Infringement Action Precluded by TTAB's Alternative Holding on Likely Confusion

In Jean Alexander Cosmetics, Inc. v. L'Oreal USA, Inc. (August 14, 2006), the Third Circuit Court of Appeals held that "although the TTAB’s conclusion on likelihood of confusion was not its only basis for denying the cancellation petition, it was one of two independently sufficient grounds on which the Board resolved the case. Under these circumstances, we will apply the doctrine of issue preclusion and affirm the District Court’s dismissal of Jean Alexander’s complaint."

Japan Proposes Training for Patent Agents

According to The Yomiuri Shimbun on September 26, 2006, the Japanese Patent Office said it plans to require patent agents to receive training every five years to improve their skills:

In regards to the rising number of applications, an official with the Patent Office's Technology Research Division said, "Patent agents often agree to patent application requests from companies without judging the possibility of acquiring a patent." In some cases, agents try to earn commissions by urging small and midsized companies to apply for patent screening in situations where patents are unlikely to be issued, the official said.

Copyright Royalty Judges Corrections Act

On September 25, 2006, the "Copyright Royalty Judges Program Technical Corrections Act," (HR 1036) was sent President for signature. Among other provisions, the Act provides that Copyright Royalty Judges

• are subject to the Administrative Procedure Act;
• must consider certain Copyright Arbitration Royalty Panel determinations and interpretations among precedents; and
• must allow certain petitioners to participate in a proceeding without a filing fee;
• may issue an amendment to a written determination concerning technical and clerical errors and to modify terms under certain conditions.

The Act will be effective as if it were included in the Copyright Royalty and Distribution Reform Act of 2004, except that the provisions for partial distribution of royalty fees is effective upon enactment.

Become Attorney-Advisor to the CRB?

WIPO Opens 33rd General Assembly

The World Intellectual Property Organization's 183 member states are meeting in the WIPO Assemblies from September 25 to October 3, 2006, to review progress in the Organization's work and to discuss future policy directions. "If I had to sum up in one word, just one word, what I have been working to achieve since the beginning, and will continue to pursue as an objective in this Organization, that word would be ‘inclusion,’" said WIPO Director General Kamil Idris in his opening remarks. Topics on the agenda this year include

• negotiations on a "development agenda" for the organisation;
• a proposed treaty on broadcasters' rights;
• discussions on patent law harmonisation; and
• work on generic resources, traditional knowledge and folklore.

"Divisions among member states have left some of these processes at an absolute standstill," writes BRIDGES Weekly Trade News Digest on September 27, 2006.

How Many Patent Claims Are Enough?

In his series on "Evidence Based Prosecution," Professor Dennis Crouch used data collected from patent applications published thus-far in 2006, and compared

the average number of independent claims in a patent application to the total number of claims in the patent. The results fit very nicely to the equation:

y = 0.0921x + 1.1993,

where y is the number of independent claims and x is the total number of claims. The fit has a very high R(^2) value of 0.9967.

His analysis of Sensitivity to Claim Fee Variation also shows the effect of increasing claim fees on reducing the number of claims filed in patent applications around December 8, 2004.

Narrow Product Configuration Registration Makes Confusion Unlikely

In In re Homeland Vinyl Prods. Inc., Serial No. 76361399 (September 26, 2006), the U.S. Trademark Trial and Appeal Board reversed a refusal to register a product configuration under Section 2(d) of the Trademark Act considering the narrow scope of protection to which registrant's mark is entitled and the relative sophistication of the purchasers for the goods.

The application stated that "the mark consists of the configuration of a fence rail" shown below.

The applicant filed an amendment to the Supplemental Register in response to an initial refusal to register the mark on the grounds of functionality and non-distinctiveness. The functionality refusal was not maintained and was deemed by the Board to be withdrawn.

The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant's mark, when applied to applicant's goods, so resembles the registered mark shown below for "non-metal fence rails" in Class 192 as to be likely to cause confusion.

The latter mark was described in the registration as follows:

The mark consists of a configuration of the bottom portion of a fence rail bearing the exterior rounded shoulders and the recessed edges. The diagonal bands of vertical shading lines and other lining shown in the drawing are not features of the mark and are intended only to show perspective. The broken lines indicate the placement of the mark on the goods and are not features of the mark. The drawing depicts a section of the product configuration and no limitations on length or size
are intended.

Administrative Trademark Judge Holtzman began by noting that when marks would appear on identical goods, the degree of similarity between the marks necessary to support a finding of likely confusion declines. However,

The portion of registrant's mark shown in broken lines is not part of the registered mark. . . .

As stated in the cited registration, the depiction of the upper portion of the rail above the channel is included in the drawing only to show perspective. By construing the mark as including
this matter for purposes of the likelihood of confusion analysis, the examining attorney has improperly broadened registrant's rights in the mark and has given registrant protection for matter that is not part of its registered mark.

Registrant's entire mark is the flourish on the lowermost portion of the outer edges of the rail channel, a very limited and specific portion of the entire fence rail. This is the only portion of the overall product configuration that is protected by the registration. Therefore, in our analysis, we must consider only the flourish as registrant's mark, as it is shown in the registration, and we will not consider the overall product shape on which the mark might be used.

We turn then to the appropriate comparison between the marks, with certain considerations in mind. First, it is the overall visual impression of the marks derived from viewing the
marks in their entireties that is controlling rather than an analysis of the specific details. See Dan Robbins & Associates,
Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100 (CCPA
1979). The marks are similar in their placement on the product and to the extent that they both have a slight taper at the lower lip of the channel on either side of the channel opening.

However, we find that the visual differences in the marks are more significant than the similarities. The overall impression of registrant's mark is soft, curved and rounded, and the overall impression of applicant's flourish is severe, angular and linear. Based on the total effect of the respective marks, rather than their individual features, we find that the differences in the marks are sufficient to distinguish them.

We must also consider the marks in their proper context, that is, as the product shapes would be encountered by purchasers in the actual marketing environment, including their proper visual scale. It is obvious that the drawing is not representative of the actual size or length of the rails. Inactual use the rails are much larger and the respective flourishes are more visible and noticeable, which, in turn, would make the differences in the designs more noticeable, as well. We note, in this regard, Mr. Coen's statement that the respective designs are noticeable from a distance on "an erected fence from the road."

Moreover, in view of the nature of the ornamental design,
it appears, in this particular situation, that the registered mark
is entitled to only a narrow scope of protection. The design and
utility patents for fence rails show that the rails are often constructed with a channel at one end to receive fence panels.
We also note that at least two of the design patents of record
(Nos. D500,866; and D497,432) cover what appear to be subtle
flourishes at the channel end of the rail, suggesting that it is not particularly unique or unusual to place an ornamental design in this portion of the rail, and that purchasers of fence rails would be accustomed to making distinctions based on more subtle differences in the marks.

In view of the foregoing, we find, notwithstanding the identity of the goods, that considering the narrow scope of protection to which registrant's mark is entitled and the relative sophistication of the purchasers for the goods, the marks are sufficiently dissimilar to avoid a likelihood of confusion.

John Welch at the TTABlog points out that, perhaps, the Board should have left out the part about the weakness of the registered mark. "There was no evidence that the patented designs were on the market, and therefore no evidence that purchasers were 'accustomed' to making distinctions based on more subtle differences," writes John. "Clearly the marks were dissimilar, and there was no real need to add this point about the patent evidence."

Dilution by Blurring and Tarnishment in Trademark Revision Act

On September 25, 2006 the U.S. Trademark Dilution Revision Act of 2006 was sent to the President who is expected to sign the bill in the next few weeks. According to the International Trademark Association, the Act is in "response to the ruling of the Supreme Court in Moseley v. Victoria Secret, as well as the many splits in the federal circuits relating to the current dilution statute and the protection of famous marks in the United States."

The act provides for injunctions (regardless of the presence or absence of actual or likely confusion, competition, or actual economic injury) to the owner of a distinctive mark that has become famous before another person begins using the mark in a manner that is likely to cause dilution by blurring or tarnishment. Dilution by blurring and dilution by tarnishment will also be grounds for opposition and cancelation of a registration.

A mark is "famous" if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark's owner. A court may consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered on the principal register.

"Dilution by blurring" is an association arising from the similarity between the marks that impairs the distinctiveness of the famous mark. Again, a court may consider all relevant factors when determining whether a mark is likely to cause dilution by blurring, including: (1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.

"Dilution by tarnishment" is an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

Additional remedies are also available if the person against whom the injunction is sought: (1) first used the mark or trade name in commerce after the date of enactment of this Act; (2) willfully intended to trade on the recognition of the famous mark; or (3) willfully intended to harm the reputation of the famous mark.

The Act also provides a new incentive for federal trademark registration. Ownership of a valid registration will be a complete bar to an action under a state statute or common law and either 1) seeks to prevent dilution by blurring or tarnishment or 2) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

After Final Amendment Required Regardless of Examiner's Intent to Refuse Entry

According to an email message that was posted to members of the Yahoo Patent Law Practice Group and puported to come from Bob Spar, Director of the USPTO's Office of Patent Legal Administration:

Under current Office policy, if a continuation or RCE [Request for Continued Examination] is filed with an amendment, the first action may be a final rejection with a new ground of rejection if the changes made in the amendment justified the making of the new ground of rejection - unless the amendment was previously filed as an after final amendment, and it was not approved for entry with the reason given that it raises new issues.

While you may not agree with this, it is based on the premise that you should submit an after final amendment - as it may be acceptable to the examiner, and permit the case to be allowed.

You cannot just presume that the examiner will deny entry if you submit the AF [After Final] amdt [amendment], and, therefore, just not submit it.

While the examiner may have orally indicated that your proposed AF amendment, if filed, would (probably) be denied entry because of raising new issues, you should have submitted it anyway to get the official position of the examiner on it, and, if entry is denied as indicated because it raised new issues, then the examiner would not have been able to make the 1st
action in the RCE a final action.

I understand how you might feel that this policy is not correct -
and I will make sure your viewpoint is considered when we reevaluate our after final practice, and consider making revisions to it to make it more effective.

TKHR in Taiwan with TOPTEAM

Dan Mclure and Paul Qualey, of Thomas, Kayden, Horstemeyer & Risley LLP will be speaking on U.S. Patent Litigation, November 3, 2006 at the Science Based Industrial Park, in Hsinchu, Taiwan.

Their presentation is part of a larger program starting October 31 being sponsored by Top Team International Patent & Trademark Office. Contact Top team at topteam@top-team.com.tw (fax: 02-2755-2737) for more information and a schedule.

IBM to Publish Patent Filings

According to Steve Lohr writing for the New York Times on September 26, 2006 "I.B.M., the nation’s largest patent holder, will publish its patent filings [18 months after filing] on the Web for public review as part of a new policy that the company hopes will be a model for others."

Woo-hoo . . .

The move appears to have been in response to its "Building a New IP Marketplace, A Global Innovation Outlook 2.0 Report," available here.

American Public Media's Marketplace also reported that "Big Blue's new policy is part of a pilot program from the government to trim application waiting time. Microsoft, GE, Hewlett-Packard and others will also participate in the peer review of patent applications. In exchange, their applications move to the top of the heap."

Aye Caraumba. . .

IPO Intern Scholarship Applications Due October 13

The Intellectual Property Owners Education Foundation has established the Donald W. Banner Corporate Intern Scholarship Program to award two $10,000 scholarships to law students who have already completed internships in corporate intellectual property law departments.

The deadline for law students to submit an application for this year's scholarships is October 13. For eligibility requirements and application form, click here.

The objectives of the program are to (1) recognize outstanding corporate IP law student interns and (2) publicize next year's opportunities for internships. If your company plans to have an internship in 2007 that is not listed in the application materials, please contact Melissa Marcucci (mmarcucci@ipo.org, 202/466-2396) to have your internship listed on the web site.

The World's Most Obnoxious Ringtone?

U.S. Patent No. 7079026
"Koraoke storage on a wireless communications device"

Glen Smith of Durham, NC

What is claimed is:

3. A method of alerting a user of a wireless communications device, comprising:
combining a first audio file and a second audio file to form a combined audio signal;
playing said combined audio signal through a speaker in said wireless communications device responsive to a predetermined event;
wherein said first audio file comprises a pre-recorded music file; and
wherein said second audio file comprises a voice file.

Recapture Invalidity Avoided by Amendments Not Distinguishing Prior Art

In Kim v. Conagra Foods, Inc. (September 20, 2006) the Federal Circuit affirmed the district court’s denial of ConAgra’s motion for JMOL of invalidity based on the recapture rule.

ConAgra contended that during the prosecution of the original patent, Kim surrendered (1) a non-phosphate potassium bromate replacer composition, and (2) a potassium bromate replacer composition with a food acid range broader than 0.02-0.15 parts per 100 parts flour.

Under U.S. law, the challenger of the reissued patent, here ConAgra, must establish surrender of recaptured subject matter by clear and convincing evidence. A patentee can surrender subject matter either through arguments or amendments made during the prosecution of the original patent. Whether surrender of recaptured subject matter has occurred is a question of law, which we review de novo.

According to Circuit Judge Dyk,

In determining whether "surrender" of subject matter has
occurred, the proper inquiry is whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee’s amendment or argument was to overcome prior art and secure the patent. This is because the recapture rule is aimed at ensuring that the public can rely on a patentee’s admission during prosecution of an original patent. It is precisely because the patentee amended his claims to overcome prior art that a member of the public is entitled to occupy the space abandoned by the patent applicant.

. . . [T]he reissue statute cannot be construed in such a way that competitors, properly relying on prosecution history, become patent infringers when they do so." Mentor Corp., 998 F.2d at 996; see also Vectra Fitness, Inc. v. TNWK Corp.,162 F.3d 1379, 1384 (Fed. Cir. 1998) ("[T]he ‘recapture rule’ prevents a patentee from regaining through reissue subject matter surrendered during prosecution, thus ensuring the ability of the public to rely on a patent's public record.") (emphasis added). [Footnote here: "Deliberately canceling or amending a claim in an effort to overcome a reference strongly suggests that the applicant admits that the scope of the claim before the cancellation or amendment is unpatentable, but it is not dispositive because other evidence in the prosecution history may indicate the contrary." In re Clement, 131 F.3d 1464, 1469 (Fed. Cir. 1997). ] Thus, if the objective public observer can discern a surrender of subject matter during the prosecution of an original patent in order to overcome prior art and obtain the patent, then the recapture rule should prevent the reissuing of that patent to claim the surrendered subject matter.

With this in mind, we turn to ConAgra’s allegations of surrender. . . .

. . . Kim overcame the obviousness rejection by changing the transition phrase from "comprising" to "consisting essentially of" and by changing her method claims to composition claims. While the phosphate limitation was added at the same time, the prosecution history does not indicate that Kim added that limitation in particular in order to overcome the obviousness rejection. Significantly, the examiner had previously rejected claims of the original application that included phosphate and noted that the phosphate salt limitation there was not "patentably significant." Thus, the prosecution history refutes the argument that phosphate was added by Kim to overcome a rejection.

. . . As the district court explained, "the range for the food acids used in the pertinent prior art (Tanaka) had been [0].0005 to [0].006. Plaintiff’s lower end choice of [0].015 [in the reissue application] or 0.02 [in the original application] are both a significant difference from [0].006. It can not be inferred that plaintiff’s choice of [0].020 instead of [0].015 was because
plaintiff was surrendering the difference between the two out of fear [0].015 would be found to be obvious while [0].020 would not." Further, "[t]he Patent Examiner did not indicate that [the original application’s] range [of 0.03-0.2] was obvious in light of the prior art. Instead, the Patent Examiner indicated that the use of food acid and ascorbic acid in general was disclosed by the prior art and that the particular range . . . was indefinite in that it was unclear if it was measured solely in ratio to flour."

We agree with the district court.

Patents Not Killing Software Industry

According to "Patents, Entry and Growth in the Software Industry," by `
Professor Robert P. Merges, new firm entry into the software industry remains robust, despite the presence of patents and, in some cases, perhaps because of them. According to Professor Merges:

On the basis of overall industry concentration figures, which are quite low by comparison to other industries, and evidence of continued entry of new startups, it is safe to say that the predictions of the software patent doubters in the early 1990s have been effectively refuted so far. To the extent that some
also argue that software firms may have an incentive to cynically stockpile patents, with no real concern for the effort that goes in or the quality that results from those patents, we have seen evidence that this too is wrong. At least some proxies of effort level correlate well with measures of firm success
– implying that successful software firms take their patents seriously. This, along with evidence that innovative software firms in other countries make use of the patent system more than non-innovative firms, suggests a simple overall conclusion: patents are not killing the software industry, and successful firms are paying attention to patent quality, at least according to some measures.

As discussed in more detail at Peter Zura's Two-Seventy-One Patent Blog,

The conventional measure of concentration, the Herfindahl-Hirschman index (HHI) ranges from 0 to 10,000. However, the HHI for the software industry as a whole is less than 244 for software, compared to an average of 334 for U.S. manufacturing industries. What this means is that the top 20 sellers of pre-packaged software generate 61% of total industry revenues. Of the top ten software companies in 1990, five did not make the
list in 2000, either because they went out of business or were acquired. This is remarkable turnover compared to some industries, such as pharmaceuticals, where similar comparisons from 1990 and 2000 show that eight of ten firms made both
lists (and the ones that did not were acquired by others that did).

Other studies on software patents are linked by Zura, here.

"Of course, this does not imply the patent system has no costs; or that the costs are exceeded by the benefits of the system," comments Stephan Kinsella. "Studies have not conclusively established that the benefits of the patent system outweigh its costs," he concludes in "There's No Such Thing as a Free Patent," citing these articles.

More links to recent patent law scholarship from Google Scholar, here.

Honda Files Unfair Import Complaint Against Wuxi Kipor Power

On September 19, 2006, Honda filed a "Section 337" complaint requesting that an unfair import investigation be instituted involving "Engines, Components Thereof and Products Containing the Same." The proposed respondent is Wuxi Kipor Power Co., Ltd., of China, and the complaint has been designated as confidential and assigned Docket No. 337-2502.

Such complaints typically include an allegation of intellectual property infringement and a request that the infringing godds be excluded from entry into the United States. The Commission now has 30-35 days from the filing date of the complaints in which to decide whether to institute the investigation. Upon institution, the proposed respondent will be served with the Complaint via postal mail and an Administrative Law Judge will schedule discovery, conduct a trial, and issue a written "Initial Determination," usually within about 10 months. Due to the expedited nature of these proceedings, and availability of general exclusion orders affecting non-parties, it is important to notify any potential importers of similar products as soon as possible.

Click here for more information on the importance of monitoring these ITC investigations, and click here for a free audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission." For the latest details on a particular Section 337 investigation and/or other intellectual property matter, contact me, Bill Heinze (Bill.Heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley in Atlanta, Georgia.

USPTO PatentIn Training

The United States Patent and Trademark Office will hold a free training session for PatentIn 3.3 on Wednesday, December 6, 2006 at the Carlyle Townhouse, Room 1A54, 551 John Carlyle Street, Alexandria, VirginiaThe session will run from 9:30 AM to 3:30 PM, with a one-hour lunch break from 11:30 AM to 12:30 PM.

The PatentIn software facilitates the creation of sequence listings for inclusion in U.S. patent applications.

Rethinking the Federal Circuit's Patent Monopoly

In "Rethinking Patent Law's Uniformity Principle," Professors Craig Nard and John Duffy start with the proposition that uniformity is only one of several considerations that should guide the institutional design of our patent system. "Equally important guiding principles include diversity and competition, both of which have been largely absent from patent law for more than 20 years," they write:

The criticisms currently levied against the Federal Circuit — that it maintains excessive insularity, is subject to path dependency in its case law, and produces inadequately nuanced jurisprudence — can be traced back ultimately to the court’s chief structural limitation: The court lacks the benefit of sister-circuit jurisprudence that would engender a healthy competition of rationales and provide a mechanism for testing legal innovations. Accordingly, the article proposes that in addition to the Federal Circuit, at least one, and perhaps two or three, extant circuit courts should have jurisdiction to hear appeals relating to patent law.

This proposal represents a shift in strategy from one dominated by the pursuit of uniformity, to one where competition and diversity are equally important. As the literature from many other areas suggests, a choice between centralized and decentralized institutions cannot and should not be made with
a polar solution. The issue is one of optimization. In 1982
Congress decided that the optimal number of federal appellate courts deciding patent cases was fewer than thirteen; we suggest that the optimal number may also be greater than one.

The authors acknowledge that determining the optimal number of courts is "very difficult, but also not necessary" for purposes of their paper. Nonetheless, they offer "two or three" as "a reasonable number" considering the "importance of moving slowly when embarking upon reform initiatives." In addition to the Federal Circuit, they suggest that at least one extant circuit court be allowed to hear district court appeals relating to patent law. Both the Federal Circuit and United States Court of Appeals for the D.C. Circuit would then have jurisdiction over appeals from the Patent and Trademark Office.

For more "New Patent Scholarship," check out Boston University Law School Visiting Assistant Professor Dennis Crouch's "Patently-O Blog."

"Patent It Yourself" Update Blog and Nolo I/P Podcasts

David Pressman, author of "Patent It Yourself," has created a blog that provides updates regarding patent law, and the book itself. The blog (which is not managed by or affiliated with the book's publisher Nolo) can be found at www.patentityourself.blogspot.com.

Here are a few of his recent updates:

1. Omit the Objects and Advantages section entirely (many patent attorneys are now doing this) or don’t name it “Objects and Advantages”.
2. Don’t refer to “the invention” or call any embodiment “preferred”; instead simply refer to “this embodiment” or a “first embodiment”.
3. Keep the Summary and the Abstract general; don’t include any details of the invention that you would not want to be used to limit the invention. I advise simply paraphrasing your broadest claim for the Summary.

And check out these free Nolo podcasts on intellectual property topics:

• Inventors and Patents: Part Two
• Inventors and Patents: Part One
• Secrets of Profitable Licensing Deals
• What's in the Public Domain?
• Protecting Business Ideas
• Songwriters and the Law
• Trademarks and Business Names

More Legislation to Fight Ambush Marketing

According to James Nurton writing for Managing Intellectual Property, New Zealand has now become the latest country to propose special protection for "ambush marketing" in the lead up to hosting the 2011 Rugby World Cup and the 2015 ICC Cricket World Cup. Other countries which have already passed such laws include Australia, South Africa, and the United Kingdom.

According to New Zealand Sports and Recreation Minister Trevor Mallard, the term "ambush marketing" was invented in the early 1990s by a marketing executive at American Express, Jerry Walsh:

In its original concept, the term ambush marketing was intended to convey the idea of healthy competition. But since the early 1990s the term has acquired negative connotations and now means something akin to commercial theft. Ambush
marketing describes the actions of companies or advertisers who seek to associate themselves (their goods or services) with a sponsored event such as the Olympic or Commonwealth Games or the Rugby World Cup. The ambush marketer
cashes in on the goodwill and popularity of the event by creating an association between itself and the event without having to pay any sponsorship fees. It is a form of "free riding."

"It is impossible to host major events these days without enormous financial contributions from large sponsors," says Mr. Mallard. "These companies will not provide sponsorship dollars if others are allowed to manipulate public perceptions by falsely suggesting a link with these events."

On the other hand, Abram Sauer writes for BrandChannel.com that as ambush marketing becomes more and more widespread – and acceptable – the biggest losers will be the events themselves:

. . . the bottom line is that ambushing is probably just the next step on the marketing evolutionary ladder. Never a gentle industry to begin with and with consumers becoming increasingly conscious about being the end of the means,
brands that spend their time sniveling about "fairness" will most likely have little audience for their whimpers. Adidas America spokesperson Travis Gonzolez sums up the ambush marketing debate, "If everyone throws up their logos, it’s all-out war."

"Sport," George Orwell once said, "is just war minus the
shooting."

Australian I/P Law Revisions Allow Springboarding

The Australian Intellectual Property Laws Amendment Bill 2006 was passed by the Senate on September 14, 2006 and is expected to be implement with Royal Assent from the Governor General has in a few days.

Beginning 28 days after Royal Assent, the bill will reportedly allow "springboarding" as an exception to patent infringement on any pharmaceutical patent at any time for purposes solely in connection with gaining regulatory approval of a pharmaceutical product in Australia or another territory. Prior to these amendments, the Patents Act contained a limited provision that only allowed springboarding on pharmaceutical patents after they had received an extension of patent term. This amendment aims to bring Australia’s springboarding provisions closer to those of competitor countries and improve the environment for generic pharmaceutical companies conducting research and development in Australia.

The Bill amends the prior user defence in the Patents Act to clarify that the prior user’s rights include exploiting the product, method or process, that the prior use be only in Australia and that the prior use right may be assigned but not licensed. This amendment reaffirms the Government’s commitment to ensuring that the legitimate interests of third parties are not compromised by the grant of a patent. However, this amended provision only applies to patents granted as a result of applications filed on or after commencement of the amendment.

The Bill also amends the Patents Act to allow for exemplary damages to be awarded by a court in patent infringement actions, for example, in the case of flagrant or wilful infringement of a patent. The amendments only apply to infringements of patents occurring on or after the commencement of the Schedule.

The Latest on the Patent Bar Exam

Free Audio Only Webcast
September 21, 2006
1:00 p.m. - 2:00 p.m. (E.D.T.)

John M. White of PLI will discuss

• Who can take the Exam
• How you apply to take the Exam
• How the Exam works
• How you should study for it
• And when you should take it (law students note: you don't have to...and probably shouldn't...wait until you graduate to take this Exam).

They'll also let you know about the new material that the Exam will be testing, starting on or after October 19, 2006. According to their website,

For those of you who have already started preparing for the Patent Bar Exam, using materials based on the previously tested MPEP (8th Edition, Revision 2) and taking your Exam on or after October 19, 2006 when a new version of the MPEP
will be tested (8th Edition, Revision 4), we have a separate briefing that will bring you quickly up to date on the new rules in the later edition of the MPEP:

The New Patent Bar Exam: Newly Tested Material - Revision 4, September 19th, 1-2:30 PM eastern.

In this briefing, John White (chair of PLI's Patent Bar Review Course) will go over the new material from the MPEP being tested on the Patent Bar Exam. All told, the PTO released 900 pages of new rules and training materials between Revision 2 and Revision 4. Two-third of the chapters have been revised. We've boiled that down to an easily digested summary, with the key points that we think are most testable and sample questions on this newly testable material.

Business Method Patent Enforcement Statistics

According to William G. Pecau and Seth A. Watkins writing for Intellectual Property Strategist on September 11, 2006:

• The 5,000 U.S. patents issued in Class 705 from 2001 to 2005 is about the same number issued during the previous 15-year period.
• 425 of those patents have been involved in lawsuits
• less than 10 percent of these litigated patents have been subject to re-examination since 2000
• 70 of those lawsuits were filed in the District Court for the Eastern District of Texas since 2000
• 20 percent of litigated patents from Class 705 have include at least 50 claims.

Types of Protection Available via the PCT in PCT Contracting States

"Types of Protection Available via the PCT in PCT Contracting States" is available from the World intellectual Property Organization here.

Under the automatic designation system, effective for all international applications filed on or after 1 January 2004, the filing of the request constitutes the designation of all Contracting States bound by the PCT on the international filing date, for the grant of every type of protection available and, where applicable, for the grant of both regional and national patents (PCT Rule 4.9).

Something to Crow About

Via Says-It.com

TGIF for Ronald McHummer's Sign-O-Matic

Ronald McHummer's Sign-O-Matic is an interactive website that lets you write your own slogan or message about the [Happy Meal] Hummer giveaway, display it on a McDonald's marquee, and send a message to the president of the fast-food chain.

"Parody, dilution, infringing TM use, free spech, fair use?" posts Martin Schwimmer at The Trademark Blog. "Have it your way."

Thank Goodness It's Friday (and more "Tales from the Public Domain"),

--McBill Heinze

MPEP 8th edition, Rev. 5 Now Available

The USPTO's Manual of Patent Examination Procedure (8th edition, revision 5) is now availalbe in PDF with a searchable index. The revision incorporates the changes necessitated by the following final rules:

1. "Changes To Implement the Cooperative Research and Technology Enhancement Act of 2004," which became effective on September 14, 2005;
2. "Provisions for Claiming the Benefit of a Provisional Application With a Non-English Specification and Other Miscellaneous Matters," which became effective on November 25, 2005;
3. "Changes To Implement the Patent Search Fee Refund Provisions of the Consolidated Appropriations Act, 2005," which became effective on March 10, 2006; and
4. "Clarification of Filing Date Requirements for Ex Parte and Inter Partes Reexamination Proceedings," which became effective on March 27, 2006.

Daily Supreme Court Transcripts Online

Beginning with the October 2006 Term, the U.S. Supreme Court will make the transcripts of oral arguments available free to the public on its Web site, http://www.supremecourtus.gov/index.html, on the same day an argument is heard by the Court.

Transcripts can be located by clicking on the "Oral Arguments" prompt on the home page of the Court's Web site and selecting "Argument Transcripts." Transcripts will be listed by case name and the date of oral argument and are permanently archived beginning with the 2000 Term on the Court's Web site. Transcripts prior to the 2000 Term are maintained in the Court's Library.

Brazilian TM Office Goes Electronic

According to Walter W. Palmer writing for INTA Bulletin on September 15, 2006, the Brazilian Instituto Nacional da Propriedade Industrial will require all trademark-related filings to be made electronically starting November 2006.

According to the International Monetary Fund and the World Bank, Brazil has the ninth largest economy in the world at purchasing power parity. After a GDP increase of 0.5% in 2003, Brazil showed robust growth in 2004 of 5.2%, decreasing to the pace of 2.3% (2005). The population of Brazil is a racial mix of native Amerindians, Portuguese, Africans, Italians, Spaniards, Germans, Syrians, Lebanese and Asians, among others.

Learn more on "Doing Business in Brazil."

One Man Cannot Stand in the Way of Those DYKES ON BIKES

In McDermott v. San Francisco Women's Motorcycle Contingent, Opposition No. 91169211 (September 13, 2006, earlier proceedings here), the U.S. Trademark Trial and Appeal Board held that, although the pro se opposer sufficiently pleaded a "real interest" in the proceedings, he did not have standing because he had failed to alleged facts which, if proven, would show he has a "reasonable" basis for his belief of damage.

The notice of opposition included the following relevant allegations:

I herewith state my opposition to the United States Patent and Trademark Office (USPTO) granting Any Trademark or other form of Government Approval or Endorsement to the Organization known as "Dykes on Bikes"; the Political
Term "Dykes"; or Any Other Group or Activity Associated with the Annual Illegal San Francisco Dyke Hate Riot; or the Criminal and Civil Rights Violations attendant to this Anti Male Hate Riot and March cited by "Dykes on Bikes" in its application. Statement of Harm:

I am a Male Citizen of the United States and a fourth generation native son of the City of San Francisco. As such, during the annual illegal government supported San Francisco Dyke Hate Riot; I and ALL other Male Citizens are subject
to Criminal Attack and Civil Rights Violations committed by "Dykes" taking part in this Anti Male Hate Riot, including attacks often led or inspired by members of "Dykes on Bikes".

...[M]y opposition falls in to[sic] two broad categories, reflecting the dual nature of the Harm from pandering to such "Dykes", whether on motorcycles or not.

1. The Ongoing Criminal and Civil Rights Violations committed by "Dykes on Bikes" and All Dykes who participate in the annual illegal Anti Male hate riot/takeover of public lands culminating in the illegal "San Francisco Dyke March";

2. The attempt to have the USPTO act as Political Agent of the Misandry Lobby, by granting approval to their uses of the term "Dyke", so as to provide them with Government Backing for Thought & Speech Policing throughout America....

The Endorsement by the Government of a Politically Correct definition and usage of the term "Dyke", and a corresponding disfavor for all other accurate if unflattering usage, is a clear
political goal of this Trademark application....

The term "Dyke" has long acknowledged the Misandry of those who choose to wear that title, and the deep obsessive hatred of Men and Male Gender traits that go with it. The attempt to use
this Trademark to further the goals of Separatist/Neo Exterminationist Misandrists ... as well as Sadists and Sado-Masochistic Bondage and Flogging Fanatics such as "Dykes on Bikes" leader Vic Germany, is a shameful abuse of the
trademark process.

In the case of a notice of opposition, an opposer must also satisfy two judicially-created requirements in order to have standing: (1) a "real interest" in the proceedings, and (2) a "reasonable" basis for his belief of his damage. The Federal Circuit the court interpreted the real interest prong as meaning that the opposer must plead “a direct and personal stake in the outcome of the opposition.” In applying this standard, it found that an opposer sufficiently pleaded a real interest in the case by alleging “that he would be damaged by the registration of the marks because the marks disparage his values, especially those values relating to his family;” that opposer was “a family man” who believes that the “sanctity of marriage requires a husband and wife who love and nurture one another”; that opposer was a member of a group that could be potentially damaged by marks that allegedly are synonymous with “wife-beater and wife-murderer” and that the marks are scandalous because they would “attempt to justify physical violence against women.” In re Ritchie, 50 USPQ2d at 1025 (Marks: O.J. SIMPSON, OJ, and THE JUICE)

With regard to the second prong, the court interpreted the "belief of damage" language in Section 13 as meaning that the belief must be more than a subjective belief, and held that the reasonableness of the belief could be demonstrated in various manners. The first method for an opposer to plead the requisite level of "reasonableness" is to allege that he possesses a trait or characteristic that is “clearly and directly implicated by the proposed trademark.” In other words, marks that contain terms that are allegedly offensive to a particular group may be challenged by members of that group.

The second method for alleging the reasonableness of an opposer's belief of damage is that others share the same belief of harm from the proposed trademark, and that the opposer is not alone in his belief of damage. The allegation of “objective evidence” could take place in various forms, including “surveys,” “petitions,” or “affidavits from public interest groups representing people who allegedly share the damage caused by the mark.”

According to the Board,

Opposer has failed to allege that he possesses a trait or characteristic that is inherently implicated by applicant's applied-for mark -- that is, that he is a "lesbian" or "dyke." Rather, as opposer alleges in the beginning of his notice of opposition, "I am a Male Citizen of the United States and a fourth-generation native son of the City of San Francisco." Applicant’s mark is therefore only subjectively offensive to opposer. Thus, similar to the plaintiff involved in Ritchie, the opposer in this case must resort to the second method for demonstrating the reasonableness of his belief of damage. In this regard, opposer has failed to make a sufficient leading.

A review of the notice of opposition shows that
opposer has failed to allege any facts that others (i.e.
men) share his belief of damage. All we can find
in the pleading is that opposer himself is personally
offended by the “illegal behavior” and “illegal acts”
purportedly committed by participants in applicant's parade services and that he objects to the USPTO’s supposed endorsement of applicant’s activities in approving applicant’s mark for publication. Opposer has not made any objective allegations regarding the reasonableness of his belief of damage, such as by alleging that he has obtained affidavits or signatures
on petitions, or conducted surveys that show, as required by Ritchie, that other men share his belief in damage if applicant's mark were to register. Opposer has throughout the notice of opposition referenced various excerpts from publications (i.e. articles, books, statements issued by applicant). However, none of the excerpts provides objective evidence that others who are members of opposer's
group (that is, men) would perceive applicant's mark as disparaging or offensive to men.

In addition, opposer's allegations regarding applicant’s conduct vis-à-vis men (e.g., allegations that applicant bans men from public streets and parks during the duration of applicant’s parade and that "large numbers of ‘Dykes on Bikes’ [use] THEIR MOTORCYCLES AS OFFENSIVE WEAPONS AGAINST MEN") do not constitute an objective pleading that other men concur with opposer's belief in damage. As to the litany of criminal or civil wrongdoings participants in applicant's parades purportedly have committed, the Board is not the proper venue for bringing such objections -- the Board’s jurisdiction is limited to determining whether trademark registrations should issue or
whether registrations should be maintained; it does not have authority to determine whether a party has engaged in criminal or civil wrongdoings.

Lastly, with regard to opposer’s allegations that the
USPTO, in approving applicant’s mark for publication, has given its stamp of governmental imprimatur, it is well settled that registration of a trademark reflects no endorsement by the USPTO of the applicant’s products or services. See In re Old Glory Condom Corp., 26 USPQ 1216 (TTAB 1993).

In sum, we find that opposer, by his allegations, cannot be considered more than a mere intermeddler in this case. On this basis, we find that opposer lacks the requisite standing to bring the instant opposition proceeding. Accordingly, applicant's motion to dismiss is granted, and the opposition proceeding herein is dismissed.

Ride with pride, ladies, ride with pride.

USPTO Revised Fees Effective September 15, 2006

The U.S. Patent and Trademark Office's Revised FY2006 Fee Schedule, with "revisions effective Septyember 15, 2006" is available here. The only changes appear to be for "PCT Fees to Foreign Offices" which are subject to periodic change due to fluctuations in exchange rate. Specifically, fee code 1704 - International Search (EPO) - was increased from $1871.00 to $2059.00 and fee code 1709 - International Search (KIPO) - was increased from $218.00 to $232.00

Still, it would be nice if that was explained on the USPTO's website.

Trademark Fee Schedule Links

The IPR HelpDesk has compiled a list of links to the official fee schedules for Community trade marks, International trade marks, National trade marks. According to their recent paper,

In most of the countries, the payment of basic fees is a formal requirement for considering a trade mark application as filed. In order to proceed to the registration of a mark, a receipt of payment of the required fee needs to be attached to the submitted application form. Normally, trade mark maintenance fees are paid for 10 years of protection. After a decade, the right holder pays the so called renewal fee for the next period of protection. The fees depend on the number of classes (International (NICE) Classification of Goods and Services) of goods and services. There is a basic fee for the first three classes included in the specification. Additional fees are required for each class of goods and services exceeding three.

"Colorant Selection Mechanism" Construed as Means-Plus-Function Limitation

In Massachusetts Institute of Technology v. Abacus Software (September 13, 2006), the Federal Circuit agreed that the phrase "colorant selection mechanism" should be construed as a means-plus-function limitation in claim 1 of U.S. Patent No. 4,500,919 (the "’919 patent"):

1. A system for reproducing a color original in a medium using a selected multiplicity of reproduction colorants, the system comprising in serial order:

a. a scanner for producing from said color original a set of three
tristimulus appearance signals dependent on the colors in said original;

b. display means connected to the scanner for receiving the appearance signals and aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance
signals; and

c. colorant selection mechanism for receiving said modified appearance signals and for selecting corresponding reproduction signals representing values of said reproducing colorants to produce in said medium a colorimetrically-matched reproduction.

According to the opinion of the court by Circuit Judge Dyk:

The phrase "colorant selection mechanism" is presumptively not subject to 112 ¶ 6 because it does not contain the term "means." CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir. 2002). However, a limitation lacking the term "means" may overcome the presumption against means-plus-function treatment if it is shown that "the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’" Id. (quoting Watts v. XL Sys., Inc., 232 F.3d 877,
880 (Fed. Cir. 2000)).

We agree with the district court’s conclusion that the presumption here is overcome and that the phrase "colorant selection mechanism" should be construed as a means-plus-function limitation. The generic terms "mechanism," "means," "element," and "device," typically do not connote sufficiently definite structure. In Personalized Media Commc’ns, LLC v. Int’l Trade Com’n, 161 F.3d 696 (Fed. Cir. 1998), we addressed the claim term "digital detector." We contrasted the term "detector," which recited sufficient structure to avoid 112 ¶ 6, with "generic structural term[s] such as ‘means,’ ‘element,’
or ‘device,’" which do not. Id. at 704. Similarly, in Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354 (Fed. Cir. 2004), we recognized that Section 112 ¶ 6 does not apply to "a term that is simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for.’" Id. at 1360.

Here the patentee used "mechanism" and "means" as synonyms. See ‘919 patent, claim 3, col. 15 l. 51 (referring to "colorant selection means") (emphasis added); id., claim 14, col. 17 ll. 1-2 (same). At least one dictionary definition equates mechanism with means. See The Random House Webster’s Unabridged Dictionary. 1193 def. 2 (2d ed. 1998) (defining "mechanism" as "the agency or means by which an effect is produced or a purpose is accomplished"); see also The Random House Dictionary of the English Language – The Unabridged Edition 889 (1973) (same). The term "mechanism" standing alone connotes no more structure than the term "means."

Claim language that further defines a generic term like "mechanism" can sometimes add sufficient structure to avoid 112 ¶ 6. For example, in Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996), which involved a mechanical device, we held that 112 ¶ 6 did not apply to the term "detent mechanism," because "the noun ‘[d]etent’ denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms." Id. at 1583. The court recited several dictionary definitions for "detent," including "a mechanism that temporarily keeps one part in a certain position relative to that of another, and can be released by applying force to one of the parts." Id. (internal quotation marks and citations omitted). These definitions connoted sufficient structure to avoid 112 ¶ 6. We also concluded that "[t]he fact that a particular mechanism—here ‘detent mechanism’—is defined in functional terms is not sufficient to convert a claim element containing that term into a ‘means for performing a specified function’ within the meaning of [112 ¶ 6]" because "[m]any devices take their names from the functions they perform." Id. [Footnote here: Of course, a claim term defined solely in functional terms, without more, would fall within Section 112(6). See Al-Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999); see also Micro Chem., Inc. v. Great Plains Chem. Co., Inc., 194 F.3d 1250, 1258 (Fed. Cir. 1999).]

In contrast, the term "colorant selection," which modifies "mechanism" here, is not defined in the specification and has no dictionary definition, and there is no suggestion that it has a generally understood meaning in the art. We therefore agree with the district court that "colorant selection mechanism" does not connote sufficient structure to a person of ordinary skill in the art to avoid 112 ¶ 6 treatment. [Footnote here: In Lighting World, we held that it was appropriate to look to dictionaries "to determine if a disputed term has achieved recognition as a noun denoting structure," and determined that "connector" had a reasonably well-understood meaning as a name for a structure. 382 F.3d at 1360-61. That structure was defined in terms of the function it performed, "connecting." Id. Here, the term "mechanism" is not defined by a function that particularizes its structure.]

The district court found that the functions of the "colorant selection mechanism," as recited in claim 1, are "receiving said modified appearance signals" and "selecting corresponding reproduction signals representing values of said reproduction colorants to produce in said medium a colorimetrically-matched reproduction." The court further held that the corresponding structures are the components of the "ink correction module (ICM)." MIT does not argue that if means-plus-function treatment was appropriate, the district court erred in its conclusions regarding the function and corresponding structure of the term. Therefore, the district court’s construction will govern further proceedings.

Claim 1(b) of the ‘919 patent recites, "display means connected to the scanner for receiving the appearance signals and aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals." ‘919 patent, col. 15, ll. 37-41 (emphasis added). The phrase, "aesthetic correction circuitry for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals," does not contain the term "means," and is therefore presumptively not a means-plus-function limitation. Nonetheless, the district court held that the presumption was overcome and proceeded to define the function and related structure.

MIT urges that the term "aesthetic correction circuitry" connotes sufficient structure to avoid 112 ¶ 6 treatment. We agree. . . .

This is the first decision in which the Federal Circuit has upheld a mean-plus-function claim construction where the claim did not lterally recite the word "means." "It is certainly difficult enough to interpret a 'means' term stated as such," comments Professor Wegner. "The difficulties with determining when to give a non-means limitation a 'means' interpretation, as here, geometrically confuses the issue even further."

Indeed, Chief Judge Michel would have gone even further to conclude that the "aesthetic correction circuitry" was outside the purview of section 112. According to the dissent:

The district court correctly interpreted "aesthetic correction circuitry" as a means-plus-function claim despite the absence of the term "means for" in view of the presence of functional language because the limitation fails to recite sufficiently definite structure, as our precedent requires. Thus, the
presumption against application of section 112, paragraph 6 was overcome. . . .

. . . [N]ot every "adjectival qualification" ("A.Q."), connotes sufficiently definite structure for the term "circuit," but rather an "appropriate" A.Q., as demonstrated in Apex by technical dictionaries.

. . . . Unlike in Apex, here we have no evidence whatsoever that "aesthetic correction" is such an "appropriate" A.Q. that it would connote sufficiently definite structure to one skilled in the art. Indeed, "aesthetic correction" itself may be solely functional language. For example, we were shown no evidence that any technical dictionaries suggest to the artisan a sufficiently definite structure for "aesthetic correction circuitry" or even list such a term. Nor did experts from either side opine that one skilled in the art would understand "aesthetic correction circuitry" to connote sufficiently definite circuit structure.

While Microsoft’s expert Anthony Johnson stated that one skilled in the art would have understood "aesthetic correction circuitry" to mean "hardware that allows an operator to interactively introduce changes into the appearance signals to create modified appearance signals," this does not connote definite structure, but merely some unspecified hardware structure. The record on appeal does not reflect the opinion of MIT’s expert, Bradley Paxton, regarding the meaning of "aesthetic correction circuitry." Rather, in the paltry portion of his testimony in the appellate record, he merely discusses "circuitry" and the fact that "[c]ircuitry contains a lot of components, including wires."

This fails to impart definite structure to "aesthetic correction circuitry" because the components and their arrangements are unstated. The inventor, William Schreiber, explained that "aesthetic correction circuitry" means to one skilled in the art "hardware or software used by the system operator to introduce desired alterations into the appearance signals of an image." Again, this does not elucidate a definite structure, but merely suggests some generic structure, namely, some unspecified arrangement of unidentified hardware components or software. Neither of MIT’s experts even attempted to opine that "aesthetic correction" connotes definite structure such that "aesthetic correction circuitry" would suggest a sufficiently definite array of components to one skilled in the art. Thus, I cannot discern sufficiently definite structure from the term "aesthetic correction circuitry" to avoid means-plus-function treatment.

Here, we face a description of only the circuit’s function, not of how it operates with other circuits or devices to carry out that function. Moreover, even assuming we had a description of the circuit’s operation, "for interactively introducing aesthetically desired alterations into said appearance signals to produce modified appearance signals," ’919 patent, col. 15, ll. 38-41, we were shown no evidence from which to conclude that this description identifies the circuit components or conveys the arrangement of circuit components to one skilled in the art so that he could draw the circuit’s elements and their sequence.

In sum, both Apex and Linear relied on additional information in the claim to determine whether the limitation as a whole conveyed sufficiently definite circuit structure, i.e., elements or components and their sequence, to an artisan. Apex relied on dictionary definitions of an accompanying "appropriate" A.Q. that suggested sufficiently definite structure to one skilled in the art. Linear relied on expert testimony that the claim’s description of the operation of the circuit connoted definite structure. Here, we have neither a dictionary definition to establish that "aesthetic correction" is an appropriate A.Q. to suggest definite structure nor expert testimony that the accompanying description of the operation of the circuit, if any, connotes definite circuit structure–sequence of particular circuit components–to an artisan so that he could draw on paper the arrangement of the components needed.

For more information on how to handle this latest dilemma for patent practitioners, check out my audio visual presentation on "Structure, Function, and the Importance of Claim-Type Differentiation." See slide #7 for a summary, or, better yet, invite me to present this material to your organization in person.

InterDigital Receives LES Licensing Achievement Award

InterDigital Communications Corporation was awarded the "Licensing Achievement Award" by the Licensing Executives Society 2006 Annual Meeting on September 11, 2006. Five days earlier, it was reported that an arbitral tribunal awarded InterDigital roughly $134 million in past royalties plus interest on Samsung's sale of various mobile phone technologies through 2005.

Since 1992, InterDigital has reportedly generated over $500 million in patent royalty and technology licensing payments. Patent and technology licensing represent nearly 94 percent of the $163 million in revenue that InterDigital's 325 employees generated in 2005. According to their website,

InterDigital believes that, in many instances, licenses for certain of our patents are required for third parties to manufacture and sell digital cellular products in compliance with TDMA and CDMA-based standards currently in use
worldwide. Accordingly, we offer non-exclusive, royalty bearing patent licenses to telecommunications manufacturers worldwide that manufacture, use or sell, equipment utilizing our extensive portfolio of essential or commercially important intellectual property, including patents relating specifically to
digital wireless radiotelephony technology, Time Division Multiple Access (TDMA) and Code Division Multiple Access (CDMA). . . .

Through active participation in both the principal wireless 3G standards and IEEE 802 working groups of the worldwide standards bodies, InterDigital is engaged in helping the industry define the next generation of wireless technologies.

UTBMS I/P Billing Code Update

The American Bar Association's Uniform Task-Based Management System website at http://www.abanet.org/litigation/utbms/ includes background and information on the current Litigation Code Set, Counseling Code Set, Project Code Set, Bankruptcy Code Set, along with the current Activity Codes and Expense Codes. This information is also available in a single document at http://www.abanet.org/litigation/utbms/utbms.pdf.


The UTBMS Update Initiative website at http://www.utbms.com/home.htm includes an Intellectual Property WorkGroup page at http://www.utbms.com/IP.htm#Patent where "An Introduction to Intellectual Property Task-Based Billing" can be downloaded here. The proposed Patent Code Set may be downloaded here, the proposed Trademark Code Set can be downloaded here, and the proposed revisions to the revised Project Code set can be downloaded here.

The Update Initiative is collecting comments on these proposed extensions to the UTBMS through November 15, 2006:

The public comments on the Patent Code Set are viewable at http://utbms-patent.blogspot.com/. Comments sent to utbms.patent@blogger.com will be automatically posted at that site.

The public comments on the Trademark Code Set are viewable at http://utbms-trademark.blogspot.com/. Comments sent to utbms.trademark@blogger.com will be automatically posted at that site.

The public comments on the Project Code Set are viewable at http://utbms-project.blogspot.com/. Comments sent to utbms.project@blogger.com will be automatically posted at that site.

General comments on the UTBMS are viewable at http://utbms-general.blogspot.com/. Comments sent to utbms.general@blogger.com will be automatically posted at that site.

A final version of the code sets should be available in early 2007.

WIPO on Managing Patent Costs

In "IP and Business: Managing Patent Costs," World Intellectual Property Organization Magazine (September 2006) suggests being clear about your IP strategy:

An important first step is to put in place a clear and focused IP strategy that serves the overall strategic objectives of the business.Patent applications should not be filed for every patentable invention. Such a strategy could send patenting costs spiraling out of control. Businesses should only obtain and maintain patent protection on inventions that will bring sufficient commercial or strategic benefits. Trade secrets and defensive offer alternatives to patenting that have a much lower cost than patenting publication (see WIPO Magazine articles "Trade Secrets Are Gold Nuggets: Protect Them," Issue 4/2002, and "Launching a New Product: Freedom To Operate," Issue 5/2005).

On managing patent costs, they also acknowledge that

A patent application drafted and prosecuted without professional assistance will
save on drafting fees, but risks resulting in a poor quality patent, which lacks
the well-drafted claims necessary to cover all the key business applications.
There is little point in being "penny wise and pound foolish" when it comes to
patent applications covering inventions that protect the core competencies of a
business. However, the national or regional patent office may have a list of
reliable local patent agents, attorneys or IP law firms that provide pro bono
(free) or reduced rate IP services, including the drafting of the first patent
application, to a new client or to a first time applicant. Ensuring that all
pertinent information is provided from the start to the patent drafter will also
save time and money.

Trademark Functionality Did Not Require Literal Patent Infringement

In FUJI KOGYO CO., LTD v. PACIFIC BAY INTERNATIONAL, INC., (6th Cir.; Augiust 23, 2006) Fuji argued that the district court erred when it considered the utility patents as evidence of design functionality (for fishing rod line guides) without first determining whether Fuji’s trademarked product configuration was claimed in any of the patents. "Fuji dissects the language of its patents in an attempt to distinguish its claims from similar features in its trademarks," wrote Circuit Judge Boggs. "In light of TrafFix, we find these arguments unconvincing:"

Fuji argues that we must remand this case to the district court so that court can conduct a claim construction analysis in the first instance before we can evaluate the patents under the doctrine of equivalents. This argument fails, not because it is an incorrect statement of the law regarding infringement, but because the district court was never charged with determining the validity of the patents. Rather, it was evaluating and weighing the patent as evidence of functionality. See Applied
Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006). The patents in this case were probative evidence, see Fed. R. Evid. 401, and the district court, as the trier of fact, could credit or discount the patent evidence by considering the likelihood that various features of the trademarked designs were claimed in any of the patents. Accordingly, we affirm the district court’s use of Fuji’s patents in
its functionality analysis and hold that an evaluation under the doctrine of equivalents is appropriate in the course of this kind of factual finding.

We conclude, in light of the applicable law, that the district court’s determination that Fuji’s registered and claimed trademarks in its previously patented designs were functional was not clearly erroneous. The court’s investigation was properly illuminated by the language of the patents, consideration of the doctrine of equivalents, and witness testimony—in short all the evidence considered during the trial.

Documenting Creative Stinks in Holland

In "Copyright in the Courts: Perfume as Artistic Expression?" (WIPO Magazine, September 2006) Professor Kamiel Koelman discusses a recent decision of the Dutch High Court where it stated that smells could, in principle and in general, be considered protected subject matter. "Dutch copyright law protects only against direct imitation," writes Professor Koelman. "But if there is a high degree of similarity, the alleged infringer is assumed to have copied the original, and has the burden of proving that he created his product independently."

His advice:

Document the development of your perfume extensively, just in case it happens to
smell like a fragrance that is already on the market. The documentation may help
prove that the similarity is coincidental. And if you stand on the other side
and sue someone else for infringement, it ensures that he has the burden of
trying to prove that you copied a pre-existing scent. The same applies if you
produce wines or run a restaurant. Be prepared for a competitor claiming that
you infringed his rights to the bouquet of his Grand Cru, or to the exquisite
smells of his culinary creations. Of course, for now this is necessary only in
Holland.

U.S. Copyright Royalty Board Amends Procedural regulations

Effective September 11, 2006, the Copyright Royalty Board is adopting amendments to the procedural regulations governing the practices and procedures of the Copyright Royalty Judges in royalty rate and distribution proceedings.

Click here for the final rule with request for comments due by November 13, 2006.


Finding the right administrative structure to set rates and make distributions for the expanded array of statutory licenses has proven "problematic." Initially, Congress established a stand-alone administrative agency--the former Copyright Royalty Tribunal--to perform these tasks. However, “there was insufficient work to justify the existence of a permanent body.” Next, in 1993, Congress transferred the ratemaking and distribution functions to the Library of Congress. In cases where the parties could not reach agreement, the controversies would be referred to an ad hoc CARP. The CARP decisions were then reviewed by the Librarian for possible arbitrariness. But the CARP system presented perceived problems of continuity, consistency, and expense.

Under the Reform Act, three permanent Copyright Royalty Judges will be appointed by the Librarian of Congress to encourage settlements and, when necessary, resolve statutory license disputes. The expectation is that the Copyright Royalty Judges, appointed to staggered, six-year terms, will provide greater decisional stability, yielding the advantages of the former Copyright Royalty Tribunal, but with greater efficiency and expertise.

On February 7, 2005, the Librarian of Congress appointed an interim Chief Copyright Royalty Judge and the Copyright Royalty Board (“CRB” or “Board”) was subsequently established within the Library of Congress to house the Copyright Royalty Judges. These regulations implement the requirement of section 803(b)(6)(A) of the Copyright Act that directs the Copyright Royalty Judges to “issue regulations to govern [their] proceedings.”

Patent and Trademark Law Consolidation Proposal

"To reflect the emergence of intellectual property law as a distinct field of law," this proposed bill from the House Office of the Law Revision Counsel "consolidates the Lanham Act, governing trademarks, and various other provisions of law relating to intellectual property with the patents title."

According to madisonian.net,

The National Law Journal carried an exchange of letters on the wisdom of the change. Tom McCarthy, author of McCarthy on Trademarks and Unfair Competition, opposes it; in the August 28 issue, Peter LeFevre explains that the change is nothing more than Congress continuing its practice of “enacting individual titles of the code into positive law.

Yes gentlemen, why not the Copyright Act too?

My Apologies for the Glitch Last Week

Please accept my apologies for any inconvenience caused by the truncated articles in last week's distribution of the "I/P Updates Weekly" newsletter. The problem has now been resolved, and since so many subscribers voiced concern, I also wanted to sent a revised issue with the complete articles.

The glitch appears to have originated with the atom feed for my "I/P Updates" news service that was used by my electronic publishing service to create the newsletter. Those of you who are familiar with blogs know that that many offer "full" and "partial" syndication. Atlhough my feed was set for "full" publication format, only a partial feed was published on Monday morning. The feed has now been republished with the full articles, and, even though it was not their fault, my publishing service was kind enough to send out the revised issue.

TGIF for the Pampered Pooch

United States Patent No. 7,090,268

"Dog waste catcher and holder"
Setsuko Borman of Puyallup, Washington (USA)

What is claimed is:

1. A dog waste catcher and holder comprising:

a loop shaped device;
a carrying rod;
means of securing the loop shaped device to an end of the carrying rod in parallel fashion; and
a plastic bag placed inside the loop shaped device, wherein an upper portion of the bag is folded over the loop shaped device and bag ends are tied to the end of the rod.

2. A dog waste catcher and holder of claim 1, wherein said loop shaped device
is made of any material selected from a group consisting of wire, plastic, and
metal.

3. A dog waste catcher and holder of claim 1, wherein said carrying rod is made of any material selected from a group consisting of bamboo, wood, plastic, and metal.

Thank Goodness It's Friday,

--Bill Heinze

Geographic Certification Mark Inherently Distinctive

In Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587 (August 23, 2006), the U.S. Trademark Trial and Appeal Board sustained a Section 2(d) "likelihood of confusion" opposition to the registration of the mark DARJEELING NOUVEAU for tea (where "DARJEELING" was disclaimed) in view of an earlier certification mark registration for DARJEELING by the Tea Board of India.

According Administrative Trademark Judge Holtzman,

Ordinarily, a term that describes the geographic source of a product is not protectable without a showing of acquired distinctiveness. However, Section 2(e)(2) of the Trademark Act which prohibits registration of a mark that is primarily geographically descriptive of an applicant's goods, provides a
specific exception for marks used to certify indications of regional origin under Section 4 of the Act. Thus, the presumption that a geographic term is inherently weak does not attach to geographic terms that are used to certify regional origin. . . . A mark that is registered on the Principal Register is entitled to all Section 7(b) presumptions including the presumption that the mark is distinctive and moreover, in the absence of a Section 2(f) claim in the registration, that the mark is inherently distinctive for the goods. Thus, we consider DARJEELING inherently distinctive as a certification mark indicating geographic origin as it inher identifies the geographic source of the tea.

Single Packaging Not Patenably Distinct

In Ormco Corporation, et al. v. Align Technology, Inc. (August 30, 2006), the Federal Circuit considered whether claim 1 of U.S. Patent No. 6,554,611 claiming

(a) three or more dental appliances with geometries selected to progressively reposition teeth,
(b) instructions regarding order of use, and
(c) a single package for provision of the appliances to the patient

would have been obvious in view of Dr. Truax's practice of preparing multiple appliances along with the regulations of the Food and Drug Administration ("FDA") that generally require the provision of instructions with medical devices. Even though Dr. Truax created several appliances at one time, with the required geometries, Align contended that Dr. Truax never provided his patients with all these appliances in a single package, and that it would not have been obvious to vary Truax in this respect.

According to Circuit Judge Dyk,

A claim can be obvious even where all of the claimed features are not found in specific prior art references, where "there is a showing of a suggestion or motivation to modify the teachings of [the prior art] to the claimed invention." SIBIA Neurosciences, Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1356 (Fed. Cir. 2000) (concluding that patent would have been obvious in light of teachings in prior art which provided motivation and suggestion to modify existing techniques to arrive at method in question). "A suggestion, teaching, or motivation to combine the relevant prior art , 441 F.3d 977, 987-88 (Fed. Cir. 2006) (quoting teachings does not have to be found explicitly in the prior art, as ‘the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references . . . . The test for an
implicit showing is what the combined teachings, knowledge of one of ordinary skill in the art, and the nature of the problem to be solved as a whole would have suggested to those of ordinary skill in the art.’" In re KahnIn re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000)).

However, a reference that "teaches away" from a given combination may negate a motivation to modify the prior art
to meet the claimed invention. See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant." In re Kahn, 441 F.3d at 990 (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)) (internal quotation marks omitted).

Align points out that Dr. Truax examined each patient’s progress before giving that patient a new appliance, and that the Truax reference thus does not provide a motivation or suggestion to provide the appliances at one time. Indeed, Align contends, the Truax reference teaches away from providing all appliances at one time. When Dr. Truax was asked whether he
ever gave patients more than one appliance at a time, he replied, "No, because we want to manage it . . . . [I]t would be ridiculous" to expect the patient to replace appliances on his own. J.A. at 6365. He explained that he provided patients with one appliance at a time because in his view "[s]omeone that knows what they’re doing [i.e., the orthodontist] . . . can see the [tooth] movements [and determine when to change appliances based on those tooth movements]. . . ," so as to prevent the patient from moving too quickly through appliances. Id. In
other words, Truax taught that the treatment was more effective if the orthodontist determined when to change appliances, rather than providing several appliances to the patient and allowing the patient to change from one appliance to the next.

The patented device here (and Truax) avoided the necessity for adjustment by the dentist by the use of multiple appliances that were changed periodically. Align asserts that there is an important difference between the patented device and Truax in that the patented device avoids a visit to the dentist in order to determine when substitution of the new device is appropriate. But there is nothing in the claim language that requires the devices be substitutable by the patient. In other words, the claims do not require that the device be capable of replacement by the patient rather than the dentist, or preclude visits to the dentist during the treatment regimen. Indeed, the specification makes quite clear that the patient may periodically visit the dentist during treatment. The claim does not preclude returning to the dentist to determine the appropriate time to replace appliances, just as Truax taught.

Under these circumstances, we do not think that the single package limitation makes the device of the ‘611 patent claims patentably distinct. Providing the devices to the patient in one package, as opposed to two packages or three packages is not a novel or patentable feature in the light of the well-known practice of packaging items in the manner most convenient to the purchaser.

We also think that adding the instructions limitation does not
render claim 1 of the ‘611 patent non-obvious. The parties dispute whether Dr. Truax provided instructions to his patients regarding the order of use of the appliances. However, Align conceded at oral argument that the general practice of providing instructions on how to use a medical device would have been
obvious. Furthermore, statutes and regulations promulgated under the Food, Drug, and Cosmetic Act ("FDCA") generally require instructions for medical devices. Whether or not these regulations apply to the specific orthodontic devices involved here, they supply ample evidence of a motivation to provide
instructions as to how to use the devices.

Claims 2, 3, and 7, which depend from claim 1, are also invalid. These claims simply add further limitations that were met by Dr. Truax’s practice or would have been obvious variations thereof, and the claims including these limitations would have been obvious.