IP Update, Volume 6, No. 5, May 2003
May 2003
IN THIS ISSUE
Patents/Claim Construction
To Limit Claim Scope, Prosecution History Must Refer to Specific Claim Language
By Paul Devinsky
The U.S. Court of Appeals for the Federal Circuit, revisiting an issue recently discussed in Rambus v. Infineon, reversed a district court's narrow claim construction noting that an applicant's inaccurate statement about its pending claims does not override the claim language as issued. Storage Technology Corp. v. Cisco Systems, Inc., Case No. 02-1232 (Fed. Cir. May 13, 2002).
The Storage Technology (StorageTek) patent (the `040 patent) relates to the efficient enforcement of network policies in a high-speed packet data network. In the system described in the `040 patent, network policy information that is used frequently by the processor is stored in cache memory for easy and fast accessibility. A processor in a network device implementing the invention examines the header of an arriving packet to determine whether, based on selection criteria, it is related to other packets that have been received.
StorageTek sued Cisco alleging infringement of the `040 patent. During the claim construction phase of the litigation, the district court construed the term "network policy" as used in the claims to mean "a filtering or auditing rule, which determines if and why a PDU (Protocol Data Unit) should be forwarded." The district court also construed the step of "caching policy identification information" to mean "storing information that identifies and is used to retrieve a separately cached instance of network policy." Thus, as construed by the district court, the claims required two caches: one for storing information identifying a policy and a second for storing a copy of the policy itself.
On the basis of that claim construction, Cisco moved for summary judgment of non-infringement. The district court, finding that Cisco has only one cache, found no literal infringement. StorageTek appealed, challenging the district court's construction of the "caching policy identification information" and "protocol data unit (PDU) network policy" claim limitations. The Federal Circuit first noted that the claim at issue was "a method claim with two steps-determining an instance of network policy to be applied to related PDUs based on the contents of one PDU, and caching policy identification information identifying that instance of network policy." In other words, the Court found that the plain language of the claim did not "include any step relating to caching the instance of network policy or any limitation indicating that the instance of the network policy is stored in or retrieved from a cache."
As viewed by the Federal Circuit, the district court erred by considering the phrase "policy caching method," or "policy cache," found in the preamble of the independent claims, to be a claims limitation. However, the Court determined that the written description and claims simply use the terms "policy caching method" and "policy cache" to "refer to the invention as a whole, not to the specific step of storing an instance of network policy or the cache that stores the instance of network policy."
The Federal Circuit also admonished the district court for relying on the written description, prosecution history and a declaration by Cisco's expert witness in limiting the claims to a cache for the instance of network policy. "In so doing, the district court disregarded the well-established rule that while proper claim construction requires an examination of the written description and relevant prosecution history to determine the meaning of claim limitations, additional limitations may not be read into the claims."
Finally, the Court noted that during prosecution "the patent applicants stated that the invention as recited in [the claims], the instance of network policy and the policy identification information are both cached." The Court conceded that "on its face this statement appears to limit claim scope." However, citing to its recent decision in Rambus v. Infineon, the Federal Circuit held that such a statement was not limiting. Rather, the Court found the statement from the prosecution history "erroneously suggests that the independent claims include a cache for the instance of network policy. The applicants' inaccurate statement cannot override the claim language itself, which controls the bounds of the claim."
Patents/Claim Construction
Prosecution History Does Not Preclude Unrecited Steps in Process Claim
By Cameron Weiffenbach
The U.S. Court of Appeals for the Federal Circuit, finding error in the district court's construction of a process claim, vacated a summary judgment decision and remanded the case for further proceedings. Invitrogen Corp. v. BioCrest Manufacturing, L.P., Case No. 02-1207 (Fed. Cir. May 7, 2003). Invitrogen accused the defendant of infringement of U.S. Pat. No. 4,981,797 (the `797 patent) directed to a process for producing transformable E. coli cells of improved competence. The claimed process required performance of three steps in a specific order, including the step of rendering said E. coli cells competent after growing the cells in a medium at temperature in the range of 18 to 32ºC.
During prosecution, the U.S. Patent and Trademark Office (USPTO) examiner stated that the claimed range of 18 to 32ºC was essential to the invention. The applicants then amended the claims to add the language "improved competence" to the preamble and to replace the originally recited open range of "less than 37ºC" with "18 to 32ºC" and argued that the amendment distinguished the claimed invention from prior art showing growth at 37ºC.
The defendant makes and sells competent E. coli cell lines using a process that includes "incubating" the cells at 37ºC and then growing the cells in a fermenter at 26ºC.
The district court construed the claim to require that cell "growth must be performed at a temperature within 18 to 32ºC" and rejected Invitrogen's argument that the open-ended transition term "comprising" in the preamble permitted coverage over a process where an additional step of growing or "incubating" cells at 37ºC before the step of growing cells in the recited range.
The Federal Circuit reversed, finding that the claim did not preclude additional steps, such as the defendant's incubation step, before or after the recited steps. Specifically, the Court found that the transitional term "comprising" opened the claim to additional, unrecited steps and did not preclude growth by incubation at 37ºC in advance of the first step.
Also, the Federal Circuit noted that the district court's claim construction would exclude an embodiment set forth in an example, a construction that is "rarely, if ever correct" and which would require "highly persuasive evidentiary support" not found here.
Finally, the Federal Circuit found that the district court claim construction improperly ignored the "improved competence" language in the preamble: "[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicated use of the preamble to define, in part, the claimed invention." Here the court found that the term "improved competence" should have been construed "to require at least a ten-fold competence increase over the prior art method."
Patents/Claim Construction
U.S. Federal Circuit "Operates" to Cure Narrow Claim Construction
By Paul Devinsky
Reversing a district court summary judgment, the U.S. Court of Appeals for the Federal Circuit has determined that a patent directed to robotic surgical systems that have a telecommunications link to permit a surgeon to operate from a "remote location" includes locations in the operating room. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., Case No. 02-1145 (Fed. Cir. April 11, 2003).
In its claim construction, the district court adopted Intuitive's proposed construction. The court determined that a "remote location" was "a location outside the operating room where the patient undergoing surgery is located" and granted summary judgment in favor of Intuitive. Brookhill appealed, arguing that the plain meaning of the claim term, the patent's written description, the prosecution history and extrinsic evidence all support a broader reading that does not restrict the surgeon to a location outside the operating room. Specifically, Brookhill argued that the ordinary and customary meaning of "remote location" means any location beyond arm's length.
The Federal Circuit first faulted the district court for consulting a number of references dated after the filing date: "They are not contemporaneous with the patent, do not reflect the meanings that would have been attributed to the words in dispute by persons of ordinary skill in the art as of the grant of the [] patent, and for those reasons are not considered in our de novo claim
construction analysis."
While noting the parties' battle of dictionaries offered in support of the competing ordinary and customary meaning of the disputed claim term, the Court noted that "consulting dictionary definitions is simply a first step in the claim construction analysis and is another reason why resort must always be made up to the surrounding text of the claims in question, the other claims, the written description and the prosecution history." The Court instructed that dictionary definitions "must always be compared against the use of the terms in context, and the intrinsic record must always be consulted to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor."
Here, the Court found "no specific parameters as to the distance between the surgeon and patient, but [that the written description] teaches generally that a surgeon using the disclosed assembly may operate without directly touching the patient … regardless of the extent of the physical separation between [them]."
While the Federal Circuit conceded that the patent "contemplates that a principal use of the invention is to allow a surgeon to operate at some distance, possibly across the world, from the operating room in which the patient is located," it found that is only posited as an advantage and does not constitute "a limitation on the scope of the invention." The Court went on to construe the term "remote location" to encompass not just locations that are "far apart" or "distant," but also those locations that are merely "separated by intervals greater than usual; even if inside the operating room."
Patents/Claim Construction and Estoppel
Another District Court Reversed for Limiting Claims by Incorporating Limitations from Specification
By Matthew Weil
The U.S. Court of Appeals for the Federal Circuit has reversed and remanded yet another case for what it considered to be an unduly restrictive claim construction. RF Delaware, Inc. v. Pacific Keystone Technologies, Inc., Case No. 02-1508 (Fed. Cir. April 21, 2003).
In this case, the district court adopted the key elements of its construction from a claim construction ruling on partial summary judgment in a previous litigation in which the plaintiff, RF Delaware (RFD), had asserted the same patents against a different defendant. Pacific Keystone argued that, regardless of the soundness of the district court's claim interpretation analysis, the prior district court's (U.S. District Court for the Eastern District of Virginia) claim construction should be given collateral estoppel effect. Because earlier action ended in an extra-judicial settlement, however, without complete adjudication even as to liability, the Federal Circuit (applying regional law to this purely procedural issue) held that there was no collateral estoppel. Citing the Eleventh Circuit cases, the Court held "[c]ollateral estoppel does not apply in the present case because no judgment, much less final judgment, was ever entered in the Virginia district court case."
Moreover, the Federal Circuit concluded that the district court did not abuse its discretion in declining to hold RFD judicially estopped by its admission in a preliminary injunction proceeding that, in the context of that proceeding, the claim interpretation of the Virginia district court was binding on it. Among other things, the Court observed, RFD did not succeed in urging its position (its motion for a preliminary injunction was denied), and the doctrine of judicial estoppel prevents only those who successfully urge a position from thereafter changing it.
In the present appeal, the Federal Circuit reviewed the claim construction of
the district court de novo and found that it improperly imported limitations from the specification and from narrower or dependent claims into the patents' broad, independent claims. Specifically, the Federal Circuit held that the district court erred in construing the claim terms "filter bed" and "filter media" (as used in the asserted claims of the patents in suit, relating to the use and washing of an upflow filter in combination with upflow and downflow water filtration systems) unduly narrowly in limiting the claim to a system using multiple filter layers.
Trademarks/Registration and Incontestability
Presumptions Arising from Incontestability Extend to Most Salient Part of Composite Mark
By Matthew Weil
The U.S. Circuit Court of Appeals for the Ninth Circuit has held that when the holder of an incontestable composite mark complains that the most salient feature of its mark is being imitated and a likelihood of confusion may result, the mark holder does not have to show that the salient feature, apart from the mark as a whole, has acquired secondary meaning. The conclusive presumption that the mark has acquired secondary meaning extends to the most salient feature of the mark. KP Permanent Make-Up Inc. v. Lasting Impression I Inc., Case No. 01-56055 (9th Cir. April 30, 2003).
In this declaratory judgment action, the defendant, Lasting Impression (Lasting), is the owner of a federal registration on a design and word mark consisting of a solid black rectangle, with the words "micro" and "colors" in reverse white lettering to identify its permanent cosmetic tattoo pigments. The word "micro" appears directly over the word "colors" and a green horizontal bar separates the two. Lasting claimed a date of first use in 1992. Lasting's mark, as registered, became incontestable in 1999.
The declaratory judgment plaintiff, KP, the accused infringer, used the term "micro color" on its flyers beginning in 1990 and has continued to use the term on its pigment bottles since 1991.
In reversing the district court's grant of summary judgment of non-infringement, the Ninth Circuit said it was following the Supreme Court's decision in Park 'N Fly v. Dollar Park & Fly, which "implicitly acknowledged" that the words "Park 'N Fly," as the most salient feature of the logo trademark at issue in that case, was protected by the uncontestable registration. "Federal registration of a trademark endows it with a strong presumption of validity." In the Ninth Circuit, that presumption-including the specific presumption that the trademark is not generic-now extends to the most salient feature of composite marks, at least those that have become incontestable. Having broadened the scope of the trademark beyond that recognized by the district court, the Ninth Circuit reversed and remanded for a trial on the numerous genuine issues of material fact surrounding the determination of likelihood of confusion.
Practice Note: Accepted wisdom to date had been that composite marks offered trademark protection only against uses giving a rise to risk of confusion with the composite mark as a whole. Given the KP Permanent Make-Up holding, however, it would behoove registrants of composite marks, especially those that have become incontestable, to consider whether they have a broader scope of protection in the Ninth Circuit than they might have realized.
Trademarks/E-Commerce
Use of Mark in Post-Domain Name of a URL Does Not Constitute Trademark Infringement
By John Dabney & Linda Stein
The U.S. Court of Appeals for the Sixth Circuit has held that use of another's trademark in the post-domain path of a URL does not violate the Lanham Act. Interactive Prods. Corp. v. A2Z Mobile Office Solutions, 326 F.3d 687 (6th Cir. 2003).
The plaintiff, IPC, owns the mark LAP TRAVELER for computer hardware. The defendant, A2Z, a competitor of IPC, used the term LAP TRAVELER in the post-domain path, i.e., /desks/floor/laptraveler/dkfl-lt.htm of the defendant's website located at a2zsolutions.com. The plaintiff sued for trademark infringement and the district court granted summary judgment in favor of A2Z.
The Sixth Circuit affirmed and noted that there is no trademark violation if the defendant does not use the challenged mark to identify the source of the products. Thus, the Sixth Circuit reasoned, there was no violation because the use of another's trademark in a post-domain path does not serve to identify the source of the products advertised. The court noted that "[t]he post-domain path of a URL does not typically signify the source. The post-domain path merely shows how the website's data is organized within the host computer's files."
Ask Rosa Parks-Song Title Using Her Name May Mislead Public
By John Dabney
The U.S. Court of Appeals for the Sixth Circuit has held that a use of another's name in a song title may violate the Lanham Act. Parks v. Laface Records, 2003 U.S. App. LEXIS 8835 (6th Cir. May 14, 2003). The plaintiff, Rosa Parks, is a civil rights icon. The plaintiff sued the defendant, a rapper, for using her name as the title of a song. The message of the song is that other rappers are of a lesser quality and, therefore, "must move to the back of the bus." The district court awarded summary judgment in favor of the defendant on the ground that the challenged use was protected by the First Amendment's guarantee of free speech. Ms. Parks appealed.
The Sixth Circuit reversed. The court noted that a title to a work is not absolutely immune from the provisions of the Lanham Act. "The First Amendment cannot permit anyone who cries 'artist' to have carte blanche when it comes to naming and advertising his or her works, art though it may be... . The purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source or endorsement of the product." The court explained that the title to a work is not protected by the First Amendment if the title has no artistic relevance to the underlying work whatsoever, or the title explicitly misleads as to the source or the content of the work. Here, the defendant had admitted that he used the name ROSA PARKS as the title of the song to show that "we comin' back out so all you other MCs move to the back of the bus" and not to convey a message about Rosa Parks or the civil rights movement. Accordingly, a reasonable finder of fact could conclude that the title had no artistic relevance to the song, and, thus, was not protected by the First Amendment.
Patents/Inequitable Conduct
Cancer Drug Patent Found Unenforceable for Failure to Disclose Non-Prior Art Article Material to Enablement
By Paul Devinsky
Reinvigorating the inequitable conduct defense, the U.S. Court of Appeals for
the Federal Circuit affirmed a district court holding that a patent to a method of synthesizing taxol, a cancer drug, was unenforceable as having been obtained by inequitable conduct. Bristol-Myers Squibb Company v. Rhone-Poulenc Rorer, Inc., Case Nos. 02-1280, -1281 (Fed. Cir. April 25, 2003).
The patents in question were based on a scientific article by the named inventors published in the Journal of the American Chemical Society (JACS). The draft article was submitted to a French patent agent in the employ of Rhone-Poulenc Rorer (RPR). The draft article explained the method the inventors devised of using "protecting groups" to prevent particular hydroxyl groups from interfering with the formation of taxol. Both the draft article and the inventor's invention disclosure explained certain limitations the inventors were aware of with regard to the protecting groups. However, in the draft application, prepared for filing in France by RPR's agent, no limitation as to the hydroxy-protecting groups that could be used in the process was specified. To the contrary, the French application stated that the very groups that the inventors explained should be omitted as protecting groups (TMS and MOM) were permissible hydroxy-protecting groups. The French application was later forwarded to a U.S. patent lawyer who had it translated and filed as a U.S. application.
The JACS article was never disclosed to the U.S. Patent and Trademark Office (USPTO). It was, however, uncovered as the result of a computer search performed by the USPTO scientific library at the examiner's request. However, because of its non-prior art publication date, it was apparently not considered by the examiner.
The district court found by clear and convincing evidence that the inventors failed to provide material information by not providing the JACS article to the USPTO, and the examiner did not review the JACS article before issuing the patent. RPR appealed.
In a fact-specific analysis, Judge Prost wrote an opinion affirming the district court. Judge Prost noted that the patents "specifically recommend" using the very groups that the JACS article report resulted in an unstable esterification process and that one of the groups could not be removed after esterification. The Court agreed with the district court finding that "a reasonable patent examiner reviewing the subject patent application would have expected the use of TMS and MOM groups to yield more than trace amounts of taxol, but that a review of the JACS article would have raised doubts that the use of TMS and MOM would produce taxol in more than trace amounts." Thus, Judge Prost found the JACS article to be material, notwithstanding that the district court denied Bristol-Myers' summary judgment motion for lack of enablement: "…[T]he district court's holding on inequitable conduct is not contradictory to its holding on enablement. The issue of whether a reference would be considered important by a reasonable examiner in determining whether a patent application is allowable, including whether the invention is enabled, is a separate issue from whether the invention is actually enabled."
The Court also affirmed the district court on the issue of intent: "In a case such as this, where [the RPR agent] was intimately familiar with the article because the inventors with whom he worked wrote it, he approved the article for publication, and the article was in his possession while he was drafting the French patent application, the determination that [the RPR agent] knew of the significance of the JACS article in combination with the finding that [the RPR agent] knew of the duty to disclose is sufficient to establish intent."
Practice Note: The decision, issued on the heels of
Hoffman-La-Roche v. Promega case (
IP Update, Vol. 6, No. 4, April 2003) and
LNP Engineering Plastics v. Miller Waste Mills (
IP Update, Vol. 5, No. 1, January 2002) may invigorate the use of inequitable conduct as a defense,
But c.f., SEL v. Samsung decision (
IP Update,
Vol. 5, No. 1, April 2000).
Patents/Litigation/Jurisdiction
Letters to the Plaintiff from Outside Forum Suffices for Personal Jurisdiction
By David Stein
In a case involving a complaint for declaratory judgment, the U.S. Court of Appeals for the Federal Circuit reversed the district court's dismissal for lack of personal jurisdiction. Silent Drive Inc. v. Strong Industries, Inc., Case No. 02-1329 (Fed. Cir. April 16, 2003).
The parties are competitors in the manufacture of trailing axles. Strong, a Texas company, had obtained an injunction in an earlier state court case in Texas for misappropriation of trade secrets. Silent Drive, an Iowa company, was not involved in that earlier Texas case. It was, however, involved in the joint development of the product involved in that case. Strong also obtained a patent that it claimed was infringed by the product that Silent Drive jointly developed with the party to the earlier Texas state court case.
Strong wrote letters to Silent Drive in Iowa and to its customers outside of Iowa, notifying them about and enclosing copies of the state court injunction and the patent. Strong also issued a press release, which was received by a potential customer of Silent Drive in Iowa, describing the injunction and the patent. In the press release, Strong indicated it would not be possible for anyone to make a certain kind of axle without infringing its patent.
Based on these letters, Silent Drive filed a declaratory judgment action in a federal court in Iowa seeking, among other things, a declaration that the Texas state court injunction could not be enforced against Silent Drive, a declaration of patent invalidity and non-infringement of the Strong patent and a finding of tortious interference with contractual relationships. The district court dismissed the action for lack of personal jurisdiction despite finding that the letters sent by Strong were purposefully directed at the forum state and arose out of a patent count. Silent Drive appealed.
The Federal Circuit, applying the law of the regional circuit to the personal jurisdiction issue, reversed the district court. Although the court agreed that the letters sent by Strong, by themselves, did not confer personal jurisdiction over Strong on the patent count, and that there was no federal subject matter jurisdiction over the tortious interference count (so it did not reach the question of personal jurisdiction on that court), the Court held that Silent Drive properly asserted both subject matter and personal jurisdiction over the claim regarding the Texas state court injunction. The Federal Circuit reasoned that the issue of whether the Texas injunction could be enforced against Silent Drive requires a federal due process analysis. As part of that analysis, the Court noted that the letters sent by Strong constituted an attempt to enforce the injunction against Silent Drive in Iowa, which subjected Strong to personal jurisdiction in Iowa. Thus, the Court concluded that the exercise of supplemental jurisdiction over the other two counts was proper and reversed the dismissal of the complaint.
Patents/Inter Partes Reexamination
USPTO Proposes Rules to Implement the 2002 Inter Partes Reexamination Amendments to the Patent Statute
By Kenneth Cage
In Pub. L. 107-273, enacted on November 2, 2002, the inter partes reexamination statutes were amended to provide greater appeal rights to the third-party requester. (See, McDermott, Will & Emery's IP Review, Spring 2003, pages 2-3 or visit www.mwe.com/info/news/ipreview-spring03.htm.) These proposed amendments provide the inter partes reexamination requester the right to appeal a final decision by the Board of Patent Appeals (BPAI) to the U.S. Court of Appeals for the Federal Circuit and the right to participate in the patent owner's appeal of a final decision to Federal Circuit. The amendments also allow the patent owner the right to be a party in an appeal to the Federal Circuit taken by the third-party requester.
In implementing the right of the requester to appeal to the Federal Circuit, the proposed rules, 68 Fed. Reg. 22343-22353 (April 28, 2003) provide that "the patent owner or third party requester … who is a party to an appeal" to the BPAI and who is dissatisfied with the decision of the BPAI may appeal to the Federal Circuit and be a party to any appeal taken from the decision of the BPAI. Proposed Rule 1.983. Any appeal to the Federal Circuit is subject to the provisions proposed of Rule 1.979, which relate to the requirements that the right for a rehearing be exhausted and that the appeal is timely. Proposed Rule 1.983 (d)(e) also provides that either the patent owner or third-party requester may "cross appeal" from a decision of the BPAI where the opposing party has already taken an appeal. The proposed rule makes it clear that the provisions for appeals and cross appeals to the Federal Circuit apply only to reexaminations commenced after November 2, 2002.
Because of the statutory provision that estoppes a requester from later challenging the patent in a civil action, any ground that was raised or could have been raised in the inter partes reexamination, proposed Rule 1.959 provides a requester a one-month grace period to supply any missing fees or identify the missing claims. A similar grace period is also provided to the patent owner.
Any written comments on the proposed rules must be submitted by June 27, 2003.
