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U.S. Intellectual Property and New Media Law Update THE ORDINARY OBSERVER AND DESIGN PATENT CLAIMS The Goodyear Tire & Rubber Co. v. The Hercules Tire & Rubber Co., Inc. (Fed. Cir. - November 10, 1998) PERSONAL JURISDICTION, DUE PROCESS AND THE FEDERAL CIRCUIT 3D Systems, Inc. v. Aarotech Laboratories, Inc. et al. (Federal Cir. -November 12, 1998) THE SUN ALSO RISES Sun Microsystems, Inc. v. Microsoft Corp. (N.D. Cal. -November 17, 1998) IF THE GLOVE FITS Bai v. L & L Wings, Inc. et al. (Fed. Cir. -November 3, 1998) THE ORDINARY OBSERVER AND DESIGN PATENT CLAIMS The Goodyear Tire & Rubber Co. v. The Hercules Tire & Rubber Co., Inc. (Fed. Cir. - November 10, 1998) Goodyear markets a tire tread incorporating the following tread design: Hercules makes a retread that it calls "The Power Track" of what Goodyear considers to be a similar design. The Federal Circuit recited the well established criteria for design patent infringement. In determining design patent infringement, the question is whether an ordinary observer would find the design substantially the same. That is, would it deceive such an observer, inducing him to purchase one supposing it to be the other. The District Court in finding non-infringement considered the appropriate ordinary observer to be a prospective purchaser of truck tires, that is truck drivers or fleet operators. Plaintiff argued on appeal that the claim language "the ornamental design for a tire tread, as shown and described" was not limited to truck tires and, thus, the ordinary observer should be any purchaser of tires. The Federal Circuit confirmed the use of potential truck tire purchasers since the focus of the test turns on the actual product that is presented for purchase and the ordinary purchaser of that product. The accused tire is a truck tire and, thus, the selection of the ordinary trucker or the operator who purchases truck tires was appropriate. The Court went on to a detailed analysis of the visual effects of the two tires and confirmed the District Court's finding that there was no infringement. The decision can be seen at: http://www.ll.georgetown.edu/Fed-Ct/Circuit/fed/opinions/97-1199.html PERSONAL JURISDICTION, DUE PROCESS AND THE FEDERAL CIRCUIT 3D Systems, Inc. v. Aarotech Laboratories, Inc. et al. (Federal Cir. -November 12, 1998) Plaintiff sued Defendants for infringement in California District Court (Central District). Defendants contact with California was minimal. Aarotech Laboratories is the parent of Aaroflex. Both corporate Defendants were foreign corporations, with a principal place of business outside California. With regard to the parent company, there was no direct contact with the State of California, but it was identified as the parent of the subsidiary Defendant. The parent had a world-wide web page which described the subsidiary's products and the parent was mentioned in letters and promotional material sent to California by its subsidiary. The parent also received e-mail through its world-wide web gateway through a California address. The subsidiary was in the business of selling the accused equipment in competition with Plaintiff. It has of yet sold only five (5) machines and not actually delivered a completed machine to anyone. It has sold no machines in California but has sent eight (8) letters containing price quotations and descriptions of the merchandise for sale to four different companies in California. The letters state that these are not offers and would not become offers until they are executed by the recipient and returned to Aaroflex. Defendants sent various other material to prospective buyers. There were no actual visits to California by any of the persons involved. In making a determination of whether personal jurisdiction will reside, the Court looks to both the state's long arm statute and even if passes muster on this grounds, decides if there is sufficient contact with a state so not to violate due process before it allows jurisdiction. The District Court applied Ninth Circuit law to the due process question to determine whether there was, in fact, personal jurisdiction over both the parent and the subsidiary and found none based on lack of due process. The Federal Circuit noted it had exclusive jurisdiction over an appeal from a District Court when the claim is based, in part, on the patent laws of the United States. Their jurisdiction extends to any claim so related to the claims in the action that they form part of the same case or controversy. Thus, it found that the Federal Circuit's standard, rather than the Ninth Circuit's, of due process was the appropriate one for the determination. While the Federal Circuit defers to the interpretation of the state's long arm statute given by the state's highest court whether or not this statute was intended to reach the limits of the federal due process, it applies its own analysis for the purpose of compliance with federal due process requirements. The Court then noted that the subsidiary's activities were specifically directed to California. It sent promotional letters, videos, sample parts and solicited orders to residents of California. Noting that the phrase "offer for sale" was recently added to 35 U.S.C. § 271(a), the Federal Circuit noted that patent infringement now arises not only from the actual sale in California but from the offer to sell in California. The subsidiary's activities in California arose out of or were directly related to the alleged infringement. In determining that the subsidiary's activities were an offer to sell, the Federal Circuit applied federal law since this was a question of interpretation of a federal statute. The Court specifically refused to apply California law as to the meaning of "offer to sell." The fact that the offers stated on their face that they were not offers had no affect. To do so would exalt form over substance, and in this case were, in actuality, offers. The Federal Circuit then found that the assertion of personal jurisdiction over the subsidiary was reasonable and fair in this context. The Court found, however, that there was essentially no purposeful direction of activities in California by its parent and an analysis indicated that there was a lack of personal jurisdiction for the parent. The District Court was overruled with regard to the subsidiary and affirmed with regard to the parent. The decision can be viewed at: http://caselaw.findlaw.com/cgi-bin/getcase.pl?court=Fed&navby=case&no=971514 THE SUN ALSO RISES Sun Microsystems, Inc. v. Microsoft Corp. (N.D. Cal. -November 17, 1998) We all suspected that Microsoft played the game a little differently from other companies, and here is an opinion that tells us one of the ways it does so. Java is a computer language developed by Plaintiff Sun. Java is a cross platform language, that is, it can be used with any number of systems including Windows, Unix and Apple systems. It is a standard means of having special effects for web pages and the like. Sun Microsystems, Inc. licensed Microsoft to use various of its programs so that they can be included in Internet Explorer 4. Among other things, these tests and standards required that any use of its Java programming should be compatible with other programs. In its Complahttp://www.ipcounselors.com/19971013.htm), Sun alleges the existence of a Microsoft scheme to neutralize the threat that Sun's Java technology apparently posed to Microsoft's continued dominance of the operating systems market. Sun maintains that, in fact, Microsoft has so changed its flavor of Java as to make it incompatible with other Java systems, both with regard to running Java programs developed on other operating systems on Windows computers and running programs developed using Microsoft's flavor of Java on other operating systems. Sun Microsystems moved to immediately enjoin Microsoft from reproducing, distributing or selling its Java development kits unless and until Microsoft has demonstrated that these products successfully pass Sun's certification requirements provided for in the technology license and development agreement between Sun and Microsoft. Sun also challenged Microsoft's right to distribute the IE4 and Windows 98 in their current configurations, but was willing to allow Microsoft 90 days to modify IE4 and Windows 98 so that they will also pass such tests. Sun has asserted two causes of action as a basis for the injunction, copyright infringement and unfair competition. With regard to copyright infringement it asserts that Microsoft's altered Java program is outside the requirements of the license and, thus, Microsoft is making unauthorized copies. According to Sun, Microsoft's plan is to leverage its dominant market share in operating systems to pollute the market for Java technology with non-compliant browsers, operating systems and software development tools. The Court agreed and agreed in detail. It reviewed each aspect of the changes made by Microsoft to make its system incompatible with Java standards and for non-Windows machines. The detailed listing is both interesting and shows that Microsoft has not lost its ability for ingenuity. No one ever said they were technically dumb at Microsoft. On the other hand, no one said they were legally or politically smart. After its analysis, the Court found that Sun was likely to succeed both with regard to the copyright claim and the unfair competition claim and issued a specific, possibly draconian injunction. However, given the 90 day extension with regard to IE4 and Windows 98, it will only be expensive, not disabilitating. As an aside, there have been a number of statements by Microsoft personnel floating through the media which are intriguing with regard to the current anti-trust action. For example, it is alleged that one of Microsoft's executives indicated more or less that Microsoft could drop Java entirely from Windows and IE4 depending on Active X for certain web related activities. If the comments were made as reported, they may enliven the anti-trust suit where such threats to other products play an active role. The decision can be seen at: http://java.sun.com/lawsuit/111798ruling.html IF THE GLOVE FITS Bai v. L & L Wings, Inc. et al. (Fed. Cir. -November 3, 1998) Carl B. Bai is the owner and inventor of the patent in suit. It is directed to a "target game." He brought suit claiming that the Defendants' "Magic Catch" game infringed claim 1 of his patent. Indeed, while the "Magic Catch" is quite similar to the Plaintiff's claim 1, it has one primary difference. The patent discloses a hemispherical glove and the "Magic Catch" glove is saucer or frisbee shaped, i.e., the plastic back side of the "Magic Catch" glove is largely flat in the middle but curved on the ends. The case in the District Court and on appeal hinged on whether the limitation "hemispherical" in claim 1 excluded the largely flat product. The original claims in the case did not require the gloves to be hemispherical. In response to cited prior art the Plaintiff added the limitation that the glove was hemispherical and used the change to distinguish over the prior art, resulting in claim allowance. The Defendants brought summary judgment, focusing in their briefs on the term hemispherical and addressing the prosecution history estoppel presumption established by the Supreme Court. In reviewing the summary judgment motion the District Court concluded, and the Federal Circuit confirmed, that the "Magic Catch's" perspectively flattened surface did not literally meet the claim limitation "hemispherical" and, thus, did not literally infringe. Further, the District Court and the Federal Circuit found that "hemispherical" was added in response to a Section 103 rejection and that the Plaintiff did not establish this amendment was unrelated to patentability. Accordingly, both Courts concluded that the prosecution history estoppel limited Wings to products that were "hemispherical" in shape and, thus, the Defendants could not assert the doctrine of equivalency in their claim of infringement. The doctrine of equivalency allows for finding infringement even when there is not literal infringement if the primary element is the factual and legal equivalent of an element in the infringing device. In arguing against the file history estoppel, the applicants point to a subsequent interference proceeding in which the interference examiner found the term "hemispherical" was immaterial to the count and, thus, unrelated to patentability. The Federal Circuit found that the subsequent actions of the interference examiner does not undo the fact that "hemispherical" was added to overcome a rejection based on art. It merely broadens the interference. The decision can be accessed at: http://www.ljx.com/topdecision/de111398.htm |
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