In recent weeks, the Court of Appeals for the Federal Circuit (Federal Circuit) decided a number of noteworthy patent cases. The cases that follow touch on a variety of issues, including claim construction, patentable subject matter, prior inventorship, standing, and industry standard compliance as evidence of infringement.
Implicit Redefinition of Claim Terms and Patentability of Printed Matter
– AstraZeneca LP v. Apotex, Inc. (November 1, 2010)
In AstraZeneca LP v. Apotex, Inc. the Federal Circuit reaffirmed that claim terms can be implicitly redefined in the specification, for example where the term is used throughout the specification in a manner consistent with only a single meaning.
The defendant, Apotex, filed an Abbreviated New Drug Application (ANDA) seeking FDA approval to manufacture and sell a generic version of Pulmicort®, a budesonide inhalation suspension developed and patented by AstraZeneca for treating asthma. AstraZeneca then filed a declaratory judgment action and moved to enjoin Apotex from distributing the generic.
Apotex challenged the validity of the asserted claims, which included both method of use claims and kit claims. The method claims recited administering a “budesonide composition” once daily. Apotex argued that the claimed “budesonide composition” should be construed to include budesonide encased in a liposome shell, once-daily administration of which was taught by a prior art patent. The court disagreed, finding that the patentee had implicitly defined “budesonide composition” in the specification to mean only compositions in which budesonide was dispersed in a solvent. The court noted that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess” and that “the specification need not reveal such a definition explicitly.” Rather, “a claim term may be clearly redefined without an explicit statement of redefinition,” for example “when a patentee uses a claim term throughout the entire patent specification in a manner consistent with only a single meaning.” As a result, the recited “budesonide composition” differed from the prior art liposome-encased budesonide, and the validity of the method claims was affirmed.
Although the finding of implicit redefinition was helpful to the patentee in AstraZeneca, the case is an important reminder that care should be taken when drafting patent applications to avoid unintentionally redefining a claim term to have a narrower scope than intended.
The AstraZeneca court also addressed the issue of whether a kit claim directed to a known pharmaceutical in combination with a printed label indicating a new use of the pharmaceutical could give rise to a patentable invention.
The asserted kit claims recited the budesonide composition and a label indicating once-daily administration by nebulization. Apotex argued that the kit claims were invalid because the composition was known in the prior art, and because a printed label is of no patentable consequence. The court agreed, holding that printed matter is generally outside the scope of 35 U.S.C. §101, unless there is a functional relationship between the printed matter and its substrate. Here, the court found that “the instructions in no way function with the drug to create a new, unobvious product” and therefore the kit claims were invalid. The court also found the parties’ disagreement as to whether the “substrate” was the drug or the label to be immaterial, because under either interpretation the printed matter did no more than “explain how to use the known drug.”
Accordingly, patent applicants should not rely solely on printed matter in distinguishing their invention, and should instead recite other patentable features in the claims. Additionally, patentees who are considering asserting claims that recite printed matter should review the other features of the claim carefully to ensure that those features alone would withstand a validity attack.
Definition of “Prior Inventor” Under 35 U.S.C. §102(g) – Solvay S.A.
v. Honeywell International, Inc. (October 13, 2010)
The Federal Circuit in Solvay S.A. v. Honeywell International, Inc. held that a “prior inventor” under §102(g) must conceive of the invention and reduce it to practice in the United States. This clarification of the statute should be useful to those assessing whether a particular activity constitutes invalidating prior art.
The plaintiff, Solvay, sued Honeywell for infringement of its patent directed to methods for making HFC-245fa, an insulation agent commonly used in refrigeration and heat storage systems. Solvay appealed after the district court ruled that some of its asserted claims were invalid under 35 U.S.C. §102(g)(2).
The claimed invention was conceived and first reduced to practice in Russia by the Russian Scientific Center for Applied Chemistry (RSCAC). Pursuant to a research agreement, RSCAC reported its invention to Honeywell and provided detailed instructions for carrying out the inventive method. Honeywell subsequently began practicing the invention in the United States before the priority date of the asserted patent. Based on these undisputed facts, the district court found that Honeywell was a “prior inventor” under §102(g)(2) and therefore held the asserted claims to be invalid.
On appeal, the Federal Circuit reversed. The court held that §102(g)(2) requires the prior invention to be made in the United States, and that “invention” requires both conception and reduction to practice. Here, conception occurred in Russia by RSCAC, an entity entirely separate and distinct from Honeywell. Honeywell’s United States activity, which merely involved following the detailed instructions of RSCAC, did not amount to conception in the United States. Accordingly, Honeywell was not a “prior inventor” under the statute, and the district court’s invalidity ruling was in error.
Standing for Subsequent Paragraph IV ANDA Filers – Teva
Pharmaceuticals USA, Inc. v. Eisai Co., Ltd. (October 6, 2010)
In Teva Pharmaceuticals USA, Inc. v. Eisai Co., Ltd., the Federal Circuit held that a subsequent Paragraph IV Abbreviated New Drug Application (ANDA) filer had standing to initiate a suit that could trigger the exclusivity period of the first-filer. Generic drug manufacturers who find themselves second in line for ANDA approval should consider whether their situation mirrors that in Teva, and thus whether initiating a suit to trigger a first-filer’s exclusivity period would be worthwhile.
By way of background, a manufacturer seeking to market a generic version of a previously-approved drug must file and receive approval of an ANDA and must submit a certification with respect to any patents on the drug that are listed in the FDA’s Orange Book. The first manufacturer to file a “Paragraph IV Certification” is entitled to 180 days of generic marketing exclusivity. Until the first-filer’s exclusivity period has run, the FDA may not approve ANDA applications by other manufacturers who have filed Paragraph IV certifications for the same patent. The exclusivity period begins when the first-filer commences marketing activity of the drug, or upon entry of a court judgment finding the patent invalid or not infringed, whichever happens first.
In the instant case, the Federal Circuit was asked to decide whether a subsequent Paragraph IV filer has Article III standing to seek declaratory judgment of invalidity or non-infringement and thereby trigger the first-filer’s exclusivity period. Here, the subsequent filer (Teva) sued the patent holder (Eisai) in an effort to start the 180 day window afforded to the first-filer (Ranbaxy Laboratories). The district court dismissed the case for lack of standing.
On appeal, the Federal Circuit held that a generic drug company’s injury (i.e., exclusion from the market) is fairly traceable to the patent holder’s actions because “but-for” the patent holder’s decision to list a patent in the Orange Book, FDA approval of the generic drug company’s ANDA would not have been independently delayed by that patent. The court went on to state that “when an Orange Book listing creates an ‘independent barrier’ to entering the marketplace that cannot be overcome without a court judgment that the listed patent is invalid or not infringed—as for Paragraph IV filers—the company manufacturing the generic drug has been deprived of an economic opportunity to compete.” The court thus found that Teva had Article III standing for a declaratory judgment suit because such a suit redresses this alleged injury by eliminating the potential for the corresponding listed patent to exclude the generic drug from the market.
Industry Standard Compliance as Evidence of Infringement –
Fujitsu Limited v. Netgear Inc. (September 20, 2010)
The Federal Circuit in Fujitsu Limited v. Netgear Inc. held that an accused product’s compliance with an industry standard covered by an asserted claim can be evidence of infringement. The court’s holding should help dramatically reduce the time and cost required to litigate cases involving standards-compliant accused products.
The plaintiffs, Fujitsu, Phillips, and LG, sued Netgear for infringement of their respective patents directed to wireless communication technologies. Each of the patents related to at least one of two popular wireless standards: the “IEEE 802.11 Standard” and the “WMM Specification.” The plaintiffs are part of a licensing pool that purports to include patents that any manufacturer of 802.11 and WMM compliant products must license.
After claim construction, the plaintiffs moved for summary judgment of infringement, arguing that by simply complying with the standard, Netgear necessarily infringed the asserted claims. The district court denied the motion, holding that the plaintiffs must show evidence of infringement for each accused product.
On appeal, the Federal Circuit held that a district court may rely on an industry standard in analyzing infringement. If the district court construes the claims and finds that the reach of the claim includes any device that practices a standard, then this can be sufficient for a finding of infringement. The court reasoned that, while claims should be compared to an accused product, if the accused product operates in accordance with a standard, then comparing the claims to that standard is the same as comparing the claims to the accused product. In addition, the court found that public policy favored such an approach, as it would be a waste of judicial resources to separately analyze every accused product when it is undisputed that the accused products practice the standard. The court recognized that an accused infringer is of course free to either prove that the claims do not cover all implementations of the standard, or to prove that its product does not practice the standard.
The court further noted that, in some cases, the standard may not provide the level of specificity required to establish that practicing the standard would always result in infringement. Likewise, when the relevant section of the standard is optional, then standards compliance alone would not establish that that accused product implements the optional section. Because the instant case involved one of these exceptions, the district court’s denial of summary judgment was affirmed.
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.
The USPTO recently announced that it will be cooperating with New York Law School to expand its Peer-to-Patent review program. The Peer-to-Patent program seeks to improve the quality of issued patents by providing an opportunity for volunteer experts in the applicable field to review new applications, suggest prior art, and provide comments on points of novelty in view of the art. The review process occurs online using social media software that allows and encourages discussion among the volunteers. Once the review process is complete, Peer-to-Patent applications are moved to the head of an examiner’s queue, along with the ten highest rated prior art submissions from the Peer-to-Patent volunteers. The written comments and discussion provided by the volunteers during the review process are not sent to the examiner, but he or she is able to read the comments on the Peer-to-Patent website during examination of the application. The expanded program will accept an additional 1000 new applications for peer review and will include additional art units.
Additional information about the Peer-to-Patent program can be found at the following link.
The United States Patent and Trademark Office (USPTO) recently adopted a new procedure for measuring the quality of patent examination. At the heart of the new procedure is a composite, seven-feature quality metric aimed to reveal quality issues during examination and to identify their sources so that effective quality procedures may be identified and encouraged. The new seven-feature composite quality metric is composed of old metrics from previous USPTO quality procedures and new metrics formulated based upon surveys, internal review, and data related to quality measurement purposes (the data was previously collected, but had never really been used). Knowledge of these metrics will allow practitioners to better manage the expectations of their clients, and may also help practitioners take actions to help expedite the prosecution process to allowance.
Two metrics carried over from the old metrics to the new metrics are the Final Disposition Compliance Rate and the In-Progress Compliance Rate. These rates are random samplings of “clear errors” identified during the examination process of an application. For example, a clear error by an examiner in the allowance of a claim is an unreasonable failure to make a rejection of the claim for one or more reasons provided in the patent laws. Likewise, a clear error by an examiner in making a rejection or objection in a final rejection is the making of an unreasonable rejection or objection. However, if an action preferred by the examiner’s Supervisory Patent Examiner differs from the action taken by the examiner, it is considered a difference of opinion and not a clear error as long as the action taken by the examiner is reasonable. The USPTO’s Office of Patent Quality Assurance (OPQA) is responsible for making these determinations of reasonableness.
Two new metrics that are now being introduced use multi-factor reviews. These two metrics are the First Action on the Merits (FAOM) Search Review and the Complete FAOM review. These metrics attempt to apply a multiple factor scoring process to measure a degree of compliance to best practices of the USPTO. For the Complete FAOM review, each omitted rejection, and the reasonableness and clarity of the rejections made, are reviewed on a per-claim basis. The Complete FAOM review further includes a set of per-action attributes, such as the clarity of the interview record, that addresses the overall quality of the examination.
A third new metric being introduced is the Quality Index Report (QIR). The QIR is produced from statistical data collected by the USPTO Patent Application Locating and Monitoring (PALM) database. The QIR is by itself an algorithmic composite of five measurements collected on a per-disposal basis: (1) the number of actions; (2) the number RCEs; (3) the number of re-openings after a final action; (4) the number of first non-final actions; and (5) the number of restrictions after a first action. All of these statistics are collected for every application filed with the USPTO and are statically examined in aggregate to detect outlier examination processes that may, or may not, indicate quality issues. Each of these five metrics, including the QIR, are compiled by the OPQA with sampling sizes designed to reveal Examination Corps-level or technology discipline-level quality estimates. Only aggregate data, however, will be publicly disseminated.
Finally, the last two new metrics are generated from an internal survey and an external survey performed by an independent survey designer/conductor. The external survey aims to measure the perceived quality of the patent process of applicants and practitioners, and the internal survey aims to measure the perceptions of the examination corps.
The seven metrics are combined into a composite quality metric—a single score. The composite quality metric will be publicly disseminated monthly and conveniently visualized via a graphical dashboard widget. Publication, however, is not set to begin until the end of the 2011 fiscal year, which is on September 30, 2011. The first year’s score will be used as a base score, which will be used to set a Stretch Goal for the reminder of the five-year strategic planning period, to allow a relative comparison with subsequent scores.
We will monitor these new metrics once they become publicly available to bring you practical tips for improving your practice in light of this new information. We anticipate that knowledge of these metrics will allow practitioners to better manage the expectations of their clients, and may also help practitioners take actions to help expedite the prosecution process to allowance.
To see a detailed listing of the metrics, the surveys, and their composite weighting, please click here.
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.
In our January 22, 2010 issue, we reported on the USPTO’s new Green Technology Pilot Program, which allows an applicant to petition for his or her application to be examined more quickly if the application pertains to the development of a renewable energy source or energy conservation, or the reduction of green house gas emissions. On November 10, 2010, the USPTO announced that the program is being extended through December 31, 2011. Further, the requirement that an application have a filing date earlier than December 8, 2009, has been removed. The application can now have any filing date, and in fact, a petition can be filed simultaneously with a new patent application. Since the pilot program began in December 2009, a total of 790 petitions have been granted and already 94 patents have been issued. The average time between the approval of a petition and the first action on the merits is a mere 49 days! There is no fee required for participating in the program, but the USPTO is maintaining a cap of 3000 grantable petitions. Applicants should review their portfolios and determine if any applications awaiting a first Office Action, or any future filings, are ripe for this expedited process.
For more details on the extension of the Green Technology Pilot Program, click here.
For additional information on the Green Technology Pilot Program, click here.
The United States Patent and Trademark Office (USPTO) recently published updated guidelines for the evaluation of obviousness—the 2010 KSR Guidelines Update (2010 Update)—in light of Federal Circuit decisions issued since the Supreme Court’s 2007 landmark decision in KSR Int’l Co. v. Teleflex Inc. Unlike the 2007 KSR Guidelines, which substantially increased the examiners’ arsenal by supplementing the prior teaching-suggestion-motivation (TSM) test with six additional rationales for rejecting claims as obvious, the 2010 Update provides a more balanced picture of the obviousness inquiry that will assist both practitioners and examiners in arguing obviousness. More particularly, the 2010 Update provides a number of examples from actual cases—cases that found claims obvious and cases that found claims nonobvious—that examiners and practitioners can use to help support their positions. In announcing the updated guidelines, USPTO Director David Kappos stated, “[n]ow that a body of post-KSR case law is available to guide office personnel and practitioners as to the boundaries between obviousness and nonobviousness, this update can be used to compare and contrast situations in which claimed subject matter was found to have been obvious with those cases in which it was determined not to have been obvious.” Although arguing nonobviousness remains more challenging than under the previous TSM test, the 2010 Update provides practitioners new tools to wield in navigating the post-KSR obviousness landscape.
Though the Supreme Court’s decision in KSR demanded a more flexible approach to the obviousness inquiry than the previous TSM test, the 2010 Update impels examiners to provide an explicit, reasoned analysis as to why the invention would have been obvious to a person of ordinary skill in the art at the time of the invention. According to the 2010 Update, “[t]his requirement for explanation remains even in situations in which Office personnel may properly rely on intangible realities such as common sense and ordinary ingenuity.” For example, in the now frequently cited standard for rejecting claims as obvious for combining prior art elements according to known methods to yield predictable results, the guidelines urge examiners to identify a reason why it would have been obvious to combine the known elements, especially when the combination requires a greater expenditure of time, effort, or resources than the teachings of the prior art:
Even though the components are known, the combining step is technically
feasible, and the result is predictable, the claimed invention may nevertheless be
nonobvious when the combining step involves such additional effort that no one of
ordinary skill would have undertaken it without a recognized reason to do so.
Indeed, the 2010 Update cites the Federal Circuit’s affirmation of the district court’s determination of nonobviousness in In re Omeprazole Patent Litigation to support the requirement that an examiner must present a recognized reason to make the proposed combination in the face of additional effort. In In re Omeprazole Patent Litigation, despite the findings that subcoatings for enteric drugs were known and there was no evidence of undue technical hurdles or a lack of a reasonable expectation of success, the Federal Circuit stated:
[T]he formulation was nevertheless not obvious because flaws in the prior art
formulation that had prompted the modification had not been recognized. Thus
there would have been no reason to modify the initial formulation, even though
the modification could have been done. Moreover, a person of skill in the art
likely would have chosen a different modification even if he or she had recognized
the problem.
Further, the 2010 Update provides that “merely pointing to the presence of all claim elements in the prior art is not a complete statement of a rejection for obviousness.” Rather, the examiner must also demonstrate that the results flowing from the combination would have been predictable to a person of ordinary skill in the art. In DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., the Federal Circuit noted that the “predictable result” discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose. In this case, the plaintiff successfully overcame the rationale that the combination of references leads to a predictable result because the alleged reason to combine the references ran contrary to the teachings of the prior art such that the person of ordinary skill in the art would have been deterred from the proposed combination. Thus, though patent practitioners have been forced to modify their analysis in light of KSR, DePuy Spine makes clear that the patent bar can still rely on familiar nonobviousness arguments (e.g., teaching away) to overcome § 103 rejections.
The 2010 Update additionally addresses the emergence in the wake of the KSR decision of the oft maligned “obvious to try” rationale. Though the guidelines attempt to assuage the fears of practitioners, the contours of this standard remain hazy, especially in technology areas outside of the chemical arts. Nonetheless, the cited post-KSR decisions indicate that an “obvious to try” rationale is only appropriate when there is a recognized problem or need, there are a finite number of identified, predictable solutions to the recognized problem or need, and one of ordinary skill in the art could have pursued these known potential solutions with a reasonable expectation of success. Indeed, the 2010 Update provides that “[c]ourts appear to be applying the KSR requirement for ‘a finite number of identified predictable solutions’ in a manner that places particular emphasis on predictability and the reasonable expectations of those of ordinary skill in the art.”
We anticipate that the growing body of post-KSR case law will continue to shift the contours of the obviousness analysis. We will continue to stay abreast of developments regarding the obviousness inquiry and will keep our readers well-informed of new developments.
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.
The World Intellectual Property Organization (WIPO) recently published its second annual World Intellectual Property Indicators report, providing an in-depth look at worldwide trends in intellectual property (IP) activity. Though the report principally focuses on the impact of the 2008 worldwide economic crisis on research and development (R&D) investment, innovation, and the acquisition of IP rights, the report also captures preliminary data from 2009 and 2010. During the examined period, most major economies have emerged from recession, while many middle-income economies have returned to their rapid, pre-crisis growth levels, and it is expected that continued economic recovery will soon prompt a rebound in overall IP activity. Indeed, some preliminary data indicates this may already be happening, though a lingering impact may be seen on patent filings through 2011. The post-crisis innovation landscape will invariably look different than before, as the center of gravity of the world economy shifts and new innovation centers continue to emerge, particularly in Asia and middle-income countries. Notably, the continued growth of IP activity in China throughout the worldwide economic downturn indicates that China is becoming a major player in the intellectual property market.
Investment in Innovation
Overall, R&D expenditures in 2009 decreased slightly over the previous year. Because the expenditures fell at a lower rate than revenues, however, the report indicates that firms are again increasing the intensity of their R&D.
Venture capital (VC) investments showed significant decline from 2008 to 2009. Though VC investment in the U.S. totaled only about $13 billion (down 55% from 2008), the report notes that this decline is small compared to the great shifts of the VC boom and bust at the beginning of the century. Promisingly, preliminary 2010 data shows signs of improvement, with recent evidence pointing toward a focus on later-stage, lower-risk investing.
Patents and Utility Models
Due in large part to the lengthy process of moving innovation out of the development pipeline and into patent offices, patent activity tends to be a lagging indicator of both an economic downturn and the subsequent recovery. At the outset of the financial crisis in 2008, worldwide patent filings increased over the previous year, though at a slower rate. In 2009, however, the number of filed patent applications actually dropped below the levels of the previous year for the first time since 2002. Indeed, the Patent Cooperation Treaty (PCT) system experienced its first drop in patent applications (almost 5% over the previous year) for the first time since its inception. Preliminary 2010 data is encouraging though, as it points to renewed growth in worldwide patent filings.
WIPO data additionally indicates significant regional variation in patent filings. Generally, the recent overall decline in national filings was driven by a decrease in non-resident filings, thus suggesting a greater short-term focus on a firm’s home markets. Notably, the United States was one of several exceptions to this trend, instead seeing a drop in resident filings and an increase in non-resident filings. Further, despite the overall worldwide decrease in patent filings, filings in the Chinese patent office continued their strong growth with a roughly 18% increase in 2009. Additionally, PCT applications arising out of China and Korea outpaced the growth of their domestic applications in 2009.
In contrast to patents, the worldwide utility model system continued its decade-long trend of increased filings year-after-year. Because utility models are primarily used by residents to protect inventions at their national patent offices, utility model filings may have been bolstered during the economic downturn by firms’ short-term focus on their home markets. Again, the growth of utility model filings in China far outpaced the overall worldwide growth.
Trademarks
Because businesses are typically cautious about introducing new products during uncertain economic times, trademark activity tends to be a leading indicator of declining economic health. Indeed, trademark activity began slowing in 2006, with worldwide filings decreasing in 2008 over the previous year. Despite the continuing decrease in filings in most national offices in 2009, trademark activity in China grew substantially with filings up nearly 21% over 2008. Chinese registrations were up nearly 57% during the same period. Though the flurry of activity in China skews the worldwide data, the WIPO Director General stated that preliminary data for 2010 indicates a return to 2008 levels with a projected 11% increase in trademark filings.
Industrial Designs
Industrial design applications in 2008 also demonstrated significant regional variation. Overall, worldwide industrial design applications increased for the 15th consecutive year, though the 5.7% increase was lower than the increase of subsequent years and is largely attributed to increased activity in China. Indeed, the number of industrial design applications filed in China in 2008 was four times higher than that filed at the second busiest office.
Conclusion
The 2010 World Intellectual Property Indicators report indicates that activity in the IP realm is on the road to recovery throughout much of the world; in China, no recovery was necessary as the trends indicate a continued growth over the past few years. We anticipate many of our clients are restoring their R&D budgets to continue to spur innovation. IP owners should give strong consideration to protecting their rights globally, and in particular in China, where it is clear that IP is finding an increasing importance.
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.
Not every copyright issue nowadays arises from the Internet.Here’s one that arises from venerable needle and thread.
Haute couture is tired of knock-offs and is trying to “put its Manolo down.”
New York Senator Charles Schumer - - what, you were expecting Nebraska’s Ben Nelson to take the lead on this? - - is sponsoring the Innovative Design Protection and Piracy Prevention Act, intended to provide three years of copyright protection for fashion designs. This short term is itself interesting: first, if you write a non-pseudonymous book, your copyright is good for life plus 70 years; second, I’m showing my age, but didn’t the “chemise” and Rudi Gernreich’s topless bathing suit each come and go in about four months? Compared with life plus 70 years, three years seems absurdly short; compared with the labile nature of fashion (which mutates faster than a clever bacterium), it seems absurdly long.
Nevertheless, no matter how ardently you may long for the next Bonfire of the Vanities, it’s hard not to sympathize somewhat with a hardworking fashion designer. Personally, I’m not sure I see the point of what he or she does; on the other hand, I freely confess I could never design a dress or a mule myself.
There could be sticky wickets. The proposed law would protect original designers only against “substantially identical” copies. The standard for copyright infringement otherwise is “substantially similar.” “Identical” will be a higher bar for a plaintiff designer to clear. But let’s face it: the purpose of the proposed legislation is to deter knocking-off in the first place, rather than to provide an effective remedy for completed copying. Who’s going to order up 10,000 dresses from a Chinese tailor based on his or her own judgment call that he or she is being only “similar” and on no account “identical.”
And how will evidence be introduced?
Will runways be installed in courtrooms for models to descend wearing the “accusing” and the “accused” works?
Will aging designers whose stars are fading find second careers as expert witnesses?
Those farther down the fashion food chain are supposed to be protected from liability: buying or selling a knock-off inadvertently is not actionable. Will a phrase like “friends don’t let friends buy knock-offs on purpose” pass into the language? Amateur seamstresses (of either gender) may copy protected designs for personal use. (TiVo for clothes?) But what happens if you and your son are the same size, and he asks one night to borrow your “Tommy Hilfiger”?
I know not what course others may take, but as for me, you’ll find me at my local Goodwill Industries second-hand clothes shop.
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.
On June 2, 2010, the Board of Patent Appeals and Interferences (BPAI) at the United States Patent and Trademark Office issued Ex Parte Quist, a decision on a request for rehearing regarding the panel’s affirmation of a non-final §103 rejection on April 30, 2008.
The application was directed to methods for manufacturing decorative boards. Claim 1 recited:
1. A process for the manufacturing of decorative boards with an abrasion resistant surface and edges with joining functionality, the process comprising the steps:
a) in a first step, cutting a carrier board having an upper surface to the desired dimension and making edges with at least one joining element, thereafter
b) applying radiation curable dry acrylic lacquer powder to the upper surface of the board,
c) heating the acrylic lacquer so that it melts,
d) curing the acrylic lacquer by means of radiation, the radiation being selected from the group consisting of UV-radiation and electron beam radiation
The Board found that the term “carrier board” was not defined in the claim or the specification, and that it was not defined as including only uncoated boards. In addition, the Board found that any board, coated or uncoated, could be a “carrier board” as claimed.
There were three items at issue:
(1) Did the Board misapprehend the subject matter sought to be patented?
(2) Did the Board misconstrue the evidence submitted in the declaration found in the Evidence Appendix?
and
(3) Did the panel properly evaluate the evidence supporting the prima facie case with any rebuttal argument and/or evidence in reaching the final conclusion of obviousness and affirming the obviousness rejection?
Regarding the issue of misapprehending the subject matter, the Appellants argued that the Board did not distinguish between all of the steps of the claims. Specifically, the Appellants argues that the Board did not distinguish between the steps of cutting the board, making edges with a joining element, and then applying a lacquer powder. Looking at the claim construction, the Board concluded that the claims include the steps of cutting the board to form a joining element and applying a coating to the board. The Board explained that the claim does not limit the board to one that is without a coating prior to being cut.
In addition, the Appellants put emphasis on the advantage of their claimed invention over the prior art concerning the fact that the coating material is not wasted after it is applied by milling it away to form joints, as it is applied before the joints are milled. In response, the Board concluded that this argument is improper as this is a new argument not previously heard. Thus, this argument by the Appellant is improper and untimely as it was not made prior to the request for reconsideration.
Appellants also argued that the prior art references do not solve the problem of the costly removal of coating material when forming the joints. The Board found this unpersuasive as well, reiterating that this argument is untimely as this advantage of the claimed invention was only first argued during this request for rehearing, and the fact that the Board interpreted the claims to include uncoated and coated boards as carrier boards.
Regarding the issue of misconstruing the declaration evidence, the declaration contained statements that no current manufacturer of laminate flooring forms the joints before applying the coatings, and that this would not be a conventional way to create the boards. The Board notes that secondary considerations are only relevant if the actual product includes the claimed features, and only in these circumstances will they be given substantial weight. As the Board concluded that the claims at issue are broader than boards that are joined before a coating is applied, these statements in the declaration are not particularly relevant to the issue of non-obviousness.
Regarding the issue of properly evaluating the evidence supporting the prima facie case, the Appellants argued that the Board used an improper legal standard in their decision as they did not base their decision on the entire record by a preponderance of the evidence. The precedent in the Frye decision stated that the Board should review contested findings in light of all the evidence on those particular issues. While the Board agreed that this standard was applicable in the present case, they found that the correct standard and procedure was applied. Specifically, they found that the Board’s analysis of the rebuttal evidence regarding the prima facie case showed that all the proper evidence was weighed. In addition, the decision included statements that the whole record was reviewed and considered.
Thus, the Board reconsidered the decision that was entered on April 30, 2008, but did not make any changes to the decision.
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.
In National Pork Bd. v. Supreme Lobster and Seafood Co., Opp. No. 91166701 (TTAB June 11, 2010) the pork industry successfully prevented an applicant from registering the mark “THE OTHER RED MEAT” for fresh and frozen salmon on the basis that granting this mark registration would dilute the fame of its own mark “THE OTHER WHITE MEAT.”
U.S. trademark owners, even those with famous marks, historically have had a hard time stopping people from adopting parodies of their trademarks on different goods. For example, a few years back, Louis Vuitton failed to stop the Haut Diggidy Dog company from selling dog treats under the mark “CHEWY VUITTON.”
In principle, the U.S. trademark laws have long offered protection to the owners of famous marks from dilution by others. However, the courts have been reluctant to put parody marketeers out of business because of a stringent test the U.S. Supreme Court announced in 2003. In the Moseley v. V Secret Catalogue case, the owners of the “VICTORIA’S SECRET” trademark for lingerie tried to stop Moseley from selling adult products under the “VICTOR’S SECRET” mark. The Supreme Court reversed the lower court decision and held that owner of the famous mark had to prove actual harm, not simply a likelihood of harm, to be entitled to relief under a “dilution by tarnishment” cause of action.
Following the Moseley decision, in 2006, Congress passed the Trademark Dilution Revision Act (TDRA), which revised the U.S. trademark laws to make it easier for trademark owners to stop free rides on the coattails of famous marks. Section 1125(c) now provides, in pertinent part:
Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
(Emphasis added.) The TDRA, in essence, reversed the ruling in the Moseley case and lowered the bar by requiring only a showing of a likelihood of harm to obtain relief.
Section 1125(c) actually provides two causes of action: “dilution by tarnishment” or “dilution by blurring.” Tarnishment presumably addresses situations like the Moseley case, where the VICTORIA’S SECRET mark could be sullied by association with sex toys and the like. Blurring, on the other hand, addresses situations where use of the same or a similar mark on unrelated goods simply impairs the distinctiveness of the famous mark.
The TDRA also enumerates the factors that are to be taken into account when “dilution by blurring” is alleged:
In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:(i) The degree of similarity between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an association with the famous mark.
(vi) Any actual association between the mark or trade name and the famous mark.
Even with the new statutory rights provided by the TDRA, famous trademark owners have not had a easy time preventing dilution (as the 2007 “CHEWY VUITTON” case, mentioned above, demonstrates). Few cases have gone to trial to provide clear guidance on what type of evidence is needed to prove dilution, especially dilution by blurring.
A recent decision by the U.S. Trademark Trial and Appeal Board (TTAB), however, provides a detailed roadmap for proving dilution by blurring claims. (Although the TTAB lacks the injunctive powers of federal district courts, it follows the same standards in ruling on applications for registration.) National Pork Bd. v. Supreme Lobster and Seafood Co. involved a challenge by the pork industry to the attempt by an applicant to register the mark “THE OTHER RED MEAT” for fresh and frozen salmon.
The National Pork Board is a quasi-governmental agency formed by the Pork Promotional, Research and Consumer Information Act (a.k.a. the Pork Act) of 1985 to “promote consumption of pork and pork products.” It collects a fee on all hogs sold in the U.S. and has spend over 500 million dollars since 1987 on pork “demand enhancement activities.” It owns U.S. registrations on “THE OTHER WHITE MEAT” mark for “association services namely promoting the interests of the members of the pork industry,” as well as for cookbooks, brochures about pork, pens, pencils, crayons, bumper stickers, t-shirts, sweatshirts, aprons, jackets and hats, among other things.
The Supreme Lobster and Seafood Company, on the other hand, is a bantamweight distributor of seafood to supermarkets and restaurants in the greater Chicago area.
By seeking registration of the “THE OTHER RED MEAT” mark, Supreme Lobster essentially signed up for a cage fight with the Pork Board at the TTAB, where the proceedings follow the federal rules of civil procedure but all testimony is submitted in writing without any right to a trial by jury or opportunity to challenge live witnesses.
The National Pork Board mounted a case that one would have expected from a 900 pound gorilla. It presented testimonial depositions from its CEO, and its vice-presidents of operations, industry relations, and “demand enhancement,” as well as it former staff economist and its directors of brand strategy, retail marketing, consumer marketing, and culinary niche marketing.
Perhaps more importantly, the National Pork Board presented survey evidence that the the TTAB found persuasive on several issues. It presented a fame study conducted by Northwestern University in 2000 in which twenty-five slogans were compared in over a thousand telephone interviews. This survey concluded that “THE OTHER WHITE MEAT” slogan was the fifth most recognized slogan in the U.S. (recognized by over 80% of adult respondents) and allowed the TTAB to conclude that “THE OTHER WHITE MEAT” mark was not only famous but “part of the fabric of popular culture in the United States.”
The Pork Board also presented a dilution survey that it commissioned at the outset of the litigation in 2007. An independent survey company conducted interviews in which a screener played a recording of the Supreme Lobster slogan and then asked “Thinking about the slogan you just heard [The Other Red Meat], do any other advertising slogans or phrases come to mind?” Thirty-five percent responded with the Pork Board’s mark.
The TTAB also found the two marks were highly similar and noted that Supreme Lobster’s CEO admitted in his deposition that he knew of the Pork Board’s mark when he picked his slogan. Based on all of these factors, the TTAB concluded that the applicant’s mark, “The Other Red Meat,” was likely to dilute by blurring the Pork Board’s “THE OTHER WHITE MEAT” mark.
The TTAB decision provides very useful guidance for the owners of famous marks in terms of how to use survey evidence to prove the fame of their marks and likelihood of dilution (despite some criticism of the use of leading questions in the Pork Board’s dilution survey).
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.
On August 7, 2010, Elena Kagan officially assumed office as an Associate Justice of the Supreme Court of the United States. Justice Kagan was born in New York, New York and has earned degrees from Princeton, Oxford, and Harvard Law School, where she served as supervising editor of the Harvard Law Review.
Justice Kagan clerked for Abner Mikva of the U.S. Court of Appeals for the District of Columbia Circuit and for Justice Thurgood Marshall of the Supreme Court of the United States. She also worked as an associate at Williams & Connolly, LLP, as professor at the University of Chicago Law School and at Harvard Law School, and as associate counsel to President Clinton. Justice Kagan also served as deputy assistant to the President for Domestic Policy, as Deputy Director of the Domestic Policy Council, and as the 11th dean of Harvard Law School. President Obama nominated her to serve as the 45th Solicitor General of the United States and then to serve as an Associate Justice of the Supreme Court.
Leading up to Justice Kagan’s confirmation, much was written about the relative lack of a “paper trail” from which one might infer her position on certain issues. Indeed, as a non-judge, she had never authored a court decision or opinion prior to joining the Supreme Court. In addition, Justice Kagan has written comparatively few journal articles and other scholarly papers. As a result, Justice Kagan’s views on the law of intellectual property remain mostly a mystery.
Nonetheless, Justice Kagan certainly does have experience with IP issues. For example, as Solicitor General, she oversaw her office’s handling of the Bilski1 case. In that case, the Solicitor’s Office supported the Federal Circuit’s “machine or transformation” test for determining patent eligible subject matter under 35 U.S.C. §101 and argued that the petitioner’s claims were directed to an unpatentable method of organizing human activity.
During her time as Solicitor General, Justice Kagan was also involved in the Able Time2 trademark case, in which her office opposed the petitioner’s argument they were free under the Tariff Act to import items bearing a registered trademark, so long as the trademark owner did not yet make the same item.
Justice Kagan also has experience with copyright issues. While she was Solicitor General, her office opposed certiorari in Cable News Network, Inc. v. CSC Holdings, Inc., 129 S.Ct. 2890 (2009), a copyright case concerning remote-storage DVR technology.In the brief, Justice Kagan’s office supported the lower court’s holding that the technology wouldn’t violate copyright holders’ rights, and argued that the technology was a fair use. Her office also submitted an amicus brief in the Reed Elsevier3 case, arguing that a federal statute requiring registration of a copyrighted work before an action for infringement can be instituted did not limit the subject-matter jurisdiction of the federal courts.
During her time at Harvard Law School, Justice Kagan was a proponent of the school’s Berkman Center for Internet & Society, and was credited with recruiting Lawrence Lessig and other prominent IP scholars.
In sum, while Justice Kagan’s judicial philosophy on intellectual property issues is thus far unknown, there is no question that she has considerable experience in the field.
1Bilski v. Kappos, 130 S.Ct. 3218 (2010).
2Able Time, Inc. v. United States, 129 S.Ct. 2864 (2009).
3Reed Elsevier, Inc. v. Muchnick, 130 S.Ct. 1237 (2009).
This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617-439-2000.
This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.
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