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Patent
Law:
American
Inventors Protection Act ("AIPA") Interpreted to
Benefit Inventors
Wyeth
et al. v. David J. Kappos et al.,
2009-1120 (CAFC, January 7, 2010)
The Court of Appeals
for the Federal Circuit (“CAFC”) has interpreted the 1999 American
Inventors Protection Act (“AIPA”) to benefit inventors in
contrast to the position asserted by the US Patent and
Trademark Office (“USPTO”).
Wyeth et al. v.
David J. Kappos et al., 2009-1120 (CAFC, January 7, 2010).
In
1999, the American Inventors Protection Act amended 35 U.S.C.
§ 154(b) to address the problem of reduced patent terms
caused by delays be the USPTO.
Prior to the passage of the AIPA, the patent term in
the US was 17 years from the date of issue of the patent.
The AIPA provides a patent term of 20 years from the
date of filing of the application.
The
AIPA, 35 U.S.C. § 154(b)(1) provides:
(A) Guarantee of prompt Patent and Trademark
Office responses.--Subject to the limitations under paragraph
(2), if the issue of an original patent is delayed due to the
failure of the Patent and Trademark Office to [meet deadlines
specified in clauses (i)-(iv)] . . .
the
term of the patent shall be extended 1 day for each day after
the end of the period specified in clause (i), (ii), (iii), or
(iv), as the case may be, until the action described in such
clause is taken.
(B)
Guarantee of no more than 3-year application pendency.--Subject
to the limitations under paragraph (2), if the issue of an
original patent is delayed due to the failure of the United
States Patent and Trademark Office to issue a patent within 3
years after the actual filing date of the application in the
United States . . .
the
term of the patent shall be extended 1 day for each day after
the end of that 3-year period until the patent is issued.
(C)
Guarantee or adjustments for delays due to interferences,
secrecy orders, and appeals.--Subject to the limitations under
paragraph (2) . . .
the
term of the patent shall be extended 1 day for each day of the
pendency of the proceeding, order, or review, as the case may
be.
Paragraphs
(A) and (B) are at issue.
Paragraph (A) is referred to as the A delay and
paragraph (B) is referred to as the (B) delay.
The USPTO interpreted the B delay to start at the time
of filing the patent application, not three years later.
The resulting USPTO calculation was the greater or the
A delay and the B delay, less delays by the applicant.
The District Court for the District of Columbia found
that “The problem with the PTO’s interpretation is that it
considers the application delayed under [the B
guarantee] during the period before it has been delayed.”
Wyeth v. Dudas 580
F. Supp. 2d 138, 141 (D.D.C. 2008) (citing Merck & Co. v
Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996)).
The
CAFC agreed with the District Court and constructed the
statute to require the adding the A delay plus the B delay
less delays by the application.
Although this may sometimes result in patent terms that
are greater than 17 years, such a patent term is supported in
the legislation. Specifically,
the statute provides that the statute “includes a new
provision guaranteeing diligent applicants at least a
17-year term…” H.R.
Rep. No. 106-464, at 125 (1994) (emphasis added).
The USPTO’s interpretation effectively creates a 17-year
term cap where B delays are greater than A delays.
NOTE:
The USPTO issued a Notice on January 28, 2010 that the
software used to calculate patent term adjustment online at
www.uspto.gov would be updated by March 2, 2010. A
request for a recalculation of patent term adjustment for any
patent that issued prior to March 2, 2010 should be
filed no later than 180 days after the patent issue
date. Clients of this firm are being notified of this
procedure and any other reader may request assistance from our
office at the contact information below.
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Federal
Circuit Split on distinction between "abandonment"
and "dedication to the public"
Shindler
Elevator Corp. et al. v. Otis Elevator Company,
2009-1146 (CAFC, January 15, 2010)
The Court of Appeals
for the Federal Circuit (“CAFC”) found the District Court
for the Southern District of New York erred in its claim
construction of critical claim terms.
As a result, the District Court’s summary judgment of
non-infringement by Otis of US Patent 5,689,094 (“the ‘094
patent”) ruling was vacated.
The accused elevator control system was installed
at 7 World Trade Center in New York City.
The ‘094 patent
includes two independent claims, both of which include the
disputed terms at issue:
“information transmitter” and “recognition
device”.
In Fig. 2, the
recognition devices 5 mounted in access areas 33 and 34. When
a passenger 35 is recognized in access area 33, an elevator is
dispatched, and a display device 18, which is mounted above
the elevator door and/or at an input device 19, tells the
passenger which elevator to take. A proposed destination floor
is announced acoustically or is displayed visually on display
device 18. If the passenger wishes to change his destination
floor, he may do so manually at input device 19.
Claim 1 is
representative of the asserted claims and includes the
disputed claim elements “information transmitter” (and
“recognition device”.
1.
An elevator installation having a plurality of elevators
comprising:
a
recognition device for recognizing elevator calls entered at
an entry location by an information
transmitter carried by an elevator user, initializing
the entry location as a starting floor of a journey;
a
control device receiving the recognized elevator call and
allocating an elevator to respond to the elevator call,
through a predetermined allocating algorithm;
a
call acknowledging device comprising one of a display device
and an acoustic device to acknowledge recognition of the
elevator call and to communicate a proposed destination floor
to the elevator user;
the
recognition device, mounted in the access area in the
vicinity of the elevators and spatially located away from
elevator doors, actuating the information transmitter and
comprising a unit that independently reads data transmitted
from the information transmitter carried by the elevator user
and a storage device coupled between the unit and the control
device;
the
recognition device one of transmitting proposed destination
floor data, based upon the data transmitted from the information transmitter, to the control device, and,
transmitting elevator user specific data,
based upon individual features of the elevator user
stored in the storage device, to the control device.
The
District Court’s Claim Construction:
The district court
construed “information transmitter” to mean “a device
that communicates with a recognition device via
electromagnetic waves, after being actuated by that
recognition device, without requiring any sort of personal
action by the passenger.” It
construed “recognition device” to mean “a device that
actuates and reads data transmitted by an information
transmitter without requiring any sort of personal action by
the passenger.” Id. In the claim construction order, the
district court declined to specify the particular kind of
“personal action” prohibited under its construction, but
stated that it “rules out, not just standing in front of the
recognition device, or inputting data into the information
transmitter by hand, but any and all types of personal action
by the passenger.”
The district court
issued its summary judgment ruling on November 17, 2008.
Although it had previously said that “any and all types of
personal action” were prohibited under its construction, the
district court refined its understanding of “personal
action” on summary judgment to expressly permit “walking
into the monitored area.”
The
CAFC Claim Construction and Analysis:
The CAFC majority held
that the District Court’s claim construction was too narrow
and construed the claims to allow the user to take “personal
action” to the extent that he or she brings the
“information transmitter” within range of the
“recognition device”.
The majority relied
upon the claim language, the specification and the file
prosecution history to construe the claims.
Claim
Language:
The majority found
that in claim 1, the term “information transmitter” itself
suggests that the transmitter is a thing, separate and apart
from an “elevator user”, which transmits information. The
claim also provides that “elevator calls [are] entered at an
entry location by an information transmitter.” Thus, at
least with regard to the transmission of information and the
entry of calls, it is the information transmitter—not the
elevator user—that performs these tasks.
Carrying a transmitter
is thus a type of “personal action” that is expressly
required in the claims. The majority held that nowhere does
claim 1 limit the act of carrying to any specific manner of
carrying.
Claim 7 depends from
claim 1 and adds the phrase “wherein the recognition device
reads a key having a code.”
Because a user would need to use his hands to bring the
transmitter key within range of the recognition device to
unlock the door, or to clock in or out of work, these types of
personal action are implicitly permitted in claim 7 and, by
extension, in claim 1.
Specification:
The phrase “personal
action” is used only once in the specification, in the
following sentence:
The advantages
achieved by the invention reside in the fact that the desired
journey destination is communicated automatically to the
elevator control by [(1)] the information transmitters carried
by the elevator users or by [(2)] the recognition of features
of the elevator users without any personal action being
required by the passenger.
The
majority supports the broad reading of personal action,
because a passenger would need to place his hand on the
optical recognition device for it to read his fingerprints,
this cannot be the “personal action” to which the sentence
refers.
Prosecution
History:
The majority
interpreted the prosecution where it describes the invention
as operating “automatically, contactlessly, and
independently of the orientation of the information
transmitter” as modification actions that take place only
after the passenger has brought the transmitter within range
of the recognition device—specifically, the actuation of the
transmitter, the entry of call commands, and the selection of
a destination floor. The
majority therefore concluded that applicants’ statement
during the prosecution did not constitute a “clear and
unmistakable” disavowal of personal action for the limited
purpose of bringing the transmitter within range of the
recognition device. Instead, the majority read the prosecution
history in this case “as support for the construction
already discerned from the claim language and confirmed by the
written description.” citing 800 Adept, Inc. v. Murex Sec.,
Ltd., 539 F.3d 1354, 1365 (Fed. Cir. 2008).
Dissent:
The dissent agrees
that the “without requiring any sort of personal action”
construction imposed by the district judge unduly limited the
scope of the claims. Dependent
claim 7 contemplates using a key (or a card swipe) to enter
the building and at the same time transmitting the user’s
elevator data. In
other words, the device would be “hands-free” and
“automatic” even though the user has to take elaborate
action to bring the device within range.
The specification and
prosecution history make no such distinction, and consistently
emphasize the hands-free and automatic nature of the device
without regard to whether it is in range or not.
The majority disputes
the dissent’s position in footnote 2, stating that “The
embodiment was not “abandoned,” it simply was never
claimed in the application that led to this particular
patent.” 2009-1146 at page 11, fn 2.
That begs the question of how does abandoned compare
with the well established rule that disclosed, but unclaimed
matter is dedicated to the public. Johnson & Johnston
Associates, Inc. v. R.E. Service Co., Nos. 99-1076, -1179,
-1180, 2002 WL 466547 (Fed. Cir. Mar. 28, 2002) (en banc) (per
curiam). There
were no divisional patent applications filed from this
application that resulted in the ‘094 patent, so according
to Johnson & Johnson, the embodiment was dedicated to the
public. This case
leaves open the question:
what is the difference between “abandonment” and
“dedication to the public”?
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Trademark
Law:
BLACK MAIL
refused for Lack of Proof of Bone Fide Intent to Use the Mark
Research
In Motion Limited v. NBOR Corporation, Opposition No. 91179284
to application Serial No. 77090059 filed on January 24, 2007.
Research in Motion
Limited (“RIM”), well known owner of the BLACKBERRY
mark, opposed the registration of the mark BLACK
MAIL by the NBOR Corporation (“NBOR”).
Research In Motion Limited v. NBOR
Corporation, Opposition No. 91179284 to application Serial No.
77090059 filed on January 24, 2007.
Applicant filed the
mark BLACK MAIL for: “computer software for facilitating interactive
communication, namely, chat, electronic mail, voice, instant
messages, text transfer, multi-media transfer, live
collaboration, motion pictures, and sound over a global
computer information network and other networks”
RIM opposed the
registration of BLACK MAIL on two grounds,
1.
likelihood of confusion with its mark BLACKBERRY
under 15 USC § 1052(d); and
2.
lack of a bone fide intent to use the mark in
commerce.
The Trademark Trial
and Appeal Board (“TTAB”) did not reach the issue of
likelihood of confusion because it found that NBOR could not
establish by a preponderance of the evidence that it had a
bone fide intent to use BLACK
MAIL in commerce.
The TTAB listed the
following as what NBOR did not provide to prove a bone fide
intent to use the mark:
-
it
has not offered any goods or services for sale under the
involved mark;
-
the
mark has not been used and no plans have been made as to
how the mark may be used;
-
there
is no projected date of first use in commerce;
-
no
channels of trade have been formulated or planned for the
future;
-
the
classes of consumers and geographic areas of sales have
not yet been determined;
-
applicant
has not undertaken any market studies, surveys, or focus
groups; and
-
no
documents exist regarding plans for expansion and growth
of the product and service lines under the mark.
NBOR had previously
filed two trademark applications for the same mark and both
applications were abandoned because no Statements of Use were
filed. NBOR’s
argued that its previously filed applications and twenty-three
letters or emails to its attorney relating to the present and
applications a bone fide intent to use the mark.
The TTAB rejected its argument:
Evidence bearing on bona fide
intent is “objective” in the sense that it is evidence in
the form of real life facts and by the actions of the
applicant, not by the applicant’s testimony as to its
subjective state of mind. That is, Congress did not intend the
issue to be resolved simply by an officer of applicant later
testifying, “Yes, indeed, at the time we filed that
application, I did truly intend to use the mark at some time
in the future.”
J.T. McCarthy,
McCarthy on Trademarks and Unfair Competition, §19:14 (4th
ed. 2009).
This case provides a
reminder that a trademark application under Section 1(b) of
the Lanham requires objective documentation of a bone fide
intent to use the mark no later than the beginning of the
opposition period and objective steps should be taken to use
the mark at the time the application is filed.
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