Florida Patent Lawyer Blog

What has happened in the courts and the Trademark Trial and Appeal Board (TTAB) since In re Bose? Surprisingly, not much. As a trademark attorney in Miami with a large trademark docket, fraud on the trademark office is a topical issue I continually follow.

You are well aware that last year's Bose decision - In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) - has completely changed the criteria for finding fraud on the Trademark Office. The Bose fraud criteria can be summed up as follows: "in order to prove fraud, [the charging party] must show that [1] a statement was false, [2] the falsity was intentional, and that [3] the false statements were material to obtaining or maintaining a registration. Moreover, fraud must be proven [4] to the hilt with clear and convincing evidence." Slaska Wytwornia Wodek Gatunkowtch "Polmos" SA v. Stawski Distributing Co., Inc., Cancellation No. 92044806 (TTAB 2010).

In light of the above, it is no surprise that since the Bose decision, there is not one reported District Court or Federal Circuit case regarding fraud on the Trademark Office (as of early Dec. 2010). Further, since Bose, there have been 43 cases involving fraud at the TTAB (as of early Dec. 2010), and of those 43, none have resulted in a finding of fraud. This illustrates how difficult it has become post-Bose to succeed in cancelling a registration based on fraud. As a result, a finding of fraud in any District Court or TTAB case could be negative legal history for Bose, would almost certainly be a reported decision and would surely be written about and scrutinized by the legal journals. But don't hold your breath, I suspect it will be a very long time before we see any forum find fraud after Bose.

I came upon a super interesting Board of Patent Appeals and Interferences (BPAI) decision issued today. I found the Smucker v. Mack-Ray case interesting for both educational and entertainment reasons. The decision involves the effect an infringement action may have on a re-exam. But the BPAI used uncharacteristically harsh words to reject the Appellant's arguments, which made it amusing. It's rare to see any emotion in a BPAI decision, so when you see Jones Day get a verbal spanking, you can't help but write about it.

But the scolding didn't stop there. Here are a few samples of the Board's stinging language. In response to a Appellant's unreasonable request for a factual finding, the Board states: "It is not the PTO's responsibility, nor does the PTO have the resources, to evaluate such factual matters." In response to the Appellant's argument that the Examiner should elaborate his reasoning: "We do not subscribe to the view that such plain and unambiguous terms need further construction." And most notably, in response to the Appellant's argument that the Patent Owner shouldn't stay silent: "The Appellant also ... points out the Patent Owner's "extraordinary decision to remain silent throughout these proceedings" ... While the Patent Owner's silence is atypical, we observe that it was the Appellant that initiated this inter partes reexamination proceeding and the Patent Owner is on record as to what the ... reference ..., does, and does not disclose. To the contrary, after hundreds of pages of arguments and exhibits as well as an oral hearing, it is the Appellant's silence with respect to where the ... reference discloses the "key limitation" that is deafening." TKO!

Today's first Board of Patent Appeals and Interferences (BPAI) decision involved an eloquent exposition of the relationship between claim construction and ordinary dictionary meaning. The case of Ex parte Benson involved a 35 U.S.C. 102 rejection of a claim that turned on the construction of the claim term "embedded." As a Patent Attorney in Miami with a full docket of patent cases, BPAI decisions that involve claim construction are highly topical for me.

In Ex parte Benson, the BPAI explored the issue of how the claim term "embedded" should be construed. The Applicant argued the claim term should be given the more narrow ordinary dictionary meaning. And the Examiner, as usual, argued it should be given a broader meaning that supported the 35 U.S.C. 102 anticipation rejection. The Applicant argued the Examiner's claim construction was over-broad and unreasonable.

The lesson here is that when you launch an "unreasonable interpretation" attack on an Examiner's rejection based on an "ordinary dictionary meaning" premise, you must make sure your specification didn't broaden the scope of the claim term at issue. If your specification did, in fact, broaden the scope of the claim term, then you would be wise to use another claim term that explicitly limits its scope to the ordinary dictionary meaning you assert. This is yet another reason why a precisely drafted claim is so important in patent prosecution. I had previously expounded on the issue of precise claim drafting in a blog post here.

Terms of degree - such as "easily," "readily," and "aesthetically pleasing" - can be subjective and therefore problematic when used as claim language. But the recent Federal Circuit decision of Hearing Components, Inc. v. Shure Inc., 600 F. 3d 1357 (Fed. Cir. 2010) provides some guidelines on how to properly use terms of degree in claim language without worrying about a 35 U.S.C. §112 indefiniteness rejection. As a Florida Patent Attorney, I write claims almost every day, so this case is topical for me.

Under 35 U.S.C. § 112, second paragraph, the "specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention," which is known as the definiteness requirement. "Claims are considered indefinite when they are not amenable to construction or are insolubly ambiguous. Thus, the definiteness of claim terms depends on whether those terms can be given any reasonable meaning. Id. Indefiniteness requires a determination whether those skilled in the art would understand what is claimed." Young v. Lumenis, Inc., 492 F.3d 1336, 1344, 1346 (Fed.Cir. 2007). The purpose of the definiteness requirement is to ensure that "the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the scope of the patentee's right to exclude." Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1339 (Fed.Cir. 2003).

The moral of the story here is that you can indeed use terms of degree in claim language, as long as you explain how to measure that term in the specification. For example, if you use the claim term "easily connected," you could state in the specification that this term refers to connecting two elements manually, such as a snap-fit system, without the use of tools or other mechanical devices.

Can you get attorneys fees in a Trademark Infringement suit under the Lanham Act? In short, the answer is yes, but only in exceptional cases. This is an issue that often comes up in lawsuits of all types, especially intellectual property cases. As a Florida Intellectual Property Attorney, damages are a topical subject I'm often asked about.

As the prevailing party under the Lanham Act, a party is entitled to an award of attorney's fees in "exceptional cases." 15 U.S.C. § 1117. Intentional, deliberate or willful conduct is usually sufficient to make out an "exceptional case." See, e.g., Playboy Enterprises, Inc. v. P.K. Sorren Export Co., 546 F.Supp. 987, 999 (S.D.Fla.1982) (attorneys' fees awarded where infringement was deliberate); Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F.Supp. 990, 999 (W.D.Mo.1986) (deliberate and intentional infringement makes the case "exceptional").

How to determine attorney's fees is another matter altogether. The Court normally applies the "lodestar" approach set forth in Hensley v. Eckerhart, 461 U.S. 424, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983) and Norman v. The Housing Authority of the City of Montgomery, 836 F.2d 1292 (11th Cir.1988). To arrive at the lodestar amount, the Court is required to multiply the number of hours reasonably expended on the litigation by a reasonable hourly rate for the services of the prevailing party's attorney. Norman, 836 F.2d at 1299. Once the Court arrives at the lodestar figure, it may be adjusted according to whether the results were excellent, whether the fee was fixed or contingent, and other factors. In intellectual property cases, other courts have held that "a party should be entitled to retain the most competent counsel available" because the issues are difficult and require great skill and experience on the part of the attorneys. Howes v. Medical Components, Inc., 761 F.Supp. 1193, 1196, 1199 (E.D.Pa.1990).

In doing legal research today, I came upon this Board of Patent Appeals and Interferences (BPAI) decision that illustrates the importance of precise claim drafting. The case of Ex parte Allen Berger involves a 35 U.S.C. 102 rejection of a claim for a window panel invention. As a Patent Attorney in Miami with a full docket of patent cases, I'm constantly scanning for BPAI decisions that support my client's arguments at the Patent Office.

When the examiner rejects a claim, an applicant seeking a narrower construction must either show why the examiner's broader construction is unreasonable or amend the claim to state expressly the scope intended. In re Morris, 127 F.3d 1048,1057 (Fed. Cir. 1997). The BPAI focuses on the construction of the disputed limitation. Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991).

The lesson here is that when you launch an "unreasonable interpretation" attack on an Examiner's rejection, you must: a) make sure the language of your claim limitation truly limits your claim as specified in your arguments and b) make sure you have a good, explicit reason why the Examiner's claim interpretation is unreasonable. Namely, providing a passage from Applicant's specification that supports your argument about why your claim is limited so as to exclude the scope of the Examiner's interpretation. This is why a precisely drafted claim is so important in patent prosecution.