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By Joel I. Rosenblatt, Attorney at Law
Mr. Rosenblatt, a Registered Patent Attorney with the U.S. Patent and Trademark Office, practices in the commercial law of technology and the Internet and the law of patents, trademarks, and copyrights. He is a Florida Supreme Court Certified Mediator, a Florida Bar Approved Mediator for Computer Law Disputes, certified as a Mediator and Arbitrator for the U.S. District Court for the Middle District of Florida and is admitted to all U.S. District Courts for Florida. Any questions or comments may be directed to Mr. Rosenblatt at (321) 727-7626; FAX: 727-8209 or by email to jirosenblatt@earthlink.net
SURPRISE – SURPRISE
There are good and bad surprises, as in “taken unaware of what follows.” Of course, by the nature of a surprise, we never know what the surprise is until it happens. We don’t even know its coming. That’s why it’s a surprise. Attorneys and engineers, don’t like surprises, as their conservative nature prefers predictability, abhorring a potentially unknown and disastrous outcome. That’s the reason for pretrial discovery and the procedural rule limiting amendments, to prevent what has become known as “trial by ambush.” In engineering practice, reliance is placed on predictably repeatable results produced by following a tried and inductively proven and scientifically accepted theory. As an engineer and an attorney (as in patent attorney), I doubly abhor surprises, as in most cases I found it does lead to disaster. As my father always said, surprise is likely to come from haste, as the latter leads to mistakes, missed opportunities, misdirection, and to the inevitable waste.
Which brings me to this month’s tale of surprise, fitting for April, as in April Fools Day. There are two stories making up our “tales,” each having a different lesson, one in fact, one in legal theory, but each important. As each is fact intensive, a careful reading is recommended for the full benefit of the lesson. Those preferring an abstract, may leave with the thought that time spent in review usually pays in avoiding wasted time in correction. While this advice is opposite to what I was told when preparing for the bar examination, that is to stick with the first answer, always, it is what I followed, time permitting, in my engineering exams.
Our first story involves a patent attorney who, may have failed to take an extra moment to consider the plain meaning of his words in a patent claim. It is a case that may be made more understandable when we consider how our prejudices influence our reasoning, by inserting as fact, assumptions we have come to mistakenly believe as truths. And so it is with the patent attorney, when struggling to put an invention into the strict legal language of a final patent claim, develops a prejudice to what has been first written without considering it from the opposing perspective. While it happens to all of us, expecting the world to see us and our creations as we happen to view them, prejudice is a doubly potential trap for the patent attorney who first writes claims to an invention before he has a chance to test his understanding of the inventive concept by writing the full description, describing how to make and use, and the best mode for practicing. the invention .
And so it was with a simple invention, one for a process of producing a semi finished dough product, as in cake, which may be taken home in a frozen state and cooked into an edible finished baked product. The invention is in the way the semifinished dough is prepared by applying a layer of shortening flakes between the dough, with a light batter over, so precooking sets the batter and melts the shortening flakes, forming pin holes or air cells in the batter and at the surface of the soon to be frozen dough. Upon finishing, when the precooked frozen product is popped into the home oven, these pinholes or air cells form a porous surface and permit the batter to be quickly heated and browned, resulting in a pastry having a light, flaky, crispy texture. While that’s all the patent said about the finished product, it described the baking process as quickly heating the product to a temperature in the range of about 400 degrees F. to 850 degrees F. for a period of time ranging from about 10 seconds to 5 minutes, depending upon the type of dough being processed and the temperature at which the dough is introduced into the oven. It sounds easy enough and the patent gives an example where the dough product is placed in a multi-layered convection oven and baked to a temperature of 400 degrees F. to 850 degrees F.
The patent claim, possibly written before the attorney wrote the description of the invention, recites heating the dough to a temperature in the range of about 400° F. to 850° F. for a period of time ranging from about 10 seconds to 5 minutes.” The underling has been added. For those who doubt the plain language of the claim, I assure you , it means exactly what it says. The dough is to be heated to the specified temperature. Nothing in the claim even remotely suggests that what is to be heated is not the dough but the air inside the oven. Indeed, the claim does not even refer to an oven.
The problem found in the claim, probably when it was read for infringement by a competitor’s product, is that if the batter_coated dough is heated to a temperature range of 400° F. to 850° F., as the claim instructs, it would be burned to a crisp, instead of producing a "dough products suitable for freezing and finish cooking to a light, flaky, crispy texture.” The patentee, however, mistakenly misread its own claim, as "heating the . . . dough at a temperature in the range of," to the oven rather than the dough being heated to that temperature, as erroneously recited in the errant claim.
A patentee can act as his own lexicographer, even turning the plain meaning of words upside down, and the court is stuck with that or any other unorthodox patentee definitions. In this case, possibly in a rush to completion, the attorney thinking everyone would understand what he understood, that is to heat the oven and not the dough at the elevated temperature, made a mistake that was easily curable and could have been prevented by explaining how to make and use the invention in the patent specification’s required description of the invention, before attempting to first write the claims, as the claims, by law, must follow the specification,
Our second “surprise” tale is less of fact and more of theory, legal theory, that is. First a question. WHATABURGER or WHAT-A-BURGER, what’s the difference? That’s a trick question, as the answer is not what’s in the burger but what consumers are eating the burgers, as I will explain.
WHATABURGER (WAB) was a registered service mark, owned by a franchiser with franchises in Texas and through out the southern states but not in the State of Virginia. However, there was a WHAT-A-BURGER (W-A-B) in Virginia, discovered by a traveling executive of WAB, and who initially thought the W-A-B was a legitimate WAB franchise. While WAB by its federal registration, had an incontestable right to the service mark in “commerce,” (meaning nationwide), that right was subject to a concurrent use by WA-B, if initially prior to the date of the WAB registration. Unfortunately for W-A-B, it wasn’t. However, to the surprise of WAB, W-A-B, the alleged infringer, produced some correspondence between W-A-B and the predecessor in title of WAB, showing WAB’s predecessor had some knowledge of the operation of W-A-B, leaving, W-A-B, the alleged infringer with a defense of laches or undue delay which in turn caused prejudice to the other party. As an action to enforce a service mark is an equity action, it requires that an injured party not be allowed to sleep on its rights when it creates prejudice to the offending party. In this case W-A-B, claimed it was acting reasonably in understanding from the WAB inaction, a disinterest in pursuing its rights, and accordingly continued to invest in the business and build goodwill in its Virginia territory. As WAB knew of W-A-B and W-A-B knew WAB knew it, W-A-B believed it had a right to continue to use the WAB mark, as it had dome so with impunity.
While W-A-B hastened to plead what it thought was an infallible defense, it might have considered more time better spent in researching all of the relevant case law. And so it was not without waste that the full equitable doctrine of laches came as a surprise to W-A-B, as it was instructed by the more learned WAB attorney that the equitable defense of laches requires in addition to knowledge of the infringement and delay, that the delay be unreasonable as in the owner of the mark unreasonably delay seeking judicial redress. Even though WAB knew and did not take any action to stop W-A-B, was the WAB delay reasonable under the circumstances?
Because WAB was not in Virginia, the operating area of W-A-B and the only territory where confusion between WAB and W-A-B could arise, a right to sue for trademark infringement had not ripened, a “ripened controversy,” a necessary ingredient for trial. Although the registration to WAB gave it a nationwide right of priority, no right to sue for trademark infringement arises unless or until there is a real likelihood of confusion by W-A-B. If WAB opened a franchise in the Virginia operating territory of W-A-B or WAB demonstrated a real intent to enter into the W-A-B territory in Virginia, then the case for a real likelihood of confusion of the consumers in the W-A-B territory could be made and an action for injunction maintained.
As WAB had not entered in the W-A-B territory or showed any intent to expand into the W-A-B Virginia territory, to surprise of W-A-B, the court found WAB’s delay was reasonable under the circumstances, costing W-A-B what it thought was its ironclad defense to the charge of infringement. The hard rule is do not use another’s registered mark.
When we can learn from these intensely factual tales is to avoid surprises 1) always insist your patent attorney first prepare a written description of the invention and be able to repeat back to you, the same description and in the exact same terms, as you understand it, and 2) read the statues and all of the relevant case law because if there is a legal theory adverse to your case that you may not be aware of, you can bet your adversary will.
Stay Tuned for Next Month's Article!
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Joel I. Rosenblatt is state Supreme Court certified and available for mediation and arbitration. He practices as a registered patent attorney in patents, trademarks and copyrights. Specific areas of practice include commercial law related to electronics, computers, data processing, telecommunications, materials and mechanical engineering, the Internet and entertainment and in the development and licensing of technology and creative works. As Intellectual Property and Licensing Counsel for Fortune 200 corporations, he has acquired numerous patents for electronics and computer related inventions, and has prepared and negotiated design, development and distribution agreements for software, telecommunications, electronic technology, and creative works. As a logistics attorney, he has provided counsel and representation in the field of customs, logistics services, and in loss and damage claims.
Mr. Rosenblatt is available for mediation and arbitration in the fields of general law, intellectual property, entertainment, and technology law, and in logistics law and loss and damage claims. Emphasizing technology and the arts, he serves a wide range of intellectual property and commercial needs for individual and business clients. Mr. Rosenblatt, as a senior level attorney can provide clients easy access and quick turnaround.
Education and Professional Affiliations:
Mr. Rosenblatt holds a Bachelor of Electrical Engineering Degree from the New York Polytechnic University, an MBA from the Wharton School of the University of Pennsylvania, and a JD from the Catholic University of America Law School.
Mr. Rosenblatt is a Registered Patent Attorney with the U.S. Patent and Trademark Office and a member of the Florida and New York State Bars. Admitted to practice in the Court of Appeals for the Federal Circuit, the United States Court of Appeals for the 11th Circuit, the United States Court of International Trade and the United States District Courts for the Northern, Southern, and Middle Districts of Florida. Florida Supreme Court Certified for Circuit Court Mediation and approved by the Florida Bar as a Mediator of Computer Law Disputes. Mr. Rosenblatt has completed Florida Supreme Court Certified Arbitration Training and is certified as a Mediator and Arbitrator in the United States District Court for the Middle District of Florida. jirosenblatt@earthlink.net . |
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