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NTP, INC.
v. RESEARCH IN MOTION, LTD., 03-1615 (CAFC, December 14, 2004)
$53,704,322.69
District Court Jury Verdict Remanded on Claim Constructions Grounds.
The CAFC concluded that the district
court erred in its claim construction of the term “originating
processor.”
The term “originating processor” is
properly construed as “a processor in an electronic mail system
that initiates the transmission of a message into the system.” We
do not hold that the “originating processor” is always the
processor on which text of the email message was created. As a
practical matter this will probably be the case. However, there
could be a situation where someone composes an email message on
one processor, then perhaps transfers the message from the
creating processor to the “originating processor” that initiates
the message into the electronic mail system; e.g., by copying onto
a disk. Further, we conclude that the district court did not err
in construing “originated
information” as “[t]he message text of an electronic mail
message.” RIM focuses its argument on the term “originating
processor.” Indeed, RIM presents no independent argument that
“originated information” means anything other than the text of an
electronic mail message to be transmitted in the electronic mail
system. We see no
reason to disturb the district court’s
claim construction of the term “originating information.”
The question on
remand is whether the error in claim construction was prejudicial
to the jury’s verdict. The CAFC opined:
…the
extent to which the trial testimony and the exhibits actually
admitted into evidence might relate to
the issue of infringement under the correct construction of the
term “originating processor” is unclear on the record before us.
What is clear is that in the briefing of this appeal, the parties
have not fully vetted the evidentiary record as it might relate to
the correct construction of the term “originating processor.”
Because the district court has a more direct understanding of the
full record of trial proceedings in this case and is, thus, in a better position to
make an informed determination of prejudicial error relating to
the erroneous claim construction of the term “originating
processor,” we decline to make that determination in the first
instance on appeal and, instead, remand the same to the district
court for proper resolution.
On remand, if RIM can establish that
the erroneous claim construction prejudiced the jury’s verdict as
to the affected claims, the district court will have to set aside
the verdict of infringement as to those claims. The affected
claims are those that include the term “originating processor;”
namely, claims 15, 32, and 34 of the ’960 patent; claim 8 of the
’670 patent; and claim 40 of the ’592 patent (through its parent
claim 25).
The CAFC affirmed the District Court’s
holding that NTP showed that RIM practiced all of the steps of the
process patented in the patents at suit as required under 35 USC §
271(a). The CAFC framed the issue as “whether
the location of a component of an accused system abroad, where
that component facilitates operation of the accused system in the
United States, prevents the application of section 271(a) to that
system.”
Although RIM’s Relay, which is located in Canada, is the only
component that satisfies the “interface” of the “interface switch”
limitation in the asserted claims, because all of the other
components of RIM’s accused system are located in the United
States, and the control and beneficial use of RIM’s system occur
in the United States, we conclude that the situs of the “use” of
RIM’s system for purposes of section 271(a) is the United States.
However, the CAFC noted with approval the District Court’s
observation that if the claims had been directed to signal
generation, then the location and operation of the transmitters
abroad “would have been beyond the reach of the U.S. patent
laws.”
+++++++++++++++++++++++++++
In Re
Daniel S. Fulton and James Huang, 04-1267 (CAFC, December 2,
2004)
Obviousness
under 35 USC § 103(a)
This is a
current case that was appealed by the applicants to the Court of
Appeals for the Federal Circuit (“CAFC”) from the patent
examiner’s final rejection based on obviousness under 35 USC §
103(a). The patent application serial number is 09/122,198 (“the
‘198 application”).
The rejected
claim at issue is:
An
improved shoe sole for increasing the resistance to slip on a
contact surface, the sole comprising a bottom surface and defining
a perimeter bounding a forefoot portion corresponding to the
forefoot of the shoe and a heel portion corresponding to the heel
of the shoe, wherein the sole extends generally along a fore-aft
axis running from said heel portion to said forefoot portion, the
sole further comprising a substantially regular tiling array of
projections projecting from said bottom surface, said projections
terminating in hexagonal shaped projected surfaces spaced from
said bottom surface in a direction for making contact with the
contact surface, said projections being oriented so that opposite
edges of said projected surfaces face generally in the directions
of said fore-aft axis, said projected surfaces being substantially
flat and parallel to the bottom surface to maximize the area of
contact with the contact surface, said projections being spaced
from one another to define substantially continuous channels
therebetween for conducting liquid, said channels being open over
at least most of said perimeter, said forefoot portion and said
heel portion of the sole.’198 application, at 7 (emphases added).
The following figures show the
design claimed by claim 1 in the applicants/appellants ‘198
application and the prior art cited by the patent examiner.
The Board of
Patent Appeals and Interferences (“the Board”) held that:
…the
combined teachings of Bowerman and Pope would have suggested the
shoe sole recited in claim 1 to a person having ordinary skill in
the art. …Bowerman’s shoe sole responds to all of the limitations
in the claim except for those relating to the hexagonal shaped
projected surfaces. While not specifically mentioning hexagonal
shaped projected surfaces, Bowerman clearly suggests that cylindrical
polygon shaped studs or projections other than those expressly
described (square, rectangular or triangular) may be employed to
provide sharp edges which bite into artificial turf for good
traction. Pope establishes that shoe soles having studs embodying
projected surfaces hexagonally shaped and oriented as recited in
claim 1 are conventional. Given these disclosures, a person having
ordinary skill in the art would have readily appreciated Pope’s
known hexagonal shaped projecting surfaces as being particularly
well suited for implementing Bowerman’s desire for projections
having a plurality of sharp edges adapted to bite
into artificial turf to obtain good traction. This appreciation
would have furnished the artisan with ample suggestion or
motivation to combine Bowerman and Pope in the manner proposed so
as to arrive at the subject matter recited in claim 1.
On appeal, the applicants
argued that the Board failed to demonstrate that the
characteristics disclosed in Pope, hexagonal surfaces in a facing
orientation (ie with the straight side facing forward), are
preferred over other alternatives disclosed in the prior art. The
CAFC rejected the argument holding that “a
finding that the prior art as a whole suggests the desirability of
a particular combination need not be supported by a finding that
the prior art suggests that the combination claimed by the patent
applicant is the preferred, or most desirable, combination.
The CAFC held that Bowerman provides a motivation to
combine its teachings with other prior art references that
disclose cylindrical polygon shapes other than squares, triangles,
and rectangles.
The CAFC also rejected the applicants’ argument that
the prior art teaches away from their invention because the prior
art provides alternatives to the claimed elements. The CAFC held
that the “prior art’s mere disclosure of more than one alternative
does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed in the ’198
application.” In other words, “mere disclosure of alternative
designs does not teach away.”
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IRON GRIP BARBELL COMPANY, INC. and YORK BARBELL COMPANY, INC. v.
USA SPORTS, INC.,
04-1149 (CAFC, December 14, 2004)
Plaintiff
Iron Grip appealed the ruling of the US District Court for the
Central District of California that held that claims 1-3 and 6-8
were invalid on the grounds of obviousness. The CAFC affirmed the
District Court’s judgment.
Plaintiff alleged infringement of
claim 1 of US Patent 6,436,015 (“the ‘015 patent”) , which is as
follows:
A
weight plate for physical fitness including: a plate body formed
with a central throughbore and . . . further formed with solely a
triad of spaced apart elongated handle openings disposed generally
equiangularly . . ., said openings having respective outboard
edges cooperating with said plate to define a triad of integral
handle elements for grasping by a single hand to effect transport
of said weight plate.
The other claims at issue depended upon claim 1 and
were not considered different by the CAFC for purposes of the
appeal.
The prior art cited during the prosecution of the
‘015 patent is shown in Figs. 1 and 2 and the drawing of
the ‘015 patent is shown in Fig. 3.
The District Court held that it would have been obvious to combine
the prior art as a basis for its ruling of invalidity.
The CAFC reached its
conclusion because “the claimed
invention falls within a range disclosed in the prior art, and the
patentee has not shown that the prior art taught away from the
invention or new and unexpected results from a three elongated
grip weight plate as compared to those in the prior art, we
conclude that the claims are obvious absent substantial evidence
of pertinent secondary factors supporting patentability.”
The prior art showed a
range of 2 grips (Fig. 1) and 4 grips (Fig. 2), and the patentee
did not show that the prior art taught away from the invention or
that the use of 3 grips created any new or unexpected results.
The patentee offered
evidence of licenses of the patented product to support
patentability based upon secondary factors. The CAFC rejected the
evidence because the patentee did not show any affirmative
evidence of a nexus between the license and the merits of the
invention. Prior cases hold that such a nexus is a required
showing because it is often “cheaper to take licenses than to
defend infringement suits.” Citing EWP Corp. v. Reliance
Universal Inc., 755 F.2d 898, 908 (Fed. Cir. 1985).
Evidence offered by the
patentee that there were no 3 grip weight plates to show a
secondary factor supporting patentability was also rejected by the
CAFC because “Absent a showing of long-felt need or the failure of
others, the mere passage of time without the claimed invention is
not evidence of nonobviousness. See In re Wright, 569 F.2d
1124, 1127 (C.C.P.A. 1977).
++++++++++++++++++++++++++++++++++++++++++++++++++++++
SHEN
MANUFACTURING CO., INC., v. THE RITZ HOTEL LIMITED,
04-1063, -1076
(CAFC, December 17, 2004)
Shen Manufacturing (“Shen”) appealed the Trademark
Trial and Appeal Board (“TTAB”) dismissal of three oppositions and
the Ritz Hotel (“RHL”) cross-appealed the TTAB decision sustaining
two oppositions.
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Opposition Number: |
Mark: |
Goods/Services: |
TTAB Ruling |
CAFC Ruling |
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71,706 (“the ‘706 opposition) |
PUTTING ON THE RITZ |
Shower curtains |
Dismissed |
Affirmed |
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73,756 (“the ‘756 opposition) |
RITZ PARIS RITZ HOTEL and Design
 |
Dinner plates of porcelain or earthenware,
cups, saucers and serving pieces of porcelain, hair combs,
household sponges, household brushes, steelwool, and household
glassware. |
Dismissed |
Affirmed |
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74,517 (“the ‘517 opposition) |
RITZ PARIS RITZ HOTEL and Design
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Carpets, rugs, floor mats and matting,
linoleum for covering
existing floors, [and] wall covering made of vinyl and
plastic.
|
Dismissed |
Affirmed |
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72,818 (“the ‘818 opposition) |
RITZ |
Cooking
and wine selection classes |
Sustained |
Reversed |
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75,003 (“the ‘003 opposition) |
THE RITZ KIDS |
Ready
made
and
tailored clothing, including underwear, dresses, skirts,
trousers, shirts, neckties,
belts,
gloves, hats, raincoats and galoshes. |
Sustained |
Reversed |
The CAFC first held that
even though Shen’s RITZ mark has been in use for more than a
century, “it does not compare in terms of sales, advertising or
media interest.” It also held that “it cannot be said that Shen’s
mark enjoys the ‘extensive public recognition and renown’
characteristic of a famous mark.” The CAFC then concluded that the
TTAB’s failure to find Shen’s RITZ mark famous was supported by
substantial evidence.
Regarding the ‘706
opposition the TTAB distinguished PUTTING ON THE RITZ from Shen’s RITZ mark
as follows:
PUTTING ON THE RITZ, when evaluated as a
whole, conveys a strong commercial impression. It conjures images
of fancy, even swanky, ladies in full length gowns and gentlemen
in tails and top hats congregating in a large Art Nouveau
restaurant where an orchestra is about to start. This image, one
of comfort, sophistication and wealth, resonates strongly with the
buying public, leaving them with an impression unlike that from
Shen’s RITZ mark, which, when used on kitchen textiles, invokes
images, if any, of cleaning, cooking or manual labor generally.
Regarding opposition numbers ‘756 and
‘517, the CAFC dismissed Chen’s argument that the TTAB gave too
much weight to the disclaimed elements, “Paris” and “hotel”
because “the disclaimed elements of a mark… are relevant to the
assessment of similarity.” Citing
In re Shell Oil Co.,
992 F.2d 1204, 1206 (Fed. Cir. 1993). The CAFC provided the
rationale that “confusion is evaluated from the perspective of the
purchasing public, which is not aware that certain words or
phrases have been disclaimed.” In re Nat’l, 753 F.2d at
1059.
The CAFC further distinguished Chen’s RITZ mark as
follows:
RHL’s mark is further differentiated by the crest and ribbon,
which give the mark a particularly regal feel. The crest,
ribbon and reference to Paris collectively give the commercial impression of
royalty, old-world tradition and continental elegance, which
differs from the more mundane impression imparted by Shen’s RITZ
mark.
The CAFC also referred to Shen’s RITZ
mark as being simple block lettering or block lettering centered
in a diamond, as reproduced here:
Regarding the ‘818 opposition, the
CAFC recognized that the marks are identical so they focused on
the relatedness of the goods as follows:
“[T]he test is not that goods and services must be related if used
together, but merely that that finding is part of the underlying
factual inquiry as to whether the goods and services at issue . .
. can be related in the mind of the consuming public as to the
origin of the goods.” Packard Press, 227 F.3d at 1358. Conversely,
goods that are neither used together nor related to one another in
kind may still “be related in the mind of the consuming public as
to the origin of the goods. It is this sense of relatedness that
matters in the likelihood of confusion analysis.” Recot, Inc. v.
Becton, 214 F.3d 1322, 1329 (Fed. Cir. 2000) (comparing FRITO-LAY
for snack foods to FIDO LAY for dog treats). Therefore, although a
student of RHL’s cooking classes would undoubtedly use kitchen
textiles, it does not necessarily follow that the consuming public
would understand those products to have originated from the same
source.
Based on the foregoing rationale, the
CAFC held that the relationship between cooking classes and
kitchen textiles is more akin to the relationship between
restaurant services and beer.
The
CAFC thus dismissed the ‘818 opposition and held that “aside from
the fact that these goods are used together, there is no
indication that the consuming public would perceive them as
originating from the same source.”
Regarding the ‘003 opposition, the CAFC reversed the TTAB’s
sustaining of the opposition on two grounds. First the CAFC found
that the pronunciation of THE RITZ KIDS sounds like “The Rich
Kids,” leaving the impression of wealth, a concept tied strongly
to RHL and not associated in any way with Shen’s RITZ mark.
Second, the CAFC found that glove are not related to
barbeque mitts stating:
The
mere fact that “mitt” is defined as a type of glove has no
relevance to whether a consumer would believe that the two
products emanate from the same source. See Packard Press,
227 F.3d at 1358. First, Shen’s product is not a mitt, it is a
barbeque mitt. It is designed to protect the hand from heat while
cooking. While it covers the hand like a glove, it is better
understood as a tool than as an article of clothing. The
unrelatedness of RHL’s and Shen’s products is highlighted by
comparing a similar set of goods: hard hats used by construction
workers and fedoras. While both are hats that are used to cover
the head, they have different purposes. The first is used for
protection, just as a barbeque mitt is, while the second functions
to keep the head warm in addition to adding an air of style, just
as ready made or tailored gloves do. The mere fact that both
barbeque mitts and gloves are worn on the hands simply does not
support a finding that consumers would associate these
products with a common source.
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