IP in the USA and Beyond – February 2010

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”) unless indicated otherwise.  Hyperlinks are provided to each case so that you can read the entire case. 

American Inventors Protection Act (“AIPA”) Interpreted to Benefit Inventors

Wyeth et al. v. David J. Kappos et al., 2009-1120 (CAFC, January 7, 2010)

The Court of Appeals for the Federal Circuit (“CAFC”) has interpreted the 1999 American Inventors Protection Act (“AIPA”) to benefit inventors in contrast to the position asserted by the US Patent and Trademark Office (“USPTO”).  Wyeth et al. v. David J. Kappos et al., 2009-1120 (CAFC, January 7, 2010).

In 1999, the American Inventors Protection Act amended 35 U.S.C. § 154(b) to address the problem of reduced patent terms caused by delays be the USPTO.  Prior to the passage of the AIPA, the patent term in the US was 17 years from the date of issue of the patent.  The AIPA provides a patent term of 20 years from the date of filing of the application. 

The AIPA, 35 U.S.C. § 154(b)(1) provides:

(A) Guarantee of prompt Patent and Trademark Office responses.–Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to [meet deadlines specified in clauses (i)-(iv)] . . .

the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.

(B) Guarantee of no more than 3-year application pendency.–Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States . . .

the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.

(C) Guarantee or adjustments for delays due to interferences, secrecy orders, and appeals.–Subject to the limitations under paragraph (2) . . .

the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.

Paragraphs (A) and (B) are at issue.  Paragraph (A) is referred to as the A delay and paragraph (B) is referred to as the (B) delay.  The USPTO interpreted the B delay to start at the time of filing the patent application, not three years later.  The resulting USPTO calculation was the greater or the A delay and the B delay, less delays by the applicant.  The District Court for the District of Columbia found that “The problem with the PTO’s interpretation is that it considers the application delayed under [the B guarantee] during the period before it has been delayed.” Wyeth v. Dudas 580 F. Supp. 2d 138, 141 (D.D.C. 2008) (citing Merck & Co. v Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996)).

The CAFC agreed with the District Court and constructed the statute to require the adding the A delay plus the B delay less delays by the application.  Although this may sometimes result in patent terms that are greater than 17 years, such a patent term is supported in the legislation.  Specifically, the statute provides that the statute “includes a new provision guaranteeing diligent applicants at least a 17-year term…”  H.R. Rep. No. 106-464, at 125 (1994) (emphasis added).  The USPTO’s interpretation effectively creates a 17-year term cap where B delays are greater than A delays.

NOTE:  The USPTO issued a Notice on January 28, 2010 that the software used to calculate patent term adjustment online at www.uspto.gov would be updated by March 2, 2010.  A request for a recalculation of patent term adjustment for any patent that  issued prior to March 2, 2010 should be filed no later than 180 days after the patent issue date.  Clients of this firm are being notified of this procedure and any other reader may request assistance from our office at the contact information below. 

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Federal Circuit Split on distinction between “abandonment” and “dedication to the public” 

Shindler Elevator Corp. et al. v. Otis Elevator Company,  2009-1146 (CAFC, January 15, 2010)

The Court of Appeals for the Federal Circuit (“CAFC”) found the District Court for the Southern District of New York erred in its claim construction of critical claim terms.  As a result, the District Court’s summary judgment of non-infringement by Otis of US Patent 5,689,094 (“the ‘094 patent”) ruling was vacated.   The accused elevator control system was installed at 7 World Trade Center in New York City.

The ‘094 patent includes two independent claims, both of which include the disputed terms at issue:   “information transmitter” and “recognition device”.

In Fig. 2, the recognition devices 5 mounted in access areas 33 and 34. When a passenger 35 is recognized in access area 33, an elevator is dispatched, and a display device 18, which is mounted above the elevator door and/or at an input device 19, tells the passenger which elevator to take. A proposed destination floor is announced acoustically or is displayed visually on display device 18. If the passenger wishes to change his destination floor, he may do so manually at input device 19.

Claim 1 is representative of the asserted claims and includes the disputed claim elements “information transmitter” (and “recognition device”. 

1. An elevator installation having a plurality of elevators comprising:

a recognition device for recognizing elevator calls entered at an entry location by an information transmitter carried by an elevator user, initializing the entry location as a starting floor of a journey;

a control device receiving the recognized elevator call and allocating an elevator to respond to the elevator call, through a predetermined allocating algorithm;

a call acknowledging device comprising one of a display device and an acoustic device to acknowledge recognition of the elevator call and to communicate a proposed destination floor to the elevator user;

the recognition device, mounted in the access area in the vicinity of the elevators and spatially located away from elevator doors, actuating the information transmitter and comprising a unit that independently reads data transmitted from the information transmitter carried by the elevator user and a storage device coupled between the unit and the control device;

the recognition device one of transmitting proposed destination floor data, based upon the data transmitted from the information transmitter, to the control device, and, transmitting elevator user specific data,  based upon individual features of the elevator user stored in the storage device, to the control device.

The District Court’s Claim Construction:

The district court construed “information transmitter” to mean “a device that communicates with a recognition device via electromagnetic waves, after being actuated by that recognition device, without requiring any sort of personal action by the passenger.”  It construed “recognition device” to mean “a device that actuates and reads data transmitted by an information transmitter without requiring any sort of personal action by the passenger.” Id. In the claim construction order, the district court declined to specify the particular kind of “personal action” prohibited under its construction, but stated that it “rules out, not just standing in front of the recognition device, or inputting data into the information transmitter by hand, but any and all types of personal action by the passenger.”

The district court issued its summary judgment ruling on November 17, 2008. Although it had previously said that “any and all types of personal action” were prohibited under its construction, the district court refined its understanding of “personal action” on summary judgment to expressly permit “walking into the monitored area.”

The CAFC Claim Construction and Analysis:

The CAFC majority held that the District Court’s claim construction was too narrow and construed the claims to allow the user to take “personal action” to the extent that he or she brings the “information transmitter” within range of the “recognition device”.

The majority relied upon the claim language, the specification and the file prosecution history to construe the claims.

Claim Language:

The majority found that in claim 1, the term “information transmitter” itself suggests that the transmitter is a thing, separate and apart from an “elevator user”, which transmits information. The claim also provides that “elevator calls [are] entered at an entry location by an information transmitter.” Thus, at least with regard to the transmission of information and the entry of calls, it is the information transmitter—not the elevator user—that performs these tasks.

Carrying a transmitter is thus a type of “personal action” that is expressly required in the claims. The majority held that nowhere does claim 1 limit the act of carrying to any specific manner of carrying.

Claim 7 depends from claim 1 and adds the phrase “wherein the recognition device reads a key having a code.”  Because a user would need to use his hands to bring the transmitter key within range of the recognition device to unlock the door, or to clock in or out of work, these types of personal action are implicitly permitted in claim 7 and, by extension, in claim 1.

Specification:

The phrase “personal action” is used only once in the specification, in the following sentence:

The advantages achieved by the invention reside in the fact that the desired journey destination is communicated automatically to the elevator control by [(1)] the information transmitters carried by the elevator users or by [(2)] the recognition of features of the elevator users without any personal action being required by the passenger.

The majority supports the broad reading of personal action, because a passenger would need to place his hand on the optical recognition device for it to read his fingerprints, this cannot be the “personal action” to which the sentence refers.

Prosecution History:

The majority interpreted the prosecution where it describes the invention as operating “automatically, contactlessly, and independently of the orientation of the information transmitter” as modification actions that take place only after the passenger has brought the transmitter within range of the recognition device—specifically, the actuation of the transmitter, the entry of call commands, and the selection of a destination floor.  The majority therefore concluded that applicants’ statement during the prosecution did not constitute a “clear and unmistakable” disavowal of personal action for the limited purpose of bringing the transmitter within range of the recognition device. Instead, the majority read the prosecution history in this case “as support for the construction already discerned from the claim language and confirmed by the written description.” citing 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1365 (Fed. Cir. 2008).

Dissent:

The dissent agrees that the “without requiring any sort of personal action” construction imposed by the district judge unduly limited the scope of the claims.  Dependent claim 7 contemplates using a key (or a card swipe) to enter the building and at the same time transmitting the user’s elevator data.  In other words, the device would be “hands-free” and “automatic” even though the user has to take elaborate action to bring the device within range.

The specification and prosecution history make no such distinction, and consistently emphasize the hands-free and automatic nature of the device without regard to whether it is in range or not.

The majority disputes the dissent’s position in footnote 2, stating that “The embodiment was not “abandoned,” it simply was never claimed in the application that led to this particular patent.” 2009-1146 at page 11, fn 2.  That begs the question of how does abandoned compare with the well established rule that disclosed, but unclaimed matter is dedicated to the public. Johnson & Johnston Associates, Inc. v. R.E. Service Co., Nos. 99-1076, -1179, -1180, 2002 WL 466547 (Fed. Cir. Mar. 28, 2002) (en banc) (per curiam).   There were no divisional patent applications filed from this application that resulted in the ‘094 patent, so according to Johnson & Johnson, the embodiment was dedicated to the public.  This case leaves open the question:  what is the difference between “abandonment” and “dedication to the public”?

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Trademark Law:

BLACK MAIL refused for Lack of Proof of Bone Fide Intent to Use the Mark

Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 to application Serial No. 77090059 filed on January 24, 2007.

Research in Motion Limited (“RIM”), well known owner of the BLACKBERRY mark, opposed the registration of the mark BLACK MAIL by the NBOR Corporation (“NBOR”).    Research In Motion Limited v. NBOR Corporation, Opposition No. 91179284 to application Serial No. 77090059 filed on January 24, 2007.

Applicant filed the mark BLACK MAIL for: “computer software for facilitating interactive communication, namely, chat, electronic mail, voice, instant messages, text transfer, multi-media transfer, live collaboration, motion pictures, and sound over a global computer information network and other networks”

RIM opposed the registration of BLACK MAIL on two grounds,

1. 1.       likelihood of confusion with its mark BLACKBERRY under 15 USC § 1052(d); and
2. 2.       lack of a bone fide intent to use the mark in commerce.

The Trademark Trial and Appeal Board (“TTAB”) did not reach the issue of likelihood of confusion because it found that NBOR could not establish by a preponderance of the evidence that it had a bone fide intent to use BLACK MAIL in commerce.

The TTAB listed the following as what NBOR did not provide to prove a bone fide intent to use the mark:

•  it has not offered any goods or services for sale under the involved mark;
•  the mark has not been used and no plans have been made as to how the mark may be used; 
•  there is no projected date of first use in commerce;
•  no channels of trade have been formulated or planned for the future;
•  the classes of consumers and geographic areas of sales have not yet been determined;
•  applicant has not undertaken any market studies, surveys, or focus groups; and
•  no documents exist regarding plans for expansion and growth of the product and service lines under the mark.

NBOR had previously filed two trademark applications for the same mark and both applications were abandoned because no Statements of Use were filed.  NBOR’s argued that its previously filed applications and twenty-three letters or emails to its attorney relating to the present and applications a bone fide intent to use the mark.  The TTAB rejected its argument:

Evidence bearing on bona fide intent is “objective” in the sense that it is evidence in the form of real life facts and by the actions of the applicant, not by the applicant’s testimony as to its subjective state of mind. That is, Congress did not intend the issue to be resolved simply by an officer of applicant later testifying, “Yes, indeed, at the time we filed that application, I did truly intend to use the mark at some time in the future.”

J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §19:14 (4th ed. 2009).

This case provides a reminder that a trademark application under Section 1(b) of the Lanham requires objective documentation of a bone fide intent to use the mark no later than the beginning of the opposition period and objective steps should be taken to use the mark at the time the application is filed.

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