On Sale Bar Derails Locomotive Bearing Patents

Case Name: Electromotive Division of GM Corp. v. Transp. Sys. Division of GE Co. (Fed. Cir. 7/28/05 - No. 04-1412)

The One-Sentence-Summary: Pre-critical date sales of locomotive bearings were not experimental and triggered the on-sale bar of 35 U.S.C. § 102(b) when the buyers were not aware of any experimental purpose and were not subject to control by the inventor.

Federal Circuit Rulings:

• A single sale before the critical date bars patentability. "We have recognized that the first prong "involves a determination of whether a commercial offer for sale [or sale] has occurred, applying traditional contract law principles." Allen Eng’g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1352 (Fed. Cir. 2002). In this case, the district court found several invalidating sales for the ’242 and ’056 patents. We need not consider whether the district court was correct as to all of these sales because a single sale or offer for sale suffices to bar patentability. Atl. Thermoplastic Co. v. Faytex Corp., 970 F.2d 834, 836 (Fed. Cir. 1992)." Slip Opinion at 9.
• A sale that is primarily for experimentation rather than commercial gain will not invoke the on-sale bar. "[T]he first prong of the Pfaff test entails an assessment of whether the circumstances surrounding a pre-critical date sale objectively show that it was primarily made for experimentation. '[T]he question posed by the experimental use doctrine, assessed under the first prong of the two-part on-sale bar test of Pfaff, is not whether the invention was under development, subject to testing, or otherwise still in its experimental stage at the time of the asserted sale. Instead, the question is whether the transaction constituting the sale was not incidental to the primary purpose of experimentation, i.e., whether the primary purpose of the inventor at the time of the sale, as determined from an objective evaluation of the facts surrounding the transaction, was to conduct experimentation.' Allen Eng’g, 299 F.3d at 1353 (citing EZ Dock, 276 F.3d at 1356-57 (Linn, J., concurring)) (internal citations and quotations omitted). If the sale was primarily for experimentation rather than commercial gain, then the sale is not invalidating under § 102(b). Monon, 239 F.3d at 1258 (“[E]vidence that the . . . sale of the patented device was primarily experimental may negate an assertion of invalidity.”)." Slip Opinion at 10.
• The sales of compressor bearings before the critical date were commercial rather than experimental, particularly because the buyer did not return the bearings for any testing before the bearings were released in a general commercial release. Slip Opinion at 11.
• Testing for an inherent feature of the invention that is not claimed can nevertheless be experimentation preventing application of the on-sale bar. "It is important to recognize that this court has limited experimentation sufficient to negate a pre-critical date public use or commercial sale to cases where the testing was performed to perfect claimed features, or, in a few instances like the case here, to perfect features inherent to the claimed invention. See, e.g., EZ Dock, 276 F.3d at 1353 (experimentation focused on durability of claimed polyethylene floating dock in turbulent water of the Mississippi River, although durability was not a claim limitation); Seal-Flex, Inc. v. Athletic Track & Court Constr., 98 F.3d 1318, 1320 (Fed. Cir. 1996) (experimentation focused on durability of claimed all-weather activity mat under harsh weather conditions, but durability was not a claim limitation); Manville, 917 F.2d at 550- 51 (experimentation focused on durability of claimed self-centering, lightpole luminaire under severe winter conditions in Wyoming, even though durability was not a claim limitation). Here, EMD designed its field program to verify durability, a feature, although unclaimed, we hold is inherent to the new planetary bearings. Hence, evidence showing that EMD’s field program has the requisite objective indicia of experimentation may negate EMD’s pre-critical date sale of the new planetary bearings to Union Pacific."
• Subjective intent to experiment is not sufficient to avoid the on-sale bar. "Significantly, an inventor’s subjective intent to experiment cannot establish that his activities are, in fact, experimental. 'When sales are made in an ordinary commercial environment and the goods are placed outside the inventor’s control, an inventor’s secretly held subjective intent to "experiment," even if true, is unavailing without objective evidence to support the contention. Under such circumstances, the customer at a minimum must be made aware of the experimentation.' LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 1072 (Fed. Cir. 1992) (citing In re Brigance, 792 F.2d 1103, 1108 (Fed. Cir. 1986))." Slip Opinion at 14.
• The court listed 13 objective factors that may be considered in evaluating whether a sale was for experimental or commercial purposes. "Recently, we catalogued and consolidated all these considerations into a list of thirteen objective factors: (1) the necessity for public testing; (2) the amount of control over the experiment retained by the inventor; (3) the nature of the invention; (4) the length of the test period; (5) whether payment was made; (6) whether there was a secrecy obligation; (7) whether records of the experiment were kept; (8) who conducted the experiment; (9) the degree of commercial exploitation during testing; (10) whether the invention reasonably requires evaluation under actual conditions of use; (11) whether testing was systematically performed; (12) whether the inventor continually monitored the invention during testing; and (13) the nature of the contacts made with potential customers. Allen Eng’g, 299 F.3d at 1353 (citing EZ Dock, 276 F.3d at 1357 (J. Linn, concurring)). This list is not exhaustive, and all of the experimentation factors may not apply in a particular case. See Brigance, 792 F.2d at 1108. They simply represent various kinds of evidence relevant to the question of whether pre-critical date activities involving the patented invention – either public use or sale– were primarily experimental and not commercial." Slip Opinion at 15-16.
• Continued control of the invention by the inventor is a critical factor in determining whether a sale is for experimental purposes. "Following Hamilton, this court again emphasized the importance of control in Lough v. Brunswick Corp., 86 F.3d 1113 (Fed. Cir. 1996). In particular, this court said that an inventor must show control over the alleged testing to establish experimentation. Id. at 1120. Additionally, the Lough court placed critical emphasis on experimental records. After listing various objective indicia of experimentation, which included both whether records or progress reports were made concerning the testing and the extent of control the inventor maintained over the testing, this court stated: "The last factor of control is critically important, because, if the inventor has no control over the alleged experiments, he is not experimenting. If he does not inquire about the testing or receive reports concerning the results, similarly, he is not experimenting." Id. The Lough court also stated: "When one distributes his invention to members of the public under circumstances that evidence a near total disregard for supervision and control concerning its use, the absence of these minimal indicia of experimentation require a conclusion that the invention was in public use." Id. at 1122 (emphasis added). Hence, this court held, based primarily upon the absence of control and records, that the inventor’s public use of the claimed invention was not experimental." Slip Opinion at 16-17.
• Customer awareness of an experimental purpose for the sale is critical in avoiding application of the on-sale bar. "A customer’s awareness of the purported testing in the context of a sale is a critical attribute of experimentation. If an inventor fails to communicate to a customer that the sale of the invention was made in pursuit of experimentation, then the customer, as well as the general public, can only view the sale as a normal commercial transaction. Indeed, our predecessor court recognized in In re Dybel, 524 F.2d 1393, 1401 (C.C.P.A. 1975), that "[an inventor’s] failure to communicate to any of the purchasers or prospective purchasers of his device that the sale or offering was for experimental use is fatal to his case." And, "we have held that the assertion of experimental sales, at a minimum, requires that customers must be made aware of the experimentation." Paragon Podiatry Lab., Inc. v. KLM Labs., Inc., 984 F.2d 1182, 1186 (Fed. Cir. 1993) (citing LaBounty, 958 F.2d at 1072; Dybel, 524 F.2d at 1401). Accordingly, we hold not only that customer awareness is among the experimentation factors, but also that it is critical. " Slip Opinion at 18-19.
• The district court properly found that the on-sale bar applied and the patents were invalid because the sales were commercial rather than experimental. There was no control or monitoring of the bearings after sale and insufficient evidence that the customer knew of an experimental purpose for the sales.
  
  
  
  
  

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Secondary Liability Questions Unanswered in Supreme Court's Grokster Opinion

Today's San Francisco Recorder features an excellent article by Fred van Lohmann of the Electronic Frontier Foundation regarding uncertainty left in the wake of the Supreme Court's Grokster decision. 7/29/05 - Cal Law: 'Grokster' Raises More Infringement Questions (subscription required). Van Lohmann argues that Grokster left unanswered crucial questions as to the scope of the Sony "Betamax defense" for non-infringing uses and whether the ability to reengineer a product is sufficient to create vicarious liability. These questions are particularly troubling when the possibility of huge statutory damages for copyright infringment could be a "corporate death penalty" and when corporate officers and investors can be pursued individually for copyright infringement as has occurred in the Napster case. (See the 6/29/05 posting Napster Investors Still Pursued by Recording Industry.)

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Microsoft and Google Spar Over Hiring of Former Microsoft Executive

Microsoft and Google are fighting in Santa Clara Superior Court over Google's hiring of a former Microsoft executive. Microsoft Sues Over Google's Hiring of a Former Executive - New York Times. In response to Microsoft's lawsuit, Google has asked that the non-compete clauses of Microsoft's contract be invalidated under California law. (See the zdnet article here).

Google's response relies upon a California statute prohibiting contracts in restraint of trade, Business & Professions Code section 16600, and case law holding that a California court may in certain circumstances refuse to apply the law of a state that allows employee covenants not to compete. See, e.g., Application Group, Inc. v. Hunter Group, Inc. (1998) 61 Cal.App.4th 881 , 72 Cal.Rptr.2d 73.

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Prosecution History Limits Claims and Precludes Broader Claims Obtained in Reissue Patent

Case Name: North American Container, Inc. v. Plastipak Packaging, Inc., No. 04-1306 (Fed. Cir. 7/14/05).

The One Sentence Summary: Patent claims for plastic bottles were limited to convex shapes by prosecution history arguments, and broader claims granted in a reissue proceeding were invalid due to violation of the recapture rule.

Federal Circuit Holdings:

• The prosecution history arguments that distinguished prior art plastic bottles as "slightly concave" resulted in a limitation on the claims: "We agree with the district court’s conclusion that the applicant, through argument during the prosecution, disclaimed inner walls of the base portion having any concavity. Cognizant of the high standard required in order to show a prosecution disclaimer, e.g., Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325-26 (Fed. Cir. 2003), we conclude that that standard has been met here. To overcome an obviousness rejection, the applicant distinguished his invention from the Dechenne patent on the basis of the latter disclosing inner walls that are "slightly concave." The inescapable consequence of such an argument is that the scope of applicant’s claims cannot cover inner walls that are "slightly concave." Moreover, it logically follows, as the district court also concluded, that the scope of applicant’s claims is also limited to inner walls of the base portion with no concavity." Slip Opinion at 17.
• A term can be given different meanings in different parts of the same claim when the prosecution history requires it: "Although the same limitation, i.e., "generally convex," appearing in different parts of the same claim is typically given the same construction, the applicant’s argument during prosecution has warranted a departure from that general rule. As explained above, the "generally convex" limitation normally allows for some concave points on the walls of the base portion as long as the majority of points are convex, and, indeed that is how the court construed the limitation for the outer walls of the base portion. As we have also explained above, however, the "generally convex" limitation for the inner walls of the base portion cannot be given the same construction as the outer walls because the applicant disclaimed any concavity for the inner walls, but not the outer walls. " Slip Opinion at 18.
• "Limitations may be construed to exclude a preferred embodiment if the prosecution history compels such a result. Elekta Instruments S.A., 214 F.3d at 1308." Slip Opinion at 18-19.
• "The district court did not err in construing the term "generally" to mean a majority of points. As NAC properly recognizes, terms of approximation such as "generally" need not be construed with mathematical precision. See, e.g., Anchor Wall Sys. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1311 (Fed. Cir. 2003). We do not believe, however, that the district court’s construction imposes any "mathematical precision," as NAC asserts. In merely requiring a majority of points to be convex, the court articulated a common-sense understanding of the term confirmed by a dictionary. Moreover, we find the court’s construction more fitting to the technology at issue here than NAC’s proposed construction of "on the whole." Slip Opinion at 19.
• The district court's construction of the term "re-entrant portion" was proper in light of the usage of the term in prior art and by the applicant in the prosecution history. Slip Opinion at 19.
• The district court erred in importing a numerical limitation on thickness into the claims from a preferred embodiment. Slip Opinion at 23.
• The recapture rule prevents regaining surrendered subject matter through a reissued patent: "Under the recapture rule, a patentee is precluded "from regaining the subject matter that he surrendered in an effort to obtain allowance of the original claims." Id. at 1370-71 (citing In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997)). When that has occurred, the patent is invalid. Id. at 1368. We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. Id. at 1371 (citations omitted)." Slip Opinion at 24.
• The applicant violated the recapture rule by seeking broader claims that were not limited to convex shapes.

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Copying Software Abroad Constitutes "Supplying From The United States" Under Patent Statute

Case Name: AT&T Corp. v. Microsoft Corporation, (Fed. Cir. No. 04-1285, 7/13/05).

The Two Sentence Summary: The Federal Circuit ruled that Microsoft violated 35 U.S.C. Section 271(f)'s prohibition on "supplying in or from the United States all or a substantial portion of the components of a patented invention," whenever a computer manufacturer located in a foreign country replicated onto a computer a copy of the Windows operating system from a master disk supplied from the United States. AT&T claimed that the master copies of Windows contained a computer sub-program that infringed one of AT&T's patents.

What They Were Arguing About: AT&T held a patent on a "speech codec" (a software program that codes a speech signal into a more compact form, and decodes it back into a signal that sounds like the original). Microsoft's Windows operating system incorporates speech codecs which AT&T claimed infringed a patent owned by AT&T.

To facilitate international distribution of Windows, Microsoft supplied a limited number of master versions of the Windows software to foreign computer manufacturers who, pursuant to their licensing agreements with Microsoft, replicated the master versions when generating individual copies of Windows that were installed on foreign-assembled computers which are then sold to foreign customers. AT&T claimed that Microsoft violated 35 U.S.C. Section 271(f) whenever a foreign computer manufacturer copied the Windows operating system from one of its master disks onto a computer it was manufacturing.

35 U.S.C. Section 271(f)(1) provides that: "Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such a manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer."

Microsoft argued that it could not be liable under Section 271(f) as an infringer since the copies replicated abroad by the foreign manufacturers were not "components" within the meaning of section 271(f) and that, in any event, liability under section 271(f) should not attach to the copies of Windows made abroad because those copies were not "supplied" from the United States.

The district court denied Microsoft's motion for partial summary judgment, and the Federal Circuit affirmed.

Federal Circuit Holdings:

• Software may be a "component" of a patented invention under Section 271(f). "Without question, software code alone qualifies as an invention eligible for patenting" and "the statutory language did not limit section 271(f) to patented `machines' or patented `physical structures . . ."
• Given the realities of software technology, the "supplying' of software commonly involves generating a copy. Accordingly, for software "components," the act of copying is subsumed in the act of "supplying," such that sending a single copy abroad with the intent that it be replicated invokes Section 271(f) liability for those foreign-made copies.
• Given that it is inherent in the nature of software that one can supply only a single disk that may be replicated - saving material, shipping, and storage costs-instead of supplying a separate disk for each copy of the software to be sold abroad, all of such resulting copies have essentially been supplied from the United States. "Where there are competing interpretations of a statute that imposes liability for certain acts, an interpretation that allows liability to attach only when a party acts in an unrealistic manner is unlikely to be correct."

Judge Rader dissented, arguing that:

• The replication abroad of the master disks' copies of Windows constituted manufacturing abroad, and the act of supplying is separate and distinct from copying, reproducing, or manufacturing. As a matter of logic, one cannot supply one hundred components of a patented invention without first making one hundred copies of the component, regardless of whether the components supplied are physical parts or intangible software. Thus, copying and supplying are different acts, and one act of "supplying" cannot give rise to liability for multiple acts of copying.
• The majority's interpretation provides extraterritorial expansion to U.S. law by punishing under U.S. law "copying" that occurs abroad, and while copying in Düsseldorf or Tokyo may indeed constitute infringement, that infingement must find its remedy under German or Japanese law.
• The extraterritorial expansion of U.S. patent law contravenes the precedent of the Federal Circuit and the Supreme Court that expressly confines the rights conferred by Title 35 to the United States and its Territories.

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Google Can't Be Misspelled - Typosquatter's Domain Names Must Be Transferred

Case Name: Google Inc. v. Sergey Gridasov, Nat.Arb.Forum Claim No. 474816 (July 5, 2005).

The One Sentence Summary: Complainant Google prevailed in this administrative proceeding by showing that the Respondent's domain names googkle.com, ghoogle.com, gfoogle.com and gooigle.com were confusingly similar to its registered GOOGLE mark; that Respondent had no rights or legitimate interests in the domain names and; that it had registered and used the names in bad faith.

National Arbitration Forum Panel Decision: This proceeding was decided in the absence of any appearance or submission by the Respondent. The panel elected to render its decision from the undisputed representations of Google and "appropriate" inferences drawn from them. The panel then addressed the three elements necessary to obtain an order of cancellation or transfer under the ICANN policy.

First, the panel found that googkle.com, ghoogle.com, ghoogle.com, gfoogle.com and gooigle.com were confusingly similar to the Complainant's mark in that they differed from the GOOGLE mark simply by the addition of one letter. Under Policy, the addition of one letter to a mark has not been found to create a distinct domain name.

Second, the panel found that "Respondent’s use of misspelled versions of Complainant’s mark to attract Internet users interested in Complainant’s services to Respondent’s website does not constitute a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii)."

Finally, the court found that Respondent's registration and use of the disputed domain names to expose users to malicious software constituted evidence of bad faith registration and use. Having found that it had established all three elements required under the ICANN Policy, the Panel granted Google relief in the form of an order that the disputed domain names must be transferred to it by Respondent.

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Casino Costumes Not Copyrightable Because Elements Were Not Separately Marketable According to Fifth Circuit

Case Name: Jane Galiano and Gianna, Inc. v. Harrah's Operating Co., Inc., Case No. 04-30521, 04-30806 (5th Cir. July 7, 2005).

The One Sentence Summary: After reviewing various formulations of the test for copyrightability of useful items such as dress design, the Court found that costumes designed for Harrah's did not meet the requirement that such useful articles can only be copyrighted if the designs are shown to be separately marketable based on their artistic, rather than simply their utilitarian, features.

Note: This case represents a strikingly similar issue to that recently decided the other way by the Second Circuit in Chosun International, Inc. v. Chrisha Creations, Ltd., Docket No. 04-1975 (2nd Cir. 6/30/05) See our blog posting Elements of Halloween Costumes Subject to Copyright (7/5/05).

In 1999, Gianna received copyright registration for a collection of sketches for uniforms and costumes submitted to Harrah's pursuant to a design consulting agreement in 1995. After the design agreement expired, Gianna and Harrah's entered into a settlement agreement in 1996, purporting to settle all disputes between them. After receiving a copyright registration for the designs in 1999, however, Gianna sued for copyright infringement alleging that Harrah's continued to use and order Gianna-designed costumes in derogation of their settlement.

The court canvassed numerous variations in the current jurisprudence of "conceptual separability", examining various tests aimed at providing a methodology for courts to separate creative elements from industrial design features. See, e. g., Pivot Point Int'l Inc. v. Chalren Prods., Inc.,372 F. 3d 913, 920-21 (en banc) ( 7th Cir. 2004); Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., F.3d 488, 494 (4th Cir. 1996); Masquerade Novelty Inc. v. Unique Inds., Inc., 912 F.2d 663, 670 (3d Cir. 1990) ;Keiselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980), Norris Indus. Inc. v. Int'l Tel & Tel Corp., 696 F.2d 918, 923 (11th Cir. 1983). The Court then concluded that NIMMER ON COPYRIGHT presented the most cogent discussion of copyright protection for clothing, by dividing the designs into fabric designs and dress designs. Of the two, Nimmer concluded that fabric designs are generally copyightable and dress designs are not, since fabric designs could be marketable as art but clothing generally could not. See Section 2.08[B][3] at 2-101. (Opinion p. 9).

The Court noted that, however, that costumes are somewhat unique, having sometimes, but not always, been found copyrightable. Thus in Poe v. Missing Persons, 745 F. 2d 1238 (9th Cir. 1984), the Court awarded copyright protection to a swimsuit design that was so elaborately crafted it had little chance of being worn. In Kieselstein-Cord supra., the Court determined that belt buckles contained artistic elements that were conceptually separable despite the buckles' utilitarian function. 632 F. 2 at 993. (Noting the buckle existed on the "cutting edge" of copyright law.")

In this case, the Fifth Circuit adopted what it deemed a "likelihood of marketability standard" whereby copyrightability would be based on a showing that the designs were marketable as applied art, not simply as garments. Under this test, the Court found Gianna had made no showing that its designs "were marketable independently of their utilitarian function as casino uniforms." (Opinion p.12) On this basis, the Court affirmed summary judgment in favor of Harrah's.

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Phillips v. AWH - CAFC Punts on Giving More Deference to Trial Court and Repeats Old Axioms of Claim Construction

Case Name: Phillips v. AWH Corp., No. 03-1269, 03-1286 (Fed Cir. 7/12/05)

The One Sentence Summary: The Federal Circuit skipped the tough question of whether the appeal court should abandon de novo claim construction review and defer more to the trial court in claim construction (a course melodramatically criticized by the dissent as "rearranging the deck chairs on the Titanic ... while the ship is still heading for Davey Jones' locker"), opting instead to repeat hoary maxims of claim construction with emphasis on the importance of interpreting the claims in light of the specification and prosecution history and criticism of the overuse of dictionaries and experts.

Federal Circuit Holdings:

• The district court erred in interpreting the term "baffles" as a means-plus-function claim because the claim recited internal structure. "Means-plus-function claiming applies only to purely functional limitations that do not provide the structure that performs the recited function. See Watts v. XL Sys., Inc., 232 F.3d 877, 880-81 (Fed. Cir. 2000). While the baffles in the ’798 patent are clearly intended to perform several functions, the term “baffles” is nonetheless structural; it is not a purely functional placeholder in which structure is filled in by the specification. See TurboCare Div. of Demag Delaval Turbomachinery Corp. v. Gen. Elec. Co., 264 F.3d 1111, 1121 (Fed. Cir. 2001) (reasoning that nothing in the specification or prosecution history suggests that the patentee used the term “compressed spring” to denote any structure that is capable of performing the specified function); Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (construing the term “detent mechanism” to refer to particular structure, even though the term has functional connotations). The claims and the specification unmistakably establish that the “steel baffles” refer to particular physical apparatus."
• The panel affirmed earlier cases regarding the role of the specification in interpreting the claims, and sought to clarify the use of dictionaries. "Those two paragraphs of section 112 frame the issue of claim interpretation for us. The second paragraph requires us to look to the language of the claims to determine what “the applicant regards as his invention.” On the other hand, the first paragraph requires that the specification describe the invention set forth in the claims. The principal question that this case presents to us is the extent to which we should resort to and rely on a patent’s specification in seeking to ascertain the proper scope of its claims. This is hardly a new question. The role of the specification in claim construction has been an issue in patent law decisions in this country for nearly two centuries. We addressed the relationship between the specification and the claims at some length in our en banc opinion in Markman v. Westview Instruments, Inc., 52 F.3d 967, 979-81 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). We again summarized the applicable principles in Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996), and more recently in Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed. Cir. 2004). What we said in those cases bears restating, for the basic principles of claim construction outlined there are still applicable, and we reaffirm them today. We have also previously considered the use of dictionaries in claim construction. What we have said in that regard requires clarification."
• The panel stressed the "bedrock" role of the claims in defining the invention. "It is a “bedrock principle” of patent law that “the claims of a patent define the invention to which the patentee is entitled the right to exclude.” Innova, 381 F.3d at 1115; see also Vitronics, 90 F.3d at 1582 (“we look to the words of the claims themselves . . . to define the scope of the patented invention”); Markman, 52 F.3d at 980 (“The written description part of the specification itself does not delimit the right to exclude. That is the function and purpose of claims.”)."
• The customary meaning of terms to one of skill in the art should be used. "We have frequently stated that the words of a claim “are generally given their ordinary and customary meaning.” Vitronics, 90 F.3d at 1582; see also Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299 (Fed. Cir. 1999); Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). We have made clear, moreover, that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application. See Innova, 381 F.3d at 1116 (“A court construing a patent claim seeks to accord a claim the meaning it would have to a person of ordinary skill in the art at the time of the invention.”); Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1358 (Fed. Cir. 2004) (“customary meaning” refers to the “customary meaning in [the] art field”); Ferguson Beauregard/Logic Controls v. Mega Sys., LLC, 350 F.3d 1327, 1338 (Fed. Cir. 2003) (claim terms “are examined through the viewing glass of a person skilled in the art”); see also PC Connector Solutions LLC v. SmartDisk Corp., 406 F.3d 1359, 1363 (Fed. Cir. 2005) (meaning of claim “must be interpreted as of [the] effective filing date” of the patent application); Schering Corp. v. Amgen Inc., 222 F.3d 1347, 1353 (Fed. Cir. 2000) (same)."
• The target audience for a patent is one of skill in the art, not a lawyer or a judge. "The inquiry into how a person of ordinary skill in the art understands a claim term provides an objective baseline from which to begin claim interpretation. See Innova, 381 F.3d at 1116. That starting point is based on the well-settled understanding that inventors are typically persons skilled in the field of the invention and that patents are addressed to and intended to be read by others of skill in the pertinent art. See Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002) (patent documents are meant to be “a concise statement for persons in the field”); In re Nelson, 280 F.2d 172, 181 (CCPA 1960) (“The descriptions in patents are not addressed to the public generally, to lawyers or to judges, but, as section 112 says, to those skilled in the art to which the invention pertains or with which it is most nearly connected.”)."
• The claim must be read in the context of the patent specification and prosecution history as understood by one of skill in the art. "Importantly, the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. This court explained that point well in Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998): It is the person of ordinary skill in the field of the invention through whose eyes the claims are construed. Such person is deemed to read the words used in the patent documents with an understanding of their meaning in the field, and to have knowledge of any special meaning and usage in the field. The inventor’s words that are used to describe the invention—the inventor’s lexicography—must be understood and interpreted by the court as they would be understood and interpreted by a person in that field of technology. Thus the court starts the decisionmaking process by reviewing the same resources as would that person, viz., the patent specification and the prosecution history. See also Medrad, Inc. v. MRI Devices Corp., 401 F.3d 1313, 1319 (Fed. Cir. 2005) (“We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history.”); V-Formation, Inc. v. Benetton Group SpA, 401 F.3d 1307, 1310 (Fed. Cir. 2005) (intrinsic record “usually provides the technological and temporal context toenable the court to ascertain the meaning of the claim to one of ordinary skill in the art at the time of the invention”); Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 375 F.3d 1341, 1351 (Fed. Cir. 2004) (proper definition is the “definition that one of ordinary skill in the art could ascertain from the intrinsic evidence in the record”)."
• The panel noted that some claims are simple and require no reference to outside sources while others require intrinsic and extrinsic evidence: "Because the meaning of a claim term as understood by persons of skill in the art is often not immediately apparent, and because patentees frequently use terms idiosyncratically, the court looks to “those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.” Innova, 381 F.3d at 1116. Those sources include “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” Id.; see also Gemstar-TV Guide Int’l, Inc. v. Int’l Trade Comm’n, 383 F.3d 1352, 1364 (Fed. Cir. 2004); Vitronics, 90 F.3d at 1582-83; Markman, 52 F.3d at 979-80."
• The context of other words in the claim can be instructive. "To begin with, the context in which a term is used in the asserted claim can be highly instructive. To take a simple example, the claim in this case refers to “steel baffles,” which strongly implies that the term “baffles” does not inherently mean objects made of steel. This court’s cases provide numerous similar examples in which the use of a term within the claim provides a firm basis for construing the term. See, e.g., Mars, Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1374 (Fed. Cir. 2004) (claim term “ingredients” construed in light of the use of the term “mixture” in the same claim phrase); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1356 (Fed. Cir. 1999) (claim term “discharge rate” construed in light of the use of the same term in another limitation of the same claim)."
• The usage of the term in other claims can be instructive: "Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term. Vitronics, 90 F.3d at 1582. Because claim terms are normally used consistently throughout the patent, the usage of a term in one claim can often illuminate the meaning of the same term in other claims. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001); CVI/Beta Ventures, Inc. v. Tura LP, 112 F.3d 1146, 1159 (Fed. Cir. 1997). Differences among claims can also be a useful guide in understanding the meaning of particular claim terms. See Laitram Corp. v. Rexnord, Inc., 939 F.2d 1533, 1538 (Fed. Cir. 1991). For example, the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004)."
• Claims must be read as part of the specification: "The claims, of course, do not stand alone. Rather, they are part of “a fully integrated written instrument,” Markman, 52 F.3d at 978, consisting principally of a specification that concludes with the claims. For that reason, claims “must be read in view of the specification, of which they are a part.” Id. at 979. As we stated in Vitronics, the specification “is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.” 90 F.3d at 1582."
• The specification can define terms in a special way or disavow scope: "Consistent with that general principle, our cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs. See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed. Cir. 2001)."
• "It is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims."
• The prosecution history is important in interpreting the patent, but less clear than the specification. It can exclude any interpretation that was disclaimed during prosecution. "In addition to consulting the specification, we have held that a court “should also consider the patent’s prosecution history, if it is in evidence.” Markman, 52 F.3d at 980; see also Graham v. John Deere Co., 383 U.S. 1, 33 (1966) (“[A]n invention is construed not only in the light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office.”). The prosecution history, which we have designated as part of the “intrinsic evidence,” consists of the complete record of the proceedings before the PTO and includes the prior art cited during the examination of the patent. Autogiro, 384 F.2d at 399. Like the specification, the prosecution history provides evidence of how the PTO and the inventor understood the patent. See Lemelson v. Gen. Mills, Inc., 968 F.2d 1202, 1206 (Fed. Cir. 1992). Furthermore, like the specification, the prosecution history was created by the patentee in attempting to explain and obtain the patent. Yet because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes. See Inverness Med. Switz. GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380-82 (Fed. Cir. 2002) (the ambiguity of the prosecution history made it less relevant to claim construction); Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1580 (Fed. Cir. 1996) (the ambiguity of the prosecution history made it “unhelpful as an interpretive resource” for claim construction). Nonetheless, the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be. Vitronics, 90 F.3d at 1582-83; see also Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of consulting the prosecution history in construing a claim is to ‘exclude any interpretation that was disclaimed during prosecution.’”), quoting ZMI Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1580 (Fed. Cir. 1988); Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1576 (Fed. Cir. 1995)."
• Extrinsic evidence such as dictionaries are useful, but less significant than intrinsic evidence. "Although we have emphasized the importance of intrinsic evidence in claim construction, we have also authorized district courts to rely on extrinsic evidence, which “consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.” Markman, 52 F.3d at 980, citing Seymour v. Osborne, 78 U.S. (11 Wall.) 516, 546 (1870); see also Vitronics, 90 F.3d at 1583. However, while extrinsic evidence “can shed useful light on the relevant art,” we have explained that it is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’” C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004), quoting Vanderlande Indus. Nederland BV v. Int’l Trade Comm’n, 366 F.3d 1311, 1318 (Fed. Cir. 2004); see also Astrazeneca AB v. Mutual Pharm. Co., 384 F.3d 1333, 1337 (Fed. Cir. 2004)."
• Dictionaries, especially technical dictionaries, are useful in claims construction. "Within the class of extrinsic evidence, the court has observed that dictionaries and treatises can be useful in claim construction. See Renishaw, 158 F.3d at 1250; Rexnord, 274 F.3d at 1344. We have especially noted the help that technical dictionaries may provide to a court “to better understand the underlying technology” and the way in which one of skill in the art might use the claim terms. Vitronics, 90 F.3d at 1584 n.6."
• Expert testimony can be used to interpret the claims when it is not conclusory or unsupported. "We have also held that extrinsic evidence in the form of expert testimony can be useful to a court for a variety of purposes, such as to provide background on the technology at issue, to explain how an invention works, to ensure that the court’s understanding of the technical aspects of the patent is consistent with that of a person of skill in the art, or to establish that a particular term in the patent or the prior art has a particular meaning in the pertinent field. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308-09 (Fed. Cir. 1999); Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716 (Fed. Cir. 1998). However, conclusory, unsupported assertions by experts as to the definition of a claim term are not useful to a court. Similarly, a court should discount any expert testimony “that is clearly at odds with the claim construction mandated by the claims themselves, the written description, and the prosecution history, in other words, with the written record of the patent.” Key Pharms., 161 F.3d at 716."
• Extrinsic evidence is less reliable in interpreting claims. We have viewed extrinsic evidence in general as less reliable than the patent and its prosecution history in determining how to read claim terms, for several reasons. First, extrinsic evidence by definition is not part of the patent and does not have the specification’s virtue of being created at the time of patent prosecution for the purpose of explaining the patent’s scope and meaning. Second, while claims are construed as they would be understood by a hypothetical person of skill in the art, extrinsic publications may not be written by or for skilled artisans and therefore may not reflect the understanding of a skilled artisan in the field of the patent. Third, extrinsic evidence consisting of expert reports and testimony is generated at the time of and for the purpose of litigation and thus can suffer from bias that is not present in intrinsic evidence. The effect of that bias can be exacerbated if the expert is not one of skill in the relevant art or if the expert’s opinion is offered in a form that is not subject to cross-examination. See Senmed, Inc. v. Richard-Allan Med. Indus., Inc., 888 F.2d 815, 819 n.8 (Fed. Cir. 1989). Fourth, there is a virtually unbounded universe of potential extrinsic evidence of some marginal relevance that could be brought to bear on any claim construction question. In the course of litigation, each party will naturally choose the pieces of extrinsic evidence most favorable to its cause, leaving the court with the considerable task of filtering the useful extrinsic evidence from the fluff. See Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 595 (1993) (“Expert evidence can be both powerful and quite misleading because of the difficulty in evaluating it.”). Finally, undue reliance on extrinsic evidence poses the risk that it will be used to change the meaning of claims in derogation of the “indisputable public records consisting of the claims, the specification and the prosecution history,” thereby undermining the public notice function of patents. Southwall Techs., 54 F.3d at 1578.
• Over-reliance on a dictionary of the Texas Digital decision makes claims too broad and divorces terms from their context in the patent. "The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent. Properly viewed, the “ordinary meaning” of a claim term is its meaning to the ordinary artisan after reading the entire patent. Yet heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract, out of its particular context, which is the specification. The patent system is based on the proposition that claims cover only the invented subject matter. As the Supreme Court has stated, “[i]t seems to us that nothing can be more just and fair, both to the patentee and the public, than that the former should understand, and correctly describe, just what he has invented, and for what he claims a patent.” Merrill v. Yeomans, 94 U.S. at 573-74. The use of a dictionary definition can conflict with that directive because the patent applicant did not create the dictionary to describe the invention. Thus, there may be a disconnect between the patentee’s responsibility to describe and claim his invention, and the dictionary editors’ objective of aggregating all possible definitions for particular words.[¶]Although the Texas Digital line of cases permit the dictionary definition to be narrowed in some circumstances even when there is not an explicit disclaimer or redefinition in the specification, too often that line of cases has been improperly relied upon to condone the adoption of a dictionary definition entirely divorced from the context of the written description. The problem is that if the district court starts with the broad dictionary definition in every case and fails to fully appreciate how the specification implicitly limits that definition, the error will systematically cause the construction of the claim to be unduly expansive. The risk of systematic overbreadth is greatly reduced if the court instead focuses at the outset on how the patentee used the claim term in the claims, specification, and prosecution history, rather than starting with a broad definition and whittling it down."
• Judges can consult dictionaries within limits. "As we said in Vitronics, judges are free to consult dictionaries and technical treatises at any time in order to better understand the underlying technology and may also rely on dictionary definitions when construing claim terms, so long as the dictionary definition does contradict any definition found in or ascertained by a reading of the patent documents. Id. at 1584 n.6."
• Limitations from embodiments of the specification should not be imported into the claims. "To avoid importing limitations from the specification into the claims, it is important to keep in mind that the purposes of the specification are to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so. See Spectra-Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1533 (Fed. Cir. 1987). One of the best ways to teach a person of ordinary skill in the art how to make and use the invention is to provide an example of how to practice the invention in a particular case. Much of the time, upon reading the specification in that context, it will become clear whether the patentee is setting out specific examples of the invention to accomplish those goals, or whether the patentee instead intends for the claims and the embodiments in the specification to be strictly coextensive. See SciMed Life Sys., 242 F.3d at 1341. The manner in which the patentee uses a term within the specification and claims usually will make the distinction apparent. See Snow v. Lake Shore & M.S. Ry. Co., 121 U.S. 617, 630 (1887) (it was clear from the specification that there was “nothing in the context to indicate that the patentee contemplated any alternative” embodiment to the one presented)."
• There is no magic formula for claim construction, and authorities need not be consulted in any particular order. In Vitronics, this court grappled with the same problem and set forth guidelines for reaching the correct claim construction and not imposing improper limitations on claims. 90 F.3d at 1582. The underlying goal of our decision in Vitronics was to increase the likelihood that a court will comprehend how a person of ordinary skill in the art would understand the claim terms. See id. at 1584. In that process, we recognized that there is no magic formula or catechism for conducting claim construction. Nor is the court barred from considering any particular sources or required to analyze sources in any specific sequence, as long as those sources are not used to contradict claim meaning that is unambiguous in light of the intrinsic evidence. See id. at 1583-84; Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1367 (Fed. Cir. 2003). For example, a judge who encounters a claim term while reading a patent might consult a general purpose or specialized dictionary to begin to understand the meaning of the term, before reviewing the remainder of the patent to determine how the patentee has used the term. The sequence of steps used by the judge in consulting various sources is not important; what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law. Vitronics, 90 F.3d at 1582. In Vitronics, we did not attempt to provide a rigid algorithm for claim construction, but simply attempted to explain why, in general, certain types of evidence are more valuable than others. Today, we adhere to that approach and reaffirm the approach to claim construction outlined in that case, in Markman, and in Innova. We now turn to the application of those principles to the case at bar.
• Later dependent claims narrowing the way baffles are used implies that independent claims are broader. The other claims of the ’798 patent specify particular functions to be served by the baffles. For example, dependent claim 2 states that the baffles may be “oriented with the panel sections disposed at angles for deflecting projectiles such as bullets able to penetrate the steel plates.” The inclusion of such a specific limitation on the term “baffles” in claim 2 makes it likely that the patentee did not contemplate that the term “baffles” already contained that limitation. See Dow Chem. Co. v. United States, 226 F.3d 1334, 1341-42 (Fed. Cir. 2000) (concluding that an independent claim should be given broader scope than a dependent claim to avoid rendering the dependent claim redundant).
• Claim term need not be interpreted to accomplish all of the stated objectives of a patent. The fact that the written description of the ’798 patent sets forth multiple objectives to be served by the baffles recited in the claims confirms that the term “baffles” should not be read restrictively to require that the baffles in each case serve all of the recited functions. We have held that “[t]he fact that a patent asserts that an invention achieves several objectives does not require that each of the claims be construed as limited to structures that are capable of achieving all of the objectives.” Liebel-Flarsheim, 358 F.3d at 908; see also Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1367 (Fed. Cir. 2003). Although deflecting projectiles is one of the advantages of the baffles of the ’798 patent, the patent does not require that the inward extending structures always be capable of performing that function. Accordingly, we conclude that a person of skill in the art would not interpret the disclosure and claims of the ’798 patent to mean that a structure extending inward from one of the wall faces is a “baffle” if it is at an acute or obtuse angle, but is not a “baffle” if it is disposed at a right angle.
• The rule of interpreting claims to preserve validity is a narrow one applying only when claims are ambiguous. While we have acknowledged the maxim that claims should be construed to preserve their validity, we have not applied that principle broadly, and we have certainly not endorsed a regime in which validity analysis is a regular component of claim construction. See Nazomi Communications, 403 F.3d at 1368-69. Instead, we have limited the maxim to cases in which “the court concludes, after applying all the available tools of claim construction, that the claim is still ambiguous.” Liebel-Flarsheim, 358 F.3d at 911; see also Generation II Orthonics Inc. v. Med. Tech. Inc., 263 F.3d 1356, 1365 (Fed. Cir. 2001) (“[C]laims can only be construed to preserve their validity where the proposed claim construction is ‘practicable,’ is based on sound claim construction principles, and does not revise or ignore the explicit language of the claims.”); Elekta Instrument S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1309 (Fed. Cir. 2000) (“having concluded that the amended claim is susceptible of only one reasonable construction, we cannot construe the claim differently from its plain meaning in order to preserve its validity”); E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1434 (Fed. Cir. 1988) (rejecting argument that limitations should be added to claims to preserve the validity of the claims). In such cases, we have looked to whether it is reasonable to infer that the PTO would not have issued an invalid patent, and that the ambiguity in the claim language should therefore be resolved in a manner that would preserve the patent’s validity.
• Narrow definition of baffles is not necessary to preserve validity because term is not ambiguous. In this case, unlike in Klein and other cases in which the doctrine of construing claims to preserve their validity has been invoked, the claim term at issue is not ambiguous. Thus, it can be construed without the need to consider whether one possible construction would render the claim invalid while the other would not. The doctrine of construing claims to preserve their validity, a doctrine of limited utility in any event, therefore has no applicability here.
• The panel decided not to address whether deference to the trial court's claim construction is due. "In our order granting rehearing en banc, we asked the parties to brief various questions, including the following: “Consistent with the Supreme Court’s decision in Markman v. Westview Instruments, 517 U.S. 370 (1996), and our en banc decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998), is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?” After consideration of the matter, we have decided not to address that issue at this time. We therefore leave undisturbed our prior en banc decision in Cybor."

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WIPO Leery of Perjorative Domain Names That Contain Trademarks

Case name: Societé Air France v. Virtual Dates, Inc., Case No. D2005-0168 (WIPO Administrative Panel Decision, 5/24/05)

One Sentence Summary: The domain name airfrancesucks.com was transferred from a warehouser of domain names to Air France because of the likelihood that international internet users would be confused.

WIPO Administrative Panel Findings:

• Applying the Uniform Domain Name Dispute Resolution Policy (the "Policy") and the rules relating thereto, the Panel (2 of its 3 members) found that the incorporation of a well-known trademark in its entirety as the first and dominant part of a domain name is confusingly similar to the trademark regardless of whether there are additional perjorative or neutral elements. The Panel was particularly concerned about international internet users who may not understand the perjorative nature of the addition.
• The Panel rejected Respondent's argument that it had a legitimate interest in the domain name as a "free speech website" where internet users could register comments about Air France. In particular, the Panel noted that the domain name was used to redirect users to a pay-per-click provider.
• The Panel found that the Respondent had registered and used the domain name in bad faith because it was aware of the Air France trademark when it registered the claim and used the domain name to disrupt Complainant's business. Furthermore, the Panel noted that registering domain names incorporating the trademarks of others is an indication of bad faith when done by a business engaged in the warehousing of domain names.
• Having found a confusing similarity, bad faith and a lack of legitimate interest by the Respondent, the Panel ordered that the domain name be transferred to Air France.
• The dissenting member of the Panel was inclined to treat domain names that incorporate trademarks differently depending on whether the additional elements were perjorative or neutral in nature because airfrancetickets.com might cause confusion but not airfrancesucks.com.

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Claim Language Narrowed by Prosecution History Arguing Common Limitation on Multiple Claims

Case Name: Seachange International, Inc. v. C-COR Inc., (Fed. Cir. No. 04-1375, 04-1498, 6/29/05).

The One Sentence Summary: The prosecution history regarding the term "a network for data communications" limited the phrase to include only point-to-point connections where such connections were repeatedly argued as the basis for distinguishing a group of claims from prior art, and other types of networks could not infringe under the doctrine of equivalents because that would vitiate the claim limitations argued in the prosecution history.

Federal Circuit Rulings:

• The court rejected the claim construction argument of plaintiff Seachange regarding the term "network for data communications." Seachange had argued that the term was not limited to networks where all nodes were connected point-to-point. While the Federal Circuit agreed that the claim language and the specification did not limit the term to point-to-point networks, the Federal Circuit held that the prosecution history applying the point-to-point limitation to all claims narrowed the scope of the claims.
• Claim 1 had included a point-to-point network limitation while claim 37 did not explicitly include the limitation. Seachange had argued that the principle of claim differentiation required the claims to be interpreted differently. The panel observed that the presumption of claim differentiation between claims 1 and 37 of the patent is not a hard and fast rule and will be overcome by a contrary construction dictated by the written description of prosecution history:

  "The doctrine of claim differentiation stems from "the common sense notion that different words or phrases used in separate claims are presumed to indicate that the claims have different meanings and scope." Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 971-72 (Fed. Cir. 1999). Although the doctrine is at its strongest "where the limitation sought to be 'read into' an independent claim already appears in a dependent claim," Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed. Cir. 2004), there is still a presumption that two independent claims have different scope when different words or phrases are used in those claims, Kraft Foods, Inc. v. Int'l Trading Co., 203 F.3d 1362, 1365-69 (Fed. Cir. 2000); see also Tandon Corp. v. U.S. Int'l Trade Comm'n, 831 F.2d 1017, 1023 (Fed. Cir. 1987). However, the doctrine "only creates a presumption that each claim in a patent has a different scope; it is not a hard and fast rule of construction." Kraft, 203 F.3d at 1368 (internal quotations omitted). "[T]he doctrine of claim differentiation can not broaden claims beyond their correct scope, determined in light of the specification and the prosecution history and any relevant extrinsic evidence. . . . [C]laims that are written in different words may ultimately cover substantially the same subject matter." Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1480 (Fed. Cir. 1998)."

• Reviewing the written description, the Federal Circuit noted that the written description consistently referred to network interconnections as point-to-point but noted that it was unclear in this description whether that was a description of one possible embodiment of the invention itself.
• Turning to the prosecution history, the Federal Circuit agreed with the argument by defendant C-COR that Applicant's arguments made during prosecution narrowed the scope of the "network for data communications" limitation in claim 37 (40) to cover only a point-to-point network:

  "The prosecution history constitutes a public record of the patentee's representations concerning the scope and meaning of the claims, and competitors are entitled to rely on those representations when ascertaining the degree of lawful conduct, such as designing around the claimed invention." Hockerson-Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 957 (Fed. Cir. 2000). Thus, in construing the claim, we consider the prosecution history to determine "whether the patentee disclaimed or disavowed subject matter, narrowing the scope of the claim terms." Nystrom v. Trex Co., 374 F.3d 1105, 1113 (Fed. Cir. 2004) (internal quotation omitted). In doing so, we examine the entire prosecution history, which includes amendments to claims and all arguments to overcome and distinguish references. Rheox, Inc. v. Entact, Inc., 276 F.3d 1319, 1326 (Fed. Cir. 2002); Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 979 (Fed. Cir. 1999). Where an applicant argues that a claim possesses a feature that the prior art does not possess in order to overcome a prior art rejection, the argument may serve to narrow the scope of otherwise broad claim language. Rheox, Inc., 276 F.3d at 1325 ("Explicit arguments made during prosecution to overcome prior art can lead to narrow claim interpretations . . . ."); Ekchian v. Home Depot, Inc., 104 F.3d 1299, 1304 (Fed. Cir. 1997) ("[S]ince, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover, he is by implication surrendering such protection."). A disclaimer must be clear and unambiguous. Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323-25 (Fed. Cir. 2003)."

• The court noted that where the applicant had grouped several claims together and made a single argument to distinguish them from the prior art, the applicant could not later claim that some of claims that had been grouped were not limited by the argument. (Slip Opinion at 16.)
• The court also rejected an argument that the Examiner's reasons for allowance provided notice to the public that Claim 37 was not limited by the point-to-point feature. The court noted that "the natural reading of applicant's statements suggest that the point-to-point argument applied to each claim in the grouping." (Slip Opinion at 17.)
• The court also held that arguments incorporating earlier arguments as to the meaning of the terms data communications network limited the meaning of those claims. (Slip Opinion at 17-18.)

  "We find unpersuasive Seachange's argument that the Examiner cited the "redundant storage" feature as the reason for allowance. The fact that the Examiner did not indicate reliance on the point-to-point distinction is of no consequence. An applicant's argument made during prosecution may lead to a disavowal of claim scope even if the Examiner did not rely on the argument. Microsoft, 357 F.3d at 1350." (Slip Opinion at 18.)

• At Slip Opinion 20, the court rejected an argument that a later protest response worked to nullify the earlier argument limiting the data communications network to a point-to-point network.

  "In the final analysis, the Protest Response does not alter our conclusion that the statements Applicant made in responding to the First Action and in distinguishing over Morita and Benner inescapably narrowed the meaning of the data communications network in claim 37 (40) to a point-to-point network. Applicant's response to the First Action was "a deliberate surrender of claim scope, unmistakable in its effect because it is not suitable to multiple interpretations." Omega Eng'g, 334 F.3d at 1327. The Protest Response addressed Gardner, did not alter the bases upon which the Applicant distinguished Morita and Benner, and did not undo this disclaimer already made. See Hockerson-Halberstadt, 222 F.3d at 957."

• The court next held that a preamble including the phrase "distributed computer system" should have been interpreted as part of claim construction as a claim limitation because it was necessary to interpret the claim:

  "Thus, a preliminary question exists as to whether "distributed computer system" is a claim limitation. See Catalina Mktg. Int'l v. Coolsavings.com, Inc., 289 F.3d 801, 807-08 (Fed. Cir. 2002). "In general, a preamble limits the invention if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality' to the claim." Id. at 808 (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). "[I]f the preamble helps to determine the scope of the patent claim, then it is construed as part of the claimed invention." NTP, Inc. v. Research In Motion, Ltd., 392 F.3d 1336, 1358 (Fed. Cir. 2004)."

• The court held that the district court erred in requiring that each processor system stand alone. (Slip Opinion at 23.)
• The court agreed that the district court had erred in importing a limitation of being able to run an application program from a preferred embodiment of the patent. (Slip Opinion at 23-25.)
• The court rejected the request for application of the doctrine of equivalence. The court noted that it would vitiate the claim limitation to apply the doctrine of equivalence:

  "Because Seachange concedes that C-COR does not literally infringe, there can only be infringement under doctrine of equivalents. "[T]he determination of infringement under the doctrine of equivalents is limited by two primary legal doctrines: (1) prosecution history estoppel and (2) the 'all elements' rule." Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003). The application of these doctrines is a question of law. Id. "[T]he 'all elements rule' provides that the doctrine of equivalents does not apply if applying the doctrine would vitiate an entire claim limitation." Asyst Techs., Inc. v. Emtrak, Inc., 402 F.3d 1188, 1195 (Fed. Cir. 2005). As noted supra Part II.B.1, we construed "network for data communications" to cover only "those networks in which every processor system is connected to every other processor system via direct, point-to-point, two-way channel interconnections." Seachange's equivalents theory implies that a network in which every processor is connected to every other processor through indirect interconnections can be equivalent to a network in which every processor is connected to every other processor by direct, point-to-point interconnections. However, equivalents under such a theory would vitiate the requirement that every processor be connected to every other processor point-to-point, and therefore must fail as a matter of law. See Asyst, 402 F.3d at 1195 (explaining that finding "unmounted" equivalent to "mounted on" would vitiate the limitation)."

• The Federal Circuit directed that the district court reconsider its ruling as to whether judgment as a matter of law should be granted to defendant on the basis of anticipation in light of the altered claim construction. (Slip Opinion at 32.)
• The court held that a new trial should be conducted as to claim construction in light of the district court's error in failing to instruct on the construction of the term "distributed computer system":

  "Because the district court erred in interpreting "network for data communications" and C-COR does not infringe as a matter of law, we reverse the judgment of infringement. Because we have construed the "network" limitation to be limited to point-to-point interconnections, we affirm the denial of C-COR's motion for JMOL on inadequate written description. Because the district court correctly denied C-COR's motion for JMOL on anticipation as to the Frey and Mendelsohn references, we affirm that ruling. For the reasons stated in this opinion, we vacate the denial of the motion as to anticipation by Gardner and remand the same to the district court for reconsideration. Because the district court erred in its interpretation of "distributed computer system" and because C-COR was prejudiced by the court's failure to properly instruct the jury on the construction of the "distributed computer system" limitation, we reverse the district court's denial of C-COR's motion in the alternative for new trial and remand for further proceedings consistent with this opinion."

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Using "Suck" With Competitor's Name in Domain Name To Sell Competing Computer Products Showed Bad Faith

Case: Dell Inc. v. Innervision Web Solutions, Claim No. FA0503000445601 (National Arbitration Forum, 5/23/05)

One Sentence Summary: Adding "suck" to the phrase "dell computer" to create the domain name "dellcomputerssuck.com" was not enough to avoid a finding of bad faith registration and use of the domain name, where the website directed Internet users to another site that sold computer equipment in competition with Dell Computer.

National Arbitration Forum Findings:

• Complainant Dell sought relief based on Innervision having registered the domain name "dellcomputerssuck.com," and used that name to sell competing computer equipment.
  
• The matter was submitted for arbitration pursuant to the Rules for Uniform Domain Name Dispute Resolution Policy. Under the Policy, the Forum was required to determine whether the name was confusingly similar or identical, whether the Respondent had any rights or legitimate interest in the use of the name, and whether the name was registered and used in bad faith.
  
• The Forum reviewed domain name decisions where "sucks" had been added, finding that in the majority, adding the term to a well-known trademark did not defeat a finding of confusing similarity. Here, since Innervision sold computers in competition with Dell, the domain name was confusingly similar.
  
• Innervision argued it had a legitimate interest in using the name, because after receiving a cease and desist letter from Dell, it changed the website to a "protest site" criticizing Dell (whereas before it had directed visitors to a site selling competing computer equipment). The argument was rejected, because for the entire prior existence of the site, it was used to compete with Dell, not as a "protest site."
  
• Finally, Innervision was found to have registered and used the site in bad faith, in part because it was clearly aware of Dell's prior trademark, it was in the computer business and bought and sold domain names, and its response to Dell's cease and desist letter was to state "if they want the domain, they can buy it from me."
  
• Given that the three elements under the ICANN policy were established, Innervision was ordered to surrender the domain name to Dell.

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American Eagle Can't Fly

In American Eagle Outfitters, Inc. and Retail Royalty Co. v. Covanta Corp., FA 465210 (Nat.Arb.Forum (6/3/05), the National Arbitration Forum ruled against the Complainant based on its failure to prove rights in the disputed domain name americaneaglestores.com. The panel held that Complainant does not have rights in the component “American Eagle” apart from Complainant’s mark AMERICAN EAGLE OUTFITTERS as a whole.

The Complainant held numerous federal registrations in the mark AMERICAN EAGLE OUTFITTERS, but contended that the term "Outfitters" was only a descriptive component of its AMERICAN EAGLE mark. It contended that Respondent's domain name was confusingly similar because the term "store" did not distinguish the Respondent's name from that of Complainant.

The Respondent registered and used the americaneaglestore.com domain name to provide paid advertising links to third-party websites where visitors can purchase American Eagle coins and merchandise relating to wild birds. It maintained that the term "American Eagle" was not distinctive of Complainant's mark, except as part of AMERICAN EAGLE OUTFITTERS.

Pursuant to the first element of ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"), in order to effect cancellation or transfer of a domain name, the Ccomplainant needed to prove, among other things, that the domain name registered by Respondent was identical or confusingly similar to a trademark in which Complainant had rights.

In this case however, the panel found that Complainant was not entitled to a presumption of validity in the mark "American Eagle", having disclaimed intermittently, "American" and "Outfitters" in its various trademark registrations of AMERICAN EAGLE OUTFITTERS. The effect of these disclaimers, the panel noted, is that Respondent could claim only the whole composite mark and not the particular portions disclaimed. Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA 1033058 (Nat.Arb. Forum February 15, 2002); McCarthy on Trademarks and Unfair Competition (3rd ed. 1992). "The validity of the mark is to be determined by viewing the trademark as a whole and not just the words 'American Eagle'", the panel ruled, citing Men's Wearhouse, Inc. v. Wick, FA 117861 (Nat.Arb.Forum Sept.16,2002). On this basis, Complainant was denied relief and its complaint was dismissed.

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Proof Of Efficacy Not Required For Reference To Be Enabled For Purposes Of Anticipation

Case: Rasmusson v. Smithkline Beecham Corp., 04-1191, -1192 (Fed. Cir. 6/27/05)

The One Sentence Summary: The Federal Circuit concluded that even though prior applications lacking experimental proof of the efficacy of a method of treating prostate cancer were not sufficiently enabled to establish priority of a claimed invention, they could still be used to establish anticipation of another's invention.

Federal Circuit Holdings:

• An issue was how much, if any, data were required to demonstrate the therapeutic use of a specific compound (finasteride) for treatment of prostate cancer, in order for prior applications to be found sufficiently enabled to either support a later method claim for use of the compound, or to allow the application to serve as prior art that anticipated another's invention.
  
• The court looked to prior decisions holding that without evidence that one skilled in the art would accept, without question, statements as to the effect of the claimed drug product, and without evidence to demonstrate that the product has the claimed effect, utility is not demonstrated and an applicant cannot establish enablement sufficient to establish priority for a later claim.
  
• The court then reasoned that there was sufficient evidence for the Board of Interference's finding that a person of ordinary skill in the art would not have believed finasteride was effective in treating prostate cancer, because scientific articles and expert testimony showed that at the time of appellant Rasmusson's earlier applications, multiple explanations existed for the observed anti-tumor effects. As a result, the Board correctly found that those applications, which contained no experimental proof of the invention's effectiveness in treating cancer, were not enabled.
  
• The court rejected Rasmusson's argument that it was enough to show that it was plausible that the invention would be effective, because patent law is not meant to reward inventors who have made no more than respectable guesses as to the likelihood of their success.
  
• The court then considered whether a prior European application by Rasmusson anticipated and rendered obvious the claims of Smithkline Beecham. It noted that the test for enablement in the context of anticipation as prior art is different than that used under section 112 for allowance of a claim. Anticipation can be established even if the prior art does not teach how to use a fully disclosed compound for a specific use. In short, the court held that, consistent with Bristol-Myers Squibb Co. v. Ben Venue Laboratories, Inc., 246 F.3d 1368 (Fed. Cir. 2001), proof of efficacy is not required for a reference to be enabled for purposes of anticipation.
  
• Since the Board had not expressly considered whether every limitation in Smithkline's claims was anticipated by Rasmusson's prior European application, the Court remanded the case to the Board. It also left it for the Board to decide whether the prior European application, which was published more than a year before a subsequent U.S. application by Rasmusson, invalidated that application under section 102(b).

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Elements of Halloween Costumes Subject to Copyright

In a June 30,2005 decision, Chosun International, Inc. v. Chrisha Creations, Ltd., Docket No. 04-1975 (2nd Cir. 6/30/05), the Second Circuit reversed and remanded a district court decision dismissing a complaint for copyright infringement of Halloween costumes for failure to state a claim. The dismissal was based on the trial court's conclusion that Halloween costumes--a lion, an orangutan and a ladybug--were "useful" articles and not copyrightable as a matter of law.

Acknowledging that the Second Circuit allowed protection under the Copyright Act, for individual elements of a utilitarian design provided the elements are physically or conceptually separate, the district court nevertheless found that such a test was inapplicable to Halloween costumes. The district court held that no elements of the costumes could possibly be separable from their utilitarian function as devices with which to masquerade.

The Second Circuit acknowledged earlier decisions questioning whether Halloween costumes were not subject to copyright, but noted that the Second Circuit had also recognized that individual design elements in the clothing could be eligible for copyright protection, citing Kieselstein-Cord v. Accessories by Pearl, Inc. 632 F. 2nd 411, 418 (2d Cir. 1985).(Distinctive belt buckles were copyrightable even though belt as a whole served the useful purpose of keeping one's pants from falling down. )

The Court of Appeals found that the district court had erred in failing to analyze whether the heads and "hands" of the costumes could be physically or conceptually separate from the whole. In vacating the trial court's decision, the Court ruled that the plaintiff should have been allowed to show that these elements invoke in the viewer a concept separate from, and not included because of a desire to enhance, the costume's function as "clothing."

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