IP Update, Volume 4, No. 4, April 2001
April 2001
IN THIS ISSUE
- Trademarks/Trade Dress - A Product Feature That Was The Subject of an Expired Utility Patent is Rarely Entitled to Trade Dress Protection
- Patent/Claim Construction - Internet Patent Claim Narrowly Construed by Specification
- Patent/Claim Construction - Federal Circuit Construes Balloon Dilation Catheter Patent Claims Narrowly in View of Written Description
- Patent/Claim Construction - Broad Claim Language Will Not Be Narrowly Construed to Avoid Anticipation
- Copyright/Electronic Revisions - Rights Afforded "Authors" of Collective Works Do Not Permit Magazine Publisher to Reuse Photographs in New CD-ROM Product
- Trademark/Laches - Federal Circuit Rejects Detrimental Reliance as a Requirement for Laches Defense
- Copyright/Infringement - Issue of Substantial Similarity of Purple Dinosaur Costumes is Considered From the Perspective of the Intended Audience – Children
- Patent/Infringement - Party That Exported Component of a Patented Device May Be an Infringer Under ยง 271(f)(2), Even Though Patented Device Was Never Assembled After Export
A Product Feature That Was The Subject of an Expired Utility Patent is Rarely Entitled to Trade Dress Protection
By Mary C. Chapin and John J. Dabney
The US Supreme Court has held that a product feature that is or was the subject of an expired utility patent can rarely, if ever, be protected as trade dress under the federal Trademark Act, because such a feature is, in essence, de jure functional. Traffix Devices, Inc. v. Marketing Displays, Inc., 2001 U.S. Dist. LEXIS 2457 (March 20, 2001). The Supreme Court also held that the proper inquiry in determining whether a trade dress is legally functional is whether "it is essential to the use or purpose of the article or if it affects the cost or quality of the article."
In Traffix, the plaintiff sought trade dress protection for a dual spring design that kept road signs upright in heavy wind conditions. The plaintiff claimed that feature as the central advance in its expired utility patent. The US Court of Appeals for the Sixth Circuit had held that the feature was entitled to trade dress protection so long as affording protection did not place competitors at a "significant, non-reputation related disadvantage." In a unanimous opinion, the Supreme Court reversed.
The Supreme Court held that a product feature is legally functional under the Trademark Act and, therefore, not subject to trade dress protection if "it is essential to the use or purpose of the article or if it affects the cost or quality of the article." Thus, the Court reasoned, the fact that the plaintiff owned an expired utility patent for the alleged trade dress has "vital significance" in determining if the trade dress is functional, and the plaintiff has a "heavy burden of showing that the feature is not functional." Because the plaintiff could not satisfy that burden, trade dress protection was unavailable. The Court concluded, "The [Trademark] Act does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of patent law and its period of exclusivity. The [Trademark] Act, furthermore, does not protect trade dress in a functional design simply because an investment has been made to encourage the public to associate a particular functional feature with a single manufacturer or seller."
Practice Note
Traffix comes in the wake of last years Supreme Court decision in Wal-Mart Stores, Inc. v. Samara Bros., Inc., where the Court unanimously held that a plaintiff must prove that a product design trade dress has acquired secondary meaning in order to obtain protection. In Traffix, the Supreme Court has effectively raised the hurdle once again for a plaintiff seeking to protect product design trade dress. Before Traffix, a plaintiff could obtain trade dress protection for a product design (even one that was the subject of an expired utility patent) if it could prove that competition would not be substantially injured if the court afforded protection. The injury to competition inquiry has now taken a backseat to a test that focuses primarily on the degree of usefulness of the alleged trade dress.
Internet Patent Claim Narrowly Construed by Specification
By Paul Devinsky
Over a dissent by Clevenger J., a panel of the US Court of Appeals for the Federal Circuit has ruled that a patent claim, directed to an Internet-based information retrieval system, is appropriately confined to a system describedin the specification requiring a central computer/local server computer architecture. Networld LLC v. Centraal Corp., Case No. 99-1257 (Fed. Cir., 3/14/01)
Networld is the owner of U.S. Pat. No. 5,764,906, directed to a system for locating and retrieving information on the Internet using "aliases" to denote resources whose retrieval is sought. The `906 patent describes a local server database storing a limited number of aliases and their corresponding resource addresses (URLs) and a central registry computer having a database comprising the entire collection of aliases and URLs. When a user enters an informal designation, i.e., an alias such as "IBM," the system directs the user’s computer to the corresponding resource, e.g., the website of "International Business Machines, Inc." Centraal offered a system known as "RealNames," which provided a similar service.
The lower court, after construing Claim 1 of the `906 patent to require a system wherein a local server computer maintained a "cache" in the form of a limited database of aliases, which "pulled" information when needed from the central registry computer, found no counterpart structure in the RealNames system and granted Centraal summary judgment of noninfringement.
Networld appealed, arguing that the lower court impermissibly imported the functions of "caching" and "pulling" information by the local server into the claim, functions found in the specification but not recited in the claim.
The Federal Circuit affirmed the lower court, explaining that:
The claims are always construed in light of the specification, of which they are a part.… The role of the specification includes presenting a description of the technologic subject matter of the invention, while the role of claims is to point out with particularity the subject matter that is patented… The claims are directed to the invention that is described in the specification; they do not have meaning removed from the context from which they arose. Thus the claims are construed to state the legal scope of each patented invention, on examination of the language of the claims, the description in the specification, and the prosecution history… Although the specification need not present every embodiment or permutation of the invention and the claims are not limited to the preferred embodiment of the invention, …neither do the claims enlarge what is patented beyond what the inventor has described as the invention, "Claim construction" is the judicial statement of what is and is not covered by the technical terms and other words of the claims.
In his dissenting opinion, Judge Clevenger pointed out that nothing in the language of the claim precluded a local server computer from maintaining the same database as is maintained by a central registry computer and that nothing in the claim language precluded a local server computer from receiving its database of aliases by periodic communication from a central registry computer. Thus, in Judge Clevenger’s view, not only are the limitations imposed by the majority on the local server computer not present in the claim, they are not even mandatory in the written description (which only states that the mechanisms for keeping the local server up-to-date "may include" requests made by the local server to the central registry computer). Rather, according to Judge Clevenger, the discussions in the specification and file history of a local server computer that has a limited database of aliases and achieves its updating function by making requests from the central registry computer, relate only to certain dependent claims.
Practice Note
Several months ago, in a similar situation, a different panel of the Federal Circuit broadly construed the claims of an e-commerce patent, finding the lower court erred in reading limitations from the specification into the claims. See, I.P. Update Vol. 3, No. 11 (November 2000) "E-Commerce Patent Broadly Construed By Federal Circuit" regarding Interactive Gift Express, Inc. v. Compuserve Inc. et al. Also see, I.P. Update, Vol.4, No.2 (February 2001) "Means-Plus-Function Claim Elements Limited by Data Structures Disclosed as Necessary to Perform The Stated Function" regarding Globetrotter Software, Inc. v.Elan Computer Group, Inc.
Federal Circuit Construes Balloon Dilation Catheter Patent Claims Narrowly in View of Written Description
By Natalia Blinkova
Continuing a recent trend of cases construing patent claims narrowly in light of the written description, the US Court of Appeals for the Federal Circuit has ruled that a claim reciting two separate lumens is limited to a coaxial lumen structure. SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc. (ACS), 242 F.3 1337, 2001 U.S. App. LEXIS 3864 (Fed. Cir., March 14, 2001).
SciMed is the owner of three patents directed to balloon dilation catheter technology used in coronary angioplasty procedures. Both parties agreed that only two arrangements of the claimed catheter passageways or lumens are known and practiced in the art: the dual (or adjacent) lumen configuration and the coaxial (one inside the other) lumen configuration. The lower court granted ACS’ motion for summary judgment, ruling that the claims were directed to a coaxial lumen structure not found in the ACS dual lumen devices, literally or by equivalents.
The Federal Circuit affirmed the lower court, holding that the language in the specification "leaves no doubt that a person skilled in the art would conclude that the inventor envisioned only one design for the catheters taught in SciMed’s patents….lumens arranged coaxially."
The Court’s decision was based on an intensive review of the specification. In turn the Court looked to the abstract, the discussion of background or prior art, the summary of the invention and the detailed description to determine that the inflation lumen, as used in the SciMed patents, must be a coaxial rather than dual lumen structure. For instance, the Court noted that the written description of the patents-in-suit identifies the dual lumen configuration and explains its disadvantages. The Court further noted that the Summary of the Invention describes the coaxial lumen as "the present invention," and the section of the specification entitled "Catheter Intermediate Sleeve Section" defines the invention in a way that excludes dual lumen arrangements and describes a coaxial arrangement as "the basic sleeve structure for all embodiments of the present invention." (Emphasis supplied.)
After reviewing recent precedent regarding use of the written description in claim construction including Watts v. XL Sys., Inc.; ("one purpose for examining the specification is to determine if the patentee has limited the scope of the claim"); Wang Labs. Inc. v. America Online, Inc. (limiting claim scope based on what is described and enabled) and Cultor Corp. v. A.E. Staley Mfg. Co.; (limiting otherwise broad claim language to a water soluble material made using a particular catalyst based on a "disclaimer" in the written description: "claims are not correctly construed to cover what was expressly disclaimed") the Court concluded:
[r]ead together, these portions of the common specification lead to the inescapable conclusion that the references in the asserted claims to an inflation lumen ‘separate from’ the guide wire lumen must be understood as referring to coaxial lumens, and thus that the asserted claims read only on catheters having coaxial lumens.
The Court explicitly rejected the patentee’s argument that the district court has "committed one of the cardinal sins of patent law—reading a limitation from the written description into the claims." The Court instead remarked that the district properly read the claims in view of the specification.
Likewise, the Court rejected SciMed’s doctrine of equivalents arguments on the basis that the common specification of the patents-in-suit identified dual lumen catheters among the prior art and criticized that design for its disadvantages: "Having specifically identified, criticized and disclaimed the dual lumen configuration, the patentee cannot now invoke the doctrine of equivalents to ‘embrace a structure that was specifically excluded from the claims.’"
Broad Claim Language Will Not Be Narrowly Construed to Avoid Anticipation
By Christopher D. Bright
Affirming a lower court decision, the US Court of Appeals for the Federal Circuit recently held that claims directed to a golf club iron-type head were anticipated by a prior art reference, rejecting the patentee’s request to construe the claims sufficiently narrow to avoid the reference. Karsten Mfg. Corp. v. Cleveland Golf Co., Case No. 99-1234 (Fed. Cir., Mar. 22, 2001). The claims at issue recited, inter alia, a "substantially ring-shaped variable mass perimeter weighting element" and a "central area on the back face." Karsten, the patentee, argued that the Wilson club head, which the district court found anticipated the Karsten claims, differed in at least two respects from the Karsten patent claims. First, according to Karsten, the Wilson ring shape is less circular than the Karsten club head as depicted in the patent drawings. Second, the central area in the Wilson club head is in a different position than the central area in the Karsten club head, again, as depicted in the Karsten patent drawings.
The Court noted the familiar tension that although a patent claim should be construed to preserve its validity when it is amenable to more than one construction, a claim cannot be construed contrary to its plain language. Rejecting Karsten’s request to construe its patent claim to be sufficiently narrow to avoid the Wilson reference, the Court reasoned that "[a]lthough [we agree] with Karsten that the specific embodiments pictured in the drawings of the [Karsten patent] are not identical to the picture of the Wilson [club head], [the claims at issue] do not reflect such differences." The Court refused to construe the claims contrary to their plain meaning in order to avoid the Wilson reference, which was not of record during the prosecution of the application issued as the Karsten patent: "Claims can not be rewritten by the court to avoid the impact of newly discovered prior art, for the role of ‘claim construction’ is to describe the claim scope as it was intended when examined and obtained by the applicant, not as it might have been limited upon a different record of prosecution and prior art."
Copyright/Electronic Revisions
Rights Afforded "Authors" of Collective Works Do Not Permit Magazine Publisher to Reuse Photographs in New CD-ROM Product
By Lee Bollinger
The US Court of Appeals for the Eleventh Circuit recently held that a magazine publisher infringed the copyrights of a photographer (whose photographs had previously appeared with permission in past issues of the magazine) by republishing the photographs in a new CD-ROM work that included all of the magazine’s past issues. Greenberg v. National Geographic Society, 2001 U.S. App. LEXIS 4270 (11th Cir., 2001).
Greenberg, a freelance photographer, brought a copyright infringement suit against National Geographic following its sale of a CD-ROM product that included its past 1,200 issues, including those in which the plaintiff’s photographs had previously appeared. The district court granted summary judgment in favor of National Geographic, holding that because the CD-ROM was merely a revision of a collective work (i.e., the original, printed versions of National Geographic’s past 1,200 issues), its reuse of the photographs work was within the scope of rights extended to authors of collective works under the Copyright Act.
The Eleventh Circuit reversed, holding that while the CD-ROM was a collective work, it was a new work of authorship rather than a revision of a previous work. As a new work of authorship, National Geographic could not rely on previous licenses it had secured from the authors of the constituent works.
The Copyright Act defines a collective work as a "work, such as a periodical issue, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole." Authors of collective works typically seek licenses from the authors of the constituent works (or use material that is in the public domain). An author of a collective work is entitled to copyright protection in the work as a whole, insofar as the author exercised creativity in the selection and organization of the individual works. The Copyright Act permits owners of collective works to reproduce and distribute the constituent works only
(1) as part of the original collective work, (2) in any revisions to the original collective work and/or (3) any later collective work in the "same series." National Geographic argued that, taken together, the 1200 original printed issues of its magazine amounted to a "collective work of collective works," and that the CD-ROM was a revision of that collective work.
The Eleventh Circuit disagreed, observing that the CD-ROM was a collaborative effort that included new creative elements, such as digital animation and computer programming, and was produced "in a new medium, for a new market." The court also noted that National Geographic had described the CD-ROM as a new work of authorship in its federal copyright application.
In a somewhat unusual remand instruction, the Eleventh Circuit urged the lower court to consider awarding Greenberg a mandatory license fee rather than enjoining National Geographic from any further distribution of the CD-ROM work.
Practice Note
The Eleventh Circuit ruling in Greenberg is similar to the Second Circuit holding in Tasini v. New York Times Co., which is currently on appeal before the Supreme Court. In Tasini, the publishers argued that the republication of the previously published, freelance articles in an electronic database was a permissible "revision" of the original collective work (i.e., the periodicals). The Second Circuit rejected this argument, observing that the NEXIS database irreversibly separated the articles from the periodicals in which they originally appeared, thereby destroying the copyrightable aspects of the original collective work. For purposes of periodicals, the Court interpreted the meaning of "revision" under § 201 of the Copyright Act to mean, "only later editions of a particular issue of a periodical, such as the final edition of a newspaper."
Federal Circuit Rejects Detrimental Reliance as a Requirement for Laches Defense
By Keith M. Stolte
The Court of Appeals for the Federal Circuit recently clarified that a laches defense under the Lanham Act does not require specific evidence of detrimental reliance on a party’s silence or inaction. Bridgestone/Firestone Research v. Automobile Club de L’Ouest de la France, Case No. 00-1036, 2001 U.S. App. LEXIS (Fed. Cir., March 6, 2001). The Court also held that the constructive notice provisions of the Lanham Act, coupled with the widespread and longterm use of a trademark, is sufficient to support a defense of laches in trademark cancellation actions.
Bridgestone/Firestone Research (Bridgestone) obtained a federal registration of its mark LEMANS for tire products on September 10, 1963. Since 1923, the Automobile Club de L’Ouest de la France (Automobile Club) has managed the internationally-known Les 24 Heures du Mans automobile race held each year in La Mans, France. It has used the term Le Mans in connection with this race ever since.
In 1991, five years after the Automobile Club obtained a federal registration for LE MANS on the Supplemental Register for automobile tires, Bridgestone successfully petitioned for cancellation of the registration. In response, the Automobile Club counterclaimed for cancellation of Bridgestone’s 1963 registration on the basis that Bridgestone’s use of the mark would suggest a false connection with the Automobile Club and its sponsorship of the Le Mans race, in violation of § 2(a) of the Lanham Act, 15 U.S.C. §1052(a).
Bridgestone defended on the grounds of laches, pointing to its widespread use of the LEMANS mark in connection with tires for over 27 years, during which time the Automobile Club never took any action or voiced any complaint. Bridgestone also claimed that it would be unfairly prejudiced because of the commercial investment it incurred through use of the LEMANS mark and the attendant promotional efforts the company made during the course of its use. The Automobile Club countered that it only became aware of Bridgestone’s LEMANS registration in 1991 as a result of Bridgestone’s cancellation action against its own registration. The Automobile Club also argued that Bridgestone did not provide adequate and specific evidence of any reliance on the Automobile Club’s inaction to support the defense of laches.
The Trademark Trial and Appeal Board (TTAB) denied Bridgestone’s laches defense, reasoning that Bridgestone had failed to provide specific evidence establishing its reliance on the Automobile Club’s 27-year silence. The Federal Circuit reversed, holding that the Lanham Act’s constructive notice provisions, together with Bridgestone’s widespread use of the LEMANS trademark over a 27-year period, required that the Automobile Club be charged with undue delay in filing its petition to cancel the registration. The Court found that the Automobile Club had not offered a reasonable excuse for its delay sufficient to overcome the constructive notice provided by Bridgestone’s 1963 trademark registration and the long-term use of the mark in the market place.
The Federal Circuit also found that the TTAB committed reversible error by requiring "specific" evidence of "reliance" by Bridgestone. Distinguishing a laches defense from estoppel, the Court held that proof of detrimental reliance is not necessary to support laches: "[w]hen there has been an unreasonable period of delay by a plaintiff, economic prejudice to the defendant may ensue whether or not the plaintiff lulled the defendant into believing that the plaintiff would not act, or whether or not the defendant believed that the plaintiff would have grounds for action."
The Court also rejected the Automobile Club’s argument that the defense of laches was not available against a § 2(a) claim for "false suggestion of a connection." Noting that § 2(a) was specifically intended to protect persons and institutions from exploitation of their "persona" and was not necessarily designed to protect the public from confusion, the court distinguished prior cases that had barred the laches defense in likelihood of confusion scenarios under § 2(d).
Issue of Substantial Similarity of Purple Dinosaur Costumes is Considered From the Perspective of the Intended Audience – Children
By David M. Stein
The US Court of Appeals for the Fourth Circuit, in reversing the lower court, held that the issue of substantial similarity should be viewed from the perspective of the intended audience (children) rather than purchasers–in this case adults. Lyons Partnership, L.P. v. Morris Costumes, Inc., 58 U.S.P.Q.2d 1102, 2001 WL 261545 (4th Cir., 2001).
The owner of the copyright in the popular children’s television character "Barney" brought an action against a costume rental company (Morris) alleging that its copyrights had been violated by the marketing of costumes that were similar in appearance to Barney.
The district court found that although the accused costume was extrinsically similar, it did not infringe on the Barney copyright because the intended audience, which the court found to be the average adult renter or purchaser, would not find the allegedly infringing costume subjectively similar to Barney. The lower court did not consider the perspective of children, finding that children did not directly influence costume purchase or rental decisions.
The Fourth Circuit reversed, finding that the lower court erred in its determination that the intended audience was limited to the average adult renter or purchaser. Rather, the Fourth Circuit held that the proper inquiry for substantial similarity between two child-oriented works such as Barney, should be viewed from the perspective of a child. The Court noted that the test for "substantial similarity" is a two-part test. First, the two works at issue must be extrinsically similar, i.e., they must contain substantially similar ideas that are subject to copyright protection. Second, the works must be intrinsically similar, i.e., they must express those ideas in a substantially similar manner from the perspective of the intended audience of the work.
Looking to the purpose underlying the "intended audience" rule, namely that the copyright laws are designed to protect the holder of a copyright from economic harm, the Court noted that the relevant infringement issue is whether the works are so similar that the introduction into the market of the accused product would have an adverse effect on the market demand for the protected work. In the present case, the Fourth Circuit determined young children, as the target audience, must be considered in terms of the intrinsic similarity test.
Party That Exported Component of a Patented Device May Be an Infringer Under § 271(f)(2), Even Though Patented Device Was Never Assembled After Export
By Stephen K. Shahida
The US Court of Appeals for the Federal Circuit has now held that under § 271(f)(2) of the Patent Act shipping components of a patented device outside the United States for final assembly constitutes infringement, even if the final assembly never takes place. Waymark Corp. v. Porta Systems Corp., Case No. 00-1327, 2001 U.S. App. LEXIS 5688 (Fed. Cir., April 6, 2001).
Porta Systems shipped components for a battery monitoring system to Mexico, where it planned to build the system but never did. Waymark Corporation, the exclusive licensee under U.S. Patent No. 5,505,929, filed suit against Porta Systems, alleging infringement of the '929 patent under § 271(f)(2). The district court granted Porta Systems summary judgment of noninfringement, pointing to Waymark’s failure to offer any evidence that an infringing product was ever made, used, sold, or offered for sale, either inside or outside the United States. The district court construed § 271(f)(2) to require actual assembly of an infringing product.
The Federal Circuit reversed. Relying on the words of the statute and its legislative history, the Federal Circuit interpreted § 271(f)(2) to not require actual assembly abroad. The Court stated that "[o]n its face § 271(f)(2) requires that the infringer only ‘intend that such component will be combined.' At no point does the statutory language require or suggest that the infringer must actually combine or assemble the components. A party can intend that a shipped component will ultimately be included in an assembled product even if the combination never occurs."
Practice Note
This decision further defines the scope of § 271(f)(2), a relatively recent section of the statute, and builds upon the Federal Circuit’s recent pronouncement on the interplay between § 271(f)(2) and § 271(a). See, Intellectual Property Update Vol. 3, No. 7, July 2000, ("An Offer to Sell a Component of a Patented Invention for Assembly Outside the U.S. Does Not Constitute an Act of Infringement"; reporting on Rotec v. Mitsubishi, et al.).
