Publications / McDermott Newsletters / IP Update, Vol. 7, No. 2, February 2004

IP Update, Vol. 7, No. 2, February 2004

February 2004

IN THIS ISSUE

Patents / Claim Construction

Later Statements to the USPTO May Narrow Earlier-Issued Claims
By Matthew F. Weil

In an apparent attempt to ensure that similar or identical claim terms based on the same disclosure are similarity or identically construed, the U.S. Court of Appeals for the Federal Circuit has ruled that statements of a patentee in the prosecution of a "related application" as to the scope of the invention may be relevant to claim construction, even if those statements are made after the issuance of the patent containing the claims to be construed. Microsoft Corp. v. Multi-Tech Sys, Inc., Case Nos. 03-1138, 1139 (Fed. Cir. Feb. 3, 2004).

This case involved five Multi-Tech patents directed to personal computer-based systems and methods for simultaneously transmitting voice and/or computer data to a remote site over a telephone line. All five patents derive from the same parent application and share a common specification.

Multi-Tech’s infringement claims turned, in part, on the construction of the terms "sending," "transmitting" and "receiving." Although these terms appear to have fairly settled "plain meanings," the district court looked to statements of the patentee to construe the claims. Although it was construing the terms as used in Multi-Tech’s first-issued patent, the district court relied on statements made by Multi-Tech later, during the prosecution of a subsequently issued patent, to construe the claims as requiring a direct point-to-point telephone line connection (as opposed, for example, to an internet connection initiated by a telephone line connection). Based on this construction, Multi-Tech stipulated to non-infringement and appealed.

The Federal Circuit affirmed over a pointed dissent by Judge Rader, who accused the majority of disregarding the rule of Georgia-Pacific Corp. v. United Gypsum Co. Creating a fine distinction, however, the majority held that Georgia-Pacific merely rejected the argument that the patentee was bound, or estopped, by a statement made in connection with a later application on which the examiner of the first application could not have relied. After Multi-Tech, it is clear that such statements may be used to construe disputed claims in earlier-issued patents. According to Judge Rader, this is in contravention of the rule of Georgia-Pacific that precludes the application of a prosecution history from a later patent to limit the narrower claims of a patent issuing before such statements were made.

Patents / Claim Construction

Intrinsic Record Must Contain an Explicit Definition or Disavowal to Avoid Adopting the Plain and Ordinary Meaning of a Disputed Claim Term
By Shamita D. Etienne

Continuing an almost two-year long trend, the U.S. Court of Appeals for the Federal Circuit found that the district court crossed a fine line between "reading a claim in light of the specification, and reading a limitation into the claim from the specification." Liquid Dynamics v. Vaughn Co., Case Nos. 03-1146, -1147, -1208 (Fed Cir. Jan. 23, 2004).

The patent-in-suit describes a tank that stores liquid and semisolid waste products and mixes the waste products for subsequent processing. As recited in the asserted claims, the tank mixes the waste products by generating a "substantial helical flow path." The parties disputed the scope of the phrase "substantial helical flow" and "substantially helical flow path." The defendant advocated that each term required a geometrically helical pattern.

The district court observed that the phrase "substantial helical flow path" was ambiguous and, therefore, looked to the specification and the prosecution history to construe its scope. The figures included in the specification only illustrated a perfect helical flow path. In addition, during prosecution, the applicant differentiated the claimed invention from prior art that had a generalized helical flow path. Based on these representations, the district court construed the recited term to "require a perfect helical flow path." Liquid Dynamics appealed.

The Federal Circuit reversed, outlining the steps required for proper claim construction and noting that "[a]s the starting point, [the Court should] give claim terms their ordinary and accustomed meaning as understood by one of ordinary skill in the art." The Court further emphasized that unless the specification acts as a dictionary and expressly defines the claim term or the patentee unequivocally disavows a certain meaning during prosecution, the plain and ordinary meaning of the claim term prevails.

The Federal Circuit found that the disputed claim term "was not ambiguous and its plain meaning was not contradicted by the written description." "Because the plain language of the claim was clear and uncontradicted by anything in the written description or the figures, the district court should not have relied upon the written description, the figures, or the prosecution history to add limitations to the claim." Accordingly, the Federal Circuit focused on the ordinary meaning of the term "substantial" and held that the proper construction for disputed phrase permitted the flow path to have a general rather than a perfect spiral pattern.

Patents / Claim Construction

Disclosed Embodiment Does Not Necessarily Limit Scope of Means-Plus-Function Limitation
By Jennifer L. Yokoyama

The U.S. Court of Appeals for the Federal Circuit has held that a means-plus-function claim limitation need not necessarily be construed to include all the attributes of the corresponding structure recited in the specification. Instead, a court should look to only so much of the structure as is needed to perform the claimed function. Golight, Inc. v. Wal-Mart Stores, Inc., Case No. 02-1608 (Fed. Cir. Jan. 20, 2004).

Golight sued Wal-Mart for infringing its patent on a wireless, remote-controlled, portable search light. One limitation of the claim at issue required a "horizontal drive means for rotating said lamp unit in a horizontal direction." The only structure in the specification corresponding to a "horizontal drive means" was in the description of the preferred embodiment, which the specification explicitly stated must be capable of rotating through 360°. At trial, Wal-Mart argued its product did not infringe because it was incapable of moving through a full 360°. The trial court disagreed.

On appeal, Wal-Mart argued the district court erred in construing the "horizontal drive means" limitation more broadly than the corresponding structure in the patent specification. Because the patent described only a device that rotated through at least 360°, Wal-Mart argued, the corresponding limitation should have been construed to exclude devices (like the accused device) incapable of 360° rotation. The Court dismissed this argument, pointing out that the specification merely described the preferred embodiment, and patentees are not required to include all of the advantages or features described as significant or important in the written description in each of their claims. With means-plus-function claims, as with more conventional claims, it is improper to import limitations from the specification into the claim. Rather, only so much of the disclosed structure as is necessary to perform the claimed function should be deemed
part of the limitation.

Wal-Mart also argued the patentee had acted as its own lexicographer during prosecution when it gave the term "rotating" a special definition, requiring rotation through at least 360°. The Court held, however, the prosecution history cited by Wal-Mart was subject to multiple reasonable interpretations and, therefore, did not constitute a clear and unmistakable departure from the ordinary meaning of the term "rotating."

Practice Note: In construing means-plus-function claims, there is an obvious tension between the rule that the scope of the claim is limited to the corresponding disclosed structure (and equivalents) and the rule that it is improper to import limitations from the specification into the claims. Golight seems to resolve this tension in favor of broad patent scope. Absent a clear indication of a different intent on the part of the patentee, it appears the Federal Circuit will be willing to grant means-plus-function claims the broadest possible scope supported by the written description and consider additional details in the description to be non-limiting "bells and whistles."

Patents / Doctrine of Equivalents

Claim It or Lose It
By Arturo E. Sandoval and Firasat M. Ali

The U.S. Court of Appeals for the Federal Circuit recently held that disclosure made in the specification of a patent application that is not expressly claimed is dedicated to the public and cannot be later captured under the doctrine of equivalents. PSC Computer Products, Inc. v. Foxconn International, Inc., Case No. 03-1089 (Fed. Cir. Jan. 20, 2004).

In this case PSC sued Foxconn for patent infringement regarding a patent that involved a retainer clip that provided a conduction path for heat to escape from a circuit. The patent-in-issue claimed a retainer clip that uses a "resilient metal strap." The patent specification stated that "the elongated strap is made of stainless steel although other resilient material may be suitable for the strap," and "other prior art devices use molded plastic."

The district court held that under the disclosure-dedication rule, PSC’s disclosure of clips made of plastic parts coupled with its failure to claim chips having plastic parts, in essence dedicated such clips to the public.

PSC contended that its disclosure in the patent specification did not warrant dedication of equivalents to the public. The Federal Circuit, in affirming the district court, dismissed PSC’s contention that the doctrine of equivalents should have been applied to the claim language "resilient metal strip" to render Foxconn’s device (which used a plastic retainer clip) as an equivalent. The Court’s rationale was that since one of the key functions of a patent claim is to place the public on notice of what the claim covers, i.e., what would infringe, expanding a claim term to cover equivalents that have been specifically disclosed, but not claimed, would be counter to the notice doctrine.

The Court agreed with PSC that under the disclosure-dedication rule of Johnson & Johnston, only a specific disclosure, not any generic reference in the disclosure, will operate to dedicate subject matter to the public. The Court explained that the disclosure must be of such specificity that one of the ordinary skill in the art could identify the subject matter that has been disclosed. Applying this rule to the language in the specification, the Court found that although the term "other resilient materials" did not dedicate all resilient materials (other than the specifically claimed stainless steel material) to the public, the categorization of plastic as a prior art, coupled with the specific disclosure of it as an alternative, operated to dedicate use of plastic chip parts to the public. In addition, since PSC had led the public to believe that its metal clip design was an improvement over the inferior prior art plastic design, PCS could not now recapture plastic as an equivalent under the doctrine of equivalence.

Patents / Doctrine of Equivalents

Intrinsic Record Critical to Successful Rebuttal of Prosecution Based on Foreseeability
By Astrid R. Spain

Against the backdrop of Festo VIII (U.S. Supreme Court, 2002), the U.S. Court of Appeals for the Federal Circuit, in a pair of cases decided by the same panel on the same day, has provided further guidance on the factors critical to a successfully rebutting, based on lack of foreseeability the presumption that a narrowing amendment irrecoverably surrenders subject matter. SmithKline Beecham Corp. v. Excel Pharms., Inc., Case No. 02-1581 (Fed. Cir. Jan. 29, 2004) and Glaxo Wellcome Inc., v. Impax Laboratories, Inc., Case No. 03-1013 (Fed. Cir. Jan. 29, 2004).

In Festo VIII, the Supreme Court held that a patentee may rebut the presumption that a narrowing amendment surrenders the territory between the original and amended claims, inter alia, by showing that the asserted equivalent was not foreseeable and, thus, not claimable at the time of the amendment.

The Excel and Impax cases involve generic drug approval of Wellbutrin®/Zyban® respectively, which are controlled-released bupropion hydrochloride tablets marketed to treat depression and aid smoking cessation. Glaxo’s U.S. Patent No. 5,427,798 (the `798 patent) claimed a tablet that provided controlled-release bupropion hydrochloride. To control the rate of release, the patent claims required hydroxypropyl methylcellulose (HPMC) in combination with the active ingredient.

The alleged infringers in both cases are generic drug manufacturers seeking to sell controlled-release bupropion hydrochloride tablets. Glaxo separately sued Excel and Impax for infringement under the doctrine of equivalents for making allegedly infringing drug products that substituted HPMC with the controlled-release agents polyvinyl alcohol (PVA) and hydroxypropyl cellulose (HPC), respectively.

The alleged infringers argued that they did not infringe Glaxo’s patent because narrowing amendments Glaxo had made during prosecution of the `798 patent that specified HPMC as the controlled-release agent estopped Glaxo from claiming equivalents to HPMC. In both cases, Glaxo argued that there had been no narrowing amendment that would even raise a rebuttable presumption because the claims were amended to recite HPMC merely to distinguish the release agent from other disclosed excipients. The Court disagreed, pointing out that the amendment was made in a response to an enablement rejection. Thus, the Court held that Glaxo did not rebut that the amendment was made for a reason related to patentability.

In Excel, Glaxo argued that the Festo presumption was sufficiently rebutted by virtue of the fact that PVA could not have been added to the claims at the time of amendment without drawing a new matter rejection. Although, the Court agreed that after-arising technology is a quintessential example of a permissible equivalent, it held that new matter prohibitions are not relevant to overcoming the Festo presumption. The critical inquiry on whether Glaxo could have foreseen controlled-release agents other than HPMC at the time of amendment. On that issue the Court reversed the summary judgment of non-infringement and remanded the case for development of the record to address whether PVA constituted a foreseeable, controlled-release agent at the time of amendment.

Based on a more developed record, the Court in Impax discredited the forseeability rebuttal for HPC because the record showed HPC was known as a controlled-release agent at the relevant time. Glaxo also argued that claim 1, which originally recited HPMC as the controlled-release agent, should not be subjected to "infectious estoppel." The Federal Circuit dismissed the argument, pointing to its own precedent for the proposition that the same term appearing in different claims of a patent should not be afforded different ranges of equivalents absent an unmistakable indication to the contrary. By amending the claims that did not originally recite HPMC to include this element considered critical to enablement by the examiner (without arguing that the recitation of HPMC was not similarly critical to enablement of claim 1), Glaxo was deemed to have created an estoppel by acquiescence.

Patents / Litigation

Temporary Presence in U.S. Defense Prevails
By David V. Jafari

For the first time in its 22-year history, the U.S. Court of Appeals for the Federal Circuit had an opportunity to address the scope of an obscure infringement defense known to as "temporary presence in the U.S." (35 U.S.C. § 272.) In doing so, it overturned the grant of a preliminary injunction. National Steel Car v. Canadian Pacific Railway, LTD., Case No. 03-1256 (Fed. Cir. Jan. 29, 2004).

Canadian Pacific Railway (CPR) is engaged in the shipping of lumber from Canada to various destinations in the United States. National Steel Car (NSC) is a manufacturer of railway cars especially designed to efficiently haul lumber. After NSC lost a large bid to supply CPR with railway cars, NSC sued CPR alleging infringement of NSC’s patent, which is directed to "a depressed center-beam flat car," a design that allows railway cars to carry a volumetrically larger load.

CPR conceded that the NSC patent claims read on its railway cars, but argued that because its railway cars were only "temporarily" present in the United States., under § 272, it was not liable for any act of infringement. CPR also argued that the `575 patent was invalid because it was obvious in view of the combination of two prior art references, the Wagner and Udstad patents. The district court did not agree and granted NSC’s preliminary injunction holding that CPR’s defenses lacked substantial merit. On appeal, the Federal Circuit reversed, finding merit in both defenses.

First, the Federal Circuit rejected the district court’s definition of "temporary" as used in § 272. The district court held that even though CPR’s cars started and finished their journey in Canada, they were not in the United States merely "temporarily" because in each trip the cars spent the majority of the time delivering cargo to U.S. destinations, and CPR received financial gains from
their presence. The Federal Circuit, while noting the statute was ambiguous with respect to the U.S. Congress’ intent in defining "temporary," rejected the district court’s definition, holding that "temporary" refers to "a purpose to enter the United States, engage in international commerce, and then depart."

As to CPR’s obviousness defense, the district court found that the combination of Wagner and Udstad contained all elements of the asserted claims of the `575 patent, but concluded that "there was no suggestion, teaching or motivation to combine Wagner and Udstad."

CPR had presented two documents, the "Lund drawing" and the "Prichard disclosure," arguing that each demonstrated the requisite motivation to combine. The Lund drawing was made by Mr. Lund, who possessed an associate degree in mechanical engineering. The "Prichard disclosure" comprised notes prepared by Mr. Prichard, a marketing manager for a railway car manufacturer. Lund had prepared the drawings when he tried to build a flat car with a center partition to haul lumber, but he never discussed with any engineers "whether the car in his drawings could be built." Prichard had discussed his idea for combining a center partition car with a depressed well car with a railway car manufacturer. The district court held that neither Lund nor Prichard had an engineering or rail car design background (and so were not persons of ordinary skill in the art) and neither disclosures "had been disseminated to a sufficiently broad public so as to give either the status of prior art reference." The Federal Circuit disagreed, noting that Lund’s or Prichard’s background does not disqualify their disclosures from being relevant to whether a motivation to combine was implicit in the knowledge of one of ordinary skill in the art, and the motivation to combine can equally be found in the "knowledge generally available to one of ordinary skill in the art."

In the view of the Federal Circuit, even if Lund’s and Prichard’s education was insufficient to qualify them as a person of ordinary skill in the art, their observations would still be probative of what a person of ordinary skill in the art would have considered obvious. More importantly, insofar as evidence of motivation to combine is concerned, the prior art status of the evidence is not a concern. Rather, the Federal Circuit noted, "public distribution is irrelevant" to whether evidence of motivation to combine may be found in the knowledge generally available to those skilled in the art."

Patents / Obviousness

Motivation to Combine Prior Art Found in the Problem to Be Solved
By Kenneth L. Cage

The U.S. Court of Appeals for the Federal Circuit affirmed that a claimed "underpinning system" was invalid as obvious under 35 U.S.C. § 103 in view of two prior art references, finding the motivation to combine the references in the nature of the problem to be solved. Ruiz v. A.B. Chance, Case No. 03-1331 (Fed. Cir. Jan. 29, 2004).

The patent in issue covered the use of a screw anchor and a metal bracket to underpin and stabilize slumping building foundations. Ruiz asserted that the claimed invention was obvious and, therefore, invalid. The validity question focused on two prior art patents relating to underpinning and stabilizing foundations—the Rupiper reference that used a screw anchor and concrete haunch (not a metal bracket) and the Gregory reference that used a push pier (not a screw anchor) and a metal bracket. According to the district court, Rupiper and Gregory can be combined in "two ways" to reach the same result—by replacing the concrete haunch of Rupiper with the metal bracket of Gregory, or by replacing the straight "push pier" piling of Gregory with the screw anchor of Rupiper. In a prior decision in this dispute, the Federal Circuit remanded the case for further examination of obviousness and instructed the district court to make a specific Graham finding on "the reason, suggestion or motivation present in the prior art or the problem foundation of settling which clearly and particularly would lead one of ordinary skill in the art to combine [the] screw anchors with [the] metal brackets" of the prior art references. (Ruiz I.)

In finding the claims invalid as obvious, the district court found the motivation to combine Rupiper and Gregory in the nature of the problem as how to underpin an unstable foundation of an existing building. Chance appealed.

The Federal Circuit affirmed, stating that the issue was whether the district court erred in finding an "implied motivation" to combine teachings of the screw anchor of Rupiper with the metal bracket of Gregory. In its analysis, the panel relied upon the Federal Circuit precedent that a court or an examiner may find motivation to combine prior art references in the nature of the problem to be solved, citing Pro-Mold v. Great Lakes Plastics ("motivation to combine the teachings in the prior art may ‘come from the nature of a problem to be solved, leading inventors to look to references relating to possible solutions to that problem’"); Display Techs., Inc. v. Paul Flum Ideas, Inc.; and In re Huang. According to the panel, "This form of motivation to combine evidence is particularly relevant with simpler mechanical technologies."

The panel set aside Chance’s argument that the combination involved in permissible use of hindsight, stating that the district court properly found a motivation to combine Rupiper and Gregory because the references address "precisely the same problem of underpinning existing structural foundations." According to the panel, the district court could properly conclude on the record—without being in clear error—that a person of ordinary skill would be led to combine the screw anchor of Rupiper with metal bracket of Gregory to underpin an existing building foundation.

Patents / Interference

Priority and Two-Way Interference-in-Fact Test Not Satisfied Where Claimed Invention Relied on Functional Characteristics
By David A. Gay

In a case turning on priority of invention, the U.S. Court of Appeals for the Federal Circuit affirmed that the disclosure of a murine antibody or its activity and antigen failed to adequately describe additional species or genus claims. Competing claims to murine and human forms were further found to fail the two-way interference-in-fact test. Noelle v. Lederman, Case No. 02-1187 (Fed. Cir. Jan. 20, 2004).

The application No. 08/742,480 to Noelle (the `480 application) claims antibodies to the genus, murine and human forms of CD40CR antigen. The patent No. 5,474,771 to Lederman (the `771 patent) claims a CD40CR antibody to the human antigen. The interference count encompassed all three forms of CD40CR antibody, which inhibits immune signaling and is clinically useful for treating allergic reactions and autoimmune diseases. Analogizing antibody claims to DNA claims, the Board of Patent Appeals and Interferences (the Board) determined that the priority disclosure of the murine antibody form or its antigen failed to adequately describe the human and genus antibody claims of the `480 application and were anticipated by the `771 patent. The Board also concluded that there was no interference-in-fact between the remaining murine and human claims because the latter was unobvious.

The Court approved of the analogy to genetic material and embraced its previous holdings that a biotechnology invention cannot necessarily claim a genus after describing only a limited number of species. However, the written description requirement for antibodies relying on functional characteristics can only be met if the function is coupled with a disclosed correlation to a known structure. Finding a lack of written description and, therefore, no entitlement to priority, the Court found that the `480 priority application failed to adequately describe the human and genus antibody forms because it only disclosed antibody activity and structure to the murine antigen.

The Court also found that substantial evidence supported the Board’s determination of no interference-in-fact between the remaining murine antibody claim in the `480 application and the human claim in the `771 patent. Satisfaction of the two-way test requires that invention A must anticipate or make obvious invention B (step 1), and invention B must anticipate or make obvious invention A (step 2). The parties conceded that neither anticipation was not in issue the parties also conclude the motivation prong of the obviousness inquiry was not in issue. As to the remaining obviousness issue, the Court rejected the argument that the human claims were obvious in light of disclosed methods of isolating CD40CR antibodies, noting that the same patentable invention is being claimed is determined through a comparison of the competing claims. Because the `480 application did not claim a method of isolating either the human antibody form or antigen, the Court held that one of ordinary skill in the art would not have had a reasonable expectation of success in obtaining the human form given the murine disclosure in the `480 claims.

Patents / Appellate Practice

The Board Can Make a Mistake But Applicant Cannot
By Lawrence T. Cullen

In affirming a decision by the U.S. Patent and Trademark Board of Appeals and Interferences (the Board), the U.S. Court of Appeals for the Federal Circuit held that although new arguments from the applicant could not be considered on appeal, a failure by the Board to make a rejection that the Court believes would clearly be made on remand, allows the Court to affirm the Board rather than remand. In re Watts, Jr., Case No. 03-1121 (Fed. Cir. Jan. 15, 2004).

Watts received two obviousness rejections under 35 U.S.C. § 103(a). The first rejected most of the claims as being obvious in view of the combination of three patents, Howell, Kikinis and Gephart, respectively. The second rejection, directed to different claims, was based on only Howell and Kikinis. The rejections were upheld by the Board. Watts appealed.

In traversing the first obviousness rejection, Watts relied on the same arguments as presented to the examiner and the Board, but further advanced a new argument against the Gephart reference. The Court rejected the original arguments presented by Watts and refused to consider the new argument because it was not presented before the Board. Thus, the Federal Circuit affirmed the Board on the first rejection.

However, the solicitor representing the U.S. Patent and Trademark Office acknowledged that the second rejection, which did not include the Gephart reference, could not stand without the Gephart reference. Watts asserted that remand to the Board was required because the Court was only permitted to affirm the Board, if at all, on the reasons set forth in the Board’s decision. Rejecting Watts’ argument, the Court held that a mistake by the Board is a harmless error if it is clear that the Board would have reached the same ultimate result had it not made the mistake.

Anticipation / Inherency

Toro Tries to Protect Its Patent Turf But Validity Remains in Question
By David A. Spenard  and Paul Devinsky

The U.S. Court of Appeals for the Federal Circuit, in an appeal involving multiple summary judgment motions, affirmed in part (finding that defendant’s device did not infringe), reversed in part (finding that the district court erred in analyzing the issue of anticipation under principles of inherency) and remanded the case for further proceedings (to reconsider claim construction). The Toro Co. v. Deere & Co., Case Nos. 03-1160, -1161, (Fed. Cir. Jan. 20, 2004).

The plaintiff, Toro, is the owner of three patents, all directed at "technology for lifting and fracturing soil to decrease subsurface soil density and thereby encourage turf growth." The patents describe a device having a row of adjacent nozzles that sporadically shoot concentrated jets of water or other liquid into the turf and topsoil.

The Federal Circuit reversed the summary judgment holding that the `168 patent was inherently anticipated by the prior art. The dispute was whether the prior art inherently met a claim limitation directed to moving a source of liquid over the surface of the turf in a manner that lateral dispersion of adjacent jets of liquid co-act with each other to lift and fracture the soil. The prior art taught the use of
a row of injector heads and provided specifications such as valve opening times, lateral spacing between nozzles, liquid pressure and the distance from the nozzles to the surface of the ground.

Deere relied on the overlapping ranges of liquid pressure and internal spacing between nozzles in the prior art and patent-in-suit to support its argument that the prior art inherently results in the lifting and fracturing of the soil. Toro contended that Deere ignores the operational parameters disclosed in the patent that play a key role in lifting and fracturing soil to thereby reduce its density.

However, the Federal Circuit observed that in deciding that the patent claims were not invalid, the district court failed to construe the disputed limitations in the claim, but impliedly limited the claims to the disclosed numerical parameters—a narrow construction the Federal Circuit indicated would require "justification" by the district court. On the other hand, the Court noted that it was not clear from the record whether Deere had established the requisite facts to establish inherency. Based on the record presented, the Federal Circuit remanded the case to the district court to do the requisite claim construction and to determine "whether, as a matter of fact, practicing the [prior art] necessarily featured or resulted in ‘lifting and fracturing of the soil.’" On remand, the Federal Circuit instructed the district court to follow the direction of Schering Corp. v. Geneva Pharmaceuticals to determine whether the claimed "characteristic" is "a necessary feature or result" of the prior art—even if that fact was unknown at the time
of the prior art..

Trademarks / Jurisdiction

Federal Courts Lack Subject Matter Jurisdiction Over Declaratory Judgment Action Seeking Concurrent Use
By Carrie A. Shufflebarger

The U.S. Court of Appeals for the Third Circuit has now held that a federal district courts lack subject matter jurisdiction over an action seeking a declaration that both the plaintiff and the defendant are entitled to concurrent use trademark registrations. J&D Home Improvement, Inc. v. Basement Doctor, Inc., Case No. 03-1902, 2004 U.S. App. LEXIS 1008 (3rd Cir. Jan. 22, 2004).

Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d), provides that the U.S. Patent and Trademark Office (USPTO) may issue concurrent use trademark registrations either based on its own determination or when a court has finally determined that more than one person is entitled to use the same or similar marks. J&D and Basement Doctorwere each using the trademark BASEMENT DOCTOR in different geographical areas. J&D procured a federal trademark registration for the mark THE BASEMENT DOCTOR, and, thereafter, Basement Doctor unsuccessfully sought registration of its BASEMENT DOCTOR mark. Basement Doctor then initiated proceedings before the Trademark Trial and Appeal Board seeking cancellation of J&D’s registration based on priority of use.

J&D filed suit in federal court against Basement Doctor, seeking a declaration that J&D is entitled to a concurrent use registration for the mark THE BASEMENT DOCTOR for the entire country, except in those areas in which Basement Doctor could demonstrate actual use of the mark as of the filing date of J&D’s trademark registration. J&D argued that subject matter jurisdiction existed because § 2(d) authorized its action, and under § 39(a) of the Lanham Act, district courts "shall have original jurisdiction…of all actions arising under [this chapter]." Basement Doctor moved to dismiss, arguing that§2(d) authorizes a remedy only, not a § 39(a) "action." The district court agreed and dismissed the complaint, holding that § 2(d) is not a grant of original jurisdiction, and J&D had not pled the existence of an actual case or controversy that would otherwise confer the district court with jurisdiction over the action. J&D appealed.

The Third Circuit affirmed, finding that although a court may determine that concurrent registration is appropriate and thereby direct the USPTO to issue concurrent registrations, it may only do so in the context of actions over which the court already has subject matter jurisdiction on some other basis. Here, there was no other basis. The court noted that no actual controversy existed because J&D’s trademark registration was valid, because no competing mark had been registered by Basement Doctor, and neither party had alleged infringement against the other party.

McDermott Will & Emery

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