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We present several recent cases of interest for your review,
and include a summary of notable points from each case. The cases were
decided at the Court of Appeals for the Federal Circuit ("CAFC"). Hyperlinks are
provided to each case so that you can read the entire case.
Trademark Law:
Likelihood
of Confusion (In re Chatam International Incorporated)
Patent Law:
Statutory Bar
under 35 USC § 102(b) (In
Re Wilhelm Elsner)
Disclosure
Dedication Rule (The Toro Company V. White Consolidated
Industries, Inc.and
WCI Outdoor Products, Inc.)
Lost
Profits from unpatented product used by patented device
(Juicy Whip, Inc. V. Orange Bang, Inc., Unique Beverage
Dispensers, Inc., David Fox, And Bruce Burwick)
Invocation
of 35 USC § 112 ¶ 6
(Lighting World, Inc. v. Birchwood Lighting, Inc.)
In
re Chatam International Incorporated,
03-1504 (CAFC, August 3, 2004)
Likelihood
of Confusion:
The CAFC
affirmed the Trademark Trial and Appeal Board ruling that
there was a likelihood of confusion between JOSE GASPAR GOLD
for tequila with GASPAR’S ALE for ale or beer.
The
TTAB compared the commercial impression of the marks and held that
JOSE reinforced the impression that GASPAR is an
individual’s name and therefore, does not alter the commercial
impression of the mark. The TTAB went on to hold that GOLD
denotes a premium quality, a descriptive term “offering little to
alter the commercial impression of the mark.” The final term in the
comparison was ALE and the TTAB found it to be generic with
nominal commercial significance.
The
TTAB concluded that the terms ALE, JOSE and GOLD
did not create a significant difference between the marks.
Viewed in their entirety with non-dominant features discounted,
the TTAB held that the marks become nearly identical.
The
CAFC held that the TTAB correctly perceived that GASPAR and GASPAR’S
convey a similar appearance, sound, connotation and commercial
impression.
The
CAFC also found that there was substantial evidence to support a
finding of a close relationship between tequila and beer or ale.
CAFC
stated that the Board’s methodology did not violate the
anti-dissection rule because they compared each mark in their
entireties and gave each individual term in the respective marks more
or less weight depending upon its effect on the overall commercial
impression.
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In
Re Wilhelm Elsner, 03-1569 (CAFC, August 16, 2004)
Statutory
Bar under 35 USC § 102(b):
The CAFC
agreed with the Board of Patent Appeals and Interferences (“the
Board”) that the publication of Plant Breeder’s Rights
applications coupled with foreign sales of the plants may constitute a
§102(b) bar to patentability. The
case was remanded to the TTAB to determine the extent to which the
foreign sales were known to the public, and to address the degree to
which availability of the plants through foreign sales enabled the
preparation of the claimed plants.
Although
foreign sales of an invention in combination with a publication will
not usually constitute a bar because such a result would circumvent
the established rules that neither non-enabling publications nor
foreign sales can bar one’s right to a patent.
The
CAFC said that what sets this case apart is that it deals with plant
patents, which may be granted to “[w]hoever invents or discovers and
asexually reproduces any distinct and new variety of plant . . . .”
35 U.S.C. § 161 (2000). The
grant accompanying a plant patent includes “the right to exclude
others from asexually reproducing the plant, and from using, offering
for sale, or selling the plant so reproduced, or any of its parts . .
. .”
The
CAFC also held that only when possession derived in this manner
enables a person of skill in the art to practice asexual reproduction
of the plant in a manner consistent with the statute can a
non-enabling publication and foreign sale act as a § 102(b) bar.
When a
publication identifies the plant that is invented or discovered and a
foreign sale occurs that puts one of ordinary skill in the art in
possession of the plant itself, which, based on the level of ordinary
skill in the art, permits asexual reproduction without undue
experimentation, that combination of facts and events so directly
conveys the essential knowledge of the invention that the sale
combines with the publication to erect a statutory bar.
The CAFC
concluded that the foreign sale must not be an obscure, solitary
occurrence that would go unnoticed by those skilled in the art.
Its availability must have been known in the art, just as a
printed publication must be publicly available.
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The
Toro Company V. White Consolidated Industries, Inc. and WCI Outdoor
Products, Inc.,
03-1424 (CAFC, September 13, 2004)
Disclosure
Dedication Rule:
This case
involved the alleged infringement by White of US
Patent 4,694,528 (“the ‘528 patent”), owned by Toro. Claim
16, the only independent claim of the ’528 patent at issue, recited
with the disputed terms underlined:
A
convertible vacuum-blower comprising:
[1]
a housing having an air inlet and an air outlet;
[2]
a motor supported in said housing;
[3]
an impeller having a plurality of impeller blades supported for rotary
motion in said housing, in fluid communication with said air inlet and
said air outlet, and rotatably driven by said motor;
[4]
a removable air inlet cover for covering said air inlet, said air
inlet cover having apertures for passage of air through the cover;
[5]
attachment means for removably securing said air inlet cover to said
housing; and
[6]
said cover including means for increasing the pressure
developed by said vacuum-blower during operation as a blower when air
is being supplied to said impeller through said apertured cover.
White’s
accused vacuum-blower has a restriction ring that is separate from,
and replaceable within, the cover.
The
CAFC noted that neither Johnson & Johnston nor any of its
other disclosure-dedication rule cases have explicitly articulated a
standard for reviewing the application of the disclosure-dedication
rule.
The
disclosure-dedication rule limits application of the doctrine of
equivalents, much in the same way as prosecution history estoppel.
Under both doctrines, resort to the doctrine of equivalents is
precluded based on actions of the patentee during prosecution evincing
a surrender or dedication of subject matter.
The CAFC concluded that both the dedication-disclosure rule and
prosecution history estoppel should be analyzed under the same
standard of review.
In
Johnson & Johnston, the CAFC held that
when
a patent drafter discloses but declines to claim subject matter . . .
this action dedicates that unclaimed subject matter to the public.
Application of the doctrine of equivalents to recapture subject
matter deliberately left unclaimed would “conflict with the primacy
of the claims in defining the scope of the patentee’s exclusive
right.”
285 F.3d
at 1054 (quoting Sage Prods. Inc. v. Devon Indus., Inc., 126
F.3d 1420, 1424 (Fed. Cir. 1997)).
The CAFC
held that intent is not part of the Johnson & Johnston
disclosure-dedication analysis. The
CAFC stated the language of Johnson & Johnston is clear:
“The patentee’s subjective intent is irrelevant to
determining whether unclaimed subject matter has been disclosed and
therefore dedicated to the public.”
285 F.3d at 1053 n.1.
Because intent is not a factor
in applying the disclosure-dedication rule, the CAFC found that Toro
cannot prevail as a matter of law based on its argument that it did
not decline to claim or deliberately leave unclaimed the structure of
White’s device.
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Juicy
Whip, Inc. V. Orange Bang, Inc., Unique Beverage Dispensers, Inc.,
David Fox, And Bruce Burwick,
03-1609 (CAFC, September 3, 2004)
Lost
Profits from unpatented product used by patented device:
A jury
awarded Juicy Whip compensatory damages totaling $643,379.75 at the
trial court. Juicy Whip
appealed from the district court’s decision denying its claim for
lost profits.
Juicy
Whip’s invention (US
Patent 5,575,405) is a “post-mix” dispenser, one that stores
the syrup concentrate and water separately and mixes them together
just before being dispensed, typically after a consumer places an
order. Juicy Whip’s
dispenser features a transparent bowl that creates the visual
impression that the bowl is the primary source of the dispensed
beverage, which induces sales of the beverage.
That attribute of Juicy Whip’s invention also provides more
capacity than pre-mix dispensers and affords resistance to bacterial
growth
On
remand, the district court denied Juicy Whip’s motion to introduce
testimony on its lost profits on syrup sales.
The court rejected Juicy Whip’s argument that it would have
sold more syrup “but for” Orange Bang’s infringement.
It concluded that Juicy Whip failed to establish that the syrup
and the patented dispenser constituted a single functional unit, and
the court thus refused to consider whether some of Orange Bang’s
syrup sales were attributable to its sales of the infringing
dispenser. Lost
Profits Order, slip op. at 6-8.
Juicy
Whip argued that there exists a functional relationship between the
patented dispenser and the unpatented syrup, a link adequate to
justify recovery of lost profits.
The CAFC
agreed with Juicy Whip that the district court abused its discretion
by disallowing Juicy Whip’s presentation of factual support for the
theory of lost profits. The
CAFC sent the case back to the district court based on the conclusion
that the court was clearly erroneous in determining that there was no
functional relationship between Juicy Whip’s dispenser and the
syrup.
In
Rite-Hite, the CAFC explained that the entire market value rule
was a principle of patent damages that defined a patentee’s ability
to recover lost profits on unpatented components typically sold with a
patented item. Although the rule traditionally had been applied to permit
recovery when both the patented and unpatented items were part of the
same machine, the CAFC recognized that “the rule has been extended
to allow inclusion of physically separate unpatented components
normally sold with the patented components” with the caveat that
both were “considered to be components of a single assembly or parts
of a complete machine, or they together constituted a functional
unit.” Rite-Hite,
56 F.3d at 1550.
In the
present case, the district court held that Juicy Whip’s patented
dispenser and the syrup did not share a functional relationship
because the dispenser had been sold separately from the syrup on
occasion and because other syrups could be used in Juicy Whip’s
dispenser. Furthermore,
the court stated that the two items were sold together “only as a
matter of convenience or business advantage.”
The CAFC
found that the dispenser and the syrup are in fact analogous to parts
of a single assembly or a complete machine, as the syrup functions
together with the dispenser to produce the visual appearance that is
central to Juicy Whip’s ’405 patent.
Despite some limited interchangeability—other syrups may be
used in Juicy Whip’s dispenser and, likewise, other dispensers could
use Juicy Whip’s syrups—the two items do “function together to
achieve one result,” Rite Hite, 56 F.3d at 1551.
The dispenser needs syrup and the syrup is mixed in a
dispenser. Such is indeed
a functional relationship, and a functional relationship between a
patented device and an unpatented material used with it is not
precluded by the fact that the device can be used with other materials
or that the unpatented material can be used with other devices.
The CAFC
therefore concluded that the district court erred as a matter of law
by denying Juicy Whip the opportunity to present to the jury evidence
for its theory of lost profits on lost syrup sales.
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Lighting
World, Inc. v. Birchwood Lighting, Inc., 03-1534 (CAFC,
September 3, 2004)
Invocation
of 35 USC § 112 ¶ 6:
Lighting
World owns U.S.
Patent No. 5,448,460 (“the ’460 patent”) and U.S.
Patent No. 5,221,139 (“the ’139 patent”), both of which are
directed to commercial lighting fixtures.
The patents were asserted against Birchwood Lighting
(“Birchwood”).
The
disputed terms included: “a connector assembly for connecting each
pair of adjacent support members, said connector assembly being
pivotally connected to said pair of adjacent support members.”
The
district court concluded that the “connector assembly” limitation
“discloses the function to be performed, rather than the structure
that accomplishes it.”
At the
close of Lighting World’s case-in-chief, the court granted
Birchwood’s motion for judgment as a matter of law (“JMOL”) on
the ground that Lighting World had not put forth evidence that a
person of ordinary skill in the art would regard the Birchwood device
as equivalent to the inventions claimed in either of the two patents.
The CAFC
sustained the district court’s entry of JMOL of no infringement of
either patent under the doctrine of equivalents because Lighting World
failed to present evidence regarding the perspective of one of skill
in the art, and there was no suggestion that its failure was the
result of any error in the court’s claim construction.
However,
the CAFC found that the district court committed errors of claim
construction as to both patents and that it therefore erred in
granting summary disposition on both of Lighting World’s claims of
literal infringement.
The CAFC
has held that “[a] claim limitation that actually uses the word
‘means’ invokes a rebuttable presumption that § 112 ¶ 6
applies. By contrast, a
claim term that does not use ‘means’ will trigger the rebuttable
presumption that § 112 ¶ 6 does not apply.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1369 (Fed. Cir. 2002).
The
presumption that a limitation lacking the term “means” is not
subject to section 112 ¶ 6 can be overcome if it is demonstrated that
“the claim term fails to ‘recite sufficiently definite
structure’ or else recites ‘function without reciting sufficient
structure for performing that function.’”
CCS Fitness, 288 F.3d at 1369 (quoting Watts v. XL
Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).
The
presumption flowing from the absence of the term “means” is a
strong one that is not readily overcome.
See, e.g., Al-Site Corp. v. VSI Int’l, Inc.,
174 F.3d 1308, 1318-19 (Fed. Cir. 1999); Personalized Media
Communications, 161 F.3d at 703-05.
Because
the “connector assembly” limitation does not contain the term
“means,” the CAFC began with the presumption that section 112
¶ 6 does not apply to that limitation. The
district court held that Birchwood successfully rebutted that
presumption, but the CAFC disagreed.
In
an effort to rebut the presumption that section 112 ¶ 6
does not apply, Birchwood introduced the declaration of Dr. Andrew
Wortman. Dr. Wortman declared that the term “connector”
encompasses “at least a single infinity of possible devices” and
that the term “would not provide [him] or others of ordinary skill
in the lighting fixture art with sufficient structural information to
put [him] on notice as to what device or component would read on the
claim element.” Dr.
Wortman’s declaration, however, did not address the central issue in
determining whether section 112 ¶ 6 applies.
Implicit in Dr. Wortman’s statement was the premise that in
order to be regarded as structural for purposes of section 112 ¶ 6, a
claim limitation must identify a specific structure and not use a
generic term that includes a wide variety of structures.
The district court adopted that view explicitly when it held
that the claim language “connector assembly being pivotally
connected to said pair of adjacent support members” was not
structural because “it would cover every conceivable structure that
could connect two elements and pivot.”
The
CAFC considered that approach to be unduly restrictive. In considering whether a claim term recites sufficient
structure to avoid application of section 112 ¶ 6, it is
not required for the claim term to denote a specific structure.
Instead, it is sufficient if the claim term is used in common
parlance or by persons of skill in the pertinent art to designate
structure, even if the term covers a broad class of structures and
even if the term identifies the structures by their function.
See Greenberg v. Ethicon Endo-Surgery, Inc., 91
F.3d 1580, 1583 (Fed. Cir. 1996); see also Apex, 325
F.3d at 1372; CCS Fitness, 288 F.3d at 1369; Watts, 232
F.3d at 880; Personalized Media Communications, 161 F.3d at
704.
Other
recent CAFC cases have also dealt with the question of whether
particular broad claim language should be considered functional for
purposes of section 112 ¶ 6 even though it is not in the traditional
“means for” format. In
those cases, based on the same analysis, the CAFC rejected arguments
that broad terms such as “digital detector” (Personalized Media
Communications), “eyeglass hanger member” (Al-Site Corp.),
“reciprocating member” (CCS Fitness), and “sealingly
connected” joints (Watts) trigger section 112 ¶ 6.
What
is important is whether the term is one that is understood to describe
structure, as opposed to a term that is simply a nonce word or a
verbal construct that is not recognized as the name of structure and
is simply a substitute for the term “means for.”
The court in Personalized Media Communications drew the
pertinent distinction in holding that the term “detector,”
although broad, is still structural for purposes of section 112 ¶ 6
because it “is not a generic structural term such as ‘means,’
‘element,’ or ‘device’; nor is it a coined term lacking a
clear meaning such as ‘widget’ or ‘ram-a-fram.’”
161 F.3d at 704.
Dictionary
definitions in this case disclosed that the term “connector” has a
reasonably well-understood meaning as a name for structure, even
though the structure is defined in terms of the function it performs.
“Connector” is defined by Webster’s Third New
International Dictionary 481 (1993), as “something that
connects.” “Connect”
is defined as “to join, fasten, or link together usu. by means of
something intervening.” Id.
at 480; see also Random House Dictionary of the English
Language 311 (1966) (“connector” defined as “one who or that
which connects; . . . any of various devices for connecting one object
to another.”) Thus, in
the context of claim 1, the term “connector assembly” means a unit
that joins, fastens, or links each pair of adjacent support members.
The fact that more than one structure may be described by that
term, or even that the term may encompass a multitude of structures,
does not make the term “connector assembly” any less a name for
structure.
In
addition to the fact that the word “connector” has a generally
understood meaning as demonstrated by the dictionary definitions of
the terms, the CAFC found that the parties had used that term to
denote structure. The
written description of the ’460 patent, for example, used the term
“connector assembly” as the name for structure.
While
the terms “connector” and “connector assembly” are certainly
broad, and may in the end include any structure that performs the role
of connecting, the same could be said of numerous other terms, such as
“clamp,” or “clip,” or even “support member,” another term
that is used in the ’460 patent.
Those terms are routinely treated as structural by patent
practitioners and courts, and we conclude that there is no reason to
treat the term “connector assembly” any differently for purposes
of section 112 ¶ 6. The
consequence of defining the term “connector assembly” free of the
constraints of section 112 ¶ 6 may be to render the claim more
vulnerable to attack for invalidity, but that is a risk that a claim
drafter assumes by choosing broad structural terms rather than
choosing to claim in means-plus-function format under section 112 ¶
6.
The
CAFC identified only one published opinion since Greenberg in
which the presumption that a limitation lacking the word “means”
is not in means-plus-function form. That case is Mas-Hamilton Group
v. LaGard, Inc., 156 F.3d 1206 (Fed. Cir. 1998).
In that case, the CAFC held that the terms “lever moving
element” and “movable link member” recited in a patent to a high
security combination lock were in means-plus-function form.
Id. at 1213-15. In
addressing “lever moving element,” the court stated, “While true
that ‘[m]any devices take their names from the functions they
perform,’ the ‘substantially non-resilient lever moving element’
of claim 3 is not one of them.”
Id. at 1213 (quoting Greenberg, 91 F.3d at 1583). The only term in “lever moving element” that could denote
structure is “element.” Although
the term “element” may be recognized as structural in some fields
of art, the Mas-Hamilton court noted that the patentee had not
directed the court “to any evidence demonstrating that the district
court erred in determining that the term ‘lever moving element’
lacks a reasonably well understood meaning” in the relevant art.
Id. at 1214.
The court
in Mas-Hamilton also upheld the district court’s ruling that
there was no evidence that the term “movable link member” had a
well-understood meaning in the art.
Accordingly, the court held that the limitation reciting a
“movable link member for holding the lever out of engagement with
the cam surface before entry of a combination and for releasing the
lever after entry of the combination” was in means-plus-function
format.
The
CAFC concluded that because the intrinsic record and dictionaries
reflect that the terms “connector” and “connector assembly”
are used as the names for structure, the “connector assembly”
limitation in claim 1 of the ’460 patent is not in
means-plus-function form. Accordingly,
the CAFC vacated the district court’s ruling that Birchwood’s
product does not literally infringe the ’460 patent, and remanded
the literal infringement issue to the district court for
reconsideration in view of the revised claim construction.
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