SnippetsTM provides a review of timely developments in intellectual property law. Here is a table of contents of the most recent issue (November 2004):
1. Thomas Fairhall and Paul Churilla, The Intersection of Trade Secrets and Patent Law: The Prior User Rights Statute, 35 U.S.C. 273, Part 2. 2. Eric Moran and Dennis Crouch, Drafting the Technology Game Plan Part 5: Domain Name Protection. 3. Marcus Thymian and Sherri Oslick, On Your Mark! . . . Get Set! . . . Know: Marking Fundamentals. 4. Alison Baldwin, Patent Validity Assessments: Your Guide to Avoiding the On-Sale Bar, Part 2.
In the e-mail, you can indicate your technology and legal interest: (Biotech, Electrical, Software, Chemical, Mechanical, Litigation, and/or Prosecution).
Link: The European Patent Organization has announced that Lithuania has now joined the European Patent Convention — pushing the number of member states to 30. European patents are now valid in 36 European states, covering a market of more than 560 million inhabitants.
In addition, the U.S., Europe, and Japan have agreed to take real steps to coordinate work sharing, electronic business developments to support work sharing, and harmonization or standardization of search strategies, tools and substantive patent law.
In patent law, Merriam-Webster is the cream of the crop. The Federal Circuit cites Webster’s 3rd International Dictionary more than any other source in claim interpretation. The CAFC likes dictionaries because they are descriptive of the language – unlike other documents, such as RFC’s, that are seen as prescriptive.
In 1999, "blog" was added to Webster’s Collegiate Dictionary.
Blog: noun; short for weblog; a Web site that contains an online personal journal with reflections, comments, and often hyperlinks provided by the writer. Blogger; Blogging.
Now, there is a rumor that Bloggers may be TIME’s people of the year.
I hope that you enjoy this patent law blog and find it useful for your practice. Please feel free e-mail feedback: crouch@mbhb.com.
35 U.S.C. Section 112 paragraph 6 provides a statutory basis for drafting patent claims in what is known as means-plus-function language. The language allows a patentee to write a claim based on the function of a device rather than its actual structure. This language is, in the words of Gene Quinn, "dangerously seductive." Means claims are easy to write, and there is a belief that the means language adds some "fuzzy math" to the court’s calculation of infringement.
Over the past several years, the Federal Circuit has continually limited the scope of means limitations. Such a limitation is construed by the court to cover the corresponding structure as described in the specification and equivalents thereof. Thus, if you use means claim limitations, you should make absolutely sure that the structure is completely (and broadly?) described in the specification.
In an admittedly unscientific survey of case law, attorney Hal Wegner searched through the last fifteen CAFC opinions that dealt with the interpretation of means-plus-function language. Results:
Patentee’s construction of "means" term accepted: 0% Patentee’s argument that term was not a "means" term accepted: 14 Summary judgment of non-infringement reversed: 7% Losses for Patentee: 80%.
Thus, the means language was a loser for the patent holder in 80% of cases. (12 of 15 cases). (Hal, thanks for conducting the study).
Bottom Line: MPF claims are risky. They are fine to add as insurance after you have drafted more descriptive claims, but they should not be trusted.
If you are still writing MPF claims, you are not alone — thousands of patents using such language are issued annually.
Some patent law experts have noticed an internal rift in the Federal Circuit Court of Appeals in the area of claim construction. Some of the CAFC judges generally decide claim construct based on an "ordinary meaning" approach while others generally rely on patent documents such as the specification and prosecution history to determine the meaning of claims. UPenn Professor Polk Wagner has even created a Federal Circuit Predictor to predict the outcome of a claim construction apeal based on the appellate panel.
Thus far, Professor Wagner’s predictor has been seen as a cute but ineffective tool because the appellate panel is not given with any advance notice. The Predictor Tool adds certainty, but the lack of advance notice does not allow for any real settlement negotiations.
Now, in a public experiment, the Federal Circuit has begun to post the composition of panels the Thursday prior to the week of oral argument.
Thus, for instance, we now now that next Thursday (December 9) that the Panel of Rader, Friedman, & Plager will hear the Eolas v. Microsoft panel.
The court requests public comment on the experimental change.
The U.S. Senate has confirmed Jon W. Dudas as Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. The confirmation was unanimous!
Mr. Dudas was nominated by President George W. Bush as Under Secretary and Director in March 2004 and was appointed on July 30, 2004. He served as Acting Under Secretary and Director from January 2004 until assuming his current position. Mr. Dudas was Deputy Under Secretary and Deputy Director from January 2002 until he became the Acting Under Secretary.
Link: USPTO funding is in the news again. MSNBC is reporting a serious threat of 5-year prosecution backlogs without better funding from Congress.
Unless long-overdue reforms are put in place and the agency’s budget is expanded, the current backlog will balloon further, and the average time it takes to win a patent — now more than two years — will double in five years, according to the acting head of the agency, Jon W. Dudas.
Link: The European Patent Office (EPO) has announced its plans to "treat same-sex marriages that have been validly contracted in one of the member states in the same way as it does heterosexual marriages."
Pirates are traditionally thought of as mean guys with guns and boats who rape, rob, and plunder. Terrorists use bombs and other forms of violence and intimidation to achieve their political objectives. However, of late, copying of works protected by patent and copyright has been regarded as a form of piracy and as supporting terrorism. Today, an article in the New York Times described ‘patent terrorism’ as the enforcement of patent rights by holding companies. A few years ago, Microsoft officials even accused Apple of being a patent terrorist.
Lets get rid of this terminology. A company that uses the courts to enforce a patent is not a terrorist. To use these words so liberally will quickly dilute their meaning and leave us confused when we encounter the real terrorists.
Claims should be construed as of the time of the invention.
Limitations should be given their “ordinary meaning” as understood by a skilled artisan.
Claim construction begins with dictionary, encyclopedia, and treatise definitions.
Dictionaries, treatises, and encyclopedias are critical to claim construction.
Claim differentiation applies to presume a difference in meaning and scope when different words or phrases are used in separate claims.
Preamble terms are not claim limitations.
Limitations in the specification may not be read into the claims.
Express limitations in the specification should be read into the claims.
Claims should be construed to cover preferred embodiments.
Claims should be construed to uphold their validity.
The immediate question is whether the en banc decision in Phillips v. AWH will (i) present a cleanly revised list or (ii) simply add another rule to the list. (Listing adapted from a presentation by Kevin Casey).
Homan McFarling was sued by Monsanto for saving seeds and replanting them. The seeds had been genetically modified by Monsanto to resist Roundup (R) herbicide and were patented. (U.S. Patents 5,633,435 and 5,352,605).
At the Federal Circuit, McFarling argued that the Sales Agreement from Monsanto involved an unlawful misuse of Monsanto’s patents by restricting use of “god-made” second-generation seeds. The Appellate Court disagreed. Because the first-generation seeds (sold by Monsanto) were nearly identical copies to the second-generation seeds, the Court found that the patent scope includes both generations. Thus, the Court rejected McFarling’s appeal and held that the Sales Agreement did not impermissibly extend Monsanto’s rights.
Now, McFarling has taken the suit to the Supreme Court. In case No. 04-31, McFarling is asking the Court to to overturn the Federal Circuit’s ruling and presents two questions:
1. May a patent holder lawfully prohibit farmers from saving and replanting seed as a condition of the purchase of patented technology?
2. Does obtaining patents on products which are the subject of licensing agreements afford an absolute defense to any claim that the licensing agreements violate the Sherman Act?
The Supreme Court has asked the Solicitor General to brief in this case expressing the views of the United States. It is expected that the Bush Administration, through the Solicitor General, will support Monsanto’s position.
The newsletter discusses the PTO’s Image File Wrapper (IFW) system and outlines many problems and proposes solutions. For example:
Problem: Examiners’ greatest complaints with IFW, by far, relate to the multitude of scanning errors that create documents improperly entered in the file record, amendments and office actions entered days, weeks, or months late, documents filed under the wrong tabs, and more.
POPA Solution: Better training for scanning contractors; immediate e-mail forwarding of scanned documents to the appropriate examiner; scan-on-demand service centers in each technology center.
Other proposed solutions include better indexing of non-patent literature (NPL) and caching of IFW files so that the examiners can work with a file when the PTO’s system is down. As Greg Aharonian has repeatedly stated, improving the ability of examiners to search prior art will result in a better system for everyone involved.
Interestingly, the POPA Newsletter also discussed upcoming Phillips v. AWHen-banc hearing from the point-of-view of patent examiners.
Examiners are trained to interpret the claims as broadly as possible unless the applicant has explicitly provided a definition to the contrary in the specification or if the specification provides an explicit disclaimer. Examiners are permitted to use dictionaries and other extrinsic evidence to determine the broadest reasonable interpretation.
My review of the briefs filed Phillips will be published in next Month’s issue of Patent World.
Update: A regular reader of the Patently-O Blog wrote in on the subject of scanning errors. In his well reasoned view, the PTO should simply have patent attorneys electronically submit PDF documents to the Office. Then, there would be no scanning errors.
—–Original Message—– From: XXXX Sent: Wednesday, November 10, 2004 10:33 PM To: Crouch, Dennis Subject: Patent Office Professional Association (POPA) Proposes Solutions to Examination Problems
Examiners’ greatest complaints with IFW, by far, relate to the multitude of scanning errors that create documents improperly entered in the file record, amendments and office actions entered days, weeks, or months late, documents filed under the wrong tabs, and more
Scanning errors? I think they are missing the big picture. When I file anything at the Trademark Trial and Appeal Board, I simply upload a pdf (rendering scanning errors impossible-but I guess there are still some font issues). Regardless, uploading pdf documents is so fast, so checkable (did that just work?), so simple, soooo why doesn’t the patent office get it?
As I sit here and wait for my USPTO fax back at 10:31 PM.
Attorney General John Ashcroft and Commerce Secretary Don Evans have resigned from their respective posts. They are the first members of President Bush’s Cabinet to leave as the President heads into his second term.
As Secretary of Commerce, Evans over-saw the United States Patent & Trademark Office. This spring he led a special envoy to China to discuss intellectual property and piracy with Chinese officials and practitioners. Mercer Reynolds has been mentioned as a possible replacement.
Ashcroft was a constant figure on national television in the days following 9/11. More recently, his administration has supported a strong policy against IP piracy.
Bob Shaver‘s blog, Patent Pending is a breath of fresh air. Rather than rushing to opine on the newest developments, Shaver takes a deep breath and writes about history. In each post he weaves a story, building upon his years of experience as a patent attorney and technologist.
For instance, in a recent articles Shaver told the tale of the original Suez Canal — 600 BC to 800 AD, and the first Steam Engine. Articles like these help give me an appreciation for the history of ideas and innovation.
In the words of Shaver’s partner Stephen Nipper, “If you are interested in technology as it developed over the ages…check out his blog.”
After waiting one day for the election to conclude, the Motion Picture Association of America (MPAA) reportedly plans to announce its new campaign against “movie piracy.” Following the lead of the major recording industry association, RIAA, the MPAA plans to take the law to the people. Specifically, the MPAA is planning to file copyright infringement lawsuits against individual downloaders.
Although the former MPAA chief Jack Valenti received some criticism during his tenure for promoting Copyright Extension Legislation and the DMCA, Valenti reportedly resisted the idea of individual lawsuits. The MPAA’s new president Dan Glickman is expected to announce the campaign in Los Angeles today. Glickman spent nearly 20 years in Congress representing the 4th District of Kansas.
The [Non]Billable Hour, includes a regular feature known as Five-by-Five. Each month or so, author/lawyer Matt Homann gets five experts in an area of law to give five responses to a question about the law.
The most recent episode is the IP Edition. Matt was able to bring five IP attorneys together to answer the question: What five things would you change about IP law and/or practice? I was lucky enough to be included in the panel. Here are some snippets:
Stephen Nipper: Embrace the future. Lets face it, the Internet is changing the practice of intellectual property law. Many of the businesses we used to rely on for patent copies, copies of file wrappers, etc., have had to evolve or die as more and more of the USPTO’s data and knowledge is made available on the Internet for free. Do you really think that is the end of it? Do you think that it is not going to affect IP attorneys too? I’m afraid that you’ve got a big surprise coming. It is time to start thinking outside the box about how we provide our services, how we bill for them and how clients find us.
Douglas Sorocco: Everyone needs to take a deep breath regarding software patents. The end of the world is not near, the seas are not going to be flooding our coastal cities and software patents are not stifling development of new and useful tools and processes. Software developers are simply going to have to become better business people and accept that nothing is free and patent clearance searches must be made an integral part of the development process.
Martin Schwimmer: [A] tremendous amount of what trademark owners hate about Internet activity consists of third parties using their marks to divert traffic to unauthorized sites. We saw this concept in cyber squatting litigation, and now see it in the use of keywords. Related to this is the development of the concepts of contributory and vicarious infringement. It’s hard to get one’s hands around fly-by-night operators, so trademark owners go after the Internet service provider or registry or search engine. I think these are the key areas in which we are going to see development in U.S. jurisprudence.
Dennis Crouch: Law School: Becoming An Attorney: If you are a scientist or engineer who is thinking of becoming a patent attorney, my advice to you is to broaden your outlook. When you go to law school, don’t just worry about becoming a patent jockey – rather you are becoming a lawyer. Learn to think like a lawyer and talk like a lawyer. Take classes that have nothing to do with patents and make as many friends as you can. (Your classmates will likely refer some of your first clients). Law school provides a great transition point in life, and there is no requirement that pushes an attorney with an engineering degree into patent law. Take time to enjoy the freedom.
Mark Partridge: Require ADR before litigation: Litigation is extremely expensive, almost shockingly so to most clients, and prohibitively so to many. . . . My change would be to require all trademark litigants to try forms of alternative dispute resolution before proceeding with the expense of discovery and trial. As both a mediator and as an advocate in mediations, I know that facilitated negotiations can lead to resolutions at substantially reduced cost. Unfortunately, ADR is underused for many reasons. Clients don’t want to be the first to blink. Litigators don’t want to appear weak, loss control, or disclose information. Whatever the reason, the hesitancy to use ADR (either mediation or early arbitration) could be overcome by making it mandatory. Some jurisdictions already do. More should. An early effort to settle, facilitated by a competent neutral could, I believe, save the courts and clients a great deal of money.
Under New Jersey law, any voting machine must be examined by the Secretary of State before approving it for use at elections. In addition, the voting machine must be inspected by three examiners, “one of whom shall be an expert in patent law.” New Jersey Statutes § 19:48-2. The statute, passed in 1953, also requires “two mechanical experts.” The experts are appointed by the Secretary of State.
According to reports, New Jersey citizens are voting via electronic touch-screen voting in 15 of 21 counties throughout the state. Last month, a New Jersey Judge denied a last minute effort to block the use of e-voting machines. No word on the identity of the NJ patent law expert or whether the new voting booths were examined.
New Jersey Statutes § 19:48-2. Examination of voting machines by secretary of state
Any person or corporation owning or being interested in any voting machine may apply to the Secretary of State to examine such machine. Before the examination the applicant shall pay to the Secretary of State an examination fee of four hundred fifty dollars ($450.00). The Secretary of State within a period of thirty days shall examine the machine and shall make and file in the office of the Secretary of State his report of the examination, which report shall state whether in his opinion the kind of machine so examined can be safely used by the voters at elections under the conditions prescribed in this subtitle. If the report states the machine can be so used, it shall be deemed approved, and machines of its kind may be adopted for use at elections as herein provided.
Before making such report the Secretary of State shall require the voting machine to be examined by three examiners to be appointed for such purpose by him, one of whom shall be an expert in patent law and the other two mechanical experts, and shall require of them a written report on such machine, which the Secretary of State shall attach to his own report on the machine. Each examiner shall receive one hundred fifty dollars ($150.00) for his compensation and expenses in making an examination and report as to each voting machine examined by him from and out of the examination fee of four hundred fifty dollars ($450.00). Neither the Secretary of State nor any examiner shall have any pecuniary interest in any voting machine. When the machine has been so approved, any improvement or change that does not impair its accuracy, efficiency, or capacity, shall not render necessary a re-examination or reapproval thereof. Any form of voting machine not so approved cannot be used at any election.
The certificate of approval, or a certified copy thereof, shall be conclusive evidence that the kind of machine so examined complies with the provisions of this subtitle, except that the action of the Secretary of State in approving such machine may be reviewed by the Superior Court in a proceeding in lieu of prerogative writ.
Does anyone know if this law is still being followed?
Rubik’s Cube (r) has been in the news and on the blogs lately. Once the patent on the cube expired, several companies began to copy and sell cubes having the same design.
According to the news reports that Greg Aharonian e-mailed, officers from the Department of Homeland Security recently asked a toy store owner to remove “Magic Cube” (r) toys that have the same look and feel of the original Rubik’s cube. Speculation has been flying around the net as to the source of the officer’s authority.
It turns out that the company that sells the original cube, Seven Towns Limited, holds a registered trademark on the design of the cube. According to the trademark description:
The mark consists of a black cube having nine color patches on each of its six faces with the color patches on each face being the same and consisting of the colors red, white, blue, green, yellow and orange. The drawing is lined for the colors red and green. The remaining colors — white, blue, yellow, and orange — do not appear in the drawing, but are claimed as a feature of the mark. (U.S. Trademark Registration No. 75,105,330).
From an initial glance, I would not think that this trademark description would cover the Magic Cube (r) because of the clear difference in stated colors. However, that would be for a jury to decide.
A trademark on the design of an object is known as “trade dress.” Generally, trade dress is thought of as a distinctive, nonfunctional feature of an object that allows a customer to readily identify the manufacturer of the object.
In a recent case (TrafFix), the Supreme Court ruled that items that were previously patented are generally considered functional. Because tradedress is only on nonfunctional features of an object, there can be no protection of previously patented elements.
The owner of Pufferbelly Toys in St. Helens worries when Homeland Security agents show up on official business
Thursday, October 28, 2004
ASHBEL S. GREEN
Nothing about running a small store called Pufferbelly Toys prepared Stephanie Cox for a cryptic phone call from the U.S. Department of Homeland Security.
“It’s all very surreal, quite honestly,” Cox said Wednesday. “I thought it was a prank when I first heard. I couldn’t understand why Homeland Security would be investigating a tiny toy store in St. Helens.”
The call came in late July or early August. A man identifying himself as a federal Homeland Security agent said he needed to talk to Cox at her store.
Cox asked what it was all about.
“He said he was not at liberty to discuss that,” she said.
They agreed to meet in early August, but the agent later canceled. Cox thought the matter had blown over when the agent called back Sept. 9 to say he was coming out there.
“I was shaking in my shoes,” said Cox, who has owned Pufferbelly Toys for more than four years. “My first thought was the government can shut your business down on a whim, in my opinion. If I’m closed even for a day that would cause undue stress.”
The next day, two men arrived at the store and showed Cox their badges. The lead agent asked Cox whether she carried a toy called the Magic Cube. She said yes. The Magic Cube, he said, was an illegal copy of the Rubik’s Cube, one of the most popular toys of all time. He told her to remove the Magic Cube from her shelves, and he watched to make sure she complied.
The whole thing took about 10 minutes.
After the agents left, Cox called the manufacturer of the Magic Cube, the Toysmith Group, which is based in Auburn, Wash. A representative told her that the Homeland Security agents had it wrong. The Rubik’s Cube patent had expired, and the Magic Cube did not infringe on rival toy’s trademark.
John Ryan, corporate counsel for the Toysmith Group, said Homeland Security, which includes Customs, routinely blocks shipments of products from overseas that violate intellectual property rights, such as patents, copyrights and trademarks.
“That’s fine. That’s not an outrageous federal act by any means,” Ryan said. “But we certainly were surprised that a federal agent approached a toy store owner and frightened them.”
Virginia Kice, a spokeswoman for Immigration and Customs Enforcement, said agents went to Pufferbelly based on a trademark infringement complaint filed in the agency’s intellectual property rights center in Washington, D.C.
Kice also said Homeland Security officials routinely investigate such complaints and follow up if they determine they are valid.
“One of the things that our agency’s responsible for doing is protecting the integrity of the economy and our nation’s financial systems and obviously trademark infringement does have significant economic implications,” she said.
After gaining assurances from Toysmith officials, Cox put the Magic Cube back on the shelf soon after the agents left.
Six weeks after her brush with Homeland Security, Cox is still scratching her head.
“Aren’t there any terrorists out there?” she said.
Knoll has received trademark registrations on several Mies van der Rohe furniture designs. (NYTimes Article). These pieces, originally designed in 1929, have been increasingly copied by furniture importers. A Knoll spokesman noted that the registration “gives a green light to U.S. customs to stop unauthorized products from reaching this country.” Knoll’s licensed version of the Barcelona Chair retails at just under $5,000. Ernest Beck reported that the registration has the potential to “reduce the availability of replicas of [the] classic modern furniture.”
Ludwig Mies van der Rohe was a famous German architect who left for Chicago in the late 1930’s to head the architecture program at the Illinois Institute of Technology. He is known for the International Style of Modernism and for his catch-phrase “less is more.”
Link: Denise Howell has the scoop on the 6th Circuit’s reversal of the Lexmark DMCA injunction.
“We should make clear that in the future companies . . . cannot use the DMCA in conjunction with copyright law to create monopolies of manufactured goods for themselves[.]”
Via EFF: Lexmark’s DMCA case against Static Control is aimed at eliminating aftermarket laser printer toner cartridges. Lexmark has implemented an “authentication” handshake between its printers and toner cartridges. When Static Controls reverse-engineered the authentication procedure in order to enable refilled and remanufactured cartridges to work with Lexmark printers, Lexmark sued in Lexington, KY, claiming both copyright infringement and circumvention in violation of the DMCA.
