IP News

On July 14, 2003, the USPTO ended the practice of allowing continued prosecution applications (CPAs) for utility and plant patents. When the American Inventors Protection Act was enacted in 1999, it provided for another procedure, the request for continued examination (RCE), to allow a patent examiner to further examine a pending application. The USPTO stated the CPA practice was largely redundant of the RCE practice and should be eliminated. After July 14, 2003, the CPA will only remain in place for design patents.

If a request for a CPA is submitted, it will be treated as a request for an RCE (albeit an improper one), and the time set in the last Office Action or Notice of Allowance will continue to run. The USPTO has also eliminated the petition process that allowed applicants to convert an improper CPA request into an application under 37 CFR 1.53(b). Only in extenuating circumstances will an improper CPA be converted to an application under 37 C.F.R. 1.53(b). Even after the elimination of the CPA practice, an applicant may still obtain further examination by filing a continuation application.

Court Denies Preliminary Injunction on Infringing Product

The U.S. District Court for the District of Maryland denied a preliminary injunction against a product, even though, the court found it to infringe in Serio-US Indus., Inc. v. Plastic Recovery Techs. Corp., 2003 U.S. Dist. LEXIS 10074 (D.Md. June 5, 2003). Serio-US held a patent on an automatic dumpster lock and wanted to enjoin Plastic Recovery from showing an allegedly infringing prototype at a trade show. The court determined that the prototype device did infringe, but stated that the defendant could rebut the presumption of irreparable harm to the patentee. Evidence showing that the movant's market share dwarfed that of the non-movant, that there were several non-infringing competitors in the market, or that monetary damages could compensate for any actual harm suffered, were provided as examples of evidence that could rebut the presumption.

The court stated that because the defendant only had a prototype and had not actually entered the market, any harm to the plaintiff could be compensated by monetary damages. The court also noted that Serio-US had a substantial share of the marketplace and that there were several non-infringing competitors. The court held that “[t]he threatened harm by this limited exposure of a device that is not in production is, in the Court's belief, an insufficient basis on which to grant preliminary injunctive relief.”

Direct Infringement for Method Patent When Connected Entity Performs Required Step

In Marley Mouldings, Ltd. v. Mikron Indus., Inc., 66 U.S.P.Q.2d (BNA) 1701 (N.D.Ill. 2003), the plaintiff commenced an action against the defendant for infringing its six-step process claim for wood moldings. Mikron moved for summary judgment of non-infringement claiming that it did not perform the first step of the process, creating wood pellets by encapsulating wood flour particles in a polymer resin. By purchasing “pre-made” wood pellets from a third party, Mikron argued it did not perform each step of the process, so there was no direct infringement. The court noted that neither the Supreme Court nor the Federal Circuit had addressed the direct infringement liability of a method claim where separate entities performed separate steps. The court noted that several district courts had found liability where the different steps of a method claim were performed by distinct entities, but also that the Fifth Circuit had questioned whether direct infringement could be found in such a case.

The court held that for there to be liability for direct infringement, the entities performing the steps must be connected in some way. “A party cannot avoid direct infringement merely by having another entity perform one or more of the required steps when that party is connected with the entity performing one or more of the required steps.” The court found that there was some connection between defendant and the pellet supplier. The pellets were made to order based on defendant's instructions, but there was a dispute as to how detailed the instructions were. The court held that since there was a material issue of fact as to whether defendant had control over the pellet supplier's process, summary judgment on non-infringement could not be granted.

U.S. Removes Roadblock in WTO Drug Talks

The United States recently dropped a key demand in the WTO drug talks, potentially making it easier for developing countries to have access to generic drugs. At the 2001 WTO meeting in Doha, Qatar, all of the WTO members agreed that public health concerns should override patent rights. While all members, including the United States, agreed to this proposal, a dispute had arisen over a draft declaration detailing how far patent rights may be avoided to allow some countries to copy patented drugs. The United States was concerned that the wording of the declaration would allow generic copies of “lifestyle” drugs such as Viagara, and would undermine innovation in some countries. The United States had insisted that the declaration include a list of specific diseases for which generic drugs would be permitted. This demand was resisted by the other WTO members. By dropping this demand, WTO officials hope that a final agreement will take place in September at the WTO meeting in Cancun, Mexico.

USPTO Ends Practice of CPAs

On July 14, 2003, the USPTO ended the practice of allowing continued prosecution applications (CPAs) for utility and plant patents. When the American Inventors Protection Act was enacted in 1999, it provided for another procedure, the request for continued examination (RCE), to allow a patent examiner to further examine a pending application. The USPTO stated the CPA practice was largely redundant of the RCE practice and should be eliminated. After July 14, 2003, the CPA will only remain in place for design patents.

If a request for a CPA is submitted, it will be treated as a request for an RCE (albeit an improper one), and the time set in the last Office Action or Notice of Allowance will continue to run. The USPTO has also eliminated the petition process that allowed applicants to convert an improper CPA request into an application under 37 CFR 1.53(b). Only in extenuating circumstances will an improper CPA be converted to an application under 37 C.F.R. 1.53(b). Even after the elimination of the CPA practice, an applicant may still obtain further examination by filing a continuation application.

Court Denies Preliminary Injunction on Infringing Product

The U.S. District Court for the District of Maryland denied a preliminary injunction against a product, even though, the court found it to infringe in Serio-US Indus., Inc. v. Plastic Recovery Techs. Corp., 2003 U.S. Dist. LEXIS 10074 (D.Md. June 5, 2003). Serio-US held a patent on an automatic dumpster lock and wanted to enjoin Plastic Recovery from showing an allegedly infringing prototype at a trade show. The court determined that the prototype device did infringe, but stated that the defendant could rebut the presumption of irreparable harm to the patentee. Evidence showing that the movant's market share dwarfed that of the non-movant, that there were several non-infringing competitors in the market, or that monetary damages could compensate for any actual harm suffered, were provided as examples of evidence that could rebut the presumption.

The court stated that because the defendant only had a prototype and had not actually entered the market, any harm to the plaintiff could be compensated by monetary damages. The court also noted that Serio-US had a substantial share of the marketplace and that there were several non-infringing competitors. The court held that “[t]he threatened harm by this limited exposure of a device that is not in production is, in the Court's belief, an insufficient basis on which to grant preliminary injunctive relief.”

Direct Infringement for Method Patent When Connected Entity Performs Required Step

In Marley Mouldings, Ltd. v. Mikron Indus., Inc., 66 U.S.P.Q.2d (BNA) 1701 (N.D.Ill. 2003), the plaintiff commenced an action against the defendant for infringing its six-step process claim for wood moldings. Mikron moved for summary judgment of non-infringement claiming that it did not perform the first step of the process, creating wood pellets by encapsulating wood flour particles in a polymer resin. By purchasing “pre-made” wood pellets from a third party, Mikron argued it did not perform each step of the process, so there was no direct infringement. The court noted that neither the Supreme Court nor the Federal Circuit had addressed the direct infringement liability of a method claim where separate entities performed separate steps. The court noted that several district courts had found liability where the different steps of a method claim were performed by distinct entities, but also that the Fifth Circuit had questioned whether direct infringement could be found in such a case.

The court held that for there to be liability for direct infringement, the entities performing the steps must be connected in some way. “A party cannot avoid direct infringement merely by having another entity perform one or more of the required steps when that party is connected with the entity performing one or more of the required steps.” The court found that there was some connection between defendant and the pellet supplier. The pellets were made to order based on defendant's instructions, but there was a dispute as to how detailed the instructions were. The court held that since there was a material issue of fact as to whether defendant had control over the pellet supplier's process, summary judgment on non-infringement could not be granted.