Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA639469
`ESTTA Tracking number:
`11/17/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91218072
`Plaintiff
`Epiq Systems, Inc.
`CARLA CALCAGNO
`CALCAGNO LAW PLLC
`1250 24TH STREET NW, SUITE 300
`WASHINGTON DC, DC 20037
`UNITED STATES
`cccalcagno@gmail.com, trademarks@canopyparalegal.com
`Motion to Strike
`Carla C. Calcagno
`carla.calcagno@calcagnolaw.com,cccalcagno@gmail.com
`/Carla C. Calcagno/
`11/17/2014
`Cases in support of Epiq System's motion to strike.pdf(1515991 bytes )
`Epiq vs Epic River Motion to Strike.pdf(115480 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN RE BOSE CORP.
`Citeaail-1'6 F.3d 1331 (Fed. Cir. 2007)
`
`1331
`
`or parties only upon an express determina—
`tion that there is no just reason for delay
`and upon an express direction for the en-
`try of judgment.”
`Fed.R.Civ.P. 54(b).
`The parties have failed to obtain such a
`partial judgment and the other possible
`avenues of finality have not been followed.
`See Nystrom, 339 F.3d at 1347.
`
`This court has often rebuked parties for
`presenting an appeal to this court without
`a final judgment. Sec Pause Tech. LLC '0.
`TiVo Inc., 401 F.3d 1290, 1293 (Fed.Cir.
`2005) (“Despite our repeated admonitions,
`this court again confronts an appeal with a
`jurisdictional defect. For whatever rea-
`sons, parties too frequently are not review-
`ing the actions of the district courts for
`finality before lodging appeals”); see also
`Eiizo Biockcm, Inc. 1;. Gcn—Probe Inc., 414
`F.3d 1376 (Fed.Cir.2005); Silicon Image,
`Inc.
`7). Genesis Microchip, Inc., 395 F.3d
`1358 (Fed.Cir.2005); Nystrom, 339 F.3d at
`1350. The parties are required to certify
`that the judgment being appealed is final.
`In this particular case, the appellant filed
`an appeal on a non—final judgment and the
`appellee has not objected. Our Federal
`Circuit rules require that the “jurisdiction-
`al statement
`includ[e] a representation
`that the judgment or order appealed from
`is final or, if not final, the basis for appeal-
`ability.” Fed. Cir. R. 28(a)(5);
`see also
`Fed. R.App. P. 28(a)(4)(B).
`
`The court takes urnbrage at parties who
`have not carefully screened their cases to
`ascertain whether or not a judgment is
`final. It is incumbent on all parties to do
`so. The court should not be required or
`obligated to scrub every case to determine
`finality. At this time, the court shall not
`issue an order to show cause as to whether
`
`both parties should be cited or sanctioned
`for failing to determine finality before fil-
`ing; however, the parties and other mem-
`bers of the bar are hereby placed on notice
`that the court shall in the future begin to
`
`cite counsel for failure to determine wheth-
`
`er or not the appealed judgment is final.
`
`Without finality at the district court, this
`court cannot entertain the present appeal.
`Accordingly, the appeal
`is dismissed for
`lack of jurisdiction.
`
`W
`
`T
`O EKEY HUM BER SYSTEM
`
`In re BOSE CORPORATION.
`
`No. 06-1173 (Serial No. 74/734,496).
`
`United States Court of Appeals,
`Federal Circuit.
`
`Feb. 8, 2007.
`
`Background: Speaker manufacturer ap-
`pealed decision of the United States Pat-
`ent and Trademark Office, Trademark Tri-
`al and Appeal Board, denying registration
`of design.
`
`Holding: The Court of Appeals, Lourie,
`Circuit Judge, held that Court of Appeals’
`prior decision that speaker design was
`functional and not entitled to trademark
`
`registration was res judicata.
`Affirmed.
`
`1. Trademarks 631322
`
`The Court of Appeals for the Federal
`Circuit applies a limited standard of review
`to decisions by the Trademark Trial and
`Appeal Board and reviews legal determi-
`nations de novo and factual findings for
`substantial evidence.
`
`2. Federal Courts <>‘==776
`
`Whether a claim is barred by the doc-
`trine of res judicata is a legal determina
`tion reviewed de novo.
`
`

`
`1332
`
`476 FEDERAL REPORTER, 3d SERIES
`
`3. Trademarks 1322
`
`On appeal from Trademark Trial and
`Appeal Board decisions, the functionality
`of trade dress is a factual finding reviewed
`for substantial evidence.
`
`4. Judgment @548, 585(5)
`
`Court of Appeals’ prior decision that
`speaker design was functional and not en-
`titled to trademark registration was res
`judicata as to subsequent application to
`register design based on substantially pen-
`tagonal cross-section with a substantially
`pentagonal shaped top with a bowed edge
`parallel
`to a
`substantially pentagonal-
`shaped bottom end; the prior decision ac-
`knowledged that the curved edge was part
`of design, intervening Supreme Court case
`supported finding that design was func-
`tional, and since the design was not merely
`of the curved front edges, new advertising
`materials, which did not promote the utili-
`tarian aspects of the curved fl'ont edge,
`were irrelevant.
`
`5. Judgment @9584
`
`Under the doctrine of “res judicata,”
`or “claim preclusion,” a judgment on the
`merits in a prior suit bars a second suit
`involving the same parties or their privies
`based on the same cause of action.
`
`See publication Words and Phras-
`es for other judicial constructions
`and definitions.
`
`Patents ¢=328(2)
`
`4,146,745. Cited.
`
`Charles Hieken, Fish & Richardson
`PC, of Boston, MA, argued for appellant.
`With him on the brief were Cynthia John-
`son Walden and Amy L. Brosius.
`
`John M. Whealan, Solicitor, United
`States Patent and Trademark Office, of
`Arlington, VA, argued for the Director of
`the United States Patent and Trademark
`
`Office. With him on the brief were Cyn-
`thia C. Lynch and Nancy C. Slutter, Asso-
`ciate Solicitors.
`
`Before LOURIE, RADER, and
`SCHALL, Circuit Judges.
`
`LOURIE, Circuit Judge.
`
`Bose Corporation (“Bose”) appeals from
`the decision of the United States Patent
`
`and Trademark Office (“PTO”) Trademark
`Trial and Appeal Board (the “Board”) de-
`nying registration of a proposed speaker
`design as a trademark.
`In re Bose Corp,
`Serial No. 74734496, 2005 WL 1787217
`(T.T.A.B. July 12, 2005). Because the
`Board correctly determined that the ap-
`peal was barred by the doctrine of res
`judicata, we affirm.
`
`BACKGROUND
`
`Bose filed an application to register the
`following design as a trademark for “loud-
`speaker systems” on September 26, 1995:
`
`
`
`

`
`IN RE BOSE CORP.
`Citeas476 F.3d 1331 (Fed. Cir. 2007)
`
`1333
`
`Although the application as filed con-
`tained no written description of the mark,
`Bose amended the application to include a
`statement that the mark “comprises an
`enclosure and its image of substantially
`pentagonal cross-section with a substan-
`tially pentagonal shaped top with a bowed
`edge parallel to a substantially pentagonal-
`shaped bottom end.” Bose further stated
`in its response to an office action that the
`proposed mark is “identical to trademark
`application serial no. 73/127,803.”
`
`We previously considered the registra-
`tion of the identical mark in application
`serial no. 73/127,803 and held that that
`mark was functional and therefore not en-
`
`In re
`titled to trademark registration.
`Bose Corp, 772 F.2d 866 (Fed.Cir.1985)
`(Bose I).
`In affirming the Board’s deci-
`sion that the configuration was functional,
`we applied the standard set forth in In re
`Mm-ton—Norrwich Products, Inc, 671 F.2d
`1332 (CCPA 1982). We observed that
`Bose’s promotional materials explained the
`functional reason for such a design. Bose
`I, 772 F.2d at 871. We also observed that
`the speaker enclosure configuration was
`the subject of a Bose patent (US. Patent
`4,146,745) as part of a speaker system and
`that the “pentagonally shaped cross-sec-
`tion of the enclosure is part and parcel of
`the functional,
`i.e. utilitarian, advantage
`stated by Bose itself to inhere in the enclo-
`sure as an element of a speaker system.”
`Id. at 872 (emphasis omitted). We reject-
`ed Bosc’s argument that competitors could
`compete in the speaker market without
`using a five-sided speaker and determined
`that we need only look to Bose’s own
`statements to support a conclusion that the
`“Bose enclosure design is one of the best
`from the standpoint of performance of the
`speaker system.”
`Iol Finally, We noted
`that an advantage of the Bose design is
`that it is inexpensive to manufacture and is
`within “the category of a superior design
`in this respect.” Iol at 873.
`
`When presented with the identical mark
`at issue in the present application, serial
`no. '74/734,496, the Board affirmed the ex-
`aminer’s refusal to register the proposed
`mark, concluding that
`the appeal was
`barred by the doctrine of res judicata.
`The Board determined that Bose was the
`
`same applicant as in Bose I, that this court
`rendered a final decision in Bose I on the
`
`issue of de jure functionality of the identi-
`cal mark, and that no conditions, facts, or
`circumstances of consequence to the issue
`of de jure functionality had changed since
`the prior decision.
`
`Bose conceded that the applicant and
`marks were the same as in the prior pro-
`ceeding, but argued extensively to the
`Board that the facts and circumstances
`
`had changed since Bose I such that appli-
`cation of -claim preclusion, in this case via
`res judicata, was not appropriate. The
`Board rejected Bose’s related argument
`that there was an important factual differ-
`ence between the proceedings because the
`mark in the prior proceeding had a
`“bowed” edge, whereas, in the present pro-
`ceeding, the mark is “curved.” The Board
`found no meaningful difference between
`the characterization in the prior applica-
`tion of a “bowed” front edge and the char-
`acterization in the present application of a
`“curved” front edge. The Board also re-
`jected Bose’s changed circumstances argu-
`ment. lt concluded that the public recogni-
`tion of Bose’s design that may have been
`achieved over twenty years did not cause it
`to differ from its prior decision that the
`design was de jure functional.
`
`The Board distinguished this case from
`In re Honeywell, in which the Board de-
`termined that that appeal was not barred
`by application of the doctrine of res judica-
`ta.
`8 U.S.P.Q.2d 1600, 1988 WL 252417
`(T.T.A.B 1988).
`In Honeywell, the design
`sought to be registered was for a round
`thermostat cover. The Board rejected the
`
`

`
`1334
`
`476 FEDERAL REPORTER, 3d SERIES
`
`Subsequently,
`functional.
`as
`design
`Honeywell sought to register a design that
`was a variation of the previously regis-
`tered design. The Board observed that in
`Honeywell,
`the marks were different
`in
`the two proceedings, the round configura-
`tion was chosen for source-indicating pur-
`poses and the components were designed
`to fit
`that configuration, and that case
`involved a design, not a utility, patent.
`The Board also determined that in the
`
`alternative, even if we were to reverse on
`the issue of res judicata,
`the proposed
`design still consists of a de jure functional
`configuration of a loudspeaker.
`
`Bose requested reconsideration of the
`Board’s decision, which the Board denied.
`In re Bose Corp, Serial No. 74734496,
`2005 WL 2769634 (T.T.A.B. Oct. 4, 2005)
`(Request for Reconsideration).
`In its
`opinion denying the request for reconsid-
`eration, the Board rejected Bose’s argu-
`ment
`that circumstances had changed
`since the earlier decision, and in particular
`that there had been a change in the law on
`the issue of de jure functionality with the
`decision of TmfFim Devices '1). Marketing
`Displays, 532 U.S. 23, 121 S.Ct. 1255, 149
`L.Ed.2d 164 (2001). The Board noted that
`
`statements made in a patent application
`can demonstrate the functionality of a de-
`sign, and that ii‘ a design is found to be
`functional, it is unnecessary for the court
`to consider the availability of alternative
`designs. The Board concluded that a “de-
`sign feature that is shown by way of an
`exhaustive analysis of a utility patent to be
`de jure functional does not become not de
`jure functional by the passage of time,
`more promotional efforts or
`increased
`sales.” Request for Reconsideration slip
`op. at 12.
`
`Bose timely appealed, and we have juris-
`diction
`pursuant
`to
`28
`U.S.C.
`§ 1295(a)(4)(B).
`
`DISCUSSION
`
`[1—3] We apply a limited standard of
`review to Board decisions, reviewing legal
`determinations de novo and factual find-
`
`In re Pacer
`ings for substantial evidence.
`Tech, 338 F.3d 1348, 1349 (Fed.Cir.2003).
`Whether a claim is barred by the doctrine
`of res judicata is a legal determination
`reviewed de novo. Hallco Mfg. 00., Inc. 2).
`Foster, 256 F.3d 1290, 1294 (Fed.Cir.2001).
`The functionality of trade dress is a factual
`finding reviewed for substantial evidence.
`Vain Engfgr,
`Inc.
`1;. Remnord Corp, 278
`F.3d 1268, 1273 (Fed.Cir.2002}.
`
`[4] On appeal, Bose again argues that
`facts
`and circumstances have changed
`since Bose I such that the doctrine of res
`
`judicata should not bar Bose from regis-
`tering its proposed design as a trademark.
`According to Bose, the curved front edge
`was not an issue in Bose I, and the court
`only considered the pentagonal-shaped de-
`sign in its determination of functionality.
`Hence, Bose argues that the design with
`the curved front edge was neither litigated
`nor decided in Bose I. Bose next contends
`
`that there has been a change in the legal
`standard of inquiry for functionality of
`trade dress, and hence a changed circum-
`stance, since Bose I. According to Bose,
`the Supreme Court’s decision in Tro,fFi.r
`set forth additional considerations to be
`
`applied in a functionality analysis. Bose
`also argues that
`it presented additional
`evidence, such as the absence of pro-
`motional material that “touts” the utilitari-
`
`an aspects of the mark, which the Board
`allegedly disregarded. According to Bose,
`the additional evidence represents a sig-
`nificant changed circumstance affecting
`the Morton—Norwich functionality analy-
`sis. Finally, Bose argues that because ap-
`plication of res judicata is such a drastic
`remedy, it should be used only in limited
`circumstances, and this is not such a cir-
`cumstance.
`
`

`
`IN RE BOSE CORP.
`Citeas476 F.3d 1331 (Fed. Cir. 2007)
`
`1335
`
`The government responds that the fun-
`damentals for application of the doctrine of
`res judicata are satisfied and any alleged
`changed circumstances do not support
`foreclosing application of the doctrine in
`this case. The government argues that
`the curved front edge is not a new issue
`because in Bose I,
`this court expressly
`stated that the front edges were curved or
`“bowed.” Moreover, the government con-
`tends that the marks are the same but
`
`merely described differently and that a
`difference in description does not repre-
`sent a change in facts. The government
`also argues that the import of TrofF'ix is
`that Bose bears a “heavy burden” in over-
`coming the strong evidence of functionality
`shown in Bose’s expired patents and in
`fact reinforces the functionality finding of
`Bose I. The government finally contends
`that the additional evidence presented by
`Bose is irrelevant because it only demon-
`strates that the promotional material has
`not promoted any utilitarian advantage of
`the curved front edge, but only of the
`design as a whole, and it is the design as a
`whole that is at issue here.
`
`[5] We agree with the government that
`the Board correctly refused to register the
`proposed design on the ground that the
`doctrine of res judicata applies. Under
`the doctrine of res judicata, or claim pre-
`clusion, “a judgment on the merits in a
`prior suit bars a second suit involving the
`same parties or their privies based on the
`same cause of action.” Pcwklane Hosiery
`Co, Inc.
`1). Shore, 439 U.S. 322, 326, 99
`S.Ct. 645, 58 L.Ed.2d 552 (1979). Our
`predecessor court has further stated that
`application of res judicata is not applicable
`where “it is apparent that all the questions
`of fact and law involved .
`.
`.
`[in the second
`proceeding] were not determined in the
`previous proceeding.” Litton Indus, Inc.
`tr. Litroniac, Inc, 577 F.2d 709, 711 (CCPA
`1978) (internal citation omitted).
`
`We have warned that particular “caution
`is warranted in the application of [claim]
`preclusion by the PTO, for the purposes of
`administrative trademark procedures in-
`clude protecting both the consumer public
`and the purveyors.” Mayer/Berkshire
`- Corp.
`1). Berlcshire Fashions,
`Inc, 424
`F.3d 1229, 1234 (Fed.Cir.2005). As a rec-
`ognition of this exercise of caution in ap-
`plying claim preclusion in an ex parte pro-
`ceeding, the Board has stated that “there
`is nothing to preclude an applicant from
`attempting a second time in an ex parte
`proceeding to register a particular mark if
`conditions
`and
`circumstances
`have
`
`changed since the rendering of the adverse
`final decision in the first application.”
`Honeywell, 8 U.S.P.Q.2d at 1601-02; In re
`Oscar Mayer & Co., Inc, 1'71 U.S.P.Q. 571
`(T.T.A.B.1971).
`
`In this case, however, there is no dispute
`that the same applicant, Bose, is involved
`in the prior and present proceedings and
`that there was a prior final judgment on
`the merits, 119.,
`the functionality, of the
`identical design. Thus, the general pre-
`requisites of res judicata have been satis-
`fied. However, Bose contends that three
`facts and circumstances have changed and
`Were not considered in the prior proceed-
`ing such that application of res judicata in
`this appeal is not appropriate:
`(1) Bose’s
`emphasis on the “curved front edge”;
`(2)
`the Supreme Court’s intervening case,
`TrajFia:; and (3) the submission of exten-
`sive promotional materials relating to the
`advantages of Bose’s speaker enclosure.
`
`We do not agree that any of these facts or
`circumstances precludes application of the
`doctrine of res judicata. We address each
`argument in turn.
`
`Bose first argues that this court did not
`explicitly consider the “curved front edge”
`of the Bose design in its functionality anal-
`ysis. We disagree. Contrary to what
`Bose asserts, we expressly acknowledged
`
`

`
`1336
`
`476 FEDERAL REPORTER, 3d SERIES
`
`in Bose I that the “curved front edge” was
`part of the Bose design in our functionality
`analysis. We stated that “Bose candidly
`acknowledges that, except for the substan-
`tially pentagonal shape of the top and bot-
`tom surfaces of its speaker enclosure cre-
`ated by an angled rear portion, there is
`nothing out of the ordinary in the design
`by which the public could or would identify
`the speakers as those of Bose and distin-
`guish them from the goods of others.”
`Bose I, 772 F.2d at 870.
`In a footnote
`elaborating on What we meant by “sub-
`stantially pentagonal shape,” we stated
`that our description of the design as a
`“substantially pentagonal shape” was not a
`precise characterization because the “front
`edge of the subject design is bowed.” Id.
`at n. 3. Thus, we acknowledged that the
`Bose design includes a bowed front edge.
`Although Bose contends
`that “bowed”
`means something different from “curved,”
`we find this quibble over semantics mean-
`ingless because “bowed” is simply another
`term for “curved,” and the picture of the
`design at issue in Bose I depicts the same
`curved edge as the design in the present
`application.
`
`Bose next contends that the Supreme
`Court’s intervening case, TmjFir, repre-
`sents a change in the law and sets forth
`additional considerations in a functionality
`analysis. We do not agree.
`See Vela
`Eagfg, Inc., 278 F.3d at 1276 (“We do not
`understand the Supreme Court’s decision
`in TrctjFia:
`to have altered the Morton-
`Norwich [functionality] ana.lysis.”). Traf-
`Fir does not affect the prior functionality
`analysis in Bose I and provides further
`support for finding that Bose’s design is
`functional. The inquiry in Trq)‘Fi:c was
`the effect of an expired patent on a claim
`of trade dress infringement.
`532 U.S. at
`29, 121 S.Ct. 1255. The Court determined
`that a utility patent “is strong evidence
`that the features claimed therein are func-
`tional” and further that “one who seeks to
`
`establish trade dress protection must carry
`
`the heavy burden" of showing that the fea-
`ture is not functional.”
`Id. at 29-30, 121
`S.Ct. 1255. Thus, this case demonstrates
`that Bose’s utility patent, which expressly
`claims a loudspeaker system with angled
`baffles and a pentagonal cross-section, pro-
`vides “strong evidence” of the functionality
`of Bose’s loudspeaker design.
`
`Bose notes a passage in T'rafFt'm that
`states that “where a manufacturer seeks to
`
`protect arbitrary, incidental, or ornamental
`aspects of features of a product found in
`the patent claims, such as arbitrary curves
`in the legs or an ornamental pattern paint-
`ed on the springs, a different result might
`obtain. There the manufacturer could
`
`perhaps provide that those aspects do not
`serve a purpose within the terms of the
`utility.”
`532 U.S. at 34, 121 S.Ct. 1255.
`According to Bose, TrafFim supports reg-
`istration of the Bose design because the
`curved front edge is an “arbitrary” feature
`of Bose’s design. We do not agree. Bose
`is seeking protection of its entire pentago-
`nal—shaped design, not only its curved
`front edges, as made clear by the picture
`and description of the design in its applica-
`tion for trademark protection.
`If Bose
`were only seeking protection of its curved
`front edge, it would have made that clear
`in its application for registration. Howev-
`er, Bose did not seek protection for only
`the curved front edge, and it further rec-
`ognized and acknowledged that the source-
`indicating purpose of its design was the
`entire pentagonal-shaped design. Thus,
`TrafFt'r does not aid Bose.
`
`Finally, we do not agree that Bose’s
`promotional materials, which Bose con-
`tends do not “tout any utilitarian advan-
`tage of the curved front edges,” represent
`a changed circumstance such that we
`should bar application of the doctrine of
`res judicata. Again, Bose’s design is not
`merely of the curved front edges, but is
`the entire pentagonal-shaped design, of
`which the curved front edges are a part.
`
`

`
`DIPPIN’ DOTS, INC. v. MOSEY
`Cite as 476 F.3d 1337 (Fed. Cir. 2007)
`
`1337
`
`Thus, Bose’s focus on the advertising ma-
`terials, which do not promote the utilitari-
`an aspects of the curved front edge, is not
`relevant to our consideration of the func-
`
`tionality of the design as a whole. As we
`stated in Bose I,
`the promotional adver-
`tisements did clearly promote the function-
`al reason for the overall design. 772 F.2d
`at 871.
`
`CONCLUSION
`
`For the rea.sons stated above, We con-
`clude that application of res judicata was
`appropriate in this case. The parties and
`the marks were the same in both proceed-
`ings, and We had previously determined
`the merits of the claim, ta, the functionali-
`ty of the design.
`In addition, none of the
`alleged changed circumstances Warrants
`barring application of res judicata. We
`therefore affirm.
`
`AFFIRMED.
`
`w
`
`T
`o Em NUMBER SYSTEM
`
`DIPPIN’ DOTS, INC. and Curt D.
`Jones, Plaintiffs—Appellants,
`V.
`
`Thomas R. MOSEY, Dots of Fun,
`International Laser Expressions,
`Inc. (also known as I.L.E., Inc.),
`and
`
`Nicholas Angus,
`Defendant/Counterclaimant—Cross
`
`Appellant,
`and
`
`Frosty Bites Distribution LLC,
`Defendant—Appellee,
`and
`
`Frosty Bites Distributor of Florida, Inc.,
`Frosty Bites Distributor of Georgia,’
`Inc., Frosty Bites of Michigan, Inc., J
`& J Concessions of New Jersey, Inc.,
`
`Frosty Bites Ice Cream Company,
`LLC, Frosty Bites South, Inc., Inter-
`national Association of Amusement
`
`Parks and Attractions, Frosty Bites of
`New York, LLC, and Frosty Bites Ice
`Cream Development, LLC, Defen-
`dents,
`
`V’.
`
`F. Robert Esty, Jr., Barry Jay Bass, Vic-
`tor Bauer, Jack Miller, Daniel Kil-
`coyne, Shawn P. Kilcoyne, and Daniel
`Dopko, Counterclaim Defendants,
`and
`
`Frosty Bites, Inc. (now known as
`Mini Melts, Inc.), Counterclaim
`Defendant-Cross Appellant.
`
`Nos. 2005-1330, 2005-1582.
`
`United States Court of Appeals,
`Federal Circuit.
`
`Feb. 9, 2007.
`
`Rehearing and Rehearing En Banc
`Denied Aprfl 6, 2007.
`
`Background: Holder of patent for the
`process of making a flash—frozen novelty
`ice cream brought action against corpora-
`tions and individuals engaged in either the
`manufacture or distribution of a competing
`product,
`alleging patent
`infringement,
`trade dress and trademark infringement.
`The United States District Court for the
`
`249
`of Georgia,
`Northern District
`F.Supp.2d 1346, granted summary judg-
`ment of noninfringement. After transfer
`and trial, The United States District Court
`for the Northern District of Texas, Thom-
`as W. Thrash, Jr., J., entered judgment
`holding that patent was invalid and unen-
`forceable. The District Court, 2005 WL
`475262, denied patentee’s motion for re-
`consideration of motion for judgment as a
`matter of law vacating jury’s finding of
`Walker Process antitrust violations, paten-
`tee appealed.
`
`Holdings: The Court of "Appeals, Gajarsa,
`Circuit Judge, held that:
`
`

`
`1312
`
`575 FEDERAL REPORTER, 3d SERIES
`
`Assistant Director of Parks
`Department
`
`John Drake
`
`
`Deputy Director of
`'
`.
`Deputy Director of
`Deputy Director of
`
`Revenue Managemgnt
`'
`Recfefltifln Sedwllces
`Stratfigg Mhanagement
`
`and Support
`an . .eve oplnent
`
`Marilyn Boyd Drew
`(position abolished
`(2001-2002)
`‘““““‘¥27- 2°04)
`Herbert Lowe
`
`Michael Bryant
`
`Marvin Biilups (20D4- )
`
`Marvin Billups
`
`W
`
`T
`O EKEY NUMBER SYSTEM
`
`EXERGEN CORPORATION, Plaintiff—-
`Cross Appellant,
`v.
`
`WAL—MART STORES, INC. Hana
`Microelectronics Co., Ltd., and
`CVS Corporation, Defendants,
`and
`
`S.A.A.T. Systems Application of Ad-
`vanced Technology, Ltd. and Daiwa
`Products,
`Inc., Defendants—Appel-
`lants.
`
`Nos. 2006-4491, 2007-1180.
`
`United States Court of Appeals,
`Federal Circuit.
`
`Aug. 4., 2009.
`Background: Owner of three patents re-
`lating to infrared thermometers for meas-
`uring human body temperature brought
`infringement action against competitor.
`Competitor asserted affirmative defenses
`and counterciaims of both noninfringement
`
`and invalidity. After denying cornpetitor’s
`motion to amend, the United States Dis-
`trict Court for the District of Massachu-
`
`setts, Reginaid C. Lindsay, J., upon a jury
`verdict,
`found willful
`infringement and
`awarded lost profit damages to patent
`owner, and then subsequently denied com-
`petitor’s motion for judgment as a matter
`of law (JMOL), and patent owner’s motion
`to alter or amend judgment for an award
`of enhanced damages and prejudgment in-
`terest. Both parties appealed.
`
`Holdings: The Court of Appeals, Linn,
`Circuit Judge, held that:
`
`(1) first patent was invalid as anticipated
`by a prior art patent;
`
`(2) accused device did not directly infringe
`second patent;
`
`(3) competitor did not actively induce in-
`fringement of third patent; and
`(4) competitor failed to plead inequitable
`conduct with requisite particularity.
`
`Affirmed in part, and reversed in part.
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`
`EXERGEN CORP. v. WAL—MART STORES, INC.
`Citea3575 F.3d 1312 (Fed. Cir. 2009)
`
`1313
`
`1. Courts @w96(7)
`
`Court of Appeals for the Federal Cir-
`cuit reviews the denial of a motion for
`
`judgment as a matter of law (JMOL) un-
`der the law of the regional circuit.
`
`2. Federal Courts @5776
`
`the district
`In the First Circuit,
`court’s decision to grant or deny a motion
`for judgment as a matter of law (JMOL) is
`reviewed de novo.
`
`3. Patents @=°314(5), 324.5501, 5)
`
`Anticipation and infringement of a
`patent are both questions of fact, which,
`when found by a jury, are generally re-
`viewed for substantial evidence.
`
`4. Courts ©‘-796(7)
`The denial of a motion to amend a
`
`pleading is a procedurai matter governed
`by the law of the regional circuit. Fed.
`Rules Civ.Proc.Ru1e 15(a), 28 U.S.C.A.
`
`5. Federal Courts @817
`
`The First Circuit reviews the denial of
`a motion to amend for an abuse of discre-
`
`Fed.Rules Civ.Proc.Rule 15(a), 28
`tion.
`U.S.C.A.
`
`6. Courts ©:°96('7)
`
`Whether inequitable conduct in a pat-
`ent infringement action has been pleaded
`with requisite particularity is a question
`governed by Federal Circuit
`law. Fed.
`Rules Civ.Proc.Rule 9(b), 28 U.S.C.A.
`
`7. Patents <‘3=’66(1.20)
`
`Patent relating to a radiation detector
`probe for measuring human body tempera-
`ture Was invalid as anticipated by prior art
`patent disclosing a method and apparatus
`for measuring the internal temperature of
`a patient’s body by sensing infrared emis-
`sions in the external ear canal, despite
`patent owner’s arguments that prior art
`patent detected radiation from probe unit
`in addition to radiation detected from the
`
`patient, and that prior art patent detected
`radiation only from a single spot, not from
`“multiple areas”;
`in reciting its claim limi-
`
`tations, patent relating to the radiation
`detector probe used the term “compris-
`ing,” which meant including but not limited
`to, and thus prior art patent was not re-
`quired to detect radiation solely from bio-
`logical tissue, and prior art patent inher-
`ently disclosed detection of radiation from
`“multiple areas,” since a user would neces-
`sarily detect radiation from the patient’s
`face, outer ear, and ear canal While probe
`was inserted into the ear canal.
`
`See publication Words and Phras-
`es for other judicial constructions
`and definitions.
`
`8. Patents @720)
`
`To anticipate a patent claim, a single
`prior art reference must expressly or in-
`herently disclose each claim limitation.
`
`9. Patents 35226.6, 229
`
`infringement of a patent re-
`Direct
`quires a party to perform each and every
`step or element of a claimed method or
`product.
`
`10. Patents @=~=>259(1)
`
`Active inducement of a patent re-
`quires the patentee to prove first
`that
`there has been direct infringement, and
`second that the alleged infringer knowing-
`ly induced infringement and possessed
`specific intent to encourage another’s in-
`fiingement.
`
`11. Patents ®=»235(2)
`
`Accused device, which targeted a pa-
`tients forehead area for measurement,
`possessed a display for providing a reading
`of oral temperature rather than the temp-
`erature of the temporal artery beneath the
`skin of the forehead, and thus the device
`did not possess “a display for providing an
`indication of the internal temperature,” as
`required to directly infringe patent relat-
`ing to a radiation detector measuring tym-
`panic temperature with improved accura-
`cy.
`
`

`
`1314
`
`575 FEDERAL REPORTER, 3d SERIES
`
`12. Patents @:v314(5)
`Once a district court has construed
`
`the relevant claim terms of a patent, and
`unless altered by the district court, then
`that legal determination governs for pur-
`poses of trial; no party may contradict the
`court’s construction to a jury.
`
`13. Patents <s=»259(1)
`
`Scanning within an oval pattern in the
`temple region on one side of the forehead,
`as directed by instructions of accused ther-
`mometer, did not meet literal requirement
`of claim of patent relating to infrared ther-
`mometer that detected temperature of the
`forehead directly over the superficial tem-
`poral artery of scanning “across a fore-
`head,” so as to support patent owner's
`claim that manufacturer of accused ther-
`
`mometer actively induced infringement of
`that patent claim.
`
`14. Patents e==>259(1)
`Accused thermometer measured the
`
`surface temperature of the skin covering
`the temporal artery, rather than the temp-
`erature of the temporal artery beneath the
`skin, as required by claim of patent relat-
`ing to infrared thermometer that detected
`temperature of the forehead directly over
`the superficial temporal artery, and thus,
`in the absence of direct infringement, man-
`ufacturer of accused thermometer was not
`
`liable for actively inducing infringement of
`that patent claim.
`
`15. Federal Civil Procedure @636
`
`in patent cases,
`Inequitable conduct
`while a broader concept than fraud, must
`be pled with particularity under the Fed-
`eral Rules of Civil Procedure; a pleading
`that simply avers the substantive elements
`of
`inequitable conduct, without setting
`forth the particularized factual bases for
`the allegation, does not satisfy this re-
`quirement. Fed.Rules Civ.Proc.Ru1e 9(1)),
`28 U.S.C.A.
`
`16. Patents @997
`
`The substantive elements of inequita-
`ble conduct in a patent case are:
`(1) an
`individual associated with the filing and
`prosecution of a patent application made
`an affirmative misrepresentation of a ma-
`terial fact, failed to disclose material infor-
`mation, or submitted false material infor-
`mation; and (2) the individual did so with a
`specific intent to deceive the Patent and
`Trademark Office (PTO).
`
`17. Federal Civil Procedure @3636
`The relevant “conditions of mind” for
`
`in patent
`pleading inequitable conduct
`cases with requisite particular include:
`(1)
`knowledge of the withheld material infor-
`mation or of the falsity of the material
`misrepresentation, and (2) specific intent
`to deceive the Patent and Trademark Of-
`
`fice (PTO). Fed.Rules Civ.Proc.Rule 9(b),
`28 U.S.C.A.
`
`18. Federal Civil Procedure @2636
`
`To plead the “circumstances” of ineq-
`uitable conduct in patent cases with the
`requisite particularity under Federal Rules
`of Civil Procedure, the pleading must iden-
`tify the specific who, what, when, where,
`and how of the material misrepresentation
`or omission committed before the Patent
`
`and Trademark Office (PTO); moreover,
`although “knowledge” and “intent” may be
`averred generally, the pleading must in-
`clude sufficient allegations of underlying
`facts from which a court m