IP in the USA and BEYOND-Summer 2002

Cases of Interest
- Patent Law
- Trademark Law
- Civil Procedure

US Patent and Trademark Office News

Available Intellectual Property Services in the U.S.A.

Cases of Interest:

Patent Law:

Festo Corporation v. Shoketsu Kinzoku Kogyo Dabushiki Co., LTD., et al., 2002 WL 1050479 (U.S. S.Ct.)

The US Supreme Court issued its long awaited ruling in the Festo case on May 30th.

The Court of Appeals for the Federal Circuit ruled that estoppel arises from any amendment that narrows a claim to comply with the Patent Act, not only from amendments made to avoid the prior art, as the District Court had held. The Federal Circuit also held that, when estoppel applies, it bars any claim of equivalence for the element that was amended.

In response to the ruling, US patent attorneys were shocked. The ruling by the Federal Circuit essentially eliminated the doctrine of equivalents for any claim that was amended, regardless of whether an explanation was provided in the prosecution history, that the amendment was not prepared to avoid any prior art.

The US Supreme Court held that prosecution history may apply to any amendment made to satisfy the Patent Act's requirements, not just to amendments made to avoid the prior art, but estoppel need not bar suit against every equivalent to the amended element.

The Supreme Court recognized that a claim may be amended for many reasons other than to avoid the prior art, such as: clarifying an ambiguous term, improve the translation of a foreign word, or rewrite a dependant claim as an independent one.

The decision restated its decision from Warner-Jenkinson, in which it held that if court is unable to determine the purpose underlying a narrowing amendment, the court should presume that the patentee surrendered all subject matter between the broader and the narrower language. In such a case, the doctrine of equivalence would not apply and the patent owner would be limited to the literal infringement of its claims.

Patent practitioners will no doubt continue to explain fully any amendments that are not made for the purpose of avoiding the prior art, so that they do not limit the use of the doctrine of equivalents against would be infringers.

Patent Law-Limitations are not to be Read into the Claims from the Specification

TELEFLEX, INC. v. FICOSA NORTH AMERICA CORP., FICO CABLES, S.A. and FICOSA NORTH AMERICA S.A. DE, 2002 WL 1358720 (Fed. Cir., June 21, 2002)

The CAFC held that limitations from the specification are not to be read into the claims based on prior holdings and the rationale that if claims are limited by the specification, then it will render the purpose of the claims moot. This holding applies to structural claims, but means plus function claims were not addressed.

The court also held that the best mode required in the specification relates to the best mode of practicing the claimed invention and has nothing to do with mass production or with sales to customers having particular requirements. The court stressed that in cases where violations of the best mode were found, there was direct or circumstantial evidence of concealment.

Trademark Law:

Trademarks: When evaluating whether a product mark is famous, it should be evaluated independently of the house mark.

BOSE CORPORATION, v. QSC AUDIO PRODUCTS, INC., 2002 WL 1303290 (Fed. Cir. June 14, 2002)

The CAFC considered whether the use by Bose, of its house mark, "BOSE" together with its product marks, "WAVE" and "ACOUSTIC WAVE", had an effect on the famousness of its product marks. The court treated the issue as a matter of first impression and held that if a product mark is used together with a house mark, the product mark must be evaluated for independent significance. Such an evaluation should include consumer awareness of the product mark, advertising and sales data.

Trademarks: Entrepreneurpr.com Not Confusingly Similar to Entrepreneur

ENTREPRENEUR MEDIA, INC. v. Scott SMITH, 279 F.3d. 1135 (Ct. App. 9th, 2/11/2002)

The Court of Appeals for the 9th Circuit held that "ENTREPRENEUR ILLUSTRATED" used for a yearbook for small businesses was confusingly similar to "ENTREPRENEUR" used for magazine publications, but "ENTREPRENEURPR.COM" is not confusingly similar to "ENTREPRENEUR".

The Court evaluated the conflicting marks based upon the eight factors enumerated in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Circ. 1979), but stressed that when finding confusion between "ENTREPRENEUR ILLUSTRATED" and "ENTREPRENEUR" it was significant that the term "ILLUSTRATED" was "in a much smaller (one-half, perhaps) font size than does 'ENTREPRENEUR'".

"ENTREPRENEURPR.COM", on the other hand, compared the addition of PR to the addition of D.C. to distinguish Washington, D.C. from Washington State. This the court said, "may serve effectively to signal an important distinction from other uses of "entrepreneur."

Cyberlaw-Personal Jurisdiction: No Personal Jurisdiction when Domain Name Registrar registers 4,666 domain names in Ohio

Darrell J. BIRD v. Marshall PARSONS, et al., 289 F.3d 865, (Ct. App. 6th, May 21, 2002)

The Court of Appeals for the 6th Circuit found personal jurisdiction over the registrar, Dotster, lacking in Ohio, even though it had registered 4,666 domain names to Ohio residents. The court stated that "the website...simply enables Dotster to do business with Ohio residents, a fact that does not permit general jurisdiction." The court distinguished the registrants interactions with the registrar on the basis that the "registrants initiate the contact with Dotster." The court did not address fully the question of interactivity as the courts in Zippo and Cybersell have done.

Cyberlaw-Personal Jurisdiction: 4th Circuit Follows the Zippo Model when Determining Whether Personal Jurisdiction Exists over an Out of State Entity Conducting Business on the Internet.

ALS SCAN, INCORPORATED v. DIGITAL SERVICE CONSULTANTS, INCORPORATED et al., 2002 U.S. App. LEXIS 11745, (Ct. App. 4th, June 14, 2002)

In a case of first impression in the 4th Circuit, the Court of Appeals has decided to follow the "Zippo Model" to determine if personal jurisdiction exists over an out of state entity who conducts business in the Circuit on the internet. See Zippo Manufacturing Co. v. Zippo Dot Com, Inc. 952 F.Supp. 1119 (W.D. Pa. 1997).

The Zippo Model states that a State may, consistent with due process, exercise judicial power over a person outside the state, when that person:

Directs electronic activity into the State,
With the manifested intent of engaging in business or other interactions within the State, and
That activity creates, in a person within the State, a potential cause of action cognizable in the State's courts.

"Under this standard, a person who simply places information on the Internet does not subject himself to jurisdiction in each State into which the electronic signal is transmitted and received. Such passive Internet activity does not generally include directing electronic activity into the State with the manifested intent of engaging business or other interactions in the State thus creating in a person within the State a potential cause of action cognizable in courts located in the State."

Based on this holding, the court found that the defendant Digital Service Consulting acted passively because it did not knowingly transmit infringing photographs specifically to Maryland with the intent of engaging in business or other transaction in Maryland. Rather, its role as an ISP was at most passive.

Civil Procedure

Civil Procedure-Service of Process: Service on Foreign Defendant Meets Due Process

RIO PROPERTIES, INC. v. RIO INTERNATIONAL INTERLINK v. Rio International Interlink, 284 F.3d. 1007, (Ct. App. 9th, March 20, 2002)

The California Court of Appeals held that a court directed service of process by email on a foreign defendant satisfied due process under certain circumstances. As a result, Rio International Interlink was held to have been properly served and before the court.

The court limited application of service by email to include the following requirements:

First, the foreign country must not be a member of an international agreement, such a the Hague Convention; and
Second, the service by email must be pursuant to an order obtained from the District Court under Federal Rule 4(f)(3). The method of service must be "reasonably calculated, under all the circumstances, to apprise interested parties of the pendency of the action and afford them an opportunity to present their objections."

The Court recognized the limitations of service by email including:

There is no way to confirm receipt of an email message. [note: this is not entirely accurate if the recipient voluntarily acknowledges receipt by replying to the email message];
There is a limited use of electronic signatures in compliance with Rule 4(a) and Rule 11;
System compatibility problems could lead to controversies about whether an exhibit was ever received; and
Appending exhibits may even be impossible under certain circumstances.

US Patent and Trademark Office News:

Public Hearings on USPTO plans to discontinue availability of paper files

On May 16th, the US Patent and Trademark help public hearings on their proposed plan to eliminate all paper files in the Public Search room. The Public Search room is currently located in Arlington, Crystal City, Virginia. To see the public comments from the patent search community leaders, go to: http://www.uspto.gov/web/offices/com/sol/comments/epubsearch/0516pat.pdf

USPTO considers hiring outside search consultants to provide searching services for International Patent Applications

The U.S. Patent and Trademark Office has launched a study to identify organizations able to process international patent applications. This year, USPTO expects to receive 46,000 requests to search and/or examine international applications. USPTO's patent examiners now do this work, which is in addition to the 350,000 U.S. applications the agency receives each year. With competent private contractors processing international applications, patent examiners could focus on U.S. applications, according to the USPTO, thus enhancing quality and improving productivity. See related article.

Construction of new USPTO Campus, three blocks from the offices of
Pravel I.P. Law, P.C., is proceeding Briskly

The new USPTO campus is scheduled to be completed [ ]. The new facility will be adjacent to the US Federal District Court for the Eastern District of Virginia.

To see photos from the middle of last month, click here.

Available Intellectual Property Services in the U.S.A.:

For a Complete Schedule of Services and Fees for 2002, click here

Caution: The information presented on this website is general in nature and should not be considered as legal advice for any specific issue. You should contact an appropriate intellectual property attorney for your specific concerns.