Federal Circuit Addresses Role of "Common Sense" in Obviousness Analysis
Federal Circuit Lowers Bar for Declaratory Judgment Jurisdiction for NPE Patent Assertions
Federal Circuit Upholds Dismissal of Patent Suit for Lack of Standing
Laches Starts With Actual Knowledge of the Infringement
Nutritional Supplement Patent Claims Anticipated by Printed Publication
Marks Do Not Have to Be Substantially Similar to Establish Likelihood of Dilution
ECJ Rules that Reputation in One EU Member State May Constitute "Reputation in the Community"
USPTO Announces Accelerated Examination for Green Technology Patent Applications
Federal Circuit Addresses Role of
"Common Sense" in Obviousness Analysis
By David A. Chase
Addressing the role of common sense in the post-KSR obviousness analysis, the U.S. Court of Appeals for the Federal Circuit held that common sense does not necessarily "require explication in any reference or expert opinion" in order to invalidate a patent claim for obviousness. Perfect Web Technologies, Inc. v. InfoUSA, Inc., Case No. 09-1105 (Fed. Cir., Dec. 2, 2009) (Linn, J.).
Perfect Web sued InfoUSA for infringing certain patent claims directed to "methods of managing bulk e-mail distribution to groups of targeted customers." The claimed method included four steps. The first three steps involved sending bulk e-mails to a group of target recipients and calculating the quantity of e-mails successfully received by that group. The fourth step entailed "repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity [of successfully received e-mails]." InfoUSA moved for summary judgment of invalidity. The district court granted InfoUSA's motion for summary judgment, finding that steps (A)-(C) of the asserted method claim were known in the prior art and that step (D) was "merely the logical result of common sense application of the maxim 'try, try again.'"
On appeal, the parties agreed that steps (A)-(C) were disclosed in the prior art and that step (D) did not appear in the prior art. Thus, the principal issue before the Federal Circuit was whether common sense would have taught step (D). The Court affirmed the district court, holding that the method claim was obvious. The Court began its obviousness analysis by reiterating that "common sense can be a source of reasons to combine or modify prior art references to achieve the patented invention." The Court also noted that, while common sense must be based on a reasoned explanation that avoids conclusory generalizations, it does not require a specific hint or suggestion in a particular reference. In light of the Court's prior statements regarding common sense and the Supreme Court's statements in KSR, the Court held that "while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion." The Court made clear, however, that a court must provide a clear and reasoned explanation for finding a patent claim to be obvious. In other words, "common sense" is not a synonym for "obviousness." As the court warned, in order to invoke common sense as a basis for reaching a conclusion of obviousness, "a district court must articulate its reasoning with sufficient clarity for review."
Turning to InfoUSA's motion for summary judgment, the Court found that the district court's common sense reasoning was based on sufficient evidence in the record even though it did not rely on expert opinion. The Court noted that "[i]f the relevant technology were complex, the court might require expert opinion." However, because the technology at issue was simple, the Court concluded that no expert opinion was required to appreciate the common sense of repeating steps (A)-(C) to achieve success.
Practice Note: If the technology at issue is complex, an accused infringer might have to point to explicit references or expert opinion in order to succeed on a common sense obviousness argument.
Federal Circuit Lowers Bar for Declaratory
Judgment Jurisdiction for NPE Patent Assertions
By David M. DesRosier
In a holding that the Court admitted "undoubtedly marks a shift from past declaratory judgment cases," the U.S. Court of Appeals for the Federal Circuit found that declaratory judgment jurisdiction was established by letters from a non-practicing patent owner that did not specifically threaten litigation, but which stated that the patent was "related" to the manufacturer's products, refused a 120-day non-suit agreement and imposed a deadline for a response. Hewlett-Packard Company v. Acceleron LLC, Case No. 09-1283, (Fed. Cir., Dec. 4, 2009) (Michel, J.).
Acceleron is a patent holding company. Acceleron's president wrote to Hewlett-Packard's general counsel, "call[ing] attention" to one of its patents, stating that the patent "relates" to a specific HP product and proposing a discussion between the parties about the patent. Acceleron asked HP to respond within two weeks. HP responded two weeks later, expressing interest in learning more about the patent and proposing an agreement that neither party file a declaratory judgment action for 120 days. Acceleron replied four days later, refusing to enter into HP's proposed agreement and again asking for a substantive response from HP within two weeks.
Shortly thereafter, HP filed a declaratory judgment suit seeking a declaratory judgment of non-infringement and invalidity. The district court granted Acceleron's motion to dismiss for lack of subject matter jurisdiction, finding that, under the totality of the circumstances, litigation was "too speculative a prospect to support a declaratory judgment action," in part because Acceleron's letters did not contain statements of infringement, identification of specific claims, claim charts, or the identification of other licensees. HP appealed.
The Federal Circuit reversed and remanded, finding that, objectively and under the totality of the circumstances, "it was not unreasonable for HP to interpret Acceleron's letters as implicitly asserting its rights under the [patent]." First, the Court noted that per MedImmune and SanDisk, declaratory judgment jurisdiction exists in patent cases when a patentee asserts rights under a patent based on specific activities of another party and that other party contends that its activities are lawful. The Court stated that "a communication from a patent owner to another party, merely identifying its patent and the other party's product line, without more, cannot establish" declaratory judgment jurisdiction.
The Court examined various factors, noting that there is no bright-line rule for determining when a case or controversy exists in patent matters. For one, "Acceleron took the affirmative step of twice contacting HP directly, making an implied assertion of its rights under the [patent] against [specific HP] products, and HP disagreed." In addition, Acceleron refused to enter into the 120-day non-suit agreement and imposed very short response deadlines in its letters. Finally, the Court observed that "Acceleron is solely a licensing entity, and without enforcement it receives no benefits from its patents." Therefore, the Court held that "there is declaratory judgment jurisdiction arising from a 'definite and concrete' dispute between HP and Acceleron."
Federal Circuit Upholds Dismissal of
Patent Suit for Lack of Standing
By Kristin Connarn
Affirming a decision dismissing a patent infringement suit without prejudice, the U.S. Court of Appeals for the Federal Circuit found that the plaintiff failed to prove ownership of the asserted patents and therefore lacked standing. Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., Case Nos. 08-1269, -1270 (Fed. Cir., Dec. 7, 2009) (Michel, J.; Newman, J., dissenting).
The litigation involved three patents directed to medical instruments that employed ultrasonic energy to cut and coagulate vessels in surgery. While the applications for these patents were pending, their respective inventors assigned their rights to either U.S. Surgical Corp (USSC) or Misonix Inc. Soon after, USSC obtained all rights to enforce the patents and entered into a "contribution agreement" with Kendall LLP, which later became Tyco. USSC then signed a settlement agreement with Ethicon to resolve five pending patent litigations.
The settlement agreement granted immunity from infringement liability to certain products made by Ethicon. Both parties agreed that the products accused in the infringement cases are the same type of products immunized by the settlement, but that products made or sold after the effective date of the settlement were not immunized.
The issue addressed by the court goes to terminology used in the contribution agreement. That agreement transferred assets including patents, except "[a]ny and all patents and patent applications relating to any pending litigation involving USSC," and included reference to an "excluded assets schedule" although the contract gave no explicit definition of the phrase "related to pending litigation." The issue of standing was raised for the first time during the trial in connection with the testimony relating to the contribution agreement and whether, under the "related pending litigation" language, there had been a transfer of the patent in suit to plaintiff. At the close of the plaintiff's case, Ethicon moved for judgment as a matter of law on the issue of standing. The district court granted the motion and dismissed the case without prejudice. Tyco appealed.
The Federal Circuit analyzed the contribution agreement and found that, based on the intent of the parties to the agreement, the excluded assets provision covered any patents or patent applications in the same family or so related in subject matter that they were or could have been reasonably asserted in or affected by a litigation pending at the time the contribution agreement was executed.
The Court held that it was Tyco's burden to prove that the patents-in-suit could not have been asserted in or affected by any litigation pending as of the date of the two agreements. In other words, Tyco bore the burden of proving that the patents are not "related to" any litigation pending at the time the contribution agreement was executed. Finding that Tyco failed meet its burden, the Court affirmed the district court's dismissal of the suit.
In dissent, Judge Newman accused her colleagues of ignoring the rationale of the district court and devising a new "theory" that went beyond the provisions of the agreement in issue. According to Judge Newman, the panel ignored the evidence which established that the litigation that the settlement agreement resolved litigation concerning products which were only vaguely related to ultrasonic devices such as those in issue in the present case. She further criticized the majority for holding that the absence of the schedule related to pending litigation removes these later-granted patents from transfer under the agreement.
Laches Starts With Actual Knowledge of the
Infringement
By Tiffany M. Scurry
On an appeal from summary judgment decisions, the U.S. Court of Appeals for the Federal Circuit reversed decisions of non-infringement, unenforceability and indefiniteness, finding that the lower court erred in its claim construction and also failed to consider the relevant time period for purposes of assessing laches. Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., Case Nos. 08-1218, -1439 (Fed. Cir., Dec. 3, 2009) (Lourie, J).
Ultimax and CTS both produce fast-drying, high-strength cement. Ultimax is the owner of three patents relating to its product. The district court ruled on summary judgment that one of the patents was not infringed and was unenforceable due to laches. It also granted summary judgment that the asserted claim of another patent was indefinite.
In finding the first patent not infringed, the district court, relying primarily on a dictionary definition and testimony of a neutral, court-appointed expert, construed the claim term "soluble CaSO4 anhydride." It held that the claim term required a compound to include not only calcium sulfate, but also an acid from which water has been removed. This definition was consistent with the ordinary meaning of "anhydride." The court concluded the specification did not redefine or alter the ordinary meaning of the term "anhydride," even though it acknowledged one skilled in the art might realize that the drafter intended the claim to refer to "anhydrite" instead of "anhydride," but went on to note that it could not substitute terms because redrafting patent claims is forbidden even when the failure to substitute terms would lead to a strange result. Because CTS's cement did not contain an acid from which water had been removed, the district court granted summary judgment of non-infringement.
The district court also held the patent to be unenforceable due to laches because the plaintiffs had waited 12 years after the patent issued to sue. The district court found that Ultimax should have known of CTS's use of the patented cement at the time the patent issued, citing a long history and affiliation between the owners of the respective companies.
On appeal, the Federal Circuit reversed the claim construction, admonishing the district court for improperly relying only on expert testimony and a single dictionary definition, while refusing to consider other dictionary definitions and "most importantly, the context in which the term was used within the claim and the specification."
The Federal Circuit also reversed the district court application of laches, noting evidence that Ultimax tried but was unable to gain sufficient access to test CTS's products to assess infringement, a fact which would not be detectable in the finished product. The Federal Circuit instructed that "the only time relevant to the laches presumption is that after Ultimax knew or should have known of the allegedly infringing product." Based on evidence that Ultimax could not have assessed infringement outside of the litigation discovery context, the Court concluded there were genuine issues of fact and reversed the district court's summary judgment ruling.
The Federal Circuit further reversed the summary judgment holding a claim of the second patent indefinite, based on its recitation of a specific chemical formula, which the specification refers to as crystal X and the formula C9S3S3Ca(f cl)2. The district court held this claim term indefinite. First, the court-appointed expert found that the formula for crystal X yielded over 5,000 possible different compounds. Second, the court found that the absence of a comma between "f" and "cl" rendered the claim indefinite for two reasons, notwithstanding that one of ordinary skill in the art would know there should be a comma. The Federal Circuit found that "a claim to a formula containing over 5000 possible combinations is not necessarily ambiguous if it sufficiently notifies the public of the scope of the claims." With respect to the comma issue, the Federal Circuit held that the district court "erred in declining to view the notation in light of the knowledge of one of ordinary skill." The Federal Circuit accordingly instructed the lower court to enter summary judgment that the claim is not indefinite.
Transferring Documents to the
Plaintiff's Choice of Forum Insufficient to Defeat Motion to
Transfer Venue
By David M. Stein
The U.S. Court of Appeals for Federal Circuit recently granted a petition by Hoffman-LaRoche for a writ of mandamus to transfer a patent infringement suit from the U.S. District Court for the Eastern District of Texas, finding that the district court had abused its discretion in denying a transfer under 28 U.S.C. §1404(a). In re Hoffmann-La Roche Inc., Roche Labs. Inc., Roche Colorado Corp., and Trimeris, Inc., Misc. Docket No. 911 (Fed. Cir., Dec. 2, 2009) (Gajarsa, J.).
In the 1990s, the defendants developed and tested a possible therapy for HIV infection called Fuzeon. That activity occurred in an area covered by the U.S. District Court for the Eastern District of North Carolina. The relevant documents and records for the development and testing are still located in that district.
The plaintiffs, Novartis Vaccines and Diagnostics, Inc., which are headquartered in California, sued for patent infringement in the Eastern District of Texas. After the parties exchanged their initial disclosures, the defendants moved to transfer venue.
The district court denied the motion finding that it was a "decentralized" case with witnesses and documents located in various places around the country, so a transfer would just shift inconvenience from some to others. Hoffmann-La Roche appealed.
The Federal Circuit reversed, finding a strong local interest in resolving the dispute in the Eastern District of North Carolina given that the development and testing of the accused product occurred there. It also noted that four non-party witnesses resided within 100 miles of the Eastern District of North Carolina (so they were within the subpoena power of the court for both deposition and trial). Those witnesses, however, submitted declarations saying they would not attend trial in Texas. Finally, the Court noted that the Eastern District of North Carolina has a less congested docket and would be able to resolve the dispute more quickly.
Significantly, the Federal Circuit found no connection between the case and the Eastern District of Texas, except that the plaintiff transferred its documents relating to conception and reduction to practice of the patented invention to the Eastern District of Texas in anticipation of litigation. The Court called this an attempt to manipulate venue. The Court also found that the district court lent too much weight to the presence of one witness in Houston, Texas, more than 100 miles away from the Eastern District of Texas. The presence of this witness in Texas meant that the witness could be compelled to attend trial in North Carolina, but not necessarily compelled for deposition. While the Court agreed that it is important to consider the ability of the court to compel witnesses for both deposition and trial, referred to as "absolute subpoena power," the Court noted that the district court neglected to consider that the Eastern District of North Carolina does have absolute subpoena power over at least four non-party witnesses. Accordingly, the Court stated that the district court should have considered this factor in favor of venue transfer to North Carolina.
Practice Note: For venue purposes, carefully consider the location of the development of the accused product, as well as the location of the party and non-party witnesses. Transferring documents to the forum of choice may be looked at as a counterproductive attempt to manipulate venue.
Nutritional Supplement Patent Claims
Anticipated by Printed Publication
By John C. Low, Ph.D.
The U.S. Court of Appeals for the Federal Circuit affirmed a summary judgment of invalidity of method claims relating to nutritional supplements under 35 U.S.C. §102(b) in view of a printed advertisement published a year before the patent's priority date. Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., Case No. 09-1018 (Fed. Cir., Nov. 19, 2009) (Lourie, J.; Mayer, J., concurring).
Independent claim 1 of the patent-in-suit's recited "[a] method for enhancing muscle performance or recovery from fatigue wherein said method comprises administering a composition comprising a keto acid and an amino acid where in said amino acid is cationic or dibasic." All the remaining asserted claims depended from claim 1. The court previously construed the claim phrases "enhancing muscle performance" and "recovery from fatigue," the later meaning "increasing muscle performance after muscle performance has been decreased by exercise."
The asserted art was published in FLEX magazine and included the following information: the composition of a supplement; the timing, method, and an amount to be administered; how the product was made; sales price; purchase locations; and a rebate offer with a coupon and redemption deadline. The advertisement indicated that the supplement was "to help muscles recuperate faster after exercise; and to 'decrease[] the breakdown of muscle proteins' to 'provide[] greater potential for post-workout recovery.'" The Court found that the printed publication was "accessible to persons interested and ordinarily skilled in the subject matter to which the advertisements relate." Iovate appealed.
On appeal, Iovate argued that the advertisement did not meet the "recovery from fatigue" limitation as construed because the ad was directed to "recovery from one workout to the next." The Court disagreed and held that the plaintiffs' proffered "conclusory expert testimony and attempts to increase the specificity of the language used in the claims' preamble ... borders on the frivolous." In support, the Court cited the patent specification and the plaintiffs' own allegations of infringement. The plaintiffs also provided expert testimony that skilled artisans do not rely on magazine advertisements to prove effectiveness of nutritional supplements.
The defendants argued that the plaintiff's evidence was irrelevant since claim 1 did not specify a functional or effective result; i.e., the claim is directed to a method for (not of) enhancement; an amount or concentration of the composition's ingredients; or a step for assessing the intended result.
Iovate argued that the advertisement did not include enabling disclosure, as is required for anticipatory prior art, because it did not teach a skilled artisan how to make a composition effective for enhancing due to the lack of guidance on ingredient dosages.
The Federal Circuit made short work of Iovate's argument, echoing the defendant's argument that the claim did not recite language requiring an effect or result, as well as that the article does provide sufficient dosage information to enable a skilled artisan to administer an effective amount. The Court also noted that dosing information was already known in the art, as evidenced by prior art references described in the asserted patent.
Judge Mayer also agreed with the district court that the claims were also invalid under the on-sale bar of § 102(b).
Uh Oh—District Court's Claim
Construction Conflicts with Federal Circuit's Prior
Construction of Similar Term from Same Patent
By Jeremiah Armstrong
Ruling that the district court erred in its claim construction and that the mistake could have affected the jury's infringement verdict, the U.S. Court of Appeals for the Federal Circuit remanded for a new trial in a case involving a medical device technology. Smith & Nephew, Inc., et al. v. Arthrex, Inc., Case No. 09-1091 (Fed. Cir., Dec. 2, 2009) (per curiam) (non-precedential)
Plaintiff Smith & Nephew's asserted patent describes methods for placing and securing a suture anchor in a bone. Upon retrial after the first jury deadlocked in June 2007, the district court entered judgment in June 2008 in favor of the plaintiff after an infringement verdict that awarded about $15 million in damages coupled with a permanent injunction.
In its non-precedential opinion, the Federal Circuit found the district court's construction of a critical claim term incorrect because it conflicted with the appellate court's own 2001 construction of a similar term in a prior suit involving the same patent, but a different defendant. However, the Federal Circuit rejected Arthrex's request to enter a judgment of non-infringement because a new jury could still find infringement, even with the new construction. Additionally, the Court rejected Arthrex's appeal of the district court's denial of summary judgment on patent invalidity.
Notably, the Federal Circuit rejected Smith & Nephew's argument that Arthrex failed to preserve the claim construction issue for appeal because Arthrex allegedly did not raise the issue in its pre-trial motions and then allegedly argued for a different construction in its post-trial judgment as a matter of law (JMOL) motion. Citing its 2008 decision in O2 Micro Int'l Ltd., the Court found Arthrex's losing arguments and objections at the Markman hearing sufficient to preserve appeal. Likewise, the issue was not waived post-trial because Arthrex's argument at that point was within the confines of the district court's claim construction.
Marks Do Not Have to Be Substantially
Similar to Establish Likelihood of Dilution
By Sara E. Coury
The U.S. Court of Appeals for the Second Circuit, finding that marks do not have to be substantially similar to establish likelihood of dilution under the Trademark Dilution Revision Act of 2006 (TDRA), reversed the district court's holding that the mark "MR. CHARBUCKS" did not create a likelihood of dilution by blurring of the "STARBUCKS" marks. Starbucks Corp. v. Wolfe's Borough Coffee, Inc., Case No. 08-03331 (2nd Cir., Dec. 3, 2009) (Miner, J.).
The defendant, Wolfe's Borough Coffee, doing business as Black Bear Micro Roastery (Black Bear), sells roasted coffee beans and related goods via mail, internet and a few New England supermarkets. In 1997, Black Bear began selling a dark roasted coffee called "Charbucks Blend" and then later "Mister Charbucks." A few months after Black Bear began selling its "Charbucks" coffee, Starbucks sent a cease-and-desist letter. When negotiations broke down, Starbucks filed complaint alleging trademark dilution, trademark infringement and unfair competition under state and federal law.
After a bench trial, the district court held that Starbucks failed to prove it was entitled to relief for any of its claims. Starbucks appealed. While its appeal was pending, Congress passed the TDRA. The Second Circuit vacated the district court's judgment and remanded for further proceedings in accordance with the TDRA. On remand, the district court once again ruled in favor of Black Bear. Starbucks appealed that judgment as well.
On appeal, the Second Circuit vacated the judgment only as to the district court's ruling on the likelihood of dilution by blurring under federal law. The Second Circuit found that the district court erred in considering whether the marks were substantially similar for purposes of determining likelihood of dilution by blurring. The TDRA lists six non-exhaustive factors for determining likelihood of blurring: the degree of similarity between the mark or trade name and the famous mark, the degree of inherent or acquired distinctiveness of the famous mark, the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark, the degree of recognition of the famous mark, whether the user of the mark or trade name intended to create an association with the famous mark and any actual association between the mark or trade name and the famous mark.
The Second Circuit found that requiring consideration of the "degree" of similarity between the marks suggested that the similarity between the marks, while a factor, need not be substantial for a claim to succeed. Moreover, the court reasoned that if substantial similarity was all that was required, the remaining five factors would be irrelevant. The court also concluded that the district court erred in considering whether Black Bear had a bad-faith intent to create an association with Starbucks, because fifth factor merely requires intent to associate. Finally, the Court found that the district court erred its analysis of the sixth factor of "actual association" because absence of a likelihood of confusion does not undermine Starbucks' survey evidence that "Charbucks" called to mind "Starbucks."
ECJ Rules that Reputation in One EU Member
State May Constitute "Reputation in the Community"
By Désirée Fields
In a reference from the Austrian Supreme Court, the European Court of Justice (ECJ) has ruled that for the purposes of Article 9(1)(c) of the Community Trademark Regulation (40/94/EC), reputation in a single member state of the European Community may be considered to constitute a substantial part of the territory of the Community. PAGO International GmbH v. Tirolmilch registrierte Genossenschaft mbH, Case C-301/07 (ECJ, Oct. 6, 2009).
PAGO is the proprietor of a figurative Community Trademark covering fruit juices and fruit drinks. The essential element of the mark is the representation of a green glass bottle with a distinctive label and lid. PAGO markets in Austria a fruit juice called "Pago" in such bottles. The mark is widely known in Austria. Tirolmilch markets in Austria a fruit and whey drink called "Latella" that is packaged in glass bottles similar to those depicted in PAGO's Community Trademark. In its advertising, Tirolmilch uses a representation which, like the Community Trademark owned by PAGO, includes a bottle next to a full glass.
PAGO issued proceedings in the Vienna Commercial Court seeking an injunction to prohibit Tirolmilch from promoting, offering for sale, marketing or otherwise using its drink in the bottles at issue and from advertising by means of a representation of the bottles together with a full glass of fruit juice. The Vienna Commercial Court granted the injunction. The Higher Regional Court Vienna reversed the decision. PAGO lodged an appeal with the Austrian Supreme Court.
The Austrian Supreme Court took the view that, on an overall examination, there was no likelihood of confusion between the bottles used by Tirolmilch and PAGO's Community Trademark, insofar as the labels affixed to the bottles bore the names "Pago" and "Tirolmilch" respectively, both of which are widely known in Austria. However, PAGO argued that Tirolmilch was taking unfair advantage of PAGO's Community Trademark in Austria under Article 9(1)(c) of the Community Trademark Regulation. The Supreme Court expressed uncertainty as to the meaning of the words "has a reputation in the Community" used in that provision and accordingly stayed the proceedings to seek the ECJ's guidance on the interpretation of this phrase. Following the decision in Case C-375/07 General Motors [1999] ECR I-5421, the Supreme Court presumed that it sufficed that the Community Trademark had a reputation in a "substantial part" of the Community. However, as PAGO had applied for a Community-wide injunction and its mark only had a reputation in Austria, the Supreme Court was unsure whether such an injunction could be granted.
The ECJ held that Article 9(1)(c) had to be interpreted as meaning that, in order to benefit from the protection afforded in that provision, a Community Trademark must be known by a significant part of the public concerned by the products and services covered by that trademark, in a substantial part of the territory of the European Community. On the facts of the main proceedings, the ECJ considered that Austria was capable of constituting a substantial part of the territory of the Community.
Practice Note: The case suggests that it may be sufficient for the purposes of Article 9(1)(c) to show that a Community Trademark has a reputation in one member state. However, the ECJ did not suggest that any member state, regardless of its size and of the size of the relevant market within it, would be considered "substantial." The ECJ decision also leaves open the question of whether it would suffice to show that a Community Trademark had a reputation in part of a member state only.
Running of SOL on Original Work Does Not
Preclude Ownership Claim if Later Version of Work Is Distinct
By Michelle C. Replogle
The U.S. Court of Appeals for the Fifth Circuit affirmed the dismissal of a music composer/producer's copyright infringement and breach of contract claims against the defendants, but reversed and remanded the producers co-ownership claim against the record publisher (record publisher and artist) to determine if the statute of limitation (SOL) had run as to later "versions" of an original work on which the SOL barred the ownership claim. Maurice S. Jordan v. Sony BMG Music Entertainment Inc., et al., Case No. 08-20835 (5th Cir., Dec. 8, 2009) (Higginbotham, J.; Garza, J.; Prado, J.).
Jordon, known professionally as Kenoe, composes and produces music. Weston (known professionally as rapper Lil' Flip) signed with Suckafree Records. On the same day, Suckafree signed a distribution agreement with Sony granting defendant Sony a license to Weston's sound recordings. Later, Jordan entered into an agreement with Suckafree in which Jordan agreed to produce three recordings for Weston. If Weston used one or more of the recordings on his album, Jordan would receive royalties of "three percent (3%) per Recording [of] the sale of any such records embodying the Recordings" and a royalty cash advance of $3,000.
Jordan composed three melodies for Weston. Weston added rap lyrics over the melodies and Sony distributed the three songs in an album launched later that same year (2002). Sony registered its copyright in the 2002 sound recordings with the Copyright Office. The following year, Sony released a second album with the songs and, like before, registered the 2003 sound recording with the Copyright Office. From 2003 to 2006, Jordan repeatedly requested royalty payments from Sony and Suckafree. When neither paid, Jordan sued for breach of contract, co-ownership of the copyright, and copyright infringement. After the district court granted summary judgment in favor of Sony and Weston Jordan appealed.
The Fifth Circuit affirmed the dismissal of the breach of contract claims, finding no evidence that Jordan had an enforceable contract with either Sony or Weston. The court also affirmed the dismissal of the copyright infringement claims, finding no evidence that Sony infringed the underlying melodies of the songs. However, as to the co-ownership claims, the court agreed only in part.
The district court dismissed all of Jordan's co-ownership claims based upon the Copyright Act's three-year statute of limitations. The Fifth Circuit found that the 2002 registration provided notice to Jordan of Sony's ownership in that recording claim and, since Jordan did not file suit until 2006, the claim was now time-barred. Thus, the court affirmed the dismissal as to the 2002 sound recording.
As for the 2003 sound recording, the court found the record below was unclear as to whether the recordings in 2002 and 2003 were two independent recordings or duplicates of the same recording. The court noted the district court's references to "versions" of the songs and noted that Sony's filing for a second copyright registration suggested that the sound recordings were distinct. As Jordan's claim of co-ownership for the 2003 recording was not time barred if the two recordings were in fact distinct, the Court remanded the case for further findings on this issue.
USPTO Announces Accelerated Examination
for Green Technology Patent Applications
By Bernard P. Codd
In the December 8, 2009 Federal Register, the U.S. Patent and Trademark Office (USPTO) announced a new Pilot Program for Green Technologies. Under this pilot program, a number of "green" energy and carbon emission reduction technologies are eligible to receive accelerated examination. In accordance with the accelerated examination procedures, a patent application is examined ahead of regular, i.e., non-special, applications. Many different technologies are eligible for this program as long as they fall within at least one of the following categories: applications pertaining to energy conservation, development of renewable resources or greenhouse gas emission reduction. In order to be considered for the accelerated examination pilot program, a petition must be filed. However, unlike normal accelerated examination, a pre-examination search and an Examination Support Document (ESD) are not required to participate in the program. Thus, the petition for accelerated examination under the pilot program can be prepared at much lower cost than a regular accelerated examination petition. Any application is eligible for the green technology pilot program as long as the already filed application is classified in one of the listed search classes and has not received a first action.
The green technology pilot program is only available for the first 3,000 applications to have a proper petition filed, though the USPTO has indicated the program may be further expanded. For further information see the notice in the Federal Register (www.uspto.gov/patents/law/notices/74fr64666.pdf)
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.