New Orleans Snowball Fight Now Subject of Petition for Certiorari

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By Tony Dutra

Dec. 10 — A 28-year battle between competitors in the snowball—shaved ice, snow cones, etc., depending on where you live—machine and flavorings industry in New Orleans is the subject of a petition for writ of certiorari filed Dec. 1 (SnoWizard Holdings, Inc. v. S. Snow Mfg. Co., U.S., No. 14-684, review sought 12/1/14).

SnoWizard Holdings Inc. is appealing two aspects of a U.S. Court of Appeals for the Federal Circuit decision that left it without a patent infringement claim against Southern Snow Manufacturing Co. because of invalidity under the on-sale bar of 35 U.S.C. §102(b), and dueling trademark infringement awards against each side of about $10,000 (S. Snow Mfg. Co. v. SnoWizard Holdings, Inc., 567 Fed. Appx. 945 (Fed. Cir. 2014)).

The questions presented in the cert petition are:

1. Whether the United States Court of Appeals for the Federal Circuit misapplied this Court’s holding in Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 119 S.Ct. 304, 142 L.Ed.2d 261 (1998) by conflating the ‘ready for patenting’ standard with that of the on-sale bar by concluding that non-binding price quotations for two component parts constituted a sale of the “claimed” invention simply because one skilled in the art could infer the claimed invention from the non-binding price quotations.

2. Whether the United States Court of Appeals for the Federal Circuit erred in concluding that the on-sale bar applied because one skilled in the art could infer the claimed invention from the alleged invalidating activity even when absolutely no evidence whatsoever from one skilled in the art as to what the activity suggests was of record.

3. Whether the United States Court of Appeals for the Federal Circuit erred by applying the on-sale bar to the receipt of non-binding price quotations for two component parts of claimed invention without any consideration whatsoever of multiple dependent claims, some of which clearly define a complete ice shaving machine.

4. Whether the United States Court of Appeals for the Federal Circuit erred by concluding that Petitioners infringed an alleged trademark of one of the parties when all parties judicially confessed that the trademark was generic.

 

The on-sale bar issue arose because Claim 1 of SnoWizard's U.S. Patent No. 7,536,871 is drawn to a “cam assembly” for an ice maker with two parts, and it was clear that SnoWizard had commissioned manufacture of 400 units of each of the two parts more than one year before the patent application date. SnoWizard argued that the preamble of the claim requires assembly, which did not happen until after the critical date.

The court rejected that argument because the preamble did not limit the claim and further because, “It is not necessary for the assemblies or the part to be ready to be put into operation for the on-sale bar to apply.”

The specific issue of the fourth question presented was the appeals court's differentiation of terms—for example, orchid cream vanilla—that were generic as flavor concentrates but not generic for names of snowballs.

Jack Edward Morris of Metairie, La., filed the petition. A response is due Jan. 7. Mark E. Andrews of Andrews Arts & Sciences Law LLC, New Orleans, represented Southern Snow before the Federal Circuit.

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Tom P. Taylor at ttaylor@bna.com

Full text of the petition at http://pub.bna.com/ptcj/140684petition.pdf.