U.S. Trademark Fraud Cured Post-Registration

Thanks to the TTABlog for pointing out a non-precedential decision of the U.S. Trademark Trial and Appeal Board from October 2008 ruling that correction of a false statement regarding use, if made before a registration has been challenged, creates "a rebuttable presumption that [registrant] did not intend to commit fraud." Zanella Ltd. v. Nordstrom, Inc., Opposition No. 91177858 (October 23, 2008) [not precedential]. According to John Welch,

It appears from this decision that fraud may be curable even after registration, as long as the false statement regarding use is corrected before the
registration is challenged. Note well that this is a non-precedential decision
by one panel of the TTAB, so it is not etched in stone. But it is certainly a
promising approach to the fraud problem. . . .

Let the post-registration fraudits begin!! [Maybe we should call them "f®audits"?]

Dependent Claim Element Insufficient to Trigger U.S. Inventorship

In Nartron Corp. v. Schukra U.S.A., Inc. (March 5, 2009) the Federal Circuit court of appeals reiterated that one "does not necessarily attain the status of co-inventor by providing the sole feature of a dependent claim." In this case, dependent claim 11 recited "The [seat control module for introducing massage to a seat control with an adjustable lumbar support] invention as defined in claim 6 wherein said lumbar support adjustor includes an extender."

According to the opinion by Circuit Judge Lourie,

We agree with Nartron that there is no genuine issue of material fact in this case and that Benson was not, as a result of suggesting an extender, a co-inventor of claim 11 of the ’748 patent as a matter of law. Any contribution Benson made to the invention described in claim 11 by contributing an extender was insignificant and therefore prevents Benson from attaining the status of a co-inventor. "One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor." Ethicon, 135 F.3d at 1460 (quotation marks omitted); see Caterpillar Inc. v. Sturman Indus., Inc., 387 F.3d 1358, 1377 (Fed. Cir. 2004) ("[A] person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known in the current state of the art." (quotation marks omitted)). Moreover, a joint inventor must "contribute in some significant manner to the conception or reduction to practice of the invention [and] make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention."
Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998); see Caterpillar, 387
F.3d at 1377 (quoting Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473
(Fed. Cir. 1997)).

. . . .the contribution of the extender is insignificant when measured against the full dimension of the invention of claim 11, not just because it was in the prior art, but because it was part of existing automobile seats, and therefore including it as part of the claimed invention was merely the basic exercise of ordinary skill in the art. See Fina Oil, 123 F.3d at 1473 ("The basic exercise of the normal skill expected of one skilled in the art, without an inventive act, also does not make one a joint inventor. Therefore, a person will not be a co-inventor if he or she does no more than explain to the real inventors concepts that are well known and the current state of the art." (citations omitted)); see also Eli Lilly, 376 F.3d at 1362 ("A contribution of information in the prior art cannot give rise to joint inventorship because it is not a contribution to conception.").

Borg Indak admitted at oral argument that a lumbar support adjustor with an extender existed in automobile seats in the prior art. Thus, Benson’s contribution of supplying the extender to the patented invention was the exercise of ordinary
skill in the art. The specification of the ’748 patent makes clear that the
automobile seat, including its lumbar support adjustor and extender, comprises
the existing object on which the invention (i.e., the control module) operates,
or the background to the invention. . . . As Borg Indak admitted, the extender
was an existing feature in an automobile seat. In fact, the necessity for the
invention described in the ’748 patent arose from the fact that existing
automobile seats had the parts required to provide a massage (e.g., lumbar
support adjustors including extenders), but simply lacked the controller that
would move those parts in a way that would provide a massage. . . .Thus,
Benson’s suggestion that the control module be capable of operating with an
automobile seat that has a lumbar support adjustor including an extender only
amounted to the exercise of ordinary skill in the art.

Further supporting the conclusion that Benson’s contribution of the extender was
insignificant when measured against the full dimension of the invention of claim
11, the specification and claims of the ’748 patent primarily focus not on the
structure of the seat itself, but on the structure and function of the control
module, which operates the seat. The specification mentions the extender only
once in a twenty-column patent.

The only time that the specification mentions the extender, it does no more than refer to it as the background upon which the invention is built. . . . The patent contains no description of the physical characteristics of the extender, nor does it contain any drawing of the
extender.

. . . This is not a case in which a person claims to be an inventor because he has suggested a non-obvious combination of prior art elements to the named inventors. Such an individual may be a co-inventor. There is not, and could not be, any claim that the addition of the extender here was anything but obvious. Benson’s contribution therefore does not make him a co-inventor of the subject matter of claim 11.

Utility Model Protection In China

According to Professor Wegner, yesterday, "at the opening of the oral hearing in the Zhejiang High People's Court in Chint v. Schneider, Chinese utility model holder Chint completed its major victory over French competitor Schneider through an unprecedented $ 23 million settlement (RMB 157 million), approximately half the damages awarded two years ago by the Wenzhou Intermediate People's Court."

He also offers a few lessons from Foley and Lardner's presentation on "China Patent Practice: The New Realities Strategies for Success for the Multinational Enterprise," including

• The 828,000 Chinese patent, utility model and design applications filed last year represent –by far –the largest number of patent filings of any country in the world.
• Because early patent protection will not be possible [due to rising application backlogs], utility model protection should be considered as an alternative.
• Less than one (1) percent of utility model applications are by foreign enterprises.
• Utility model protection is excellent for prompt grant of the patent right.
• The patent is registered with a substantive examination deferred until enforcement.
• Utility model protection is an excellent way to quickly boost the size of granted patent protection.
• Utility model protection has resulted in very high damages awards on a case by case basis
• a trade secret invention practiced in the United States may still be the basis for patenting in other countries; Only the United States adopted the unique bar against patenting an applicant’s secret invention. No other country has followed the U.S. lead of Judge Learned Hand in Metallizing Engineering.
• it is anticipated that many disputes will arise as to ownership of improvement inventions that are made as part of outsourcing or joint venture agreements.

Gasket on Flange Not Equivalent to Gasket on Lid

In Felix v. American Honda Motor Co. (April 10, 2009) the Federal Circuit held that the patent was not literally infringed because the accused product mounted a gasket on the automobile trunk lid, not on a flange as claimed in the patent. The patent was not infringed under the doctrine of equivalents because Felix surrendered claim scope with amendments made during USPTO prosecution.

According to the opinion by Circuit Judge Linn,

On Honda’s second motion for summary judgment, the district court held that Felix was precluded under the doctrine of prosecution history estoppel from arguing that the In-Bed Trunk infringed the gasket limitation by equivalents. Equivalents Op. at 7. Felix argues that he rebutted the presumption of prosecution history estoppel by showing that the amendment giving rise to the estoppel was tangential to the equivalent in question—namely, a gasket mounted on the lid, rather than the flange of the channel. . . .

. . . Amendment-based prosecution history estoppel “arises when an amendment is made to secure the patent and the amendment narrows the patent’s scope.” Festo, 535 U.S. at 736. “A patentee’s decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim.” Id. at 740. But the patentee may rebut this presumption by “demonstrat[ing] that the alleged equivalent would have been unforeseeable at the time of the narrowing amendment, that the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question, or that there was ‘some other reason’ suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., . . .

1. Presumption of Surrender

We first consider which amendment—if any—gave rise to a presumption of surrender of claim scope encompassing the equivalent at it issue. The limitation at issue here is the gasket limitation. That limitation was not contained in original independent claim 1, but was present in dependent claim 7. In Felix’s first amendment on September 10, 1999, he cancelled original claim 1 and rewrote original dependent claim 7 in independent form as claim 14 to contain all of the limitations of claims 1 and 7. J.A. 490-91. It was this first amendment that had the effect of adding the channel and gasket limitations of dependent claim 7 to the broader claim that was cancelled. “[T]he rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel.” Honeywell, 370 F.3d at 1134. Thus, Felix’s decision in the first amendment to cancel original claim 1 and to rewrite original claim 7 in independent form as claim 14 gave rise to a presumption of surrender.

The interesting wrinkle in this case is that even after Felix cancelled original independent claim 1 and rewrote original dependent claim 7 in independent form, the examiner still did not allow the rewritten dependent claim. In other words, even though Felix amended the claim and thereby narrowed its scope in an effort to secure allowance, that effort did not succeed.5 It was only after claim 8 was rewritten in independent form to include the limitations of claims 1, 7, and 8 that the claim was allowed.

The fact that the first amendment did not succeed and that a further amendment was required to place the claim in allowable form, however, is of no consequence as to the estoppel. It is the patentee’s response to a rejection—not the examiner’s ultimate allowance of a claim—that gives rise to prosecution history estoppel. . . .We therefore hold that the presumption of prosecution history estoppel attaches when a patentee cancels an independent claim and rewrites a dependent claim in independent form for reasons related to patentability, even if the amendment alone does not succeed in placing the claim in condition for allowance.

It is also immaterial in this case that the cancellation and amendment were to application claims 1, 7, and 14—rather than to application claims 8 and 16, which resulted in the asserted claim. The presumption of surrender “applies to all claims containing the [added] [l]imitation, regardless of whether the claim was, or was not, amended during prosecution.” Deering, 346 F.3d at 1326. . . . To hold otherwise would be to exalt form over substance and distort the logic of this jurisprudence, which serves as an effective and useful guide to the understanding of patent claims. The fact that the [the limitation in question] was not itself amended during prosecution does not mean that it can be extended by the doctrine of equivalents to cover the precise subject matter that was relinquished in order to obtain allowance of [another claim].”). Thus, in this case, the cancellation of original independent claim 1 coupled with the rewriting of original dependent claim 7 as independent claim 14 gave rise to a presumption of surrender applicable to all limitations, found in any of the claims of the ’625 patent, that correspond to the limitations of claim 7.

We next turn to the scope of the presumptive surrender. “[W]hen a claim is rewritten from dependent into independent form and the original independent claim is cancelled . . . the surrendered subject matter is defined by the cancellation of independent claims that do not include a particular limitation and the rewriting into independent form of dependent claims that do include that limitation. Equivalents are presumptively not available with respect to that added limitation.” Honeywell, 370 F.3d at 1144. Equivalents are therefore presumptively not available as to any of the subject matter added in Felix’s first amendment. It is immaterial that Felix chose to add both the channel and the gasket limitations, rather than just one. The resulting estoppel attaches to each added limitation. See Lucent Techs., Inc. v. Gateway, Inc., 525 F.3d 1200, 1218 (Fed. Cir. 2008) (“It is not relevant to the determination of the scope of the surrender that the applicant did not need to amend the claims [as they were amended] in order to overcome the prior art.”) . . . Felix is therefore presumptively barred from relying on the doctrine of equivalents to prove that Honda’s In-Bed Trunk meets the gasket limitation—one of the two limitations added by amendment.

2. Tangentiality

Felix argues that he has rebutted the presumption of prosecution history estoppel as to the gasket limitation, because “the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question.” Felix argues that the first amendment “was made because the applicant thought the prior art lacked a channel,” not because of the presence or position of a gasket. Appellant’s Br. at 34. . . .

Felix relies on the language in his argument to the examiner that “the cited references do not show the channel of Claim 7, which is formed at the rim of the bed opening, in combination with the other structure of Claims 1 and 7.” J.A. 494. We reject Felix’s argument for two reasons. First, the cited language in Felix’s argument to the examiner expressly refers not only to the “channel of Claim 7” but also to the “other structure” of the claims. It is therefore not “objectively apparent” from this argument that the channel was the only reason for cancelling original claim 1 and rewriting dependent claim 7 in independent form, as Felix argues. Second, the cited language does not explain the entire amendment. If Felix had intended only to add a channel and not add a gasket, he could easily have simply amended original claim 1 to add limitation (e) and not limitation (f). Thus, Felix has identified no explanation in the prosecution history for the addition of the gasket limitation, and Felix therefore cannot meet his burden to show that the rationale for adding the gasket limitation was tangential to the presence and position of a gasket.

. . . Because we conclude that Felix is barred by the doctrine of prosecution history estoppel from relying on the doctrine of equivalents to prove that the accused In-Bed Trunk meets the gasket limitation, we also affirm the district court’s summary judgment of no infringement by equivalents.

. . . We agree with the district court that prosecution history estoppel bars Felix from relying on the doctrine of equivalents to show that Honda’s In-Bed Trunk meets the gasket limitation—“a weathertight gasket mounted on said flange and engaging said lid in its closed position.” We therefore affirm the district court’s summary judgment of no infringement under the doctrine of equivalents.

Experimental Use Explained

In Clock Spring, L.P. v. Wrapmaster, Inc. (March 25, 2009), the Federal Circuit held that Clock Spring's 1989 demonstration was an experimental use and not a prior public use:

The experimental use exception is not a doctrine separate or apart from the public use bar. EZ Dock, Inc. v. Schafer Sys. Inc., 276 F.3d 1347, 1351-52 (Fed. Cir. 2002). Rather, something that would otherwise be a public use may not be invalidating if it qualifies as an experimental use. Electromotive Div. of Gen. Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417 F.3d 1203, 1211 (Fed. Cir. 2005) (limiting "experimentation sufficient to negate a pre-critical date public use or commercial sale to cases where the testing was performed to perfect claimed features, or . . . to perfect features inherent to the claimed invention"). In Allen Engineering Corp. v. Bartell Industries, Inc., we catalogued a set of factors that in previous cases had been found instructive, and in some cases dispositive, for determining commercial versus experimental uses. 299 F.3d 1336, 1353 (Fed. Cir. 2002). These factors include:

(1) the necessity for public testing, (2) the amount of control over the experiment retained by the inventor, (3) the nature of the invention, (4) the length of the test period, (5) whether payment was made, (6) whether there was a secrecy obligation, (7) whether records of the experiment were kept, (8) who conducted the experiment, (9) the degree of commercial exploitation during testing, (10) whether the invention reasonably requires evaluation under actual conditions of use, (11) whether testing was systematically performed, (12) whether the inventor continually monitored the invention during testing, and (13) the nature of contacts made with potential customers.

Id. (quotation and alteration marks omitted). Though a prior commercial sale and not a prior public use was at issue in Allen Engineering, the factors explicated are equally relevant to an analysis of experimental use.

We have said that lack of control over the invention during the alleged experiment, while not always dispositive, may be so. Atlanta Attachment Co. v. Leggett & Platt, Inc., 516 F.3d 1361, 1366 (Fed. Cir. 2008). In that case, we held that a public use had occurred, finding "dispositive" the fact that the patentee "did not have control over the alleged testing," which was performed by its customer. Id. Clock Spring argues that Fawley, a named inventor, exercised tight control over the demonstration, as shown through the detailed reports made of the demonstration. But, the detailed reports do not provide evidence that Fawley controlled the demonstration. An independent observer "analyzed and recorded" the 1989 demonstration. Three of the eleven Clock Spring installations were done by the pipeline’s personnel. None of these individuals was under Fawley’s control or surveillance. We need not, however, rely on lack of control as establishing public use because we conclude that the use cannot qualify as experimental for other reasons.

A use may be experimental only if it is designed to (1) test claimed features of the invention or (2) to determine whether an invention will work for its intended purpose—itself a requirement of patentability. See In re Omeprazole Patent Litig., 536 F.3d 1361, 1373-75 (Fed. Cir. 2008). In other words, an invention may not be ready for patenting if claimed features or overall workability are being tested. But, there is no experimental use unless claimed features or overall workability are being tested for purposes of the filing of a patent application.8 See EZ Dock, 276 F.3d at 1352, 1354; Weatherchem Corp. v. J.L. Clark, Inc., 163 F.3d 1326, 1333 (Fed. Cir. 1998) (stating that the public use provision strives to provide "inventors with a definite standard for determining when a patent application must be filed" (quotation marks omitted)). Indeed, the experimental use negation of the § 102(b) bar only exists to allow an inventor to perfect his discovery through testing without losing his right to obtain a patent for his invention. See EZ Dock

Clock Spring does not urge that refining the claim limitations was the subject of the 1989 demonstration. Rather, Clock Spring argues that the demonstration was experimental because the 1989 demonstration was designed to determine durability of the method, i.e., its suitability for the intended purpose. See City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 136 (1877). The reports make no such explicit statement. The NCF report states that "[t]he purpose of this demonstration . . . was to demonstrate to Panhandle Eastern attendants and guests the steps of application and the ability of minimally-trained crews to make Clock Spring installations." J.A. 2447. The 1994 GRI report states that "[t]his demonstration was designed to familiarize pipeline personnel with the Clock Spring technology, and to begin training of maintenance personnel in the use of the coil pass installation method." J.A. 1441 (emphasis added). The demonstration was similarly described to the United States Patent and Trademark Office ("PTO") during prosecution, where the applicant stated that the purpose of the demonstration was to seek "input from people in the industry on the performance of the bands and the practicality of their installation techniques." J.A. 2452.

To be sure, the 1994 GRI report can be read as suggesting that the 1989 demonstration was for durability testing because it states that "recovery and analysis of installed composite after several years of exposure in pipeline settings was the only means of verifying the long-term performance of [the clock spring’s] composites in moist soils." J.A. 1441. Clock Spring’s problem, however, is that no report in the record states, or in any way suggests, that the 1989 demonstration was designed to test durability for the purposes of the patent application to the PTO. In fact, the reports make clear that the durability testing was for "acceptance by regulators and the pipeline industry," J.A. 1444, and that the 1989 installation was not dug up and examined until almost a year after the 1992 patent application. Thus, even if durability were being tested, it was not for purposes of the patent application, and cannot bring the experimental use exception into play. By filing the 1992 application, the inventors represented that the invention was then ready for patenting, and studies done thereafter cannot justify an earlier delay in filing the application under the rubric of experimental use.

Finally, Clock Spring asserts that because the Department of Transportation did not grant any installation waivers until 1993, the 1989 demonstration must have been experimental. This terse argument is unsupported by any citation to law. That the inventors were not legally allowed to perform the method on a pipeline in commercial operation, does not mean that a public use did not occur. The former fact has absolutely nothing to do with the latter question.

In summary, during the 1989 demonstration, all elements of the repair method in claim 1 of the ’307 Patent were performed. There was no evidence that the overall suitability of the ’307 Patent’s method nor any of the claim elements was being tested as would be required for experimental use. Accordingly, claim 1 of the ’307 Patent is invalid due to prior public use.