Trademark Infringement & Litigation Summit, San Francisco, April 28 & 29 – R

The National Law Review is pleased to bring you information about the upcoming Trademark Infringement & Litigation Summit hosted by IQPC.

Trademark

 

Register by Friday February 28th and receive up to $400 off!

When

Monday April 28 & Tuesday April 29, 2014

Where

San Francisco, California, USA

Trademark law may not be changing, but its application certainly has and will continue to do so. Brands are increasingly global, which opens up new possibilities for companies… but also new trademark issues and potential pitfalls. The online experience adds to this global focus and changes the interaction between brands and consumers dramatically.

IQPC’s Trademark Infringement & Litigation Summit will address the topics that you grapple with on a daily basis, including:

  • How business and infringement concerns guide strategic registration and vigilance
  • Methods of enforcing your mark, including a “soft approach,” ICANN dispute resolution, cancellation and opposition
  • Litigation and enforcement management
  • Evolving company domain name strategy

Perhaps the biggest benefit of attending, however, is the practical, frank conversation about the legal and business choices involved in protecting and maintaining your brand. Attend the Trademark Infringement & Litigation Summit to work through these issues with your colleagues.

Do not miss your opportunity to network and engage with top in-house and outside counsel working in the area. Register today!

NOTE: IQPC plans on making CLE credits available for the state of California (number of credits pending).  In addition, IQPC processes requests for CLE Credits in other states, subject to the rules, regulations and restrictions dictated by each individual state.  For any questions pertaining to CLE Credits please contact: amanda.nasner@iqpc.com.

3 Ways for Law Firms to Advance Their Brands In a Post-Recession Environment

 

The post-recession state of professional services branding is like living in a bland, empty room. Wherever we look, we see reduced brand activity and sameness. Once creative and compelling, professional service brands (via websites, advertising and other channels) now seem less visible. Sadly, it appears to us that both the quality and quantity of firm branding efforts are regressing.

Are past failed efforts to blame? Is the stumbling economy a disincentive to act? Or is it the pendulum swing to business development, the tremendous pressure on CMOs to drive revenue? Has anyone else noticed the fall off in brand awareness and memorability? Do we still believe brand is critical to creating preference?

Good questions, we thought. So we polled CMOs and CEOs at law, accounting and consulting firms around the world for their opinions. Respondents included leaders of local, regional, national and international firms with an average size of 382 professionals (full survey results at http://www.greenfieldbelser.com/research-page/brand-regression#).

Questions, answers and insights

Here, we’ve summarized four of the most important findings, including the questions asked, the answers received and the top line takeaways.

1. Brand Health. We asked how important is brand to the success of your firm, how helpful is your brand in achieving that success, and is your brand understood by key audiences?

  • 95% of CMOs and 92% of CEOs/managing partners believe their brand is moderately or extremely important to success
  • But only 26% find their brand “very helpful”
  • On understanding, only 21% replied that their brands were well or perfectly understood by prospects.

The takeaway? Yikes! How can something perceived to be so important yield such poor scores in helpfulness and understanding? In live presentations of these findings, some of our CMO friends suggest that the answer lies in the degree of difficulty of executing branding efforts properly in any professional services firm.

One respondent shared this comment, “These days if you wish to undertake any sort of brand exercise, it must be titled ‘Strategic Positioning Initiative’ to avoid the factious response that sometimes arrives as talk turns to brand.”

Whatever you call it, our view is that pioneering brand efforts among professional service firms have given way to safer, less expensive efforts that suffer from unoriginality and are easy to ignore. Conventional wisdom suggests that in times of recession it’s better to tighten the belt and cut marketing and branding expenditures to focus on sales. However, when firms stop investing in the brand and marketing, they have fewer opportunities to sell. Healthy firms require strong commitment to both brand/marketing and business development—they go hand in hand.

2. Brand Distinction. Is your brand promise—the value proposition—unique? Is your brand expression (look, feel and voice) unique? Do you consider your brand to be innovative?

  • Only 20%say their brands are “very” or “extremely innovative.”
  • 66% respond that their promise of value is “marginally” or “moderately unique.”
  • 54% say their brand identity or expression is “marginally” or “moderately unique.”

The takeaway? Unicorns and innovative brands are as rare as hens’ teeth. Again, responding CMOs and CEOs believe brands are important to success but say uniqueness is hard to come by in the professional services space. Perhaps this relates to the fact that lawyers and law firms typically follow precedent (and one another). Meanwhile, marketers toil in the business of  awareness building and differentiation.

That’s the rub. The most innovative firms and best marketers have the courage to take risks, break with convention, and inspire interest in the brand among their audience.

3. Brand Quality. How do you rate the quality of your firm’s brand communication tools (things like websites, advertising, content marketing, etc.)?

On a scale of 1 (poor) to 5 (excellent) CEOs and CMOs graded their own efforts:

  • they gave websites a mean rating of 3.6 on the five point scale
  • core identity (logo and such) scored 3.5
  •  proposal and pitch materials were 3.5
  • videos, 3.1
  • thought leadership and content marketing, 2.8
  • advertising, 2.8
  • social media, 2.5

The takeaway? On average, brand communications quality is, well, average. Given the Type-A personalities in leading professional services firms—those accustomed to performing at the head of their class and fields—the low scores might be hard to figure. But the effect of the economy sheds light on the tough grading. During the great recession, we saw marketing attention focused heavily on business development. And why wouldn’t we? During that time, sales were hard to come by as firms hunkered down among bleak predictions. We saw marketing communication investment devalued and more do-it-yourself branding within firms. Yes, that led to savings, but at what cost to quality, awareness, memorability and preference for firms?

Previous research shows that professional services firm clients and prospects have preconceived and immediate feelings about the quality of a firm solely based on the quality of brand communications. This, in turn, can have a noticeable impact on opportunities and on revenue.

4. Brand channels and investments. Which communication channels are most important and where do the greatest investments go?

  • 85% believe firm websites are the most important channel; 92% say it is the greatest area of investment.
  • 67% rate proposals and pitch material as the second most important channel; but only 30% say it is an area of greatest investment.
  • 59% say substantive alerts, speaking and thought leadership are very important; 32% indicate investments here are highest.
  • 35% viewed firm and practice advertising as most important; 45% reported it as an area of greatest investment.

The takeaway? Tuning the channels for the clearest return is a challenge. Website investment matches its perceived importance (shocker) but other communications are either overfunded or underfunded relative to perceived importance. Major events are viewed as much less important but still command a disproportionate financial commitment (boondoggle, anyone?). Pitch materials are not getting the love CMOs and CEOs feel they deserve and blue sky thought leadership is short-changed, as well.

What to do about brand progression?

While our study and data does not prove that branding in the business-to-business services sector has regressed following the recession, it does confirm that there is significant room for improvement for professional services firms.

Firms can advance their branding by considering these three tips:

1. Increase investments in marketing and business development simultaneously:We should start by mentioning that, increasing investments does not always demand higher dollar figure. It could (and often should) be a reallocation of funds from unimportant or ineffective programs to the ones that have the most impact. Think of it as finding couch money; the dollars and cents may be rattling around your firm, but you  need to collect them from underneath the cushions and spend them wisely. This often requires doing less and doing it better.

2. Have the courage to do memorable, engaging and high quality brand communications. The great ad man, David Ogilvy, said, “You can’t bore people into buying your product or service.” Firms need to take greater creative risks in order to achieve differentiation. For those of you who see branding as lipstick or worse, take the words of another “counsel.” Andy Warhol commented, “I may be superficial, but I’m deeply superficial.”

3. Demand that the investments made in marketing and business development yield measurable results:   When better branding initiatives are carried out, leads increase and create an improved conversion ratio.   Our study looked at brand tracking and found that the bottom line is that few in the professional services have the patience or budgets to do tracking research well(link to the study is below).

For brand skeptics, keep this in mind—following the U.S. Stock Market crash of 1987, Nike tripled its marketing spend and emerged from the recession with profits nine times higher than before the recession started. Yes, we know Nike is not a legal, accounting or consulting firm, but they are great at executing groundbreaking marketing plans—.And you have to admit a 9x increase in profits is a compelling argument to “just do it.”

Article by:

Of:

Greenfield/Belser Ltd.

IP Law Summit – March 20-22, 2014

The National Law Review is pleased to bring you information about the upcoming IP Law Summit hosted by Marcus Evans.

IP summit 2014

When

Thursday March 20 – Saturday March 22, 2014

Where

Las Vegas, Nevada

Register here!

Intellectual Property is the bedrock of many contemporary companies and with the growth of the internet and a global market, having a smart IP strategy is more essential than ever. Every business decision that involves IP is a legal decision and every legal decision is also a business decision. Counsels are constantly pressed to promote innovation and must keep up-to-date with any worldwide regulatory changes ensuring the future growth and protection of their company’s IP.

 The IP Law Summit is the premium forum for bringing senior IP Counsel within the largest corporations and mid-market organizations together with service providers. As an invitation-only event taking place behind closed doors, the Summit offers an intimate environment for a focused discussion of cutting-edge technology, strategy and products driving the IP marketplace.

The New gTLD Program: Latest Updates on Brand Protection and the Trademark Clearinghouse


Katten Muchin

The most significant development in the Internet space in recent years is the ongoing generic top-level domain (gTLD) expansion. (As a reminder, a TLD is what appears to the right of the “dot” in a domain name (i.e., .COM, .ORG, .GOV).) The Internet Corporation for Assigned Names and Numbers (ICANN) has embarked on an aggressive plan to expand the Internet from just 23 gTLDs to more than a thousand gTLDs, culminating in an application process in 2012 that allowed any organization with an interest in running a registry to apply for a new gTLD, provided it could meet the designated technical, operational and financial criteria. After this lengthy application and vetting process, ICANN has now delegated the first 44 gTLDs, with additional gTLDs launching each week. Over the next couple of years ICANN expects to delegate nearly 1,400 new gTLDs – including .CLOTHING, .COMPANY, .EDUCATION, .GURU, .HOSPITAL, .INC, .INVESTMENTS, .LAND, .MENU, .MOVIE, .NEWS, .PHOTOS, .SCIENCE, .SPORTS and .WEBSITE.

ICANN’s new gTLD program presents an opportunity for brand owners to utilize the Internet in ways not previously possible, but also raises new enforcement challenges for brand owners. For the first time ever, brand owners can register their trademarks on domain registries tailored to their target industries. On the other hand, brand owners may also be required to monitor 1,400 additional registries to prevent misuse and abuse of their trademarks. With that in mind, in order to ensure that trademark and brand owners’ rights are protected as the Internet expands, ICANN has devised a Trademark Clearinghouse (TMCH), one of the key new gTLD enforcement tools for brand owners, which now serves as a repository for information regarding trademark rights.

A very important step in developing a TMCH strategy is understanding the benefits of participating in the TMCH. The TMCH offers brand owners two separate services for protecting their brands online:

  • Participation in the Sunrise Period. The Sunrise Period is an initial period of at least 30 days before domain names are offered to the general public. Companies that participate in the TMCH have priority in registering domain names that match their trademarks on any of the new gTLDs to protect them from cybersquatting or to actively use them for strategic business and marketing purposes.
    • To take advantage of the Sunrise Period, brand owners can enter registered trademarks for which they can provide proof of use of the mark.
    • For example, by entering KATTEN MUCHIN ROSENMAN in the TMCH for .LAW, our firm can later register the domain namewww.kattenmuchinrosenman.law to prevent a third party from obtaining that domain name. Alternatively, the firm may choose to redirect its current website to the new domain name and drop the .COM altogether.
    • Opting not to participate in the Sunrise Period does not preclude brand owners from registering domain names matching their trademarks on the new gTLDs. However, once the Sunrise Period expires, brand owners will be competing with the general public on a first-come, first-served basis.
  • Trademark Claims Service. This is a mandatory service that must be available for at least 90 days during the initial launch of a new gTLD (some registries are opting for longer periods). When attempting to register a domain name, the potential registrant receives a warning notice that the domain name exactly matches a verified trademark record in the TMCH. If a potentially infringing domain name registration proceeds, the trademark owner is notified, and the owner can take appropriate action.
    • To take advantage of the Trademark Claims Service, companies can enter registered trademarks in the TMCH (proof of use not required) and be notified of up to 50 domain labels that were found to be abusive by a court under the Anti-Cybersquatting Consumer Protection Act (ACPA) or under the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
    • For example, by entering KATTEN MUCHIN ROSENMAN in the TMCH for Claims Service, our firm would receive a notification upon the registration of the domain name www.kattenmuchinrosenman.fail. The firm can take immediate action against the domain name registrant, and transfer or suspend the infringing domain.
    • Deloitte, ICANN’s TMCH provider, recently announced plans for a free Extended Claims Service wherein the TMCH will offer notification to trademark owners of marks listed in the TMCH of domain names registered in any of the new gTLDs that match their marks or abused labels for an indefinite time period after each new gTLD registry’s Claims Period. Brand owners must opt-in for the service.
    • However, unlike the standard mandatory Claims Service, the Extended Claims Service will not provide a warning notice to prospective domain name registrants that an applied-for domain name matches marks listed in the TMCH or their abused labels prior to their registration, thus providing less deterrent effect than the Trademark Claims Service.

There is no deadline to enter marks into the TMCH. However, as of January 3, 2014, ICANN has already launched 44 new gTLDs, and it is anticipated that ICANN will continue to announce the start-up information for additional TLDs on a weekly basis until all 1,400 new gTLDs are delegated. As such, it is recommended to submit your trademarks as soon as possible to allow sufficient time for processing and to avoid missing out on Sunrise registration opportunities.

Article by:

Of:
Katten Muchin Rosenman LLP

Federal Circuit Grants Patent Term Adjustment After Allowance When Continued Examination Requested

Sterne Kessler Goldstein Fox

 

On January 15, 2014, the U.S. Court of Appeals for the Federal Circuit decided Novartis v. Lee (No. 2013-1160, -1179), holding that time spent in “continued examination” is excluded from a patent term adjustment even where the continued examination occurs after the application has been pending for more than three years. However, the Federal Circuit also held that the time excluded for continued examination is limited to the time before allowance of the application, and therefore positive patent term adjustment accrues from the date the application is allowed to issuance of the patent, as long as no later examination occurs.

Patent Term Adjustment

Applicants may be entitled to patent term adjustment (PTA) to remedy certain delays caused by the U.S. Patent and Trademark Office (USPTO) during prosecution of an application. 35 U.S.C. § 154 specifies the patent term guarantees which, if not met, can serve as bases for PTA. In particular, § 154(b)(1)(B) provides one day of PTA for every day an application is pending for more than three years (known as “B delay”). According to § 154(b)(1)(B)(i), B delay does not include “any time consumed by continued examination of the application,” such as the filing of a Request for Continued Examination.

The Federal Circuit’s Decision

According to Novartis’ interpretation of the statute, applicants are entitled to PTA for any time spent by the USPTO after three years from the application filing date, even if continued examination has been requested. In contrast, the USPTO argued that the statutory language clearly excludes any time consumed by continued examination, no matter when it was initiated.

The Federal Circuit agreed with the USPTO, stating that PTA “should be calculated by determining the length of time between application and patent issuance, then subtracting any continued examination time and determining the extent to which the result exceeds three years.” The Federal Circuit also found the USPTO’s construction was otherwise supported by the statutory purpose and structure.

However, the Federal Circuit agreed with Novartis on the other statutory interpretation issue. Novartis argued that time consumed by continued examination should be limited to the time before allowance of an application, as long as no later examination actually occurred, while the USPTO argued that any time up until issuance of a patent should be excluded. The Federal Circuit rejected the USPTO’s reasoning, indicating that because a case not involving continued examination would undisputedly be entitled to the time from allowance to issuance, there was no basis for treating a case involving continued examination differently.

The following schematic illustrates the Federal Circuit’s holding:

USPTO

Article by:

Of:

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Registering Your Trademark with the Trademark Clearinghouse – Is Your House in Order?

Dickinson Wright Logo

 

“It’s happening – the biggest change to the Internet since its inception” is how the president of ICANN’s Generic Domains Division has described the new gTLD Program being implemented by The Internet Corporation for Assigned Names and Numbers (ICANN), and rightfully so. The new program will result in the expansion of available generic Top-Level Domains (gTLDs), such as .COM, .NET or .ORG, from the list of 22 that we’ve all become familiar with through the years, to a list of possibly 1,400 generic Top-Level Domains.

On October 23, 2013, the first new gTLDs were “delegated”. This means they were introduced into the Internet’s “Root Zone”, the central authoritative database for the Internet. As a result, the domain name Registries, the organizations approved to operate these and other soon-to-be-delegated gTLDs, can execute the final processes required to make their domain names available to Internet users. ICANN claims that the purpose of this unprecedented expansion of domain name extensions is to enhance competition, innovation and choice in the Domain Name space, providing a wider variety of organizations, communities and brands new ways to communicate with their audiences. As available real estate in the “.com” territory has become increasingly scarce, it is hoped that the new gTLDs will provide additional space for entities and individuals to set up an online presence. While it is true that virtually every two or three letter combination seems to have already been registered in the “.com” Top-Level Domain, this explosion of new generic top-level domains also means big bucks for domain name registrars and additional costs for trademark owners who properly protect their marks.

While 4 new gTLDs were delegated in October, the delegation has been a rolling process, with new generic Top-Level Domains being released in November, December and January. Below are just a few of some the gTLDs that have successfully completed the process. The list will continue to be expanded as the measured rollout of the new gTLDs progresses over the coming years:

.equipment

.kitchen

.diamonds

.bike

.shoes

.technology

.enterprises

.gallery

.education

.graphics

.ceo

.ventures

As the new gTLD program is rolled out, many trademark owners are wisely looking for ways to protect their brands from being registered by third parties as domain names in the new gTLD space without their knowledge or consent. In view of the rapidly changing gTLD landscape, owners need to be aware of how to protect their marks, sooner rather than later.

What Does All This Mean for Brand Owners?

Over the past year, there has been significant discussion and concern in the legal community regarding the potential for trademark infringement by third parties seeking to register domain names that incorporate the brands of others under these newly released gTLDs.

In light of the potential for infringement, ICANN has established certain mechanisms for the new gTLD program in order to try and protect the rights of brand owners. The main tool for doing so is the Trademark Clearinghouse (TMCH), an entity created by ICANN with which trademark owners can register their marks in advance of the new gTLD launches.

Brand owners who register their trademarks with the TMCH can take advantage of a priority, or “sunrise”, period during which they are entitled to register domain names that are identical to their marks, before registration opens to the general public. In addition, the TMCH provides the brand owner with automatic notification of any third-party attempts to register domain names that are identical to their marks, enabling the mark owner to then take appropriate legal action. To be clear, this mechanism does not stop third-parties from registering domain names identical to marks registered with the TMCH, but does notify the brand owner, or its representative, of such registration. These devices provide brand owners with help against cyber squatters seeking to register infringing domain names under the new gTLDs.

Registration of a trademark with the TMCH is available for registered trademarks, marks protected by statute or treaty, or court-validated marks. Registration is also available for any other marks protectable under the new gTLD registry’s policies and that meet the eligibility requirements of the TMCH. Registration with the TMCH is encouraged for brand owners in order to combat infringement of their brands in cyberspace and registration costs currently are $150 per mark for a one-year term of registration, $435 for a three-year term, and $725 for a five-year term. Such registration with the TMCH does not include fees that will be charged by the new gTLD registrars to register domain names during the “sunrise” or general public registration periods.

The biggest change to the Internet since its inception is happening now…make sure your marks are protected!

Article by:

Nicole M. Meyer

Of:

Dickinson Wright PLLC

Supreme Court Will Review Limelight and Nautilus Re: Patent Infringement Litigation

Schwegman Lundberg Woessner

 

Continuing its heightened interest in IP law, on Friday the Supreme Court granted petitions for cert. to review Limelight Networks, Inc. v. Akami Technologies, Inc., U.S., No 12-786 and Nautilus, Inc. v. Biosig Instruments, Inc., U.S., 13-339. The other two grants were in a (c) and TM and so of less interest to this patent attorney.

In Limelight, the Fed. Cir. held that a defendant could be found liable for inducing infringement under 271(b) even if no one party performed the acts necessary to meet the requirement that there be direct infringement of 271(a). In the biotech/pharma space, this question becomes relevant when a testing lab measures the level of a biomarker but a specialist draws the diagnostic conclusion required by the claim.

I had not commented on the Nautilus decision in the past because the Fed. Cir. “rule” holding that a claim term violated 112(2) only if it was “insolubly ambiguous” was favorable to patentees (and, indirectly, to prosecutors). This “rule” has been challenged as essentially too lenient to said ambiguous patent claims – and the Court may consider if the presumption of validity of an issued patent lowers the bar of the statutory requirement of particular and distinct patent claiming.

I don’t think that the Fed. Cir. has erred in attempting to preserve the validity of an issued claim by reading it in view of the specification, even including “inherent parameters”, but the Supreme Court seldom takes up a Fed. Cir. decision to give them praise for preserving patentees’ shrinking bundle of rights.

Article by:

Warren Woessner

Of:

Schwegman, Lundberg & Woessner, P.A.

PTO Litigation Center Report – January 14, 2014

Sterne Kessler Goldstein Fox

Listed below are all new filings before PTAB of requests for inter partes review (IPR) and covered business methods review (CBM).  Since the last report, no new requests for ex parte reexamination at the USPTO have been posted.  This listing is current as of 9:30 AM on Tuesday, January 14, 2014.

New IPR Requests

Trial Number – IPR2014-00346
Filing Date – 1/13/2014
Patent # – 8,364,295
Title – INTERACTIVE SOUND REPRODUCING
Assignee – BOSE CORPORATION
Petitioner – SDI TECHNOLOGIES, INC.
Status – Pending
Tech Center – 2600

Trial Number – IPR2014-00347
Filing Date – 1/13/2014
Patent # – 8,504,631
Title – METHOD APPARATUS AND BUSINESS SYSTEM FOR ONLINE COMMUNICATIONS WITH ONLINE AND OFFLINE RECIPIENTS
Assignee – EVERYMD.COM LLC
Petitioner – GOOGLE INC. and TWITTER, INC.
Status – Pending
Tech Center – 2400

New CBM Review Requests

There have been no new requests for CBM review since the last report.

Newly-Posted Reexam Requests

Control # – 90/013,118
Date – 1/13/2014
Patent # – 6,435,450
Inventor –  SHIELDS, John et al.
Assignee –  SASCO
Title – MULTI-COMPARTMENT PARALLELING REEL HAVING INDEPENDENT COMPARTMENTS
Co-pending Litigation – SASCO v. Weber Electric Mfg. Co., Case No. 8:13-cv-00022-CJC-JPR, CD Cal.

 

Article by:

PTO Litigation Center

Of:

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Does Wireless Media Innovations Have a Lock on Tracking Shipping Containers in a Shipping Yard?

Womble Carlyle

Wireless Media Innovations, LLC (“Wireless”) asserts patent infringement of two patents against Flowers Foods, Inc. (“Flowers”) in a complaint filed in the Middle District of Georgia on November 19, 2013.  The patents cover monitoring methods and systems for containers.

Wireless claims United States Patent No. 6,148, 291 (the ‘291 Patent) and United States Patent No. 5,712,789 (the ‘789 Patent) have been directly infringed by Flowers by its use of “yard management systems and operative methods associated therewith to monitor the locations, movement, and load statuses of containers in at least one of [Flowers’] facilities.”  Literal infringement as well as infringement under the doctrine of equivalents is alleged.  Wireless asserts that the infringement has been willful (as Flowers has had knowledge of the patents of Wireless “at least as of the filing date of this Complaint.”

The complaint is fairly described as a “notice pleading” that does not delve into the nuances of the Flowers monitoring systems or the Wireless patent claims.  The ‘291 Patent is a combination of detailed specifics in the specifications and broadly written claims.  Pictured below is a composition of selected figures from the patent:

Wireless Media Innovations, patent infringement, litigation, intellectual property

Contrasting with the complexity of the drawings and the 948 lines describing the preferred and alternate embodiments within the 47 page patent is the relatively simple first and twenty-first claims – reprinted below:

Claim 1

A computerized system for monitoring and recording location and load status of shipping containers relative to a facility with an associated yard defined by a boundary within which containers are to be monitored by the system, and a controlled entry point to the boundary, the system comprising:

means for recording identification codes of containers which enter the boundary,

means for communicating and recording information on movements, location and load status of containers within the boundary in response to movement and changes in location and load status of containers made according to instructions received from the facility,

means for generating reports of recorded information on locations and load status of containers within the boundary, and

means for generating reports on container locations and load status relative to designated docks associated with a facility.

Claim 21

A method for using a computer to monitor usage of one or more docks associated with a facility, wherein the usage involves the presence or absence of a container at a dock, the method comprising the steps of:

(a)    recording the presence of an identified container at a particular identified dock,

(b)   recording the absence of an identified container at a particular identified dock,

(c)    producing a report which identifies monitored docks and identifies containers present at identified docks, and also identifies docks at which a container is absent.

The ‘789  Patent is similar in scope, but it does not require the use of a computer.

The case is Wireless Media Innovations, LLC v. Flower Foods, Inc.., No. 7:13-cv-00155-HL, filed 11/19/13 in the U.S. District Court for the Middle District of Georgia, Valdosta Division, assigned to U.S. District Judge Hugh Lawson.

Article by:

Kirk W. Watkins

Of:

Womble Carlyle Sandridge & Rice, PLLC

Design Patent Case Digest W.Y. Industries, Inc. v. Kari-Out Club LLC

Sterne Kessler Goldstein Fox

 

Decision Dates: August 25, 2011 and November 12, 2013

Courts: D. NJ and United States Court of Appeals for the Federal Circuit

Patents: D469,689

Holding: The terms of the ‘689 Patent are construed; AFFIRMED by the Federal Circuit.

Opinion: Plaintiff W.Y. Industries, Inc. sued Kari-Out Club LLC for infringement of U.S. Design Patent D469,689, entitled Rectangular Stackable Container. W.Y. Industries sells rectangular plastic food containers. Kari-Out makes competing food containers. The Court adopted W.Y. Industries’ verbal claim construction and denied Kari-Out’s request to include additional language, which described the functional features of the patented design.

W.Y Industries’ design patent claims the “ornamental design of a rectangular stackable container as shown and described” in the drawings of the patent. According to the Court, construing a design claim as that which is shown in the patent drawings is typical of design patents since, in most cases, drawings better depict a design than a written description. However, when the drawings contain functional features, an enhanced verbal claim construction may help to clarify exactly which features are claimed and which are not. In this case, the parties agreed that certain elements of the patented design are functional. Therefore, the court concluded that a detailed verbal claim construction will be helpful to the jury.

Both parties agreed to a claim construction from W.Y. Industries’ response to an interrogatory. The claim construction specified that the ornamental features of the container include the rectangular shape and radiused corners on the base and lid, certain raised and recessed portions, and particular dimensions; it also identified a number of other specific features. Kari-Out requested to include additional narrative describing the functional features of the design in the claim construction. The Court denied the request for two reasons. First, design patents protect only the aesthetic aspects of a design. Second, Kari-Out’s additional description of the claims was based on information uncovered during a deposition. Claim construction, however, must be rooted in the written record, including “the claims themselves, the written description, and the prosecution history.”

Kari-Out appealed to the Federal Circuit. On November 12, 2013, the Federal Circuit affirmed the District Court decision in a Rule 36 judgment.

Article by:

Of:

Sterne, Kessler, Goldstein & Fox P.L.L.C.