IP News

In Fuji Photo Film Co. v. Jazz Photo Corp., 2003 U.S. Dist. LEXIS 2937 (D.N.J. 2003), the U.S. District Court for the District of New Jersey was required to consider the frequently litigated distinction in patent law between permissible repair and impermissible reconstruction as well as the doctrine of patent exhaustion. Fuji commenced this action asserting that Jazz Photo's importation of certain single use cameras, that had been refurbished abroad, infringed Fuji's patent rights. The court applied a two-part test set forth by the Federal Circuit in a related action initially brought before the International Trade Commission. Jazz Photo Corp. v. Int'l Trade Comm'n, 264 F.3d 1094 (Fed. Cir. 2001). In that action, the Federal Circuit held that the importation or sale of a refurbished camera infringes the patentee's rights unless the alleged infringer can prove that: 1) the procedures employed in refurbishing the cameras constitute permissible repair, and 2) the cameras sold were refurbished from a shell of a camera first sold by the patentee in the United States. Id. at 1098, 1105 and 1110. The issue of whether a foreign sale by the patentee “exhausts” the patentee's rights under the U.S. patent was a matter of first impression for the Federal Circuit.

Applying the Federal Circuit's test, the district court determined that Jazz Photo proved that 4 million of the allegedly infringing cameras were permissibly repaired, such that the useful life of the patent was preserved, but that 36 million cameras were impermissibly reconstructed, which was tantamount to making a new patented product. With regard to the cameras that were found to be impermissibly reconstructed, the court determined that only 9.5% of the refurbished Fuji cameras imported were of U.S. origin and, therefore, the remaining 90.5% infringed Fuji's patent rights. Fuji was awarded approximately $23 million in damages.

Written Description Requirement Examined in the Federal Circuit

On April 1, 2003, the Federal Circuit decided Moba, B.V. v. Diamond Automation, 2003 US. App. LEXIS 6285. The Federal Circuit ruled that no reasonable jury could find that Moba, B.V., Staalkat, B.V. and FPS Food Processing Systems (collectively FPS) and their customers did not practice the method of advancing eggs through a number of weighing stations claimed in Diamond's patent, U.S. Patent No. 4,519,505 (the '505 patent). Further, the court rejected FPS's argument that the '505 patent was invalid for lack of written description on the grounds that the claimed moving conveyor was not disclosed. The court sated that the purpose of the written description requirement of 35 U.S.C. '112, paragraph 1 is to ensure that the inventor had possession of the claimed invention as of the original filing date. The court concluded that there was substantial evidence to support the jury's finding that the specification of the '505 patent describes every element of the asserted claim in sufficient detail so that “one of ordinary skill in the art would recognize that the inventor possessed the invention at the time of filing.” The Federal Circuit also found that the specification of the '505 patent disclosed sufficient information to enable those skilled in the art to make and use the claimed invention and that the prior art cited by FPS did not anticipate Diamond's patent.

No Infringement for Use of Competing Products Trademark in Post-Domain Path of URL

In a case of first impression, the Sixth Circuit ruled in Interactive Products Corp. v. a2z Mobile Office Solutions, No. 01-3590, 2003 WL 1839791 (6th Cir., April 10, 2003), that the use of a trademark for a competing product in a post-domain path of a URL was not an infringement. Pursuant to the parties' agreement, Defendant used to sell Plaintiff's “Lap Traveler” product on its Internet Web site. After the agreement ended, Defendant began selling a competing, but not infringing, product called the “Mobile Desk.” Both products are portable computer stands. When Defendant began sales of the “Mobile Desk,” however, it did not change the URL path of the page from which the “Mobile Desk” was sold. Thus, the complete URL path was: a2zsolutions.com/desks/floor/laptraveler/dkfl-lt.htm.

It is well-settled that a domain name can function as a source signifying trademark. The district court reasoned, however, that a post-domain path, “merely shows how a Web site's data is organized within the host computer's files.” Thus, the district court questioned whether Defendant was even making a trademark use of the term “Lap Traveler.”

The Sixth Circuit upheld a grant of summary judgment of no likelihood of consumer confusion. The Court reasoned that: “Because post-domain paths do not typically signify source, it is unlikely that the presence of another's trademark in a post-domain path of a URL would ever violate trademark law.” The Sixth Circuit also affirmed the dismissal of Plaintiff's claims for false advertising.

Federal Circuit Examines Prior Art By Admission When The Patent Is The Inventor's Own Work

On March 31, 2003, the Federal Circuit ruled that a patent included in an Information Disclosure Statement (IDS) was not prior art by admission, because the disclosed patent was the inventor's own work. Riverwood Int'l Corp. v. R.A. Jones & Co., Inc., 2003 U.S. App. LEXIS 6176 (Fed. Cir. 2003). Plaintiff, Riverwood, had three patents, '806, '789 and '361, on packaging methods and machines with at least one common inventor in each patent. Id. at 2-3. The '361 and '789 patents included the '806 patent in their IDS. Id. at 8. Even though patent '806 was not considered prior art under 35 U.S.C. '102 a-d. Defendant argued that the '806 patent was prior art by admission. Id. at 8-9. The district court agreed and a jury invalidated the patents for obviousness in light of the '804 patent. Id. at 10. Since all three patents shared at least one inventor, Plaintiff argued that one's own work could not be prior art without a statutory basis. Id. at 17.

The Federal Circuit reviewed the precedent relating to prior art by admission and determined that the admission doctrine was “inapplicable when the subject matter at issue is the inventor's own work.” Id. at 20. Examining the policy behind the IDS ' which requires an applicant to be as inclusive as possible ' the court stated that a patentee should not be punished for including his own work in an IDS. Id. at 22-23. The court held that the inclusion of the '806 patent in the IDS was not an admission of materiality to the invention and, as such, was not prior art. Id. at 23.

USPTO Gets New Titles and New Addresses

Effective May 1, 2003 the USPTO is changing some of its titles in compliance with '4173 of the American Inventors Protection Act of 1999 and changing its mailing addresses to reflect the Office's move to Alexandria, Virginia. The title Commissioner of Patents and Trademarks will now be the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. The Assistant Commissioner for Patents and the Assistant Commissioner for Trademarks will now be the Commissioner for Patents and the Commissioner for Trademarks, respectively.

Also effective May 1, 2003, the new general address for organizations reporting to Commissioner of Patents will be:

P.O. Box 1450 Alexandria, Virginia 22313-1450

This address will also be used for other correspondence such as assignment recordation for patents and trademarks, and requests for copies of patent and trademark documents. The addresses for organizations reporting to the Commissioner of Trademark or the Trademark Trial and Appeal Board will not change. Several subject specific correspondence addresses are also changing and the various “Box” designations will now be known as “Mail Stops” (eg, “Box 4″ will now be “Mail Stop 4″).

For a complete listing of all of the address and title changes see the USPTO's Web site at www.uspto.gov or Correspondence With the United States Patent and Trademark Office, 68 Fed. Reg. 14332-33 (Mar. 25, 2003).

Kathlyn Card-Beckles is an associate with the New York office of Kenyon & Kenyon. She can be reached at 212-908-6478.

PTO New Electronic Proposals

On April 3, 2003, the U.S. Patent and Trademark Office (PTO) revealed its new plan to further implement electronic processing. The PTO stated that its workload could not be managed efficiently in the current paper based environment. The ultimate goal is to have an end-to-end electronic patent process. The first step will be to employ the European Patent Office's (EPO) ePHOENIX system to create image file wrappers for all new applications. The PTO is also collaborating with the EPO to allow users of the epoline” system to file electronic applications in the U.S. The entire plan for the PTO's Patent E-Government can be found at www.uspto.gov under the link for the 21st Century Strategic plan.

Patent Exhaustion Occurs Only After First U.S. Sale

In Fuji Photo Film Co. v. Jazz Photo Corp., 2003 U.S. Dist. LEXIS 2937 (D.N.J. 2003), the U.S. District Court for the District of New Jersey was required to consider the frequently litigated distinction in patent law between permissible repair and impermissible reconstruction as well as the doctrine of patent exhaustion. Fuji commenced this action asserting that Jazz Photo's importation of certain single use cameras, that had been refurbished abroad, infringed Fuji's patent rights. The court applied a two-part test set forth by the Federal Circuit in a related action initially brought before the International Trade Commission. Jazz Photo Corp. v. Int'l Trade Comm'n , 264 F.3d 1094 (Fed. Cir. 2001). In that action, the Federal Circuit held that the importation or sale of a refurbished camera infringes the patentee's rights unless the alleged infringer can prove that: 1) the procedures employed in refurbishing the cameras constitute permissible repair, and 2) the cameras sold were refurbished from a shell of a camera first sold by the patentee in the United States. Id. at 1098, 1105 and 1110. The issue of whether a foreign sale by the patentee “exhausts” the patentee's rights under the U.S. patent was a matter of first impression for the Federal Circuit.

Applying the Federal Circuit's test, the district court determined that Jazz Photo proved that 4 million of the allegedly infringing cameras were permissibly repaired, such that the useful life of the patent was preserved, but that 36 million cameras were impermissibly reconstructed, which was tantamount to making a new patented product. With regard to the cameras that were found to be impermissibly reconstructed, the court determined that only 9.5% of the refurbished Fuji cameras imported were of U.S. origin and, therefore, the remaining 90.5% infringed Fuji's patent rights. Fuji was awarded approximately $23 million in damages.

Written Description Requirement Examined in the Federal Circuit

On April 1, 2003, the Federal Circuit decided Moba, B.V. v. Diamond Automation, 2003 US. App. LEXIS 6285. The Federal Circuit ruled that no reasonable jury could find that Moba, B.V., Staalkat, B.V. and FPS Food Processing Systems (collectively FPS) and their customers did not practice the method of advancing eggs through a number of weighing stations claimed in Diamond's patent, U.S. Patent No. 4,519,505 (the '505 patent). Further, the court rejected FPS's argument that the '505 patent was invalid for lack of written description on the grounds that the claimed moving conveyor was not disclosed. The court sated that the purpose of the written description requirement of 35 U.S.C. '112, paragraph 1 is to ensure that the inventor had possession of the claimed invention as of the original filing date. The court concluded that there was substantial evidence to support the jury's finding that the specification of the '505 patent describes every element of the asserted claim in sufficient detail so that “one of ordinary skill in the art would recognize that the inventor possessed the invention at the time of filing.” The Federal Circuit also found that the specification of the '505 patent disclosed sufficient information to enable those skilled in the art to make and use the claimed invention and that the prior art cited by FPS did not anticipate Diamond's patent.

No Infringement for Use of Competing Products Trademark in Post-Domain Path of URL

In a case of first impression, the Sixth Circuit ruled in Interactive Products Corp. v. a2z Mobile Office Solutions, No. 01-3590, 2003 WL 1839791 (6th Cir., April 10, 2003), that the use of a trademark for a competing product in a post-domain path of a URL was not an infringement. Pursuant to the parties' agreement, Defendant used to sell Plaintiff's “Lap Traveler” product on its Internet Web site. After the agreement ended, Defendant began selling a competing, but not infringing, product called the “Mobile Desk.” Both products are portable computer stands. When Defendant began sales of the “Mobile Desk,” however, it did not change the URL path of the page from which the “Mobile Desk” was sold. Thus, the complete URL path was: a2zsolutions.com/desks/floor/laptraveler/dkfl-lt.htm.

It is well-settled that a domain name can function as a source signifying trademark. The district court reasoned, however, that a post-domain path, “merely shows how a Web site's data is organized within the host computer's files.” Thus, the district court questioned whether Defendant was even making a trademark use of the term “Lap Traveler.”

The Sixth Circuit upheld a grant of summary judgment of no likelihood of consumer confusion. The Court reasoned that: “Because post-domain paths do not typically signify source, it is unlikely that the presence of another's trademark in a post-domain path of a URL would ever violate trademark law.” The Sixth Circuit also affirmed the dismissal of Plaintiff's claims for false advertising.

Federal Circuit Examines Prior Art By Admission When The Patent Is The Inventor's Own Work

On March 31, 2003, the Federal Circuit ruled that a patent included in an Information Disclosure Statement (IDS) was not prior art by admission, because the disclosed patent was the inventor's own work. Riverwood Int'l Corp. v. R.A. Jones & Co., Inc., 2003 U.S. App. LEXIS 6176 (Fed. Cir. 2003). Plaintiff, Riverwood, had three patents, '806, '789 and '361, on packaging methods and machines with at least one common inventor in each patent. Id. at 2-3. The '361 and '789 patents included the '806 patent in their IDS. Id. at 8. Even though patent '806 was not considered prior art under 35 U.S.C. '102 a-d. Defendant argued that the '806 patent was prior art by admission. Id. at 8-9. The district court agreed and a jury invalidated the patents for obviousness in light of the '804 patent. Id. at 10. Since all three patents shared at least one inventor, Plaintiff argued that one's own work could not be prior art without a statutory basis. Id. at 17.

The Federal Circuit reviewed the precedent relating to prior art by admission and determined that the admission doctrine was “inapplicable when the subject matter at issue is the inventor's own work.” Id. at 20. Examining the policy behind the IDS ' which requires an applicant to be as inclusive as possible ' the court stated that a patentee should not be punished for including his own work in an IDS. Id. at 22-23. The court held that the inclusion of the '806 patent in the IDS was not an admission of materiality to the invention and, as such, was not prior art. Id. at 23.

USPTO Gets New Titles and New Addresses

Effective May 1, 2003 the USPTO is changing some of its titles in compliance with '4173 of the American Inventors Protection Act of 1999 and changing its mailing addresses to reflect the Office's move to Alexandria, Virginia. The title Commissioner of Patents and Trademarks will now be the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. The Assistant Commissioner for Patents and the Assistant Commissioner for Trademarks will now be the Commissioner for Patents and the Commissioner for Trademarks, respectively.

Also effective May 1, 2003, the new general address for organizations reporting to Commissioner of Patents will be:

P.O. Box 1450 Alexandria, Virginia 22313-1450

This address will also be used for other correspondence such as assignment recordation for patents and trademarks, and requests for copies of patent and trademark documents. The addresses for organizations reporting to the Commissioner of Trademark or the Trademark Trial and Appeal Board will not change. Several subject specific correspondence addresses are also changing and the various “Box” designations will now be known as “Mail Stops” (eg, “Box 4″ will now be “Mail Stop 4″).

For a complete listing of all of the address and title changes see the USPTO's Web site at www.uspto.gov or Correspondence With the United States Patent and Trademark Office, 68 Fed. Reg. 14332-33 (Mar. 25, 2003).

Kathlyn Card-Beckles is an associate with the New York office of Kenyon & Kenyon. She can be reached at 212-908-6478.