Feature Comment: New Laws and Procedures Affecting IP Management Strategies

By James G. McEwen[1] Legislation Affecting Trade Secret Owners Enacted Federal Legislation Affecting Trade Secret Ownership and Rights Among other laws affecting trade secret ownership passed in 2007, Congress passed public law 110-175.  Entitled the Openness Promotes Effectiveness in our National Government (OPEN) Act of 2007, the OPEN Act has the potential to cause problems for trade secret owners who rely on the trade secret exemption to the Freedom of Information Act (FOIA), 5 U.S.C. §552(b)(4), to prevent release of trade secrets held by the Government.  By way of background, 5 U.S.C. §552(b)(4) allows the Government to prevent release of trade secret information which would otherwise have to be released under FOIA.  However, in order to prevent release, trade secret owners are generally required, pursuant to Executive Order 12600, to aid the Government to support an assertion that the 5 U.S.C. §552(b)(4) exemption applies to a requested record and in particular to help show that the disclosure would cause competitive

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Third Circuit Finds Likelihood of Confusion Based Upon Similar Trade Dress

In McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F3d 350, 85 USPQ2d 154 (3rd Cir. 2007), Plaintiff McNeil Nutritionals, LLC (“McNeil”) introduced Splenda®, the first artificial sweetener in the United States made from sucralose, in September 2000.  Sales of Splenda® grew more than tenfold in just six years, from approximately $32 million in 2001 to approximately $410 million in 2006.  Splenda® is sold in boxes of individual packets of 100 and 200-count sizes.  The boxes are oriented horizontally, with a yellow background.  The trade name “Splenda” appears at the top-center of the front of the boxes, in italicized blue lettering, and is surrounded by a white oval-shaped cloud.  On the front, lower-right side of the boxes, there is a photograph of a white cup of coffee and saucer, with an individual Splenda® packet resting on the saucer.  On the front, left side of the boxes, there is a photograph of a glass and pitcher of iced tea.  On the

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Federal Circuit Finds That Subsequent Applications Must be Filed as a Divisional Applications For 35 U.S.C. §121 Exclusion

In Pfizer, Inc. v. Teva Pharms. USA, Inc., No. 2007-1271 (Fed. Cir. March 7, 2008), Pfizer filed an application for a broad range of non-steroidal anti-inflammatory drugs (NSAIDs) that could selectively inhibit the COX-2 enzyme.  Traditional NSAIDs, such as aspirin, ibuprofen, and naproxen, inhibit the cyclooxygenase (COX) enzyme in the body.  The COX enzyme produces molecules associated with pain and inflammation (COX-2) as well as molecules associated with the gastrointestinal tract (COX-1).  Since the traditional NSAIDs inhibited both enzymes, these drugs tended to have gastrointestinal side effects ranging from minor stomach aches to serious ulcers.  The application contained claims directed to the compounds, compositions using the compounds, and methods of using the compounds. The patent examiner issued a restriction requirement, identifying the compound claims, the composition claims, and the method claims as directed to patentably distinct subject matter.  The patent examiner also required Pfizer to elect a species.  Pfizer elected to prosecute the generic compound claims as well as the

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Federal Circuit Disallows Experimental Use Exception In Evaluation Sale of Prototypes

In Atlanta Attachment Company v. Leggett & Platt, Inc., 516 F3d 1361, 85 U.S.P.Q.2d 1995 (Fed. Cir. 2008), Atlanta Attachment manufactures commercial sewing machines.  Atlanta Attachment and Sealy, Inc. entered into an agreement under which (1) Atlanta Attachment would develop an automatic gusset ruffler machine for Sealy, (2) if successful, Sealy would patent the machine, (3) if successful, Atlanta Attachment would only sell to Sealy, and (4) Atlanta Attachment would keep the development of the machine confidential.  At trial, both Atlanta Attachment and Sealy stated that both were expected to keep the development of the machine confidential.  Atlanta Attachment provided four prototypes to Sealy in succession, each of the prototypes embodying improvements suggested by Sealy. Relevant to the issues herein, Atlanta Attachment provided a quotation for the third prototype to Sealy in September of 2000 and sales orders including quotations for sales of the third prototype on November 30, 2000, and February 5, 2001.  Sealy paid the February 5, 2001

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Federal Circuit Interprets “a” or “an” As Not Being Limited To Only One

In Baldwin Graphics v. Siebert, 85 USPQ2d 1503 (Fed. Cir. 2008), the Federal Circuit affirmed-in-part, reversed-in-part, and remanded a District Court decision of granting summary judgment of non-infringement of U.S. Patent No. Re. 35,976 (the Reissue patent) and U.S. Patent No. 5,974,976 (the ’976 patent) based on the District Court’s misinterpretation of claim language. The claimed invention of the Reissue patent and the ’976 patent is for cleaning a cylinder of a printing press using strips of cleaning fabric and methods for making those systems. Baldwin sued Siebert, asserting that Siebert’s packaged fabric rolls infringed claim 32 of the Reissue patent and claims 1, 7, 9, 12, 14, 23, and 25 of the ’976 patent.  The District Court construed “a pre-soaked fabric roll” to mean “a single pre-soaked fabric roll.” In concluding that “a” means “one” in this context, the District Court largely relied on the subsequent use of “said fabric roll” as suggesting a singular fabric roll.  Also, according

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Federal Circuit Find Inequitable Conduct For Failure to Submit Notes

In Monsanto Company v. Bayer Bioscience N.V., 85 USPQ2d 1582 (Fed. Cir. 2008), Bayer owns four patents related to Bacillus thuringiensis (BT) toxins, which are proteins produced by strains of the BT bacteria.  BT toxins are harmless to humans and most animals, but are toxic to certain crop-destroying insects.  In 1986, Plant Genetic Systems (a predecessor to Bayer) succeeded in obtaining insect-resistant plants that expressed a truncated form of a BT toxin, resulting in the four Bayer patents.  Specifically, U.S. Patent No. 5,545,565 (one of the four Bayer patents) claims artificial genes comprising: a truncated BT toxin gene encoding a BT toxin of a specific amino acid sequence; and the regulatory region of a gene naturally expressed in plant cells, which enables the gene to be transcribed in plants. Monsanto, the alleged infringer, developed a genetically modified corn product that expressed a BT toxin with the same amino acid sequence claimed in the Bayer patents.  Accordingly, in December 2000, Monsanto

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Federal Circuit Clarifies Status of Paper Available on FTP Site For Purposes of 35 U.S.C. §102

Federal Circuit Finds Mere Uploading Of a Paper to an FTP Site Does Not Make the Paper Publicly Available In SRI International, Inc., v. Internet Security Systems, Inc., 511 F3d 1186, 85 USPQ2d 1489 (Fed. Cir. 2008) the Federal Circuit affirmed in part, and vacated and remanded in part the District Court’s decision finding Internet Security Systems (ISS) was liable for infringement of U.S. Patent Nos. 6,484,203 (“the ‘203 patent”), 6,708,212 (“the ‘212 patent”), 6,321,338 (“the ‘338 patent”), and 6,711,615 (“the ‘615 patent”) (collectively the SRI patents). The SRI patents relate to cyber security and intrusion detection. Specifically, the SRI patents describe “[a] computer-automated method of hierarchical event monitoring and analysis within an enterprise network including deploying network monitors in the enterprise network, detecting, by the network monitors, suspicious network activity based on analysis of network traffic data.” All four patents originated from a November 9, 1998 application by inventors Phillip Porras and Alfonso Valdes. The EMERALD 1997 paper In

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Feature Comment: Status of New Rules Affecting Continuation Practice, Claims Practice, and Information Disclosure Statement Practice

By James G. McEwen[1] Background Under prior rules, an applicant was entitled to file as many continuation applications as needed to ensure that the invention was properly claimed and to prevent inadvertently narrow limitations from precluding literal infringement.  The only limitation on the number of continuations was generally set by matters of equity or where an applicant was not attempting to advance prosecution by amending the claims.  The applicant could also attempt to ensure such coverage using a single application which included as many claims as needed.  The limitation on the number of claims in a single application was set by the Examiner, who could issue a restriction if the number of claims being examined was deemed too burdensome for a single application. 

Federal Circuit Finds Priority Documents Are Not New Evidence For Purposes of Interference

In In re Harold Garner, Civ Case. No. 2007-1221 (Fed. Cir. December 5, 2007), Calvin F. Quate and David Stern (collectively Quate) are the inventors of U.S. Patent No. 6,480,324, and Harold R. Garner is the inventor of U.S. Application Serial No. 09/998,341.  Quate is the senior party in an interference proceeding between U.S. Patent No. 6,480,324 and U.S. Application Serial No. 09/998,341, and Garner is the junior party based on the effective filing date.  Garner’s patent application was initially rejected based on the filing date of Quate.  Garner attempted to establish a prior reduction to practice for his invention in his 2001 declaration that included:  photos of the device he built before the filing date of that prior art reference and a lab notebook that allegedly showed that the device worked.  John Fondon’s declaration executed on Oct. 20, 2005 was also submitted in a later filing. The evidence was submitted under Rule 131.

Federal Circuit Finds Prosecution History Does Not Limit Claim Scope Where One Skilled In The Art Would Recognize Statement Is In Error

In Elbex Video, Ltd., v. Sensormatic Electronics Corporation, 2007-1097 (Fed. Cir. November 28, 2007), Elbex owns US Patent No. 4,989,085 (the ‘085 patent).  The ‘085 patent is drawn to a closed circuit television system including a supervisory station from which television cameras are controllable.  The supervisory station includes a video monitor to receive and display signals from the cameras, a device to control the cameras, and a switching device to select one of the cameras to be controlled.  To prevent manipulation of the wrong camera from the supervisory station, the ‘085 patent employs an addressing scheme in which each camera generates a unique first code signal.  The first code signal is sent from the camera with video data to a receiving device of the supervisory station.  A receiving device receives the first code signal, which is then input to a controlling means that generates a second code signal corresponding to the received first code signal and transmits that second code

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