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The U.S. patent and trademark attorneys of Gallagher & Dawsey Co. LPA serve clients around the world from our Midwest offices. Our patent and trademark law firm has offices in Columbus, Dayton, and Cincinnati, Ohio.

CAFC Interprets Product-by-Process Claims: The Court of Appeals for the Federal Circuit (CAFC) recently restated that the process steps of a product-by-process claim are to be considered as limitations in determining infringement. In Abbott Labs v. Sandoz, Inc. (Fed. Cir. 2009), the court reviewed the Eastern District of Virginia’s claim construction of the patent claims covering Abbott’s Omnicef antibiotic. Sandoz and Lupin filed Abbreviated New Drug Applications (ANDA) with the FDA to market generic versions of Omnicef, which resulted in Abbott bringing the patent infringement suits. The court determined that Sandoz and Lupin did not infringe Abbott’s patent claims primarily because the generic Omnicef was produced by a process not covered by Abbott’s claims. Interestingly, three judges dissented from the portion of the opinion regarding the interpretation of the product-by-process claims. Led by Judge Newman, the dissenters argued that the majority ignored longstanding practice and precedent by “ruling that all claims containing a process term…must be construed, for purposes of infringement, as limited to use of any process term that was used to assist in defining the product.” The dissenters felt that the majority’s decision creates a “new restraint on patents for new products.” As a result, new, complex compositions that cannot be fully described structurally, but instead are claimed as a product-by-process, can only be infringed if the alleged infringer practices all of the process steps, paying no regard to the product itself.

Each Inter Partes Reexamination Party May Seek Stay of Litigation Proceedings: The Court of Appeals for the Federal Circuit (CAFC) recently reiterated the fact that both the patent owner and the accused infringer may seek a litigation stay when there is a concurrent inter partes reexamination proceeding pending with the USPTO. In The Procter and Gamble Company v. Kraft Foods Global, Inc., (Fed. Cir. 2008), the court noted that the district courts have broad discretion when it comes to managing their dockets. Procter and Gamble attempted to argue that the applicable statutory section, 35 U.S.C. Section 318, allows only the patent owner to seek a stay of litigation proceedings when there is a pending inter partes reexamination. It’s true that the text of Section 318, on its face, would support such an argument. However, the court quickly pointed out that the district courts have always had an inherent power to grant stays in pending litigation. In driving home the point, the court noted that there is no such statutory section applicable to ex parte reexamination proceedings, and patent owners have always relied on the district courts’ inherent power in seeking stays in those situations.

TTAB Finds Tray Design Trademark Functional: The Trademark Trial & Appeal Board (TTAB) determined that the tray design mark of applicant Gratnell’s Limited was functional under the Trademark Act’s Section 2(e)(5). In re Gratnell’s Limited, Serial No. 78450327 (April 8, 2009). The trademark laws do not afford trademark protection to designs that are functional, regardless of whether the design has acquired distinctiveness. In Gratnell’s, the TTAB was convinced that the tray design was functional by Gratnell’s own advertising materials. The advertising focused on the trays’ functionality by noting that the design allows the trays to be stacked, that the trays save space, and that the trays fit nicely into standard school furniture. Gratnell’s argued that the laudatory advertisements were merely puffery. However, the TTAB pointed out that the advertisements pointed to “specific characteristics of the applicant’s product.”

Federal Circuit Panel Overturns District Court in Patent Rules Dispute: On March 20, 2009, the Federal Circuit vacated a portion of the U.S. District Court for the Eastern District of Virginia’s summary judgment decision in Tafas v. Dudas that found the USPTO’s new rules pertaining to claim limits, the number of Requests for Continued Examination (RCEs) that may be filed, and the number of continuation applications that may be filed were substantive and beyond the USPTO’s rulemaking authority. The Federal Circuit disagreed and concluded that the new rules were procedural rather than substantive because they do not “foreclose effective opportunity to make one’s case on the merits… they govern the timing of and materials that must be submitted with patent applications.” However, the Federal Circuit affirmed the district court’s decision regarding the limits on continuation applications. In reaching its conclusion, the Federal Circuit noted that the new rule for limiting continuation applications imposed additional requirements not found in the statutory provisions covering continuation applications. This case has been remanded to the district court for further proceedings.

Patent Term Adjustments After Wyeth v. Dudas: An issued patent may be subject to certain time extensions and adjustments. Such extensions and adjustments result from specific types of delays that occur during the patent prosecution process. For example, under 35 USC Section 154(b)(1)(A) (so called "A delays"), the patent term is adjusted for the USPTO's failure to act within a certain timeframe, such as failing to issue a first office action by 14 months from the patent application filing date. Additionally, 35 USC Section 154(b)(1)(B) (so called "B delay") provides that the patent term is adjusted when a patent issues more than three years from the filing date. The USPTO has long held the position that the patent term may be adjusted by the larger of the "A delays" or the "B delay," but never a combination of both types of delay. In Wyeth v. Dudas, 88 U.S.P.Q.2d 1538 (D.D.C. 2008), the U.S. District Court for the District of Columbia held that the USPTO's method of calculating the patent term adjustment was incorrect. The court noted that as long as the delays did not occur on the same day, then they may be combined. The USPTO has appealed the court's ruling.

Counterfeiters Beware: Recently, President Bush signed a "Pro-IP" act into law which increases the statutory damages awards in civil counterfeiting cases. Under the "Pro-IP" act a defendant may be liable for up to two million dollars for willfully using another's trademark on counterfeit goods. Furthermore, the "Pro-IP" act shores up inadequate remedies available to plaintiffs in criminal counterfeiting and piracy cases. In addition to stronger remedies, the "Pro-IP" act makes the Bush administration's Strategy Targeting Organized Piracy (STOP) Initiative and the administration’s coordination of inter-agency IP efforts permanent.