Short Circuit: August 1 – 15, 2012
The Federal Circuit affirmed a TTAB cancellation of the trademark “LENS” as applied to computer software used to electronically order contact lenses due to the mark being abandoned, under 15 U.S.C. § 1064(3) by the holder of the registration, Lens.com. The TTAB cancelled the registration, which Lens.com obtained from a third party, because it found that the software, in the form of its website, is only “incidental to its retail sale of contact lenses,” and is not sufficiently used in commerce in and of itself.
The Federal Circuit panel agreed, first delineating a list of three factors it used to determine whether the software used by an ISP is sufficiently separate from the products or services it otherwise offers so as to be used in commerce itself. These factors include “whether the software: (1) is simply the conduit or necessary tool useful only to obtain applicant’s services; (2) is so inextricably tied to and associated with the service as to have no viable existence apart therefrom; and (3) is neither sold separately from nor has any independent value apart from the services.” In this case, because Lens.com’s software was “merely the conduit through which it renders its online services,” and not a product offering in and of itself, the software was not used in commerce and the trademark registration was properly cancelled.
Lens.com, Inc. v. 1-800 Contacts, Inc., __ F.3d __, No. 2011-1258 (Fed. Cir. Aug. 3, 2012).
Find the full opinion here: http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1258.pdf
Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc.
A divided panel overturned a district court’s grant of a preliminary injunction after earlier issuing a stay of that injunction. Momenta sought the injunction in order to bar Amphastar from using its test method patent to conduct studies necessary to complete its abbreviated new drug application (ANDA) with the FDA. The majority vacated the injunction, finding that Momenta was not able to prove a likelihood of success on the merits. The majority reasoned that the safe harbor afforded by the Hatch-Waxman Act, 35 U.S.C. § 271(e)(1), permitted Amphastar to use Momenta’s patent so long as it was being used for the “development and submission of information under a federal law.” The majority reasoned that even though Amphastar continued using the patented method after gaining approval for its new generic drug, it was not infringing because the tests were being conducted to ensure ongoing compliance with FDA regulations.
Chief Judge Rader dissented, arguing that the majority misconstrued the safe harbor provision, and provided Amphastar unnecessary leeway in its use of Momenta’s patented test method. Citing the court’s precedent from Classen, Chief Judge Rader stressed that the safe harbor should only cover use of patented test methods during the “premarketing approval” process. He further argued that the majority’s holding effectively rendered test method patents useless, comparing the situation to one where a teacher allows her students to copy the exam of the top student.
Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc., __ F.3d __, No. 2012-1062, -1103, and -1104 (Fed. Cir. Aug. 3, 2012).
Find the full opinion here: http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1062.pdf
In re Beineke
A unanimous panel affirmed the Board of Patent Appeals and Interferences’ determination that the patent examiner properly rejected Mr. Beineke’s applications for two breeds of white oak trees under 25 U.S.C. § 161. In rendering its decision, the court undertook an extensive discussion of the legislative history behind the enactment of the 1930 Plant Patent Act and the subsequent 1954 amendments to that act.
In its discussion, the court mentioned that under the Act, “in addition to post-find cultivation, recognition, and asexual reproduction, two things were necessary for an applicant to obtain plant patent protection: (1) the plant must have been created in its inception by human activity, i.e., it must be the result of plant breeding or other agricultural or horticultural efforts; and (2) the plant must have been created by the “inventor,” i.e., the person seeking the patent must have contributed to the creation of the plant in addition to having appreciated its uniqueness and asexually reproduced it.” Because the court found that Mr. Beineke failed to meet either of these criteria, it held that the patent applications were properly rejected.
This case also raised the question of what was meant by the phrase “found in an uncultivated state” in Section 161, but because the court was able to decide the case by finding that Mr. Beineke failed to meet either criterion of the 1930 Act, it did not reach the question of interpreting this phrase.
In re Beineke, __ F.3d __, No. 2011-1459, -1460 (Fed. Cir. Aug. 6, 2012).
[Find the full opinion here: http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1459.pdf
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd.
In its second precedential trademark case of the month, a unanimous panel reversed a TTAB dismissal of DuoProSS’s cancellation claims for two marks registered by Inviro for medical syringes and needles. While the TTAB refused to cancel Inviro’s marks because it believed DuoProSS had failed to show that the marks were merely descriptive, the Federal Circuit found that “the Board failed to consider one of the marks as a whole, unduly focusing on only one portion of it . . . and the Board erroneously concluded that puffing could render the marks more than descriptive.”
In terms of Inviro’s design mark for its SNAP! syringes, the panel believed that the TTAB improperly separated the word “SNAP” from the broken exclamation point aspect of the logo in determining that the mark was more than merely descriptive. While the TTAB agreed with DuoProSS that the word “SNAP” in and of itself was merely descriptive of the syringes, which included a safety feature that is activated by snapping the plunger from the rest of the syringe, the Board believed that the broken exclamation point was a fanciful feature, and thus the two aspects of the mark together were more than merely descriptive. The Court, however, citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir. 2011), found that the Board erred in this process, since marks are to be analyzed as a whole and not by their individual parts. The Court further found that the TTAB failed to adequately defend its finding that even the broken exclamation point itself was more than merely descriptive.
The Court similarly found that the TTAB failed to provide substantial evidence to support its finding that Inviro’s SNAP SIMPLY SAFER composite mark was more than merely descriptive. Further, the panel found that the Board erred as a matter of law in making this determination because it found that Inviro’s use of puffery, namely it’s inclusion of the phrase “SIMPLY SAFER,” in the mark alone elevated it above merely descriptive status. Citing In re Boston Beer Co., 198 F.3d 1370, 1373 (Fed. Cir. 1999), the Court concluded that puffery does nothing more than describe the “character or quality of the goods,” and thus do nothing to make the mark anything more than descriptive.
DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., __ F.3d __, No. 2012-1050 (Fed. Cir. Aug. 14, 2012).
[Find the full opinion here: http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1050.pdf
Meyer Intellectual Props., Ltd. v. Bodum, Inc.
In a case surrounding the validity of a patent for a milk aerator/frother, the three-judge panel reversed a jury verdict finding of infringement by Bodum. The court also reversed the district court’s decision to treble the damages and award attorney’s fees to Meyer. While the majority opinion outlined a panoply of errors committed by the district court, including improper exclusion of witnesses, requiring an unduly limited scope of acceptable prior art, and mistakenly relying on inferences of infringement rather than actual evidence of infringement, the most interesting aspect of the opinion may have been Judge Dyk’s concurrence.
While the majority never reached the merits of the case – whether the patented frother was obvious based on prior art – before remanding it for further proceedings on the issue, Judge Dyk expressed his concern that this frother was so clearly obvious that the patent system as an institution should be questioned for allowing the patents to issue in the first place. As for the lower court’s decision in this case, Judge Dyk argued that the issue of obviousness should have been decided at the summary judgment stage due to the nature of the products in question, and that the district court’s failure to do so, compounded by the subsequent appeals and the majority’s decision to remand for further proceedings, resulted in unnecessary costs to both the parties involved and the taxpayers.
Meyer Intellectual Props., Ltd. v. Bodum, Inc., __ F.3d __, No. 2011-1329 (Fed. Cir. Aug. 15, 2012).
Find the full opinion here: http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1329.pdf