BOSTON PATENT LAW ASSOCIATION NEWSLETTER Serving the New England Intellectual Property Bar Since 1924 June 2002 Volume 33, Issue 2 The annual Boston Patent Law Associa- tion Judges Dinner was held at the Federal Courthouse on May 3, 2002. Over 200 mem- bers and guests were in attendance, includ- ing judges and magistrate judges from the U. S. District Court for the District of Massa- chusetts. Professor Donald Chisum of the Santa Clara University School of law was the fea- tured speaker. Professor Chisum is a re- nowned figure in the intellectual property community, most notable as the author of the fifteen-volume treatise “Chisum on Patents.” Professor Chisum offered an entertain- ing survey of selected patents including a case directed to methods for swinging on a swing, followed by a critique of the Fed- eral Circuit’s continued grappling with the written description requirement for bio- technology inventions as most recently ap- plied in Enzo Biochem, Inc. v. Gen-Probe Inc., 285 F.3d 1013, 62 USPQ2d 1281 (Fed. Cir. 2002). Professor Donald Chisum of the Santa Clara University School of Law Photos Continued on Page 8 Annual BPLA Judges Dinner I NSIDE THIS I SSUE I N THIS I SSUE President’s Message Member Dues FDA Regulation & Biotechnology Seminar The New Race to the Courthouse Electronic Trademark Filing Page 2 Page 3 Page 3 Page 4 Page 5 On May 28, 2002, the U.S. Supreme Court issued its much anticipated decision and unanimously vacated the Federal Circuit’s holding in Festo Corp. v. Shoketsu Kinzoku Kogyo K.K. Co. The Supreme Court rejected the Federal Circuit’s literalism, which had imposed a substantially “complete bar” against use of the doctrine of equivalents where an applicant had amended his or her claims during prosecution. The Supreme Court also noted that the Federal Circuit ignored instructions set forth in Warner- Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), that courts must be careful not to disrupt the settled expectations of the inventing community. The Supreme Court indicated that pursuant to Warner-Jenkinson a patentee has the burden of showing that an amendment does not surrender the particular equivalent in question. The Supreme Court further indicated that prosecution history estoppel can apply to any narrowing amendment related to any Patent Act requirement including 35 U.S.C. §112. The Supreme Court remanded the case to the Federal Circuit to determine how prosecution history estoppel limits the range of equivalents available. While the Supreme Court removed an absolute bar against the availability of the doctrine of equivalents based on any narrowing amendments, practitioners are concerned that the decision may strengthen a presumption against patentees that narrowing amendments exclude equivalents existing in the “territory between the original claims and the amended claim.” Further guidance may be provided by the Federal Circuit’s revisit of the issues on remand. Festo Top Ten TTAB Decisions Annual Judges’ Dinner Photos BPLA Member News Positions Available Page 6 Page 8 Page 9 Page 9
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BOSTON PATENT LAW ASSOCIATIONNEWSLETTER Serving the
New EnglandIntellectual
Property BarSince 1924
June 2002 Volume 33, Issue 2
The annual Boston Patent Law Associa-tion Judges Dinner was held at the FederalCourthouse on May 3, 2002. Over 200 mem-bers and guests were in attendance, includ-ing judges and magistrate judges from the U.S. District Court for the District of Massa-chusetts. Professor Donald Chisum of the SantaClara University School of law was the fea-tured speaker. Professor Chisum is a re-nowned figure in the intellectual propertycommunity, most notable as the author of thefifteen-volume treatise “Chisum on Patents.”
Professor Chisum offered an entertain-ing survey of selected patents including acase directed to methods for swinging on aswing, followed by a critique of the Fed-eral Circuit’s continued grappling with thewritten description requirement for bio-technology inventions as most recently ap-plied in Enzo Biochem, Inc. v. Gen-Probe Inc.,285 F.3d 1013, 62 USPQ2d 1281 (Fed.Cir. 2002).
Professor Donald Chisumof the Santa Clara University School of Law Photos Continued on Page 8
Annual BPLA Judges Dinner
INSIDE THIS ISSUE
IN THIS ISSUEPresident’s Message
Member Dues
FDA Regulation & Biotechnology Seminar
The New Race to the Courthouse
Electronic Trademark Filing
Page 2
Page 3
Page 3
Page 4
Page 5
On May 28, 2002, the U.S. Supreme Courtissued its much anticipated decision andunanimously vacated the Federal Circuit’s holdingin Festo Corp. v. Shoketsu Kinzoku Kogyo K.K. Co.The Supreme Court rejected the Federal Circuit’sliteralism, which had imposed a substantially“complete bar” against use of the doctrine ofequivalents where an applicant had amended hisor her claims during prosecution. The Supreme Court also noted that the FederalCircuit ignored instructions set forth in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520
U.S. 17 (1997), that courts must be careful notto disrupt the settled expectations of the inventingcommunity. The Supreme Court indicated thatpursuant to Warner-Jenkinson a patentee has theburden of showing that an amendment does notsurrender the particular equivalent in question.The Supreme Court further indicated thatprosecution history estoppel can apply to anynarrowing amendment related to any Patent Actrequirement including 35 U.S.C. §112. The Supreme Court remanded the case to theFederal Circuit to determine how prosecution
history estoppel limits the range of equivalentsavailable. While the Supreme Court removed an absolutebar against the availability of the doctrine ofequivalents based on any narrowing amendments,practitioners are concerned that the decision maystrengthen a presumption against patentees thatnarrowing amendments exclude equivalentsexisting in the “territory between the originalclaims and the amended claim.” Further guidancemay be provided by the Federal Circuit’s revisitof the issues on remand.
Festo
Top Ten TTAB Decisions
Annual Judges’ Dinner Photos
BPLA Member News
Positions Available
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Page 8
Page 9
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The past several months have been veryactive for our organization, and I would liketo take this opportunity to briefly summarizesome of our recent activities, and mention afew upcoming events that are currently in theplanning stages. Our Patent Practice Committee held aluncheon meeting at the Omni Parker Houseon March 7. The speakers included MariaEliseeva, from Brown & Rudnick, and EdwardR. Kazenske, Deputy Commissioner forResources and Planning at the USPTO. Theadvantages and pitfalls of electronic filing atthe PTO were explored, and the current statusof the electronic filing program was discussedby Mr. Kazenske. Mr. Kazenske also used theopportunity to explain that the PTO isirradiating incoming mail, and provided somehints on how to ensure that mail is deliveredto the PTO in a timely manner, such as byfaxing or through the use of electroniccommunications. On March 26, the BPLA sponsored a PCTseminar, which was attended by about 140people. The seminar was intended to providean update of recent events in the PCT, andwas conducted by speakers well known in thisfield: Louis Maassel from WIPO, CharlesPearson, Director of PCT legal administrationat the USPTO, David Reed, a senior patentadvisor at the Proctor & Gamble Company inCincinnatti, and our own Maria Eliseeva ofBrown & Rudnick. A luncheon and a receptionfollowing the seminar were provided. By allreports, the Swissotel provided excellentaccommodations for this event. Our thanksgo to Maria Eliseeva for organizing this event,and for speaking. The Biotechnology Committee held ameeting at the Seaport Hotel, on the topic ofFDA Regulation and BiotechnologyRegulation, on April 11, 2002. This meeting,organized by our Biotechnology Committee,featured speakers from the Washington, DClaw firm of Covington & Burling. TreasurerDoreen Hogle organized this very timely event. Our 78th annual Judges Dinner was heldon the evening of May 3. The dinner waspreceded by a reception, and both the receptionand the dinner were held at the FederalCourthouse. There were approximately 200attendees this year, including 6 judges fromthe Federal District Court. Our featured guestspeaker was Donald S. Chisum, Professor ofLaw at Santa Clara University in California.Professor Chisum is the author of the wellknown treatise “Chisum on Patents”. The title
of Professor Chisum’s talk was “Patent Law:2 Centuries of Challenges for the Judiciary”. In addition to presenting a humorousoverview of patents for the uninitiated,
Professor Chisum delved into several recentcases on the enablement and writtendescription requirements, including the EliLilly case, and the recently decided Enzo case.For those who have not read the Enzo case,the cite is Enzo Biochem, Inc. v. Gen-Probe, Inc.,et al, 285 F.3rd 1013 (Fed. Cir. 2002);U.S.P.Q.2d 1289. In Enzo, the Court held thatipsis verbis support in the patent specificationand a deposit of biological material wereinadequate to satisfy the written descriptionrequirement of the first paragraph of 35 U.S.C.112. Professor Chisum opined that this caserepresents the furthest extension of thewritten description requirement by the Courtto date. It was disappointing that none of theCAFC judges could attend our judges dinnerthis year. Last year, both Judge Lourie andJudge Michele were in attendance. However,Judge Lourie did remind me that that theCAFC will be sitting in Boston during the weekof October 7, and that there would be ampleopportunity for the bench and bar to meet atthat time. In connection with that visit, theBoston Patent Law Association is planning tohost a dinner at the Federal Courthouse on theevening of Wednesday, October 9, 2002. Pleasemark that date on your calendars. There maybe other events planned around that visit, andwe will let you know as soon as the details areavailable. The Federal Circuit Bar Associationis also involved in the coordination of thatevent. On the Saturday immediately followingthe Judges Dinner, I had an opportunity to
attend the Massachusetts State Science Fair,where I presented an award of $1000 to JasonPrapas. Jason is a 12th grade student atFalmouth High School who developed aunique environmentally friendly energy source.Past President Tim French was also on hand atthis event to present the Frederick P. FishAward on behalf of Fish & Richardson. The Copyright Committee, cochaired byTom Saunders and Buzz Gagnebin, hosted aninformal breakfast meeting on May 14, todiscuss the Copyright Term Extension Act(“CTEA”) in light of recent questions regardingthe constitutionality of the CTEA. Finally, the Computer Law Committee,cochaired by Ed Porter and Karen Buchanan,held a seminar on May 22, at the Omni ParkerHouse. The topics discussed at the seminarincluded the Digital Millennium Copyright Act,rights in databases, the protection of software,and Internet-related copyright issues. Thespeakers were Michael Albert of Wolf,Greenfield & Sacks, Mark Fisher of Palmer &Dodge, and Tom Hemnes of Foley, Hoag andEliot. Many of you are aware that the BostonPatent Law Association is a member of theNational Counsel of Intellectual Property LawAssociations (“NCIPLA”). Unfortunately, thatorganization was unsuccessful in its attemptsto reorganize, and the member organizations,of which we are one, voted in favor ofdissolution. The remaining issues to be resolvedincludes the disposition of funds left afterdissolution. One proposal would donate thefunds to Inventure Place to further theactivities of that organization. These issuesshould be resolved this year, and we will letyou know the outcome when arrangementsare finalized. With summer rapidly approaching, we arealready making plans for our traditional summerouting. This year, we will be chartering a boatfor a sunset cruise on the evening of July 12.The boat will be leaving from the Rowes WarfPier at about 6:00 pm, returning at about 9:00pm. There will be no charge for the cruise,which will include food service, and there willbe a cash bar as well. As space on the boat islimited, I would encourage all those interestedin attending to contact us early. You can emailus at [email protected]. In anyevent, and whateveryour plans for the summer may be, please havea safe and happy one.
President’s Message
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Gregory AharonianJessica S. AndersenFloyd AndersenAndré J. BahouDeborah BarfieldMaria BautistaRegina S. BautistaNancy BechetMaria M. BjornholmDuane C. BlakeDeborarh E. BlodgettSteven A. BossoneScott A. BrownAaron J. BullwinkelPaul BurgessTara C. CacciabaudoConnie M. CaronJune A. CaseyAlakananad ChatterjeeHeather CiurylaPaul T. ClarkJudith D. CohenMatthew E. ConnorsRichard A. CovelElizabeth Anne CrawfordKaren E. CrespoBrian C. DauphinMary J. DawsonRobert J. DeckerCarl M. DeFranco, Jr.Peter M. DichiaraFrederick Dietz, IIISusan M. DinsmoreRobert J. DohertyDouglas C. DoskocilTimothy J. Douros
Lorraine Miller DoyleLucy ElandjianJohn M. England, Jr.Heidi M. ErlacherPaula Campbell EvansMichael I. FalkloffEugene A. FeherKerry A. FlynnMarianne FlynnVincent Froio, Jr.Joseph E. FunkTherese E. GalanteRichard E. GamacheDennis R. GannonDebra A. GawJoseph M. GellerCarlos J. GimenoDavid J. GlassJohn C. GoreckiKerri GrenacheJoseph G. Hadzima, Jr.Thomas E. HagarDaniel W. HalstonSharon F. HausdorffPaul J. HayesNorma E. HedersonEric HenshawPatricia HilleryThomas E. HoranJeffrey D. HsiGeorge C. JensMary Raynor JimenezBarry D. JosephsWarren KaplanCatherine KaraThomas Kelley
Wayne M. KennardElizabeth E. KimTim KingShannon KnightKristin E. KonzakLinda D. KostrubanicCynthia KozakiewiczPhyllis K. KristalToby H. KusmerSteven R. LazarKevin S. LemackPeter H. LemieuxFaustino A. LichaucoLaura LiebermanStanley C. MahDonald E. MahoneyVernon C. MaineTerrence MartinSandra MarxenAllison McCabeBarbara McCarthyWilliam H. McNeillKim M. MeyerRama B. NathMargarita NavarroKarl D. NormingtonLois A. O’ConnellPatrick J. O’SheaScott A. OuelletteJoanne PappasJacqueline M.K. PetrilloEdmund R. PitcherEdward PodszusFrank P. PorcelliJoseph P. QuinnEric P. Raciti
BPLA MEMBERS WHO HAVE NOT PAID 2002 DUES
Kathy RaskindMichael T. RenaudJoseph S. RomanowMargaret D. RosaScott D. RothenbergerF.B. SacedoThomas M. SaundersDonna E. SchererMark D. SeltzerJustin J. SergioPatricia A. SheehanInna ShtivelbandAmanda SingmasterNicholas I. Slepchuk, Jr.Michelle SmallChristopher W. StamosMichael Paul StanleyPeter StecherCarolyn SullivanColleen SuperkoPatricia TocciDeborah U. VergaDiane VitelloShelby WalkerLisa A. WalshW. Eric WebostadErnst B. WegleinNed WhalenEmily WhelanSandra Wysocki CapplisGwendolyn H. YipKimberly A. Young
FDA Regulation and Biotechnology Seminar
By Helen LeeHamilton, Brook, Smith & Reynolds, P.C.
On April 11, 2002, the Biotechnology Committee sponsored a morning seminar at the Seaport Hotel on FDA Regulation andBiotechnology. About forty-seven members were in attendance to hear guest speakers Michael S. Labson, Esq. and Elizabeth S. Weiswasser,Esq., both of Covington & Burling, Washington, D.C., share their insights on how to bring a new prescription drug or biological productto market. Mr. Labson began by providing an overview of the prescription drug and biologics FDA approval process, including the statutoryframework for approvals, definitions for drugs and biological products, differences in the regulation of drugs and biologics, clinical trialrequirements, product approval requirements and standards for FDA review, post-approval requirements and other compliance issues. Ms. Weiswasser then discussed the Hatch-Waxman Act, including the generic drug approval process, abbreviated new drug application(ANDA) and 505(b)(2) application approval requirements, statutory and regulatory requirements and timing for Orange Book listing,implications of listing, requirements for patent certifications by ANDA filers, Paragraph IV process, 180-day exclusivity and patent termextension.
Pursuant to the BPLA By-Laws, notice is hereby given of the expiration of memberships granted to the following individuals for failure to payyear 2002 dues. Unless payments are received by the treasurer before July 31, 2002, the following individuals will be removed from the mem-bership roster (the dues payment form can be found on the BPLA Web site).
THE BOSTON PATENT LAW ASSOCIATION NEWSLETTER - June 2002
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The New Race to the CourthouseBy Kathleen B. Carr
Edwards & Angell, LLP In The Holmes Group, Inc. v. Vornado Air CirculationSys., Inc., 122 S. Ct. 1889, 2002 WL 1155866(Jun. 3, 2002), the U.S. Supreme Court held thatthe “well-pleaded complaint rule” governs the U.S.Court of Appeals for the Federal Circuit’sjurisdiction. The Court determined that the FederalCircuit did not have jurisdiction over the appealbefore it “[b]ecause petitioner’s complaint did notinclude any claim based on patent law.” Id. at1895. The Court rejected the respondent’sargument that a patent law counterclaim providesa proper basis for subject matter jurisdiction. Id.at 1893. In so ruling, the Court distinguished precedentset by the U.S. Court of Appeals for the FederalCircuit in Aerojet-General Corp. v. Machine Tool Works,Oerlikon-Buehrle Ltd., 895 F.2d 736 (Fed. Cir. 1990)(en banc) (unanimous decision). In Aerojet, theFederal Circuit held that because a compulsorycounterclaim for patent infringement has its ownindependent jurisdictional basis under 28 U.S.C. §1338, the district court has subject matterjurisdiction over actions in which such compulsorycounterclaims are asserted because jurisdiction insuch actions is based “in part” on § 1338. Id. at745. The Aerojet court reasoned that a patent lawcounterclaim “is a separate, well-pleaded claimwith its own jurisdictional basis and that basis issection 1338.” Id. at 742. Based on thatreasoning, the Aerojet court held that it has § 1295appellate jurisdiction over appeals of actions inwhich patent law counterclaims were asserted inthe district court. Id. at 745. The Holmes Courtdistinguished Aerojet on the basis that the Aerojetcourt focused on the court’s ability to retainjurisdiction over a patent law counterclaim if theinitial complaint is dismissed. Holmes, 122 S. Ct.at 1895 n.4. The Holmes Court then held thatpatent law counterclaims cannot provide a properbasis for Federal Circuit jurisdiction because thewell-pleaded complaint rule governs the court’sjurisdiction. Id. at 1895. On a first read, the Holmes majority opinionappears to elevate form over substance, and JusticeGinsberg’s concurring opinion, in which sheadopted the reasoning set forth in Aerojet andconcluded that the Federal Circuit has exclusivejurisdiction over appeals in which a patent lawcompulsory counterclaim was brought in theunderlying action, is more compelling. On furtherreflection, though, it becomes clear that the Court’smajority opinion is required by the applicable rules. In Holmes, the Court set forth two requirementsthat must be satisfied in order for the FederalCircuit to assert its exclusive jurisdiction over anappeal: (1) the appeal must be from “a finaldecision of a district court of the United States… if the jurisdiction of that court was based, in
whole or in part, on [28 U.S.C. §] 1338 . . . “; and(2) the civil action before the district court musthave arisen “under any Act of Congress relatingto patents . . . .” Id. at 1892-93 (emphasis inoriginal) (quoting and explaining 28 U.S.C. §§1925(a)(1), 1338(a)).1 Noting that § 1338(a)“uses the same operative language” as § 1331,which confers general federal question jurisdictionupon the district courts, the Court determinedthat the “well-pleaded-complaint rule” governswhether a case arises under federal law for thepurposes of § 1338. Id. at 1893. The Courtfurther recognized that its “prior cases have onlyrequired [it] to address whether a federal defense,rather than a federal counterclaim, can establish‘arising under’ jurisdiction.” Id. After recognizingthat its previous cases had not addressed whethera federal counterclaim suffices to establish “arisingunder” jurisdiction, the Court rejected such a basisfor jurisdiction in favor of a test that turns solely“on the face of the plaintiff ’s properly pleadedcomplaint.” Id. (quoting Caterpillar v. Williams,482 U.S. 386, 392 (1987)). The Court pointed out that federal jurisdictionbased on patent law, like federal questionjurisdiction, “cannot depend upon the answer,”and accordingly, “a counterclaim - which appearsas part of the defendant’s answer, not as part ofthe plaintiff ’s complaint – cannot serve as thebasis for ‘arising under’ jurisdiction.” Id. at 1893-94. The Court further rejected the respondent’sargument that “arising under” jurisdiction shouldbe interpreted differently when testing the FederalCircuit’s jurisdiction than when testing a districtcourt’s jurisdiction in order to further the goal of“promoting the uniformity of patent law.” Id. at1894-95. Justice Stevens concurred in part and concurredin the judgment. He acknowledged the existenceof “well-reasoned precedent” supporting aninterpretation of the § 1295(a)(1) “in whole orin part” language as encompassing compulsorycounterclaims based on patent law. Afterrecognizing that precedent, however, JusticeStevens concluded that he ultimately waspersuaded that the Federal Circuit’s exclusivejurisdiction must be limited to cases in whicheither the original complaint or an amendedpleading filed by the plaintiff contains a patentclaim. Id. at 1895-98. Justice Ginsberg, with Justice O’Connorjoining, concurred in the judgment based on thelack of an actually adjudicated patent claim inthe case before the Court. She concluded,however, that a compulsory counterclaim arisingunder federal patent law confers exclusiveappellate jurisdiction upon the Federal Circuitover an actual adjudication of such a claim. That
concurring opinion cited in support of thatconclusion the reasons set forth in Aerojet. Id. at1898. “The linguistic consistency” lauded in theCourt’s majority opinion in applying the samewell-pleaded complaint rule to determine boththe Federal Circuit’s jurisdiction and a districtcourt’s federal question jurisdiction does havesome appeal. See id. at 1893. In effect, though,the Court has elevated form over substance, andhas sacrificed patent law substantive uniformityfor the sake of procedural uniformity. TheCourt, however, did not really have much choicein the matter. In fact, the Court evenacknowledged this: “Our task here is not todetermine what would further Congress’s goalof ensuring patent law uniformity, but todetermine what the words of the statute mustbe fairly understood to mean.” Id. at 1895.While Justice Ginsberg’s conclusion serves bothlogic and patent law uniformity, the majority’sinterpretation, unfortunately, is the one thecurrent jurisdictional statutes require. The Court’s decision also is the one requiredby the Federal Rules of Civil Procedure. Thoserules do not recognize a counterclaim as anindependent pleading. A counterclaim, ifasserted, is considered part of a defendant’sanswer. Rule 7 Provides as follows:
(a) Pleadings. There shall be a complaint andan answer; a reply to a counterclaimdenominated as such; an answer to a cross-claim,if the answer contains a cross-claim; a third-party complaint. . .; and a third-party answer. . .. No other pleading shall be allowed, exceptthat the court may order a reply to an answer ora third-party answer.
Fed. R. Civ. Proc. 7. In order for the well-pleaded complaint rule to be applied consistentlywith the Federal Rules of Civil Procedure,therefore, the claims asserted in a counterclaimas part of a defendant’s answer cannot providethe basis for federal court jurisdiction. The Court’s decision not only restricts theFederal Circuit’s jurisdiction, but it also will havesignificant ramifications in the removal arena.The Court indirectly acknowledges that itsdecision applies to removal cases. See Holmes,122 S. Ct. at 1894 (recognizing that the ruleproposed by the respondent, which the Courtrejected, would have allowed a defendant toremove a case by raising a federal counterclaim).A consistent application of Holmes will requirestate court actions in which patent lawcounterclaims are asserted to stay in state court.
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THE BOSTON PATENT LAW ASSOCIATION NEWSLETTER - June 2002
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President’s Message Continued from page 1
Race to the CourthouseContined from page 4
THE MOVE TO TRADEMARK ELECTRONIC FILINGBy Andrea A. Jacobs & Andrew O’Connor, Edwards & Angell, LLP
Effective June 24, 2002, the USPTO isamending its rules to provide that certaintrademark documents sent by United StatesPostal Service (USPS) via Express Mail servicewill no longer be considered to have been filedwith the USPTO on the date of deposit withthe USPS, but rather will be deemed to havebeen filed on the date of receipt in the USPTO(37 CFR §1.10(a)). The trademark documentseffected by this rule are those for which anelectronic form is available in the TrademarkElectronic Application System (TEAS),namely, (i) new applications for registrationof trademarks (ii) amendments to allege use;(iii) statements of use; (iv) requests forextension of time to file a statement of use;(v) affidavits of continued use or excusablenonuse; (vi) applications for renewal; (vii)affidavits of incontestability; (viii) combinedaffidavits under sections 8 and 15; and (ix)combined filings under section 8 and 9.
Under the revised rule, if an electronic formis available in TEAS, but the applicant files apaper document, the filing date of the
document will be the date of receipt in theUSPTO, even if such document is deliveredby Express Mail. By filing those forms thatare available in TEAS using eTEAS, theUSPTO will consider the date of submissionas the date of receipt on the USPTO server.TEAS provides filers with an assurance thatthe document submitted was receivedthrough a “Success!” screen, which appearswithin seconds of completing the filingprocess, and, in cases of new applications,includes the serial number assigned to suchapplication. Additionally, the USPTO providesemail acknowledgements which include a dateand time stamp evidencing the official dateand time of receipt by the USPTO (the timethe transmission of such filing commencedis not a factor in determining the official dateand time of filing).
As the USPTO makes additional formsavailable in TEAS, the scope of this rule willexpand to cover such additional forms. Theelectronic forms currently available on TEAScan be found at http://www.uspto.gov/teas/
index.html. This web page provides completeinstructions and details regarding electronicfiling.
In a further effort to encourage e-filing oftrademark documents, the USPTO proposesto amend its rules to require payment of a$50.00 paper-processing fee when a partysubmits a paper form instead of anelectronically transmitted form available inTEAS. Thus, similar to its efforts toencourage e-filing and discourage paper filingstated above in connection with the ExpressMail rule change, the USPTO is looking toadd a $50.00 premium on the filing fee of alldocuments for which an electronic form isavailable on TEAS, but the applicant elects tosubmit a paper copy. The $50.00 paper-processing fee was calculated and determinedby the USPTO and reflects the additionalaverage cost of processing a paper documentrather than an electronic document within theTrademark Operation. This proposed rulehad been open for comments.
Now, under Holmes, a patent infringer whodesires to stay put in state court, or even one whofavors a particular circuit’s application of arelevant patent rule, has a strong incentive to runto the courthouse. All sorts of potential statelaw claims now can provide the basis for keepinga tough patent case out of both federal districtcourt and the Federal Circuit. A litany of statelaws claims, such as state law trade dress, commonlaw trademark, state law competition and/orunfair and deceptive business practices, to namea few, all potentially could provide an anchor instate court. “The best defense is a good offense”may become the mantra of those who wish toavoid federal court in patent cases. Patent law uniformity, however, might notbe doomed. One potential way around thisjurisdictional quagmire is to try to establish that apatent law claim does not amount to a compulsorycounterclaim, and bring the patent claim in anindependent action. In Holmes, it apparently wasundisputed that the patent infringementcounterclaim at issue qualified as a compulsorycounterclaim. Under Fed. R Civ. Proc. 13(a), acompulsory counterclaim is one that “arises out
of the transaction or occurrence that is the subjectmatter of the opposing party’s claim.” At least insome cases, the argument might be made that aclaim arising under federal patent law does notarise out of the transaction or occurrenceproviding the foundation for the state law claims.Such a construction would not conflict with thepolicy concerns protected by the Holmes Court’sdecision including allowing the plaintiff to remainthe “master of the complaint” and protectingthe plaintiff ’s choice of forum; keeping state lawclaims in state court while allowing federal claimsto be removed to federal court (and thus notunreasonably expanding the class of removablecases or interfering with state governance); andstill preserving the jurisdictional well-pleadedcomplaint rule “quick rule of thumb” the HolmesCourt found so appealing. See Holmes, 122 S. Ct.at 1894. For example, the Fifth Circuit recentlyrecognized a limited exception to the compulsorycounterclaim rule. See Tank Insulation Int’l, Inc. v.Insultherm, Inc., 104 F.3d 83 (5th Cir. 1997). InTank Insulation, the court construed a SupremeCourt decision, Mercoid Corp. v. Mid-Continent Inv.
Co., 320 U.S. 661 (1944), as “carv[ing] out anexception to Rule 13(a) for antitrust claims basedon [patent] infringement actions.” See id. at 86(recognizing that courts have not construedMercoid uniformly, but joining the Ninth Circuit,in Hydranautics v. Filmtec Corp., 70 F.3d 533 (9thCir. 1995) in following Mercoid). The TankInsulation court recognized that the criteria fordeeming the antitrust counterclaim at issue acompulsory counterclaim were satisfied, but wenton to interpret Mercoid as carving out an antitrustexception to the compulsory counterclaim rule.A court might hold the opposite true as well:Why not recognize an exception to the compulsorycounterclaim rule for patent law claims? Afterall, such claims, while potentially arising out ofthe same transaction or occurrence as thegravamen of various other state, or even federal,law claims, could be characterized like theantitrust claim asserted in Mercoid: such a claim is“more than a defense; it is a separate statutorycause of action.” See Tank Insulation, 104 F.3d at87 (quoting Mercoid, 320 U.S. at 671). Theproblem with this approach, however, is that it,
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Since the turn of the century (Jan.1, 2000 for our purposes), the Trademark Trialand Appeal Board (TTAB) has rendered morethan 1,600 decisions in ex parte appeals fromfinal refusals to register and in inter partesopposition and cancellation proceedings.Although most Board dispositions involve arelatively straightforward application ofstandard TTAB doctrine to the particular factpattern at hand, the new century has alreadyyielded noteworthy rulings in a number of areas– for example, the application of the federaldilution statute in the TTAB context, theanalysis of trade dress distinctiveness andfunctionality, and the recognition of new e-commerce terminology as non-distinctive. Atthe same time, the Board’s effort to manage itsgrowing docket of cases has led to a lessforgiving attitude toward noncompliance withthe Trademark Rules of Practice.
The TTAB currently deems aboutone in 25 decisions to be citable as precedent;those citable cases are then published in theUnited States Patent Quarterly. Of the 60 or socitable decisions of this century, the following10 arguably are of most practical significanceto the TTAB practitioner.
1. Toro Co. v. ToroHead, Inc., 61USPQ2d 1164 (TTAB 2001). In December2001, the TTAB issued its long-awaited firstdecision applying the provisions of the FederalTrademark Dilution Act of 1995 (FTDA). TheToro decision is significant not just for its directimpact on TTAB proceedings, but also for itspotential impact on federal court litigationunder the FTDA: One of the reasons Congressamended the FTDA in 1999 to permit dilutionclaims in TTAB opposition and cancellationproceedings was the belief that the Board“would give guidance to litigants and theTrademark Bar, through precedent, withrespect to such issues as what qualifies as a‘famous’ mark, and what constitutes dilution,whether by blurring or tarnishment.” H.R.Report No. 106-250, 106th Cong., 1st Session(1999), at 6. In Toro, the TTAB delivered aclear message: Dilution is an “extraordinaryremedy” reserved for “truly famous” marks.
Angnted
An augmented panel of the Board held thatthe mark ToroMR & Design for “very lowreluctance, thin film magnetic reading and
writing heads for sale to OEM manufacturersof high performance computer disk drives” isnot likely to cause confusion with and doesnot dilute Opposer’s mark TORO registeredfor various products and services relatingprimarily to lawn and ground care. The Boardfound confusion unlikely because of thedissimilarity of the respective products andservices and the differences in channels oftrade. As to dilution, the Board provided alengthy discussion of Section 43(c) of theTrademark Act and its evidentiary requirements,concluding, among other things, that Opposer’sevidence – use since 1914, annual sales of morethan $1 billion, annual advertising expendituresof more that $35 million, 26 federalregistrations, and brand dominance in variousmarkets – was not sufficient to prove theTORO mark famous under the FTDA.
2. Recot, Inc. v. M.C. Becton, 56USPQ2d 1859 (TTAB 2000). On remand fromthe U.S Court of Appeals for the FederalCircuit (54 USPQ2d 1894 (Fed. Cir. 2000)),the Board found a likelihood of confusionbetween the mark FRITO LAY for snack foodsand FIDO LAY for edible dog treats. Mindfulof the CAFC’s instruction that “the fame ofthe mark must always be accorded full weightwhen determining the likelihood ofconfusion,” the Board, with obviousreluctance, ruled that the dissimilarity of theparties’ goods was not sufficient to outweighthe evidentiary elements favoring Opposer: thefame of the FRITO LAY mark, the similarityof the two marks, and the nature of the goodsas impulse-purchase items.
Subsequently in Toro, the Board didnot accord the TORO mark such a broad scopeof protection in the likelihood of confusionanalysis. It considered the recognition andrenown of the TORO mark to be a strongfactor in the Toro Company’s favor, but onethat was outweighed by the dissimilarities inthe goods and services, the sophistication ofthe purchasers of ToroHead’s goods, and thedifferences in channels of trade. It will beinteresting to see how the TTAB, in light of itsnarrow reading of the dilution remedy, treatsthe 5th duPont factor (the fame of the mark) infuture likelihood of confusion analyses, andhow the Federal Circuit addresses the Board’streatment of these issues.
3. In re Styleclick.com Inc. , 57USPQ2d 1445 (TTAB 2000). Whileacknowledging that various “E-” prefix markshave been registered on the Principal Registerin past years, the Board stepped into the newcyber-century when it observed that the prefix
“E-” is “commonly recognized and understoodby virtually everyone as a designation for theInternet.” It concluded that “[w]hen this non-source-identifying prefix is coupled with thedescriptive word ‘fashion,’ the mark EFASHION, as a whole, is merely descriptivefor Applicant’s goods and/or services”(relating to retrieval of fashion informationand shopping for fashions). In a companioncase, In re Styleclick.com Inc., 58 USPQ2d 1523(TTAB 2001), the Board employed the samereasoning to find the mark VIRTUALFASHION merely descriptive for softwareand electronic retailing services in the fieldof fashion.
4. In re Creative Beauty
Innovations Inc., 56 USPQ2d 1203 (TTAB2000). In this packaging trade dress case, theBoard ruled that Applicant’s container forbath products (having both concave andconvex sides, and a cap elongated on one side)is an inherently distinctive trademark. TheTTAB reviewed the state of the law in theaftermath of Wal-Mart Stores, Inc. v. SamaraBros., Inc., 529 U.S. 206 (2000) – which heldthat product design can never be inherentlydistinctive – and concluded that the U.S.Supreme Court did not adopt the 2nd Circuit’sAbercrombie test (Abercrombie & Fitch Co. v.Hunting World, Inc., 189 USPQ 759 (2nd Cir.1976)) to the exclusion of the CCPA’s Seabrooktest (Seabrook Foods, Inc. v. Bar-Well Foods Ltd.,196 USPQ 289 (CCPA 1977)) in determiningthe inherent distinctiveness of trade dressother than product design. Instead, the Boarddeemed the tests complementary and foundApplicant’s award-winning design to beunique and unusual under Seabrook, andfanciful or arbitrary under Abercrombie.
Continued on Next Page
The Top Ten TTAB Decisions of the 21st CenturyBy John L. WelchFoley Hoag LP
THE BOSTON PATENT LAW ASSOCIATION NEWSLETTER - June 2002
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5. M-5
Steel Mfg., Inc. v. O’Hagin’s Inc., 61 USPQ2d1086 (TTAB 2001). In this case involvingelements of both utilitarian and aestheticfunctionality, the Board found unregistrablethree product configuration marks for “metalroofing tiles and metal ventilating ducts andvents for tile or concrete roofs.” Applicant’sdesigns mirrored the shapes of roof tiles soldby various manufacturers, thereby making thevents unobtrusive when installed in place ofthe tiles. Guided by the Supreme Courtdecisions in Qualitex, 514 U.S. 159 (1995) andTrafFix, 523 U.S. 23 (2001), and likening thecase to Brunswick Corp. v. British Seagull Ltd.,32 USPQ2d 1120 (Fed. Cir. 1994), in whichthe color black for outboard motors was heldto be functional and unregistrable, the Boardconcluded that registration of Applicant’sdesigns “would hinder competition by placingcompetitors at a substantial competitivedisadvantage.”
6. In re Who? Vision Systems, Inc., 57USPQ2d 1211 (TTAB 2000). Applicant failedin its attempt to register the markTACTILESENSE for fingerprint imagingsystems because it erroneously spelled the markas TACILESENSE on the application drawingpage, although the mark was correctly set forthon the first page of the application. The Boardconcluded that, in accordance with recentamendments to the Trademark Rules of Practice,the “mark sought to be registered” is nowdefined as the mark depicted on the drawingpage. Applicant’s proposed amendment of thedrawing page from TACILESENSE toTACTILESENSE was unacceptable becauseit would effect a material alteration of themark: the former term has no recognizablemeaning while the latter term is comprised oftwo actual words having suggestivesignificance.
7. In re Upper Deck Co., 59 USPQ2d1688 (TTAB 2001). The Board exorcised aquasi-”phantom” mark when it affirmed arefusal to register a “hologram device” as amark for “trading cards.” The application statedthat the Applicant did not claim as features ofthe mark, its size, shape, content, or positioningon the cards. The Board ruled that Applicantwas seeking to register more than one mark, inviolation of the CAFC’s holding in In reInternational Flavors & Fragrances, Inc., 51
USPQ2d 1513 (Fed. Cir. 1999). As the Boardnoted, “phantom” marks fail to provideconstructive notice to the public of aregistrant’s ownership of a mark because “theycover too many combinations andpermutations to allow an effective search ofthe register.”
8. In re
Thomas H. Wilson, 57 USPQ2d 1863 (2001).Despite an imaginative argument by Applicant,the Board affirmed a Section 2(d) refusal toregister PINE CONE BRAND & Design (theword BRAND and the pictorial representationof fresh fruit being disclaimed) for freshoranges, lemons and grapefruits, finding it likelyto cause confusion with the mark PINE CONEregistered in 1925 for various canned fruitsand vegetables. Applicant contended that theBoard is required, under the administrative lawdoctrine of “reasoned decisionmaking,” to actconsistently with the Office’s 1933 issuanceof a registration for the very same mark (forfresh fruit) that Applicant sought to register,despite the existence of the same PINE CONEregistration upon which the Board here relied.The Board found the reasoned decisionmakingdoctrine inapposite because the 1933 decisionwas not a fully-adjudicated decision made byan Administrative Law Judge or by equivalentpolicy-making and adjudicative personnel. Inother words, the Board is not bound bydecisions of Examining Attorneys made inother cases.
9. PolyJohn Enterprises Corp. v. 1-800-Toilets, Inc., 61 USPQ2d 1860 (TTAB 2002).In this unfortunately-named case, the Board,in view of its growing docket of active cases,expressed a desire to deter the filing of motionsthat result from a party’s failure to understandthe Rules of Practice. It denied PolyJohn’srequest to extend discovery and trial dates andgranted Applicant 1-800-Toilets Inc.’s motionfor judgment. PolyJohn failed to take testimonyor offer any evidence during its testimonyperiod, but contended that it believed that 1-800-Toilets, when agreeing to extensions oftime for discovery responses, was also agreeingto extend the testimony periods. The Boardpointed to the clear language of Rule 2.120(a)that the discovery period is not automatically
re-set when a party’s time to respond tooutstanding discovery is extended.
10. Central Mfg. Inc. v. Third MilleniumTechnology, Inc., 61 USPQ2d 1210 (TTAB2001). The Board sanctioned Opposer’spresident, Leo Stoller, on the ground that, infiling requests for extension of time to opposeon the basis of non-existent settlementnegotiations, Stoller “acted in bad faith andfor improper purposes, i.e., to obtain additionaltime to harass applicant, to obtain unwarrantedextensions of the opposition period, and towaste resources of applicant and the Board.”Noting that Stoller and his variouscorporations appear regularly before the TTAB,the Board found that he “has engaged in apattern” of submitting papers to the Boardthat are based on “false statements and materialmisrepresentations.” As a sanction, however,the Board merely required Stoller to include,with any future extension requests allegingconsent, “written agreement from the applicantas to the truth of the allegation.”
Stoller was also the subject ofanother unusual sanction for similar reasons inan uncitable interlocutory decision in SIndustries, Inc. v. S & W Sign Co., OppositionNo. 102,907 (TTAB December 16, 1999).Noting that “[t]he lack of credibility of Mr.Stoller is a matter of public record,” the Boardordered him to copy by hand Rule 11 of theFederal Rules of Civil Procedure and certainsections of the Trademark Rules of Practice,and to file a signed and dated copy thereofwith the Board.
* * * * *These 10 decisions outside the TTAB
mine run reflect the many challenging issuesthe Board must face as it copes with the latestSupreme Court and CAFC edicts, advances intechnology, newly-minted terminology, and aburgeoning case load. The TTAB serves animportant role in shaping trademark law, andpractitioners will be wise to keep abreast ofthe rulings of the Board as the twenty-firstcentury unfolds.
THE BOSTON PATENT LAW ASSOCIATION NEWSLETTER - June 2002
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Annual BPLA Judges’ DinnerPhotos Continued from Page 1
The 2002BPLA Board of Governors at the Annual Judges Dinner (L-R, front row) Ingrid Beattie,Secretary; Leslie Meyer-Leon; Doreen Hogle, Treasurer.(back row) Mark Solomon; LeeBromberg; William Gosz, President; Tom Engellenner, Past-President; Peter Corless,Vice-President.
BPLA President William Gosz presents Professor Chisum the BPLA Plate.
too, might be deemed to run afoul of the pertinentprocedural rules. The language of Rule 13 doesnot support such exceptions. As appealing assuch a judicial placebo may be, it does not have aproper foundation in the pertinent proceduralrules. The real problem here is the rule itself. If thepoint of having a Federal Circuit is to promotepatent law substantive uniformity, then theCourt’s jurisdiction should not be artificiallyconstricted by the four corners of the plaintiff ’scomplaint. If there is a separate, independentCourt of Appeals dedicated in part to promotingpatent law uniformity, that court should be theappellate court to which decisions involving claimsarising under the U.S. patent laws are appealed,whether those claims are brought in an initialcomplaint or in a counterclaim as part of adefendant’s answer. Holmes makes clear that §1295 needs to be amended to allow for FederalCircuit jurisdiction over appeals of actions inwhich a claim arising under patent law wasasserted, rather than improperly limiting thecourt’s jurisdiction to cases in which the districtcourt’s jurisdiction was based on § 1338. Unlessand until that happens though, parties seekingthe uniformity of interpretation afforded by theFederal Circuit will have to win the race to thecourthouse, or they might try to circumvent thejurisdictional effects of the well-pleadedcomplaint rule by trying to characterize theirclaims arising under patent law as permissivecounterclaims, and bring them in a separate action.(Footnotes)1 Section 1295(a)(1) confers exclusivejurisdiction upon the Federal Circuit over “anappeal from a final decision of a district court ofthe United States. . . if the jurisdiction of thatcourt was based, in whole or in part, on section1338 [excluding cases involving claims arisingunder federal copyright, mask work, or trademarklaw].” 28 U.S.C. § 1295(a)(1). Section 1338 confers original jurisdiction uponthe U.S. federal district courts over “any civilaction arising under any Act of Congress relatingto patents, plant variety protection, copyrightsand trademarks,” with such jurisdiction exclusiveof state courts except in cases arising under federaltrademark law. 28 U.S.C. § 1338(a).
Race to the CourthouseContinued from page 6
THE BOSTON PATENT LAW ASSOCIATION NEWSLETTER - June 2002
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On Saturday, May 4, 2002, William G. Gosz. President of the Boston Patent Law Association, presented an award at the Massachusetts StateScience Fair to Jason Prapas, a 12th Grade student at Falmouth High School. The award, in the amount of $1000, was in recognition for Mr. Prapas’project dealing with novel sources of energy and waste disposal. This was the 53rd annual event, which was held this year on the MIT campus, inrecognition of the outstanding accomplishments in science and mathematics by Massachusetts high school students. The students have anopportunity to display their projects in the auditorium prior to the awards ceremony. The Boston Patent Law Association is pleased to be a sponsorof this worthy event.
Daly, Crowley & Mofford, LLPGrowing IP firm located off Rt. 128 in Canton, MA seeks a patent attorney having a EE/CS background. At least 2 years of patent prosecutionexperience preferred with industry experience a plus. Firm attorneys work in a wide range of hot technology areas for large and small corporate,institutional and individual clients. Reasonable billing requirements. Salary and benefits competitive with Boston area. Send or fax (781-401-9966) resume to Hiring Attorney, Daly, Crowley & Mofford, LLP, 275 Turnpike Street - Suite 101, Canton, MA 02021.
Positions Available
News About BPLA Members
Women In Technology (WITI) presented BPLA member, Faith Driscoll with its highest honor, the Lifetime Achievement Award, at the organization’sThird Annual Leadership Awards Banquet held on May 16 at the Ritz Carlton in McLean, VA. WIT is a regional organization that includes over 700women, in technology or technology related fields, as members and one that annually recognizes women who have excelled as role models andmentors, and leaders and have demonstrated success in the Information Technology Field. Faith was nominated by James Sprowl, Foley & Lardner,Chicago, IL for her achievements as a women patent attorney specializing in electronics and computer systems patents, working in the electronicsfield while serving in the U.S. Navy and for various leadership roles including serving as president of the BPLA and the National Association ofWomen Lawyers. Currently, Faith co-chairs the Association’s Corporate Patent Committee.
Edwards & Angell, LLPEdwards & Angell, LLP, seeks patent attorneys, patent agents and technology specialists for our practice in biotechnology, organic chemistry,electronics and computer fields. Please visit our website at www.ealaw.com and send your resume in confidence to [email protected].
Eleventh Annual Advanced Licensing Institute. July 15-19, 2002. On the campus of Franklin Pierce Law Center in Concord, NH. Uniqueprogram covers all aspects (antitrust, financial, international, tax, etc) of negotiating, drafting and implementing licenses and technology transferagreement, ivolving patents, trade secrets, trademarks and copyrights. Such areas as biotech, government, software, university licensing andfranchising as well as other topics will be treated. Directed by Professor Karl Jorda and taught by prominent US and foreign IP licensingprofessionals. For more information, contact Carol Ruh @ (603) 224-3342; or E-mail @ [email protected].
Upcoming Events
Board of Governors
President William Gosz, Ropes & Gray, One International Place, Boston, MA, ph (617) 951-7000, fax: (617) 951-7050, [email protected] Elect Peter Lando, Wolf, Greenfield & Sacks, PC, 600 Atlantic Ave, Boston, MA, ph (617) 720-3500, fax: (617) 720-2441, [email protected]
Vice President Peter Corless, Edwards & Angell, LLP, 101 Federal Street, Boston, MA, ph (617) 439-4444, fax (617) 439-4170, [email protected] Doreen M. Hogle, Hamilton, Brook, Smith & Reynolds, PC, PO Box 9133, Concord, MA, ph (978) 341-0036, fax: (978) 341-0136, [email protected] Ingrid A. Beattie, Mintz, Levin, Cohn, Glovsky & Popeo, PC, One Financial Center, Boston, MA, ph (617) 542-6000, fax: (617) 542-2241, [email protected]
BoardThomas J. Engellenner, Nutter, McClennen & Fish, LLP, One International Place, Boston, MA, ph (617) 439-2000, fax (617) 973-9748, [email protected]
Mark Solomon, Hamilton, Brook, Smith & Reynolds, PC, PO Box 9133, Concord, MA, ph (978) 341-0036, fax: (978) 341-0136, [email protected] Carl Bromberg, Bromber & Sunstein, LLP, 125 Summer Street, Boston, MA, ph (617) 443-9292, fax (617) 973-9748, [email protected]
Leslie Meyer-Leon, IP Legal Strategies Group, PC, PO Box 280, Osterville, MA, ph (508) 428-4000, fax (508) 428-1900, [email protected]
THE BOSTON PATENT LAW ASSOCIATION NEWSLETTER - June 2002
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The Boston Patent LawAssociation (BPLA) is an associa-tion of intellectual property profes-sionals, providing educational pro-grams and a forum for the inter-change of ideas and information
concerning patent, trademark, andcopyright laws. Through a volunteerBoard of Governors and commit-tees, it organizes and hosts educa-tional seminars, social events, and
conventions, and comments onrules and legislation impacting the
profession. Visit the BPLA atwww.bpla.org.
Membership in the BPLA is avail-able to attorneys and other profes-sionals practicing intellectual prop-erty law with in the Federal First
Judicial Circuit (Maine, New Hamp-shire, Vermont, Massachusetts,
Rhode Island, and Connecticut).Applications for membership canbe obtained from our web site at
www.bpla.org. Full membershipfor 2001 (available only for attor-
neys practicing within the First Cir-cuit) costs $55.00 Associate mem-bership (available to non-attorneyintellectual property professionals)
