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Patent
Law:
Means Plus Function Claims Still Limited to Structure Described in Specification:
RESTAURANT TECHNOLOGIES, INC. v. JERSEY SHORE CHICKEN and KLEE’S BAR & GRILL,
2009-1176, (CAFC January 6, 2010)
The
Court of Appeals for the Federal Circuit ("CAFC")
this week in RESTAURANT TECHNOLOGIES, INC. v. JERSEY SHORE
CHICKEN and KLEE’S BAR & GRILL, have essentially held
that means plus function claims cover the structure as
disclosed in the specification.
The
case involved an invention that relates to the supply and
disposal of cooking oil for use with restaurant fryers.
Restaurant Technologies, Inc. ("RTI") owns the
patent in suit, US Patent 5,249,511 ("the '511
patent"), that is directed to a system for the
distribution, filtering, removal, and disposal of cooking oil.
The system enhances safety to workers and efficiency to deep
frying operations.
The
primary disputed claim term involved a squeezable trigger
valve, which RTI argued would be equivalent to a lever,
button, or some other structure, including either the pump or
the dipstick with a triggering button of the accused product.
The CAFC disagreed, "although the dipstick assembly, in
conjunction with the pump, may perform the identical function
as the squeezable trigger valve, the differences between the
dipstick assembly plus a pump on the one hand, and a
squeezable trigger valve with a nozzle, on the other, are not
insubstantial. For example, the dipstick assembly and pump are
activated with a push button on the dipstick assembly that
energizes the pump; fluid pressure in the line then overcomes
a spring-loaded check valve to pour into the fryer. The
accused system thus uses a pump and fluid pressure to overcome
a check valve, whereas the patent claims a valve that is
squeezed. Thus, no reasonable fact finder could have found
that the dipstick assembly, alone or in conjunction with the
pump, meets the limitations of claim 1, paragraph (d)(iii)."
Additional
claim terms were in dispute but all were construed according
to the specific structure and then evaluated for equivalence
based on the insubstantial difference test. Having found
insubstantial differences between the claimed elements in the
'511 patent and the accused device, the District Court
Judgment of Non-infringement was affirmed and we are again
reminded that means plus function format claims are still
limiting claims.
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Trademark
Law:
A Picture on a Website is Not Necessarily Required for a Trademark Specimen:
In
Re Michael Sones,
2009-1140, (CAFC December 23, 2009)
The
Court of Appeals for the Federal Circuit ("CAFC")
has held in In Re Michael Sones that a photograph is not
necessarily required in a specimen to support a Statement of
Use. In the Sones case, the trademark applicant applied to
register the mark "ONE NATION UNDER GOD" for use on
Charity Bracelets (Serial No. 78/717,427). The application was
filed under Section 1(b) of the Lanham Act on the basis of a
bone fide intent to use the mark in commerce. The mark was
allowed after being published for opposition for the required
30 day opposition period.
The
applicant filed a Statement of Use together with a
"specimen" showing the mark as used in commerce. The
specimen consisted of a web page that included the mark and
the description "Charity Bracelet".
The
USPTO rule for Internet specimens is provided in the Trademark
Manual of Examining Procedure at § 905.06:
Displays
may be used as Specimens, provided:
-
A
picture of the relevant goods is included;
-
The
mark is sufficiently near the picture of the goods to
associate the mark with the goods; and
-
Information
necessary to order the goods is provided.
This
is known as a point of sale display specimen and was adopted
by the USPTO after the Internet began to be used for
interstate commerce. At that time, the USPTO was strict in
their acceptance of Internet specimens for purposes of
supporting a Statement of Use.
During
oral arguments, the Court asked the USPTO attorney interesting
questions regarding the practical need for photographs in an
Internet specimen. For example, Judge Linn asked whether a
picture of a point of sale display in a store would be
rejected if the photograph consisted of the mark near a stack
of plain boxes, each of which included the mark. The USPTO
attorney said that it probably would. Oral arguments are
available to listen to online here.
The
operative question, according to the CAFC is whether the mark
is associated with the goods on which the mark is used. On
remand, the CAFC has ordered the CAFC to consider the evidence
as a whole to determine if applicant's specimen associates his
mark with his charity bracelets so as to "identify and
distinguish the goods." citing Bellsouth, 60 F.3d at
1569; see also Damn I'm Good, Inc. v. Sakowitz, Inc., 514 F.
Supp 13587 (S.D.N.Y. 1981).
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US
Patent and Trademark Office News:
The
US Patent and Trademark Office ("USPTO") is
contacting former patent examiners, in an effort to solve the
growing backlog problem. The USPTO invited former
examiners, who have passed their probationary period and who
have resigned less than three years ago or have more than
three years examining patents, to return. The delays in
first Office Actions is now exceeding 12 months and steps
taken by the USPTO to reduce the backlog will be
welcome.
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