Colleen Goss on Startups and Trademark Protection
December 01, 2011
Your trademarks are what customers use to recognize your company, your product, and/or your services. Wouldn’t you want to take the necessary steps to protect your hard-earned brand identity? Many businesses, especially startups, do not think about this subject until their products are ready to launch. Some do not consider trademark protection until even later, when they run into a conflict.
If you have reached that point, you are late, says Colleen Flynn Goss, Counsel at at Fay Sharpe LLP. “It needs to happen early in the process,” Goss says. “Certainly not when the business is still a ‘shower idea,’ but definitely before your product is well on its way to market.”
If you'd like to know why that is, you can read the rest of the article at Smart Business.
Colleen Flynn Goss is Counsel at Fay Sharpe LLP, can be reached at (216) 363-9132 or cfgoss@faysharpe.com
Tim Nauman discusses with Smart Business Cleveland How Patent Law Reform will affect your Business.
October 31, 2011
The America Invents Act, passed Sept. 16, 2011, contains reforms that will affect businesses in many ways, including how they must pursue patents. One of the goals of this legislation is to standardize U.S. law with the way the rest of the world handles patents. The change that is receiving the most attention is the switch from first-to-invent rights to first-to-file. The new system goes into effect in March of 2013.
Read the rest of the article over at Smart Business.
Timothy E. Nauman is a partner with Fay Sharpe LLP. Reach him at (216) 363-9136 or tnauman@faysharpe.com.
Avoiding Trademark Scams
October 24, 2011
By Ukeme Awakessien
Have you recently received a letter stating that your trademark registration is about to expire, or asking you to list your trademark on a “registry” of trademarks? Chances are … it’s a scam.
How Did They Get Your Information?
The United States Patent & Trademark Office (USPTO) makes existing trademark registrations and pending trademark applications public record. They do so for two reasons: (i) give notice to the world of the rights being claimed, and (ii) afford entities whose own rights may be harmed by registration of the published mark the opportunity to come forward and lodge an opposition. These records include bibliographic information like the trademark owner’s name, address, mark, registration number etc. Foreign trademark offices do likewise. Unfortunately, this data is mined for a number of different scams. If you have ever applied to register a trademark in the U.S. or abroad, you will likely receive more than one such mailing.
Types of Trademark Scams
The scams can come in the form of either regular mail or e-mail. They are purposefully designed to look official and they bear detailed information about a registrant’s mark and the associated goods and/or services. Hence, they could be misunderstood to be a notice from the USPTO or other government agencies. Some warn that failure to renew your trademark will result in its abandonment. Others solicit getting listed in something termed an International Trademark Registry. One thing they all have in common is that they ask for your money.
The “registry” type of scam letter solicits listing or monitoring your trademark when your mark is already listed in a public registry maintained by the USPTO or a foreign trademark office. No additional fee is required for such publication or registration. And, the proffered “International Trademark Registry” has no legal effect. You would be wasting your money.
The “renewal” type of scam letters are often sent before it is even possible to pay the renewal fee. The scammers need to send it out early to preempt communications from the attorney that handled the trademark application.
Moreover, these scams pose a much greater risk to your trademark than just trying to sell you something you don’t want. Besides paying much more than you should to renew your mark, failure to renew a registration properly may result in loss of the special benefits of a federal registration. Failure to renew a registration of a trademark does not void all rights to the mark, since common law rights remain in the U.S, and other common law countries. But registration does confer a number of benefits, namely it serves as evidence of: a) registrant’s ownership of the mark, b) exclusive right to use the mark, and c) validity of the mark. Registering a trademark heightens the protection it receives, deters others from using your trademark, and increases the remedies should someone infringe upon your trademark.
How to Avoid the Scams.
These scams can easily be avoided if you are educated about the risks:
- If you registered your trademark through an attorney, all correspondence from the USPTO as well as any foreign trademark office will be sent directly to your attorney. One clear indicator that you have received a scam is that the correspondence is sent directly to you.
- The USPTO charges fees for any trademark according to fee schedule 37 CFR 1.27 and it is done "per class" - that is, the fees you are charged are determined by the goods and/or services that your trademark falls under. You can find fee information on the USPTO website.
- Check the source of the communication, and note where they are asking the money to be sent. An examination of the company’s solicitation may help to raise suspicions that the letter is not legitimate.
- Notify your accounts payable department to make them aware of these scams; do not allow them to be misled by the official looking “invoices.” You should always contact your attorney if you have any questions about the legitimacy of the services offered.
Unfortunately, while unethical, these scams are not entirely illegal either. If there are any doubts, companies are advised to contact their attorney in order to verify trademark-related correspondence.
Guidance for Trademark Owners on Blocking .XXX Domain Names
October 11, 2011
By: Scott Frederick Peachman
Adult entertainment providers will soon be able to register for .xxx top-level domains (TLDs) using their registered trademarks or established domain names. The .xxx TLD was created by the Internet Corporation for Assigned Names and Numbers (ICANN) to offset, regulate, and centralize adult content on the Internet. While there are advantages to the launch of .xxx TLDs, such as increased source identification for adult entertainment providers and lessened chance that children will accidently access adult websites, there is also concern that cybersquatters may embarrass non-adult companies by registering domain names similar to their brands. Concerned non-adult trademark holders can act now to protect their marks already registered on the Principal Register by applying for an “opt-out” that prevents their brands from being incorporated into a .xxx domain name.
As part of the launch of the .xxx TLDs, ICANN has instituted two concurrently running “Sunrise” periods that expire on October 28, 2011. The “Sunrise A” period applies to qualified adult entertainment providers that own nationally registered trademarks or domain names and are seeking to register .xxx TLDs that incorporate those terms. The “Sunrise B” period applies to non-adult businesses that own nationally registered trademarks (not domain names) and are seeking an opt-out to remove their trademarks from the new TLD regime in order to block third parties from acquiring .xxx domain names incorporating their registered trademarks.
The domain name sought by either adult entertainment providers or non-adult trademark holders must correspond to the entire text of a textual registered mark (or in the case of adult oriented domain name registrations, the entire domain name), or correspond to the complete textual component of a graphical or compound registered trademark. If a non-adult trademark owner’s application to opt-out of a .xxx TLD is approved during the Sunrise B period, and no adult entertainment provider has applied for the same .xxx TLD, the domain name will be blocked and resolve to a standard information page indicating that the mark is not available for registration. If both Sunrise A (adult site) and Sunrise B (general site) applications are filed for the same domain name, each party will receive notice. This would provide the Sunrise B applicant with an opportunity to negotiate an agreement preventing its trademark from being used in a .xxx domain name. If the Sunrise A applicant does not withdraw its application, however, priority will go the qualified Sunrise A applicant.
To be eligible to opt-out of an .xxx TLD during the Sunrise B period, you must own a mark that has been nationally (US Principal Register or Foreign) registered as of September 1, 2011. If you have trademarks that are not registered or are registered on the U.S. Supplemental Register and are worried about the potential misuse of your brand as a .xxx TLD, you may apply to register your common law mark as a non-resolving .xxx TLD (meaning that a blank page will be shown) during the General Availability period, which beings on December 6, 2011.
If your application to opt-out of an .xxx TLD is approved during the Sunrise B period the domain name will be blocked for ten years. If you choose to register your mark during the General Availability Period, you may do so for up to ten years.
Contact us today to reserve your mark before the end of the Sunrise B period on October 28th. Reserving your mark during the Sunrise B period provides low-cost insurance against the potential abuse of your mark by third parties. For more information regarding the application process, please contact your Fay Sharpe attorney.
Patent Publication Scams
October 11, 2011
By DeMarcus Levy
Have you recently received a notice indicating that a fee is required from you in order to publish your recently filed Patent Cooperation Treaty (PCT) or international patent applications or register your international trademarks? If so, it is likely a con.
The invoices appear to be official government communications, and are purposely designed so. The notices and associated websites often feature names and logos similar to those of the World Intellectual Property Organization (WIPO) and include biographical information about the application available in the public domain. Additionally, the invoices requesting these unnecessary fees may come in envelopes bearing the WIPO logo and mailing address. These notices typically call for a payment in Euros, U.S. Dollars, or British Pounds in the form of a check or electronic transfer to addresses in Australia, Switzerland, the Czech Republic, Hong Kong, Germany, Iceland, Slovakia, or the United States. Fees typically range between two and three thousand U.S. dollars. As you may have guessed, some of these documents even include warnings about unwarranted fees that may be charged by other companies.
False Promise:
So, where’s the fraud? Any registration or publication offered by these companies is not recognized by WIPO or any national or regional patent office and grants no rights or protections to applicants. This is so because as per PCT Article 21 only the International Bureau of WIPO is authorized to publish international patent applications or register international trademarks. No additional fee is required for such international publication or registration.
What’s so important about international publication or registration? Remember, as per PCT Article 29 an applicant, upon the publication of his or her international application or the registration of his or her international trademark, enjoys the rights and protections afforded to applicants holding national applications or marks in PCT member states that the applicant has designated in his or her PCT application.
The Response:
What has WIPO done to combat these fraud attempts? WIPO regularly places warnings about these scams in its PCT Newsletter. WIPO also posts copies of fraudulent invoices on its website (http://www.wipo.int/pct/en/warning/pct_warning.html) as they are made known. Various National patent offices (e.g. Australia, Austria, France, Germany, Israel, Japan, Switzerland, and the United Kingdom) have placed similar warnings on their websites.
Is legal action an effective way to combat this deceptive business practice? The Czech Republic and the state of Florida have taken legal action against violators within their borders. Unfortunately, these scams are not necessarily illegal, so legal action is not often an effective deterrent.
What You Can Do:
- DO NOT PAY THE REQUESTED FEE.
- Contact your patent attorney to determine if it is a deceptive invoice. If the fraudulent invoice is not currently listed on the WIPO website, have your attorney alert WIPO and also notify appropriate US government agencies (e.g. the United States Patent and Trademark Office).
- Spread the word to colleagues and complain to consumer interest groups. (This may be especially important due to the lack of effective legal responses.)
Steve Haas in "Smart Business Cleveland" on how to control your Intellectual Property costs.
October 04, 2011
Fay Sharpe's own Steve Haas was featured in this month's Smart Business Cleveland, with an article on how to plan for and control your Intellectual Property Costs. With tips for companies just getting started, and even some tips for established companies, the full article can be found at the link below.
How to develop and control your intellectual property budget for a competitive advantage
Sue Ellen Phillips Advises on How Start-ups and Small Businesses Should Handle Their Intellectual Property
September 01, 2011
In the September edition of Smart Business Cleveland, Fay Sharpe partner Sue Ellen Phillips provides insight into the importance of intellectual property for small businesses and start-ups. Click the link below to read the entire article.
August Edition of Smart Business Cleveland Features Partner, Phil Moy, Regarding Avoiding False Patent Marking Litigation
August 01, 2011
Please click on the link below to read the article featuring Phil Moy, discussing how to avoid patent marking litigation and the fines that accompany it. Phil's article can be found in the August edition of Smart Business Cleveland.
Ann Skerry Discusses How to Secure a Patent for Green Technology in Smart Business Cleveland
July 07, 2011
In the July edition of Smart Business News Cleveland, Fay Sharpe partner Ann Skerry provides information to best help secure a patent for green technology. To read the full article, click on the link below.
Sandra Koenig Contributes to Article On How To Protect Your Website
June 02, 2011
Smart Business News interviewed Fay Sharpe partner, Sandra Koenig, on the importance of protecting your website from copyright and trademark infringement. The Q&A was featured in an article published in Cleveland's June edition. You can read the article by clicking on the link below:
Fay Sharpe's Director of Administration, Doug Graham, Makes Presentation on Alternative Fee Arrangements
May 04, 2011
After years of discussions, Alternative Fee Arrangements are gaining momentum and are becoming a fact of legal financial life. Fay Sharpe's Director of Administration, Doug Graham, along with Jay Erdman of Rippe & Kingston, presented at an educational event on May 3rd which discussed some of the creative legal billing strategies that are impacting the legal financial landscape and why the conversation keeps coming back to Alternative Fee Arrangements (AFA). Topics included risks and benefits of AFA's, assessment of how these arrangements affect law firm profitability, and ideas on how to sustain profitability and potentially raise revenues while living with AFA's. If you would like a copy of the presentation, please contact Doug Graham at dgraham@faysharpe.com
Fay Sharpe Partner, Jay Moldovanyi, Contributes Article to Smart Business Cleveland
May 01, 2011
Click on the link below for the article, "How Getting Your Patent Approved Quicker with a Fast-Track Exam Can Benefit Your Business." The artilce, published in the May issue of Smart Business Cleveland, was written by Fay Sharpe partner, Jay Moldovanyi.
The Multi-Generational Workforce: Recognizing Differences and the Impact on Law Firms
April 01, 2011
In today’s workforce at least four generations are represented, distinctively defined by their life experiences and, on several levels, distinctively different from each other. Each group brings to the table unique learning styles, motivations and definitions of what constitutes success. But the question many firms currently struggle with is how to recognize and utilize generational differences to the betterment of the organization. On March 29th, members of Fay Sharpe had the opportunity to attend a panel discussion on this topic. “The Evolution of Law Firms – The Generation Gap” brought together members of the Traditionalists generation (born 1928-1945), Baby Boomers (1946-1964); Generation X (1965-1979); and Generation Y (1980-2000). The panelists were asked to describe how they saw his/her own generation as well as provide perceptions of the other generations. Based on observations, a broad spectrum view - a generalization for the generations - was developed:
Traditionalists - Willing to sacrifice; places work and duty before family and fun
Baby Boomers - Transformational, entire careers spent adapting to change, more comfortable with change than in the absence of change
Generation X - Compartmentalized, pioneered “work-life balance” both in the need for it and struggle to attain it
Generation Y - Highly collaborative, seeks teams and flexibility; technologically connected 24/7 in a way no generation before has been
The panel agreed that each generation brings necessary values and skills to the workplace and felt that the most successful law firms will understand the values, motives and anticipated rewards of each generation and will be able to use that information to hire and retain the best. Accepting generational differences can help tackle challenges facing law firms – difficult questions like: Does physical presence in the office remain a reliable predictor of quantity or quality of work performed? Is the billable hour the only or best way to measure success? Are current reward structures soliciting desired outcomes?
Kim Textoris, Fay Sharpe associate and panel representative for Generation Y, appropriately summed up what it takes to work with anyone, in any generation, “It’s about expectations. If it’s clear to me, I’ll do it. Communication is key. You need to have conversations to express expectations.”
As one panelist said, generations could benefit by “taking a deep breath” and realizing there are differences. If we work to embrace those differences, it will only benefit the firm. Regardless of generation, there are commonalities simply in being lawyers.
Fay Sharpe Receives Interior Design Award
November 22, 2010
Earlier this November, the Cleveland Chapters of the American Institute of Architects (AIA) and the International Interior Design Association (IIDA) presented their 2010 awards in several categories including built work, renovations and interior design. Fay Sharpe was among those receiving recognition.
The office space of Fay Sharpe LLP was awarded Honorable Mention for Interior Design by the IIDA. The design was entered by Vocon, an architectural and interior design firm commissioned to create a new style and feel for the law firm, which includes an open floor plan, and abundance of natural light and a colorful, contemporary decor. The design jury praised Fay Sharpe for it's imaginative use of materials and space for a law firm design.
Fay Sharpe LLP has occupied the entire fifth floor of the historic Halle Building since December 2008. "Historical residue" elements salvaged from the 1920's-era department store contributed to a design that reflects old world values combined with a modern approach to Intellectual Property law.
To get a closer look at the interior design of the office, just click through our website!
Bilski V. Kappos: Are Business Methods Still Patentable?
July 06, 2010
By Jay Moldovanyi, Joe Dreher and Eric Highman
On June 28, 2010, the United States Supreme Court finally decided the long-awaited Bilski case.
The Bilski claims pertained to a method by which buyers and sellers of commodities in the energy market can protect, or hedge, against the risk of price changes. The Patent Examiner concluded that the claims were not patentable under Section 101 of the Patent Act. Section 101 states that any new and useful process, machine, manufacture, or composition of matter, is patentable. Here, the focus was on the definition of “process,” and the Examiner concluded that the claims were to an abstract idea, which was not a process. The Board of Patent Appeals and Interferences upheld the Examiner. The Federal Circuit likewise found the Bilski patent application ineligible for patent protection. However, the Federal Circuit employed a newly articulated “machine or transformation” test to hold the Bilski claims unpatentable and said this was the only test for eligibility of process claims. In order to pass this test for patentability, a process must either be tied to a special purpose machine or apparatus, not just a general purpose computer, or the process or method must transform an article into “a different state or thing.”
The Supreme Court held that Bilski’s concept of hedging described in the claims is an unpatentable abstract idea just like the algorithms which were at issue in earlier Supreme Court decisions in Parker v. Flook, 437 U.S. 584 (1978) and Gottschalk v. Benson, 409 U.S. 63 (1972). The Court held that Mr. Bilski was trying to patent both the concept of hedging risk and the application of this concept to the energy markets.
The ruling was fragmented. In a 5-4 ruling, the Supreme Court rejected as overly rigid the Federal Circuit’s “machine or transformation” test as the sole test for determining whether a claimed process is patent eligible. The majority’s 16-page decision stated that “In disapproving an exclusive machine - or - transformation test, we by no means foreclose the Federal Circuit’s development of other limiting criteria that further the purposes of the Patent Act and are not inconsistent with its text.”
Justice Stevens, in a 47-page concurring opinion joined in by three other justices, stated that the Bilski claims were to a business method and all business methods should be held categorically unpatentable. Justice Breyer, in part 2 of his concurring opinion, in which Justice Scalia joined, stated that all the justices are in agreement on the following four points:
- Section 101 of the Patent Act is broad, but not without limit.
- The machine or transformation test is useful for identifying a patentable process.
- The machine or transformation test is not the sole test for identifying patentable subject matter.
- The “useful concrete and tangible result” test which the Federal Circuit developed in State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. 1998) has never been endorsed by the Supreme Court as a test for determining whether the claims of a patent application contain patentable subject matter.
Thus, the Supreme Court opinion offers no dispositive rule for those tasked with determining whether a particular method or process claim is statutory under Section 101 of the Patent Act.
After the Bilski decision was issued, a notice to the Examiners at the Patent Office stated that:
Examiners should continue to examine patent applications for compliance with Section 101 using the existing guidance concerning the machine or transformation test as a tool for determining whether the claimed invention is a process under Section 101. If a claimed method meets the machine or transformation test, the method is likely patent eligible under Section 101 unless there is a clear indication that the method is directed to an abstract idea. If a claimed method does not meet the machine or transformation test, the Examiner should reject the claim under Section 101 unless there is a clear indication that the method is not directed to an abstract idea. If a claim is rejected under Section 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea.
While Bilski ultimately holds that business methods are not per se unpatentable, the practical effect of this decision may well be that patents on business methods will be much more difficult to obtain in the future.
Be Specific In Your Specification
June 30, 2010
By DeMarcus Levy, Law Clerk
The filing date of a patent application can be critical in determining what prior art can be applied against its claims. In April 2010, Nintendo of America obtained a reversal of a U.S. District Court decision holding that certain Nintendo video game controllers infringed upon a patent, U.S. Patent 6,906,700 (“the ‘700 patent”), owned by Anascape. Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333, 1339 (Fed Cir. 2010). The district court held the Anascape ‘700 patent valid and infringed, and awarded damages of $21M. Anascape, Ltd. v. Ninendo of Am., Inc., No. 9:06-CV-158 (E.D.Tex. July 23, 2008). The pivotal issue was the filing date that Anascape’s ‘700 patent could rely on, as that would determine what prior art could be cited against the claims of the patent. Anascape sought to remove prior art in the form of Sony’s “DualShock” (patented in 1998) and “DualShock 2” (patented in 2000) video game controllers by claiming priority to its earlier patent, U.S. Patent 6,222,525 (“the ‘525 patent”), which was patented in 1996. The district court held that the ‘700 patent was substantially described by the ‘525 patent and was thus entitled to the filing date of the ‘525 patent.
To obtain the filing date of a parent patent, the claims of the child patent application must be so described in the parent patent “that one skilled in the art can clearly conclude that the inventor intended the [child] invention as of the [parent patent] filing date sought.” Lockwood v. American Airlines, Inc., 107 F.3d 1566, 1572 (Fed. Cir. 1997). In other words, for a child patent application to be entitled to use of the filing date of a parent patent it must be shown that the parent patent’s specification contained a sufficient description of the later-claimed subject matter of the child patent. Without such a showing, the child patent only receives its own filing date as it is “new matter” for which the parent patent does not give sufficient disclosure.
Here, Anascape asserted that the specification of the ‘525 patent described a controller having a single input member that operated in six degrees of freedom. In addition Anascape asserted that the specification of the ‘525 patent could also be construed to support claims for controllers having multiple input members that together operate in six degrees of freedom (6 DOF), as this was the subject matter described and claimed in the ‘700 patent. The district court noted that for the parent patent “[Anascape] clearly expected the inventions to be used with a single input member (such as a joystick) that moved in 6 DOF to control an image appearing to move in three dimensions.” Anascape, Ltd. v. Nintendo of Am., Inc., No. 9:06-CV-158 (E.D.Tex. July 23, 2008). The Federal Circuit conceded this, but held that the specification of the parent patent failed to explicitly disclose multiple input members that together operate in 6 DOF. The court noted, “A patentee is not deemed to disclaim every variant that it does not mention. However, neither is a patentee presumed to support variants that are not described.” Anascape, Ltd. v. Nintendo of Am., Inc., 601 F.3d 1333, 1339 (Fed. Cir. 2010) (referencing Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003)). In short, the only claimed subject matter in a child patent application which is entitled to the filing date of a parent patent application is the information explicitly and understandably described in a parent patent and intended to apply to future inventions, such as those described in the child patent application.
Court Ruling Unleashes Flood of False Marking Lawsuits. Fay Sharpe Advises Clients to Take Proactive Steps.
March 30, 2010
In the past few weeks an attorney, Thomas Simonian, has filed more than 38 lawsuits against companies (such as Pfizer, Blistex, Ciba Vision, Hunter Fan, Kimberly-Clark, Mead Westvaco, Oreck, Fiskars, 3M, BP, Novaris, Merck, L'Oreal, Playtex, Abbott Laboratories, Allergan, Bausch and Lomb and Maybelline) claiming that the defendants falsely marked patent numbers on their products. The Patent Compliance Group, Inc., Hollander, Public Patent Foundation, Heathcote Holdings Corp., Inc., Brinkmeier, Perfection Product Management, LLC and Zojo Solutions Inc. have filed similar suits against a multitude of defendants.
It is not mandatory to list a patent number on a product covered by the claims of the patent. However, failure to mark your products with a patent means you are barred from obtaining damages for infringement that occurred prior to your informing an infringer of the existence of your patent.
All of the defendents in these cases mark patent numbers on their products. However, many of the patent numbers listed allegedly are expired, contain typographical errors directing the consumer to the wrong patent, or have a scope which does not cover the marked product. The plaintiffs also claim that the defendants' actions were intentional in an effort to "deceive the public and to gain a competitive advantage in the market." These suits have been filed as qui tam actions brought on behalf of the public whereby any private citizen can sue to recover the monetary penalty and retain for itself one half of the penalty awarded. Section 292 of the Patent Act provides that a person who falsely marks an unpatented article as being patented, where the false patent marking was done with intent to deceive the public, shall be fined not more than $500 for every such offense. "Offense" has recently been interpreted to mean every article sold.
Fay Sharpe LLP urges its clients to take proactive steps to avoid becoming embroiled in false marking litigation. Please contact us if you need assistance in performing a review of products and/or literature listing patent numbers.
When Are You Liable For False Marking?
By Kyle McMahon, Law Clerk
Displaying expired patent numbers on your products may lead to costly litigation requiring you to rebut the initial presumption that these markings were deceptive. “False marking” is defined in 35 U.S.C. § 292(a) as marking “in connection with any unpatented article, the word ‘patent’ or any word or number importing that the same is patented, for the purpose of deceiving the public . . . .” The act of false marking comes with a penalty of “not more than $ 500 for every such offense.” See 35 U.S.C. § 292(a).
Earlier, the Federal Circuit addressed the issue of what is meant by “every such offense” in Forest Group, Inc. v. Bon Tool Co., holding that penalties should be imposed on a per article basis. See 590 F.3d 1295, 1304 (Fed. Cir. 2009). Most recently, the Federal Circuit addressed the liability for false marking in Pequignot v. Solo Cup Co., No. 2009-1547, 2010 WL 2346649, (Fed. Cir. Jun. 10, 2010). In this case, Matthew A. Pequignot (“Pequignot”) appealed from a district court decision granting summary judgment to Solo Cup Co. (“Solo”) of no liability for false marking. See Pequignot v. Solo Cup Co., 646 F.Supp.2d 790 (E.D. Va. 2009). Over $10 trillion was at stake in this case because Solo had allegedly falsely marked over 21 billion articles (cup lids).
Solo owned U.S. Patent Re. 28,797 (issued May 4, 1976) and U.S. Patent No. 4,589,569 (issued May 20, 1986). Solo began marking the covered products with their respective patent numbers by adding these numbers to their mold cavities.
Solo’s U.S. Patent Re. 28,797 expired on June 8, 1988. In June 2000, Solo learned that it was still marking its products with an expired patent number. At this time, based on outside counsel’s advice, Solo developed a policy where the current mold cavities would be replaced with mold cavities without the expired patent marking when they needed to be replaced for wear or damage. Solo adopted this same policy when U.S. Patent No. 4,589,569 expired on October 24, 2003.
Pequignot brought a qui tam action (Pequignot would receive half of any penalty against Solo, with the remaining half being awarded to the United States) alleging that Solo knew that these patents had expired and falsely marked its products with the patent numbers for the purpose of deceiving the public. The Federal Circuit agreed with the District Court and Pequignot that “articles marked with expired patent numbers are falsely marked” and thus, Solo’s products were falsely marked. See Pequignot v. Solo Cup Co., 2010 WL 2346649 at *5. However, this did not, by itself, satisfy the requisite mental state of Solo for liability; Solo must have falsely marked products for the purpose of deceiving the public.
The Federal Circuit stated that the combination of a false statement and knowledge that the statement was false merely creates a rebuttable presumption of intent to deceive the public. See id. at *6. When the false markings at issue are expired patents that had previously covered the marked products, this presumption of intent to deceive is weaker. See id. at *7. Additionally, Solo referred to the advice of its counsel as evidence that the true intent of its policy was to reduce business costs and disruption and noted that it implemented and followed this policy to rebut this presumption. See id. Pequignot had not provided any credible contrary evidence. See id. at *8.
Thus, the Federal Circuit agreed with the District Court’s summary judgment holding in favor of Solo because the required intent to deceive the public with the false patent markings was not present. See id.
Can the Same Word Have Different Meanings in Different Claims?
By Grant Steyer, Law Clerk
While not a recommended claim drafting procedure, it is possible to define the same word differently in different claims. It is, however, not possible to define a word differently within the same claim. The Federal Circuit recently addressed this issue in Haemonetics Corp. v. Baxter Healthcare Corp., 2010 U.S. App. LEXIS 11122 (Fed. Cir. 2010).
Haemonetics brought suit against Fenwal (Fenwal became an independent corporation from Baxter when Baxter divested its centrifugal therapies business) for patent infringement, alleging that a centrifugal system developed and sold by Fenwal infringed claim 16 of their U.S. Patent No. 6,705,983 (“the ‘983 patent”). Fenwal counterclaimed that claim 16 of the ‘983 patent was invalid for indefiniteness, lack of novelty, and obviousness. During trial, the district court was required to interpret claim 16, because “centrifugal unit” was defined differently in claim 16 than it was in claim 1 of the patent. In claim 1, “centrifugal unit” was defined as comprising only a vessel. Later in the patent, at the beginning of claim 16, “centrifugal unit” was identified as comprising a vessel and a plurality of tubes. However, at the end of claim 16, contradicting the definition given earlier in the same claim, “centrifugal unit” was used as if it comprised only a vessel. If the court found the use of “centrifugal unit” in claim 16 to be inconsistent, it was more likely that a jury would find the claim indefinite and invalid. See Id. at 12 (For a claim to be indefinite “one of ordinary skill in the relevant art could not discern the boundaries of the claim based on the claim language”). The district court did not find the use of “centrifugal unit” in claim 16 to be contradictory, but rather construed the later use of “centrifugal unit” in claim 16 to refer to the vessel only, despite centrifugal unit being defined earlier in the same claim as a vessel and plurality tubes.
On appeal, the Federal Circuit overruled the district court’s interpretation of the claim. The Federal Circuit found that claim 16 “unambiguously defines ‘centrifugal unit’ as ‘comprising’ two structural components” and that reading “centrifugal unit” later in the same claim to refer only to the vessel “ignores the antecedent basis for ‘the centrifugal unit’” as used in the claim. Id. at 9. Citing Federal Circuit precedent, the court found that “‘centrifugal unit’ has one meaning in claim 1 and another [meaning] in claim 16.” Id. at 10; See, Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322 (Fed. Cir. 2006) (the Federal Circuit held that “gap” had two different meanings in two separate independent claims). Finding that “centrifugal unit” referred to a vessel and plurality of tubes in claim 16 and only a vessel in claim 1, the Federal Circuit held that the later use of “centrifugal unit” in claim 16 referred to a vessel and plurality of tubes. The court found the district court’s holding that the later use of “centrifugal unit” in claim 16 as only a vessel to be “nonsensical.” The court remanded the case back to the district court for a determination of whether claim 16 as so construed is invalid.
Redefining a previously defined term between multiple claims in a patent is allowable, but not recommended. As Haemonetics demonstrates, multiple definitions for a single word can lead to errors during the patent drafting process itself, and may well confuse the reviewing court.