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Fish Federal Circuit Summary Service: Issue # 297

May 10, 2007

Newsletters

Fish Federal Circuit Summary Service: Issue # 297

May 10, 2007

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TTAB Properly Considered Services Provided By Website In Determining Genericness of Registered Mark
In re Reed Elsevier Properties, Inc.
Date: April 12, 2007
Panel: Mayer, Schall, Bryson
Author: Mayer
Summary: Fed Cir affirms TTAB’s finding that the mark “lawyers.com” was generic when used to provide an online interactive database of information related to law, legal news, and legal services. Per its two-part test for genericness, the Fed Cir first addressed the relevant genus of services at issue and found no error in the TTAB’s consideration of the services offered on the website instead of limiting its determination to the services listed in the registration application. The TTAB considered the website to inform its understanding of the mark, rather than incorporating non-claimed services into the genus at issue. On the second prong of the genericness test (i.e., whether mark primarily refers to the genus of services), the Fed Cir agreed that the mark identifies a commercial website providing access to and information about lawyers. The court rejected Reed’s distinction between on one hand, helping to select and contact lawyers, and on the other hand, providing legal information, because these two categories are inextricably intertwined.

KEY WORDS: TTAB, TRADEMARK, GENERIC

Claim Construction Does Not Need To Cover All Disclosed Embodiments; Failure to Obtain Accused Product for Pre-Suit Investigation Does Not Necessarily Require Rule 11 Sanctions
Intamin Ltd. v. Magnetar Techs., Corp.  
Date: April 18, 2007
Panel: Rader, Plager, Prost
Author: Rader
District court: C.D. Cal.
Trial judge: Feess
Summary: Fed Cir vacates summary judgment of noninfringement, and affirms decision vacating previous finding of Rule 11 sanctions. The patent-in-suit relates to magnetic braking system for amusement park rides.

Infringement: On the first claim construction dispute, the Fed Cir disagreed that the term “intermediary” must be non-magnetic. Construing the term in relation to the related term “alternating polarity,” the Fed Cir ruled that “intermediary” “can embrace magnetic substances, albeit only if the additional term requirement of ‘alternating polarity’ allows for it.” The court reached this ruling by noting that (i) the plain meaning do not require a non-magnetic intermediary, (ii) claim differentiation indicates that the term was broader, and (iii) a disclosed embodiment does not limit the broader claim language.

On the second claim construction issue, the Fed Cir agreed that the term “length” meant “extent from end to end–distinguished from width,” because (a) the context of the claims agreed with this ordinary meaning, (b) the specification’s use of the term was consistent with this meaning, (c) although the construction excludes one embodiment, “this court has acknowledged that a claim need not cover all embodiments. A patentee may draft different claims to cover different embodiments.” Slip op. at 11 (internal citations omitted); and (d) although the proposed construction would render dependent claim 10 invalid, the Fed Cir “considers but gives no weight” to that issue. Because the Fed Cir sustained the construction of “length” but not that of “intermediary,” it remanded the matter.

Rule 11: The district court initially granted Rule 11 sanctions after finding that Intamin filed this suit in retaliation for Magnetar’s president’s public criticisms of Intamin’s product and that Inamin failed to obtain a sample of the accused product. On reconsideration, the district court again found that the suit was filed for an improper purpose, but vacated its decision that the pre-suit investigation was frivolous. Although “a patentee who failed to obtain a sample of the product as part of its pre-filing investigation” may be subject to Rule 11 sanctions under Judin v. United States, 110 F.3d 780 (Fed. Cir. 1997), there is no “blanket rule that a patentee must obtain and thoroughly deconstruct a sample of a defendant’s product to avoid violating Rule 11.” Slip op. at 16. While the patentee in Judin could have easily obtained a sample of the accused bar code scanner for a nominal price, this present case’s accused brake system involved “unreasonable obstacles to any effort to obtain a sample” of the accused device. Furthermore, the patentee satisfied its Rule 11 obligations here by evaluating its patent portfolio, analyzing the patent’s validity and scope, performing an infringement analysis, reviewing publicly available documents regarding the accused device, inspecting and taking pictures of the device as installed, and reviewing its findings with experts.

KEY WORDS:

Permanent Injunction Not Violated If New Product Does Not Infringe
Bass Pro Trademarks, L.L.C. v. Cabela’s, Inc.
Date: April 6, 2007
Panel: Newman, Clevenger, Dyk
Author: Newman
District court: W.D. Mo.
Trial judge: Dorr
Summary: Fed Cir vacates contempt order and sanctions based on a violation of a settlement agreement and consent judgment resulting from a previous patent infringement suit related to a vest-seat combination. In the previous litigation, Cabela agreed to a consent judgment and injunction prohibiting it from further infringing a “combination vest and pivotable seat member.” Cabela then sold a design-around composed of a folding seat attached to the back of a garment. Based on the description of the invention in the specification and the arguments made during prosecution, the Fed Cir held that the vest — rather than any generic garment — was a material limitation to the claim. Because the design-around product did not include a vest, there was no infringement and thus no violation of the injunction.

KEY WORDS: INJUNCTION, CONTEMPT, SANCTIONS, DESIGN-AROUND, CLAIM CONSTRUCTION (NARROW), INFRINGEMENT (NO)

Ownership of Inventions Funded By NIH; Validity of Broadening Certificate of Correction
Central Admixture Pharma. Servs. Inc. v. Advanced Cardiac Solutions, P.C.
Date: April 3, 2007
Panel: Schall, Gajarsa, Prost
Author: Gajarsa
District court: N.D. Alabama
Trial judge: Hopkins
Summary: Fed Cir vacates infringement summary judgment, affirms summary judgment of non-invalidity and of no false marking or false advertisement, and affirms procedural rulings related to inequitable conduct and misuse. The patent relates to a chemical solution used during heart surgery. Standing: Inventor’s admitted failure to execute license to NIH did not deprive him of ownership and standing to sue. Looking to its precedent interpreting the Bayh-Dole Act, the Fed Cir explained that “a Bayh-Dole violation grants the government discretionary authority to take title. When a violation occurs, the government can choose to take action; thus, title to the patent may be voidable. However, it is not void: title remains with the named inventors or their assignees. … The government must take an affirmative action to establish its title and invoke forfeiture.” Slip op. at 7-8 (emphasis in original; internal citations omitted). Because the NIH has not asserted its rights, ownership remained with the inventor.

Validity of certificate of correction & infringement: The patentee obtained a certificate of correction replacing all instances of the word “osmolarity” (i.e., amount of solute per liter of total solution) with the word “osmolality” (i.e., amount of solute per kilogram of solvent), resulting in the claimed concentration range to shift slightly downwards and cover less-concentrated solutions. The defendant challenged the validity of the certificate of correction as an improper broadening of the claims where the error and its correction would not be clearly evident to the person of skill in the art. Comparing as a matter of law the properly construed original claims to the corrected claims, the Fed Cir concluded that the claims were broadened by the certificate of correction because the corrected claims covered less-concentrated solutions not originally covered by the original claims. The Fed Cir then noted that there are three categories of mistakes: (i) “misspellings that leave no doubt as to the word which was intended;” (ii) typographical errors “resulting in another word that is spelled correctly and that reads logically in the context of the sentence;” and (iii) mistakes “where it is apparent that a mistake has been made, but it is unclear what the mistake is.” The first mistake does not invalidate a broadening certificate, but the other two invalidates it. Because the error in this case falls in the second category, the error and its correction would not be apparent to the skilled artisan, rendering the certificate of correction invalid. The claims therefore read as they were originally issued, before the certificate of correction. Because the summary judgment of infringement relied on the corrected claims rather than the original claims, the Fed Cir vacated the summary judgment and remanded. Claim construction: The Fed Cir construed the original language of “osmolarity … between about 400-500 mOsmol” to mean “osmolarities as low as 385 mOsmol/L” based on the term “about” and the disclosure in the specification that the solution starts becoming effective near a concentration of 385 mOsmol/L. As to the term “maintaining,” the defendant waived its rights to have this term construed by failing to raise it during the claim construction phase.

Invalidity: The Fed Cir found that the phrase “adapted to be diluted” is not indefinite because it is amenable to construction. It also rejected a 102(b) challenge based on an article co-authored by the inventor that described surgeries occurring before and after the critical date, because the article was nonspecific about which surgeries using the claimed invention occurred before the critical date.

Procedural rulings: The district court properly dismissed the inequitable conduct allegation because the pleading lacked the requisite particularity, failing to “identify what relevant and undisclosed prior art was known to the patentee,” and to explain what information was manipulated and how that information misled the PTO. The district court did not abuse its discretion in denying the defendant’s motion for leave to amend where leave was sought over three years after the close of discovery.

False marking, false advertisement, misuse: The Fed Cir conclusorily found no error in (1) the summary judgment related to the false marking and false advertisement defenses, and (2) its refusal to belatedly amend the pleadings to add a counterclaim for patent misuse.

KEY WORDS: STANDING, BAYH-DOLE ACT, GOVERNMENT GRANT, CERTIFICATE OF CORRECTION (VALIDITY OF BROADENING CC), CLAIM CONSTRUCTION (BROAD), “ABOUT,” ANTICIPATION, INDEFINITENESS, INEQUITABLE CONDUCT, SPECIFICITY OF PLEADING, LEAVE TO AMEND PLEADINGS, FALSE MARKING, FALSE ADVERTISEMENT, MISUSE, SUMMARY JUDGMENT

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