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On appeal, Reed argued that the TTAB improperly considered all services offered on its www.lawyers.com Web site, rather than focusing on just the services specifically identified in the application (which excluded information exchange about lawyers). Reed further argued that the TTAB's finding ' that an element of the claimed genus was information about lawyers and information from lawyers ' was not supported by substantial evidence. In rejecting both arguments, the Federal Circuit reasoned that 'lawyers are necessarily an integral part of the information exchange about legal services,' which was part of the description of services claimed in the application. The court further determined that the TTAB had appropriately reviewed the www.lawyers.com Web site for context in understanding the meaning of the services claimed in the application and that such Web site demonstrates that 'information exchange about lawyers is not at all discrete from information exchange about the law, legal news, and legal services.' Finally, in affirming the TTAB's ruling, the court approved of the TTAB's consideration of eight other Web sites containing 'lawyer.com' or 'lawyers.com' in determining what the relevant public would understand LAWYERS.COM to mean.

Court Interprets Supreme Court's KSR Decision

In Leapfrog Enterprises, Inc. v. Fisher-Price, Inc, 06-1402 (Fed. Cir. May 9, 2007), the Federal Circuit considered the Supreme Court's ruling in KSR Int'l Co. v. Teleflex Inc. et al., in affirming the district court's finding that claim 25 (the only claim at issue) of U.S. Patent No. 5,813,861 ('the '861 patent') assigned to Leapfrog Enterprises, Inc. ('Leapfrog') was invalid as obvious.

Leapfrog brought suit against Fisher-Price, Inc. and Mattel, Inc. (collectively 'Fisher-Price') alleging that Fisher-Price's PowerTouch product infringed claim 25 of the '861 patent. Claim 25 was directed to an interactive learning device, comprising, among other things, 'at least one depiction of a sequence of letters ' a reader configured to communicate the identity of the depiction to the processor, wherein selection of a depicted letter activates an associated switch to communicate with the processor, causing the sound production device to generate a signal corresponding to a sound associated with the selected letter.'

After a jury deadlock, the parties stipulated that the case would be submitted to the trial court for decision. The trial court found claim 25 not infringed and also invalid as obvious over U.S. Patent No. 3,748,748 to Bevan, the Texas Instruments Super Speak & Read ('SSR') device, and the knowledge of one of ordinary skill in the art.

On appeal, the Federal Circuit affirmed the trial court's findings of non-infringement. As to obviousness, Leapfrog argued that there was inadequate evidence in the record to support a motivation to combine Bevan, the SSR, and a reader to arrive at the invention of claim 25. However, in light of the Supreme Court's KSR ruling, the Federal Circuit disagreed with Leapfrog's argument. The court reasoned that an obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. In affirming the district court's finding of obviousness, the court considered the goal of claim 25, which the court found was to allow a child to press a switch associated with a single letter in a word and hear the sound of the letter as it is used in that word. The court reasoned that '[a]ccomodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing learning devices.' The court then found no error in the district court's determination that the Bevan patent taught a mechanical device having the same method of operation, viewed as a whole, as claim 25 of the '861 patent. Further, the court determined that the SSR was a modern type of prior art learning toy with electronic components, but had a slightly different mode of operation than Bevan. Finally, the court determined that one of ordinary skill would have found it obvious to 'combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost.'

Court Has Jurisdiction to Invalidate Claims Withdrawn from Suit

In Honeywell Int'l Inc. v. Universal Avionics Sys. Corp., 05-1112, -1151, -1152 (Fed. Cir. May 25, 2007), Honeywell appealed a district court summary judgment ruling that several claims of its asserted patents that had been withdrawn from the litigation were invalid. Specifically, Honeywell argued that the district court erred by exercising its jurisdiction over defendant's request for declaratory relief on the withdrawn claims.

During the course of the litigation, Honeywell attempted to withdraw many of its originally asserted claims from suit and represented to the defendants that it would not pursue infringement of the same. However, the district court determined that Honeywell's refusal to withdraw all of the claims in the relevant asserted patents left the defendants with a reasonable apprehension of suit and thus exercised its discretion in retaining jurisdiction. The district court then found many of the withdrawn claims to be invalid as anticipated.

In affirming the district court's determination that jurisdiction existed to invalidate the withdrawn claims, the Federal Circuit noted that the Supreme Court's decision
in MedImmune, Inc. v. Genetech Inc., 549 U.S. ___ (2007) eliminated the 'reasonable apprehension of imminent suit' test. Instead, the court considered whether an actual controversy existed between the parties, as required by the Declaratory Judgment Act, 28 U.S.C. '2201(a), and Article III of the Constitution.

Under such a framework, the court reasoned that infringement of a dependent claim also entails infringement of its associated independent claim. Because Honeywell chose to leave certain dependent claims in the suit (but withdraw the independent claims) the entire subject matter of the claims remained at issue, and thus the district court did not err in exercising its discretion to retain jurisdiction over the withdrawn claims.

Matt Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.

Federal Circuit Finds Lawyers.com to Be Generic Mark

In In Re Reed Elsevier Properties Inc., 2006-1309 (Fed. Cir. April 12, 2007), the Federal Circuit affirmed a ruling by the Trademark Trial and Appeal Board ('TTAB') that the name LAWYERS.COM was generic and could not be registered because the genus of services sought to be registered were congruent with the nature of the relevant public's understanding of the services the mark evokes. Reed Elsevier Properties Inc. ('Reed') sought to register the mark LAWYERS.COM for providing an 'online interactive database featuring information exchange in the fields
of law, legal news, and legal services.' Reed excluded information exchange concerning lawyers during prosecution.

In denying Reed's registration, the TTAB determined that the genus of services provided is 'a web site with a database of information covering the identified topics of law, legal news and legal services.' Key to the TTAB's ruling was that 'a central and inextricably intertwined element of that genus is information about lawyers and information from lawyers.' The TTAB found that the relevant public 'would readily understand the term to identify a commercial web site providing access to and information about lawyers' and that 'some members of the relevant public would think of a web site that would provide information about lawyers, including their specialties, contact information, and the like.' The TTAB then held the mark to be generic because of the congruency between the genus of services sought to be identified and the nature of the relevant public's understanding of the services evoked by the mark.

On appeal, Reed argued that the TTAB improperly considered all services offered on its www.lawyers.com Web site, rather than focusing on just the services specifically identified in the application (which excluded information exchange about lawyers). Reed further argued that the TTAB's finding ' that an element of the claimed genus was information about lawyers and information from lawyers ' was not supported by substantial evidence. In rejecting both arguments, the Federal Circuit reasoned that 'lawyers are necessarily an integral part of the information exchange about legal services,' which was part of the description of services claimed in the application. The court further determined that the TTAB had appropriately reviewed the www.lawyers.com Web site for context in understanding the meaning of the services claimed in the application and that such Web site demonstrates that 'information exchange about lawyers is not at all discrete from information exchange about the law, legal news, and legal services.' Finally, in affirming the TTAB's ruling, the court approved of the TTAB's consideration of eight other Web sites containing 'lawyer.com' or 'lawyers.com' in determining what the relevant public would understand LAWYERS.COM to mean.

Court Interprets Supreme Court's KSR Decision

In Leapfrog Enterprises, Inc. v. Fisher-Price, Inc, 06-1402 (Fed. Cir. May 9, 2007), the Federal Circuit considered the Supreme Court's ruling in KSR Int'l Co. v. Teleflex Inc. et al., in affirming the district court's finding that claim 25 (the only claim at issue) of U.S. Patent No. 5,813,861 ('the '861 patent') assigned to Leapfrog Enterprises, Inc. ('Leapfrog') was invalid as obvious.

Leapfrog brought suit against Fisher-Price, Inc. and Mattel, Inc. (collectively 'Fisher-Price') alleging that Fisher-Price's PowerTouch product infringed claim 25 of the '861 patent. Claim 25 was directed to an interactive learning device, comprising, among other things, 'at least one depiction of a sequence of letters ' a reader configured to communicate the identity of the depiction to the processor, wherein selection of a depicted letter activates an associated switch to communicate with the processor, causing the sound production device to generate a signal corresponding to a sound associated with the selected letter.'

After a jury deadlock, the parties stipulated that the case would be submitted to the trial court for decision. The trial court found claim 25 not infringed and also invalid as obvious over U.S. Patent No. 3,748,748 to Bevan, the Texas Instruments Super Speak & Read ('SSR') device, and the knowledge of one of ordinary skill in the art.

On appeal, the Federal Circuit affirmed the trial court's findings of non-infringement. As to obviousness, Leapfrog argued that there was inadequate evidence in the record to support a motivation to combine Bevan, the SSR, and a reader to arrive at the invention of claim 25. However, in light of the Supreme Court's KSR ruling, the Federal Circuit disagreed with Leapfrog's argument. The court reasoned that an obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. In affirming the district court's finding of obviousness, the court considered the goal of claim 25, which the court found was to allow a child to press a switch associated with a single letter in a word and hear the sound of the letter as it is used in that word. The court reasoned that '[a]ccomodating a prior art mechanical device that accomplishes that goal to modern electronics would have been reasonably obvious to one of ordinary skill in designing learning devices.' The court then found no error in the district court's determination that the Bevan patent taught a mechanical device having the same method of operation, viewed as a whole, as claim 25 of the '861 patent. Further, the court determined that the SSR was a modern type of prior art learning toy with electronic components, but had a slightly different mode of operation than Bevan. Finally, the court determined that one of ordinary skill would have found it obvious to 'combine the Bevan device with the SSR to update it using modern electronic components in order to gain the commonly understood benefits of such adaptation, such as decreased size, increased reliability, simplified operation, and reduced cost.'

Court Has Jurisdiction to Invalidate Claims Withdrawn from Suit

In Honeywell Int'l Inc. v. Universal Avionics Sys. Corp., 05-1112, -1151, -1152 (Fed. Cir. May 25, 2007), Honeywell appealed a district court summary judgment ruling that several claims of its asserted patents that had been withdrawn from the litigation were invalid. Specifically, Honeywell argued that the district court erred by exercising its jurisdiction over defendant's request for declaratory relief on the withdrawn claims.

During the course of the litigation, Honeywell attempted to withdraw many of its originally asserted claims from suit and represented to the defendants that it would not pursue infringement of the same. However, the district court determined that Honeywell's refusal to withdraw all of the claims in the relevant asserted patents left the defendants with a reasonable apprehension of suit and thus exercised its discretion in retaining jurisdiction. The district court then found many of the withdrawn claims to be invalid as anticipated.

In affirming the district court's determination that jurisdiction existed to invalidate the withdrawn claims, the Federal Circuit noted that the Supreme Court's decision
in MedImmune, Inc. v. Genetech Inc., 549 U.S. ___ (2007) eliminated the 'reasonable apprehension of imminent suit' test. Instead, the court considered whether an actual controversy existed between the parties, as required by the Declaratory Judgment Act, 28 U.S.C. '2201(a), and Article III of the Constitution.

Under such a framework, the court reasoned that infringement of a dependent claim also entails infringement of its associated independent claim. Because Honeywell chose to leave certain dependent claims in the suit (but withdraw the independent claims) the entire subject matter of the claims remained at issue, and thus the district court did not err in exercising its discretion to retain jurisdiction over the withdrawn claims.

Matt Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP.