Sughr ue Revi ew Sughr ue Revi ew Volume 1, Issue 8 September 1, - - PDF document

dian Nation as a “juristic per- son,” the terms “person”, “juristic person”, and “institution” all have the same meaning under 15 U.S.C. § 1052(a). Further, the Federal Circuit, citing the Smith’s own brief, believed that the he understood the Examining Attorney's position and was aware that the term "institution" was at issue. With regard to the Smith’s contention that the refusal to register his marks showed a pattern of racial discrimina- tion in violation of the Due Process and Equal Protection clauses of the Fifth Amend- ment to the United States Constitution, the Federal Cir- cuit held that since Smith was provided a full opportunity to prosecute his application and appeal the rejection, there was no due process violation and the allegations were without merit. The court pos- ited that even if Smith’s alle- gations of discrimination were true, the Board’s and Examin- ing Attorney’s reasons for denying the registration were still legitimate, since the marks did suggest a false connection to the Shinnecock Indian Nation. Finally, Smith’s arguments that other marks with references to In- dian tribes were improperly registered were unsupported assumptions, as the marks had entirely reasonable ex- planations for their legitimate registration. The Federal Circuit affirmed the Trademark Trial and Ap- peal Board (hereinafter “the Board”) decision to refuse registration of the marks, SHINNECOCK BRAND FULL FLAVOR and SHINNECOCK BRAND LIGHTS, for cigarettes

• n the ground that the marks

falsely suggested a connec- tion with the Shinnecock In- dian Nation, which falls within the meaning of “institution” under 15 U.S.C. § 1052(a). The Applicant, J

• nathan K.

Smith, a U.S. citizen and member of the Shinnecock Indian Nation and sole pro- prietor of Shinnecock Smoke Shop, filed two trademark applications with the United States Patent and Trademark Office (USPTO), seeking to register the marks. The Trademark Examining Attor- ney refused to register the proposed marks under 15 U.S.C. § 1052(a) as falsely suggest a connection to a non- sponsoring entity. 15 U.S.C. § 1052(a) protects against marks that "falsely suggest a connection with persons, living or dead, insti- tutions, beliefs, or national symbols." On appeal, Smith did not contest the false suggestion

• f a connection to the Shin-

necock Indian Nation. He instead argued that the Shin- necock Indian Nation is not an “institution” under Section 2(a) of the Lanham Act. Smith also alleged that the denial of his marks and the grant of supposedly similar marks showed racial discrimi- nation that violated the Due Process and Equal Protection clauses of the Fifth Amend- ment to the United States Constitution and the United States’ treaty obligations un- der the United Nations’ Inter- national Convention on the Elimination of All Forms of Racial Discrimination. In construing the statute, the Federal Circuit looked at the plain meaning of the word “institution” and construed it to mean “an established or- ganization,” where an “organization” is a “body of persons…formed for a com- mon purpose.” Black’s Law Dictionary 813, 1133 (8 th ed. 2004). The Federal Circuit also relied on prior Board precedent that included In- dian tribes under the protec- tion of Section 2(a). Both of these considerations led the Federal Circuit to conclude that the Shinnecock Indian Nation is an “institution” un- der Section 2(a). Smith also alleged that the Examining Attorney failed to argue that the Shinnecock Indian Nation was not an “institution,” and only argued that it was not a “person” un- der Section 2(a). The Federal Circuit disagreed and ruled that even though the Examin- ing Attorney focused on char- acterizing the Shinnecock In-

Indian Nation is Protected against Trademarks that Falsely Suggest a Connection Thereto

In re Shinnecock Smoke Shop Federal Circuit, 2009-1100, July 1, 2009

Ebenesar Thomas

Sughrue Mion, PLLC

Sughr ue Revi ew Sughr ue Revi ew

Inside this issue:

In re Shinnecock Smoke Shop 1 University of Pittsburgh v. Hedrick 2 Blackboard, Inc.

• v. Desire2Learn,

Inc. 3 In re McNeil - PPC, Inc. 4- 5 Wavetronix v. EIS Electronic Integrated Sys- tems 4 Recent Articles published 5 September 1, 2009 Volume 1, Issue 8

The Federal Circuit held that concep- tion of a complex biological inven- tion does not per se require simulta- neous reduction to practice. In mak- ing this determination, the Federal Circuit found clear and convincing evidence that only two of the seven named inventors on U.S. Patent No. 6,777,231 (“the ‘231 patent”) con- ceived of the invention, affirmed the District Court’s finding of misjoin- der, and granted correction of inven- torship under 35 U.S.C. § 256. The ‘231 patent issued containing product claims to a novel class of stem cell, specifically “adipose- derived” stem cells. The ‘231 patent culminated from experiments con- ducted by Drs. Katz and Llull at the University of Pittsburgh in 1996, in which cells were isolated and cul- tured in vitro from adipose (fat) tis-

• sue. Katz and Llull had observed

that adipocytes, specialized fat- storing cells, could “de- differentiate” into more primitive cells, and that under certain conditions, these de- differentiated cells could subse- quently be induced to differentiate back to adipocytes, and also to cells which resembled other cell lineages, such as muscle and neuronal cells. As a result of this research, the Uni- versity of Pittsburgh filed two provi- sional Applications in 1999, listing both Katz and Llull, and a visiting fellow, Dr. Hedrick, as named inven-

• tors. Once his fellowship at the Uni-

versity of Pittsburgh ended, Hedrick moved to UCLA, and together with researchers Benhaim and Lorenz, established the “Regenerative Bioen- gineering and Research Labora- tory” (“REBAR”). At REBAR, Hedrick and his colleagues continued to study the adipose- derived cells identified by Katz and Llull. In addi- tion to Katz, Llull, and Hedrick, other REBAR researchers were named in- ventors on the U.S. National Stage Application that issued as the ‘231 Patent. A dispute over the inventorship of the ‘231 patent arose between Katz and Llull, who had assigned their rights to the University of Pittsburgh, and Dr. Hedrick and his colleagues at REBAR, who had assigned their rights to the Regents of the University of

• California. Following the submission
• f multiple petitions by Hedrick and

the REBAR researchers with the USPTO to have Katz and Llull re- moved as inventors, the University of Pittsburgh responded by filing suit to have Hedrick and the other REBAR researchers removed as inventors. At trial, the district court found Katz and Llull to be the proper named inventors on the ‘231 patent, and that Hedrick and the other REBAR scientists were not inventors. The court’s decision was based largely on evidence from laboratory notebooks

• f Katz and Llull suggesting that

adipose- derived stem cells could differentiate into different cell types. The district court found that the ear- liest date of conception was in 1996, prior to the establishment of REBAR, and even Hedrick’s arrival at the University of Pittsburgh. On appeal, the Federal Circuit af- firmed the district court’s finding that Hedrick and the other REBAR scientists were improperly named as inventors on the ‘231 patent. The REBAR researchers argued that at the time of conception of the invention by Katz and Llull, their work was “highly speculative,” and that Katz and Llull did not “know” that the in- vention contained every limitation of each claim. Instead, they argued that Katz and Llull did not have this knowledge until the REBAR research- ers helped confirm the claimed properties. The Federal Circuit disagreed, and indicated that simultaneous concep- tion and reduction to practice are not required for conception of this “biological construct.” This holding differs from the Federal Circuit’s previous opinion in Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200 (Fed. Cir. 1991), where con- ception of a different biological con- struct (a nucleic acid) was held to be complete only once its physical properties or structure could be de- scribed, by reduction to practice. Here, however, the Federal Circuit held that Katz and Llull, by isolating cells from fat tissue that could de- differentiate, and by providing ex- perimental evidence suggestive of trans- differentiation into different cell lineages, had formed a “definite and permanent idea of the operable invention,” and thus had conceived

• f it. While the REBAR inventors ar-

gued that the experiments of Katz and Llull were inconclusive, the Fed- eral Circuit held that conception, at least for the stem cells at issue, does not require proof of scientific cer-

• tainty. The court held that “[p]roof

that the invention works to a scien- tific certainty is reduction to prac- tice,” not conception. The REBAR researchers’ contribution was merely to help the experiments of Katz and Llull gain scientific certainty. The conception debate in University

• f Pittsburgh emphasizes the impor-

tance of proper and thorough docu- mentation of research activities and inventive contributions; the note- book entries relied upon by Katz and Llull ultimately proved sufficient to establish that they alone had con- ceived of the invention, and that the experiments of Hendrick were merely confirmatory and not re- quired for conception.

Conception Does Not Require Proof to a Scientific Certainty

University of Pittsburgh v. Hedrick Federal Circuit 2008-1468, July 23, 2009

Alan Townsley, Ph.D.

Page 2 Sughrue Review

Software Limitations Recited in “Means-Plus-Function” Format Require Explicit Description of How the Software Function is Performed in the Specification; Mere Recitation of a General Computer Is Not Enough

Blackboard, Inc. v. Desire2Learn, Inc. Federal Circuit, 2008-1368, -1396, July 27, 2009

Christopher Bezak

Is an explicit description for software limitations recited in a claim re- quired within the Specification? In a decision by judges Bryson, Moore, and Cudahy (Richard D. Cudahy, Senior Circuit J udge, United States Court of Appeals for the Seventh Circuit, sitting by designation), the Federal Circuit answers this question in the affirmative by applying the standards of 35 U.S.C. § 112, 6th paragraph, in view of recent Federal Circuit decisions in Aristocrat Tech- nologies Australia Pty Ltd. V. Inter- national Game Technology, 521 F.3d 1328 (Fed. Cir. 2008) and Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). Applying these decisions, the Federal Circuit invalidated “means- plus- function” limitations in claims directed to functions performed by a computer because the specification did not sufficiently describe the structure that performed the functions of the means- plus- function limitations and how the structure performed these claimed functions. The claims at issue are directed to a “course- based system for providing to an educational community of us- ers access to a plurality of online courses” including a “server com- puter” having: “means for storing a plurality of data files”, “means for assigning a level of access and con- trol [to] each data file”, “means for determine whether access to a data file [] is authorized,” and “means for allowing access to and control of the data file”. At the district court, Blackboard sued Desire2Learn for infringement of its patent directed to the course- based system. The dis- trict court found the claims invalid under 35 U.S.C. § 112, 6 th paragraph as being indefinite because the specification failed to specifically describe how the functions of the limitations were performed. On ap- peal, Blackboard challenged the dis- trict court’s ruling and alleged that the recitation of an “access control manager,” which is a function of the server that controls access to files on the server, provides sufficient struc- ture for the claims to satisfy 35 U.S.C. § 112, 6th paragraph. 35 U.S.C. § 112, 6 th paragraph holds that a claim limitation drafted in “means- plus- function” form covers

• nly “the corresponding structure . .

. described in the specification and equivalents thereof.” Blackboard’s position was that the access control manager assigned access control to data files and controlled access to those files through an access control list, and thus the access control manager provided sufficient struc- ture to satisfy 35 U.S.C. § 112, 6th

• paragraph. The Federal Circuit

stated that Blackboard’s disclosure, however, was not “a description of structure; what the patent calls the “access control manager” is simply an abstraction that describes the function of controlling access to [data files], which is performed by some undefined component of the

• system. The ACM is essentially a

black box that performed a recited

• function. But how it does so is left

undisclosed.” The Federal Circuit further noted that the specification did not contain a description of the process that the access control man- ager uses to perform the claimed functions. Referencing Aristocrat and Net MoneyIN, the court reiterated the rationale that a general purpose computer, which is capable of per- forming a function recited in the claims, is insufficient structure to satisfy 35 U.S.C. § 112, 6th para-

• graph. Simply describing a software

module that performs a claimed function merely describes an out- come achieved by the computer, and not a means for achieving that out-

• come. To hold otherwise would per-

mit a patentee to only recite func- tional language without a corre- sponding disclosure of the structure that accomplishes the claimed func-

• tions. More specifically, “when a

computer is referenced as support for a function in a means- plus- function claim, there must be some explanation of how the computer performs the claimed function.” The Federal Circuit clarified that an ex- ample of how the computer performs a claimed function is an algorithm, and simply reciting software without providing some detail about the means to accomplish the function is insufficient to satisfy 35 U.S.C. § 112, 6th paragraph. In this case, “[b]y failing to describe the means by which the access control manager will create an access control list, Blackboard [] attempted to capture any possible means for achieving that end. Section 112, paragraph 6, is intended to prevent such pure functional claiming.” As a result, when claiming software functionality using “means- plus- function” limitations, the specifica- tion should clearly define the struc- ture performing the functions. De- scription of either a hardware mod- ule or a software module performing the functions should be sufficient to satisfy 35 U.S.C. § 112, 6th para- graph if the specification describes “how” the module accomplishes the

• function. Defining how the module

may accomplish the function might be disclosed by an algorithm that clarifies the processing performed by, or controlled by, the module. Mere recitation of a general purpose computer, or even a specialized computer, that is able to perform the functions recited in the claims will not be sufficient to provide structure for a “means- plus- function” limita- tion under 35 U.S.C. § 112, 6th paragraph.

Page 3 Volume 1, Issue 8

The Federal Circuit construed a claim term not construed by the district court and upheld the district court’s judgment that EIS’s coarse traffic de- tector did not literally infringe Wavetronix’s traffic detector. Wavetronix owns U.S. Patent 6,556,916 (“the ‘916 patent”) directed to a “System and Method for Identifi- cation of Traffic Lane Positions”, i.e., a traffic detector. Wavetronix asserted that the EIS Remote Traffic Microwave Sensor (“RTMS”) X3 monitoring device infringed the ‘916 patent; in particu- lar, the portion of claim 1 which re- cites “defining said traffic lanes within said traffic monitoring system from said probability density function esti- mation.” Before making a determination of in- fringement, a court must construe the claim language at issue. The two- step process involves determining the meaning of a disputed claim term and then comparing the accused device to the claims as construed. Although it is normally the responsibility of the district court to perform claim con- struction, the district court dismissed the infringement claims at summary judgment before the claims were con-

• strued. The Federal Circuit agreed to

construe the disputed claim term for three reasons: a) the district court’s views on claim construction had been exhausted, b) both parties agreed that the Federal Circuit should construe the claim limitation, and c) the record was sufficient to enable the Federal Circuit to construe the claim without prejudic- ing either party. The claim term at issue was “probability density function estimation” (“PDFE”). The Federal Circuit construed the term based on the ordinary and customary meaning of the claim language and the teachings of the specification. The court held that a “probability density function estimation” must estimate a probability density function with suffi- cient precision to indicate both where vehicles are located and where they are

• not. The Federal Circuit therefore con-

strued a PDFE to be “a finite data set large enough to approximate a function

• f a continuous variable whose integral
• ver a region gives the probability that

a random variables falls within the re- gion.” Essentially, PDFE requires a rep- resentation of vehicle frequencies across a range of positions with suffi- cient detail to provide meaningful in- formation about where traffic lanes begin and end. Based on the claim construction, the Federal Circuit determined that the ESI RTMS X3 did not literally infringe Wavetronix’s claim because the ESI RTMS X3 did not require compari- sons across lanes using “peaks” and “valleys” corresponding to lane boundaries, as required by claim 1 of the ‘916 patent. The court also found that in the ESI RTMS X3, the determination that a range slice cor- responds to a lane is made inde- pendently for each lane without ref- erences to values in other range

• slices. Therefore, the ESI RTMS X3

does not provide data from which a user could extrapolate lane bounda- ries or define traffic lanes, as re- quired by claim 1 of the ‘916 patent. Consequently, no literal infringement was found. The Federal Circuit also determined that ESI did not infringe Wavetronix’s claim under the doctrine of equiva-

• lents. The Federal Circuit reasoned

that ESI did not define lanes in sub- stantially the same way as the method in the ‘916 patent because ESI’s method confirmed whether the range slices of uniform width are aligned with actual traffic lanes on a

• ne- to- one basis, rather than as a

comparison between different range slices. The Federal Circuit therefore af- firmed the district court’s judgment that the ESI RTMS X3 did not infringe claim 1 of Wavetronix’s ‘916 patent.

In a Rare Instance, the Federal Circuit Construes a Claim Term not Construed by the District Court

Wavetronix v. EIS Electronic Integrated Systems Federal Circuit 2008-1129,-1160, July 29, 2009

Ruthleen Uy

Page 4 Sughrue Review

When Appealing a Board Decision, It Is the Mailing Date of the Board’s Decision, Not the Decision Date, Which Starts the Statutory Time Clock

In re McNeil - PPC, Inc. Federal Circuit, 2008-1546, July 31, 2009

Logan Brown The Federal Circuit held that a notice of appeal taken to the United States Court

• f Appeals is filed “timely” when filed

within 60 days of the mailing date of the decision from which the appeal is

• taken. According to the court, a Board
• pinion is only truly decided when it

is released to the public or (at least the parties) because, until then, it is possible for the Board to decide to revise it, and thus, the critical date must be the mailing date. McNeil owns U.S. Patent No. 6,310,269 which McNeil requested the PTO re- examine based on an unexamined J apanese Patent Appli- cation (“Sasaki”). During the re-

Page 5 Volume 1, Issue 8 2100 Pennsylvania Avenue, NW Washington, D.C. 20037 Phone: (202) 293- 7060 Fax: (202) 293- 7860 E- mail: marketingdepartment@ sughrue.com www.sughrue.com

scribe a date for filing a notice of appeal after the date of a decision that is no less than 60 dates. The regulation promulgated under this statute is 37 C.F.R. § 1.304(a)(1) which states that “the time for filing the notice of appeal to the U.S. Court

• f Appeals for the Federal Circuit or

for commencing a civil action is two months from the date of the decision

• f the Board of Patent Appeals and

Interfaces.” The regulation further makes clear that two months is two months from the decision date with exceptions for short months, such as February, and extending deadlines that fall on weekends or holidays. Thus, the issue before the Court was whether the Board decided McNeil's motion for reconsideration on May 30 or J une 2. Specifically, the “crux

• f the matter [was] what the phrase

‘the date of the decision’ means”. The Court began its analysis with a review of the pertinent statutes and the legislative history thereof. How- ever, the Court found little assis- tance as to whether the typed “May 30, 2008” date on the first page of the Board’s decision should be given any meaning. Further, the USPTO gave no explanation of the Board’s internal procedure for issuing deci- sions nor whether the J une 2, 2008 mailing date reflects the first time examination, the Examiner finally rejected the claims in light of Sasaki. McNeil appealed the final rejection to the Board of Patent Appeals and In- terferences (“Board”). The Board af- firmed the Examiner's rejection. McNeil filed a request for rehearing

• bjecting to the Board making find-

ings of fact in the first instance and arguing against the rejections on the

• merits. The Board denied the re-

quest. On the face of the Board's order de- nying McNeil’s request for rehearing was typed “Decided May 30, 2008”. However, the mailing sheet for the

• rder was dated “J

une 2, 2008”. Further, the online “transaction his- tory” had two entries for the denial

• f the request for reconsideration for

May 30, 2008 but the online image file wrapper listed J une 2, 2008 in the Mailroom Date. McNeil filed a notice of appeal with the USPTO on August 1, 2008. The Director of the PTO took the position that the appeal was un- timely because it was filed more than 60 days after the Board made its fi- nal decision based on the decision date of May 30, 2008. Congress gave the Director some authority in setting the time for filing an appeal in 35 U.S.C. § 142, which states that the Director may pre- the decision was released to the public. The PTO argued that the statute and regulation in question state that the time to appeal runs from “the date of the decision.” Further, the opinion said “Decided: May 30, 2008.” As such, it would be contrary to the lan- guage of the statute and regulation for the court to deem the date of the decision to be the date the order was mailed. However, the Court found that, while the PTO's argument had some su- perficial appeal, the inner workings

• f the agency were more important

than the PTO admitted. Based on the evidence before the Court, the Court held that an opinion is only truly de- cided when it is released to the pub- lic or (at least the parties) because, until then, it is possible for the Board to decide to revise it. In view of In Re McNeil, for the purpose of deter- mining the timeliness of the filing of a notice of appeal from a Board of Patent Appeals and Interferences decision, it is the mail room date that marks the beginning of the statutory time limit. Therefore, the Federal Circuit held that the date of decision in the current case is J une 2, 2008.

Brian W. Hannon - Editor Carl J. Pellegrini - Editor Jay Lytle - Editor Dave Emery - Co Editor Tiffany Nichols - Assistant Editor Sejal Rathod - Assistant Editor

M o u n t a i n V i e w , C A ♦ S a n D i e g o , C A ♦ T o k y o , J a p a n ♦ W a s h i n g t o n , D C

Contributors to this edition: Tom Andersen, Eric Barr, Branka Bogunovic, Hui C Wauters, Marina Zalevsky

In re McNeil—PPC, Inc. (cont.)

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