IP Update, Volume 5, No. 3, March 2002
March 2002
IN THIS ISSUE
- Patents/Interference - Commercial Activities Can Qualify as Diligence Towards a Reduction to Practice
- Trademarks/Likelihood of Confusion - Comparison of Description of Goods Required to Determine Whether Confusion is Likely
- Design Patents/Infringment - "Ordinary Observer" Infringement Test Requires Consideration of the Whole Design
- Patents/Litigation - Expenses Associated with Video Found Not to Be Recoverable as "Costs"
Commercial Activities Can Qualify as Diligence Towards a Reduction to Practice
By Paul Devinsky
The U.S. Court of Appeals for the Federal Circuit, in reversing the Board of Patent Appeals and Interferences of the U.S. Patent and Trademark Office, has held that activities related to commercializing an invention can also serve as evidence of diligence toward an actual reduction to practice. Scott et al v. Koyama, et al. Case No. 01-1161, (February 27, 2002).
The present case arose in the context of the pre-1996 interference rules, where activity outside the United States was not relevant to establishing a priority date (except to establish an effective filing date under 35 U.S.C. §119). Koyama, the senior party, relied on his Japanese filing date. Junior party, Scott, who claimed the benefit of a U.K. filing date, bore the burden of showing conception in the United States before Koyama’s foreign filing date, plus either an actual reduction to practice in the United States before Koyama’s foreign filing date or for constructive reduction to practice, including diligence in the United States up to Scott’s foreign filing date.
Scott presented a case of conception in the United States based on a description of the process of the count contained in written materials disclosed to persons in the United States. For a showing of diligence, Scott presented evidence of activity directed to the building of a manufacturing plant to practice the process of the count. The board ruled that Scott’s activities in constructing a manufacturing plant were directed to commercializing the invention, not to reducing it to practice, and that these activities cannot serve as evidence of diligence.
The Federal Circuit reversed, holding that "the [manufacturing] preparations were all directly aimed at achieving actual practice of the process on a large scale in the United States. Thus, the preparations in the United States, directly aimed at commercial practice in the United States, were improperly excluded as evidence of diligence to reduction to practice."
Trademarks/Likelihood of Confusion
Comparison of Description of Goods Required to Determine Whether Confusion is Likely
By John Dabney
The U.S. Court of Appeals for the Federal Circuit has held that it is an error for the Trademark Trial and Appeal Board (TTAB) to fail to consider the description of goods in an opposer’s registration against the description of goods in the applicant’s application to determine whether confusion is likely in an inter partes proceeding. Hewlett Packard Co. v. Packard Press, Inc., 2002 U.S. App. LEXIS 3300 (March 1, 2002).
The opposer, Hewlett Packard, owns trademark registrations for HEWLETT PACKARD for, among other things, consultation services in the field of computer and data processing products, data processing and data storage systems and computers. The applicant, Packard Press, filed a trademark application for PACKARD TECHNOLOGIES for data and information processing and electronic transmission of data and documents via computer terminals. An opposition ensued and the TTAB awarded judgment in favor of the applicant on the ground that Hewlett Packard had failed to offer evidence that the parties’ respective products and services were related. The TTAB refused to consider the descriptions of goods and services in Hewlett Packard’s registrations and the applicant’s application as evidence on the issue of relatedness.
The Federal Circuit reversed and remanded with instructions to enter judgment in favor of Hewlett Packard as a matter of law. In so doing, the federal court held that it was legal error for the TTAB to fail to consider, as evidence of relatedness, the descriptions in Hewlett Packard’s registrations and the applicant’s application: "Because it must consider each DuPont factor for which it has evidence of record, the Board erred when it declined to compare the services described in [Applicant’s] application with the goods and services described in [Opposer’s] registrations." Based on its independent review of the record, the Federal Court then held that the goods and services as described in Opposer’s registrations were related as a matter of law to the services as described in Applicant’s application.
"Ordinary Observer" Infringement Test Requires Consideration of the Whole Design
By Matthew Weil
With a brief primer on design patent infringement analysis, the U. S. Court of Appeals for the Federal Circuit reaffirmed the importance of properly construing the claim of a design patent, including all of its figures, and then considering the accused device as a whole to determine whether it infringes the design as a whole. Contessa Food Products, Inc. v. Conagra, Inc., Case No. 01-1157 (March 13, 2002).
In the district court, Contessa won summary judgment that Conagra’s product infringed Contessa’s patent on the ornamental design of a serving tray with shrimp. On appeal, the Federal Circuit held that the district court had properly construed the claims and was correct in applying both the "ordinary observer" and the "point of novelty" tests to determine whether the accused product infringed the claimed design. According to the Federal Circuit, however, the district court committed clear error when it discounted the significance of the underside of the tray in its "ordinary observer" analysis on the grounds the underside of the tray is not visible or is at least partially obscured in the accused product at the point of sale.
While it remains true, the Court observed, that articles concealed or obscured "in normal use" are not proper subjects for design patents, "[w]e have construed ‘normal use’ in the design patent context to extend over ‘a period in the article’s life, beginning after completion of manufacture or assembly and ending with the ultimate destruction, loss, or disappearance of the article.’" Although the "ordinary observer" test of Gorham is formulated in terms of a hypothetical purchasing decision, nothing in Gorham restricts the comparison between the patented design and the accused product to features visible at the point of purchase. The Federal Circuit remanded the case to the district court with instructions to determine whether the patented design, as depicted in all of the drawing figures, was infringed.
Expenses Associated with Video Found Not to Be Recoverable as "Costs"
By Paul Devinsky
The U.S. Court of Appeals for the Federal Circuit has ruled that costs awarded to prevailing party under Rule 54(d) do not include expenses associated with production of a video depicting the accused device. Kohus v. Cosco, Inc., et al., Case No. 01-1358 (March 13, 2002.
After granting the defendants’ motion for summary judgment of noninfringement, defendants filed a bill of costs seeking approximately $1,000 in court reporter fees for deposition transcripts; approximately $3,000 for exemplification and copies of papers; and approximately $14,000 for exhibits, which included a video animation of the accused device. The district court awarded deposition costs of approximately $1,000 and, characterizing the video as an "exemplification," approximately $13,000 for the video. With respect to the video, the district court noted that "necessity is the essential criterion" for determining whether defendants are entitled to recover their costs. The parties dispute whether video animation costs are a recoverable "exemplification" under 28 U.S.C. § 1920.
Kohus argued that absent any authority for awarding costs for the video, the district court abused its discretion by making the award, analogizing the video to a physical model. Kohus further contended that, even if costs could properly be awarded for video models, the video in this case was not "necessary" because the same information could have been conveyed through the patent’s figures, samples of the accused play yards and expert testimony. The defendants argue that the term "exemplification" as used in the statute should be broadly construed to effectively include all kinds of demonstrative evidence.
A split Federal Circuit panel reversed the award, rejecting defendants’ contention that "exemplification" should be construed broadly to encompass a video exhibit. Viewing the issue as a procedural question on which the law of the regional circuit (here the Sixth Circuit) governed, the Federal Circuit first noted the absence of Sixth Circuit support for an expansive interpretation of the term "exemplification." The panel further noted that Congress did not use the broad phrase "demonstrative evidence" in §1920.
Looking to and quoting from the closet Sixth Circuit case on point, Swan Carburetor v. Chrysler Holdings, a case involving a physical model (not a video), the Federal Circuit noted that "in most patent controversies involving mechanical structures, physical models are of great assistance to the court, but after all, they are ‘essentially explanatory and argumentative and, in that respect merely aids to the argument of counsel and the explanations of expert witnesses.’" The Federal Circuit held that the video exhibit in this case served the same purpose as a physical exhibit.
Notably, the defendants’ own expert repeatedly calls the exhibit a "video model" in the report submitted to the court with the defendants’ motion for summary judgment. Thus, because the video is a substitute for a physical model and was created as an aid to the argument of counsel and the explanations of defendants’ expert witness, Swan indicates that the Sixth Circuit would not permit an award of costs for the video.
