March 2006

Reimportation of Grey Market Goods can be Stopped Only When Materially Different from “Substantially All” Authorized US Versions

AIPLATalk175Bourdeau Bros v. ITC and Deere & Co. (Fed. Cir. 2006, 04–1588).

John Deere sells its 5000 and 6000 series harvesters in both the US and Europe.  The 5000 series is manufactured in the US and shipped abroad while the 6000 series is manufactured in the US for the US market but manufactured in Germany for the European market.

Based on Deere’s US Trademarks, the International Trade Commission (ITC) granted a general exclusion stopping third party importation of the harvesters originally sold in the European market.

AIPLATalk176Reimportation: On appeal, the three judge panel agreed that “importation and sale of a trademarked good of domestic manufacture, produced solely for sale abroad and not authorized by the owner of the trademark for sale in the United States, may violate section 1337 if the imported good is materially different from . . . those goods bearing the same trademark that are authorized for sale in the United States.”

Thus reimportation of “grey market” goods can be stopped when they are materially different from “substantially all” of the authorized US versions. Here, the CAFC found that Deere established material difference, but failed to meet its burden of proving that its US sales did not include any of the European versions. 

To win on remand, Deere must:

establish [with a preponderance of the evidence] that the number of sales of European forage harvesters was so small that substantially all of Deere’s sales in the United States were of North American forage harvesters, such that substantially all of the authorized sales were of goods bearing the asserted material differences.

The CAFC also found that the “ITC erred in granting a general exclusion order that did not contain an exception for goods bearing a permanent nonremovable label indicating their origin.”

Vacated and Remanded.


  • Our 1969 John Deere 4020 is pictured above along with three cows from our herd.

USPTO News: Proposed Changes to Reexamination Practice

In a 2005 study, attorney Joseph Cohen found that 98% of all inter partes reexamination requests had been granted.  On March 30, 2006, the PTO issued a proposed rule change that might change that outcome. According to the proposal, a patent owner will be given an opportunity to reply to the third-party reexamination request prior to the examiner’s decision on the request.  Thus, a patent holder may be able to convince the PTO of an absence of a “substantial new question of patentability” and avoid the reexamination proceeding altogether.

In a bit of give-and-take, the proposal would also prohibit supplemental patent owner responses to an Office Action without a showing of sufficient cause.*  Comments on the proposed change are due by May 30, 2006 and should be e-mailed to


* Several other formalities regarding reexamination practice are also included in the proposed change.

EBay v. MercExchange Oral Arguments

Based on oral arguments, pundits see a potential split decision in the eBay v. MercExchange injunction case.  Justice Scalia is likely to support strong property rights (“You’re talking about a property right, and the property right is explicitly the right to exclude others.”) while Justice Breyer may side with eBay. 

Chief Justice Roberts, who would be expected to support strong property rights, appeared to question the validity and definiteness of the MercExchange patent.* Decision in June

More Info:

NOTE: I did not attend the arguments, but am simply reporting second-hand information. DDC

Ebay v. MercExchange In The News

After Wednesday’s Oral Arguments, the FCBA will be hosting a post-argument webcast at 3:00 EST. ($75 — registration password is FCBA).

Design Patent Point-of-Novelty Test Questioned in Appeal

AIPLATalk070Over at the Shape Blog, Boston attorney John Welch has been writing about the fallout after the Federal Circuit’s design patent decision in Lawman Armor v. Winner International.  In that case, the appellate panel determined that the “point of novelty” test for design patent infringement is focused entirely on individual points of novelty, gives no weight to the resulting novelty-by-combination, and requires no suggestion or motivation to combine prior art references.

The technology-at-issue here is a steering wheel lock design similar to “The Club

Lawman recently filed a petition for rehearing, and, in addition, Nike and the Industrial Design Society of America  (IDSA) have each filed an amicus brief in support of a rehearing. The AIPLA is reportedly planning to file as well. This CAFC decision takes the wind out of design patents and leaves them quite weak.  The petition for rehearing hopes to change that outlook.  Winner’s responsive brief is due April 3, 2006.



  • Design Patent: Patently-O discussing the CAFC original panel decision
  • Welch: Discussing the CAFC original panel decision I
  • Welch: Discussing the CAFC original panel decision II
  • Welch: Discussing the Nike Brief
  • Welch: Discussing the IDSA brief


271(d)(5) Defines A Patent Misuse Safeharbor, But Does Not Define Misuse Itself

PhilipsPatentU.S. Philips v. Princo (Fed. Cir. 2006) (Non-Precedential).

In a non-precedential opinion, the CAFC noted that the traditional defense to patent misuse was narrowed when Congress enacted 35 U.S.C. 271(d)(5).  Under that statute, it is not misuse to “condition[] the license of any rights to the patent . . . on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.” 

According to the CAFC, section 5 provides “a safe harbor for certain conduct, not a comprehensive definition of patent misuse.” (Citing the recent Supreme Court case of Illinois Tool Works).  Remanded for a new determination of misuse.


CAFC: Failure to submit full translation of prior art reference did not satisfy intent requirement of inequitable conduct

Atofina v. Great Lakes Chemical Corp., (Fed. Cir. 2006)

by Bradley Crawford

Atofina sued Great Lakes for literally infringing its U.S. Patent No. 5,900,514 titled “Synthesis of Difluoromethane.” The district court determined the ’514 patent was (i) not literally infringed; (2) anticipated (only claims 1, 2, 6, 7, 9, and 10); and (3) unenforceable because of inequitable conduct. Atofina appealed.

Infringement: The CAFC ruled the claims were not literally infringed. The district court’s use of scientific and technical dictionaries to construe the word “catalyst” was acceptable as the dictionary definition comported with the intrinsic evidence.

The intrinsic evidence (1) supported the district court’s claim construction, and (2) evinced a surrender of subject matter. Regarding the second point, the CAFC noted that “it frequently happens that patentees surrender more through amendment than may have been absolutely necessary…” and “we have not allowed them to assert that claims should be interpreted as if they had surrendered only what they had to.” (Note: The take home message here is obvious, so I won’t belabor the point.)

Anticipation: The CAFC also ruled claims 1, 2, 6, 7, 9, and 10 were not anticipated because the district court incorrectly interpreted a broad genus as anticipating a narrower genus, which is inconsistent with the Titanium Metals case. See 778 F.2d 775 (Fed. Cir. 1985).

Unforceability: And finally, the CAFC found the ’514 patent not unenforceable due to inequitable conduct and it did not remand.

During prosecuting of the application that matured into the ’514 patent, Atofina submitted a partial translation (a Derwent Abstract, to be precise) of the Japanese language reference JP 51-82206, to the U.S. Patent and Trademark Office, even though it had a full translation in its possession. At trial, the district court ruled Atofina committed inequitable conduct by (1) failing to disclose the full translation of JP 51-82206, which was deemed highly material because it anticipated several claims and (2) Atofina had the requisite intent to deceive the U.S. Patent and Trademark Office because it failed to disclose the translation and it mischaracterized the reference.

On appeal, Atofina argued that materiality was found only because the reference was alleged to anticipate, and since the anticipation was wrong, the determination of materiality was also wrong. Atofina also argued that the district court failed to consider evidence of good faith, i.e., Atofina’s “reference in the prosecution history to page numbers of the full translation of JP 51-82206,” the submission of the Derwent Abstract and the citing of JP 51-82206 in the patent specification.

Great Lakes argued the full translation was highly material because (1) it was anticipatory, (2) JP 51-82206 was cited in the European counterpart to the ’514 patent and the European patent only issued after Atofina incorporated an additional limitation into the claims. Intent was shown by (1) Atofina’s failure to disclose the full translation of the Japanese language reference, (2) Atofina’s mischaracterizing prior art references, and (3) withholding “poor results.” Great Lakes also argued there was no evidence of good faith by Atofina.

The CAFC did not decided the issue of materiality, but it did focus on intent. The CAFC found that the failure to submit the full translation was not, in and of itself, enough to establish intent; a “factual basis for a finding of deceptive intent” was required. The CAFC also found (1) Atofina’s comments were consistent with the Derwent Abstract and the full abstract, (2) Atofina did not try to hide information or mislead the Patent and Trademark Office.

Judge Dyk filed an opinion, concurring in part and dissenting in part. Judge Dyk agreed with the majority’s decision, but he would remand for further consideration by the district court.

Note to all patent prosecutors out there. This case exemplifies the old maxim, “penny wise, but pound foolish.” Atofina did not submit the full translation, even though the full translation was in its possession. (Why, is an interesting question. If they didn’t think it was a problem, why not just submit it?) Instead, Atofina submitted the Derwent Abstract and made comments about what the reference discloses. By doing so, they saved the cost of preparing a translation, which, admittedly, can be expensive if it is a very large reference. However, they left themselves open to a charge of inequitable conduct. I expect that they paid many tens of thousands of dollars (if not more) defending themselves from this allegation first at trial and then on appeal. If they would have simply paid for the complete translation and then submitted it to the Patent and Trademark Office, they would likely have saved money in the long run and obviated any allegation of mischaracterizing the reference. If you find yourself in a similar situation, I think you have to ask yourself if saving the cost of the translation is worth the risk of (1) having to defend against a charge of inequitable conduct based on misleading the Patent and Trademark Office or mischaracterizing the reference, and (2) having any patent that ultimately issues invalidated for inequitable conduct.

Bradley W. Crawford is a attorney at MBHB LLP focusing his efforts on patent litigation, prosecution, and counseling.  Prior to joining MBHB, Mr. Crawford worked in the areas of synthetic organic chemistry as well as medicinal chemistry.

Japanese Patent Attorney / Client Privilege Extends to U.S. Litigation

Eisai v. Dr. Reddy’s Lab., 77 USPQ2D 1854 (S.D.N.Y. 2005).

Japanese benrishi act essentially as patent agents or patent prosecution attorneys.  The question here was whether the communications between plaintiff Eisai and its benrishi could be withheld as privileged.

When determining privilege in a U.S. case based on a foreign privilege, courts generally apply some level of comity. 

Here, it was undisputed that at least some benrishi communications were privileged.  However, Dr. Reddy argued that privilege should not extend to U.S. cases because the benrishi privilege differs from U.S. privilege in a number of respects.

Despite differences in the laws, the court concluded that privilege should persist.

Since the laws of two different jurisdictions will rarely be in such accord, application of any such rule would be inconsistent with the basic notion of extending comity to foreign law


Construing Claims “Without Reference to the Accused Device” Is Put to the Test

AIPLATalk174Wilson Sporting Goods v. Hillerich & Bradsby (Fed. Cir. 2006, 05–1103).

By Jeff Steck

Following Federal Circuit precedent that “claims may not be construed with reference to the accused device,” it is common for district courts to construe patent claims before they know anything about the products at issue in the case. Through an uncommon procedural twist leading up to Wilson Sporting Goods Co. v. Hillerich & Bradsby Co. (05-1103), the Federal Circuit found itself in the same position as those district courts. 


Wilson owns a patent on a non-traditional softball bat that is best described as being “corked” with, essentially, a beer can. The defendant, H&B, was accused of infringing this patent. Although the Federal Circuit did not have “any information about the accused products,” it is safe to conclude that H&B’s most celebrated product, the solid ash Louisville Slugger, was not at issue.


Before the district court, Wilson essentially lost the case when the court issued a narrow construction of the shape and rigidity of the beer-can insert. Instead of pressing forward with an unfavorable construction, Wilson stipulated that there was no infringement under that construction, and the district court entered a final judgment.


Wilson appealed the claim construction to the Federal Circuit. With no record on the accused products, the Federal Circuit found itself in the position of so many district courts: both sides were fighting over claim construction, and the court had no idea why. With no information about the accused products, the court complained that “this sparse record lacks the complete context for accurate claim construction.” As a result, the court refused to provide its own claim construction, choosing instead to identify just enough errors in the district court’s construction to send the case back on remand.   


Although the only issue in the case was claim construction—ostensibly an issue of pure law—the Federal Circuit wanted to understand the accused device. Faced, however, with its own rule that “claims may not be construed with reference to the accused device,” the court had difficulty explaining the contradiction between what it permits in claim construction and what it wants in claim construction. Cf. CVI Beta Ventures Inc. v. Tura LP, 43 U.S.P.Q. 2d 1860, 1861 (Fed. Cir. 1997) (Mayer, J. dissenting) (“[T]he court once again shows that we are solecists…. [W]e are bound to interpret law according to specific rules. By violating these interpretive rules, or by exposing them to exceptions so that our court can amass decisionmaking authority … we inappropriately encumber the process with ambiguity….”).


Hoping, perhaps, that contradiction would prove more enlightening than troublesome, the court restated the relevant law on claim construction in a form more characteristic of a koan than a rule of law 

while a claim is not to be construed in light of the accused device,
in an infringement case,
it must inevitably be construed in context of the accused device.

 (citing SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985)) (scansion added, odd grammar in original). 


The panel tried unsuccessfully to show that it was not the first to require evidence of the accused product before conducting claim construction. Citing Bayer AG v. Biovail Corp., 279 F.3d 1340, 1340 (Fed. Cir. 2002), the court noted that it had previously declined to construe claims based on an incomplete record. In Bayer, however, the record was “incomplete” because it was missing “evidence of the meaning of the terms to one of skill in the art at the time of invention”—i.e. the usual evidence in claim construction—not because it was missing evidence on the accused product.


The court then tried to restate the rule against construing claims “with reference to the accused device,” concluding that the rule is simply a prohibition against “biasing the claim construction process to exclude or include specific features of the accused product.” As such, the rule “does not forbid any glimpse of the accused product” before claim construction. The issue, however, is not whether a court is permitted to see the accused product, but whether the court is required to see the accused product.


By remanding this case without a conducting a complete claim construction, the Federal Circuit has sent the message that a district court’s claim construction must include some analysis of the accused products. The district court had given hope to the promise of Markman: an infringement allegation was resolved with no need for a costly trial, or even summary judgment proceedings; the Federal Circuit’s remand showed that promise to be illusory.

Jeffrey Steck is a partner at MBHB and an experienced litigator. He was an editor of the California Law Review at the University of California at Berkeley, where he received his JD.

The Next CAFC Judge

KimpictureIn January 2006, Judge Clevenger took senior status at the Court of Appeals for the Federal Circuit — leaving one open spot in the panel of twelve.  There is a strong rumor that Professor Kimberly Moore will be appointed to fill the spot.

Other potential candidates include at least Judge Whyte and Professor John Duffy.

Professor Moore has long been considered one of the handful of leading patent law professors, and is especially noted for her empirical research methods. In addition, Moore is co-author of a book on patent litigation along with CAFC Chief Judge Michel and Raphael Lupo and is the Editor-in-Chief of the Federal Circuit Bar Journal. 

Although not a registered patent attorney, Moore holds a BS and MS from MIT in electrical engineering.  Her masters thesis focused on chaos theory applied to electrical systems.  She received her JD from Georgetown.  Moore has been teaching law since completing her clerkship with Judge Archer.  Most recently, the PTO has asserted Moore’s article titled “Ending Abuse of Patent Continuations” as a justification for its proposed changes to continuation practice. She also has trial experience from her time with Kirkland & Ellis.

I commented yesterday to a reporter my belief that Professor Moore is an obvious choice and would make an excellent judge. 

John Duffy, whose name has also been mentioned, believes that Professor Moore would be an “outstanding nominee.”  According to Professor Duffy, “Professor Moore has spent a large portion of her career carefully studying the judicial process of patent litigation, and she has become a leading authority in the field. She would bring extraordinary knowledge and insight to the bench. Her nomination would, I think, command broad support from the academy and the practicing bar.”

According to a cite on IPBiz, Professor Moore testified to Congress that the high reversal rate in patent cases “”undermines confidence in district-court decision making.”


CAFC: What Evidence Does an Accused Infringer Need for Summary Judgment of Non-Infringement?

AIPLATalk173Exigent Technology, Inc. v. Atrana Solutions, Inc. (Fed. Cir. 2006, 05–1338).

By Marcus Thymian

In its March 22 decision, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement of the claims of a patent relating to a “multi-function transaction processing system.” Unlike many appeals involving summary judgments of non-infringement, this opinion did not focus on claim construction or application of the claims to the accused device. Instead, the interesting issue was whether the accused infringer had provided sufficient support in its 12-page summary judgment motion.

At trial, the burden of proving infringement is on the patent holder. Here, the accused infringer moved for summary judgment of non-infringement. In a motion for summary judgment, the burden is initially on the movant (the accused infringer in this case) to show that there is no genuine issue of material fact and that the moving party is entitled to a judgment as a matter of law. Thus, there would appear to be competing burdens, a concept with which courts have sometimes struggled.

In explaining the conflict and finding resolution in this case, the Federal Circuit dedicated much of its opinion to the Supreme Court’s 1986 Celotex v. Catrett decision. Most importantly, on issues in which the nonmovant bears the burden, “the [summary judgment] movant need not ‘produce evidence’ showing the absence of a genuine issue of material fact in order to properly support its summary judgment motion.” Basically, the party moving for summary judgment needs to show that “there is an absence of evidence to support the nonmoving party’s case.” In this case, that showing took the form of a 12-page summary judgment motion (that also addressed invalidity and unenforceability), along with a declaration by the accused company’s CEO stating that none of the accused products contained certain claim limitations. The Federal Circuit stated that “nothing more is required than the filing of a summary judgment motion stating that the patentee had no evidence of infringement and pointing to the specific ways in which accused systems did not meet the claim limitations.”

Marcus Thymian is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Much of his recent practice has involved counseling clients on pretrial litigation strategies, including seeking and defending against motions for summary judgment. [link to bio]

BPAI’s factual findings affirmed when based on more than a mere scintilla of evidence

AIPLATalk172In re Kahn (Fed. Cir. 2006, 04–1616).

Kahn’s voice synthesizer patent application was rejected by patent office as obvious over a group of four references. Kahn appealed:

Motivation to Combine: Most inventions involve “a combination of old elements” where each element is found somewhere in the prior art.  However, the combination can be patentable as a whole if the combination creates something new and nonobvious. When rejecting a patent application as obvious based on multiple prior art references, the PTO must articulate the motivations for selecting references and combining them together.  This has come to be known as the “motivation-suggestion-teaching” test.

[T]he “motivation-suggestion-teaching” test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims.

Here, the CAFC found that the board had ‘substantial evidence’ to conclude that the asserted references could be combined because they were all directed to some form of word localization for the blind.

Although a reasonable person might reach the opposite conclusion, there is far more than a “mere scintilla” of evidence present from which a reasonable mind could find a motivation to combine.

Long-Felt but Unresolved Need: Kahn requested that the CAFC take ‘official notice’ of a long-felt but unresolved need for his invention as a way to overcome the obviousness rejection.  The court, however, refused because “precedent requires that the applicant submit actual evidence of long-felt need, as opposed to argument.”

Rejection affirmed.  

CAFC: Claimed “Acid” Precludes Coverage for “Salts”

Kao CorporationKao Corporation v. Jergens Company (Fed. Cir. 2006, 05–1038).

by Bradley Crawford

This is a patent infringement case about removing “keratotic plugs,” i.e., blackheads, from facial skin. The claimed method encompasses a method for removing the keratotic plug by using a cosmetic article (not defined in the application but the “keratotic plug remover” is described in the specification as a “poultice” or a “cosmetic paste”), the method comprising 1) wetting the skin or the cosmetic article, 2) applying the cosmetic article to the skin and then 3) removing the cosmetic article after drying. The cosmetic article comprises 1) a substrate – essentially a backing material, and 2) a layer comprising a poly (alkyl vinyl ether maleic acid) copolymer or a poly(alkylvinyl ether maleic anhydride) copolymer.

The defendant’s product was used to remove blackheads and it contained the claimed poly(alkyl vinyl ether maleic acid) copolymer or a poly(alkylvinyl ether maleic anhydride) copolymer, but it also contained 2% by weight of aminomethyl propanol (a base that reacts with some of the acid groups in the copolymer).

The District Court construed poly(alkyl vinyl ether maleic acid) copolymer or a poly(alkylvinyl ether maleic anhydride) copolymer to not include the salt form of the copolymer because the “plain meaning” of the claims precluded salts. The District Court also relied on the fact that the patentee later filed an application specifically directed towards the salts of the copolymers claimed in the patent in suit – this was seen as evidence that the patent in suit did not cover salts. The CAFC also made note of this fact and relied on it.

(Note to all of the chemical patent drafters out there, if you are claiming compounds that contain acids or bases, you have to disclose and claim the corresponding salts. You just have to.)

Ultimately, the District Court found the patent to be valid and enforceable, but not infringed.

On appeal, the defendant argued the patent was invalid for: 1) lacking written description, 2) being obvious, and 3) inequitable conduct, while the patentee argued there was infringement. The CAFC rejected all of these arguments.

The District Court found there was written description for a claim amendment made by the patentee and the CAFC, while sympathetic to the patentee’s argument, found that the District Court’s judgment was not “clearly erroneous.”

The obviousness argument was based on a lack of “unexpected results.” More specifically, the defendant alleged both procedural and substantive arguments, including 1) the district court failed to use the closest prior art and 2) the district court failed to properly assess the “totality of the evidence.”

The inequitable conduct allegation was based on the patentees presenting only the most positive data to the Patent Office. The parties agreed that the non-disclosed material was material but the CAFC did not find the requisite intent because the missing data was eventually presented to the examiner. The CAFC was sympathetic to the defendant’s argument, but was unwilling to disturb the District Court’s decision as it was not abuse of discretion.

The CAFC also rejected the patentee’s infringement argument and distinguished two cases that stood for the proposition that “a claim that recites an acid may be literally infringed by the salt of the acid, where both have the same functionality.”

For an unexplained reason, the patentee did not assert infringement under the doctrine of equivalents.

Two concurring in part and dissenting in part opinions were also filed.

Bradley W. Crawford is a attorney at MBHB LLP focusing his efforts on patent litigation, prosecution, and counseling.  Prior to joining MBHB, Mr. Crawford worked in the areas of synthetic organic chemistry as well as medicinal chemistry. 

Trademark: Product Design Trade Dress Need Not Implicate Entire Product

ScreenShot026In re Slokevage (Fed. Cir. 2006, 05–1389).

Slokevage filed to register a trademark for “pants, overalls, shorts, culottes, dresses, skirts” configured with the label “FLASH DARE!”  The TTAB refused to register the mark because it consisted of product design without any showing of secondary meaning.

ScreenShot027Slokevage appealed to the CAFC, arguing that the clothing trade dress was not product design, and thus could be inherently distinctive.

As an initial matter, the CAFC found that the determination of whether a trade dress is “product design” is a factual inquiry and deference is given to lower court determinations.

Here, Slokevage argued that the rear flaps were not “product design” because they did not alter the entire product, but were rather more like labels. The CAFC disagreed:

“The holes and flaps portion are part of the design of the clothing—the cut-out area is not merely a design placed on top of a garment, but is a design incorporated into the garment itself. Moreover, while Slokevage urges that product design trade dress must implicate the entire product, we do not find support for that proposition.”

After finding that the design was product design, the court made quick-work of affirming the refusal to register under Wal-Mart v. Samara (product design cannot be inherently distinctive).  



CAFC May Hear Immigration Cases

American_apple_pieThe Senate Judiciary committee is discussing Senate Majority Leader’s proposal (S.2454) to add immigration issues to the docket of the Court of Appeals for the Federal Circuit. According to the proposed amendment to 8 U.S.C. 1252(b), review of deportation (removal) orders would be vested in the CAFC rather than in the various regional appellate courts.

In other CAFC news, the fee for filing an appeal has been increased from $250 to $450 effective April 9, 2006.

Continued Distribution of Brochures and Instructions Insufficient to Create SJ Jurisdiction

Infiltrator Systems v. Cultec (Fed. Cir. 2006) (NONPRECEDENTIAL).

Cultec, the patent holder, moved for a preliminary injunction, but Infiltrator argued that it no longer manufactured the accused drainage chambers system. Cultec, however, asserted that Infiltrator continued to provide marketing brochures and installation instructions on its website.

The CAFC found that the brochures and instructions were insufficient to create an ‘offer to sell,’ but were merely used by users who had already purchased the old chambers.

Because the only accused product is no longer being sold, the court dismissed the appeal as moot.


Patently-O Tidbits

  • PATENT PROSECUTION: In a couple of weeks, I will be taking part in Dunes CLE’s course on Patent Prosecution at the Bellagio in Las Vegas.  Hope to see you there April 6 and 7. LINK.
  • Boris Umansky of Davis McGrath has finally released his blog, IP Legal Lounge.  Boris writes about Chicago area decisions relating to trademark, copyright, etc.  Today’s topic — Wrestling.
  • History of Patent Injunctions: Although not directed at the eBay case, Michigan professor Adam Mossoff has just released his article on the history of patent protection.  This is important because in eBay, the Supreme Court may focus on what equitable relief means in the context of patent injunctions. Professor Mossoff finds that historically (18th & 19th century), patents have been treated as property rights and were accorded “special treatment” regardless of whether damages would adequately compensate the patent holder for infringement. Read Mossoff’s Paper Here.
  • Stephen Nipper discusses a new way to download patent documents here

Claim Preamble Is Limiting When It Recites Essential Structure of the Invention

AIPLATalk170Bicon v. Straumann (Fed. Cir. 2006, 05–1168).

In a dispute over a dental implant, the CAFC today determined that the preamble of the asserted claims should be seen as limiting the claim scope.

While it is true that preamble language is often treated as nonlimiting in nature, it is not unusual for this court to treat preamble language as limiting, as it is in this case.

Here, the claimed preamble was quite extensive, and was written as follows:

An emergence cuff member for use in preserving the interdental papilla during the procedure of placing an abutment on a root member implanted in the alveolar bone of a patient in which [a] the abutment has a frusto-spherical basal surface portion and [b] a conical surface portion having a selected height extending therefrom comprising . . .

Under the rule expounded in RIM v. NTP, the preamble is limiting “if it recites essential structure that is important to the invention or necessary to give meaning to the claim.”  Here, the court found that the preamble “recites structural features . . . [and] it is apparent that the claim drafter chose to use both the preamble and the body of the claim to define the subject matter of the claimed invention.”


File Your Patents Electronically

On Friday, March 17, 2006 the PTO launched its new electronic patent filing system.  The new system operates using PDF files and is expected to be the avenue-of-choice from now on. Benefits of filing electronically include:

  • Instant filing receipt to ensure your filing date;
  • Applications immediately viewable in Private PAIR;
  • Submission is validated for completeness;
  • No scanning errors;
  • Less wasted paper;
  • No express mail fees.