IN THIS ISSUE
Patents/Claim Construction - To Limit Claim Scope, Prosecution History Must Refer to Specific Claim Language
Patents/Claim Construction - Prosecution History Does Not Preclude Unrecited Steps in Process Claim
Patents/Claim Construction - U.S. Federal Circuit "Operates" to Cure Narrow Claim Construction
Patents/Claim Construction and Estoppel - Another District Court Reversed for Limiting Claims by Incorporating Limitations from Specification
Trademarks/Registration and Incontestability - Presumptions Arising from Incontestability Extend to Most Salient Part of Composite Mark
Trademarks/E-Commerce - Use of Mark in Post-Domain Name of a URL Does Not Constitute Trademark Infringement
Trademarks/Lanham Act - Ask Rosa Parks-Song Title Using Her Name May Mislead Public
Patents/Inequitable Conduct - Cancer Drug Patent Found Unenforceable for Failure to Disclose Non-Prior Art Article Material to Enablement
Patents/Litigation/Jurisdiction - Letters to the Plaintiff from Outside Forum Suffices for Personal Jurisdiction
Patents/Inter Partes Reexamination - USPTO Proposes Rules to Implement the 2002 Inter Partes Reexamination Amendments to the Patent Statute
To Limit Claim Scope, Prosecution History Must Refer to Specific Claim Language
By Paul Devinsky
The U.S. Court of Appeals for the Federal Circuit, revisiting an issue recently discussed in Rambus v. Infineon, reversed a district court's narrow claim construction noting that an applicant's inaccurate statement about its pending claims does not override the claim language as issued. Storage Technology Corp. v. Cisco Systems, Inc., Case No. 02-1232 (Fed. Cir. May 13, 2002).
The Storage Technology (StorageTek) patent (the `040 patent) relates to the efficient enforcement of network policies in a high-speed packet data network. In the system described in the `040 patent, network policy information that is used frequently by the processor is stored in cache memory for easy and fast accessibility. A processor in a network device implementing the invention examines the header of an arriving packet to determine whether, based on selection criteria, it is related to other packets that have been received.
StorageTek sued Cisco alleging infringement of the `040 patent. During the claim construction phase of the litigation, the district court construed the term "network policy" as used in the claims to mean "a filtering or auditing rule, which determines if and why a PDU (Protocol Data Unit) should be forwarded." The district court also construed the step of "caching policy identification information" to mean "storing information that identifies and is used to retrieve a separately cached instance of network policy." Thus, as construed by the district court, the claims required two caches: one for storing information identifying a policy and a second for storing a copy of the policy itself.
On the basis of that claim construction, Cisco moved for summary judgment of non-infringement. The district court, finding that Cisco has only one cache, found no literal infringement. StorageTek appealed, challenging the district court's construction of the "caching policy identification information" and "protocol data unit (PDU) network policy" claim limitations. The Federal Circuit first noted that the claim at issue was "a method claim with two steps-determining an instance of network policy to be applied to related PDUs based on the contents of one PDU, and caching policy identification information identifying that instance of network policy." In other words, the Court found that the plain language of the claim did not "include any step relating to caching the instance of network policy or any limitation indicating that the instance of the network policy is stored in or retrieved from a cache."
As viewed by the Federal Circuit, the district court erred by considering the phrase "policy caching method," or "policy cache," found in the preamble of the independent claims, to be a claims limitation. However, the Court determined that the written description and claims simply use the terms "policy caching method" and "policy cache" to "refer to the invention as a whole, not to the specific step of storing an instance of network policy or the cache that stores the instance of network policy."
The Federal Circuit also admonished the district court for relying on the written description, prosecution history and a declaration by Cisco's expert witness in limiting the claims to a cache for the instance of network policy. "In so doing, the district court disregarded the well-established rule that while proper claim construction requires an examination of the written description and relevant prosecution history to determine the meaning of claim limitations, additional limitations may not be read into the claims."
Finally, the Court noted that during prosecution "the patent applicants stated that the invention as recited in [the claims], the instance of network policy and the policy identification information are both cached." The Court conceded that "on its face this statement appears to limit claim scope." However, citing to its recent decision in Rambus v. Infineon, the Federal Circuit held that such a statement was not limiting. Rather, the Court found the statement from the prosecution history "erroneously suggests that the independent claims include a cache for the instance of network policy. The applicants' inaccurate statement cannot override the claim language itself, which controls the bounds of the claim."
By Cameron Weiffenbach
the district court de novo and found that it improperly imported limitations from the specification and from narrower or dependent claims into the patents' broad, independent claims. Specifically, the Federal Circuit held that the district court erred in construing the claim terms "filter bed" and "filter media" (as used in the asserted claims of the patents in suit, relating to the use and washing of an upflow filter in combination with upflow and downflow water filtration systems) unduly narrowly in limiting the claim to a system using multiple filter layers.
The declaratory judgment plaintiff, KP, the accused infringer, used the term "micro color" on its flyers beginning in 1990 and has continued to use the term on its pigment bottles since 1991.
In reversing the district court's grant of summary judgment of non-infringement, the Ninth Circuit said it was following the Supreme Court's decision in Park 'N Fly v. Dollar Park & Fly, which "implicitly acknowledged" that the words "Park 'N Fly," as the most salient feature of the logo trademark at issue in that case, was protected by the uncontestable registration. "Federal registration of a trademark endows it with a strong presumption of validity." In the Ninth Circuit, that presumption-including the specific presumption that the trademark is not generic-now extends to the most salient feature of composite marks, at least those that have become incontestable. Having broadened the scope of the trademark beyond that recognized by the district court, the Ninth Circuit reversed and remanded for a trial on the numerous genuine issues of material fact surrounding the determination of likelihood of confusion.
Practice Note: Accepted wisdom to date had been that composite marks offered trademark protection only against uses giving a rise to risk of confusion with the composite mark as a whole. Given the KP Permanent Make-Up holding, however, it would behoove registrants of composite marks, especially those that have become incontestable, to consider whether they have a broader scope of protection in the Ninth Circuit than they might have realized.
Use of Mark in Post-Domain Name of a URL Does Not Constitute Trademark Infringement
By John Dabney & Linda Stein
The U.S. Court of Appeals for the Sixth Circuit has held that use of another's trademark in the post-domain path of a URL does not violate the Lanham Act. Interactive Prods. Corp. v. A2Z Mobile Office Solutions, 326 F.3d 687 (6th Cir. 2003).
The plaintiff, IPC, owns the mark LAP TRAVELER for computer hardware. The defendant, A2Z, a competitor of IPC, used the term LAP TRAVELER in the post-domain path, i.e., /desks/floor/laptraveler/dkfl-lt.htm of the defendant's website located at a2zsolutions.com. The plaintiff sued for trademark infringement and the district court granted summary judgment in favor of A2Z.
The Sixth Circuit affirmed and noted that there is no trademark violation if the defendant does not use the challenged mark to identify the source of the products. Thus, the Sixth Circuit reasoned, there was no violation because the use of another's trademark in a post-domain path does not serve to identify the source of the products advertised. The court noted that "[t]he post-domain path of a URL does not typically signify the source. The post-domain path merely shows how the website's data is organized within the host computer's files."
the Federal Circuit affirmed a district court holding that a patent to a method of synthesizing taxol, a cancer drug, was unenforceable as having been obtained by inequitable conduct. Bristol-Myers Squibb Company v. Rhone-Poulenc Rorer, Inc., Case Nos. 02-1280, -1281 (Fed. Cir. April 25, 2003).
Vol. 5, No. 1, April 2000).
In Pub. L. 107-273, enacted on November 2, 2002, the inter partes reexamination statutes were amended to provide greater appeal rights to the third-party requester. (See, McDermott, Will & Emery's IP Review, Spring 2003, pages 2-3 or visit www.mwe.com/info/news/ipreview-spring03.htm.) These proposed amendments provide the inter partes reexamination requester the right to appeal a final decision by the Board of Patent Appeals (BPAI) to the U.S. Court of Appeals for the Federal Circuit and the right to participate in the patent owner's appeal of a final decision to Federal Circuit. The amendments also allow the patent owner the right to be a party in an appeal to the Federal Circuit taken by the third-party requester.
In implementing the right of the requester to appeal to the Federal Circuit, the proposed rules, 68 Fed. Reg. 22343-22353 (April 28, 2003) provide that "the patent owner or third party requester … who is a party to an appeal" to the BPAI and who is dissatisfied with the decision of the BPAI may appeal to the Federal Circuit and be a party to any appeal taken from the decision of the BPAI. Proposed Rule 1.983. Any appeal to the Federal Circuit is subject to the provisions proposed of Rule 1.979, which relate to the requirements that the right for a rehearing be exhausted and that the appeal is timely. Proposed Rule 1.983 (d)(e) also provides that either the patent owner or third-party requester may "cross appeal" from a decision of the BPAI where the opposing party has already taken an appeal. The proposed rule makes it clear that the provisions for appeals and cross appeals to the Federal Circuit apply only to reexaminations commenced after November 2, 2002.
Because of the statutory provision that estoppes a requester from later challenging the patent in a civil action, any ground that was raised or could have been raised in the inter partes reexamination, proposed Rule 1.959 provides a requester a one-month grace period to supply any missing fees or identify the missing claims. A similar grace period is also provided to the patent owner.
Any written comments on the proposed rules must be submitted by June 27, 2003.