Fwd: from the AIPLA: PTO fees, patent and copyright cases, etc.

If you feel the urge to call your representative and tell them that  
giving the PTO vast funds before reforming their practices, today is a  
very good day to do so.

http://www.house.gov/writerep/

There is much industry support for this and little to no outcry.

-Jean

Begin forwarded message:
>
> AIPLA Reports
> A Periodic Notification of AIPLA Activities and
> Current Developments in Intellectual Property Law
> Copyright © 2004 AIPLA
> March 1, 2004
>
> Legislative Developments
>
> Patents/Fee Bill
>
> Amended Fee Bill Would Address Diversion With Certain Fee Rebates
>
> Fee legislation to provide the Patent and Trademark Office with the
> revenues needed for its 21st Century Strategic Plan is scheduled to
> come to the House floor on March 3rd, but without the provision that
> would have taken the PTO Òoff budgetÓ and guaranteed that the PTO
> would be able to receive and use all of its fee revenues. In its
> place will be a compromise procedure intended to at least end
> diversion by establishing a system for rebating certain user fees
> when revenues exceed appropriations for any given year. This rebate
> proposal, which was proposed to the House Judiciary Committee by the
> PTO, would provide for the deposit of such fee overages into a trust
> fund from which the PTO would rebate certain fees at the end of the
> fiscal year.
>
> AIPLA expressed concerns to the PTO about the ability of the PTO to
> implement and operate the rebate system and also about the burden
> that the processing of rebates would place on users. The PTO has
> responded that it is confident it can implement a rebate system and
> that the annual operating costs will be no more than $100,000 plus
> postage, but has not responded to the concerns regarding the impact
> the system will have on users. Nonetheless, given that this
> compromise offers the prospect for ending diversion, and recognizing
> the great political difficulty which Judiciary Committee Chairman
> Sensenbrenner faced and has overcome in getting this far to prevent
> appropriators from diverting PTO fee revenues to other government
> programs, the AIPLA Board has decided to support the compromise based
> upon assurances that its disposition of overages will effectively end
> diversion.
>
>
> Judicial Developments
>
> Patents/Claim Construction
> Claim Term Is Not Limited to Technology of Filing Date Absent Clear  
> Disavowal
> ˇSuperguide Corp. v. DirecTV Enterprises, Inc., Fed. Cir., No.
> 02-1561, 2/12/04.
>
> The meaning of the claim term Òregularly received television signalÓ
> may not be limited to the technology as of its 1985 patent filing
> date to exclude coverage of digital signals absent a Òclear
> disavowalÓ of that subject matter, the Federal Circuit held February
> 12, 2004.
>
> Superguide Corp. is the owner of patents on technology that allows
> television viewers to search for and display specified program
> information. In a lawsuit against DirecTV Enterprises, Inc., and
> others, a district court issued a summary judgment of no patent
> infringement based on its narrow claim construction.  211 F. Supp. 2d
> 725 (W.D.N.C. 2002).
>
> On appeal, the Federal Circuit reversed in part, holding that the
> meaning of the claim term Òregularly received television signalÓ was
> improperly confined to signals received as of the patentÕs 1985
> filing date, which did not include digital signals. The district
> court erroneously relied on cases involving means-plus-function
> claims to conclude that method and apparatus claims are limited to
> the disclosures in the specification, Judge Sharon Prost noted.  She
> pointed out that the claim language itself does not include a
> limitation to any particular type of technology or specify a
> particular type of signal format, such as analog or digital.
>
> The court found no authority for limiting disputed claim language to
> analog technology in Kopycake Enters., Inc. v. Lucks Co., 264 F.3d
> 1377 (Fed. Cir. 2001).  Although the court in that case concluded
> that the claim term Òscreen printingÓ did not extend to the
> later-developed Òink jet printing,Ó it did so because of express
> limitations in the specification to ÒconventionalÓ or then-existing
> technologies.  In this case, analog may have been the dominant format
> of video data in 1985, but Òwe have little doubt that those skilled
> in the art knew of the existence of digital video data at the time,Ó
> Judge Prost wrote.
>
> Judge Paul Michel dissented.  The majorityÕs claim constructions
> expand the scope of the Õ578 patent far beyond what the inventors say
> in their application that they actually invented, and what that
> application actually describes and enables, Judge Michel observed.
> The claim constructions ignore the expert declarations and rely
> instead Òon a literalistic and abstract reading of the term Ôsignal,Õ
> and the absence of a clear disavowal of digital signals in the
> specification or claim language.Ó  The question is not the meaning of
> the claim term, in isolation, to the layman, he observed, but whether
> the term would have had a particular meaning Òto one of ordinary
> skillÓ in the television art Òat the timeÓ and in the context of this
> patent disclosure.
>
> Judge Michel added the following:
>
> But the cause of my alarm extends far beyond this case.  I am also
> concerned that the courtÕs opinion relies on certain imprecise
> statements prior panels of this court have occasionally made in
> recent years concerning the ÒplainÓ or ÒordinaryÓ meaning of claim
> terms.  Despite the now-common references to the Òplain meaningÓ or
> Òordinary meaningÓ of claim terms, or even the Òordinary dictionary
> meaningÓ cited in the majorityÕs opinion, our precedent requires that
> the correct meaning of claim terms is that determined from the
> standpoint of a person of ordinary skill in the relevant art and at
> the time of the patent.  I am concerned then that the use of these
> Òshort-handÓ expressions about ordinary meaning obscures the correct
> analysis, tempting panels to look for an Òordinary meaningÓ divorced
> from the proper perspectiveÑthe artisanÕsÑand the preferred, proper
> sources of interpretationÑthe disclosure, technical dictionaries,
> prior art patents, and expert testimony.  The ultimate result of this
> trend is claim constructions providing the broadest possible scope to
> claim terms, absent express limiting language in the claim,
> specification or prosecution history, but regardless of what the
> inventors actually invented.
>
> To read the opinion, click here:
> <http://www.aipla.org/html/reports/2004/Super.pdf>http:// 
> www.aipla.org/html/reports/2004/Super.pdf
>
>
> Patents/Claim Construction
>
> Feature in Specification with Single Embodiment Did Not Limit Claim
> Liebel-Flarsheim Co. v. Medrad, Inc., Fed. Cir., No. 03-1082, 2/11/04
>
> A feature of an invention described in a patent specification may not
> be imported as a limitation on a claim simply because that feature is
> included in the sole embodiment of the invention, the Federal Circuit
> held February 11, 2004.
>
> Leibel-Flarsheim Co. is the owner of patents on methods and devices
> used with power fluid injectors during medical procedures. A district
> court ruled that claims relating to the loading of syringes for the
> injectors required the use of Òpressure jacketsÓ around the syringes,
> as discussed in the specification. Although none of the claims
> recited a pressure jacket, the court found that the claim term
> Òsyringe receiving openingÓ was ambiguous and concluded from the
> specification that the ÒopeningÓ had to be located at the front end
> of a pressure jacket. Finding that devices made by Medrad, Inc.,
> lacked such pressure jackets, the court entered a summary judgment of
> noninfringement.
>
> The Federal Circuit reversed, ruling that the district court
> improperly read the pressure jacket as a claim limitation. The court
> rejected the contention that, because the Òpressure-jacketed
> injectorÓ is the only subject matter described in the specification,
> that subject matter constitutes the invention itself rather than
> simply a preferred embodiment of a broader invention. Judge William
> Bryson discussed the Òtwin axiomsÓ of claim construction: claims must
> be read Òin view ofÓ the specification, but limitations in the
> specification must not be read into the claims.
>
> Although parties frequently cite one or the other of these axioms to
> us as if the axiom were sufficient, standing alone, to resolve the
> claim construction issues we are called upon to decide, the axioms
> themselves seldom provide an answer, but instead merely frame the
> question to be resolved.
>
> We have recognized that Òthere is sometimes a fine line between
> reading a claim in light of the specification, and reading a
> limitation into the claim from the specification.Ó É As we have
> explained, Òan inherent tension exists as to whether a statement is a
> clear lexicographic definition or a description of a preferred
> embodiment.  The problem is to interpret claims Ôin view of the
> specificationÕ without unnecessarily importing limitations from the
> specification into the claims.Ó
>
> The cases cited by Medrad as finding embodiments to constitute the
> invention itself provided specific reasons dictating a narrow claim
> construction beyond the mere fact that the specification disclosed
> only a single embodiment, Judge Bryson pointed out. In this case,
> Medrad cited no clear disavowal of embodiments lacking a pressure
> jacket and no express or implicit restriction of claim scope to an
> injector invention that uses a pressure jacket.
>
> Finally, the court refused to adopt the district courtÕs claim
> construction as necessary to preserve the validity of the claims.
> Unless a court concludes, after applying all available tools of claim
> construction that the claim is still ambiguous, the axiom regarding
> construction to preserve validity does not apply, Judge Bryson wrote.
>
> To read the opinion, click here:
> <http://www.aipla.org/html/reports/2004/Liebel.pdf>http:// 
> www.aipla.org/html/reports/2004/Liebel.pdf
>
>
> Patents/Temporary Presence Exemption/Obviousness
>
> Court Construes ÔTemporary PresenceÕ Infringement Exemption
> National Steel Car, Ltd. v. Canadian Pacific Railway, Ltd., Fed.
> Cir., No. 03-1256, 1/29/04.
>
> A train railcar embodying a patented invention and traveling from
> Canada to stops in the United States and back again may qualify for
> the Òtemporary presenceÓ infringement exemption at 35 U.S.C. °Ë272,
> the Federal Circuit held January 29, 2004, even though the majority
> of the railcarÕs life is spent in the United States.  The court also
> held that information does not have to be in the prior art to serve
> as a motivation to combine references for an obviousness
> determination.
>
> National Steel Car (NSC) is the assignee of a patent (4,951,575) on a
> ÒdepressedÓ center-beam railroad flat car, used for hauling lumber.
> NSC filed an infringement suit against Canadian Pacific Railroad
> (CPR), for which a U.S. company (Greenbrier Company) agreed to
> provide new drop-deck cars. The district court granted NSCÕs motion
> for a preliminary injunction. 254 F. Supp. 2d 527 (E.D. Pa. 2003).
>
> In its first decision under the infringement exemption of 35 U.S.C.
> °Ë272, the Federal Circuit reversed.  Section 272, entitled
> ÒTemporary presence in the United States,Ó provides that, under
> specified conditions, no patent infringement results from the use of
> an invention in a non-U.S. vehicle entering the United States only
> temporarily. The court explained that the statute was drafted to
> codify Brown v. Duchesne, 60 U.S. (19 How.) 183 (1856), and to
> satisfy U.S. obligations under the Paris Convention.
>
> The appellate court was unconvinced that the nationality of the
> vehicle embodying the invention is determined by the U.S. nationality
> of the locomotive pulling the train, rather than by the Canadian
> nationality of the railcar.  The court also pointed out that the term
> ÒvehicleÓ under Section 272 is defined broadly enough at 1 U.S.C. °Ë4
> to encompass an individual  railcar, as opposed to the train as a
> whole.
>
> NSC argued that the railcarÕs presence in the United States cannot be
> ÒtemporaryÓ under the statute because  most of the life of the
> railcar will be spent delivering lumber to U.S. destinations, Judge
> Raymond Clevenger rejected the argument, explaining as follows:
>
> The expectation that CPRÕs drop-deck center-beam flat cars will spend
> more than 50 percent of their useful lifespan in the United States is
> not relevant to the section 272 analysis.  If the cars are entering
> the United States for a limited timeÑthat is, they are not entering
> permanentlyÑand are entering only for the purpose of engaging in
> international commerceÑthat is, they are entering to unload foreign
> goods and/or to load domestic goods destined for foreign marketsÑthey
> are entering ÒtemporarilyÓ for the purposes of section 272 regardless
> of the length of their stay within the jurisdiction of the United
> States.
>
> Nor was the appellate court persuaded that the invention under the
> Õ574 patent will not be used Òexclusively for the needs of the É
> vehicle,Ó as required by the statute. Judge Clevenger pointed out
> that the district court construed the term ÒneedsÓ too narrowly by
> confining it to the needs of propulsion. The Brown ruling and the
> Paris Convention, by contrast, speak about a vehicleÕs needs of
> construction as well as its needs for operation, he pointed out.
>
> In addition, the Federal Circuit questioned the holding that CPR
> failed to establish that  the invention would not be Òoffered for
> sale or sold in É the United States,Ó as required by the statute.
> The district court improperly relied on GreenbrierÕs offers to sell
> to U.S. companies, Judge Clevenger pointed out, explaining that this
> provision does not apply to third-party sales of embodiments of the
> invention.
>
> The appellate court was also unconvinced that CPRÕs obviousness
> defense lacked merit.  The court was satisfied that, at least under
> the preliminary record, a strong case was made that all elements of
> the Õ575 patent are present in Wagner and Udstad references.
>
> The district court also erroneously concluded that, because the Lund
> drawing and the Prichard disclosure fail to qualify as prior art,
> they could not provide the motivation to combine references for a
> finding of obviousness. Judge Clevenger wrote the following:
>
> It has long been the law that the motivation to combine need not be
> found in prior art references, but equally can be found Òin the
> knowledge generally available to one of ordinary skill in the art.Ó É
> The motivation to combine can be located either in a prior art
> reference, or it can be implicit in the knowledge of one of ordinary
> skill in the art.
>
> Nor does it matter that, because he did not qualify as a person of
> ordinary skill in the art, LundÕs drawing was not within the
> knowledge of one of ordinary skill in the art, the court continued.
> LundÕs knowledge is relevant to determining the knowledge of one of
> ordinary skill of the art, even if LundÕs qualifications fell short
> that required to be considered one of ordinary skill, Judge Clevenger
> observed.  Something that has already been rendered obvious to a
> relative newcomer in a field is probative of what would be obvious to
> someone who has been around for a longer period of time, he wrote.
>
> To read the opinion, click here:
> <http://www.aipla.org/html/reports/2004/Rails.pdf>http:// 
> www.aipla.org/html/reports/2004/Rails.pdf
>
>
> Patents
>
> Disclosed and Unclaimed Subject Matter Is Lost If Understood by One of  
> Skill
> PSC Computing Products, Inc. v. FoxComm International, Inc., Fed.
> Cir., No. 03-1089, 1/20/04.
>
> Disclosed but unclaimed subject matter is dedicated to the public if
> it is sufficiently specific to be understood and identified by one of
> ordinary skill in the art, the Federal Circuit held January 20, 2004.
>
> PSC Computing Products, Inc., the owner of a patent on a cam-type
> retaining clip for securing a heat sink to a semiconductor chip, sued
> FoxComm International, Inc. for infringement. The district court
> issued a summary judgment that PSCÕs patent claim to a metal strap is
> not infringed under the doctrine of equivalents by FoxCommÕs plastic
> clip. PSC dedicated plastic clips to the public by disclosing but not
> claiming them, according to the court, citing Johnson & Johnston
> Associates v. R.E. Service Co., 285 F.3d 1046 (Fed. Cir. 2002) (en
> banc).
>
> On appeal, the Federal Circuit rejected PSCÕs attempt to distinguish
> this case from Johnson by arguing that the patent disclosure here is
> much less clear and precise than the disclosure in Johnson.  The
> specification has long been understood as assisting the public in
> understanding the notice given in the patent claims by explaining
> which portions of the relevant art the patent does not cover,
> according to the court.  Judge Arthur Gajarsa explained that suitable
> notice to the public requires that the public understand the language
> of both the claims and the written description.
>
> We have repeatedly explained that, in the absence of a compelling
> reason to do otherwise, claims must be interpreted as one of ordinary
> skill in the art would understand them. É  It thus follows as a
> matter of simple logic that, in the absence of a compelling reason to
> do otherwise, the written description must also be interpreted
> according to the understanding of one of ordinary skill in the art.
>
> Taken together, then, one of ordinary skill in the art should be able
> to read a patent, to discern which matter is disclosed and discussed
> in the written description, and to recognize which matter has been
> claimed. É  The ability to discern both what has been disclosed and
> what has been claimed is the essence of public notice.  It tells the
> public which products or processes would infringe the patent and
> which would not.  Were the patentee allowed to reclaim some
> specifically-disclosed-but-unclaimed matter under the doctrine of
> equivalents, the public would have no way of knowing which disclosed
> matter infringed and which did not. É  Such a reclamation would
> eviscerate the public notice function of patents and create
> uncertainty in the law. É
>
> We thus hold that if one of ordinary skill in the art can understand
> the unclaimed disclosed teaching upon reading the written
> description, the alternative matter disclosed has been dedicated to
> the public. This Òdisclosure-dedicationÓ rule does not mean that any
> generic reference in a written specification necessarily dedicates
> all members of that particular genus to the public.  The disclosure
> must be of such specificity that one of ordinary skill in the art
> could identify the subject matter that had been disclosed and not
> claimed.
>
> To read the opinion, click here:
> <http://www.aipla.org/html/reports/2004/PSC.pdf>http://www.aipla.org/ 
> html/reports/2004/PSC.pdf
>
>
> Copyrights/Online Infringement/Safe Harbor
>
> Fact Issue Barred Summary Judgment for Online Safe Harbor Defense
> Ellison v. America Online, Inc., 9th Cir., No. 02-55797, 2/10/04.
>
> A changed email address for notifying America Online, Inc. of
> infringements barred a summary judgment on eligibility for the
> Copyright ActÕs online infringement safe harbor, the Ninth Circuit
> held February 10, 2004.  The court pointed to fact issues on whether
> AOL Òreasonably implementedÓ a policy against repeat infringers.
>
> Harlan Ellison in April of 2000 learned that a number of his science
> fiction works had been scanned and uploaded to a USENET news-group,
> and that they later appeared on servers belonging to America Online,
> Inc.  Ellison sent AOL a notice of the infringement, to which AOL
> never responded, allegedly because it never received the notice.
> Ellison filed suit against AOL for copyright infringement, and upon
> receiving the complaint, AOL blocked subscriber access to the
> news-group.  The district court found no direct or vicarious
> copyright infringement, found that issues of fact barred a summary
> judgment of contributory infringement, and granted AOLÕs summary
> judgment motion that it qualified for the online infringement safe
> harbor provisions of the Copyright Act at 17 U.S.C. °Ë512.
>
> The Ninth Circuit affirmed the district courtÕs rulings on vicarious
> and contributory copyright infringement, but reversed the summary
> judgment that AOL qualified for the safe harbor.  In this case, AOLÕs
> contention that it never received notice of the infringement was
> based on its changed email address for receiving notification of
> online infringements, Judge Harry Pregerson noted.  This evidence
> raises issues of fact as to whether AOL Òreasonably implementedÓ a
> policy against repeat infringers, as required by Section 512(i)(1)(A)
> of the Copyright Act, he explained. The court pointed out that AOL
> made the email change without closing the old email account and
> without arranging for emails received at the old address to be
> forwarded to the new address.
>
> To read the opinion, click here:
> <http://www.aipla.org/html/reports/2004/AOL.pdf>http://www.aipla.org/ 
> html/reports/2004/AOL.pdf
>
>
> Agency Developments
>
> Copyright Office/Service of Process
> Copyright Office Proposes New Rules on Service, Testimony, and  
> Production
>
> The Copyright Office on February 23, 2004, proposed new rules on
> service of process upon the agency, on the production of Office
> documents, and on the testimony of Office employees in legal
> proceedings.  69 Fed. Reg. 8120.
>
> The proposal would substantially revise and expand Part 205 of 37
> C.F.R., which currently consists of only one provisionÑ°Ë205.1
> Complaints served on the Register of Copyrights pursuant to 17 U.S.C.
> 411(a).  The new rule would detail the requirements of service in a
> lawsuit and spell out details of permissible employee testimony and
> document production.
>
> Public comment on the proposal must be received no later than March
> 24, 2004.  For further information, contact Marilyn J. Kretsinger,
> Assistant General Counsel, at 202-707-8380.
>
> To read the Copyright Office proposal, click here:
> <http://www.aipla.org/html/reports/2004/69_8120.pdf>http:// 
> www.aipla.org/html/reports/2004/69_8120.pdf
>