IP in the USA and Beyond – January 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”).  Hyperlinks are provided to each case so that you can read the entire case. 

Means Plus Function Claims Still Limited to Structure Described in Specification:
RESTAURANT TECHNOLOGIES, INC. v. JERSEY SHORE CHICKEN and KLEE’S BAR & GRILL, 2009-1176, (CAFC January 6, 2010)

The Court of Appeals for the Federal Circuit (“CAFC”) this week in RESTAURANT TECHNOLOGIES, INC. v. JERSEY SHORE CHICKEN and KLEE’S BAR & GRILL, have essentially held that means plus function claims cover the structure as disclosed in the specification.

The case involved an invention that relates to the supply and disposal of cooking oil for use with restaurant fryers. Restaurant Technologies, Inc. (“RTI”) owns the patent in suit, US Patent 5,249,511 (“the ’511 patent”), that is directed to a system for the distribution, filtering, removal, and disposal of cooking oil. The system enhances safety to workers and efficiency to deep frying operations.

The primary disputed claim term involved a squeezable trigger valve, which RTI argued would be equivalent to a lever, button, or some other structure, including either the pump or the dipstick with a triggering button of the accused product. The CAFC disagreed, “although the dipstick assembly, in conjunction with the pump, may perform the identical function as the squeezable trigger valve, the differences between the dipstick assembly plus a pump on the one hand, and a squeezable trigger valve with a nozzle, on the other, are not insubstantial. For example, the dipstick assembly and pump are activated with a push button on the dipstick assembly that energizes the pump; fluid pressure in the line then overcomes a spring-loaded check valve to pour into the fryer. The accused system thus uses a pump and fluid pressure to overcome a check valve, whereas the patent claims a valve that is squeezed. Thus, no reasonable fact finder could have found that the dipstick assembly, alone or in conjunction with the pump, meets the limitations of claim 1, paragraph (d)(iii).”

Additional claim terms were in dispute but all were construed according to the specific structure and then evaluated for equivalence based on the insubstantial difference test. Having found insubstantial differences between the claimed elements in the ’511 patent and the accused device, the District Court Judgment of Non-infringement was affirmed and we are again reminded that means plus function format claims are still limiting claims.

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Trademark Law:

A Picture on a Website is Not Necessarily Required for a Trademark Specimen:

In Re Michael Sones, 2009-1140, (CAFC December 23, 2009)

The Court of Appeals for the Federal Circuit (“CAFC”) has held in In Re Michael Sones that a photograph is not necessarily required in a specimen to support a Statement of Use. In the Sones case, the trademark applicant applied to register the mark “ONE NATION UNDER GOD” for use on Charity Bracelets (Serial No. 78/717,427). The application was filed under Section 1(b) of the Lanham Act on the basis of a bone fide intent to use the mark in commerce. The mark was allowed after being published for opposition for the required 30 day opposition period.

The applicant filed a Statement of Use together with a “specimen” showing the mark as used in commerce. The specimen consisted of a web page that included the mark and the description “Charity Bracelet”.

The USPTO rule for Internet specimens is provided in the Trademark Manual of Examining Procedure at § 905.06:

Displays may be used as Specimens, provided:

1. A picture of the relevant goods is included; 
2. The mark is sufficiently near the picture of the goods to associate the mark with the goods; and 
3. Information necessary to order the goods is provided. 

This is known as a point of sale display specimen and was adopted by the USPTO after the Internet began to be used for interstate commerce. At that time, the USPTO was strict in their acceptance of Internet specimens for purposes of supporting a Statement of Use.

During oral arguments, the Court asked the USPTO attorney interesting questions regarding the practical need for photographs in an Internet specimen. For example, Judge Linn asked whether a picture of a point of sale display in a store would be rejected if the photograph consisted of the mark near a stack of plain boxes, each of which included the mark. The USPTO attorney said that it probably would. Oral arguments are available to listen to online here.

The operative question, according to the CAFC is whether the mark is associated with the goods on which the mark is used. On remand, the CAFC has ordered the CAFC to consider the evidence as a whole to determine if applicant’s specimen associates his mark with his charity bracelets so as to “identify and distinguish the goods.” citing Bellsouth, 60 F.3d at 1569; see also Damn I’m Good, Inc. v. Sakowitz, Inc., 514 F. Supp 13587 (S.D.N.Y. 1981).

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US Patent and Trademark Office News:

The US Patent and Trademark Office (“USPTO”) is contacting former patent examiners, in an effort to solve the growing backlog problem.  The USPTO invited former examiners, who have passed their probationary period and who have resigned less than three years ago or have more than three years examining patents, to return.  The delays in first Office Actions is now exceeding 12 months and steps taken by the USPTO to reduce the backlog will be welcome.
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