Subject: Fwd: from the AIPLA: PTO fees, patent and copyright cases, etc.
From: L Jean Camp <>
Date: Wed, 3 Mar 2004 10:38:56 -0500

 Wed, 3 Mar 2004 10:38:56 -0500

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.

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


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:// 
> 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:// 
> 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:// 
> 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:
> <> 
> 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:
> <> 
> 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:
> < 8120.pdf>http:// 
> 8120.pdf