The Intellectual Property Forum

fb:  Sorry, I don't unerstand ur post.  IMHO, the document you paid for is yours, lock, stock, and barrel.  Tact? u mean "strategy"?  Again IMHO U paid for that too.  Check the rules of professional conduct in your state re; who "owns" documents drafted by an atorney. 

Eric:  This is not a formal opinion of counsel.  I (or anyone) would need to know gory details.  If all you say is "Cowboys' fans click here" ; Patriots' click here", etc. you are probably OK.  But are you competing with net sites of the NFL or individual teams?  Tread carefully wrt what else you display.  I've herad counsel for NFL in presentations.  They defend their marks like provebial "junkyard dogs", and have big litigation budgets.   

Perhaps I'm misunderstanding you ... but as a practical matter, claim construction is often dispositive of infringement.  No debate from me on that point.  Prosecution history, when in evidence (when is it ever not?) can inform construction (Phillips?)

So while the court can't write out "top surface," if the court narrowly interprets "top surface" to exclude the accused infringer, seems like the effect is the same.  Per above, 100% in agreement.  I just missed / overlooked / simply did not read the changes to the “facts”   

"Isn't that a disclaimer of reading the claimed top surface to cover the [tip of] a sharp object"?

Karen:  I guess I missed that, or posts crossed.  Yes, IMO that’s a decent argument-based estoppel argument that a sharp point is not a top surface, as that term is used in the claims. 

"So once you argue "prior art doesn't teach claimed element X" at the BPAI, then fail to appeal to Fed Cir, you may be estopped from bringing up the same argument in litigation?"  If you lost the point and fail to appeal, yea, I’d argue that if it had a fair hearing and was somehow central to Board's decision.  But wait a minute! according to the OP, applicant (now a patentee) came away from the Office (Board) with allowed claims that include element / limitation X and with which they were satisfied.  How? Why?  The agency found, as a matter of fact, that PA disclosed X.  There must have been other arguments for patentability of the claims reciting X, like no articuable reason to combine?  But applicant failed to appeal that there was no substantial evidence to support the finding that X was taught. 

"If you make the same argument in prosecution, but don't appeal, can this give rise to estoppel?"  Karen, what’s the procedural posture here?  Examiner says PA discloses X and you don’t argue, accept arguendo that X may be disclosed, but prevail anyway on say, no motivation / hindsight reconstruction.  Claims reciting X get allowed w/ no need to appeal to the Board.  The “fact” of whether X was disclosed was not finally determined by the agency and was never even argued by applicant.  No final agency determination to appeal from.  I say I’d be free to raise it, but I prevailed on other grounds anyway.

Getting back to the OP.  The questions is deceptively simple; is each and every limitation of the claim, A, B. C. D. and X, whether it has patentable weight or not, found in the accused device, literally or equivalently (you noted how equivalents could get cabined).  A court can’t write X out of the claim whether it has "patentable weight" or not.  Construction of “X” is a different issue. 

antiques67:  To make Zonath’s post ruthlessly blunt:  a soft drink is a soft drink, a dress is a dress, tableware is tableware.  It doesn’t matter if the soft drink tastes and is packaged the way it did in the 50s.  It doesn’t matter if the dress or tableware looks like my long-since-deceased grandmother’s. 

You wrote: “that's what I can't understand, does their trademark extend to old/used items that they are no longer making?".  The short answer is probably yes.  The emphasis is, per Zonath, is on goods (soft drinks, dresses, tableware), not particular individual items or the date they were actually manufactured and sold.  If the market for “retro” tableware gets hot, “Wedgewood” might indeed want into the market (“zone of expansion” alluded to be others).  Back in the 70s, my wife was buying all this tableware (from “Pfalsgraf?) that looked like it could have belonged to GREAT-grandmother. 

What should I understand the difference, if any, between “old” and “used” to be?  If it is just “old looking”, i.e. having a retro design, it’s the same class of goods and TM infringement could easily lie.  If the goods are in fact “previously owned”, there is usually nothing wrong with saying “I sell used Coke(R) bottles “ or “used / refurbished Xerox(R) machines” (but note that R in the circle), or with offering a used Honda, no (R), for sale in the appropriate section of the NYT. 

If I recall, your concern is with your domain name, not an ad or a label on a good.  You noted you understand the “likelihood of confusion”.  Well, is there one?  I don’t know.  But what I do know is that litigation on the issue can get expensive (expert opinions, consumer surveys, etc.)  The analysis is fact specific, and your “intentions”, however sincere, are irrelevant to the issue of confusion.  Chevrolet dealers sell used cars. But vintage (i.e ’56 BelAir Nomad wagon) Chevys?  My “vintagechevys.com” might not create confusion (were Chevy a TM).  IMO lesser likelihood of confusion.  But “vintagewedgdewoodchina.com” ?  Hmm, is it previously owned, or a genuine new “re-issue” of grandma’s pattern? 

If you are selling previously owned (used) stuff, your lawyer can probably work out a deal.  If you are selling newly-manufactured recreations, expect a tougher fight, depending on the “goods” involved.  Good luck. 

2.  37 C.F.R. 1.134 -1.136 relate to maintaing the pendency of a patent application.  1.134 and 1.135 collecitvely say that the PTO can set a shortened statutory period for reply to an office action, and failure to reply within that shortened statutory period or the period set by 1.136 will result in abandonment of the application.  1.136 says that the shortened statutory period may be extended by the payment of government fees.  Thus, it follows that if an office action is pending in a parent application, and the shortened statutory time period for reply has elapsed, payment of an extension fee under 1.136 is required to maintain copendency of the parent if an applicant wishes to file a continuing application at that time.  Why? Because per 1.135, failure to pay that extension fee means that the application will be abandoned as of the expiration of the shortened statutory period set by the Office.
 
Well articulated Klav!  IMO "case closed".  Thanks.  One for the files.  Wish I knew how to save this string for future citation here bcs the question will come-up again (and again, and again ...)

dab2b:  "Can the Patentee now assert that items having X fall within the scope of the claim?”  IMO: Sure! Patentee can now assert that articles meeting all of the limitations of the issued claim(s), including X, infringe literally or by equivalents.  Per Karen, whatever else you said about X might cabin the range of equivalents of X. (Did you argue that a widget is not a blodget?).  X is still a limitation of the issued claim(s). 

All you (apparently) did is argue the fact of what the prior art discloses, and lost.  This is not even close to classical “argument based estoppel” as I understand it.  Because you did not appeal the decision of the Board, the DC may consider that you “waived” the issue of whether the prior art of record teaches X if your defendant asserts an invalidity defense - but you still have your presumption of validity.