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Newsletters

Fish Federal Circuit Summary Service: Issue # 293

February 15, 2007

Newsletters

Fish Federal Circuit Summary Service: Issue # 293

February 15, 2007

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Res Judicata Is Applied to Functionality Rejection of Design Mark
In re Bose Corp. v. Click here to download the case
Date: Feb. 8, 2007
Panel: Lourie, Rader, Schall
Author: Lourie
District court: TTAB
,b>Trial judge: N.D. Tex.
Summary: Fed Cir affirms rejection of the design of the iconic, pentagonal Bose 901 loudspeaker on re judicata grounds. The prior rejection (a decade ago) was for functionality, and the Fed Cir rejected Bose’s argument that these intervening changes mattered: (1) alleged addition of a curved front edge to the design, because that edge was considered in the prior case; (2) the decision in TrafFix; and (3) Bose promotional materials that did not tout utilitarian advantages of the curved front edge, because the rejection applied to the design as a whole.

KEY WORDS: RES JUDICATA (YES), TRADEMARK, FUNCTIONALITY

“Comprising” is Open-Ended As to Each Limitation, But Not As To Each Term Within a Limitation
Dippin’ Dots, Inc. v. Mosey v. Click here to download the case
Date: Feb. 9, 2007
Panel: Mayer, Rader, Gajarsa
Author: Gajarsa
District court: N.D. Tex.
Trial judge: Trash, Jr.
Summary: Fed Cir affirms summary judgment of noninfringement, judgment (jury trial) of invalidity for obviousness, and judgment (bench trial) of inequitable conduct, but reverses judgment of antitrust violation. The patent covered a multi-step method of preparing and serving ice cream with (edible) beads in it. The inventor made pre-critical date sale to 800 people at a supermarket, but submitted a Rule 132 declaration during prosecution stating that the first sales were after that date. “Beads”: The district court properly construed this term to cover smooth spheres, and to be limited to processes that produce only smooth spheres (and not a combination of smooth spheres and “popcorn”) despite a “comprising” transition term, especially since the patentee narrowly defined the term. The Fed Cir noted that the open-ended transition applied to each of the claim elements, but not to each word within each element. Obviousness: The inventor’s pre-critical date sales were not necessarily experimental — the inventor said he as testing the commercial (not technical) feasibility of the invention at the supermarket. The steps practiced there were also close enough to the patent claims to let a reasonable jury find obviousness, and reject evidence of commercial success (especially since the few steps added by the claims over the prior art supermarket demonstration were not shown to have a nexus with that success). Inequitable Conduct: Materiality was clear, and there was no clear error on intent, especially since hidden sales are particularly bad things (because examiner’s cannot root them out easily). Antitrust: The standards for materiality and intent are higher in the Walker Process area, and although materiality was met, intent was not, because there was no real proof of intent apart from the omission. The fee awards were therefore vacated. Note: This case seems important, both for its refusal to apply the “comprising” transition to all parts of the claim body, and because it holds that antitrust liability requires proof of deceptive intent apart from an omission itself (and by implication seems to say that omission alone can suffice for inequitable conduct).

KEY WORDS: CLAIM CONSTRUCTION (NARROW), TRANSITION TERM (NARROW), COMPRISING (NARROW), OBVIOUSNESS (YES), EXPERIMENTAL USE (NO), COMMERCIAL SUCCESS, INEQUITABLE CONDUCT (YES), DECEPTIVE INTENT (YES), ANTITRUST (NO), WALKER PROCESS (NO)

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