MVS Filewrapper® Blog: U.S. Supreme Court Holds Trademark Tacking Is a Question for the Jury

By Jonathan Kennedy


The Supreme Court recently released its unanimous decision in Hana Financial, Inc. v. Hana Bank, holding that “when a jury trial has been requested and when the facts do not warrant entry of summary judgment or judgment as a matter of law, the question of whether tacking is warranted must be decided by a jury.”


The case involved use of the "Hana Bank" mark by a Korean financial service provider, which has been known as “Hana Bank” since 1991. However, in 1994 it established a service called “Hana Overseas Korean Club” which was advertised in the United States. In 2000, “Hana Overseas Korean Club” was renamed to “Hana World Center” and finally began operation in the United States as “Hana Bank” in 2002.  The petitioner, Hana Financial, is a California company established in 1994 and also in the field of providing financial services. In 1996, after a year of use in commerce, Hana Financial obtained a federal registration for its logo appearing with the name “Hana Financial.” Suit was brought in 2007 by Hana Financial, alleging trademark infringement on the basis that the use of "Hana Bank" infringed the rights in the "Hana Financial" trademark. In response, the respondent invoked the tacking doctrine to assert earlier rights.  The tacking issue was ultimately decided by a jury, with the district court denying motions for judgment as a matter of law.


The tacking doctrine recognizes that trademark owners and users should be allowed to make certain changes to their marks over time without losing their claim of priority. Lower courts have traditionally found that tacking is available when the original and revised marks are “legal equivalents” which have the same, continuing commercial impression when viewed through the eyes of the consumer.


Justice Sotomayor delivered the opinion of the Court and noted that it has long been recognized across doctrinal lines that when the viewpoint of an ordinary person is in question, the jury is generally the decision maker. However, the Court distinguished that holding when warranted by the facts, a judge may decide the question of tacking on a motion for summary judgment or for judgment as a matter of law. Furthermore, the Court noted that even if tacking was to be considered a mixed question of law and fact due to the “legal equivalence” requirement, typically these mixed questions are still left to the jury with carefully crafted jury instructions as to the legal standard.

MVS Filewrapper® Blog: Means-Plus-Function Claims and Written Description for Priority

In EnOcean GMBH v. Face International Corp., the Federal Circuit vacated and remanded a final order of the U.S. Patent and Trademark Office (“PTO”) and the Board of Patent Appeals and Interferences (“Board”) with respect to EnOcean’s U.S. Patent Application No. 10/304,121.   The Federal Circuit held (1) the term “receiver” was recited with sufficient structure as to not invoke the means-plus-function requirements of 35 U.S.C. § 112, ¶ 6, and (2) the related German and PCT Applications recited a “receiver” such that one of ordinary skill in the art would understand the bounds of the invention as to allow the U.S. Application to claim the benefit of the German and PCT applications’ priority dates.

On June 25, 2010, the Board declared an interference between EnOcean and Face International—the real party of interest in U.S. Patent No. 7,084,529, directed at similar self-powered switches to those claimed in the EnOcean application.  After finding the claims of the ’529 Patent unpatentable under 35 U.S.C. § 103, the Board applied the presumption that the claims in EnOcean’s Application were also unpatentable.  EnOcean argued that the claims of its Application should be entitled to the filing date of its related German and PCT applications, which would antedate the cited art.  The Board held the claims of EnOcean’s Application were means-plus-function claims and were not entitled to the earlier priority date. 

On appeal, the Federal Circuit first examined the claims of EnOcean’s Application which read on “a signal receiver for receiving” and a “a receiver adapted to receiving” (the “receiver claims”).  The Federal Circuit disagreed with the Board’s finding that there is no distinction in meaning between ‘receiver’ and ‘signal receiving means,’” noting that the lack of the word “means” entitles the claims to a presumption that they are not means-plus-function claims and then cited to extensive evidence that one of skill in the art would sufficiently understand the structure defined by the term “receiver.” 

The Court then turned to the question of whether the written description of the German and PCT Applications were drafted with sufficient detail as to conclude that the inventor invented the claimed invention.  The Court decided that one of ordinary skill in the art would understand the bounds of the invention “merely by reading the term ‘receiver’” in the German and PCT Applications.  The Court further held that the Board’s requirement that the German and PCT Applications “expressly describe the structure of the receiver” applied the incorrect standard.

MVS Filewrapper® Blog: Patent Invalidity Based on Non-Compliant Claims of Priority

In Medtronic Corevalve, LLC v. Edwards Lifesciences Corp., the Federal Circuit affirmed summary judgment of invalidity of the asserted claims of U.S. Patent No. 7,892,281 ("the '281 patent") based on the patent's claimed priority date.  Medtronic sued Edwards for infringement of claims 3, 4, 7, 12, 14, and 15 of the '281 patent.  The U.S. District Court of the Central District of California granted summary judgment of invalidity to Edwards, holding the asserted claims of '281 patent were invalid as not being entitled to a priority date earlier than April 10, 2003.  The Federal Circuit affirmed the district court’s holding.

The '281 patent was filed on January 5, 2009 and issued on February 22, 2011.  It descended from a family of patents claiming priority to U.S., international, and French applications.  On its face, the '281 patent claims priority to French Application No. 99/14462 filed on November 17, 1999.  However, the asserted claims had proper priority to French Application No. 00/14028, filed on October 31, 2000.  The pertinent chain of priority was summarized by the Federal Circuit as follows:


Serial Number

Filing Date

French App. 1b

French App. No. FR 00/14028

Oct. 31, 2000

International App. 2b

International App. No. PCT/FR01/03258

Oct. 19, 2001

U.S. App. 4

U.S. Patent App. Serial No. 10/412,634

Apr. 10, 2003

US. App. 6

U.S. Patent App. Serial No. 11/352,614

Feb. 13, 2006

U.S. App. 8

U.S. Patent App. Serial No. 12/029,031

Feb. 11, 2008

U.S. App. 10

U.S. Patent App. Serial No. 12/348,892

Jan. 5, 2009


Through the litigation, Edwards realized that the '281 patent had several defects in its chain of priority, including failure to comply with 35 U.S.C. §§ 119 and 120.  Edwards moved for summary judgment of invalidity of the asserted claims, on the basis "that these defects limited the priority date of the Asserted Claims to no earlier than April 10, 2003."  Based on the April 10, 2003 priority date, Edwards also moved to invalidate the Asserted Claims on summary judgment under 35 U.S.C. § 102 with earlier filed French Application [No. 00/14028] and [it’s related PCT Application.

The district court granted Edwards motion.  The court's decision rested on it finding that the claims to priority under §§ 119 and 120 were not in compliance with the statutory sections.  The district court noted that § 119 requires "that 'all intermediate applications in a priority chain contain a specific reference to the earlier-filed foreign application' from which priority is claimed."  Not every one of the intervening Medtronic applications in the priority chain did so.  Thus, the court held that the '281 patent was not in compliance with § 119 and priority could not be established any earlier than at least April 10, 2003.  With respect to § 120, the court "noted that under § 120, a later filed application may claim priority based on an earlier field application if, inter alia, the later filed application contains or is amended to contain a specific reference to the earlier filed application."  The district court found that applications within the  priority chain failed to comply with these requirements of § 120.  As such, the court held that the '281 patent was not in compliance with § 120 and priority could not be established any earlier than at least April 10, 2003.

Medtronic appealed the district court's decision.  The Federal Circuit affirmed the district court's grant of summary judgment.

MVS Filewrapper® Blog: New and Useful - April 10, 2013

·       In In re Hubbell the Federal Circuit confirmed the rejection of all of the pending claims in an application, filed with Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall as named inventors.  The invention disclosed in the application was based on research performed while all of the named inventors were at California Institute of Technology (CalTech). As a result, the application is assigned to CalTech.  Approximately five years before the CalTech application was filed, Hubbell left CalTech for Eidgenossische Technische Hochschule Zurich (ETHZ).  A second application filed based on research Hubbell and Schense conducted at ETHZ was filed less than a year before the CalTech application, which is assigned to ETHZ and Zurich University.  Aside from Hubbell and Schense, the two patents do not have identical inventive entities, or common owners or assignees.  The ETHZ application, which issued as a U.S. patent in 2009, was used as the basis for an obviousness-type double patenting rejection, which was upheld by the Board of Patent Appeals and Interferences.

Hubbell appealed the Board decision, arguing that the judicially created obviousness-type double patenting rejection should not apply where an application and a conflicting patent share common inventors, but do not have identical inventive entities, were never commonly owned, and are not subject to a joint research agreement.  Alternatively, Hubbell argued that should the court find the obviousness-type double patenting rejection is applicable, he should either be allowed to file a terminal disclaimer as an equitable measure, or the court should employ a two-way obviousness analysis for the rejected claims. 


The Federal Circuit affirmed the Board, finding that both the MPEP and Federal Circuit precedent supported application of the obviousness-type double patenting rejection to cases where an application and a conflicting patent have one or more inventors in common but the inventive entities are not identical and the applications were never commonly owned.  The court rejected Hubbell’s argument that the case precedent only involved applications that were once commonly owned by the same entity, and did not apply to his application because CalTech never controlled the ownership of the second application.  The court based its decision on the underlying concerns over the possibility of harassment by multiple assignees that exists when issued patents lack common ownership—if the claims of the ETHZ application were to issue, a potential infringer could be subject to suit from both CalTech and ETHZ.  The court also rejected Hubbell’s argument that a terminal disclaimer should be permitted, based on the fact that there is no statutory basis for doing so.  Finally, the court affirmed the Board’s rejection of Hubbell’s request to have the two-way obviousness analysis applied in the case.  The court concluded that Hubbell’s application did not meet the requirements to apply the narrow exception to the general rule of the one-way test.  

Judge Newman dissented in the opinion, concluding that the majority’s decision is a “flawed ruling on incorrect law.”  Specifically, Judge Newman concluded that because there are different inventive entities and that there is not common ownership, obviousness-type double patenting does not apply, but if there indeed is obviousness-type double patenting, then a terminal disclaimer is necessarily available. Judge Newman took issue with the circularity of the majority opinion—a terminal disclaimer is not available because there is not common ownership, yet if there is not common ownership or common inventorship, there cannot be double patenting. 

·       In Dawson v. Dawson, the Federal Circuit upheld the USPTO Board of Patent Appeals and Interferences (BPAI) decision determining that an earlier-filed patent application for topically treating and preventing infections of the eye, naming Dr. Chandler Dawson as inventor, had priority over a later-filed patent application, also naming Dr. Chandler Dawson as inventor.  The earlier-filed application was submitted by Dr. Dawson and Dr. Lyle Bowman and assigned to InSite Vision Incorporated.  The University of California San Francisco (UCSF) filed the later-filed application, without the involvement of Dr. Dawson but naming Dr. Dawson as the sole inventor, for the sole purpose of instituting an interference.  The BPAI determined that UCSF had not met its burden to show that Dr. Dawson had conceived of the invention prior to his collaboration with Dr. Bowman.   

On appeal to the Federal Circuit, UCSF asserted that the invention embodied in the InSite application was conceived of by Dr. Dawson while he was employed at UCSF and before he joined InSite, and therefore priority of the invention should rest in the UCSF later-filed application.  UCSF argued that the conception requirement was met by the time Dr. Dawson made a presentation at a WHO conference, as demonstrated by documents produced from that conference.  UCSF argued that even though the conference documents lacked the particular carrier and concentrations recited in the claims, conception was achieved because the documents showed that Dr. Dawson had formed the idea that of topical use of azithromycin would be effective for treating eye infections, and that the subsequent preparation of an effective ointment was merely corroboration of the idea.  

The court rejected UCSF’s arguments, reasoning that the WHO documents themselves demonstrated the lack of conception because they constituted “a ‘preliminary’ statement about a ‘possibility’ or ‘potential use,’ alongside a recommendation for continued work and a ‘report back’ in the future.”  The court concluded that this fell short of the requirement for a definite and permanent idea of the complete and operative invention, as it is to be applied in practice, as set out in Hybritech Inc. v. Monoclonal Antibodies, Inc.  The court further held that UCSF failed to make a sufficient showing with respect to the individual interference counts—the specific concentrations, the suspending agent, or the claimed “amount effective to treat infection in a tissue of the eye.”  Finally, the court rejected UCSF’s argument that the BPAI had improperly required a showing of reduction to practice in order to prove conception, concluding that UCSF’s argument was based on an erroneous view of what is needed to prove conception, and holding that “there is a critical difference between conceiving a way to make an idea operative and knowing that a completed invention will work for its intended purpose.” 

Judge Reyna dissented in the opinion, concluding that the record was sufficient to demonstrate that Dr. Dawson possessed a definite and permanent idea of his complete and operative invention when he was employed by UCSF, not InSite, and therefore UCSF had demonstrated prior conception.   

·       In Saffran v. Johnson &Johnson, Dr. Bruce N. Saffran (Saffran) sued Johnson & Johnson and Cordis Corporation (collectively “J&J”), alleging that J&J infringed a number of claims in Saffran’s U.S. patent.  The patent involved methods and apparatus that would sequester macromolecules within a defined area, for example a sheet that could be wrapped around a bone fracture that would keep growth factors from diffusing out of the fractured area.  The claims of the patent were also drawn to the additional capability of controlled release of a substance incorporated into the apparatus via a “means for release.”  The alleged infringing device was a drug-eluting stent comprising a metallic mesh with a microscopic layer of polymer that coats the surface of each strut, the polymer being mixed with a macromolecular drug that would gradually escape through gaps in the polymer matrix.  The U.S. District Court for the Eastern District of Texas held that J&J infringed the patent based on its construction of the terms “device” and “release means”.  J&J appealed to the Federal Circuit, arguing that the district courts construction of the two terms was erroneous, and that a proper construction precluded infringement. 


On appeal, the Federal Circuit construed the term “device”—as used in the preamble and body of independent claim 1, in the bodies of independent claims 8 and 15, and at least by reference in each of the dependent claims—to mean a continuous sheet and to exclude stents having open mesh holes.  The court came to this conclusion based on the prosecution history, during which the patentee sought to distinguish the prior art by asserting that the device used in the invention is a sheet rather than the structure disclosed in the prior art reference.  The court confirmed that this corresponded to the disclosure in the specification, and Saffran’s argument that the specification contained alternative embodiments did not persuade the court otherwise.   

The court confirmed that “[u]nder § 112, ¶ 6, the question is not what structures a person of ordinary skill in the art would know are capable of performing a given function, but what structures are specifically disclosed and tied to that function in the specification” and “a patentee cannot rely on claim differentiation to broaden a means-plus-function limitation beyond those structures specifically disclosed in the specification.”  Thus, the court construed “release means” to only include treating material attached to the substantially impermeable sheet via hydrolyzable bonds or an equivalent thereof.

Based on its construction of “device” and “release means” the court concluded that J&J did not infringe the asserted Saffran patent. 

MVS Filewrapper® Blog: New and Useful - April 5, 2013

·         In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc. the Federal Circuit clarified several points relating to claim construction, determinations of non-obviousness, and calculation of damages.   The court confirmed that claiming a “circuit” in conjunction with a sufficiently definite structure for performing the identified function is adequate to bar means-plus-function claiming.  The court also confirmed that secondary considerations of non-obviousness could constitute evidence sufficient to support a finding of non-obviousness.  Finally, the court held that plaintiffs are not entitled to compensatory damages for injury caused by infringing activity that occurred outside the territory of the United States, regardless of any foreseeability of world-wide damages.  A more in-depth analysis of this case will be posted shortly.

·         In Rubin v. The General Hospital Corp., Dr. Berish Y. Rubin and Dr. Sylvia L. Anderson (collectively, Rubin) sued The General Hospital Corporation (GH Corp.) in the U.S. District Court for the District of Massachusetts requesting correction of inventorship of two patents assigned to GH Corp., or alternatively invalidation of the two patents.  Rubin alleged that the inventors named in the patents used confidential information—from a manuscript and abstract submitted by Rubin to the American Journal of Human Genetics—to complete the inventions described and claimed in the patents.   The district court granted summary judgment to GH Corp.

The Federal Circuit affirmed the grant of summary judgment, reasoning that the dispute was fundamentally a question of priority of the invention.  The court ultimately agreed with the district court, concluding that Rubin and Anderson could not be added as joint inventors or be substituted for the named inventors of the patents because they did not meet the requirements of 35 U.S.C. § 116 for joint invention or §256 for correction of inventorship, and that the issue of priority is appropriately determined by PTO interference proceedings.    

·         The U.S. District Court for the Southern District of N.Y. has handed down its decision in Capitol Records, llc. V. ReDigi Inc.  ReDigi considers itself the "world's first and only online marketplace for digital used music."   ReDigi's website "invites users to sell their legally acquired digital music files, and buy used digital music from others at a fraction of the price currently available on iTunes."   ReDigi's website sold various records belonging to Capitol Records.  Capitol Records brought an action against ReDigi, alleging direct copyright infringement, inducement of copyright infringement, contributory and vicarious copyright infringement.  In its defense, ReDigi asserted that the “first sale” doctrine precluded a finding of copyright infringement.  The district court disagreed, however, holding that the very nature of transferring digital files over the internet constituted copyright infringement because in order to transfer a file, a copy of the file must be made on the transferring computer.  Because the “first sale” doctrine does not protect against reproduction of copyrighted material, ReDigi could not successfully assert the defense for the present action.   

Federal Circuit clarifies burdens of proof when priority to earlier application is contested

In a recent decision, the Federal Circuit affirmed a district court's determination that the asserted claims of a patent were not entitled to the effective filing date of the earliest application in a chain of four applications, and that as a result the claims were anticipated by intervening prior art.  The court explained its recent decision in PowerOasis, where the court seemed to put the burden of proof on the patentee when the issue was entitlement to an earlier effective priority date.  Rejecting this interpretation, the court stated:

Carefully read, however, PowerOasis says nothing more than, and should be understood to say, that once a challenger (the alleged infringer) has introduced sufficient evidence to put at issue whether there is prior art alleged to anticipate the claims being asserted, prior art that is dated earlier than the apparent effective date of the asserted patent claim, the patentee has the burden of going forward with evidence and argument to the contrary. As we noted earlier, it is a long-standing rule of patent law that, because an issued patent is by statute presumed valid, a challenger has the burden of persuasion to show by clear and convincing evidence that the contrary is true. That ultimate burden never shifts, however much the burden of going forward may jump from one party to another as the issues in the case are raised and developed.

This should eliminate much of the speculation and commentary regarding the burden of proof on validity issues that had appeared after the PowerOasis decision.

More detail of Tech. Licensing Corp. v. Videotek, Inc. after the jump.



Ninth Circuit: Trademark claim over use in video game stripped away by First Amendment

In a decision Wednesday, the Ninth Circuit affirmed a district court's grant of summary judgment that the producer of Grand Theft Auto: San Andreas had a First Amendment defense against a claim of trademark infringement.  The plaintiff owns a strip club known as the "Play Pen" on the eastern edge of downtown Los Angeles.  Grand Theft Auto: San Andreas includes, in its fictional city "Los Santos," a virtual strip club "Pig Pen" in the neighborhood "East Los Santos."  The Ninth Circuit, agreeing with the district court, held the First Amendment defeated the infringement claim.  Specifically, the court held the game's producers' "modification of [the] trademark is not explicitly misleading and is thus protected by the First Amendment."

More detail of E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc. after the jump.


BPAI: 102(e) art can be effective prior art as of provisional priority date

In a decision recently designated precedential, the Board of Patent Appeals and Interferences considered the question of whether a reference that is prior art under § 102(e) is prior art as of its provisional priority date or the actual filing date of the reference.  In affirming the examiner, the Board determined the reference was prior art as of its provisional date, as long as the relied-upon disclosure in the reference was sufficiently supported in the provisional filing.

Based on language in the opinion, Examiners have the initial burden of showing the reference's entitlement to the provisional date.  The Board stated (emphasis added):

Although the Examiner's statement regarding the correspondence between the Narayanan patent and its underlying provisional application is somewhat terse and conclusory, the Examiner nonetheless found that both documents "clearly show the same subject matter"—a factual finding.  By making this factual finding, the Examiner then shifted the burden to Appellants to show why such a factual finding was erroneous.
More detail of Ex parte Yamaguchi after the jump.


Priority claim contained in data sheet and appended via certificate of correction valid

In a decision yesterday, the Federal Circuit vacated a district court's denial of a preliminary injunction.  The district court denied the injunction on the basis of a substantial question of validity of the patent.  The accused infringer alleged the patent was invalid under 35 U.S.C. § 102(b) based on a prior public use by the patentee, and argued that created a substantial question regarding the validity of the patent.  The patent issued from an application that included a reference in the application data sheet to a provisional application with identical specification and claims, although the reference did not initially appear on the face of the issued patent, but was instead added via a certificate of correction.  The patentee initially did not dispute the critical date used by the accused infringer (which was based on the nonprovisional filing date), but later realized the proper critical date should be based on the provisional filing date, and pointed this out to the district court.  The earlier priority date would prevent the asserted public use from being a statutory bar.  The district court held there was a substantial issue regarding whether the patent was entitled to the priority date, in the main because the patentee had initially not contested the accused infringer's assertion regarding the applicable critical date.

The Federal Circuit vacated.  The court noted it was undisputed that the accused infringer was aware of the provisional application, and a copy of the patent (and the certificate of correction adding the reference to the provisional application) was attached to the complaint.  Counsel for the patentee conceded not raising the issue earlier was an "oversight," and the court held that in such a situation, it was improper for the district court to have found a substantial question of validity based on the patentee's failure to raise the issue earlier in the preliminary injunction proceedings.  The court then addressed the merits of the accused infringer's assertion that the patent was not entitled to the provisional application's priority date, finding them to be without merit.  As a result, the Federal Circuit held the patent was entitled to the earlier priority date, vacated the denial of the injunction, and remanded the case for the district court to consider whether a preliminary injunction is appropriate in light of the correct priority date.

More detail of E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions, L.L.C. after the jump.


When priority not decided at PTO patentee bears burden of showing entitlement to earlier application

In a decision Friday, the Federal Circuit affirmed a district court's grant of summary judgment of invalidity with respect to all asserted claims of two patents.  More particularly, the court held that the claims of the patents were not entitled to the priority date of an earlier-filed application, and were therefore anticipated by intervening prior art.  The original application was filed in 1997, however the court determined that written description support was not found in the application family until a 2000 CIP application.  As a result, a prior product in public use in 1999 (which was the predecessor of the accused product) anticipated the asserted claims.

Of particular interest, however, was the Federal Circuit's treatment of the presumption of validity on appeal.  The district court held that because the issue of priority was never addressed by the USPTO, the patentee had the burden to show it was entitled to the earlier priority date.  The Federal Circuit agreed, stating:

When neither the PTO nor Board has previously considered priority, there is simply no reason to presume that claims in a CIP application are entitled to the effective filing date of an earlier filed application.  Since the PTO did not make a determination regarding priority, there is no finding for the district court to defer to.

Of course, the logic of this holding could easily be extended to other issues not addressed by the PTO, such as whether claims of a patent are valid over a reference not considered during prosecution.  As Professor Crouch points out at Patently-O, this issue is the subject of a petition for certiorari currently before the Supreme Court in the Microsoft v. z4 Technologies case.  The response to Microsoft's petition for certiorari is due May 1.

More concerning PowerOasis, Inc. v. T-Mobile USA, Inc. after the jump.


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