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My blog posting has been a little slow over the past few days – for good reason. My daughter, Robin, was born ten days ago. She is perfect.
I'll be out of the office for much of this week, but I am readily available through e-mail ([email protected]).
- Dennis
Frank's Casing Crew v. Weatherford Intl. (Fed. Cir. 2004).
Frank's Casing owns a patent on a device for remotely controlling an oil-well casing. (U.S. Patent No. 5,049,020). Because sections of casing can be up to 36 inches in diameter and weigh 300 pounds per foot, manual alignment is difficult and poses a significant risk of injury. Frank's Casing brought suit against Weatherford, charging patent infringement.
The district court (W.D. Oklahoma) granted summary judgment of noninfringement after interpreting the means-plus-function claim language of Frank's patent.
On appeal, Frank's Casing argued that the district court improperly imported structure into the term "means for selectively pivoting" that was unnecessary to perform the function of pivoting a boom about a horizontal axis.
The Federal Circuit affirmed, finding that the district court's interpretation is necessary and "to conclude otherwise would render the patent internally inconsistent and the invention inoperable."
Noninfringement Affirmed.
Pinpoint v. Amazon. (N.D. Ill. Aug 31, 2004) (Posner, J.).
Pinpoint has sued Amazon for infringement of its patented system for scheduling broadcast and providing access to video programs. (E.g., U.S. Patent No. 5,758,257). Pinpoint claims that Amazon's website infringes by providing personalized book and music video suggestions.
In its most recent press release, Pinpoint announced that Judge Richard A. Posner of the 7th Circuit, U.S. Court of Appeals will be sitting by designation as the district judge presiding over the jury trial. According to Judge Posner's order in the case, the jury trial will begin at 9:00 am on December 6.
Always Controversial
Judge Posner has a reputation for thinking outside the box. In his last patent case, Posner created a new equitable defense to infringement that would bar enforcement of a patent when the patentee’s own conduct significantly inhibits non-infringing practice of the prior art. That case, SKB v. Apotex [I, II, III, IV], involving hemihydrates, was affirmed by the Federal Circuit but is currently being considered for an en banc rehearing.
It is speculated that the Apotex case has sparked some contention within the halls of the CAFC. This speculation stems from the fact that the en banc petition has been sitting undecided for over six months.
Now a Blogger
After a stint as a guest blogger at Professor Larry Lessig's blog, Judge Posner has started a blog in cooperation with Nobel Winner Gary Becker. The Becker-Posner blog is not fully functional yet, but keep your eyes peeled.
Links:
My Prior Post on Pinpoint v. Amazon
More Info on the Pinpoint v. Amazon
Catalina Marketing v. Coolsavings (Fed. Cir. 2004) (03-1548) (unpublished).
Catalina owns a patent on a method for distributing electronic coupons. Coolsavings runs a website that uses user demographics to target coupon offers. Catalina sued Coolsavings for Infringement. Catalina appeals the district court's claim construction and subsequent dismissal for noninfringement.
On appeal, the Federal Circuit affirmed the district court's opinion, finding that the District Court had properly construed means-plus-function language by importing limitations from the specification.
Dismissal of Catalina's Infringement suit Affirmed.
I hope that everyone has a happy Thanksgiving. Even if you are not in the U.S., I suggest that you take the day off to celebrate. Although I love turkey, I hope that you don't deep-fat fry yours.
The U.S. Patent and Trademark Office Joins in the Celebration of Thanksgiving
Recognizes patents and trademarks related to ThanksgivingThe Department of Commerce's United States Patent and Trademark Office joins in the celebration of Thanksgiving by recognizing some patents and trademarks associated with this festive holiday.
Food often takes center stage at Thanksgiving, and there are many well-known Thanksgiving-related products protected by patents and trademarks. One way to spend more time with family and less in the kitchen cleaning up is by using a disposable cooking pan (patent #5,628,427) or a cooking jacket (patent #4,942,809) for the turkey, ham or roast. One non-traditional, but increasingly popular, way to cook a turkey is deep-frying, and one type of equipment used in this preparation is protected by patent # 5,758,569.
Some well-known trademarks associated with turkey and dressing, must-haves at many Thanksgiving tables, are Butterball (registration #1151836) for turkey products and Stove Top (registration #0949459) for stuffing. What holiday feast would be complete without cranberry sauce such as Ocean Spray (registration #2150919)? Desserts are always the final complement to a Thanksgiving feast. For those that do not bake their own, Sara Lee's slogan for its pies and cakes, "Nobody Doesn't Like Sara Lee," is protected by trademark registration #1885156.
These patents and trademarks, as well as the more than six million patents issued since the first in 1790 and the 2.3 million trademarks registered since 1870, can be seen on the Department of Commerce's U.S. Patent and Trademark Office web site at www.uspto.gov.
McFarling v. Monsanto (Supreme Court Docket No. 04-31).
After being shut-out at the district and appeals courts, Mississippi Delta Farmer Homan McFarling has petitioned the Supreme Court of the United States for a writ of certiorari -- asking the high court to hear his case.
Roundup-Ready (R) soybeans have become extremely popular in the the U.S. The genetic modification added by Monsanto allows soybean plants to resist the broad-leaf herbicide. Monsanto's patents on the genetically modified seed is even more important now because Roundup has gone off-patent.
When a farmer purchases seeds from Monsanto, the company requires that the farmer agree not to retain any seeds from the resulting crop for replanting. These second generation seeds are genetically identical to the ones originally purchased -- and thus, fall under the scope of the patents. Monsanto brought suit against McFarling after the farmer violated his agreement and saved second generation soybean seeds to replant his 5,000 acre farm.
McFarling now questions whether Monsanto has any right to control the trade of the second generation seeds -- Is Monsanto's limitations on use of the second generation seeds an unlawful restraint of trade?
In my quick review of the briefs for and against certiorari, it appears that Monsanto's attorneys have put their best foot forward by showing that there are no true circuit splits, a key feature in the Supreme Court's decision whether to accept a case on appeal. All the same, McFarling's case has a certain flair that may push the court to accept the case.
Links:
McFarling v. Monsanto (Supreme Court Docket No. 04-31).
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 PTO has granted an interim term extension for U.S. patent No. 4,603,123. The patent claims the active ingredient piroxicam betadex that is used in Brexidol (R). A New Drug Application (NDA) for Brexidol (R) has been filed with the FDA and is currently undergoing regulatory review.
Brexidol (R) is an NSAID that is believed to work by blocking the production of a prostaglandin which the body produces in response to injury or certain diseases. This prostaglandin would otherwise go on to cause swelling, pain and inflammation.
Interim Patent Extension
The term of a patent is extendable if delays in production were caused by delays in a regulatory approval process. 35 U.S.C. 156(d)(5) provides for an interim extension if a patent is about to expire and the patentee believes that the regulatory review period will exceed the term of the patent. The application for an interim extension may not be filed until the six month period prior to the expiration of the patent, but must be filed at least 15 days before the expiration of the patent. An applicant may not apply for more than four interim extensions and each extension may be for no more than one year.
Campbell Plastics v. Les Brownlee, Secretary of the Army (Fed. Cir. November 10, 2004) (03-1512).
The Case:
In 1992, Campbell Plastics (as it is now known) entered into a cost-plus-fixed-fee contract with the Army to develop components of an aircrew protective mask. Section I of the contract required Campbell to disclose any invention developed pursuant to the government contract and further provided that the government could obtain title if Campbell failed to disclose the invention within two months.
Campbell invented a new type of gas mask, but the company did not disclose the invention to the Government. Campbell then obtained a patent on the invention, noting that the Government has a "paid-up license in this invention."
The government, however, wanted more than just a license. In a decision by the Armed Services Board of Contract Appeals, ruled that Campbell had forfeited title to the patent by failing to comply with disclosure requirements of the contract.
The Appeal:
The Federal Circuit Court of Appeals, interpreting both the Bayh-Dole Act and the contract, sided with the Army.
Campbell Plastics failed to comply with the disclosure provisions of the parties' contract. The contract unambiguously provides that in such a case, the government may obtain title to the subject invention. The decision of the Board to deny Campbell Plastic' appeal is affirmed.
The Result:
Campbell failed comply with its contract to disclose inventions to the Army. As a result, the Army may obtain title to the related patents.
Comment: This case should serve as a warning to government contractors. You cannot rely on the friendly face of the Technology Tranfer Office always being there. Contractors should implement a regular practice of documenting engineering work associated with government contracts to ensure that inventions are accurately reported in a timely manner.
University of New Mexico v. Knight (Fed. Cir. November 9, 2004) (unpublished).
After an earlier remand from the Federal Circuit, defendants Knight and Scallen attempted to amend their counterclaims to indicate precisely how they were damaged by actions arising from the University's actions. However, the district court denied their motions to amend and dismissed all but one counterclaim as barred by the statute of limitations and the New Mexico Tort Claims Act.
On appeal, the appellate panel again sided with the University, finding that Scallen and Knight's arguments to be "without merit." Barring a rehearing or appeal to the Supreme Court, this case is closed.
Link: Senior U.S. District Judge John Conway said it was unfortunate the university's lawsuit against two former UNM researchers was not resolved by cooperation and "searching for the greater good" outside the courts to benefit cancer patients.
Patent Disclaimers:
GlaxoSmithKline recently filed several dedications on its patents relating to treatment of migraine headaches. The patents cover Imitrex, generically known as Sumatriptan Succinate. A dedication is a document signed by a patent owner filed in the U.S. Patent and Trademark Office giving up all patent rights. Usually, the patent owner will only file a dedication for patents that are believed to be invalid. Months ago, Glaxo filed suit against Dr. Reddy Labs to prevent generic production of Imitrex.
Re-Examination:
Alpha and Omega Semiconductor has requested that the Patent Office conduct an ex parte reexamination of Siliconix Inc.'s patent on a method for making planar vertical channel DMOS structures. (U.S. Patent 4,767,724). This move is simply the next step in the ongoing patent litigation between the two semiconductor manufacturers. A settlement conference is scheduled for November 17th, 2004.
Theis Research v. Brown & Bain (Now Perkins Coie) (9th Cir. 2004).
B&B was Theis’s attorney in patent litigation that turned out badly. Theis demanded arbitration of claims against B&B for legal malpractice, breach of fiduciary duty, fraud and breach of contract. In commenting on the litigation that spawned the arbitration, the arbitrator stated:
Viewed as a whole, the litigation that is the subject of this arbitration was an almost unmitigated disaster both for [Theis] and for B&B. The hopes of [Theis] and its investors were dashed; years of work by Mr. Theis and others went unrequited; B&B got no return on millions of dollars of invested time, and had to chalk up a major loss on its results chart.
The arbitrator awarded no compensation for Theis. Theis then filed a lawsuit for damages and to vacate the arbitration award.
On appeal, the Ninth Circuit first determined that the amount in controversy was sufficient for federal jurisdiction even though the arbitration award had been zero. The Appellate Panel then Affirmed, finding that Theis could not re-open arbitration as he had not shown that the "arbitral result ... was a manifest disregard of the law, an implausible interpretation of the contract, the award was procured by corruption, fraud, or undue means, or the arbitrator exceeded his powers."
2004 U.S. App. LEXIS 21753
In Re Violation of Rule 28(c) (Fed. Cir. 2004) (Unpublished Order)
At the district court, Esab Group won a multi-million dollar judgment against Centricut for infringement of Esab's patent relating to plasma welding products. Centricut appealed the judgment and the measurement of damages. Esab cross-appealed, asking for a modification of the judgment on damages.
While not yet deciding on the merits of the case, the Federal Circuit gave Esab's attorney a written reprimand for filing a reply brief in violation of Rule 28(c) of the Federal Rules of Appellate Procedure.
Rule 28(c) limits the content of a cross-appeal reply brief to issues presented by the cross appeal. Further, the Practice Notes accompanying Rule 28 specifically caution counsel to limit the reply brief "to the issues presented by the cross-appeal." However, Esab's reply brief consisted of 23 pages, about 20 of which related only to the main appeal and not the cross appeal.
The appellate panel declined to impose sanctions against the offending attorney, but noted that "we wish to make clear that it is the duty of counsel to familiarize themselves with applicable rules, and that, in future cases, serious violations of applicable rules, whether or not 'inadvertent,' will potentially subject counsel to sanctions."
A decision on the merits of Centricut v. Esab Group is expected later this year.
Notes:
Fed. R. App. P. 28(c) Reply Brief. The appellant may file a brief in reply to the appellee's brief. An appellee who has cross-appealed may file a brief in reply to the appellant's response to the issues presented by the cross-appeal. Unless the court permits, no further briefs may be filed. A reply brief must contain a table of contents, with page references, and a table of authorities-cases (alphabetically arranged), statutes, and other authorities with references to the pages of the reply brief where they are cited.
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."
DE Technologies v. Dell
DE Technologies owns the patent on multi-lingual e-commerce. (U.S. Patent No. 6,460,020). The patent, originally filed in 1997, covers a method carried out on a computer that allows international commercial transactions. Claim 1 of the patent includes the following steps:
(a) selecting a language from a menu;
(b) selecting a currency from a menu;
(c) selecting a product to be purchased and a destination for shipping;
(d) obtaining from a database i) price information; ii) an international goods classification of the product; and iii) international shipping information;
(e) calculating shipping costs;
(f) determining a total cost;
(g) confirming existence of available funds; and
(h) accepting the order and generating a shipping invoice
Yesterday, BusinessWeek reported that DE has sued Dell for infringement of this patent. According to the article, If litigation goes forward, it will focus on whether, as DE contends, it really was the first company to demonstrate a system for processing international sales online when it filed for patent protection in 1997.
(Thanks Lisa).
Colida v. Matsushita (Fed. Cir. 2004) (unpublished opinion).
Facts: Tony Colida owns design patents covering the design of mobile phones designated A. Matsushita owns a patent on the design for mobile phone B. In addition Matsushita makes a GU87 phone that matches up with its patented design. After comparing the phone with the figures from Colida's patents, the district court dismissed Colida's infringement suit - finding that there was no infringement as a matter of law.
Appeal: Reviewing the summary judgment de novo, the appellate panel affirmed, finding no error in the district court's conclusion that "no reasonable trier of fact could find infringement of the [patents] by the GU87 phone in this case."
Summary Judgment of Noninfringement Affirmed.
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.
Does anyone know if this law is still being followed?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.
Chicago still uses punch-cards for voting. Despite the risk of hanging chads or dimpled marks, the benefit of this system is the paper trail. Many voters, including myself, are reassured by the paper trail. Patent No. 4,445,731 (shown above) was invented by John Ahmann in the early 1980's. The patent covers the type of portable voting booths used in my precinct. Ahmann is still recognized as an expert in voting technology and testified in the Bush v. Gore controversy of 2000. According to the BBC, about 30% of U.S. voters will use electronic voting (e-voting) machines in today's election.
Problems and praise Opponents highlight the problems that have already occurred with the machines - pointing for instance to a congressional race in Ohio in which votes were incorrectly registered due to a problem with the memory cartridges.
At the same time however, Georgia's entirely electronic system appears to have few naysayers after two years in operation - although it is widely accepted that the presidential election will prove the greatest test.
The principal criticism remains the lack of paper audit trails. Nevada is the only state using machines which will provide voters with the kind of receipt which would, if necessary, allow for a manual recount.
But in order to accommodate some of the concerns, a number of states - including California - will give voters the opportunity to vote using electronic machines or a paper ballot form.
Here is a picture of my neighbor and senate hopeful Barack Obama and his daughter casting his vote.
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.
-- DDC
AP ARTICLE:
Feds create puzzle not found on toy shelf
The owner of Pufferbelly Toys in St. Helens worries when Homeland Security agents show up on official business
Thursday, October 28, 2004
ASHBEL S. GREENNothing 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.
Ashbel "Tony" Green: 503-221-8202; [email protected]
