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Archived updates for Friday, April 28, 2006

TGIF for Taking Your Snake for a Walk

"Collar Apparatus Enabling Secure Handling of a Snake by Tether"
Donald Robert Martin Boys of Bella Vista, California
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A Beginner's Guide to Unfair Import Investigations in the U.S.

The first step in obtaining import exclusion protection for trademarks, tradenames, and copyrights in the U.S. is to record registrations with the Customs and Border Protection service ("CBP"). Import exclusion protection for patented items, on the other hand, may be obtained only after the U.S. International Trade Commission has completed an "Unfair Import Investigation" and recorded its own "exclusion order" with CBP.

In essence, so-called "Section 337 investigations" are administrative proceedings before the U.S. International Trade Commission to determine whether the Customs Service should be directed to excluded infringing goods from importation into the U.S. Most trademark and copyright infringing imports can be stopped by working directly with the Custom Service, without having to obtain an exclusion order from the ITC, as discussed here. Consequently, most Section 337 investigations involve patent infringement allegations.

The law and administrative procedures for these investigations are very similar to the "civil procedures" that are used to decide patent infringement allegations in the federal courts. However, parties to these investigations include "complainants," "respondents," and the ITC "staff" attorney representing the public interest. Section 337 investigation also tend to proceed more quickly than civil lawsuits.

Following an evidentiary hearing, the Administrative Law Judge (or "ALJ") will issue an "initial determination" on all issues related to violations of section 337, usually within about 10 months from when the complaint was filed. The Commission may then review, adopt, modify, or reverse the ALJ's decision. If the Commission does not review the initial determination, it becomes the ITC's decision. You should also know that the ITC is authorized to grant only import exclusion orders, and cease and desist orders. Money damages are not awarded to the prevailing party. ITC orders are effective when issued and become final 60 days after issuance unless disapproved for policy reasons by the President of the United States within that 60-day period. Appeals of ITC determinations may be taken to the U.S. Court of Appeals for the Federal Circuit. Violators of ITC section 337 orders are liable for civil penalties of up to $100,000 a day or twice the value of the imported articles, payable to the government.

The cost of a Section 337 action is generally the same as an infringement action before the federal courts. However, since most Section 337 investigations are typically completed within twelve months, those cost can be compressed into a relatively short period. Furthermore, the ITC's rules require such detailed complaints that the initial preparations can cost $10,000 - $20,000, or more. Of course, we can give you a much better estimate of the initial costs once you become a client of the firm.

A copy of my June 2002 APLF Roundtable presentation on "Unfair Import Investigations at the U.S. International Trade Commission" is available on the Internet via the Association of Patent Law Firms at http://www.aplf.org/events/roundtables/2002-06-20.shtml. Official information on "Understanding Investigations of Intellectual Property Infringement and Other Unfair Practices in Import Trade" is available from the ITC at http://www.usitc.gov/us337.htm, including "Answers to Frequently Asked Questions" at ftp://ftp.usitc.gov/pub/reports/studies/PUB3516.PDF. "An Overview of Section 337 Actions in the ITC" is available from another law firm here.

As a former Staff Attorney with the Office of Unfair Import Investigations at the U.S. International Trade Commission, I have worked on numerous Section 337 investigations. I am also supported at my firm by a dedicated and experienced patent litigation group. Please feel free to call us if we can provide you with any additional information. I would also be pleased to deliver my ITC presentation, in person, to you, your client, and/or your colleagues in person if they should decide to retain our services.

Information on European "border measures" for import exclusion is available here and here.
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Archived updates for Thursday, April 27, 2006

U.S. Import Exclusion Basics

The first step in obtaining import exclusion protection for trademarks, tradenames, and copyrights in the U.S. is to record registrations with the Customs and Border Protection service ("CBP"). Import exclusion protection for patented items, on the other hand, may be obtained only after the U.S. International Trade Commission has completed a "Section 337" investigation and recorded its own "exclusion order" with CBP. CBP then places these records in an electronic database in order to "actively monitor shipments and prevent the importation or exportation of infringing goods."

CBP recently introduced an Intellectual Property Rights e-Recordation (IPRR) system to aid in adding information to the database. The electronic IPRR system requires a separate application for each recordation sought, and applications will be processed in the order in which they are received. The recordation fee for copyrights is $190 per registration while the recordation fee for trademarks is $190 per International Class of goods. The CBP's sample trademark recordation application shows the various documents must be provided under 19 CFR 133.3 for trademarks, while the sample copyright recordation application shows the information that must be provided under 19 CFR 133.33 for copyrights. Tradename recordations are made by submitting an e-mail message to iprr.questions@dhs.gov containing the information provided for in 19 CFR 133.11 et seq.

As noted on the CBP website, their "enforcement is accomplished through the cooperative efforts of our trained enforcement officers, other government agencies, and the trade community." In fact, as of April 2006, there were over 19,000 records in the database. Consequently, as discussed in a Customs publication (which is currently withdrawn and under revision) the CBP has in the past asked that


Trademark and copyright owners who have recorded with Customs and are aware of suspected infringers may provide the following information along with their recordation application or at any time thereafter:

  • the name and business address of the importer and/or consignee of the allegedly infringing articles;
  • a sufficiently detailed description of the suspect goods to make them
    readily recognizable by Customs, including a sample of the infringing article or
    a photographic or other likeness reproduced on paper;
  • the country of origin of the shipment and any countries through which the suspect goods are transhipped;
  • the country or countries of manufacture of the allegedly infringing merchandise;
  • the name and principal business address of each foreign person or business entity involved in the manufacture and/or distribution of suspect article;
  • the mode of transportation and the identity of the transporters of the allegedly infringing good;
  • the ports where it is anticipated the suspect articles will be presented to Customs;
  • the anticipated date of presentation to Customs;
  • the Harmonized Tariff Schedule designation of the suspect goods; and
  • any additional evidence relating to the importation of the suspect goods.
With regard to what information Customs will provide an IPR owner, this publication also states:

Pursuant to the Customs regulations, trademark and copyright owners will be provided certain information where merchandise is detained or seized as infringing a tradename or registered copyright or trademark. Where merchandise is detained as bearing a confusingly similar mark, as a gray market good or as possibly piratical of a registered and recorded copyright, the intellectual property owner will be provided the following information, if available, within 30 business days of the date of the detention:

  • date of importation
  • port of entry
  • description of merchandise
  • quantity involved and
  • country of origin of the merchandise

At any time following presentation of the merchandise for Customs examination but prior to seizure, Customs may provide a sample of the merchandise to the intellectual property right owner. The intellectual property right owner is required to file a bond with Customs in order to receive a sample.

Where merchandise is seized as bearing a counterfeit mark or is seized as clearly piratical of a registered copyright, Customs will disclose to the intellectual property right owner the following information, if available, within 30 business days of the date of the seizure notice:

  • date of importation
  • port of entry
  • description of merchandise
  • quantity involved
  • name and address of manufacturer
  • country of origin of merchandise
  • name and address of exporter and
  • name and address of importer

At any time following seizure of the merchandise, Customs may also provide a sample of the merchandise to the intellectual property right owner. To obtain a sample, the intellectual property right owner must furnish Customs a bond in the form and amount specified by the port director, but not less than $100, conditioned to hold harmless the United States, its officers and employees, and the importer or owner of the imported merchandise harmless from any loss or damage resulting from the furnishing of a sample by Customs to the intellectual property right owner.

The CBP's IPR Branch is staffed with attorneys who I have found to be quite helpful in the past.
Please feel free to contact me if I can get you any additional information.
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US CBP Announces On-Line Recordation of IPRs


The U.S. Customs and Border Protection Service has announced the implementation of the Intellectual Property Rights e-Recordation (IPRR) on-line system. This new system will allow right holders to electronically file IPR recordation applications, thus significantly reducing the amount of time required to process paper applications. Some additional benefits of the new system include:
  • Elimination of paper applications and supporting documents.
  • Copies of the certificate issued by the registering agency (U.S. Patent and Trademark Office or the Copyright Office) are retained by the right holder, not submitted to CBP.
  • Payment by credit card (preferred), check or money order.
  • Ability to upload images of the protected work or trademark, thus obviating the need to send samples to CBP.
  • Reduced time from filing of the application to enforcement by field personnel.

According to the IPRR website, a separate application is required for each recordation sought. Applications will be processed in the order in which they are received. The recordation fee for copyrights is $190. The recordation fee for trademarks is $190 per International Class of goods. By submitting this application on-line, you agree to supply the documents specified in 19 CFR 133.3 for trademarks, and 19 CFR 133.33 for copyrights, upon request by CBP. Failure to do so will result in your recordation being suspended pending receipt of the documents.

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Ajinomoto Requests Investigation of Lysine from China


On April 25, 2006, Ajinomoto Heartland LLC, filed a filed a "Section 337" complaint requesting that an unfair import investigation be instituted involving "Certain L-Lysine Seed Products Their Methods of Production and Genetic Constructs for Production."

The proposed respondents are: Global Bio-Chem Technology Group Co., Limited., Hong Kong; Changchun Dacheng Bio-Chem Engineering Development Co., Ltd., China; Changchun Baocheng Bio-Chem Development Co., Ltd., China; Changchun Dahe Bio Technology Development Co., Ltd., China and Bio-Chem Technology (HK) Limited, Hong Kong. The complaint has been designated as Docket No. 337-2482 for indexing in the Commission's database.

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 an audio-visual Internet presentation on "Unfair Import Investigations at the U.S. International Trade Commission."
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Archived updates for Wednesday, April 26, 2006

Congressional Hearing on Patent Harmonization

Thanks to "Promote the Progress:::J. Matthew Buchanan's Patent Law and Policy Blog" for pointing out that The House Subcommittee on Courts, the Internet, and Intellectual Property has scheduled an oversight hearing on "Patent Harmonization" for Thursday, April 27, at 9:00 AM. Witnesses include
  • Q. Todd Dickinson Vice President and Chief Intellectual Property Counsel, General Electric Company
  • Robert A. Armitage Senior Vice President and General Counsel, Eli Lilly and Company
  • Gary Mueller President and Chief Executive Officer, Digital Now, Inc.
  • Pat Choate political economist and author of Hot Property: The Stealing of Ideas in an Age of Globalization

You can watch a live webcast of the hearing here.

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Foreign Patent File History is Prior Art

In Mark Bruckelmyer v. Ground Heaters, (Fed. Cir., April 20, 2006), the court held that figures 3 and 4 of Canadian Patent 1,158,119 application were "printed publications" under 35 U.S.C. § 102(b) even though the application was not actually disseminated during the relevant prior art time frame and the figures were withdrawn before issuance of the patent. According to Judge Lourie,

Equally unpersuasive is Bruckelmyer’s argument that figures 3 and 4 were
"removed" from the application during prosecution, and thus a person of skill in
the art would not have looked past the ’119 patent in searching for the subject
matter of the patents in suit. As a matter of undisputed fact, the ’119 patentee
did not physically remove figures 3 and 4 from the file wrapper, but merely
cancelled the subject matter figures from the patent during prosecution. The
figures were thus still in the file, although they did not appear in the issued
patent. The declaration from Bruckelmyer’s Canadian patent law practitioner
explains that when subject matter is cancelled during prosecution a replacement
page may be put in front of the page containing the cancelled matter, but the
page containing the cancelled original matter still remains in the file wrapper.
Moreover, for the reasons that we articulated above, it does not matter that
figures 3 and 4 do not appear in the ’119 patent because no reasonable trier of
fact could find that there was not sufficient disclosure in the patent to allow
one skilled in the art to locate the figures contained in the application.



In his dissent, Circuit Judge Linn noted that

It is not entirely sound to view the issued [Canadian] patent as a roadmap to
the underlying file history. . . . While it is commonplace for parties to
examine patent file histories for guidance on matters of claim interpretation,
surrender, estoppel, disclaimer, or disavowal, researchers normally expect the
text of printed patents to correspond to and be coextensive with the
applications from which they have been issued. In that sense, the text of an
issued patent does not generally serve to guide researchers to the file history
for a more expansive disclosure of the described invention, and it certainly
does not lead researchers to the file history for disclosure of subject matter
not described in the issued text.”
Australian patent law may be moving in the opposite direction. According to a recent APLF casenote by Chris Owens (cowens@fbrice.com.au) and Marcus Caulfield (mcaulfield@fbrice.com.au) FB Rice & Co. on The Emperor Sports Decision, the Australian Patent Office's assumption that a person skilled in the art would routinely would be expected to ascertain any prior art patent specification has now been put into question:
the Commissioner's contention that the person skilled in the art would have
ascertained the US patent specifications was held to be unreasonable, and indeed
the Full Court held that it would have been "fanciful". The use of such strong
language casts some doubt on the Patent Office's practice of assuming that any
patent specification of major countries would reasonably be expected to be
ascertained. In our opinion, this decision is not the sea-change that some
practitioners may have thought it might be, but a reminder of what is required
by the Patents Act 1990.
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Strategic Responses to Patent Trolls

In their "Basic Framework for Effective Responses to Patent Trolls" Steven Gardner and E. Danielle Thompson Williams write that "in responding to a patent troll, it is important to: (a) know the business model and the patent troll’s current position on the time line of that model; (b) recognize the unique objectives of the patent troll; (c) identify the unique concerns of the patent troll; and (d) know your client (including its objectives, exposure, tolerance for risk, and view of litigation). . . . Often an effective response to a patent troll is one that increases its uncertainty, doubt, and fear such that the patent troll concludes that the best business decision is to end the accusation or to resolve the accusation with terms favorable to the accused company."

Here are a few of the strategic responses and scenarios that they discuss in this regard:
  • Point Out Differences with Previously-Licensed Products.
  • Present Strong Prior Art Early.
  • Seek Another Venue; Explore a Stand Still Agreement.
  • Look For Ways Around the Most-Favored-Licensee Clause.
  • Use the Threat of a Very Interested Indemnitor.
  • Consider Fighting Tooth and Nail.
  • Search for and raise issues that require due diligence on the part of the patent troll’s attorneys
  • Consider whether your client is willing to agree to a license at a lower fee in exchange for
    allowing the patent troll publicize your client’s name as a licensee.
  • Consider counterclaims (patent infringement, inducement of patent infringement, unfair
    trade practices, antitrust, etc.)
  • Consider acknowledging validity in exchange for a reduced license fee.
  • Consider whether the patent troll might be interested in the right to enforce your client’s patents.
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Happy World Intellectual Property Day

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Archived updates for Tuesday, April 25, 2006

Why Size Matters in IP

In "Size Matters (or Should) in Copyright Law," Professor Justin Hughes explores how a series of court decisions are pulling copyright jurisprudence in a direction in which each coin valuation, medical procedure code, or parts numbering system is a copyrighted work. He argues that single words, numbers, and short phrases should be denied independent copyright protection, not because they always lack originality, but because they are never works.

When liability for copyright infringement boils down to copying a name, a couple of choice phrases, a slogan, or a small subset of numeric evaluations, copyright law is being dragged by clever lawyers into dark alleys where it should not go. These dark alleys threaten some of the most flourishing areas of recombinant culture—software programming, collage art, the cutting and pasting of snippets which is a wonder of
digitization, criticism which requires significant quotation from the target of criticism—whether by a Ph.D. candidate or a blogger.

This lurking microwork protection is the result of our having used the originality requirement to justify copyright law’s prohibition against copying words and short phrases. The problem with small phrases is not that they always lack originality: The problem is that they are always too small. Existing case law gives us the material to develop, particularly for text works, an understanding of the minimum size or nature of a “work” that deserves to attract copyright protection.
The adverse effects of using size in evaluating originality can also be seen in the current debate over just what is plagiarism. "Defining just where influence ends and plagiarism begins can be a difficult question," writes Scott McLemee. "Ralph Waldo Emerson, who wanted the American scholar to live in a state of radical originality, ended up conceding that 'all my best ideas were stolen by the ancients.'" Musicians know that all great composers steal; documentarian's lament over dissappearing history; and artists are plagued by intellectual property issues. Even technological contributions can be viewed as more of process involving every element of society, than the singular obsessions of lonely geniuses. It's no wonder that we are now seriously considering protection for "traditional knowledge" and "cultural expression."

According to Stuart P. Green, a professor of law at Louisiana State University at Baton Rouge, copyright law "protects a primarily economic interest that a copyright holder has in her work. . . whereas the rule against plagiarism protects a personal, or moral, interest." But just how far should we go to protect these non-economic interests? When Malcolm Gladwell described the plagiarism of his own work in a November 15 article for The New Yorker, he concluded that "In the worlds of academia and publishing, plagiarism has gone from being bad literary manners to something much closer to a crime. We have somehow decided that copying is never acceptable and the ethics of plagiarism have turned into the narcissism of small differences: because journalism cannot own up to its heavily derivative nature, it must enforce originality on the level of the sentence." Others have even gone so far as to suggest that if the phrase, "To promote the progress," in the U.S. Constitution means prioritizing people's access to writings and discoveries, then the rise of open source production and dissemination of content may now be demonstrating that the incentive justification for intellectual property just isn't true when the means of production and distribution are in the hands of individuals, without the need for significant capital contributions.

Of course, most of us would like to see our works receive recognition, if not outright acknowledgement. In the Talmud, notes Professor Green, "a person who reports something in the name of the one who said it brings redemption into the world." Rabbi, Joseph Telushkin explains the reasoning behind that text this way. "If a person presents as her own an intelligent observation that she learned from another, then it would seem that she did so only to impress everyone with how 'bright' she is. But if she cites the source from whom she learned this information, then it would seem that her motive was to deepen everyone's understanding. And a world in which people share information and insights to advance understanding, and not just to advance themselves, is one well on its way to redemption."
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Archived updates for Monday, April 24, 2006

People Who Make Innovation Pay

In "Making Innovation Pay: People Who Turn IP Into Shareholder Value," Bruce Berman, President of Brody Berman Associates consulting, provides essays by, and portraits of, some of the world's most-notable IP business people. With Chapter headings like "Managing Innovation Assets Like Business Assets" by Joe Beyers, Vice-President for IP Strategy at HP, "Who Benefits from Patent Enforcement," by patent litigator Raymond Niro, and "Roadblocks, Toll Roads and Bridges: Using a Patent Portfolio Wisely" by former Intel Director Peter Detkin, the stories provide an insight into what many see as the current minority view about what's right with the patent system.

Berman's own essay on "Roadblocks or Building Blocks?" ends with this comment:

Few patents, no more than 3% to 5% by most accounts, have significant value. Even worse, not many people are clear about what gives the valuable ones their own importance. Speculation on IP rights is not very different from investing in real property. The difference is that a ready market for commercial or residential properties helps establish price stability and generate demand. Most people get it when it comes to bricks and mortar, but few do when it comes to prime IP assets. Taking a financial position in an intangible asset, whether the owner plans to commercialize or otherwise exploit it, should not be viewed as an unnatural act.

. . . Savvy IP entrepreneurs are no more responsible for impeding progress than were speculators who purchased land in Kansas during the 1860s in anticipation of the transcontinental railroad. Nobody likes to pay a toll if they don't have to, but riding on a smoother straighter highway can save considerable time and money. For an innovation-based company, it can make a world of competitive difference. A traveler can try to find his or her own route, but it is often not worth it. The Kansas speculators were neither settlers nor railway owners, but businessmen who sought to buy land cheaply and then either lease it or resell it at a higher rate. At first, the railroad companies were indignant about having to pay to pay a toll to complete their route. In the end cooler heads prevailed, and the roadblocks became building blocks for wealth on the new frontier.

The book also explores some of the personalities of those who have pioneered new ways of profiting from IP following Kevin Rivette's and David Kline's "Rembrandts in the Attic: Unlocking the Hidden Value of Patents." (It seems that many of those profiled like to travel, drive fast cars, and exercise compulsively.) Alex Poltorak starts his essay "On Patent Trolls and Other Myths" with poetic license. "Today, corporate fathers read their children scary stories before kissing them goodnight, the stories about demon patent trolls that terrorize the noble business folk," he writes in the introduction to his "Ballad of the Patent Troll." But perhaps Dan McCurdy of ThinkFire sums it up best when he concludes his essay on "Seeing through the Illusion of Exclusion" with
. . . a simple truth: If the invention and the patent or patents that read on it are good enough, both parties will be interested in finding a deal that works for you and for them. After all, winning is more fun than losing.
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What Copyright Law Can Do for Patents

In "What Copyright Teaches Patent Law About Fair Use: And Why Universities are Ignoring the Lesson" Professor Lorelei Ritchie de Larena writes that it is the "Paradox of the Patent Community," which provides a strong disincentive for for anyone to actually fight for a clear “fair use” doctrine in patent law:
This is due to the internally-conflicting interests of the largest players in the inventive community, who perform both research (i.e., use) and development (i.e., ownership) of technology. In copyright law there is a fairly clear line between the primary owners (Hollywood studios and publishing companies) and the primary infringers (high-tech companies, universities, and consumers). Not so in the patent community, where the primary patent owners (large companies and universities) are also the primary infringers, and are therefore loath to petition for a “fair use”
doctrine that will benefit their research programs but potentially lower revenue for their licensing (and litigation) units.
And universities are stuck in the middle. "As researchers, they want full and free access to patented technology owned by others," she writes. "As owners, however, universities are concerned that a research exemption could be construed to protect those who would infringe university patents as much as the reverse."

She goes on to suggests a statutory scheme for balancing these divergent interests using fair use factors that might look something like the spectrum shown in Diagram E:

And, for patented technology which is not being practiced by the patent owner, or where some prongs of the fair use test are highly polarized, she also proposes a new Collective Rights Organization for patent owners:

In many cases, instead of the royalty- free license that impliedly is granted by a determination of “fair use,” it may be very appropriate to grant a paying, royalty-bearing compulsory license. This could be socially beneficial where a technology is not being brought to the market by the patentee or where transaction costs are very high for licensees or consumers, but where the patentee invested significantly in the patented technology. A compulsory license may also be appropriate in other situations where the “fair use” assessment is highly polarized in different prongs of the test (e.g., infringer is using technology purely for commercial reasons, but patentee is not otherwise commercializing it and has no plans to do so).

. . . A compulsory license scheme in United States patent law could be effectively administered by a Collective Rights Organization, as has successfully been done in copyright.211 In a CRO scheme, industry participants, rather than ex ante statutes or ex post court decisions, set the licensing rates. This makes the rates more likely to fit market conditions, and more easily adjustable with them. In the case of patent law, the very “Paradox of the Patent Community” means that the users are the owners, but this can be a real benefit in the CRO scheme, because it will act as an economic incentive to all participants. A CRO scheme could standardize the rules, the rates, and the situations where litigation (or preferably for most, arbitration), and even injunctions, become appropriate.

Besides, if you liked the Copyright Royalty Tribunal, the Copyright Royalty Arbitration Panel, and now the Copyright Royalty Board, you'll love the proposed Patent CRO. "Indeed, the idea has already been successfully implemented in sister-copyright law, the patent laws of internationaleconomic partners, and some areas within the current United States patent law," writes Professor de Larena.

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Archived updates for Friday, April 21, 2006

TGIF for Cud-Breath


U.S. Patent No. 6,982,161
"Process for the Utilization of Ruminant Animal Methane Emissions"
Markus Donald Herrema of Laguna Niguel, California USA

ABSTRACT: A process for the utilization of the methane contained within ruminant animal exhalation, specifically to a process that utilizes the methane contained within ruminant animal exhalation as a source of carbon and/or energy for the production of methane-utilizing microorganisms in a microorganism growth-and-harvest apparatus.
Thank Goodness It's Friday (and The Cow Parade is going to Buenos Aires),
--Bill Heinze
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Archived updates for Thursday, April 20, 2006

An Advisory Opinion on Claim Scope?

In Lava Trading, Inc. v. Sonic Trading Management, LLC, et al. Slip Op. Nos. 05-1177 and
056-1192 (Federal Circuit, April 19, 2006), the district court had issued a Rule 54(b) appellate certification after issuing a claim construction from the bench while the defendants’ counterclaims of invalidity and unenforceability were still pending before the trial court. Consequently, the record on appeal did not supply any meaningful comparison of the accused products to the asserted claims.

Circuit Judge Rader wrote for the court that it had jurisdiction under 28 U.S.C. § 1295(a)(1) (2000) even though "the procedural posture of this appeal presents problems" and the "appeal takes on the attributes of something akin to an advisory opinion on the scope of the ’982 patent."

In his dissent, Circuit Judge Mayer called the decision "another example of the unfortunate consequences of Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), and Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), which cemented this court’s jurisprudence with respect to claim construction as being purely a matter of law subject to de novo review:
Because claim construction is treated as a matter of law chimerically
devoid of underlying factual determinations, there are no "facts" on the record
to prevent parties from presenting claim construction one way in the trial court
and in an entirely different way in this court. By not dismissing this case, we
issue a decision based on an undeveloped record. We set ourselves up to have to
decide claim construction again later, which could well differ from the ruling
today. Furthermore, allowance of an appeal of the trial court’s perfunctory,
offhand ruling from the bench, for all intents and purposes allows an
interlocutory appeal of claim construction, which portends chaos in process.
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Invention Promotors Ordered to Pay $26 Million

According to a press release from the USPTO, invention promotion operationDavison & Associates Inc., now known as Davison Design and Development, Inc., and Manufacturer's Support Services have been ordered by L. Lancaster of the U.S. District Court for the Western District of Pennsylvania to pay $26 million for consumer redress and to provide any future clients with a 10-point disclosure statement to allow them objectively to measure the value of the defendants' assistance.

“This outfit is typical of invention promotion scams,” said Lydia Parnes, Director of the FTC's Bureau of Consumer Protection. “They touted their ability to turn inventors' ideas into profitable products, but fewer than one percent of the customers who invested in their services got royalties from their patents that amounted to more than they paid the promoters. ”

In a complaint filed by the FTC as part of “Project Mousetrap,” the agency charged that the company used Internet ads and classified ads to lure inventors across the country to sign up for their services. The agency charged that they made false claims about their selectivity in choosing products to promote, false claims about their track record in turning inventions into profitable products, and false claims about the relationship they had with manufacturers. They deceptively claimed that their income came from sharing royalties with inventors rather than from the $800 to $12,000 fees they charged inventors.
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Canadian Public Domain Registry and Trademark Agents Exam

Access Copyright, The Canadian Copyright Licensing Agency, and Creative Commons Canada have announced the development of a Canadian public domain registry. The project will create an online, globally searchable catalogue of published works that are in the Canadian public domain.

In other Canadian I/P news, The Canadian Intellectual Property Office (CIPO) has announced that the 2006 Trade-mark Agents qualifying examination will be held on October 10 and 11, 2006. The deadline to apply is July 31, 2006. Any person wishing to sit for the qualifying examination must meet the qualifications set out in Rule 18 of the Trade-marks Regulations (1996):

Before October 1 of the year in which the person proposes to sit for the
examination, the person resides in Canada and

  1. is a barrister or solicitor entitled to practise as such in a province, or a notary entitled to practise as such in the Province of Quebec; or
  2. has worked in Canada in the area of Canadian trade-mark law and practice, including the preparation and prosecution of applications for the registration of trade-marks, for a period of not less than 24 months.
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.Tel Domains Coming Soon

On April 7, 2006, ICANN posted a proposed registry agreement between Telnic and ICANN that, if approved by the ICANN Board, would provide for the designation of the .TEL domain name. Additional information regarding the .TEL application can be found at: http://www.icann.org/tlds/stld-apps-19mar04/.
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OHIM OnLine Service Improvements Planned


New OHIM Internet Address

The new website address for the OHIM as of May 9, 2006 will be www.oami.europa.eu. The OHIM says that it "is taking all the necessary steps to ensure that all of its services are accessible via its new Web address as of that date. Both the “old” and “new” OHIM web addresses will work to allow user-access to the same information for a “migration” period of 12 months from the launch of the new Web address."

Filing oppositions electronically

The OHIM will provide an electronic opposition form similar to the existing one for Community trade mark applications.MYPAGE users who have opted for e-communication will receive the first letters via their MYPAGE MailBox. This service is being tested externally in April.

B2B e-filing CTM

The objective of this service is to set up a system allowing the direct exchange of CTM applications from the IP management software used by the applicants and the OHIM systems. This tool will use a TM-XML (http://www.tm-xml.org/) format and offer a web service or FTP for the transmission of data. The OHIM has set up its system and the testing phase has started from 11/2005 with 6 users.

CTM consultation tool (CTM-ONLINE 2006)

The current CTM-ONLINE will be improved with enhanced information concerning renewal.
This service should be available at beginning May 2006

Payment by credit card (e-payment)

Service is being tested and should be available in May 2006

Search for a representative for CTM or RCD procedures (FindRep):The current CTM-AGENT databasewill be improved offering enhanced search criteria. MYPAGE users will have the possibility to change personal details directly. This service is in development

Trade mark classification help tool (EUROCLASS)

The OHIM is working together with the EU IP Offices to develop an online service to help with the classification of goods and services. This tool will contain all the accepted classification terms of the participating offices. This service is in its pilot phase with the first volunteer offices (UKPTO, Swedish Office). The first pilot should be available in September 2006.

Electronic filing of RCD applications

The current RCD e-filing service will be significantly improved with a view to solving the problem of large attachments, among other things. RCD e-filing will also be accessible through MYPAGE and changes will be made to harmonise it with CTM e-filing. The OHIM is currently defining the scope of the service.

Online access to CTM files

CTM file documents will be viewable through CTM-ONLINE. A restricted access is applied to documents of unpublished CTM. Mechanism have been put in place to ensure confidentiality of documents indicated as such. MYPAGE users will also have the possibility to request inspection of files electronically. This service is in development following initial delays
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Vicarious Landlord Infringement Liability Upheld in China

According to Liu Mo and Cao Li writing for China Daily on April 19, 2006, the Beijing High People's Court upheld a previous ruling by Beijing No 2 Intermediate People's Court ordering Beijing's famed Silk Alley market near the U.S. embassy to pay 200,000 yuan (about $24,700) to each mark owner for allowing merchants to sell knock-offs on its premises. Initially, each of the five luxury goods brands (Prada, Chanel, Louis Vuitton, Gucci, and Burberry) had demanded compensation of 500,000 yuan (US$62,000) each.

"The ruling can still be seen as a great victory in the education of landlords," writes the IP Dragon, "and possibly an indication that the Chinese authorities will prosecute in-active landlords who are informed about trademark infringing tenants."
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A Lesson in Poor Trademark Specimens

Accroding to the U.S. Trademark Trial and Appeal Board in In re Aerospace Optics, Inc., Serial No. 76171288 (April 12, 2006), the SPECTRUM trademark appearing in two separate locations inside applicant’s point-of-purchase display brochure that was submitted as a trademark specimen failed to function as a trademark for illuminated pushbutton switches:


According to the opinion by Administrative Trademark Judge Kuhlke,

In view of the meaning of SPECTRUM, "a continuum of color formed when a beam of white light is dispersed (as by passage through a prism) so that its component wavelengths are arranged in order,"2 and the context of its use, i.e., among several terms identifying features of the goods, (e.g., "spectrum of colors"), prospective purchasers would not view this word as a source identifier, but rather as part of the text listing the features of the product. As used by applicant, and as likely perceived by purchasers and prospective purchasers, the applied-for mark merely informs the potential purchaser of an aspect of the goods, namely, the multiple color feature. The coloring and font are not sufficient to imbue this term, as used, with source-identifying significance or to set it apart from the other informational wording. See In re Brass-Craft, supra. Moreover, as noted by the examining attorney, the colors in the mark merely manifest and emphasize the information the word conveys.

The use of the TM symbol on the inner flap location of one specimen does not change the commercial impression of the applied-for mark, which as used in the specimen only informs the consumer of the features of the pushbutton switches. The "mere intent that a term function as a trademark is not enough in and of itself, any more than attachment of the trademark symbol would be, to make a term a trademark." In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992) (THINK GREEN failed to function as a mark for, inter alia, mailing and shipping cardboard boxes). See also In re Volvo, supra (DRIVE SAFELY failed to function as a mark for automobiles and structural parts therefor); In re Remington Products, Inc., 3 USPQ2d 1714 (TTAB 1987) (PROUDLY MADE IN THE USA failed to function as a mark for electric shavers and parts thereof). Applicant attempts to distinguish these cases by noting that the subject matter was deemed unregistrable in each case due to the nature of the mark itself whereas, in this case, the mark contains both "informational aspects" and "aspects that communicate to purchasers that the mark is a trademark" and serves "both as a trademark (source/quality indicator) AND as an informational device."

However, while the applied-for mark has not been refused as descriptive under Section 2(e)(1) of the Trademark Act, the fact that the applied-for mark may be registrable if it were used in a different context is not the issue. Rather, the applied-for mark, as used, would not be perceived as a trademark, and the mere addition of the trademark symbol is not sufficient to transform the non-trademark use into trademark use. The term fails to function as a mark not only because of the informational nature of the term, but also because of the way it appears on the specimen. The manner in which the applied-for mark is used on the specimens presents the applied-for mark as part of the product features and not as a trademark. Even an inherently distinctive designation is not a trademark if it is not used in a trademark manner. See McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition §3.3 (4th ed. database updated 2005); see also In re Niagara Frontier Services, Inc., 221 USPQ 284 (TTAB 1983) (WE MAKE IT, YOU BAKE IT! held not merely descriptive, but refusal based on failure to function as a service mark affirmed).

In summary, the manner in which the applied-for mark is being used does not support a finding that potential consumers would perceive it as a trademark. As used in the specimens of record, the applied-for mark does not convey the commercial impression of a mark identifying the source of origin of applicant’s goods. This conclusion is not altered by the fact that a TM symbol is displayed in one location in one of applicant’s brochures adjacent to the word SPECTRUM. See In re B.C. Switzer & Co., 211 USPQ 644 (TTAB 1981).

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Archived updates for Wednesday, April 19, 2006

Canadian and U.S. Trademark Procedure Differences

According to Kohji Suzuki at Smart & Biggar, here are the most important differences between U.S. and Canadian trademark application procedures:
  1. No Madrid Protocol in Canada
  2. No Fee Classes in Canada
  3. No ITU Filing When Mark is Previously Used in Canada (and its often difficult or impossible to amend the filing basis or date of first use after filing)
  4. Canadian Multiple Bases are Treated Independently when Challenged in a Canadian Court
  5. Canadian Foreign Registration Basis Requires Use in Any Country
  6. No Divided Applications in Canada
  7. No Supplemental Register in Canada
  8. Extensions of Time are Leniently Provides in Canada
  9. Renewal Procedure has No Interim Proof of Use Requirement (unlike U.S. "Section 8").

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Terminally Disclaimed Patents Are Not Barred from Obtaining a § 156 Extension

Thanks to the Patentably-O Blog for pointing to King Pharmaceuticals v. Teva Pharmaceuticals, (D. NJ, January 20, 2006) where the U.S. District Court concluded that a terminally disclaimed patent is still eligible for patent term extension under 35 U.S.C. § 156:

Section 156 plainly states that a patent satisfying the enumerated conditions “shall be extended.” “The word 'shall' generally indicates a command that admits of no discretion on the part of the person instructed to carry out the directive.” Assoc. of Civil Tech. v. Fed. Labor Rel. Auth., 22 F.3d 1150, 1153 (D.C. Cir. 1994). Thus, if the enumerated conditions are satisfied, the patentee is entitled to a term extension calculated pursuant to § 156.

Further, § 156 makes no reference whatsoever to terminal disclaimers. Section 156's direction that a patent term extension “shall” be granted if the conditions are met contains no exception for patents subject to a § 253 terminal disclaimer. This Court may not read language in or graft meaning on to § 156, and hence may not create an exception for terminally disclaimed patents where Congress did not see fit to do so. See, e.g., Rabinowitz, 550 F. Supp. at 486. Moreover, as noted, Congress expressly listed conditions necessary for obtaining a § 156 patent term extension. 35 U.S.C. § § 156(a)(1)-(5) (2005). Applying the interpretative maxim expressio unis est exclusio alterius (the expression of one thing is the exclusion of the other), see, e.g., U.S. v. State of New Jersey, 194 F.3d 426, 429 (3d Cir. 1999), the Court concludes that the only limitations on the provision of a § 156 patent term extension are those expressly enumerated at § 156(a)(1)-(5). Nonexistence of a terminal disclaimer is not among those enumerated conditions, and, therefore, cannot be construed to be a condition for obtaining a § 156 patent term extension.

Accordingly, there is no textual basis in § 156 for making terminally disclaimed patents ineligible for a § 156 extension. . . .


Click here for a list of Patent Terms Extended Under 35 USC § 156
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Free Teleseminar: Political Economy in Intellectual Property

Thursday, May 04, 2006
1:00 PM EDT to 2:00 PM EDT

Clarisa Long, the Shaye Professor of Intellectual Property Law at Columbia Law School will examine some legislative changes in various areas of intellectual property that have occurred over the years in response to interest group activity. For example, When is interest group activity most likely to produce changes in intellectual property law? When is it less likely to be successful?

More information and registration here.
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Archived updates for Tuesday, April 18, 2006

A Dispositive Summary Judgment on Claim Construction

Philips Electronics North America Corp., et al. v. Contec Corp., et al. (Fed. Cir. April 18, 2006, not citeable as precedent) contains an excellent example of trial counsel's cooperation on the resolution of claim contruction. During the hearing, both sides agreed that, with respect to the ’359 patent, if the court adopted the claim construction proffered by the other side, summary judgment of infringement would be appropriate:
Counsel for Philips framed it this way: "So if the Court construes it in
Philips' favor, the defendants have proffered no reason why summary judgment on
infringement should not be granted. And vice versa. If the Court construes the
term to mean what Compo Micro Tech proposes, then Philips could concede that
summary judgment on the ’359 patent is required. So I don't think with respect
to infringement on the ’359 there is any issue between the parties." See Joint
Appendix 3272.

Counsel for CMT agreed: "I concede that if Your Honor construed it so
broadly to mean any stored product identification data, as they would submit, of
any kind, then we would fall within and must fall within the construction and we
would be liable for infringement." Id.

The district court confirmed that CMT stipulated that the claim
construction was case-dispositive: "The important point for me to know at this
junction is, it's not disputed that at the end of the day, at least in this
Court, if it is determined Philips is right, summary judgment of infringement
for Philips is in order." To this, counsel for CMT unequivocally responded: "If
your Honor adopts their construction as they have proffered it to the Court,
yes, Your Honor." JA 3274.
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JPO Proposes Examination Guidelines on Use Limitations

The Japanese Patent Officce has invited interested parties to submit written comments on proposed revisions to its Examination Guidelines for patent claims containing use limitations: According to the press release, the gist of the draft is as follows:

  1. In finding a claimed invention having a statement of a limitation by use, it is made clear that there are two cases as follows

    A case where a limitation by use should be construed in such a manner that it
    means a structure etc. particularly suitable for the use

    A case where an invention with a limitation by use should be construed as so-called "a use invention".
  2. It is made clear that, in general, "a use invention" is construed as an invention based on a discovery of an unknown attribute of a product and suitability for a new use of the product due to the attribute.
  3. Expressions pointed out to be ambiguous such as "a product that is to be used solely for the use purpose" are made clear, and it is also made clear that they are examined by the way of the above-mentioned method.
  4. Examples of claimed inventions with a limitation by use are enriched.

Comments must be received on or before May 8th 2006.

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PCT Newsletter Highlights for April 2006

The April 2006 issue of the PCT Newsletter is now available on WIPO's Internet site at http://www.wipo.int/edocs/pctndocs/en/2006/pct_news_2006_4.pdf. Here are the highlights:

PCT-SAFE Update

A new version of the PCT-SAFE Client software (version 3.51.005.180), dated 1 April 2006, may now be downloaded from the PCT-SAFE website at www.wipo.int/pct-safe/en/support/download_client.htm. This version includes changes due to the amendments to the PCT Regulations and Administrative Instructions under the PCT (with effect from 1 April 2006), in particular the possibility to irrevocably exclude the designation of Japan (JP) and the fact that declarations (i), (ii), (iii) and (v) no longer contain indications of the designated States for which they are made. This version also permits residents and/ or nationals of the United States of America, filing with RO/US to indicate ISA/KR as the International Searching Authority. Other PCT updates, including new fee schedules, are also included.
Further details are available on the PCT-SAFE website at www.wipo.int/pct-safe/en/index.htm

Updated Regulations

The consolidated texts of the Regulations under the PCT in English and French, as in force from 1 April 2006, are available at, respectively:
www.wipo.int/pct/en/texts/pdf/pct_regs.pdf
www.wipo.int/pct/fr/texts/pdf/pct_regs.pdf

New editions of the Patent Cooperation Treaty and Regulations (WIPO publication No. 274 (E)
and (F)), as in force from 1 April 2006, will also be available shortly.

PowerPoint Presentation on Amendments to the PCT Regulations

A PowerPoint presentation containing an overview of the amendments to the PCT Regulations that entered into force on 1 April 2006 is now available at
www.wipo.int/pct/en/texts/ppt/2006changes.ppt

Updated Request and Demand Forms

The April 2006 versions of the Request Form (PCT/RO/101) and Demand Form (PCT/IPEA/401) in English, French, German and Spanish, in editable PDF format, are now
available on the PCT web site at www.wipo.int/pct/en/forms/. The USPTO recommends that applicants continue to use the “Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371” (Form PTO-1390) when electronically filing documents for entry into the US national stage under 35 U.S.C. 371.

Updated PCT Applicant's Guide

Several parts of the PCT Applicant's Guide have been updated to take into account
the PCT Rule changes that entered into force on 1 April 2006 and have been published on the PCT web site at www.wipo.int/pct/guide/en/

PatentScope Replaces Electronic PCT Gazette

From July 2005 to 1 April 2006, searching international patent applications was possible
through two databases: the electronic PCT Gazette and the PCT Online File Inspection. Until April 2006, the latter was published as a prototype. This prototype had been developed
with the aim of publication of international applications and of the PCT Gazette only in
electronic form according to a decision of WIPO Member States taken in September
2005. On April 1, 2006, the PCT Gazette and the PCT Online File Inspection were merged into one single source of data which is easy to use. This is available at www.wipo.int/pctdb/en/ and
www.wipo.int/pctdb/fr/. Further information is available at www.wipo.int/pctdb/en/news.html, and www.wipo.int/edocs/prdocs/en/2006/wipo_pr_2006_443.html


Automatic Withdrawl of National Applications

The national law of Germany, as well as those of Japan, the Republic of Korea and the Russian Federation, provides for automatic withdrawal, at a certain moment, of an earlier national application if a later filed international application claims the priority of that earlier national application and designates that State. This means that if the designation concerned is not withdrawn from the international application, the earlier national application will be considered withdrawn at a time defined in the national law. In connection with this, the abovementioned
four States have notified WIPO that PCT Rule 4.9(b), as amended with effect from 1 April 2006, applies in respect of the designation of each of those States.

Further information about the designation system in general is included in the following "practical advice” articles:
  • The non-designation of certain States in the new Request form, applicable as from 1 January 2004 – PCT Newsletter No. 11/2003;
  • Signature requirements for the withdrawal of the US designation – PCT Newsletter
    No. 01/2004;
  • The procedure for withdrawing designations – PCT Newsletter No. 02/2004;
  • Automatic designation of the US: the consequences of the applicant/inventor being a
    resident and national of a non-PCT Contracting State – PCT Newsletter No. 03/2004;
  • Automatic designation of the US: indication of the inventors as “inventors only” where there is no intention to enter the US national phase – PCT Newsletter No. 04/2004;
  • Automatic designation of all PCT Contracting States: alternative to withdrawing a designation – PCT Newsletter No. 05/2004; and
  • Maintaining the US designation where a US national application has already been filed –
    PCT Newsletter No. 02/2006.
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U.S. Announces Outcome on IPR Requests to China

On April 11, 2006, U.S. Secretary of Commerce Carlos Gutierrez, United States Trade Ambassador Rob Portman and U.S. Secretary of Agriculture Mike Johanns met with Vice Premier Wu Yi for the 17th annual senior-level meeting of the Joint Commission on Commerce and Trade (JCCT). Thanks to the IPCentral Weblog for pointing to the U.S.-China Joint Commission on Commerce and Trade (JCCT) announcement entitled "Outcomes on U.S. Requests" for April 11, 2006:

In support of its commitment to significantly reduce intellectual property rights (IPR) infringement levels, China agreed to the following specific actions.

• Pirated Optical Disks (ODs). The Chinese government has taken action against 14 factories producing illegal optical disks and has pledged to step up enforcement in this important area to combat copyright piracy of films, music, and software. China and the U.S. will also explore new ways to strengthen cooperation in this area.
• Requirements to Install Legitimate Software. The Chinese government has issued a notice requiring the pre-loading of legal operating system software on all computers produced or imported into China , as well as a notice requiring government agencies to purchase computers with pre-loaded software. In line with these requirements, several Chinese computer manufacturers have recently signed agreements to purchase U.S. operating system software.
• Ensuring Use of Legal Software in Government and Enterprises. In addition to ongoing efforts to ensure use of legalized software at all levels of the government, China has launched efforts to ensure the legalization of software used in Chinese enterprises. In addition, China has agreed to discuss U.S. proposals regarding government and enterprise software asset management in the JCCT IPR Working Group.
• Rid Consumer Markets of Infringing Goods. The Chinese government has agreed to intensify its efforts to ensure that public markets in China are free of infringing products and has announced enforcement actions in several major cities.
• Individual Cases. The Chinese government agreed to help ensure that individual IPR cases raised by the U.S. government with China will be vigorously pursued.
• Action Plan: China has announced a broad action plan to improve enforcement of IP rights, including steps in the areas of enforcement, legislation and education. Strongly implemented, these steps could lead to significant improvement in the IP situation in China.


The plenary session of the 17th U.S.-China Joint Commission on Commerce and Trade (JCCT) was held in Washington, DC on April 11, 2006. Established in 1983, the JCCT is an annual government-to-government platform designed to develop and facilitate the U.S.-China commercial relationship. The U.S. uses the JCCT as a forum to identify and resolve problems and to expand trade opportunities.

According to the Chinese State News Agency's report on the "China Achievements Exhibition for Intellectual Property Protection," running through April 25 at the Military Museum of the Chinese People's Revolution in Beijing, China's "achievements in protecting IPR are obvious."
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Archived updates for Monday, April 17, 2006

Remittitur Acceptance Prevents Additional Recovery for Indirect Infringement Counterclaims Against Custumors

In Glenayre Electronics, Inc. v. Jackson, et al. (Fed. Cir. April 11, 2006), the court held that Jackson's acceptance of remittitur damages against Declaratory Judgment plaintiff Glenayre prevented Jackson from litigating indirect infringement counterclaims against Glenayre’s customers. According to Circuit Judge Prost,

the case did "not fit within one of the exceptions to the basic rule that when the indirect infringer does not cause the original infringement but merely prolongs an infringing use of a product by providing supplies or spare parts." See also, e.g., Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 508 (1964) ("Aro II") (noting that, in a proper case against a contributor infringer that prolongs use of an infringing product, a patent owner might be able to obtain an injunction; recover damages based on the prolongation of the use; obtain punitive or increased damages for willful or bad-faith infringement; and perhaps damages primarily caused by the direct infringer when those damages could not be recovered from the direct infringer); King Instrument Corp. v. Otari Corp., 814 F.2d 1560, 1563-64 (Fed. Cir. 1987) (authorizing separate proceedings to resolve the appropriate amount of damages for (1) infringing sales of machines and (2) potential indirect infringement in the form of sales of spare parts, including spare parts used for reconstruction to extend the useful life of the machines and spare parts associated with new machine sales for which the patentee had not already been compensated)

. . . We conclude that, as a matter of law, Jackson has been fully compensated for infringement of the ’900 patent by the manufacture and sale of Glenayre’s products and the use of the same products by Glenayre’s customers. Jackson may not collaterally challenge the district court’s previous judgment that he is entitled to only $2.65 million rather than $12 million in damages for the manufacture, sale, and use of Glenayre’s products that infringe the ’900 patent, because that judgment, which was affirmed in a previous appeal, disposed of his current argument that he should be awarded greater damages based on the benefits Glenayre’s customers enjoyed
by using products sold by Glenayre. Furthermore, Jackson is not entitled to a second trial as a matter of right simply because the district court stayed his counterclaims of indirect infringement.

. . . To summarize, the problem here boils down to the fact that Jackson accepted the district court’s remittitur, which rejected the same argument he makes here, that a jury should award damages based on evidence showing the benefits of Glenayre’s customers’ infringing use of Glenayre’s products. Even if Jackson were to succeed in convincing a new jury that the customers directly infringe the ’900 patent, the issue of the appropriate damages award based on that infringement has already been litigated to a final judgment. Jackson is therefore barred from raising arguments before us that he chose not to raise in the prior appeal.


In effect, Jackson attempts an end run around his collected, unappealable remitted damages award by arguing that that award does not fully compensate him for infringement of the ’900 patent. In the attempt, Jackson misapplies three Supreme Court cases, Birdsell, Union Tool, and Aro II, failing to come to terms with the significance of the fact that, after we affirmed the district court’s judgment, Glenayre subsequently paid the remitted damages award to Jackson in full. . . .


However, in Circuit Judge Newmann's dissenting view, the remittitur did not apply to the severed counterclaims relating to indirect infringement by customers and "the majority incorrectly held that there cannot be contributory infringement by a diect infringer:"
The judgment that was subject to the remittitur is the judgment after the
jury trial, a trial that was limited to Glenayre's direct infringement. That
judgment was appealed by Glenayre, not Jackson. That judgment and the remitted
damages for Glenayre's direct infringement are not under collateral attack by
Jackson. . . . and are not at issue.

This appeal relates solely to the stayed counterclaims for Glenayre's contributory and induced infringement based on direct infringement by Glenayre's customers. These counterclaims were excluded from the jury trial. The district court decided, after this court affirmed the Rule 54(b) judgment of direct infringement, to dismiss the counterclaims without further proceedings. The district court, today affirmed by the panel majority, incorrectly held that there cannot be contributory infringement by a direct infringer. From this ruling and its flawed premises, I respectfully dissent.
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CAFC Oral Arguments on Your iPod



Audio files of oral arguments recently held in the Federal Circuit are now available in MP3 format for
  • Courtroom 201: January to April 2006
  • Courtroom 203: March and April 2006
All future argued cases will be available twenty-four hours after argument is completed.

According to the accompanying Notice, "Counsel should exercise caution in discussing at oral argument sensitive personal data, such as personal identifying numbers, medical records, employment history, individual financial information, proprietary or trade secret information, information regarding an individual’s cooperation with the government, information regarding the victim of any criminal activity, national security information, and sensitive security information as described in 49 U.S.C. § 114. Counsel are urged not to discuss at oral argument any sensitive information they do not wish posted on the Internet."

The Federal Circuit's Judicial Conference is scheduled for Friday, May 19, 2006 at the Grand Hyatt Hotel in Washington, DC:

General Registration.....$225
Current Government Employee....$175
Late Registration (after May 5, 2006)....$245

Online Registration
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Archived updates for Friday, April 14, 2006

UTBMS Code Set Presentations

The UTBMS Task Force will be meeting Monday, April 17, at 2:00 pm central time in the Illinois Boardroom of the Sheraton Hotel in Downtown Chicago, 301 E. North Water Street. The meeting will include

  • Results of UTBMS Survey (Jeff Hodge)
  • Revised International Working Group Report (Jeff Hodge)
  • Patent Code Set Presentation (Bill Heinze and Domenic Leo)
  • Trademark Code Set (Domenic Leo)
  • Status of Other Working Groups
  • LEDES "Legal Electronic Data Exchange Standard" Oversight Committee Merger (Brad Blickstein)
For those of you who can attend in person, the meeting will take place For those of you who cannot attend in person, here is the call in information:

US Callers: 800-914-3397
Int'l Callers: 617-475-0114
Access Code (all callers): 8279421
The UTBMS is a budgeting and billing system designed to provide clients and law firms with meaningful cost information on legal services. It currently includes a Litigation Code Set that was released in 1995 and has since been widely adpoted for contested matters, including judicial litigation, binding arbitration and regulatory/administrative proceedings. More-recently, the ABA has also released Counseling, Project, and Bankruptcy Code Sets.

However, the ABA's Steering Committee concluded that "it would not be practicable to develop practice-specific task codes."This has led various consumers of intellectual property services to adopt inconsistent and/or proprietary code sets that have frustrated consumers and service providers alike.

The UTBMS Intellectual Property Workgroup has therefore been charged with building upon those legacy code sets in order to develope a baseline model code set for patent, trademark, and copyright services.We invite you to join this effort by volunteering to serve on one oy our patent, trademark, and copyright subcommittees.

Please feel free to contact me or Domenic Leo for additional information, including a copy of the I/P codes sets that are currently before the I/P WorkGroup.
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TGIF for Willful Infringers

Is someone you know infringing U.S. Patent No. D440,263?:


Then tell them about the I/P Updates news service, here.
Daily and weekly subscriptions available, here.
E-mail this article to an infringer, here.
Thank Goodness It's Friday, here,
--Bill Heinze, here.
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WTO Polarised on GI Extensions as EU System Grows

According to Tove Iren S. Gerhardsen writing for Intellectual Property Watch, there was no significant movement in members' positions during the April 13 World Trade Organization consultations on whether to extend geographical indication (GI) protection for wines and spirits to other products. Proponents want the higher level protection that wines and spirits currently enjoy under Article 23 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to also apply to other GI products, which currently have to be protected but only at the “regular” level under Article 22 of TRIPS. One participant reportedly said the discussions have become polarised with the European Union, Bulgaria, India, Sri Lanka and Switzerland speaking in favour of extension, and Argentina, Australia, Brazil, Canada, New Zealand and the United States opposing it.

At the same time, the Confederation of the Food and Drink Industries of the European Union (CIAA) released its annual report targeting the EU's geographical indications system as needing a "fundamental" review. CIAA is concerned that the system's credibility as a quality assurance scheme is being undermined by the vast number of applications for trademark protection under the system:

The EU instruments of Protected Denomination of Origin (PDO) and Protected Geographical Indication (PGI) protect a product's name and are based on specific quality standards and methods of production. Currently, almost 700 PDOs and PGIs have been registered in the EU. More than 200 cases are still awaiting registration. There has been a rapid increase in the number of registered names and insufficient
assurances concerning the specific requirements and characteristics of such products.

The large numbers of PGI and PDO products already registered, along with
the numerous cases still pending remain a matter of concern for the industry. It
may make PDO and PGI products more commonplace. There is also a risk that PDO or PGI labelled foodstuffs will lose not only credibility, but also their comparative advantage.

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Archived updates for Thursday, April 13, 2006

Ongoing Relationship with Licensee Creates Jurisdiction in Licensee's State

In Breckenridge Pharmaceutical, Inc. v. Metabolite Laboratories, Inc. et al. (Fed. Cir. April 7, 2006), the court applied Federal Circuit law to hold that an ongoing relationship with the licensee was sufficient to give the court jurisdiction over the patent owner where the licensee did business.
The issue of personal jurisdiction in a declaratory action for
non-infringement is "intimately related to patent law" and thus governed by
Federal Circuit law regarding due process. Silent Drive, Inc. v. Strong Indus.,
Inc., 326 F.3d 1194, 1201 (Fed. Cir. 2003). Where a suit involves both patent
and non-patent claims, Federal Circuit law regarding due process also applies to
the question of personal jurisdiction on non-patent claims if "the resolution of
the patent infringement issue will be a significant factor" in determining
liability under the non-patent claims. 3D Sys., Inc. v. Aarotech Labs., Inc.,
160 F.3d 1373, 1377 (Fed. Cir. 1998). A court must inquire whether the defendant
has "purposefully directed his activities" at the forum state and, if so,
whether "the litigation results from alleged injuries that arise out of or
relate to those activities." Burger King, 471 U.S. at 472. Then, to defeat
jurisdiction, the burden of proof shifts to the defendant, which must "present a
compelling case that the presence of some other considerations would render
jurisdiction unreasonable." Id.

. . . In sum, our case law has held as follows: where a defendant has sent cease
and desist letters into a forum state that primarily involve a legal dispute
unrelated to the patent at issue, such as an injunction obtained for
misappropriation of trade secrets, the exercise of personal jurisdiction is
improper. Silent Drive, 326 F.3d at 1202. Likewise, a defendant may not be
subjected to personal jurisdiction if its only additional activities in the
forum state involve unsuccessful attempts to license the patent there.
Hildebrand, 279 F.3d at 1356. The same is true where the defendant has
successfully licensed the patent in the forum state, even to multiple
non-exclusive licensees, but does not, for example, exercise control over the
licensees’ sales activities and, instead, has no dealings with those licensees
beyond the receipt of royalty income. Red Wing Shoe, 148 F.3d at 1357-58.

In contrast, the defendant is subject to personal jurisdiction in the forum
state by virtue of its relationship with its exclusive forum state licensee if
the license agreement, for example, requires the defendant-licensor, and grants
the licensee the right, to litigate infringement claims. Akro, 45 F.3d at 1546.
Finally, the defendant will also be subject to personal jurisdiction in the
forum state if the exclusive licensee (or licensee equivalent) with which it has
established a relationship is not headquartered in the forum state, but
nonetheless conducts business there. Genetic Implant, 123 F.3d at 1457-59.

. . . Thus, the crux of the due process inquiry should focus first on whether the
defendant has had contact with parties in the forum state beyond the sending of
cease and desist letters or mere attempts to license the patent at issue there.
Where a defendant-licensor has a relationship with an exclusive licensee
headquartered or doing business in the forum state, the inquiry requires close
examination of the license agreement. In particular, our case law requires that
the license agreement contemplate a relationship beyond royalty or
cross-licensing payment, such as granting both parties the right to litigate
infringement cases or granting the licensor the right to exercise control over
the licensee’s sales or marketing activities.

Here, in addition to sending letters into the forum state, which we
presume qualify as "cease and desist" letters, Metabolite has entered into an
exclusive license with PamLab, a company that, while not headquartered or
incorporated in Florida, conducts business in Florida. As part of the license
agreement, Metabolite granted PamLab the right to sue for patent infringement
with Metabolite’s written consent, and the parties agreed to "discuss in good
faith the appropriate action, if any, with respect to third party infringers of
the Licensed Patents, and to cooperate reasonably in any enforcement actions".
Metabolite granted PamLab "full control of the prosecution or maintenance" of
any patent or application that Metabolite abandons or permits to lapse and
agreed to provide PamLab with an executed power of attorney for that purpose.
Metabolite further agreed to "provide consultation to PamLab in the science,
medicine and marketing of vitamins and related products, from time to time".

That this exclusive license agreement not only contemplated an ongoing
relationship between PamLab and Metabolite beyond royalty payments but has
actually resulted in such a relationship is obvious from the facts of this case.
Metabolite coordinates with PamLab in sending cease and desist letters and in
litigating infringement claims in Florida and elsewhere and, as is the case
here, licensor and licensee are often represented jointly by counsel. As such,
we hold that, through its relationship with PamLab, which sells products in
Florida, Metabolite has purposefully availed itself to the privilege of
conducting activities within Florida.
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Patent Ethics Update and Query

Thanks to Mercer University Law School Professor David Hricik at the Legal Ethics Forum for pointing to two different authorities that have so far held that it is per se unethical for a lawyer to provide a non-infringement or invalidity opinion about another client's patent. Va. Op. No. 1774 (Feb. 13, 2003); Andrew Corp. v. Beverly Mfg. Co., 2006 U.S. Dist. LEXIS 6360 (N.D. Ill. Feb. 16, 2006) (non-infringement). "Andrew is particularly worrisome (and wrong)," writes The Ethical Professor "because it concludes that an opinion given by a conflicted lawyer is 'incompetent' as a matter of law, and therefore inadmissible to defend against a charge of willful infringement.

In another post, Professor Hricik points to an opinion by a panel of the Federal Circuit that "held that the enforceability of a patent is determined by the 'would the information have been important to a reasonable examiner' standard, and not the (arguably) narrower standard established in 1992 in 37 CFR 1.56."

Hricik has also generated quite a few comments on a common dilemma for patent prosecutors: "Lawyer in prosecuting application for Client A receives an office action rejecting a claim over a prior art reference. Lawyer looks, and that reference is owned by another Client, Client B. Is this a conflict at all?" According to The Ethical Professor,

Some people say that any response by the lawyer constitutes an adverse
representation, even if the firm had nothing to do with obtaining the prior
patent, and even if the firm's representation of the client who owns that patent
are completely unrelated to the subject matter in prosecution. Others say
that, in the abstract it's not a conflict, but can become one where, for
example, the lawyer would be arguing that the client's patent is invalid (say,
e.g., that it lacks support for the breadth argued by the PTO). Others say
that that even that isn't an adverse representation.
Read the comments and/or give Professor Hricik a piece of your mind on this issue here.
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WIPO Patent Harmonization Effort Stalls Again

Member states of the World Intellectual Property Organization (WIPO) met at an informal session of the Standing Committee on the Law of Patents (SCP) in Geneva from April 10 to 12, 2006 to consider a work program for the Committee. The meeting ended with negotiators being unable to define a work programme for the next formal SCP meeting planned for later this year. That meeting now will not take place.

According to the WIPO press release, "All delegations acknowledged the importance of all the issues raised by the different delegations, and several useful contributions and proposals were submitted with a view to bridging the differences between, on the one hand, those who wanted a larger number of issues to be addressed on an equal footing by the SCP and, on the other hand, those who expressed a preference for an approach limited to fewer issues.>

"The outcome effectively grounds a long-standing push by the developed nations holding most of the world’s intellectual property to harmonise global patent systems through WIPO," writes William New in Intellectual Property Watch on April 12, 2006. "Some officials raised concern that the end of discussion on patent harmonisation could remove a bargaining chip for developing countries seeking major reform of WIPO toward development issues, and other policy changes related to protection of genetic resources and traditional knowledge."

“It’s not like WIPO isn’t doing anything on patents,” Francis Gurry, WIPO Deputy Director General reportedly said. But the SCP meeting “was the work programme on the new issues.”
The matter will be referred back to the WIPO General Assembly at its meeting in September 2006. In the meantime, develeoped countries have already started moving patent harmonization talks outside of WIPO.

“The United States intends to continue to pursue substantive patent law harmonisation discussions in a variety of fora, including in bilateral and plurilateral discussions,” USPTO spokesperson Brigid Quinn reportedly said. “The USPTO, while disappointed that WIPO member States could not agree on a work plan for the Standing Committee on Patents, is not particularly surprised by this result,” she said. “We think that the moratorium that was agreed upon may provide an opportunity for member states to reflect upon the benefits that patent harmonisation could bring for both developed and developing countries and permit the WIPO Secretariat to most effectively focus their limited resources on concrete projects rather than endless discussions.”
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Archived updates for Wednesday, April 12, 2006

Unpublished Opinions to Be Citable in 2007

According to Tony Mauro writing for the Legal Times on April 12, 2006, the Supreme Court has adopted a historic change to the Federal Rules of Appellate Procedure that will allow lawyers to cite so-called "unpublished opinions" issued on or after January 1, 2007. The new rule reportedly takes effect unless Congress countermands it before Dec. 1.

"The U.S. Courts of Appeals for the 2nd, 7th, 9th, and Federal circuits currently ban the citation of unpublished opinions outright, while six other circuits discourage it," writes Mauro. "Under the new rule, circuits will still be able to give varying precedential weight to unpublished opinions, but they can no longer keep lawyers from citing them."
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The Seven Deadly Sins of Working with an Expert


According to Gabrielle Bonne writing for Law.com on April 12, 2006,
  1. WAIT UNTIL THE LAST MINUTE
  2. HIRE THE FIRST PERSON WHO TELLS YOU WHAT YOU WANT TO HEAR
  3. GO BARGAIN BASEMENT
  4. PROVIDE INADEQUATE INFORMATION
  5. ASK THEM TO BACK UP CRAZY THEORIES
  6. IGNORE DIFFERENCES BETWEEN LEGAL STIPULATION AND SCIENTIFIC TRUTH
  7. ACT UNETHICALLY AND ASK THEM TO DO SO, AS WELL

More information on experts and the law is available via IMS Expoert Service's "Bullseye" newsletter. Subscribe here. Peruse the archives here.

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More EFS-Web Online Training Semimars

The United States Patent and Trademark Office is holding two more free EFS-Web Online Training Seminars from 1pm – 3pm Eastern Time. Events are being held Tuesday, April 18th and Tuesday, April 25th, 2006.

These interactive events will cover the same information as the previous online events, including the following information:
  • Introduction to EFS-Web, USPTO’s new safe and simple online patent application submission solution
  • EFS-Web overview & benefits
  • Screen by screen walk-through of online patent filing
  • Technical requirements for file formats, security and browser settings
  • Detailed EFS-Web demonstration
  • Support and training resources
  • Live Q&A session with EFS-Web experts

The presentations will be streamed to you live, via the Internet, and the audio portion of the event will be available via toll free telephone number. Feel free to participate in the training session on your own or with a group. You only need to enroll one person for a group event. If you are only using one computer you only need one enrollment. Each scheduled event will present the same material so there is no need to enroll in more than one event.

Each event is limited to 125 attendees, so register as soon as possible at to https://websurveyorevents.webex.com. After you have enrolled in the event of your choosing, a confirmation will be sent to you, via email, providing the date, time and link to the event.

Technical requirements for these events may be found at: http://websurveyor.com/downloads/TechnicalInformationforthe3-28event.doc

To review EFS-Web materials and frequently asked questions prior to training please click here: http://www.uspto.gov/ebc/efs_help.html

Links to more online resources for EFS-Web are available here.

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