Res Judicata (Claim Preclusion) Bars TM Cancellation After Petitioner Loses Infringement Suit
Nasalok Coating Corp. v. Nylok Corp. Nasalok Coating Corp. v. Nylok Corp. Click here to download the case Date: Apr. 14, 2008 Panel: Newman (concur), Gajarsa, DYK Author: Dyk District court: TTAB Summary: Fed Cir affirms Board decision finding Nasalok’s TM cancellation claim blocked by res judicata because Nasalok had previously suffered a default judgment in an infringement suit on the mark. The Fed Cir first found that a TM invalidity claim is not a compulsory counterclaim in a TM infringement suit (a point apparently never addressed in the annals of law) because they come from a different “transaction or occurrence.” (Cf. Foster v. Hallco (similar conclusion re patent claims); Lear v. Adkin (stating policy of encouraging challenges to bad patents)). However, the effect of the cancellation proceeding would be a collateral attack on the infringement judgment, so there was res judicata.
In concurring, Judge Newman would have affirmed on a more direct route, i.e., that the issue had been decided in the litigation because validity had been pled by Nylok. She would not have worried about whether invalidity is a compulsory counterclaim, and she thought the majority misread Foster and the supposed common Lear policies for patent and TM law.
KEY WORDS: TRADEMARK, CANCELLATION, RES JUDICATA, CLAIM PRECLUSION
District Court Must Construe All Terms That Have More Than One Possible Ordinary Meaning; Party Need Not Object to Claim Constructions At Trial
O2 Micro Int’l Ltd. v. Beyond Innovation Technology Co., O2 Micro Int’l Ltd. v. Beyond Innovation Technology Co., Click here to download the case Date: Apr. 3, 2008 Panel: Lourie, Clevenger, PROST Author: Prost District court: E.D. Tex. Trial judge: Ward Summary: Fed Cir vacates judgment (jury trial) of willful infringement on patents for DC-to-AC converter circuits used for laptop display backlights. To overcome prior art, the applicants had added a limitation that a certain feedback circuit control switches “only if” a feedback signal is above a threshold. The district court declined to construe this term, and gave it to the jury on its ordinary meaning. Claim Construction Procedure: As an initial procedural point, the defendants did not waive their objections to the claim construction (at least not in the 5th Cir) by failing to object to the jury instructions, because they made their position (and by inference, their objection) clear during claim construction. Also, although defendants’ wording for the construction may have changed on appeal, the new wording was synonymous with their position below. Finally, it was error under Markman (though perhaps permitted under Elekta, which was not en banc) not to construe a term that was truly in dispute and had multiple ordinary meanings; this was particularly true because the parties did not dispute the meaning of the term “only if,” but instead disputed its coverage, i.e., whether the exclusion applied for all operation of the accused device, or only during steady state operation. Festo: The district court stated conclusorily that the addition of “only if” to the claims was tangential, but the Fed Cir disagreed because the applicants used both a “predetermined” term in the claims and the “only if” term to get around a piece of prior art that operated regardless of the feedback signal level. Because O2 had argued only literal infringement for the other limitations, the record also did not support O2’s argument that the jury’s DoE verdict could have been linked to other limitations, and the jury could have found the “only if” limitation literally met.
Note: This case shows the danger of putting definitive language in a claim such as “all,” “none,” “only if,” etc. It’s easy to design around and typically has little, if any, scope of equivalents
KEY WORDS: WAIVER (NO), CLAIM CONSTRUCTION (NARROW), CLAIM CONSTRUCTION PROCEDURE, DOCTRINE OF EQUIVALENTS (NO), FESTO (YES), TANGENTIAL (NO)
Claim Invalid if Specification Lacks Algorithm Corresponding to Computer-Based Means-Plus-Function Limitation
Aristocrat Technologies Australia Pty. v. Int’l Game Technology Aristocrat Technologies Australia Pty. v. Int’l Game Technology Click here to download the case Date: Mar. 28, 2008 Panel: Lourie, Schall, BRYSON Author: Bryson District court: D. Nev. Trial judge: Sandoval Summary: Fed Cir affirms summary judgment of invalidity for indefiniteness for patent on an electronic gaming machine (like a slot machine) that recited a “game control means,” but did not recite an algorithm for performing the related functions. The patentee argued that the structure was a standard microprocessor gaming machine with “appropriate programming.” As an initial matter, the district court did not err by failing to construe the relevant functions, because the differences between the parties’ positions on this point would not affect the outcome. On the merits, WMS Gaming and Harris Corp. made clear that computer-implemented means-plus-function limitations require algorithms for corresponding structure, and Medical Instrumentation made clear that claims that lack corresponding structure are invalid: “For a patentee to claim a means for performing a particular function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming.” Dossel was not to the contrary, because when the Dossel panel noted that algorithms could be left for a skilled artisan to fill in, it was using the term “algorithm” in its narrow sense to refer to particular equations. Finally, a patentee cannot rely on an artisan to fill in the entire algorithm (though the sufficiency of the disclosure is to be viewed from the perspective of a skilled artisan), because such a position conflates enablement with the requirement to actually disclose some structure. On the facts, the only disclosure was a passage noting that a skilled artisan could implement the functionality and some descriptions of the function (but not ways to do the function), and the Fed Cir also rejected the argument that the claimed function itself was an algorithm.
Note: This is a well written opinion and does the best job for the court yet in explaining the real basis for requiring disclosure of algorithms in computer-based means-plus-function situations.
KEY WORDS: CLAIM CONSTRUCTION, MEANS-PLUS-FUNCTION, DEFINITENESS (NO), CORRESPONDING STRUCTURE (NO