updates for Friday, August 29, 2008
Arbitration Clause Terminates ITC Investigation Where Assertion Was Not "Wholly Groundless"
In determining whether to stay or termination an investigation in favor of arbitration, the undersigned [ALJ] must “first inquire as to who has the primary
power to decide arbitrability under the parties’ agreement.” Qualcomm Inc. v.
Nokia Corp., 466 F.3d 1366, 1371 (Fed. Cir. 2006) [pdf]. If the parties did not clearly and unmistakably intend to delegate the arbitrability decision to an arbitrator, then the undersigned must undertake a full arbitrability inquiry. Id. If the parties have clearly and unmistakably intended to delegate the arbitrability decision to an arbitrator, then the undersigned must make a secondary inquiry to determine whether the assertion of arbitrability is “wholly groundless.” Id.
. . . In Qualcomm, the license at issue similarly incorporated specific arbitration rules. 466 F.3d at 1372-73. Like the ICC Rules, the incorporated arbitration rules in Qualcomm made clear that the arbitral tribunal determined its own jurisdiction. Id. The court found that the incorporation of the arbitration rules into the license agreement demonstrated that the parties clearly and unmistakably intended to delegate the issue of arbitrability to an arbitrator. Id. at 1373. Because there is a similar situation here, the undersigned finds that the parties have clearly and unmistakably delegated the determination of arbitrability to the arbitrator. See also Shaw Group Inc. v. TripleJine Int'l Corp., 322 F.3d 115, 122 (2d Cir. 2003) (finding that the incorporation of the ICC Rules into a license agreement evidenced the parties’ intent to delegate arbitrability to the arbitrator.
. . . The “wholly groundless” inquiry is a limited one, and is not intended to be a actual determination of arbitrability:
"[I]n undertaking the “wholly groundless” inquiry, the district court should look to the scope of the arbitration clause and the precise issues that the moving party asserts are subject to arbitration. Because any inquiry beyond a “wholly groundless” test would invade the province of the arbitrator ... the district court need not, and should not, determine whether Nokia’s defenses are in fact arbitrable. "
Qualcomm, 466 F.3d at 1374. Examining the license, the undersigned finds that the “arising out of or relating to” language in the arbitration clause supports a broad interpretation. Certain Nickel Metal Hydride Consumer Batteries, Components Thereof and Consumer Electronic Products Containing Same, Inv. No. 337-TA-579, Order No. 4, at 6, n. 6 (May 30,2007) (stating that “arising out of’ arbitration clauses are interpreted broadly).
The undersigned acknowledges that there are still many issues to be resolved before the arbitrability determination can be made. . . . Further, the parties provide no discussion as to whether Respondents’ thiamethoxam products can be made in such a way so as to not allegedly infringe the ‘404 patent. This fact will be relevant in determining whether Respondents’ license rights would be truly derogated by a finding of infringement of the ‘404 patent. These questions, and others, will be addressed and resolved by the arbitrator during the arbitrability analysis. Because the parties have delegated the question of arbitrability to the arbitrator, the undersigned cannot and will not resolve these issues. See Qualcomm, 466 F.3d at 1374. The undersigned is restricted to the limited “wholly groundless” inquiry, and Respondents have shown that their arbitration claim is not wholly groundless.7
footnote 7. If the arbitrator determines that the dispute is not subject to arbitration, then Complainants are free to re-file their complaint.
updates for Thursday, August 28, 2008
Federal Circuit Clarifies Evidentiary Requirements for Inequitable Conduct
According to the opinion by Chief Judge Michel,
If a threshold level of intent to deceive or materiality is not established by clear and convincing evidence, the district court does not have any discretion to exercise and cannot hold the patent unenforceable regardless of the relative equities or how it might balance them. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 398 (Fed. Cir. 1996) (holding that the district court properly refrained from balancing materiality and intent when a threshold showing of intent to deceive was not clearly and convincingly made). Only after adequate showings are made as to both materiality and deceptive intent may the district court look to the equities by weighing the facts underlying those showings. "The more material the omission or the misrepresentation, the lower [the] level of intent [is] required to establish inequitable conduct, and vice versa." Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1256 (Fed. Cir. 1997). At this second stage, however, the question is no longer whether materiality and/or intent to deceive were proven with evidence that is sufficiently clear and convincing. While the facts of materiality and intent to deceive must be proven by clear and convincing evidence, the district court must balance the substance of those now-proven facts and all the equities of the case to determine whether the severe penalty of unenforceability should be imposed. It is this balancing that is committed to the district court's discretion. Molins, 48 F.3d at 1178.
Here, the district court's finding of deceptive intent as to both patents-in-suit was based primarily on its acceptance of RJR's theory that Williams and Star conspired to deliberately prevent Delmendo and his colleagues at the Sughrue firm from disclosing the Burton letter to the PTO by replacing them with the Banner firm and purposely keeping the Banner firm ignorant of the Burton letter. We hold that this "quarantine" theory was not supported by clear and convincing evidence. As a result, we hold that the district court's finding of deceptive intent with regard to the '649 patent was clearly erroneous. . . .
Water Supply Recharge Port Obvious Improvement to Laproscopic Gas Humidifier
According to the opinion by Circuit Judge Schall,
Lexion’s ’474 and ’609 patents disclose and claim a method and apparatus for heating and humidifying the gas used to inflate a patient’s abdomen during laparoscopic surgery. The heated gas helps reduce the side effects of post-operative shivering and
shoulder pain frequently experienced following laparoscopic surgery.
. . . The ’609 patent improves upon the ’474 patent by including a recharge port on the humidifier that allows the humidifier’s water supply to be replenished during extended surgeries.
. . . Prior to trial, the district court granted JMOL of obviousness with respect to the ’609 patent. On appeal, Lexion contends that the district courts’ grant of JMOL was erroneous for reasons which we find unpersuasive. The ’609 patent simply modifies the invention described in the ’474 patent via a simple and minor improvement: adding a recharge part that allows for the replenishment of water for extended use during laparoscopic surgeries. In KSR, the Supreme Court stated: "[w]hen a work is available in one field, design incentives and other market forces can prompt variations of it, either in the same field or in another. If a person of ordinary skill in the art can implement a predictable variation, and would see the benefit of doing so, § 103 likely bars its patentability. Id. at 1731. We think that the ’609 patent was nothing more than a predictable variation or improvement of the ’474 patent that was well within the skill and ordinary creativity of a skilled artisan. We therefore affirm the district court’s grant of JMOL of obviousness with respect to the ’609 patent.
updates for Tuesday, August 19, 2008
Non-Practicing Licensor Denied Preliminary Injuction
In eBay Inc. v. MercExchange, L.L.C., the Supreme Court held that a plaintiff seeking a permanent injunction in a patent case must demonstrate:
In this case, the district court found that Voda had not identified any irreparable
- that it has suffered an irreparable injury;
- that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
- that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and
- that the publicinterest would not be disserved by a permanent injunction.
injury to himself due to Cordis’s infringement of his patents and also failed to show that monetary damages are inadequate to compensate for Cordis’s infringement. The
district court explained that Voda had attempted to prove irreparable injury by alleging irreparable harm to his exclusive licensee, rather than himself.
Voda argues that the district court erred in adopting a categorical rule that precludes a patent owner from proving its entitlement to an injunction by showing irreparable harm to its exclusive licensee. Specifically, Voda argues that such a categorical rule conflicts with eBay. In eBay, the Court explained that: "[S]ome patent holders, such as university researchers or self-made inventors, might reasonably prefer to license their patents, rather than undertake efforts to secure the financing necessary to bring their works to market themselves. Such patent holders may be able to satisfy the traditional four-factor test, and we see no basis for categorically denying them the opportunity to do so. To the extent that the District Court adopted such a categorical rule, then, its analysis cannot be squared with the principles of equity adopted by Congress." eBay at 393.
We disagree with Voda that the denial of a permanent injunction in this case conflicts with eBay. The Supreme Court held only that patent owners that license their patents rather than practice them “may be able to satisfy the traditional four-factor test” for a permanent injunction. Id. (emphasis added). Nothing in eBay eliminates the requirement that the party seeking a permanent injunction must show that “it has suffered an irreparable injury.” Id. (emphasis added). Moreover, we conclude that the district court did not clearly err in finding that Voda failed to show that Cordis’s infringement caused him irreparable injury. In addition, we find that the district court did not clearly err or abuse its discretion in finding that monetary damages were adequate to compensate Voda. Accordingly, we affirm the district court’s denial of Voda’s request for a permanent injunction.
Curved Catheter Equivalent to Catheter with Straight Portions
According to the opinion by Circuit Judge Gajarsa,
As discussed, the only limitations that Cordis argues have no equivalent in its XB catheters are the second straight portion limitation of claim 1 of the ’625 patent and the first substantially straight leg limitation of all claims of the ’195 patent. However, we conclude that Voda introduced substantial evidence establishing that the redesigned curve portion of the XB catheter meets the straight and substantially straight limitations under the doctrine of equivalents.
One of Voda’s experts testified that the difference in shape between the redesigned curve portion and a straight portion was so insubstantial that cardiologists would have difficulty distinguishing the two during use. There was also testimony that the redesigned curve portion performed the same function as a straight portion, in the same way, to achieve the same result. First, one of Voda’s experts explained that the redesigned curve portion of the XB catheter provides the same function as the straight and substantially straight portions in Voda’s claims because it provides extra backup support for the catheter during use. Indeed, the name “XB” stands for “extra backup.” There was also testimony that Cordis’s substitution of the redesigned curve portion in the accused XB catheter made the product easier to manufacture, but did not alter the XB catheter’s functionality. Second, one of Voda’s experts testified that the redesigned curve portion of the XB catheter functions in the same way as the straight and substantially straight portions in Voda’s claims because it engages the wall of the aorta opposite the coronary ostium for a substantial length during use. The length of engagement by the redesigned curve portion during use was explained to be indistinguishable from the length of engagement in Voda’s claims. Third, there was testimony that the redesigned curve portion achieves the same result as the straight or substantially straight elements by making it “difficult to dislodge the guide catheter from its desired orientation” during use.
Given this record, we find that substantial evidence supports the jury’s findings that Cordis’s XB catheters infringe the straight and substantially straight claims of the ’625 and ’195 patents under the doctrine of equivalents. Accordingly, we affirm the jury’s findings of infringement with respect to these claims.
updates for Friday, August 15, 2008
USPTO To Inflate Patent Fees 5% on October 2, 2008
Narrowed Reissue Claim Invalid for Covering Embodiment Not Infringing Original Claim
An earlier Federal Circuit decision held that the accused products did not infringe the claims of the original patent where the claim limitation “said stud having at least one hole formed therein proximal to said top end” was limited to a pre-existing hole. According to opinion by Chief Circuit Judge Michel,
This court has held:
A claim of a reissue application is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process which would not have infringed the original patent. A reissue claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987); see also In re Freeman, 30 F.3d 1459 (Fed. Cir. 1994).
. . . Brady does not ask that we explicitly overrule the prior panel’s construction of the
claims of the original patent, and Brady admits that products that would not infringe the claims of the original patent do infringe reissue claim 11. This is because reissue claim 11 requires that “said stud having at least one hole formed therein proximal to said top end by an attachment means.” In other words, in reissue claim 11, the hole is not preexisting but is formed using a self tapping screw (the attachment means disclosed in the specification). Because products in which the hole is not pre-existing but instead formed using a self-tapping screw (i.e., the accused products in this case) would not infringe the claims of the original patent but would infringe reissue claim 11, we conclude that reissue claim 11 enlarged the scope of the original patent. We affirm the district court’s grant of summary judgment of invalidity as to that claim.
. . . In sum, we affirm the district court’s summary judgment of invalidity as to reissue claim 11 because that claim enlarged the scope of the original patent claims and Brady applied for reissue more than two years after the original patent issued.
updates for Thursday, August 14, 2008
USPTO Adopts New Rules Concerning Representation of Others Before the Agency
- the conduct of disciplinary investigations,
- issuing of warnings when closing such investigations,
- non-disciplinary transfer to disability inactive status,
- reinstatement to practice before the Office, and
- recognition to practice before the Office in trademark cases.
With regard to practitioner's signatures under new 37 C.F.R. §11.18 entitled "Signature and certificate for correspondence filed in the Office":
. . .(b) By presenting to the Office or hearing officer in a disciplinary proceeding (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—
(1) All statements made therein of the party’s own knowledge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or knowingly and willfully makes any false, fictitious, or fraudulent statements or representations, or knowingly and willfully makes or uses any false writing or document knowing the same to contain any false, fictitious, or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001 and any other applicable criminal statute, and violations of the provisions of this section may jeopardize the probative value of the paper; and
(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circumstances,
(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of any proceeding before the Office;
(ii) The other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;
(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and
(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.
(c) Violations of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions or actions as deemed appropriate by the USPTO Director, which may include, but are not limited to, any combination of—
(1) Striking the offending paper;
(2) Referring a practitioner’s conduct to the Director of Enrollment and Discipline for appropriate action;
(3) Precluding a party or practitioner from submitting a paper, or presenting or contesting an issue;
(4) Affecting the weight given to the offending paper; or
(5) Terminating the proceedings in the Office.
(d) Any practitioner violating the provisions of this section may also be subject to disciplinary action.
The Office anticipates that in taking action under § 11.18, it "would use the proper considerations utilized in issuing sanctions or taking action under [FRCP] Rule 11. Consideration may be given, for example, to whether the improper conduct was willful or negligent; whether it was part of a pattern of activity, or an isolated event; whether it infected an entire application, or only one particular paper; whether the person has engaged in similar conduct in other matters; whether the conduct was intended to injure; what effect the conduct had on the administrative process in time and expense; whether the responsible person is trained in law; what is needed to deter that person from repetition in the same case; and what is needed to deter similar conduct by others. All of these in a particular case may be proper considerations."
According to the official response to one comment that "queried the meaning of the terms ‘‘unnecessary delay’’ or ‘‘needless increase’’ and suggested that there could be good and sufficient reasons for a delay, such as poverty and that a practitioner’s advice to a client to file an application to keep the case alive should not be regarded as unnecessary delay:"
The relevant language of § 11.18(b)(2)(i), "not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of’ is taken from Rule 11 of the Federal Rules of Civil Procedure. Rule 11, titled "Signing of Pleadings, Motions, and Other Papers; Representations to Court; Sanctions,’’ provides, in pertinent part, ‘‘(b) Representations to Court. By presenting to the court (whether by signing, filing, submitting, or later advocating) a pleading, written motion, or other paper, an attorney or unrepresented party is certifying that to the best of the person’s knowledge, information, and belief, formed after an inquiry reasonable under the circumstances, (1) it is not being presented for any improper purpose, such as to harass or to cause unnecessary delay or needless increase in the cost of litigation.’’ The case law under Rule 11 construing the terms '‘unnecessary delay' or 'needless increase' provides practitioners with sufficient guidance for construing the use of the same terms in § 11.18(b)(1)(i). [T]he provisions of § 11.18(b)(1)(i) cover an array of different situations occurring in both patent and trademark proceedings. For example, the provision applies to: Third party filing a paper requesting withdrawal of an applicant’s previously published patent application from issue to consider prior art; to a third party filing papers in an applicant’s patent application to assert that the third party owns the claimed invention and discharging the practitioner engaged by the applicant to prosecute the application; as well as to a third party filing a notice of express abandonment in an applicant’s patent or trademark application. Applicants having legally sufficient reasons to properly file continuing applications may do so in compliance with § 11.18(b)(1)(i)."
There was no further guidance on what are "legally sufficient reasons to properly file continuing applications."
With regard to patent agent practice, the comments note that
Patent agents are not empowered by their registration to provide advice about title and enforcement of patents. Accordingly, it is appropriate to set forth authority of practitioners to prepare an assignment or cause an assignment to be executed by virtue of their registration. Preparing an assignment or causing an assignment to be executed is appropriate only when they are reasonably necessary and incidental to the preparation and prosecution of a patent application, or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate. . . .
Contrary to several comments, the Office has not taken the position that a registered patent agent could prepare a patent assignment or license for a patent if not prohibited by state law.
. . . Section 11.5(b)(1) permits any registered practitioner to replicate the terms of the form agreements for an assignment in contemplation of filing or prosecuting a patent application, and submit the same to the Office for recordation in connection with a concurrently filed or pending patent application.
. . . The suggestion to define practice before the Office as rendering opinions on validity and infringement for clients has not been adopted. Whether a validity opinion involves practice before the Office depends on the circumstances in which the opinion is sought and furnished. For example, an opinion of the validity of another party's patent when the client is contemplating litigation and not seeking reexamination of the other party's patent could not be reasonably necessary and incident to the preparation and prosecution of patent applications or other proceedings before the Office involving a patent application or patent. In such situations, the opinion may constitute unauthorized practice of law. See Mahoning Cty. Bar Assn. v. Harpman, 608 N.E.2d 872 (Ohio Bd.Unauth.Prac. 1993). Similarly, a validity opinion for the sale or purchase of the patent is neither the preparation nor the prosecution of a patent application. Likewise, the opinion is not a proceeding before the Office involving a patent application or patent.
Registration to practice before the Office in patent cases does not authorize a person to provide a validity opinion that is not reasonably necessary and incident to representing parties before the Office. In contrast, a validity opinion issued in contemplation of filing a request for reexamination would be in contemplation of a proceeding before the Office involving a patent. Due to registration to practice before the Office in patent cases, a practitioner may issue a validity opinion in contemplation of filing a request for reexamination.
In no circumstance would practice before the Office include the rendering of opinions on infringement. Under the law, the Office has no authority to resolve infringement cases. Thus, registration to practice before the Office in patent cases does not include authority to render infringement opinions. See Mahoning Cty. Bar Assn. v. Harpman, supra.” 73 Fed. Reg. at 47670; emphasis added.
updates for Friday, August 08, 2008
No Disclosure Required of Post-Filing Test Results; Judge Reassignment Ordered
Among the errors noted by Circuit Judge Rader:
The trial judge found inequitable conduct because the inventors did not disclose Dr. Mista's post-filing K factor tests to the USPTO. Because Dr. Mista's work occurred after she and Dr. Parker had filed the patent application, these K factor experiments were not material to their inventive activity. In the circumstances of this case, therefore, the inventors had no obligation to report their later tests to the USPTO.
. . . Additionally, the patents do not even mention the K factor. The K factor research is not necessary to practice the patented invention. In fact, most of Dr. Mista’s mask-generating programs included no K factor at all, including her final program called makemask. Importantly, Dr. Mista and her coauthors published the K factor tests to the scientific community. Publication is an act inconsistent with an intent to conceal data from the USPTO.
Because the trial court focused exclusively on candor, its findings and conclusions improperly excluded and ignored proferred testimony on the immateriality of the K-factor experiments. . . .
In sum, the trial court completely ignored the materiality prong. Indeed the trial court, in its sparse articulation of reasons for the decision, noted "I am not trying a patent case I am trying a particular matter that has been presented to me having to do with candor and good faith." Neglecting to consider both prongs of the analysis was clear error. The K factor tests probed the limits of accepted halftoning principles as part of a doctoral thesis. In light of the different purposes and disclosures of the patented technology, these experiments were not material to the patented invention and did not give rise to any disclosure obligation.
This court considers a transfer request with great caution, and, in the absence of personal bias, would grant such a request only in "unusual circumstances." Davis & Cox v. Summa Corp., 751 F.2d 1507, 1523 (9th Cir. 1985). This court understands that a transfer may require a new judge to learn material and thus may occasion some duplicative judicial effort. At the same time, this court must recognize that a pattern of error based on previously-expressed views or findings may make it difficult for a trial court to approach a remanded case with an open mind. After a thorough review of all the evidence, testimony, and facts of this case, this court concludes the strongly expressed convictions of the trial court in this case may not be easily and objectively reconsidered. Accordingly, this court remands with instructions to reassign this case. See 28 U.S.C. § 2106; Liteky v. U.S., 510 U.S. 540, 554 (1994). See also Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297 (Fed. Cir. 2005); Juicy Whip, Inc. v. Orange Bang, Inc., 382 F.3d 1367 (Fed. Cir. 2004). Thus, this court remands to the Chief Judge of the United States District Court for the District of Arizona to determine the reassignment of this case.
Because the trial court incorrectly held RCT's patents unenforceable due to inequitable conduct, this court reverses that holding and vacates the award of attorney fees. We also vacate the trial court's grant of Microsoft's noninfringement and invalidity motions as well as the grants of Microsoft's motions in limine. Finally, this court remands with instructions to assign this case to a different judge for a proper determination of validity and infringement on the merits.
updates for Thursday, August 07, 2008
TGIF for (Automatic) Paper or Plastic?
for "System and method for determining packaging preference"
1. A method of determining a customer's packaging preference in a conventional point-of-sale retail location, wherein the point-of-sale retail location includes a person who performs the packaging of items purchased in the point-of-sale retail location for the customer, comprising the steps of:
identifying the customer using a customer identifier; and
retrieving available container packaging preference information for the purchased items using the customer identifier for the identified customer.
Thank Goodness It's Friday (and please, don't crush the bread),
p.s. - In the United States, single-use plastic shopping bags are common and typically free with a purchase. However, some retailers, such as department stores, are more likely to provide paper bags to shoppers, whereas supermarkets and grocery stores tend to favor plastic bags and/or offer both types under the cashier's introductory refrain of "Paper or Plastic?" In some European countries, environmental legislation has led retailers to charge for plastic shopping bags. For example, the Republic of Ireland imposed a dedicated plastic bag tax, forcing retailers offering plastic bags to charge for them. But, according to the Sierra Club, "the difference between paper and plastic recycling is small compared with the reusing [of] bags."
Check out the Web Museum dedicated to 100 years of shopping bags.
USPTO Clarifies Effective Dates of Claims and Continuation Rules
The USPTO anticipates that it will be some time before the litigation concerning the Claims and Continuations Final Rule is finally resolved. The USPTO is concerned that some applicants may be taking preparatory action anticipating the new requirements of 37 CFR 1.78(f)(1) and (2), as added by the Claims and Continuations Final Rule, due to the possibility that the injunction by the district court in Tafas will be removed. The purpose of this notice is to aid applicants who might otherwise feel the need to take such preparatory actions by identifying the applicability date of the provisions of 37 CFR 1.78(f) in the event that the injunction by the district court in Tafas is removed.
Specifically, the changes in 37 CFR 1.78(f)(1) and (f)(2) will only apply to applications filed on or after any new effective date that would be published by the USPTO after the removal of the injunction. Thus, in the event the referenced injunction is lifted, applicants will only need to comply with the identification requirements of 37 CFR 1.78(f)(1) in applications having an actual filing date on or after this new effective date.
Likewise applicants will only have to identify other commonly owned applications that satisfy the conditions set forth in 37 CFR 1.78(f)(1)(i) in applications that have a filing date on or after this new effective date. Similarly, the rebuttable presumption of 37 CFR 1.78(f)(2) will only apply to applications having an actual filing date on or after the effective date. Furthermore, the rebuttable presumption will only exist with respect to an application that satisfies the conditions set forth in 37 CFR 1.78(f)(2)(i) and also has a filing date on or after this new effective date.
The provisions of 37 CFR 1.17(f), 1.26(a) and (b), 1.52(d)(2), 1.53(b) and (c)(4), 1.75(b) and (c), 1.76(b)(5), 1.78, 1.104(a)(1) and (b), 1.110, 1.114(a) and (d), 1.136(a)(1), 1.142(a), 1.145, 1.495(g), and 1.704(c)(11) in effect as of August 7, 2008 are the provisions of 37 CFR 1.17(f), 1.26(a) and (b), 1.52(d)(2), 1.53(b) and (c)(4), 1.75(b) and (c), 1.76(b)(5), 1.78, 1.104(a)(1) and (b), 1.110, 1.114(a) and (d), 1.136(a)(1), 1.142(a), 1.145, 1.495(g), and 1.704(c)(11) in effect on October 31, 2007, and may be found in the July 2007 Revision of the Code of Federal Regulations. The provisions 37 CFR 1.105(a)(1)(ix), 1.114(f), (g), and (h), 1.117, 1.142(c), 1.265, and 1.704(c)(11) as added by the Claims and Continuations Final Rule are not in effect as of August 7, 2008.
Amendments to Specification Introducing Generic Term Not New Matter
Power Dekor had contended that the later-claimed concept of “clearances” was not discussed in the original specification; rather, it was introduced as new matter in the application leading to the ’779 patent through alterations to fourteen paragraphs, the introduction of new reference numbers in certain figures, and the addition of two completely new paragraphs.
The Commission's Administrative Law Judge agreed that there was no written description support for the later-claimed concept of “clearances” in the originally-filed disclosure (the ’044 application). The ALJ focused on certain amendments that were made to the originally-filed specification, wherein the applicant used the term “clearance” to describe various areas of the floor panels that had been previously referred to by three separate terms: (1) “recess,” (2) “space” or “intermediate space,” and (3) “chamber” or “dust chamber.” According to the ALJ, nothing in the originally-filed specification indicated that these three different spaces could be treated the same. The ALJ determined that this all-encompassing “clearance” concept constituted new matter, as did the applicant’s re-labeling of certain figures to show clearance locations that were not previously identified. Because the clearance claims were not supported by the originally-filed written description, the ALJ concluded that they were invalid under 35 U.S.C. § 112 ¶ 1.
However, according to the Commission, the applicant’s amendment to the application resulting in the patent did not introduce new matter because it “did no more than label specific clearances and explain what was already shown in the specification and figures of the original application.” Thus, the Commission concluded that the originally-filed disclosure demonstrated that the applicant was in full possession of the subject matter of the clearance claims at the time that original disclosure was filed. The Commission therefore determined that the clearance claims were not invalid under § 112 ¶ 1, finding that the respondents had not proven invalidity by clear and convincing evidence.
According to the opinion by Circuit Judge Schall
. . . we cannot say that the Commission’s conclusion regarding the validity of claims 5 and 17 is unsupported by substantial evidence. That is, substantial evidence supports the Commission’s determination that those claims were adequately described in the originally-filed disclosure. Like the Commission, we do not think that the patentee’s various amendments to the specification—e.g., the introduction of the generic term clearance” and addition of labels to certain figures—in prosecuting the ’779 patent were of such significance as to demonstrate a prior lack of possession with respect to the subject matter claimed in claims 5 and 17.
Nor do we think that the patentee’s attribution of two related meanings to the term “clearance” is problematic. It is the later-claimed subject matter that must be supported by adequate written description in the originally-filed disclosure. See Vas-Cath, 935 F.2d at 1564 (“The invention is, for purposes of the ‘written description’ inquiry, whatever is now claimed.”). Here, there is no dispute with respect to the subject matter that is claimed in claims 5 and 17. Although Power Dekor refers to the patentee’s use of the term “clearance” as “inconsistent,” it does not argue that either claim 5 or claim 17 is indefinite. Indeed, the ALJ had no trouble correctly distinguishing, in context, between the patentee’s use of the term “clearance” in claim 5 to describe an internal void in coupled panels, and in claim 17 to describe the indentation of an uncoupled panel that defines an internal void upon coupling. See ALJ Determination at 72; see also Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1311 (Fed. Cir. 1999) (finding it appropriate, in the context of the patent at issue, to construe the same term to have two different meanings).
Finally, we are not persuaded to reverse the Commission’s finding of validity by Power Dekor’s citation to Purdue Pharma. That case was an appeal from a bench trial, wherein the district court held that the claims at issue were invalid for lack of adequate written description under § 112 ¶ 1. Thus, the question we considered was whether the district court clearly erred in concluding that the claims at issue lacked adequate written description. Purdue Pharma, 230 F.3d at 1323–24. Under the clear error standard, a court’s findings will not be overturned in the absence of a “definite and firm conviction” that a mistake has been made. Hoffmann-La Roche, Inc. v. Promega Corp., 323 F.3d 1354, 1359 (Fed. Cir. 2003) (citation omitted). We ultimately held that the district court’s conclusion was not clearly erroneous. Purdue Pharma, 230 F.3d at 1323–24. Here, we review for substantial evidence the Commission’s conclusion that the clearance claims were not invalid for lack of adequate written description. Moreover, the later-filed claims in Purdue Pharma were directed at a specific numerical relationship between two variables (Cmax/C24 > 2). However, there was nothing in the disclosure suggesting that the Cmax/C24 ratio itself—regardless of the specifically claimed range of values for that ratio—was an important feature of the invention. Id. at 1326–27. Indeed, we found that the disclosure did not even motivate one to calculate Cmax/C24. Id. at 1327. Here, the importance of the later-claimed chambers was clearly described in the originally-filed disclosure. See ’486 patent col.6 ll. 14–17, col.7 ll.46–49, col.11 l.66–col.12 l.4. We are not persuaded by Purdue Pharma that the Commission’s decision regarding validity of the clearance claims in this case is unsupported by substantial evidence.
No Mandamus to Stay Section 337 Proceedings Pending USPTO Reexamination
In the lower proceedings, the Commission had vacated Administrative law Judge Essex's initial determination granting the stay and ordered the proceedings be reinstated "at the earliest practicable time."
According to the order by Circuit Judge Newman:
The remedy of mandamus is available only in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461, 464 (Fed. Cir. 1988). A party seeking a writ bears the burden of proving that it has no other means of attaining the relief desired, Mallard v. U.S. Dist. Court for the Southern Dist. of Iowa, 490 U.S. 296, 309 (1989), and that the right to issuance of the writ is "clear and indisputable," Allied Chemical Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980). A court may deny mandamus relief "even though on normal appeal, a court might find reversible error." In re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985).
Freescale has not shown that its right to the writ is clear and indisputable. The Commission provided a sufficient basis for denying the stay. Furthermore, that a petitioner may suffer hardship, inconvenience, or an unusually complex trial does not provide a basis for a court to grant mandamus. See United States v. Watson, 66 C.C.P.A. 107, 603 F.2d 192, 196-97 (1979). Cf. Federal Trade Comm'n v. Standard Oil Co., 449 U.S. 232, 244 (1980) (expenses and burdens of defending action do not constitute irreparable harm). Thus, the petition is denied.
updates for Wednesday, August 06, 2008
USPTO Proposes Limits on Facsimile Submissions and Minimum Twelve Point Font Size on Non-USPTO Forms
Specifically, any correspondence that can be submitted via EFS–Web would no longer be accepted via facsimile transmission. Similarly, any type of patent or trademark correspondence that can be submitted via the Office’s Electronic Patent Assignment System (EPAS), and Electronic Trademark Assignment System (ETAS), such as assignment documents submitted for recording in Assignment Services Division, would no longer be permitted to be submitted via facsimile transmission. Applicants, third party requesters, and patent owners would also be requitred: (1) To utilize a facsimile transmission number identified by the Office for a particular type of correspondence, i.e., the submission must be transmitted directly to the area of the Office appropriate to receive the transmission at its identified transmission number, or otherwise the transmission would not be effective; and (2) to limit each submission made via facsimile transmission to one application or other matter before the Office, except for a single submission of multiple patent maintenance fee payments or requests for refunds thereof.
With regard to fonts size, it is proposed to: (1) Increase the mandatory minimum font size where the font must have capital letters no smaller than 0.28 cm (0.11 inch) high (e.g., a font size of 12 point in Times New Roman); (2) establish that the newly proposed font size requirement applies to prosecution papers (specification, including the claims and abstract, drawings, and oath or declaration, reexamination request, any amendments or correction(s)) and any remarks, petitions, requests, affidavits or other papers submitted during prosecution of an application or a reexamination proceeding; (3) clarify that the proposed font size requirement does not apply to pre-printed information on paper forms provided by the Office or the copy of the patent submitted on paper in double column format as the specification in a reissue application or request for reexamination; and (4) clarify that papers submitted electronically that are to become part of the patent application or reexamination file must be readily legible.
For official information, contact Hiram H. Bernstein ((571) 272–7707), Senior Legal Advisor, or Raul Tamayo, Legal Advisor, ((571) 272–7728), USPTO Office of Patent Legal Administration, Office of Deputy Commissioner for Patent Examination Policy.
updates for Tuesday, August 05, 2008
World Patent Statistics for 2008
According to the World Intellectual Property Organization's "World Patent Report: A Statistical Review (2008):"
- Applicants from Japan, the United States of America, the Republic of Korea and Germany received 73% of total patent grants worldwide. Between 2000 and 2006, the number of patents granted to applicants from China and the Republic of Korea grew by 26.5% and 23.2% a year, respectively (average annual growth rate).
- Non-resident patent filings originate from a relatively small number of countries, led by the United States of America (21.9% of non-resident filings worldwide), Japan (21.7%) and Germany (10.8%). The 8 largest countries of origin increased their share of worldwide non-resident patent filings from 66% to 74% between 2000 and 2006. Applicants from emerging economies, including China, file relatively few patent applications outside their home countries.
- Approximately 6.1 million patents were in force in 2006. The largest number of patents in force were in the United States of America (1.8 million in 2006). However, the majority of patents in force were owned by applicants from Japan.
- By 2006, the number of patent applications awaiting examination at the USPTO was 1,051,502. The number of pending applications at other large patent offices, such as Germany (265,395) the European Patent Office (247,165) and Canada (205,776), is relatively small (compared to the USPTO and the JPO) and has been stable over time.
updates for Monday, August 04, 2008
Is Your USPTO Roster Address Up-to-Date?
To be sure the USPTO sends this letter to a current address, please check the official roster of registered patent attorneys and agents located at Patent Attorneys/Agents Search. If the contact information is correct, the practitioner need not update the information and the letter will be sent to that address. If the information is not current, the practitioner should go to Change of Address Form [PDF], complete the address change form, and promptly mail the change of address form to Mailstop OED, U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. Practitioners who have been removed from the Roster of Patent Attorneys and Agents must apply for reinstatement to the roster.
For additional information on the new OED records system, see On-Line Change of Address for Practitioners.
Technology Leakage Prevention Difficult Under Chinese Antitrust Framework
Under the current PRC legal framework, "technology transfer" is a very broad concept, covering both assignments that involve the transfer of intellectual property and licensing that does not involve the transfer of intellectual property. It includes the assignment of patent rights, patent licensing, and transfer of know-how or other technology. . . .
. . . The Supreme Court’s Opinion on Application of Law in the Adjudication of Technology Contract Disputes (the Supreme Court Opinion) is widely recognized as a milestone in the regulation of technology transfer, particularly with respect to technology monopolies misused by multinational companies in the course of their cooperation with Chinese businesses. . . . The Supreme Court Opinion specifies the following circumstances as illegal monopolies of technology or impediments to technological progress:
- Preventing a counterparty from conducting research and development on the
basis of the subject technology; restraining that party from using improvements to the technology; creating non-reciprocal conditions for the exchange of improvements, such as requiring a party to share improvements that result solely from the efforts of that party without compensation; transferring improvements to the transferor on a non-reciprocal basis; or exclusively or jointly holding the rights to the improvements without compensation (this clause is hereinafter referred to as the Improvement Provision)
- Preventing a counterparty from acquiringtechnologies similar to, or in competition with, those of the supplying party
- Preventing a counterparty from using the subject technology in a reasonable manner as required by the market, including unreasonably restricting quantity, variety, price, distribution channels and export markets of products or services
- Imposing additional conditions that are unnecessary for utilizing or applying the technology, including purchasing unnecessary technology, raw materials, products, equipment or services, or requiring a transferee to accept unnecessary personnel
- Unreasonably restraining a transferee’s channels or sources of procuring raw materials, parts, products or equipment
- Prohibiting a technology transferee from filing oppositions against the validity of the rights in the subject technology, or imposing additional conditions on filing such oppositions
. . . In practice, the Improvement Provision is perhaps the most controversial of the statutorily prohibited restrictions and has often troubled practitioners attempting to abide by it. It is helpful to analyze relevant issues frequently encountered in the practice. It can be inferred without much difficulty that the following arrangements shall be prohibited:
- . . . Creating non-reciprocal conditions for the exchange of improvements, such as requiring a transferee to share improvements that result solely from the efforts of said transferee without compensation, transferring improvements to the licensor on a non-reciprocal basis, or exclusively or jointly holding the intellectual property rights to the improvements without compensation
. . . As for technology improvements, the Supreme Court Opinion specifies that it would be an unreasonable restriction if a contract entitled a licensor to use improvements developed solely by the transferee without compensation or on a non-reciprocal basis. Put another way, an exchange of improvements or use in exchange for fair compensation will not be regarded as unreasonable.
According to Chinese law, if a technology transfer contract is entered into by a foreign party and a PRC party, it is possible for the parties to choose the law of a jurisdiction outside the PRC as the governing law of the contract. Given the aforementioned restrictions imposed by Chinese law on the technology transfer, a foreign party may wonder whether it is possible to circumvent the aforesaid restraints by applying foreign law to the agreement. However, choosing a foreign governing law will not necessarily allow the parties to include provisions in the contract that would otherwise be unenforceable. This is because contracts that do not comply with mandatory PRC law are not enforceable against a Chinese party in China.
"CHINATOWN BRASSERIE" Not Primarily Geographically Deceptively Misdescriptive for Restaurant 1/2 Mile Outside of NYC's Chinatown, Says TTAB
"So there you have it," quips Welch. "Some poor sap who thinks he's in Chinatown because he's eating at the CHINATOWN BRASSERIE is actually not in Chinatown at all. Is he being deceived? I think so."
On this record we conclude that the primary significance of CHINATOWN, as used
in the CHINATOWN BRASSERIE mark, is not that of a generally known geographic
location – at least not in the sense intended by the Trademark Act. The record
indicates that “CHINATOWN” is used generally to refer to neighborhoods with a
predominantly Chinese population. The record indicates further that, in the case
of New York City, the city where applicant’s restaurant is located, there is more than one CHINATOWN. Also, the “CHINATOWN” which is only ½ mile from applicant’s restaurant, is a consistently-expanding neighborhood.
. . . Turning to the issue of a possible services-place association, we conclude that there is none here. . . .
. . . The Examining Attorney has provided evidence to show that the CHINATOWN in Lower Manhattan has many Chinese restaurants and that those restaurants are noted for their Chinese cuisine. However, we fail to see how someone dining in a restaurant ½ mile away would connect the services in applicant’s restaurant in a meaningful way with the services offered in restaurants in CHINATOWN, however that is defined. We have no evidence that the CHINATOWN in Lower Manhattan, nor any other one, is associated with a distinct type or style of Chinese cuisine. Neither the quality, nor the authenticity, nor any other feature of the restaurant services offered within the “borders” of CHINATOWN would necessarily differ in a meaningful way from the same services offered ½ mile away at another restaurant featuring Chinese cuisine. While a tourist may be confused about the location of the restaurant and/or the nuances of the neighborhood borders, this is not relevant to any services-place association delineated in Les Halles.
Therefore, we conclude, on this record, that there is no services-place association between the services and the mark at issue here. Furthermore, it also logically follows that, since we find no misrepresentation, we also conclude that there is no material effect on the purchasing decision.
TTAB Oppositions and Allegations of Infringement Lead to DJ Jurisdiction
It is only this combination that we pass upon today and which we hold suffices to demonstrate the existence of Article III jurisdiction. Neither are we alone in reaching such a conclusion; many other courts before us have considered TTAB oppositions in combination with threats of litigation sufficient under certain circumstances to suggest a live infringement controversy and thus establish Article III jurisdiction.9 To the extent one might worry that allowing declaratory litigation might supersede or even supplant already-ongoing administrative TTAB proceedings, or that it might impede efforts by parties to secure an informal resolution through correspondence and personal negotiation, we note that there exists a more appropriate venue for addressing such concerns: Before assuming declaratory judgment jurisdiction, a district court must not only consider its Article III authority to hear the case, it is also free to consider a range of other discretionary factors in assessing whether or not to exercise jurisdiction under the Act. See supra Part II; infra Part V. At the end of
the day, however, such discretionary considerations should not be confused with, or included in, the very different and non-discretionary assessment whether the Article III case-orcontroversy requirement has been satisfied.
. . . Though we hold that the district court has jurisdiction to entertain this case, the question remains whether, as a discretionary matter, it should do so. As we noted above, see supra Part II, the Declaratory Judgment Act does not demand that a district court decide every declaratory suit brought to it even where the court has the power to do so. Instead, once the court is satisfied that Article III’s jurisdictional requirements are met, it must then consider a number of factors, including those previously set out by this court in Mhoon, to determine whether the suit warrants the district court’s attention. These factors include:  whether a declaratory action would settle the controversy;  whether it would serve a useful purpose in clarifying the legal relations at issue;  whether the declaratory remedy is being used merely for the purpose of “procedural fencing” or “to provide an arena for a race to res judicata ”;  whether use of a declaratory action would increase friction between our federal and state courts and improperly encroach upon state jurisdiction; and  whether there is an alternative remedy which is better or more effective. Mhoon, 31 F.3d at 983.
In this case, the district court never reached the issue whether it should, as a matter of statutory discretion, consider Surefoot UT’s request for declaratory relief because it held that, by failing to present a case or controversy, the suit could not be entertained at all. Now, of course, the discretionary question must be faced and answered. Rather than tackling it ourselves, we believe the appropriate course is to afford the district court the opportunity to evaluate it in
the first instance.
Failure to Complete Electronic Filing Fee Payment Nullifies Opposition
Opposer obtained an extension of time to March 14, 2007 within which to file its opposition. On March 13th, its president attempted to file a notice of opposition electronically, but payment of the fee was not successfully completed. Therefore Opposer received neither the onscreen "Receipt" nor the e-mail acknowledgment that accompanies a successful filing. The payment was electronically processed by the PTO via a charge to opposer's credit card on March 16, 2007, but that was too late (see Rule 2.101(d)(4)).
"Perhaps Opposer should have hired an attorney for the filing," notes John Welch, "which was attacked by Applicant not only on the ground of timeliness, but also for failing to state a claim."
Foreign Outsourcing of Application Preparation May Require Export Administration Review
Applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the United States Patent and
Trademark Office (USPTO), such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances.
If an invention was made in the United States, technical data in the form of a patent application, or in any form, can only be exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, after compliance with the Export Administration Regulations (governing exports of dual-use commodities, software, and technology, including technical data, which are codified at 15 CFR Parts 730–774) or following the appropriate USPTO foreign filing license procedure. See 37 CFR 5.11(c). A foreign filing license from the USPTO does not authorize the exporting of subject matter abroad for the preparation of patent applications to be filed in the United States.Information regarding the EAR may be obtained from the BIS Web site at http://www.bis.doc.gov. Questions regarding the EAR should be directed to the BIS’s Outreach and Educational Services Division at (202) 482–4811.