners, abolishing the one-size fits all examination system, focusing examination on the claimed invention, and leveraging state-of-the-art information technology are other important components to ensuring high quality and timely reviews of patent applications.

Included among the initiatives designed to ensure effective and efficient review of patent applications are:

• hiring at least 1,000 patent examiners annually for the next five years
• establishing regional offices
• creating partnerships with universities
• offering retention bonuses and new monetary awards to patent examiners for meeting goals
• maximizing the potential of state-of-the-art electronic tools.

Referenced Patent Leads to Specific Exclusion Exception to DOE

In Cook Biotech Inc., et al. v. Acell, Inc., et al. (August 18, 2006) the Federal Circuit relied upon text incorporated-by-reference from a second patent as part of the intrinsic evidence for construing the term "urinary bladder submucosa (UBS) delaminated from both the abluminal muscle layers and at least the luminal portion of the tunica mucosa." as exclusing tunica propria and basement membrane



According to Wikipedia, the wall of the urinary bladder consists of three layers:

1. Mucosa, in this instance 'transitional epithelium' & lamina propria (a thin vascular layer of areolar connective tissue beneath the epithelium)
2. Detrusor Muscle that consists of an inner and outer longitudinal layer and a middle circular layer of smooth muscle
3. Fibrous Adventitia and the visceral peritoneum (basement membrane?) lie on superior surface.

The "BACKGROUND AND SUMMARY OF THE INVENTION" section disclosed that "[t]he wall of the urinary bladder is composed of the following layers: the tunica mucosa (including a transitional epithelium layer and the tunica propria), a submucosa layer, up to three layers of muscle and the adventitia (a loose connective tissue layer)?listed in thickness crossection from luminal to abluminal sides." The "DETAILED DESCRIPTION OF THE INVENTION" section went on to explain:

The preparation of UBS from a segment of urinary bladder is similar to the procedure for preparing intestinal submucosa detailed in U.S. Patent No. 4,902,508, the disclosure of which is expressly incorporated herein by reference. A segment of urinary bladder tissue is first subjected to abrasion using a longitudinal wiping motion to remove both the outer layers (particularly the abluminal smooth muscle layers) and the luminal portions of the tunica mucosa layers?the epithelial layers). The resulting submucosa tissue has a thickness of about 80 micrometers, and consists primarily (greater than 98%) of a cellular, eosinophilic staining (H&E stain) extracellular matrix material.

According to the opinion by Circuit Judge Prost,

That paragraph makes clear that “the luminal portions of the tunica mucosa layers” were defined by the patentee as the “epithelial layers” and that “the
procedure for preparing intestinal submucosa” as detailed in the ’508 patent is expressly incorporated by reference into the ’389 patent specification. . . .

The term "epithelial layers" may arguably be subject to two interpretations. On the one hand, it refers to "layers" which appears to reflect that it was meant to encompass more than just the transitional epithelium layer, i.e., the transitional epithelium layer and the tunica propria layer, the only other layer that the ’389 patent teaches is part of the tunica mucosa. See id. at col. 1, ll. 51-52. On the other hand, as recognized by the district court, the epithelium in the urinary bladder is made up of multiple layers of epithelial cells. Markman Order, slip op. at 10. Even accepting that the disclosure in the ’389 patent specification itself is less than clear as to which interpretation is correct, the second important disclosure of the ’389 specification is dispositive. As noted, the ’389 patent specification expressly incorporates by reference the procedure for preparing intestinal submucosa from the ’508 patent. . . .

The ’389 patent’s corporation by reference of the ’508 patent’s procedure for preparing intestinal submucosa, in combination with the ’508 patent’s disclosure pertaining to which tissue layers are removed by that procedure, leads to the conclusion that the patentee’s definition of the claim term as reflected in the ’389 patent as the epithelial layers and in the ’508 patent as the lamina epithelialis mucosa and its lamina propria was intended to refer to the same structures, i.e., the lamina epithelialis mucosa (or transitional epithelium layer), the basement membrane, and the lamina propria.

Relying on a medical dictionary, the district court recognized that the tunica mucosa comprises the epithelium, basement membrane, lamina propria mucosae, and lamina muscularis mucosae. The court then rejected ACell’s proposed construction that "the luminal portion of the tunica musoca" means the epithelial cells (i.e., the transitional epithelium), the basement membrane, and the lamina propria because the term "would not require the entire tunica mucosa including the basement , slip op. at 11. membrane, tunica propria and all epithelial cells to be removed as ACell contends."

That statement by the district court reflects that it believed ACell’s proposed construction of that term encompassed the entire tunica mucosa, rather than just "the luminal portion" as the claim requires. The district court’s reasoning, however, overlooks the fact that ACell’s construction permits the retention of the lamina muscularis mucosae layer of the tunica mucosa. This construction is consistent with both the medical dictionary’s list of layers that comprise the tunica mucosa, and the teachings of the ’508 patent, which specifically refer to that layer as "layer E" of the tunica mucosa. ’508 patent, col. 3, ll. 14-15. As this discussion indicates, ACell’s proposed construction does not require removal of the entire tunica mucosa as the district court’s opinion suggests, but rather removal of only a portion of the tunica mucosa.

The district court also relied upon extrinsic evidence in the form of testimony from a Dr. Harbin who convinced the court that there was no compelling reason on the part of Cook to remove the basement membrane, lamina propria, or any other non-cellular component of the bladder wall layers. Markman Order, slip op. at 11. In light of the discussion above, however, such extrinsic evidence cannot override the patentee’s definition of the term contained in the intrinsic evidence of the ’389 and ’508 patent disclosures.

Therefore, we construe "the luminal portion of the tunica mucosa" to mean "the lamina epithelialis mucosa (or transitional epithelium layer), the basement membrane, and the lamina propria."

The court went on to conclude that applying appellees’ theory of equivalence with respect to asserted claims would violate a corollary to the ‘all limitations rule[,]’ . . . that ‘the concept of equivalency cannot embrace a structure that is specifically excluded from the scope of the claims.

The ACell Vet™ product consists of basement membrane and tunica propria, two tissue layers specifically excluded from the claimed composition by delaminating “the luminal portion of the tunica mucosa.” A claim that specifically excludes an element cannot through a theory of equivalence be used to capture a
composition that contains that expressly excluded element without violating the
“all limitations rule.” Permitting appellees to assert such a theory of equivalence would effectively remove the requirement that the urinary bladder submucosa be delaminated from “the luminal portion of the tunica mucosa." Thus, there is "no . . . material issue for the jury to resolve," see Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997), and a judgment of non-infringement under the doctrine of equivalents with respect to the asserted claims of the ’389 patent is appropriate.

DKPTO to Reclassify U.S. Patents

The United States Patent and Trademark Office (USPTO) and the Danish Patent and Trademark Office (DKPTO) have signed an agreement to begin a four-month trial in August 2006 on reclassification of certain USPTO documents.

Under the terms of the agreement, the DKPTO (right) will reclassify U.S. patents and published patent applications according to new classifications developed either by the USPTO or by the USPTO in collaboration with the European and Japan Patent Offices in several areas of technology. The new classifications are refinements of portions of the current U.S. classification system and are intended to help USPTO examiners more easily locate documents relevant to the state of the prior art during examination.

The DKPTO's other "Contract Partners" already include Iceland, Singapore, Turkey, and the UK. Check out their Seminar on US Patent Practice and Seminar on US Patent Infringement and Litigation.

Who is Ronald Katz?

If at least one of your clients has not heard from him already, chances are that they will soon.

Since 1996, Ronald A. Katz has received at least 23 U.S. patents for various "telephonic interface systems" which are now assigned to Ronald A. Katz Technology Licensing. According to Dorothy Pomerantz writing for Forbes in March 2005, he has received over $750 million in licensing fees since 1990 from 100 companies, including AT&T, IBM and Sears." Katz expects to earn at least $2 billion in fees by 2009, surpassing even Jerome Lemelson as the World's Most Aggressive Enforcer.

Early in his career, Katz formed Telecredit, Inc., the nation's first on-line, real-time credit and check authorizing system. He patented that system and, between 1987 and 1993, he applied for 25 more patents and received approval for 20 of them. In his keynote speech at the 2005 Spring Meeting of the Licensing Executive Society (USA and Canada) Inc., billed as the first formal speech about his career, Katz recalled the day in the early 1990s when he told the New York Times that he believed his patent portfolio royalties would one day be worth "in the tens of millions of dollars if not the hundreds of millions." His prediction was met with skepticism by the newspaper.

According to Paul Stockford writing for Saddletree Research on May 15, 2006,

"Information on Ronald A. Katz and his company, Ronald A. Katz Technology
Licensing, LP, remains as elusive as ever. . . . There have been over 3,000 Katz-initiated claims for patent violation over the past 15 years with the vast majority settling before further legal action was taken. In fact, there has not been a single public legal challenge to a Katz claim of patent violation for nearly three years.

In fact, Bruce Berman wrote a profile of him in his book, "Making Innovation Pay," to which Mr. Katz also contributed a chapter. Mr. Katz's latest lawsuits were filed on August 21, 2006 in the U.S. District Court for the Eastern District of Texas as

Ronald A. Katz Technology Licensing, L.P. v. American Airlines, Inc.; American Beacon Advisors, Inc.; FedEx Corporation; Federal Express Corporation; FedEx Corporate Services, Inc.; FedEx Customer Information Services, Inc.; Hilton Hotels Corporation; Hilton Reservations Worldwide, LLC; Hilton Honors Worldwide LLC; Marriott International, Inc.; Marriott Worldwide Reservation Services, LLC; and National Railroad Passenger Corporation d/b/a Amtrak

and

Ronald A. Katz Technology Licensing, L.P. v. Aetna Inc.; Aetna RX Home Delivery, LLC; Wellpoint, Inc.; Professional Claim Services, Inc. d/b/a Wellpoint Pharmacy Management, Inc.; Anthem Prescription Management, LLC; Precision RX, Inc.; Caremark RX, Inc.; Caremark Inc. d/b/a Caremark Prescription Services; The Kroger Co.; Kroger Texas L.P.; Healthy Options, Inc. d/b/a Postal Prescription Services; Petmed Express, Inc. d/b/a 1-800-Petmeds; Safeway, Inc.; Randall's Food Markets, Inc.; and Randall's Food & Drugs, LP.

At least one firm now appears to specialize in advising "contact centers struggling to understand Katz patent infringement liability."

Examiner's Amendment to Correct Inadvertent Ommission Did Not Affect DOE

In Conoco v. Energy & Environmental International (August 17, 2006), the Federal Circuit held that an Examiner's amendment to conform the claims with the scope of the applicant's arguments was not for puposes of patentability and did not estopp the application of the Doctrine of Equivalents.

once the applicants cancelled the original claims and submitted 22 new claims, all but the first claim lacked the fatty acid wax limitation—presumably making the new claims broader than originally argued. Nevertheless, the examiner and applicants continued to focus their arguments as if the limitation was present, arguing the difference between fatty acid waxes and metal stearates. Such evidence indicates that the amendment was the correction of an inadvertent omission rather than the intentional narrowing of a broad claim for patentability purposes. Thus, the district court did not err by finding that the claim was not amended for purposes of patentability.

"Consisting Of" Allows Impurities Normally Associated with Invention

In Conoco v. Energy & Environmental International (August 17, 2006), the Federal Circuit reviewed the lower court’s infringement analysis for clear error and held that impurities that a person of ordinary skill would ordinarily associate with a component on the "consisting of" list do not exclude the accused product or process from infringement.

According to the opinion by Circuit Judge Gajarsa,

EEI contends that MIBK is not an impurity because it was purposely added to the alcohol to denature it. However, the intentional addition of a component does not change its status as an "impurity ordinarily associated therewith."

MIBK is a common impurity in industrial alcohols in order to prevent a liquor tax from being applied. If, however, MIBK had been added to adjust the stability of the suspending medium or prevent agglomeration of polymer, it may not have been an impurity and therefore EEI would most likely not infringe. Thus, impurities normally associated with the component of a claimed invention are implicitly adopted by the ordinary meaning of the components themselves. See Phillips, 415 F.3d at 1312-13 ("The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art . . . .").

The district court found as a matter of fact that Alfol-2 consisted of water and alcohol and that any non-alcohol and non-water components, such as MIBK, were impurities. This conclusion was based on the testimony of EEI’s expert, who acknowledged that the small amounts of ammonia and heptane in the suspension were impurities and was impeached by prior testimony indicating MIBK was also an impurity. The court’s findings were based on the testimony of persons of ordinary skill in the art who testified that MIBK has little to no effect on the present invention and is normally associated with industrial alcohols to reduce tax liability.

Accordingly, there was substantial evidence to support the district court’s findings that the MIBK and the other non-alcohol/non-water components were impurities, and the district court did not clearly err by finding that Alfol-2 met the claim limitations of the suspending medium.

We are not presented with the question of whether impurities not normally associated with a component would exclude the accused process from infringement; however, as in Norian Corp., the additional component must be related to the invention. 363 F.3d at 1331-32.

Product Configuration Mark Not Functional for Services

In Duramax Marine, LLC v. R.W. Fernstrum & Co., Opposition No. 91119899 (August 4, 2006), the U.S. Trademark Trial and Appeal Board dismissed the opposer's claim that the proposed mark (below) is functional for "manufacture of marine heat exchangers to the order and specification of others"

The mark was the admitted equivalent of the drawing of a keel cooler configuration in the applicant's expired U.S. Patent No. 4,338,993. According to Administrative Trademark Judge Rogers,

We do agree with applicant, however, that there is a significant difference between an application to register trade dress in the nature of product design as a mark for the product itself (e.g., applicant's abandoned configuration application) and an application to register a two-dimensional drawing that may look very much like such a product, but is used on labels, catalogs, brochures, and in various other ways as a mark for services. . . .

The vast majority of the functionality cases deal with product design or product packaging. . . . We recognize that the instant case is significantly different from the Fotomat cases, and from similar cases involving trade dress in the nature of building design (interior or exterior) claimed to be a mark for services. Specifically, in the case at hand, the services are not restaurant services or retail sales of photographic products, but are custom manufacturing of a specific type of item, once-patented, for which the patent has expired.

Applicant's competitors or would-be competitors, save for the voluntary restriction opposer took on itself via the settlement agreement, are free to manufacture the once-patented item; and even are free to manufacture the item in varying sizes, to the order and specification of customers. Thus, the case at hand presents, more than cases involving restaurant or retail kiosk trade dress, a much closer question regarding whether any manufacturer of the formerly patented item should be free to utilize, in advertising its goods for sale, a realistic depiction of the item.

Opposer has advanced some compelling arguments why applicant should not be permitted to register what is in essence the two-dimensional depiction of the formerly patented product that appeared in the patent itself, even for services. Nonetheless, we must balance against opposer's argument for the extension of existing case law on functionality what is shown by the record to be long use of the keel cooler depiction by applicant in the manner of a logo.

Further, opposer has not discussed whether, when custom manufacturing services are involved, we should still apply the TrafFix test for functionality (a three-dimensional product design is functional if it is "essential to the use or purpose of the product or if it affects the cost or quality of the product") to the product that results from purchasing the services, or whether the test should be adapted and focus on whether use of the two-dimensional design to be registered is essential to anyone who would provide the same service, or would, if unavailable, affect the cost or quality of the service.

Opposer has failed to persuade us that an extension of existing law to cover the circumstances of this case is warranted. We decline to sustain the opposition on opposer's claim of functionality. We add, however, that our decision does not foreclose the extension of TrafFix to service marks if circumstances in a future case warrant such an extension.

VARA Does Not Apply to "Site-Specific" Art

Phillips v. Pembroke Real Estate, Inc., the First Circuit concluded that the Visual Artists Rights Act of 1990 ("VARA"), 17 U.S.C. § 106A, does not protect "site-specific art," where one of the components of the work is its physical location.

Under the VARA, the "author of a work of visual art" has the moral right

(A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and

(B) to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.

A “work of visual art” is defined as

(1) a painting, drawing, print, or sculpture, existing in a single copy, in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author, or, in the case of a sculpture, in multiple cast, carved, or fabricated sculptures of 200 or fewer that are consecutively numbered by the author and bear the signature or other identifying mark of the author; or

(2) a still photographic image produced for exhibition purposes only, existing in a single copy that is signed by the author, or in a limited edition of 200 copies or fewer that are signed and consecutively numbered by the author.

However, "The modification of a work of visual art which is the result of conservation, or of the public presentation, including lighting and placement, of the work is not a destruction, distortion, mutilation, or other modification, unless the modification is caused by gross negligence."

Artist David Phillips brought suit against Pembroke Real Estate, Inc. in federal district court, asserting that the removal of any or all of his work, consisting of multiple pieces of sculpture and stonework, from Eastport Park in South Boston would violate his statutory rights under VARA. According to Circuit Judge Lipez,

A work of "integrated art" is comprised of two or more physical objects that must be presented together as the artist intended for the work to retain its meaning and integrity. In a work of "site-specific art," one of the component physical objects is the location of the art.

By definition, site-specific art integrates its location as one of its elements. Therefore, the removal of a site-specific work from its location necessarily destroys that work of art. Here, the district court concluded that VARA recognized site-specific art as a type of integrated art, and then concluded that VARA treats site-specific art the same way that it treats other integrated art. However, a work of integrated art, unless it is a site-specific work, is not destroyed by removal from its location.

. . . Ultimately, we agree with Pembroke's position that "[t]here is no basis for Phillips' claim that VARA establishes two different regulatory regimes: one for free-standing works of art . . . and one for site-specific art that can never be moved and must always be displayed." VARA's plain language also requires us to reject the district court's approach to site-specific art. VARA does not protect site-specific art and then permit its destruction by removal from its site pursuant to the statute's public presentation exception. VARA does not apply to site-specific art at all.

We do not denigrate the value or importance of site-specific art, which unmistakably enriches our culture and the beauty of our public spaces. We have simply concluded, for all of the reasons stated, that the plain language of VARA does not protect site-specific art. If such protection is necessary, Congress should do the job. We cannot do it by rewriting the statute in the guise of statutory interpretation.

. . . we affirm the decision of the district court permitting Pembroke to remove Phillips' works from the Park.

Ivy League Judges Have Highest Affirmance Rates for Patent Decisions

According to a study by LegalMetric, "judges with at least 100 patent cases have an affirmance rate on appeal that is identical to the affirmance rate for all judges in patent cases (60% in this sample of over 1400 appeals)." However, the review also found that educational background of the judge does seem to make a difference in results on appeal. "Judges with B.S. or M.S. degrees have a significantly higher affirmance rate on appeal (67%). The only judges tested with a higher affirmance rate were those with Ivy League degrees (71%)."

U.S. PTO/CO Roundtable on WIPO Broadcasting Treaty

Date: Tuesday, September 5, 2006, 1-3 p.m.
Location: USPTO Atrium Conference Room, Madison West, 10th Floor
Requests for participation must be submitted by 5 p.m. on Thursday, August 31, 2006.

The United States Patent and Trademark Office (USPTO) and United States Copyright Office (USCO) will hold a public roundtable discussion concerning the work at the World Intellectual Property Organization (WIPO) in the Standing Committee on Copyright and Related Rights (SCCR) on the proposed Treaty on the Protection of the Rights of Broadcasting Organizations. Members of the public are invited to attend the roundtable. In particular, the participants will identify and discuss the issues and problems associated with the recent text available from July 31, 2006, the ‘‘Revised Draft Basic Proposal for The WIPO Treaty on the Protection of Broadcasting Organizations’’ at www.wipo.int/meetings/en/doc_details.jsp?doc_id=64712.

Although broadcasters rights are protected under some existing international agreements, such as under the 1961 Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations and the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights, there has been increasing concern that changes in technology and the opening up of much of the world to commercial broadcasting, have made the protection provided in those agreements ineffective to protect broadcast signals against piracy.

At the September 2005 WIPO General Assembly, the decision was taken to hold additional meetings of the Standing Committee on Copyright and Related Rights ("SCCR") to permit further discussion of the possible treaty and to invite the 2006 WIPO General Assembly to convene a Diplomatic Conference in December 2006 or at an appropriate time in 2007. WIPO posts various documents from their meetings, such as reports, member state submissions, meeting agendas, and official texts prepared by the Chair of the SCCR. The most recent text available from July 31, 2006—‘‘Revised Draft Basic Proposal for The WIPO Treaty on the Protection of Broadcasting Organizations.’’ On August 1, 2006, the United States made a submission to WIPO addressing the issue of ‘‘netcasting’’ which is available at http://www.uspto.gov/web/offices/dcom/olia/ and will shortly be available on the WIPO Web site.

USPTO Patent Rule Change Proposals Website

Official information on the USPTO's "Proposed Rule Changes to Focus the Patent Process in the 21st Century" is discussed at the following links:

1. Claims Practice
2. Continuation Practice
3. Accelerated Examination
4. IDS Practice

Presentation Materials
Presentation Schedule

According to the USPTO, "These pages have been developed to provide full transparency to the public about these ongoing efforts" and "will be updated as new information or proposals are unveiled." The information includes an explanation of the challenges the USPTO faces, the reasons why proposed rule changes are necessary, the proposed rule changes, and supporting material. The site also includes a schedule of dates and places where USPTO representatives have made presentations concerning the proposed rule changes, and scheduling information for new presentations. "No rule change will be effective before October 1, 2006, and at least 30 days advance notice of the changes shall be given."

The USPTO inaugurated these pages with information about rule changes proposed on January 3, 2006 related to claims practice and continuation practice. These proposed rule changes will make the patent examination process more effective and efficient by reducing the amount of rework by the USPTO and reducing the time it takes for the patent review process.

On June 26, 2006, the USPTO published new procedures for accelerated examination, offering filers a final decision by the examiner within 12 months on whether their application for a patent will be granted or denied. The accelerated examination procedure is designed to give applicants quality patents in less time.

On July 10, 2006, the USPTO proposed new rule changes related to Information Disclosure Statements. Applicants list information for the examiner to consider in a communication called an Information Disclosure Statement (IDS). These proposed IDS rule changes are designed to encourage patent applicants to provide the USPTO the most relevant information related to their inventions in the early stages of the review process.

USPTO Independent Inventors and Small Business Conferences

Top officials from the United States Patent and Trademark Office and successful inventors and entrepreneurs will headline the agency's 11th Annual Independent Inventors Conference, September 8-9, 2006 at the USPTO's Alexandria, Virginia headquarters. First time attendees are further invited to participate in a pre-conference from 5-7 p.m. on September 7. The pre-conference—a basic primer on patents and trademarks—is included in the registration fee.

Registration is now open for this 2-day event. The fee is $50 per person for both days. The registration fee includes all sessions and presentations, morning and afternoon refreshments, lunch for both days and a networking reception on Friday evening.

For additional information about this event you can call the Inventors Assistance Program at 571-272-8850. To register by phone call the National Inventors Hall of Fame at 330-849-6903. To register on-line go to 11th Annual Independent Inventors Conference.

Registration is now also open for Small Business Seminars scheduled for September 11-12 in Minneapolis, MN and September 18 in Providence, RI. The Minneapolis program is a day-two event with one-on-one consultations, and the Providence program is a one-day event with no consultations.

Minneapolis (September 11-12): http://www.uspto.gov/cgi-bin/exitconf/internet_exitconf.pl?target=www.SignUp4.net/Public/ap.aspx?EID=IPAC24EProvidence (September 18): http://www.uspto.gov/cgi-bin/exitconf/internet_exitconf.pl?target=www.signup4.net/public/ap.aspx?EID=IPAC25E

"Partridge" Patent Application Monitoring Software Update

Electronic patent filing maven Carl Oppedahl, has pointed out that his free "Partridge" patent application status monitoring software will also stop working when the USPTO discontinues support of Legacy Private PAIR at 11:59 PM Eastern Standard Time on 31 December 2006.

According to Carl's post to the Partridge Liserv,

There are several things that Partridge does that cannot easily be done any
other way, including:

• monitoring the outgoing correspondence and other salient events across all of your customer numbers at once
• monitoring events in patent applications of third parties

Ever since USPTO released the "portal" version of Private PAIR many months ago, I have been begging USPTO to please provide documentation as to how user software such as Partridge would be able to gain access to the "portal" Private PAIR. Thus far USPTO has not provided it. If four more months pass and USPTO still does not provide it, then everybody's Partridge software will stop working.

Here are the things that I think will help.

First, please write a letter to John Doll, USPTO, P.O. Box 1450, Alexandria, VA 22313-1450, with a cc to me, asking that USPTO please document this access well before December 2006. It may help if you can mention how many patent applications you file in a year. Please list a cc to me on the letter and please send a cc to me, Carl Oppedahl, Oppedahl & Olson LLP, P.O. Box 4850, Frisco, CO 80443-4850. This will help Partridge, and will also help any other people who have tried or are trying to develop software which obtains information from Private PAIR.

Second, if you have not already done so, please subscribe to the Partridge list server. Instructions for subscribing can be seen at http://www.oppedahl.com/partridge/ .

Third, if you feel so inclined, I would be grateful if you could drop me an email message (or a posting to the list server) saying how important the Partridge software is to you and what it does for you that cannot easily be done any other way -- for me to use in advocacy to the USPTO and to encourage others to consider using Partridge. (Don't worry, we are not secretly planning to stop giving it away for free!)

TGIF for Pirate Parties

The Pirate Party wants to "fundamentally reform copyright law, get rid of the patent system, and ensure that citizens' rights to privacy are respected. With this agenda, and only this, [they] are making a bid for representation in the Swedish parliament in the upcoming national elections in September." They currently have 8136 members, a Declaration of Principles, and a proposal for an alternative to pharmaceutical patents.

According to Wikipedia, the party was initially against trademark rights, but did an about-face in that question when the first party programme was accepted. It also contained changes to what the party thought about copyright and patent, amongst others. After around a month of existence, the party had gained 900 members, paying the membership fee of 5 Swedish kronor (approx. US$0.65, c.2006), payable by SMS. The current board of the party consists of Rickard Falkvinge (founder), Christian Engström, Fredrike Lantz, Balder Lingegård, Mika Sjöman, and Joakim Lundborg. Former board members include Mikael Viborg (known as the legal adviser of the BitTorrent tracker The Pirate Bay).

The Green Party, the Moderate Party and the Left Party all changed their policies on copyright to prevent losing votes to the Pirate Party.[4][5] It was also announced by the Minister for Justice, Thomas Bodström on June 9 that he was willing to negotiate a possible revision of the law introduced in 2005 that made unauthorized downloading of copyrighted material illegal (before that only uploading was illegal), introducing a new tax on broadband Internet access.[6] The response from the Pirate Party was negative, claiming that such a law is not an acceptable solution and that current politicians still have not grasped the issue.[7]

Officially registered pirate parties are also reported to exist in Spain and Austria, while those in the USA, France, Germany, Poland, Italy and Belgium are "currently unregistered, but active." Additionally, there are discussions on Pirate Party International about forming parties in the Netherlands, Brazil, UK, Australia, Canada and New Zealand.

Thank Goodness It's Friday,

--Bill Heinze

Collaborative Website Evidence to Be Considered in Context for Trademark Registration

In response to a letter from the President of the International Trademark Association concerning "Use of Wikipedia.com in Trademark Examination, U.S. Commissioner for Trademarks Lynne Beresford stated on August 7, 2006 that the USPTO's Office of Trademark Quality Review and Training will give examinng attorneys guidance and instruction about the probative value of collaborative web sites with permissive edits. "Such evidence must be considered in light of the natue of the mark, the identified goods and services, the existence of corroborating sources, or the lack thereof," she wrote.

The United States Patent and Trademark Office appreciates your input with respect to the disclaimers and warngs as to the validity or accuracy of information contained on web sites that feature content submitted by members of the public rather than professionals with expertise in particular subject areas.

You request the USPTO to establish a policy that would prohibit the use and citation of such websites by examining attorneys.It is the position of the USPTO that questions of descriptiveness, misdescriptiveness, geographic descriptiveness, scandalousness and other grounds for refusal under the Trademark Act are to be determined on the totaity of the evidence of record. Should such evidence include entres from websites that may contain inaccuracies or unverifiable content, it must be considered in context and evaluated on a case by case basis. . . .

The USPTO continues to support its policy relating to any evidence acquired
from the Internet, as outlned in the Trademark Manual of Examing Procedure (TMEP) Section 710.01(b)(Articles downoaded from the Internet are admissible as
evidence of inormation available to the general public, and of the way in which a term is being used by the public. However, the weight given to this evidence must be carefully evaluated, because the source is often uknown. See In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-71 (TAB 1998)).

BALASHI Not Primarily Geographically Descriptive of Beer from Aruba

In In re Brouwerij Nacional Balashi (August 2, 2006), the U.S. Trademark Trial and Appeal Board decided that the marks "BALASHI BEER" and "BALASHI" were not primarily geographically descriptive of beer.

As a general proposition, in order for registration of a mark to be properly refused on the ground that it is primarily geographically descriptive of an applicant's goods or esrvices, it is necessary to establish (i) that the primary significance of the mark is that of the name of a place generally known to the public and (ii) that the public would make a goods/place or services/place association, that is, believe that the goods or services for which the mark is sought to be registered originate in that place. . . .

[I]n dealing with the supposed reactions of a segment of the American public, in this case the average American beer consumer and not the unusually well-traveled tourist or even the aficionados of foreign beers, the isolated area or neighborhood of Balashi in the Caribbean island of Aruba is simply so minor, remote and obscure that its geographic significance would not be known or otherwise readily apparent to purchasers of applicant's beer. To be sure, the average American beer consumer, after perhaps quaffing a few "brews" while spending some time lying around on, or at least contemplating a vacation to, the white sand beaches of Aruba that serve as the island's principal tourist destinations, might have occasion to research and/or check out whatever other attractions, including gold mine ruins, a large desalination plant and applicant's brewery, would be of interest as a side trip to the locale of Balashi. The geographical significance, however, of the term "Balashi" would not be apparent without, at a minimum, consulting sources of tourism information. We consequently hold that, on this record, the Examining Attorney has failed to establish that the term "Balashi" is a place name which is generally known, that is, is not remote or obscure in its geographical significance, to American beer consumers and thus has not shown a reasonable basis for concluding that the marks "BALASHI BEER" and "BALASHI" are primarily geographically descriptive of applicant's goods within the meaning of the statute.

Aruba is a 32 km long island in the Caribbean Sea, 27 km north of the Paraguaná Peninsula, Falcón State, Venezuela, and it forms a part of the Kingdom of the Netherlands.

Brouwerij Nacional Balashi was founded in 1996 by one of Aruba’s largest companies, MetaCorp. Construction started in 1998 and the first beer was brewed eight months later in May 1999. In 2001, Balashi, the flagship beer for the company, won a gold medal in the prestigious “Monde Selection” in Brussels. Balashi was the brewery’s first uniquely Arubian product, with malt imported from Scotland, hops from Germany, and made using the island’s water. Balashi contains no artificial additives, and is now being exported to Curaçao and Bonaire.

Balashi has been described as tasting like a Dutch pilsner, most likely due to the Dutch heritage of its native Aruba.

Report on the Australian Innovation Patent

According to IP Australia's Final Report on Review of the Innovation Patent,

Although it is difficult to objectively measure whether low-level
innovation has been stimulated by the innovation patent, the higher use of the system than was the case for the petty patent suggests that it has to some degree. The innovation patent is predominantly being used by Australian individuals and SMEs for less-knowledge intensive innovations. The innovation patent system is also generally speedier and has lower fees than the standard patent system, although the cost difference is marginal when an agent is
employed.

Most of those who made submissions believed that "innovative step" was clearly a lower threshold than inventive step, and was a main reason for the reasonable level of use of the system. The latest opposition decisions by IP Australia support this view, however the level and effectiveness of innovative step can ultimately only be determined by the courts. Also, recent worldwide concerns over a possible proliferation of "trivial" patents creating barriers to innovation mean that the appropriateness of the innovation patent should be regularly reassessed.

Despite some concerns raised in submissions, the application and enforcement processes generally appear to be appropriate. At this stage there appears to be no reason to modify the eight year term, five claim limit or the subject matter covered. However, despite the clear intent of the innovation patent, there does appear to be a risk that a court would interpret the legislation to mean that the subject matter of an innovation patent would have to satisfy a threshold of inventiveness on the face of the specification that is higher than that of innovative step. This would undermine the system and significant modifications would be urgently required. It would be best to have the issue examined before such a situation eventuated.

The Australian "innovation patent" is a protection option, which is designed to protect inventions that are not sufficiently inventive to meet the inventive threshold required for standard patents. The innovation patent is designed to provide an incentive to small business to invest in innovation and it will provide a relatively cheap patent right that is quick and easy to obtain.

Innovation patents are available for most of the types of invention currently covered by standard patents, except human beings, plants and animals or biological processes for the generation of these.

The innovation patent has a shorter protection term than a standard patent - 8 years as opposed to 20.

You are unable to go to court to enforce the innovation patent until it has been examined and certified.

As the innovation patent is granted without substantive examination, IP Australia has not made any checks that the patent is valid. You are able to change an innovation patent to a standard patent in the period before it is granted. The period will, however, be short as innovation patents will be granted after a brief formalities check.

ABA Litigation Tips Podcast Series

Thanks to Bob Ambroji at "Lawsites" for noting that the American Bar Association's Section of Litigation has launched a free podcast series called Litigation Podcast: Tips & Tactics for the Practicing Trial Lawyer. The first episode is "Managing Privilege."

Grower Seed Licenses Not Anticompetitive

In Monsanto Company v. Scruggs, et al. (Fed. Cir., August 16, 2006) Scruggs asserted that Monsanto’s commercial practices regarding geneticlly modifed seeds violate federal and state antitrust laws, and constitute patent misuse. The specific practices that it attacked were Monsanto’s seed grower incentive programs, its seed partner license agreements, its grower license agreements, and its alleged refusal to sell Roundup Ready (R) cotton seeds without the Bollgard herbicide-resistant trait. Monsanto’s grower license agreements include an exclusivity provision, a no replant policy, a no research policy, and the payment of a technology fee.

Additionally, its grower license agreements between 1996 and 1998 stated that if a grower chose to use glyphosate herbicide in connection with Roundup Ready (R) seeds, then the grower must use Roundup ("1996 Roundup restriction"). At that time, Roundup was the only glyphosate herbicide approved by the Environmental Protection Agency for use with Roundup Ready (R) seeds. Monsanto’s grower incentive agreements give participating seed growers additional voluntary benefits if they choose to use Roundup herbicide exclusively on crops containing Monsanto’s Roundup technology. Monsanto’s seed partner agreements require seed growers who choose to use a glyphosate herbicide to use Roundup.

According to the opinion of the court by Circuit Judge Mayer,

On appeal, Scruggs reasserts that the exclusivity provision, no replant
policy, and technology fee payments required by Monsanto’s licensing agreements
with seed growers are illegal anticompetitive practices. Monsanto has a right to
exclude others from making, using, or selling its patented plant technology, see
Brulotte, 379 U.S. at 29-30, and its no replant policy simply prevents
purchasers of the seeds from using the patented biotechnology when that
biotechnology makes a copy of itself. This restriction therefore is a valid
exercise of its rights under the patent laws. Furthermore, Monsanto’s uniform
technology fee is essentially a royalty fee, the charging of which is also
within the scope of the patent grant. Lastly, the no research policy is a field
of use restriction and is also within the protection of the patent laws.

Scruggs also argues on appeal that Monsanto ties the purchase of its
seed to the purchase of Roundup through grower license restrictions, grower
incentive agreements, and seed partner agreements. It asserts that Monsanto
unlawfully ties the Roundup Ready trait [in soybeans] to the Bollgard trait
in cotton seeds. It does not point to sufficient evidence to establish that
Monsanto’s behavior constitutes illegal tying. The grower incentive program was
optional, not coerced. Additionally, Monsanto’s seed partners were not forced to
buy Roundup under the seed partner agreements. Furthermore, there is no merit to
the argument that Monsanto illegally tied the sale of cotton containing the
Roundup Ready (R) gene to the sale containing the Bollard trait; Monsanto sells
cotton without the Bollgard trait and there is no evidence that Monsanto
engineered a shortage of Roundup Ready (R) cotton.

Lastly, Scruggs asserts that the trial court’s decision should be sent back
for a separate patent misuse analysis, because the burden of proving patent
misuse is lower. However, patent misuse covers only activity falling outside of
the patent grant, and Scruggs did not point to any activity falling outside
Monsanto’s patent.

The dissent argues that Federal Trade Commission v. Indiana Federation of
Dentists, 476 U.S. 447 (1986), and Fashion Originators’ Guild of America, Inc.
v. Federal Trade Commission, 312 U.S. 457 (1941), compel a finding of patent
misuse; they do not. In those cases, the antitrust defendants argued that their
anticompetitive conduct should be excused on the ground that it provided
benefits and furthered a public policy unrelated to competition. The Supreme
Court rejected those arguments, holding that collusive agreements between
competitors do not become lawful simply because they may have some other
beneficial effects. In this case, Monsanto does not argue that it should escape
a finding of patent misuse because its contract provisions protected the public
or furthered EPA policy; rather, Monsanto’s argument is that its contract
provisions lacked any anticompetitive effect because EPA’s regulations
prohibited growers from using competing glyphosate herbicides for over-the-top
application. Therefore, even if growers elected to use such herbicides for
over-the-top application, they would not be legally free to use competing
brands. As the trial court noted, the record supports Monsanto’s argument;
Scruggs has not pointed to any evidence to the contrary. The record shows that
Monsanto’s competitors sought and obtained regulatory approval and that when
they did, Monsanto modified its contracts accordingly. In this unusual setting,
the rule of reason applies to the defense of patent misuse based on the alleged
tying arrangement, and under the rule of reason, Scruggs is required to show
that the challenged contracts had an actual adverse effect on competition. See
U.S. Philips Corp. v. Int’l Trade Comm’n, 424 F.3d 1179, 1185 (Fed. Cir. 2005).
Scruggs did not do so and therefore cannot use the challenged contract
provisions as a defense against Monsanto’s patent infringement claims.
Therefore, Monsanto’s behavior did not constitute patent misuse.

In his dissent by Circuit Judge Dyk, disagreed as to whether there were commercially feasible alternatives that could otherwise have sought regulatory approval:

There was evidence that manufacturers produced products that could have
been used "over the top," and that all that was lacking was regulatory approval.
In other words, Monsanto’s tying arrangements here did no more than enforce a
regulatory requirement. Substantial competitive risks inhere in such an
arrangement. Potential competitors are potentially discouraged from seeking
regulatory approval or attempting to have the regulation modified or eliminated.
To the extent that such efforts are discouraged, the proponent of the tie has
succeeded in eliminating competition.

Moreover, in this connection it is highly significant that Monsanto’s
grower license agreements did not simply require the use of a
government-approved herbicide; they explicitly required the use of "Roundup
branded herbicide." A potential herbicide competitor thus would be concerned
that, even if it secured government approval of its product, use of the approved
herbicide would still be barred under the contracts. The elimination of such
potential competition is not permissible under the antitrust laws.

The district court did not make a finding as to Monsanto’s market power in
the alleged tying product. Ill. Tool Works, Inc. v. Indep. Ink, Inc., --- U.S.
---, 126 S. Ct. 1281, 1293 (2006); see Monsanto Co., 342 F. Supp. 2d at 575-80.
I would vacate the judgment as to the alleged tie in the 1996-1998 grower
agreements, and remand for the district court to determine whether the relevant
contract provision in fact constituted patent misuse and, if misuse occurred,
whether it was purged. See Senza-Gel Corp. v. Seiffhart, 803 F.2d 661, 668 n.10
(Fed. Cir. 1986).

State University Immunity Not Waived by Filing Paralell Suit

In Tegic Communications Corp. v. Board of Regents of the University of Texas System, the Federal Circuit affirmed the dismissal of Tegic's declaratory judgment action against the University of Texas System under the 11th amendment of the U.S. Constitution even though The University brought it's own suit.

Tegic argued that the University explicitly waived its immunity with respect to the patent when it brought suit for infringement against Tegic's customers/licensees in the Western District of Texas.. However, according to the opinion by Circuit Judge Newman,

A declaratory action does not provide any substantive rights; it provides a
procedure for a declaration of legal rights and relations. See Aetna Life Ins.
Co. v. Haworth, 300 U.S. 227, 240 (1937) (the declaratory action is procedural
only). To determine immunity under the Eleventh Amendment it is necessary to
look to the substantive charge, not to the procedure for obtaining relief. Tegic
seeks a declaration of noninfringement and patent invalidity and
unenforceability. The University does not deny that it waived immunity as to
defenses and counterclaims in the Texas district court, but argues that it did
not waive immunity as to Tegic, or in the Washington forum.

We agree with the University that its filing of the Texas action did not
establish waiver as to this separate action. While waiver in the litigation
context focuses on the litigation act, the waiver must nonetheless be "clear."
Lapides, 535 U.S. at 620. In Clark, 108 U.S. at 448, waiver to the "complete
determination" of the litigation was clear from the state's voluntary
intervention in that litigation; in Gardner, 329 U.S. at 574, waiver respecting
the "adjudication" of a claim was clear from the state's filing of that claim;
in Lapides, 535 U.S. at 619, waiver as to the resolution of the "case at hand"
was clear from its voluntary removal of that case to a federal court. And in
Regents of New Mexico, 321 F.3d at 1126, waiver as to compulsory counterclaims
filed by the defending party "in the same forum" was clear from the state's
filing of the suit in that forum, for the state could "surely anticipate" that
such counterclaims, which would otherwise be forever barred, would be asserted.
We discern no similar clear waiver in this case. Although here the University
obviously "made itself a party to the litigation to the full extent required for
its complete determination," Clark, 108 U.S. at 448, it did not thereby
voluntarily submit itself to a new action brought by a different party in a
different state and a different district court.

Tegic argues that under the "customer suit exception" a manufacturer's action
to resolve patent infringement charges against its customers not only receives
preferential treatment over a patent owner's earlier filed suit against the
customers, but benefits from any waiver accompanying the earlier suit. The
customer suit exception is an exception to the general rule that favors the
forum of the first-filed action, Kerotest Mfg. Co. v. C-O-Two Fire Equip. Co.,
342 U.S. 180, 185 (1952); see Kahn v. Gen. Motors Corp., 889 F.2d 1078, 1081
(Fed. Cir. 1989) (holding, on the facts of that case, that it was error to favor
the manufacturer's second-filed suit), but does not override the immunity
provided by the Eleventh Amendment. . . . [Furthermore] the guiding
principles in the customer suit exception cases are efficiency and judicial
economy, and Tegic has not established that it would be more efficient to enable
this declaratory action to proceed in the State of Washington.

Tegic argues that allowing the University to assert immunity in this
declaratory action will give it an unfair litigation advantage. . . . The
district court observed that the University has not used its Eleventh Amendment
immunity adversely against Tegic, but instead the University has committed
itself not to sue Tegic. And to the extent that Tegic's interests may be
impaired by the Texas litigation, Tegic may seek to intervene in that
litigation. See Fed. R. Civ. P. 24(a)(2) (providing for intervention where an
applicant claims an interest in property or transaction that is the subject of
the action, and the disposition of the action may impair the applicant's ability
to protect that interest unless the applicant's interest is adequately
represented by existing parties). Such intervention would benefit from the
University's waiver of "any immunity . . . respecting adjudication" of its
claims, Gardner, 329 U.S. at 574, and would avoid "inconsistency, anomaly, and
unfairness" in litigation. . . .