Florida Patent Lawyer Blog

Today the Court of the Appeals for the Federal Circuit issued a decision that plainly answers the question of who is a person of ordinary skill in the art - Extreme Networks v. Enterasys Networks (Fed. Cir. 2010). As a Florida Patent Attorney who routinely deals with this question, I found it refreshing to read a Federal Circuit decision that tackles this issue head on.

The case of Extreme v. Enterasys involved a two-way patent dispute over router-based technologies. At issue was whether the lower court erred in excluding one party's expert because he was not a person of ordinary skill in the art.

The previous case law on this subject is a little ambiguous: The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. Factors that may be considered in determining the level of ordinary skill in the art may include: (A) "type of problems encountered in the art;" (B) "prior art solutions to those problems;" (C) "rapidity with which innovations are made;" (D) "sophistication of the technology; and" (E) "educational level of active workers in the field. In a given case, every factor may not be present, and one or more factors may predominate." In re GPAC, 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995); Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986 ); Environmental Designs, Ltd. V. Union Oil Co., 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983).

But today's Federal Circuit decision was much more understandable: "Frederiksen would not qualify as a person of ordinary skill in the relevant art even under her own proposed definition. Frederiksen received an Associate of Applied Science degree in Computer Programming. She worked as a system administrator for several corporations, but she never seems to have worked on 'the design or development of high speed switches, bridges, or routers.' General experience in a related field may not suffice when experience and skill in specific product design are necessary to resolve patent issues. See, e.g., Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1360-61 (Fed. Cir. 2006) (affirming exclusion of an ergonomics expert where the invention at issue related to an ergonomic keyboard design). Therefore, the district court did not abuse its discretion by ruling that Frederiksen was an unqualified expert."

How's that for a straight answer? The educational moment here is that a person of ordinary skill in the art in a technology area should probably have a graduate degree, or higher, and should have probably have some extensive work experience designing or developing a product. Otherwise, you risk a finding that he or she is deemed to be a person WITHOUT ordinary skill in the art.

Another recent decision by the Board of Patent Appeals and Interferences (BPAI) overturned a rejection by a patent examiner who attempted a 35 U.S.C. §112 rejection of a biotechnology invention that discloses a method for killing malignant melanoma cancer cells ( Ex parte Chada). As a Miami-based Board Certified Intellectual Property Attorney, I continuously review new BPAI decisions so that I can skillfully draft proactive and intelligent patent applications based on the latest patent office holdings for my clients.

Geneticist Sunil Chada applied for a patent that describes a technique for activating a gene in Melanoma cancer cells (MDA-7) that is key to compelling the carcinomas to produce two proteins, PKR and UPR, that suppress and prevent the spread of the metastatic cells. The patent examiner asserted that practicing the method would require undue experimentation and pulling from his tool box the §112 justification for rejecting the invention: "...a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains... and shall set forth the best mode contemplated by the inventor of carrying out his invention."

The examiner also pointed to a prior invention, (Bottaro, U.S. 6,326,446 B1, Dec 4, 2001), as having disclosed PKR as ineffective in suppressing or preventing the viral infection of cells. Here, the examiner misinterpreted the teachings of Bottaro, which describes a method of preventing the destruction of healthy human cells by the HIV virus, where Chada shows us just the opposite intention - instigating the destruction of cancer-ridden skin cells. Thus, the two inventions are diametrically opposed in their fundamental goals. Anyone with a basic understanding of how the HIV virus leads to AIDS and works to destroy healthy and desirable human cells should be readily able to comprehend that in most other cases of viral infection the opposite effect would be required to diminish the ability of a virus to spread by working to destroy infected cells. As the BPAI deftly points out, "...a skilled worker would recognize that killing cancer cells or virus-infected cells before they can further spread the cancer or virus infection would be therapeutically effective, and in fact is the objective of most anti-cancer and anti-viral therapies." Thus, there is no logical connection between an inhibitive method for cell protection and another disarming method for cell destruction.

In its conclusion, the BPAI stated, "The Examiner has not provided evidence or sound scientific or logical reasoning sufficient to support a conclusion that practicing the claimed method would require undue experimentation." This is yet another example of a patent examiner missing the mark in rejecting an applicant's claims.

In an educational decision yesterday, the Board of Patent Appeals and Interferences decided in Ex Parte Nakamura that an already-existing, but unacknowledged, characteristic in a prior art composition is obvious under 35 U.S.C. 103(a) but rebuttable if there is evidence to the contrary. As a patent attorney in Florida with an active patent prosecution docket, I'm always on the lookout for decisions of the BPAI that divulge methods for fighting rejections.

In this case, the Appellant claimed a composition of nickel and tin that has a characteristic of preventing copper from diffusing. The problem was that the Examiner found a patent reference that disclosed the identical composition.

Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). "[W]hen the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). In Ex Parte Nakamura, the Examiner, having found the same composition in the prior art, made a prima facie case of anticipation or obviousness.

But, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. Best, 562 F.2d at 1255; see also MPEP § 2112.01. Unfortunately, the Appellant in this case didn't provide any evidence that the claimed characteristic was not present in the prior art reference.

Responding to this fact, the BPAI stated: "On the record before us, Appellant has not presented any evidence to show that the prior art product does not necessarily possess the characteristics of the claimed product. Best, 562 F.2d at 1255. Thus, the Examiner has established that Tsukada's Ni-Sn layer possesses the characteristic of preventing diffusion of Cu from the base layer into the solder."

Thus, Appellant's claim fell into the following tenet: "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Thus, the claiming of a new use, new function, or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. Best, 562 F.2d at 1254.

The moral of the story here is that if you are claiming a new or otherwise unknown characteristic of an already-known composition, then you must provide some evidence to support the argument that the characteristic is not found in the reference being used against you. A well-crafted 37 C.F.R. 1.132 Affidavit can help in this regard.

Earlier this week, the famed coupon startup, Groupon, filed a trademark infringement complaint against an Australian web site named Scoopon, which does the same thing. As a Florida Trademark Attorney with several active trademark infringement cases, I keep up to date on the latest happenings in trademark enforcement.

This case involves Groupon's U.S. trademark registration number 3685954 for the word GROUPON associated with a web site that promotes the goods and services of others. The infringer, Scoopon, is an Australian copycat web site. See the Complaint here.

At the heart of this matter is whether there's a likelihood of confusion between the two marks - Groupon and Scoopon. In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court held the factors relevant to a determination of likelihood of confusion pertain to the similarity or dissimilarity of the marks and the relatedness of the goods or services.

The Court of Appeals for the Federal Circuit has provided the following guidance with regard to determining and articulating likelihood of confusion:

The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used (citations omitted). It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark (footnote omitted). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties (footnote omitted). Indeed, this type of analysis appears to be unavoidable.

In light of the above, it seems to me that since Groupon and Scoopon are so phonetically similar (I mean, they rhyme) and both web sites offer the same service, the likelihood of confusion factors clearly lean toward a finding of infringement. Scoopon would be wise to work out a settlement with Groupon before it gets hit with some large damages.

As a Florida Patent Attorney with a sizable docket of patent cases, I constantly worry about the effect my amendments have on the enforceability of the resulting patents. As you know, the doctrine of patent prosecution history estoppel limits the scope of a patentee's claims due to things that happened during patent prosecution. Last week, the Court of Appeals for the Federal Circuit issued an illuminating decision in Funai v. Daewoo on the doctrine of prosecution history estoppel and when it is applied.

At issue in this case was whether the patentee, Funai, lost its range of equivalents with regard to a claim term when Funai cancelled the relevant claim after it was rejected by the Patent Examiner. Does cancelling a claim after a rejection invoke prosecution history estoppel and lead to a loss of a range of equivalents?

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) is the landmark case we consider when discussing prosecution history estoppel. Festo tells us that no estoppel exists with respect to a claim term if this aspect is unrelated to or "merely tangential" to the prosecution. In Festo, 535 U.S. at 741, the Court stated: "There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. . . . [T]he rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; . . . . In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence."

In the Funai case, the Federal Circuit reviewed the patentee's amendment and decided the following:
"It is apparent that the nature of the [claim term at issue] was not a factor in the allowance of claim 4, for this aspect was not at issue during prosecution. This limitation is in the category that the Court called "merely tangential" to the prosecution, as discussed in Festo. Thus the district court correctly held that the cancellation of claims 1 and 2 did not surrender access to equivalency with respect to the [claim term at issue]."

The moral of the story here is that prosecution history estoppel only applies to aspects of a claim that are directly related to prosecution. Aspects that are merely tangential or secondary to a main issue are not subject to prosecution history estoppel and do not lose their range of equivalents due to an amendment. As a practice tip, if you see this issue come up during patent prosecution, I would explicitly state in the Remarks section of an amendment whether you consider certain aspects of the claim tangential and not at at issue.