Request for Reconsideration after Final Action
`
`
`
`SERIAL NUMBER
`1 LAW OFFICE
`ASSIGNED
`
`._..
`
`_.
`
`,,
`
`.,2..,_\ ,_
`
`LAW OFFICE 114
`
`
`r 77253382
`
`,__,_. _..
`
`.,..,,...M,.,,.
`
`..,,,.._
`
`>
`
`A MARK SECTION (no change)
`
`ARGUMENT(S)
`
`I
`
`On January 27, 2010, the Examining Attorney refused to accept Applicant’s statement of use arguing
`that a newsletter and written article “are two distinct types of written work.” The Trademark Trial and r
`‘ Appeal Board has found on multiple occassions that newletters and magazines are related goods. E.g., .
`A Mack Trucks, Inc. v. California Business News, Inc., 223 U.S.P.Q. 164 (T.T.A.B. 1984); Hamilton Burr :.
`‘Publishing Co. v. E.W. Communications Inc., 216 U.S.P.Q. 802 (T.T.A.B. 1982). The Examining
`fAttomey’s
`evidence shows that an “article”
`is “a piece of writing included in a newspaper or
`magazine.”
`If newsletters and magazines are related, and a magazine contains articles,
`then a i
`newsletter also contains articles.
`
`: Magazines, newsletters, and newspapers are not distinct written works. Rather, they contain the written i
`works of others on a particular subject. See Exhibit A.
`Indeed,
`the American Bar Association’s
`i Section of Intellectual Property Law Litigation publishes a quarterly newsletter that is a compilation of f
`articles from different authors. See Exhibit B. The terms magazine, newsletter, and newspaper merely
`denote the format in which the articles are presented.
`
`Applicant’s Life Balance Digest is a newsletter containing written articles on subjects in the field of M
`, work/life balance. Applicant’s mark appears in close proximity to the written articles contained in its é
`Life Balance Digest. Accordingly, Applicant’s mark is being used in connection with “ written articles
`1 featuring information regarding work/life balance,” which are presented to the consumer in the form of 1
`:a newsletter. Therefore, Applicant respectfully reqeusts that the Examining Attorney withdraw his 2
`refusal to register Applicant’s mark, accept Applicant’s statement of use, and issue the Certificate of ~
`.8 Registration.
`‘
`EVIDENCE SECTICN K
`
`EVIDENCE FILE NAME(S)
`
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`I \\i1cRs\1§}§1$E5ii—Ei 1§1i»iAc§E6i}i isms:3;a&;§s3g;;;;;;a2;R;e:;¢i33;.nagI
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`ii
`
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`(10 pages)
`
`i \\TICRS\EXPORT11\IMAGEOUT11\772\533\77253382\xm12\RFR0034.JPG
`
`I
`
`I
`
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`I
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`; \\r1cRs\i§x1$61:ri'1{iM)§¢i:6ii%II\773%§i&72333ié2Tx£1”iéii:i:1io64ii [5128 f
`V \\I"ICRS\EXPGRI1
`1\772\53ZI\7i7253i3i8ii’IIi<rn12\I{FROO42.JPG ,
`¢ mcismaial 1u1xiA¢13otiiiii1ii7i72{§33§i%i533ié:\;2II12\t{i%i6o43ire I
`DESCRIPTION OF I
`Wikipedia definition and sarnpIe /Newsletter from the
`iBar
`: EVIDENCE FILE
`‘ Association
`SIGNATURE SECTIGN
`I
`REGPONSE SIGNATURE
`/Bradley J_ Walz/
`"SI(V}NAT0l‘2Y'iSI\iIA1\i/IE mi; jfiui/;]§W I
`
`WW
`
`V
`
`A
`
`I WM
`
`i”W”””M'i'"”““"
`
`I “””""w i I
`
`‘
`
`:IOGS1\Ii¥‘IT0(;RY'S
`DATE SIGNED
`
`Attorney of record, Minnesota bar member
`07/27/2010 I
`
`‘§1‘i3N‘l‘%‘3‘§5"
`
`YES
`
`FILING INFORNIATION SEGTIGN
`
`

`
`SUBMIT DATE
`
`Tue Jul 27 16:50:51 EDT 2010
`
`TEAS STAMP
`
`'
`
`USPTO/RFR—69. 1 74.5 8.20-20
`10072716505l484949—772533
`82—470bcc768bfb8a662f4e5c
`e58642dec59b3-N/A-N/A—201
`
`, 00727164443 157578
`
`Request for Reconsideration after Final Action
`To the Commissioner for Trademarks:
`
`Application serial no. 77253382 has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`On January 27, 2010, the Examining Attorney refused to accept Applicant’s statement of use arguing that
`a newsletter and written article “are two distinct types of written work.” The Trademark Trial and Appeal
`Board has found on multiple occassions that newletters and magazines are related goods. E.g., Mack
`Trucks,
`Inc.
`v. California Business News,
`Inc., 223 U.S.P.Q. 164 (T.T.A.B. 1984); Hamilton Burr
`Publishing Co. v. E.W. Communications Inc., 216 U.S.P.Q. 802 (T.T.A.B. 1982). The Examining
`Attomey’s evidence shows that an “article” is “a piece of writing included in a newspaper or magazine.”
`If newsletters and magazines are related, and a magazine contains articles, then a newsletter also contains
`articles.
`
`Magazines, newsletters, and newspapers are not distinct written works. Rather, they contain the written
`works of others on a particular subject. See Exhibit A.
`Indeed, the American Bar Association’s Section
`of Intellectual Property Law Litigation publishes a quarterly newsletter that is a compilation of articles
`from different authors. See Exhibit B. The terms magazine, newsletter, and newspaper merely denote the
`format in which the articles are presented.
`
`Applicant’s Life Balance Digest is a newsletter containing written articles on subjects in the field of
`work/life balance. Applicant’s mark appears in close proximity to the written articles contained in its
`Life Balance Digest. Accordingly, Applicant’s mark is being used in connection with “written articles
`featuring information regarding work/life balance,” which are presented to the consumer in the form of a
`newsletter. Therefore, Applicant respectfully reqeusts that the Examining Attorney withdraw his refusal
`to register Applicant’s mark, accept Applicant’s
`statement of use, and issue the Certificate of
`Registration.
`
`

`
`EVIDENCE
`
`Evidence in the nature of Wikipedia definition and sample Newsletter from the American Bar Association
`has been attached.
`
`Original PDF file:
`evi_691745 820- 1 64443 157_._Exhibit_A.pdf
`Converted PDF file(s) (3 pages)
`Evidence-l
`
`Evidence—2
`Evidence—3
`
`Original PDF file:
`evi_691745 820-164443157_._Exhibit_B_J)art_1_.pdf
`Converted PDF file(s) (20 pages)
`Evidence-l
`Evidence—2
`Evidence-3
`Evidence-4
`Evidence—5
`Evidence—6
`Evidence—7
`Evidence—8
`Evidence—9
`
`Evidence— 1 0
`Evidence—] 1
`Evidence-12
`
`Evidence-13
`Evidence— 14
`
`Evidence-15
`Evidence-16
`Evidence— 17
`Evidence~ l 8
`
`Evidence— 1 9
`Evidence—20
`
`Original PDF file:
`evi_69l745820-164443157_._Exhibit_B_part_2_.pdf
`Converted PDF file(s) (9 pages)
`Evidence-1
`Evidence—2
`Evidence—3
`Evidence—4
`
`Evidence-5
`Evidence—6
`Evidence—7
`Evidence—8
`Evidence-9
`
`Original PDF file:
`evi_69 1745 820- 1 64443 1 57$._Exhibit_B_part_3_.pdf
`Converted PDF file(s) (10 pages)
`
`

`
`Evidence-1
`Evidence-2
`Evidence—3
`Evidcnce—4
`
`Evidence-5
`Evidence-6
`Evidence—7
`Evidence—8
`Evidence—9
`
`Evidence— 10
`
`SIGNATURE(S)
`Request for Reconsideration Signature
`Signature: /Bradley J. Walz/ Date: 07/27/2010
`Signatoiys Name: Bradley J. Walz
`Signatory's Position: Attorney of record, Minnesota bar member
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the
`highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal
`territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to
`the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian
`attomey/agent not currently associated with his/her company/firrn previously represented the applicant in
`this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power
`of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the
`applicant's appointed U.S. attorney or Canadian attomey/agent has filed a power of attorney appointing
`him/her as an associate attorney in this matter.
`
`The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
`
`Serial Number: 77253382
`Internet Transmission Date: Tue Jul 27 16:50:51 EDT 2010
`
`TEAS Stamp: USPTO/RFR—69.174.58.20-20100727165051484
`949—77253382—470bcc768bfb8a662f4e5ce5864
`2dec59b3—N/A-N/A-20100727164443157578
`
`

`
`Exhibit A
`
`

`
`Newsletter - Wikipedia, the free encyclopedia
`
`A
`
`'
`
`'
`
`Page 1 of 2 "
`
`Newsletter
`
`From Wikipedia, the free encyclopedia
`
`A newsletter is a regularly distributed publication generally about one main topic that is of interest to its
`subscribers. Newspapers and leaflets are types of newslettersm Additionally, newsletters delivered
`electronically via email (e-Newsletters) have gained rapid acceptance for the same reasons email in
`general is gaining popularity over printed correspondence.
`
`Many newsletters are published by clubs, churches, societies, associations, and businesses, especial]y
`companies, to provide infonnation of interest to their members, customers or employees. Some
`newsletters are created as money-making ventures and sold directly to subscribers. Sending newsletters
`to customers and prospects is a common marketing strategy, which can have benefits and drawbacks.
`
`General attributes of newsletters include news and upcoming events of the related organization, as well
`as contact information for general inquiries.
`
`Newsletter Types
`
`Newsletters can be divided into two distinct types. Printed (on paper) and digital (on the internet). The
`digital formats vary from the simplest format, text to highly designable formats like pdf and html. The
`use of more formatting and web 2.0 attributes like video and sound have become a market standard all
`over the world.
`
`References
`
`l. " "newsletter." (http://www.m—w.com/dictionary/newsletter) Merriam-Webster Onlinc Dictionary.
`(retrieved 5 Feb. 2007).
`
`See also
`
`I Mailing list
`
`Retrieved from "http://en.wikipedia.org/wiki/Newsletter"
`Categories: Newsletters Digital newspapers Publications by format Journalism stubs
`
`I This page was last modified on 15 June 2010 at 05:27.
`I Text is available under the Creative Commons Attribution-ShareAlike License; additional terms
`may apply. See Terms of Use for details.
`Wikipcdia® is a registered nademark of the Wikimedia Foundation, Inc., a non-profit
`organization.
`
`I Privacy policy
`
`http://en.wikipedia.org/w/index.php'?title=News1etter&printable=yes
`
`7/27/2010
`
`

`
`Newsletter — Wikipedia‘, the free encyclopedia
`
`I
`
`.
`
`~
`
`.
`
`V
`
`'
`
`.
`
`'
`
`'
`
`Page 2 of 2‘
`
`I About Wikipedia
`I Disclaimers
`
`http://enwikipedia. 0rg/w/index.php?title=Newsletter&printable==yes
`
`7/27/2010
`
`

`
`Exhibit B (part 1)
`
`

`
`
`
`A Publication of The ABA Section of Intellectual Property Law | www.abanet,org/intelprop
`Volume 26, Number 4: Summer 2008
`
`
`
`
`
`Fee-shifiing Under Rule ‘II and
`35 USC § 285-—Not Just “Belt
`and Suspenders”?
`C. ERIK HAWES AND JAMES L BEEBE
`
`Patent litigationcanbe anexpensiveproposition——as any
`
`litigant or in-house IP lawyer can attest.‘ Depending on
`the amount in dispute and the particular venue, the total
`cost for litigating a patent infringement suit can run as high as
`$10 million.‘ With the median damage award in patent cases at
`nearly $4 million} an award of attorney fees can have a sig-
`nificant impact in the total amount a successful plaintiff is
`able to recover. Alternatively, an award of attorney fees to a
`prevailing defendant can compensate for years of time and
`el'fort—-and money——spent defending against unfounded
`infringement allegations.
`With this in mind, parties should keep in mind all of the
`various tools for recovering attorney fees. not only prior to
`filing litigation, but also during litigation, once finaljudgment
`has been entered, and on appeal. If applicable, these tools may
`have a significant impact on the calculus used to decide whether
`to bring suit, settle. engage in certain discovery practices. lodge
`(continued on page 16)
`
`Rescuing Orphan Works: An
`Analysis of Current legislation
`SANJIV D. SARWATE
`
`ierure this scenario: you are the curator of a history
`
`Pmuseum. A donor has given several items to the muse-
`
`um collection, including a photo album recovered from
`an abandoned hotel room in Berlin shortly after World War It.
`The album contains photographs that vividly illustrate Jewish
`family life in Germany prior to and during Nazi rule. The
`donor knows nothing about the people who left the album
`behind or the photographer who took the pictures. Can you
`display the album in an exhibit‘? Can you reproduce pictures
`from the album for a book about the exhibit’? Can you scan the
`pictures and post them on the Internet‘?
`If you start using the work in the exhibit or reproduce pic-
`tures fiom it, there is a risk that the photographerts) or their
`heirs may sue for copyright infringement. which opens the risk
`of liability for damages and attorney fees. However, to avoid
`
`
`
`A Survey of the Doctrine of
`Prosecution Laches
`BONNIE M. GRANT
`
`n(lCl' the current U.S. patent system. patentees are
`entitled to file an unlimited number of continuation
`
`and continuation-in-pan applications. Many patentees
`use that benefit by filing chains of applications that may
`lead to any number of issued patents. Because the patents
`result from chains of applications, they may be pending
`before the U.S. Patent and Trademark Office (USPTO) for
`quite some time. Defendants who are charged with infringe-
`ment of these palents~frustrnted by what they perceive to
`be the patentee’s efforts to await developments in the field
`and broaden the pending claims—may assert the affirmative
`defense of prosecution laches. Alternatively, the USPTO
`itself may reject an application due to prosecution laches.
`"Prosecution laches is an equitable doctrine that “may be
`applied to bar enforcement of patent claims that issued after
`an unreasonable and unexplained delay in prosecution even
`though the applicant complied with the pertinent statutes
`and rules."’ Courts are fond of commenting that “there is lit-
`tle guidance" on the doctrine. and indeed, there have been
`only four final decisions that have found prosecution laches.
`Recent rulings that enjoined the USP'I‘O's proposed new
`rules might increase the frequency of assertion of prosecu-
`tion laches, both by defendants accused of infringement and
`in rejections by the USPTO? One of the recently enjoined
`rules was designed to curb the number of continuation appli-
`cations that a patentee may file.‘ Under the rule, if the paten-
`tee wanted to file more than two continuation applications,
`then the patentee had to file a petition “that explains why the
`amendment, argument, or other evidence could not have
`been presented previously.“ The USl’I'O justified the rule
`“on the ground that the growing number of continuation
`applications and increasing number and complexity of
`claims in applications had crippled the USPTO’s ability to
`examine newly-filed applications."-‘ In April of this year,
`Judge Cacheris. of the U.S. District Court for the Eastern
`District of Virginia. granted summary judgment that the pro-
`posed rules exceed the USPl‘()'s rulcmaking authority.“
`In striking down the proposed rules, Judge Cacher-is
`spccifically noted that “while the USPTO may presently
`wield the doctrine of prosecution laches to prohibit the
`
`(continued on page 9)
`
`(continued on page 22)
`
`liroup News
`§Re.e.§ent Deve__l9pm_ants in
`it
`illiectual Property Law
`
`
`
`
`
`

`
`Chemical Abstracts Service
`
`PU: 26:3 pg. 11
`
`

`
`judiciary. Dcspitc forces to the contrary, the Association has
`been staunch in its opposition to legislative initiatives that would
`strip the federal courts ofjurisdiction to hear certain cases
`involving constitutional rights, to erode judicialdiscrction, or to
`infringe upon the separation of powers between Congress and
`the courts. The ABA actively campaigns for adequate funding
`for the federal judiciary, including an immediate and substantial
`increase in federal judicial compensation. These are issues pam-
`mount to the effective administration ofjustice and of interest to
`every lawyer. Especially in the competitive market for intellec-
`tual property lawyers, incentives must exist for highly qualified
`candidates to move into judicial positions. Because of its size,
`stature and history, the Association is uniquely positioned to
`take on this type of fundamental issue in the profession.
`Another example of a pertinent a.nd important ABA ini-
`tiative is its support for the global rule of law. 'l‘hc American
`Bar Association supports adequate funding for domestic and
`international agencies that promote the rule of law and orga-
`nizes programs to help countries create systems where the
`rule of law is implemented and respected. The relevance of
`this initiative to intellectual property lawyers is self-evident;
`without the rule of law. piracy can run rampant and U.S.
`inventors and authors can be left unprotected abroad. This
`initiative can have immediate and practical impact to
`Section interests.
`
`Similarly. the ABA works hard to Suppofl a strong and
`wcll—t'rnanced Legal Services Corporation to provide civil
`legal services for those who cannot otherwise afford them. It
`supports and provides numerous scholarships and awards to
`support law students and young lawyers. These clforts help
`
`
`
`Section of Intellectual Property Law
`
`Editor:
`Jennifer Mahalingappa
`Plumsca L-1W GFOUP
`10411 Motor City Dnve.S1nte 320
`ll Bethesda. MD 20317
`-’'_‘‘‘’-‘_‘‘5‘55-‘9
`‘ bmml;J’““”“""“‘]“’@"l“”’3""""‘"
`Lrrisranr Edlrar
`l
`Linda M Merritt
`‘
`Fl 'LBRlGHT & Jauorski L LP.
`2200 Ross Avenue. Suite 2800
`Dallas. TX 75201
`214/855-8000
`lirmnilt lmen—in(u>r'ulbnglrr.t-om
`Sccliolr Dzrzcrnr:
`l Michal-‘J Willi-KT
`ABA 58911130 0”"15”¢L1"«'ll
`If»;
`l
`_
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`-
`“Y
`g
`: §:‘'g‘;l:§§_*sIé:‘9m55‘'‘’5q8
`_ 3l:U9X8_‘58bU (Fax)
`l
`‘
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`/" A Publication of The ABA
`[PL News/mu (ISSN 0736-8232) is
`puhltshcd quarterly by season by the
`Section of ln|r:llcr:1ual Pr-openy Law of
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`IPI. Nan rlrlrzr provides current
`developments pertaining to intellecnrnl
`property law and practice, Section
`news‘
`and other
`information of
`prOrc8:l(|l'l3l interest to members of
`the Section
`Any member of the American Bar
`Amocialinrr may join the Section by pay—
`ing its annual dues at $55. $5 of which
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`l’hc views expressed herein are
`not necessarily those of the Section
`of Intellectual Property Law or the
`Arnmcan Ilur Assucutiun.
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`2008 Arr\t.:1iL1an Bar Association Produuad by ABA Publrshirrg.
`Nntimnrl Arhcrming Representatives: Adrlrerrs all rulvenismg orders. eunrmcts, and
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`
`1 11
`
`PAMELA BANNER KRUPKA
`
`W by AB,-\'.’
`As the bar year draws to an end and my tenure as Section
`Chair nears completion, many people are asking for my
`thoughts about serving in this leadership capacity. I am
`asked about the necessary commitment of time and energy
`and. in particular, why I chose to devote them within the
`American Bar Association. The questions often focus on the
`fact that the ABA is a large organization and they query
`whether my time and energy might have been better spent in
`an organiration whose efforts are exclusively focused on
`intellectual property issues.
`To be sure. the American Bar Association actively pur-
`sues policies relating to numerous legal issues beyond the
`scope and expertise of the Section. In addition, the ABA is a
`large organization with unique procedures that must be fol-
`lowed before speaking on any topic. As described in my last
`column. sometimes these procedures can contribute to the
`Association being silent on an issue. These are factors that
`other organizations need not take into consideration.
`Aspects of the ABA perceived as undesirable might lead
`some to conclude to serve elsewhere. When they are not
`involved in this organi/ation, however, they may not see
`how significant a voice the ABA has in the pursuit oljustice
`throughout the profession. In my experience. this
`Association offers its members an unparalleled opportunity
`to participate in the development of the profession's most
`important issues. ir1 addition to the cutting-cdgc issues spe-
`cific to intellectual property law.
`My first experience with the work ofthe American Bar
`Association beyond the Section came during my service as
`the Section's Liaison to the ABA Commission on Women
`
`in the Profession. During that time, I participated in devel-
`oping policies and programs designed to promote the full
`and fair progress of women in the law. Over the years, the
`Commission has created a wealth of practical resources for
`firms and organizations on a variety of topics, such as elimi-
`nating gcnder bias. keeping women lawyers from leaving
`law lirrns, and the unique challenges faced by women -
`lawyers of color. These issues are exactly the ones facing
`every organization today. Through my experience with the
`Commission. I carrre to appreciate the important and rele-
`vzuit work of the ABA beyond the critical substantive intel-
`lectual property work of the Section.
`Since then, I have taken interest in and participated in a num-
`ber of other ABA initiatives of significance to the profcssion.
`and I have encouraged my Section wlleagucs to do the same.
`The ABA is active in and focused on the bedrock issues of
`the legal profession today. One important ABA initiativc—-sig-
`nificant to every practicing lawyer——is the independence of the
`
`summer: soon I
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`VOLUME 26. NUMBER 4 I
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`IPI.. NEWSLETTER I
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`3
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`United States Senator ask for more input on ABA letterhead ,
`l create a solid infrastructure upon which all areas of law rely.
`because the ABA‘s voice “speaks volumes."
`;
`Numerous other ABA-wide commissions, forums. and other
`As the new bar year begins, the Section will continue its
`j
`initiatives provide important guidance to the legal community.
`traditional work in the intellectual property field under the
`1
`Through its history. the American Bar Association has
`leadership of incoming Chair Gordon Arnold. In addition.
`used its considerable weight to directly influence the devcl— :
`the Section will continue to support and participate in /\BA-
`opment of intellectual property law. As reported earlier. the
`'
`ABA previously prioritized the issue of funding the USPTO l wide initiatives of significance. I strongly encourage every
`as one of its top ten legislative priorities, a designation that
`I Section member to participate in both Section and
`was maintained for four years until the Administration and
`Association-wide activities.
`Congress backed away from fee diversion.
`My answer as to “why ABA?" is simple: we make a dif~
`These are just a few examples of ABA initiatives that are
`fcrence. Our collective efforts make a difference not only in
`important to all members of the Association, including
`the development of intellectual property law, but also in the
`Section members. Association—wide activities and policies
`legal system itself. I am grateful to have had this opportuni-
`not only address universal concerns of the profession and
`ty and look forward to continuing to find ways to make a
`serve to develop and maintain the valuable ABA brand, but
`difference together under Gordon's leadership. I
`also complement the more familiar work of the Section on
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`issues specific to intellectual property law and policy.
`Identification with the American Bar Association brand
`enhances both the brand and influence of the Section of
`Intellectual Property Law. One of the more memorable
`moments I have had in Section leadership was hearing a
`
`;
`'~ /
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`
`Pamela Banner Kru pka -
`Chair
`
`Distance Learning
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`$79.95 for Section of Intellectual Property Law Members
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`Go to www.baboks.org for more information
`and to order, or call 800.285.2221
`
`4 I
`
`IPL NEWSLETTER I VOLUME 26, NUMBER 4 I SUMMER 2008
`
`

`
`Is the Plague Back?-—lnequitcrble Conduct
`ANGELA FOSTER
`
`pproximately 20 years ago. the Federal Circuit
`observed in Burlington Industries v. Dayca Corp.‘
`that inequitable conduct had become an “absolute
`plague“ in patent litigation. Writing for the court, Judge
`Nichols opined that
`
`reputable lawyers seem to feel compelled to make the
`charge against other reputable lawyers on the slenderest
`grounds. to represent their client's interests adequately.
`perhaps. They get anywhere with the accusation in but a
`small percentage of the cases. but such charges are not
`inconsequential on that account. They destroy the respect
`for one anothcr‘s integrity. for being fellow members of
`an honorable profession, that used to make the bar a valu-
`ztble help to the courts in making :1 sound disposition of
`their cases, and to sustain the good name of the bar itself.
`A patent litigant should be made to feel. therefore. that an
`unsupported charge of “inequitable conduct in the Patent
`0lTce" is a negative contribution to the rightful adminis-
`tration ofjustice. The charge was formerly known as
`“fmud on the Patent Office," a more pejorative term. but
`the change of name does not make the thing itself smell
`any sweeter. Even after complete testimony the court
`should find inequitable conduct only if shown by clear
`and convincing evidence}
`
`Burlington commenced a patent infringement action
`against Dayco. and Dayco moved for summary judgment on
`grounds that the Burlington patent was unenforceable due to
`inequitable conduct and obviousness. The patent application
`contained varied language and wording throughout the spec-
`ification and claims describing die invention. At trial, the
`attomey testiticd that he used a variety of words to convey
`the same meaning because he found it tiresome to repeat
`complicated concepts. The district court granted Dayco
`summary judgment on the grounds that Burlington supplied
`misinformation to the patent examiner.
`On appeal. the Federal Circuit reviewed the record and
`concluded that there was no showing of inequitable conduct
`by clear and convincing evidence and thus reversed the
`decision. The court reasoned that the attorney's conduct
`amounted to mere error and did not sink to the level of
`inequitable conduct.
`On May 14, 2008, the Federal Circuit shifted its analysis
`of inequitable conduct in Aventis Pharma S./l. v. Amphastar
`Pharma, Inn,‘ by affrming the district court's findings of
`inequitable conduct based on the fact that a scientist would
`unintentionally fail to perform proper experimental compar-
`isons. This articlc explores the state of inequitable conduct
`and the potential impact of new Patent Refonn Rules.
`
`lnequitable Conduct Overview
`Almost six months after Burlington,‘ the Federal Circuit
`continued its trend of analysis of inequitable conduct in
`Kirrg.rd(rwrr Medical C(Il1.\"u[IaIlIS, Ltd. v. Hollixter, Inc. .5
`where the Federal Circuit rejected the district court's finding
`of inequitable conduct based on mere mistake.
`
`After over six years of unsuccessfully prosecuting U.S.
`Patent No. 4.460363 (’363).° Kingsdown submitted new claim
`50. The examiner found that claim 50 contained allowable sub-
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`ject matter but rejected claim 50 for indctinitcness under 35
`U.S.C. § 112. second paragraph. To render claim 50 definite
`and overcome the § 1 l2 rejection. Kingsdown amended claim
`50 and appealed the remaining rejected claims. While its appeal
`was pending, Kingsdown teamed that Hollister Incorporation
`(Hollister) was manufacturing a similar device. Ki ngsdo wn
`l
`withdrew its appeal and filed a continuation application.
`!
`'l‘hirty-four claims were filed with the continuation appliea-
`'
`tion. including 13 new claims and 21 claims indicated as cor-
`l
`responding to claims allowed in the parent application. In
`prosecuting the continuation, 44 references, including 14 new 2
`references. and 63 claims were presented During prosecution.
`l
`Kingsdown submitted to the Patent Office a two—co1umn list.
`;
`The first list column contained the claim numbers of 22 claims
`.
`allowed in the parent. while the other column contained the
`I
`claim numbers of the 21 claims in the continuation application
`that corresponded to those previously allowed claims. That list
`indicated. incorrectly, that claim 43 in the continuation appli-
`cation corresponded to allowed claim 50 in the parent applica-
`tion. Claim 43 actually corresponded to the rejected claim 50.
`Claim 43 was renumbered as the present claim 9 in the '363
`patent. Claim 6l of the continuation actually contained the
`subject matter of allowable claim 50 from the parent czrse.7
`Kingsdown later filed suit against Hollister for patent
`infringement. The district court found patent ’363 to be unen-
`forceable due to inequitable conduct. inequitable conduct must
`be proven by clear and convincing evidence that failure to dis-
`close material information or submission of false material
`information in a patent action was intentional.‘ The court held
`Kingsdown’s knowledge of materiality was inferred because
`claim 50 was deemed allowable in the parent application only
`after amending to overcome the 112 rejection. The court fur-
`ther held Kingsdown demonstrated deceitful intent because
`Kingsdown was gmssly negligent in not noticing the error. or,
`in the alternative. because Kirrgsdown’s acts indicated an
`intent to deceive the Patent Office?
`
`The Federal Circuit echoed Judge Nichols’ sentiments in
`Burlington that a finding of inequitable conduct should be
`rare and reversed and remanded the district court‘s decision.
`The Federal Circuit held that intent to deceive must be
`
`proven by clear and convincing evidence and a plaintiffs
`
`
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