Patent Law Blog (Patently-O)

TI Group Automotive Systems v. VDO

TI Group Automotive Systems v. VDO (Fed. Cir. June 30, 2004) [PDF].

TI Group is an automotive supplier that makes fuel tanks, fuel pump assemblies, and complete fuel tank systems. (U.S. Patent 4,860,714). TI Group has sold over thirty million fuel pump assemblies that embody the ’714 patent. VDO began selling an assembly that "were essentially drop-in replacements."

After a jury verdict of willful infringement, the district court granted a JMOL in VDO's favor based on non-infringement but denied VDO's JMOL motion for invalidity.

Because we affirm some of the district court’s claim constructions, and because as to those limitations TI Group points to no evidence supporting the jury’s finding of infringement, we affirm the district court’s grant of VDO’s JMOL motion with respect to infringement. However, because we have broadened a number of the district court’s claim constructions, thus affecting the invalidity analysis, we vacate the district court’s denial of VDO’s JMOL motion with respect to invalidity and remand that issue for further proceedings consistent with this opinion.

Competitive Tech. v. Fujitsu: No Jurisdiction for Plasma Screen Appeal

COMPETITIVE TECHNOLOGIES, INC., and UNIVERSITY OF ILLINOIS v. FUJITSU LIMITED and FUJITSU HITACHI PLASMA DISPLAY LIMITED (Fed. Cir. June 30, 2004).

In a patent infringement suit against Fujitsu over plasma screen technologies, the University of Illinois sought to have some of Fujitsu's counterclaims dismissed on Eleventh Amendment sovereign immunity grounds. (U.S. Patent 4,866,349 and 5,081,400). The Northern District of California court denied the University's motion to dismiss the claims. U of I appealed.

Without reaching a decision on the merits, the Federal Circuit (DYK, MAYER, GAJARSA) dismissed the University's appeal for lack of appellate jurisdiction.

The judgment of the district court is not final under 28 U.S.C. § 1291, and the district court has not issued the certificate required by either Federal Rule of Civil Procedure 54(b) or 28 U.S.C. § 1292(b).

The appellate panel found that the district court's decision on the issue of sovereign immunity did not “conclusively determine” that question. Thus, the case did not fall under the limited Cohen exception that could have created a jurisdictional basis.

EFF hopes to "bust" these 10 patents

The EFF has released the list of patents that they plan to challenge as part of their "patent busting project." According to Wired,

As part of its Patent Busting Project, the EFF in mid-June began soliciting the public for submissions of patents that were both potentially invalid and used to stifle online innovation. The organization received nearly 200 suggestions, 10 of which it will now formally ask the U.S. Patent and Trademark Office to re-examine.

Acacia Technologies tops the list of offenders. Recently, Acacia sued a number of media technology companies for infringement of its patents that allegedly cover digital streaming technology. (Read more about Acacia here).

New Patent: Bicycle Passenger Seat

Freddie Guynn of Laramie, Wyoming has patented a new type of child bicycle seat. (U.S. Patent 6,010,140). According to the Laramie Boomerang:

The bike seat sits on the bar directly behind the handlebars of the bike. Foot pegs are set above the brake and the child’s feet rest away from the spokes.

Ride safely!

Patent Office Releases Public Record Processing Times

The USPTO’s Office of Public Records has released a report showing processing times for various document requests:

Document Services	Goal	Actual Processing Time
Certified Documents
Patent Applications-As-Filed	7 days	5 days
Patent Related File Wrappers	25 days	29 days
Patent Copies	10 days	3 days
Patent Assignments	10 days	5 days
Trademark Applications-As-Filed	7 days	4 days
Trademark Related File Wrappers	25 days	9 days
Trademark Assignments	10 days	5 days
Trademark Registrations, Expedited	5 days	3 days
Trademark Registrations, Regular	14 days	4 days
Uncertified Documents
Patent Copies	5 days	1 day
Plant Patents	5 days	1 day
Patent Assignments	10 days	3 days
Patent Related File Wrappers	25 days	47 days
Trademark Copies	5 days	3 days
Trademark Assignments	10 days	3 days
Trademark Related File Wrappers	25 days	7 days

 Link.

Patent Infringement: No summary judgment of anticipation based on prepared model

NYSTROM v. TREX Co. (Fed. Cir. June 28, 2004).

In an appeal of a summary judgment in a patent infringement case involving specially manufactured boards for decking, the Federal Circuit reversed and remanded. (US Patent 5,474,831).

Because the district court erred in its constructions of the claim terms “board,” “manufactured to have,” and “convex top surface,” the district court’s grant of summary judgment of non-infringement of claims 1-15 of the ’831 patent is reversed.

The panel also reversed the district court's judgment of invalidity.

The district court’s acceptance of TREX’s invalidity arguments based on models made from drawings contained in the Zagelmeyer patent was incorrect. The basis of the district court’s summary judgment of invalidity was a model that TREX developed based on that reference, and not on drawing dimensions or a written disclosure of dimensions contained directly in the patent itself. Under the principles set forth in our prior cases, the speculative modeling premised on unstated assumptions in prior art patent drawings cannot be the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art. Thus, we conclude that the district court erred in granting summary judgment of invalidity based on TREX’s models.

In dissent, Judge Gajarsa found that the term "board" should be limited to wooden boards.

Patent Office to Increase E-mail Communication

The USPTO's office of enrollment and discipline (OED) plans to maintain a list of up to three e-mail addresses for each registered practitioner. 37 C.F.R. § 11.11 has been revised to provide for up to three e-mail addresses where the practitioner receives e-mail.

Computerized Patent Bar Exam

The patent office has adopted final rules for the computerized patent registration examination. (69 FR 35428).

The patent bar has a historically low passing rate. Thus, one interesting aspect of the new rules is that those who fail the examination will be allowed to re-take the exam within thirty days rather than waiting six months, as has previously been the case.

Providing the examination in this manner will benefit persons seeking registration by enabling them to apply at any time, schedule the examination at a location and date convenient to them, and receive their results more quickly.

Registration for the examination is now available here.

Patent Lawyer

The Association of Patent Law Firms (APLF) recently published the inaugural edition of The Patent Lawyer. The magazine is available online (PDF) and has the rare combination of interesting topics and excellent writing.

This edition includes articles on patenting issues related to nanotechnology inventions; reexamination strategies; as well as EU piracy issues. There is also a profile article on the firm, McDonnell Boehnen Hulbert & Berghoff LLP (MBHB). The four page article, entitled "A Path of Its Own: Chicago's McDonnell Boehnen Rewrote the Management Rules," chronicles MBHB's eight year rise from a small start-up firm to a major player in intellectual property legal services. (pp. 10-13).

Does your company have intellectual property issues and need the advice of a patent attorney?

No trademark for "Patents.com"

IN RE OPPEDAHL & LARSON LLP (Fed. Cir. June 25, 2004).

Oppedahl & Larson is a small Colorado firm that maintains an expansive website at www.patents.com. The Federal Circuit has affirmed the Trademark Trial and Appeal Board's (TTAB) refusal to register the mark "patents.com" to the firm. The court found that the proposed mark is "merely descriptive" and thus not eligible for trademark protection.

Hockerson-Halberstadt v. JSP and FUBU

Hockerson-Halberstadt, Inc. v. JSP Footware, Inc. and FUBU The Collection (Fed. Cir. June 23, 2004) (not citable as precedent)

(RADER) The appellate court reversed a summary judgement against the patentee, holding that the plaintiff had met its section 287 notice obligation by sending a letter to a third party who was thought to control manufacture of the patented stabilized athletic shoes. (U.S. Patent 4,322,896).

In dissent, MICHEL argued that the section 287 notice requirement should not be satisfied by giving notice to a third party that has no corporate relationship with the defendant except for a trademark license.

How pharmaceutical patent rights affect access to medicine in poor nations

A new article published in Health Affairs studies the "relationship between patents and access to essential medicines." Cambridge researcher Amir Attaran found that patenting is rare for the vast majority of products on the World Health Organization's (WHO) list of essential medicines.

Only seventeen essential medicines are patentable, although usually not actually patented, so that overall patent incidence is low (1.4 percent) and concentrated in larger markets.

Attaran argues that his results show that the policy dialogue relating to patent protection in developing countries is often based on mistaken premises.

[P]atents very infrequently block access to generic versions of essential medicines. For the sixty-five countries we studied, where the majority of people in the developing world live, patents and patent applications exist for essential medicines 1.4 percent of the time (300 instances out of 20,735 combinations of essential medicines and countries). However, this overstates the frequency with which patents totally block access to generics, because it is only a subset of patents that are absolutely fundamental and that generic manufacturers can never circumvent (normally, a patent on the active pharmaceutical ingredient, and for medicines containing two such ingredients, a patent on their co-formulation). By this standard, there are 186 fundamental patents or applications, or 0.9 percent of the total. Thus, there are no patent barriers to accessing generic essential medicines in 98.6 percent of the cases we studied, which we stress is an overall probability and not prognostic in any specific case.

Update from Amir Attaran: I think you must also mention that with only 17 patents at issue, the pharma industry lacks vision on how to remove the apprehension that patents have negatively affected and are negatively affecting patients’ ability to access medicines in these few cases. Most of the patented meds are for AIDS, and so they attract disproportionate attention.

Patent Term Adjustment: Overlapping Delays

The USPTO has published a further explanation of the patent term adjustment rules in the Federal Register. (69 FR 34283). The purpose of the explanation is to clear up confusion regarding "overlapping" delays under 35 U.S.C. 154(b)(2)(A).

Specifically, the Office has consistently taken [and continues to take] the position that if an application is entitled to an adjustment under the three-year pendency provision of 35 U.S.C. 154(b)(1)(B), the entire period during which the application was pending before the Office (except for periods excluded under 35 U.S.C. 154(b)(1)(B)(i)-(iii)), and not just the period beginning three years after the actual filing date of the application, is the relevant period under 35 U.S.C. 154(b)(1)(B) in determining whether periods of delay ‘‘overlap’’ under 35 U.S.C. 154(b)(2)(A).

Microsoft patents human circuit

Microsoft has patented a network that uses the "body of a living creature" as a data bus and power supply for communication between two electronic devices. (U.S. Patent 6,754,472).

According to the abstract,

Methods and apparatus for distributing power and data to devices coupled to the human body are described. The human body is used as a conductive medium, e.g., a bus, over which power and/or data is distributed.

The patent includes the use of pulsed AC or DC to power miniature wearable devices.

100 Hz signal may be used to power a first device while a 150 Hz signal may be used to power a second device. Digital data and/or other information signals, e.g., audio signals, can be modulated on the power signal using frequency and/or amplitude modulation techniques.

For instance, a miniature speaker may be located within an earring while an audio input microphone may be attached to a bracelet.

(The drawing is from the face of the patent).

ProstaScint (R) Patent Noninfringement Holding Reversed

Goldenberg and Immunomedics, Inc v. Cytogen, Inc. and C.R. Bard, Inc. (Fed. Cir. June 23, 2004)

(GAJARSA) In an appeal of a summary judgment of noninfringement, the Federal Circuit upheld the district court's claim construction and summary judgment of no literal infringement. However, the appellate panel reversed the lower court's summary judgment of noninfringement based on the doctrine of equivalents (DOE).

The patent at suit issued in 1984 and involved tumor localization and antigen therapy. (U.S. Patent 4,460,559). Cytogen and Bard's ProstaScint (R) products (used to image the extent and location of prostate cancer) allegedly infringe this and other patents held by the plaintiffs.

Holding:

Summary judgment of noninfringement under the doctrine of equivalents is appropriate if “no reasonable jury could determine two elements to be equivalent.”

The district court explained that, under Dey, statements from the ’744 patent could not create prosecution history estoppel for the ’559 patent. For the same reasons stated above, we agree with the district court’s conclusion on this point. Despite the lack of estoppel, however, the district court still found that Immunomedics “had not met the requirements of the ‘function-way-result’ test.”

The district court appears to have viewed the world of antigens as consisting of two distinct categories—those that are intracellular and those that are on the cell surface—and concluded that antigens falling in different halves could not be equivalents as a matter of law. Transmembrane antigens, however, appear to be a category of their own, and are not susceptible to the black and white categorization made by the district court. As a “grey” category, transmembrane antigens are not addressed by the ’559 patent or its prosecution history and might be equivalents to either of the categories identified by the district court if such a finding was made. See generally Warner-Jenkinson, 520 U.S. at 40.

Thus, the court remanded for further proceedings.

In dissent, J PROST would have allowed the claim term "intracellular marker substance" to encompass portions of an antigen located inside a cell.

Introduction to Nanotechnology

Attorneys Dennis Kennedy and Kevin Buckley have written an introduction to nanotechnology. (PDF). Although their paper is specifically directed at Missourians, it is a short, easy read that would be useful for anyone wanting a brief introduction to the technology.

Google's Amended SEC Filing Discusses Overture Lawsuit

Google has amended its SEC filings and has commented on Yahoo’s Overture patent infringement suit. (U.S. Patent 6,269,361).

Overture Services (now owned by Yahoo) has sued the [Google], claiming that the Google AdWords program infringes certain claims of an Overture Services patent. It also claims that the patent relates to an Overture Services own bid-for-ad placement business model and its pay-for-performance technologies. The Company is currently litigating this case. If Overture Services wins, it may significantly limit the Company’s ability to use the AdWords program, and the Company also may be required to pay damages.

Google plans to continue to “rigorously defend this lawsuit.”

Overture’s patent, filed in 1999, covers a “system and method for influencing a position on a search result list generated by a computer network search engine."

Martin Schwimmer discusses Google's potential trademark problems here. If "googling" becomes a generic term, then it would lose its power as a trademark.

Lerner Jaffe Book

Professors Lerner and Jaffe's new book How our Broken Patent System is Endangering Innovation and Progress and What to do about It is due out this Fall.

In the book, Lerner and Jaffe will make the case that the approval rate for patent applications is absolutely too high. "In many cases it appears that a determined patentee can get almost any award he seeks," the authors say.

(Synopsis)

Patent Maintenance Fee Statements

The USPTO has announced that maintenance fee statements are no longer being mailed for maintenance fees paid over the Internet.

When a maintenance fee is paid using the USPTO Internet Web site, a Web page becomes available that provides a Maintenance Fee Statement. That Web page displays the official USPTO Maintenance Fee Statement and must be printed in order to obtain a paper copy. The USPTO will only mail Maintenance Fee Statements for payments made by mail, facsimile or hand-delivery; and will not mail Maintenance Fee Statements for payments made over the Internet. Questions regarding patent maintenance fees should be directed to the Maintenance Fee Branch at (703) 308-5068.

Disc Golf Patents

In 1977 Ed Headrick patented this basket-target for disc (Frisbee) golf. (U.S. Patent 4,039,189) (PDF). After the patent had expired, Headrick's company (DGA) sued Champion Disc for trade dress infringement. The district court threw out the case, finding that the patented design was functional and thus could not retain trade dress protection. The holding was affirmed by Disc Golf Assoc., Inc. v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998).

In addition to this patent, "Steady" Ed invented the modern Frisbee and the game of disc golf! Before he died in 2002, he made this remark.

"I felt the Frisbee had some kind of a spirit involved. It’s not just like playing catch with a ball. It’s the beautiful flight."

Find courses in your area. (Unfortunately for me, there are no courses in the city of Chicago).

Heat Tolerant Broccoli Patent

Robert Barham and David Joynt are making good on their patented heat tolerant broccoli. Their innovation may revolutionize the broccoli business. (U.S. Patent 6,294,715).

Broccoli grows best in temperatures between 40 degrees and 70 degrees. Joynt and Barham said their variety holds up into the high 90s, tolerating heat spikes of up to 112 degrees. AP.

The patentees have apparently made available to the public without restriction a deposit of at least 2500 seeds of the patented broccoli 393-2-19 with the American Type Culture Collection (ATCC), Rockville, Md. 20852 which has been assigned ATCC number 203533.

Transcript of on line PTO help session

The USPTO has begun to hold regular on line "chat" sessions where independent inventors can ask questions. Sample Q&A:

Independent Inventor: In a utility patent, are you only granted protection for your claims?

USPTO Expert: Claims define your legal protection.

Independent Inventor: Is there such a thing as a Business Method Patent?

USPTO Expert: It is a utility patent. Utility patent applications may be filed for business methods. For additional information go here

Independent Inventor: Can applicants call in a speak with the examiner directly?

USPTO Expert: Yes, this is called an "interview" and is generally conducted after the first Office action has been mailed. Please see MPEP 713 for a detailed explanation of interview practice look here.

(Session Transcript)

Linear Technology v. Impala Linear (Patent Claim Construction)

Linear Technology Corporation v. Impala Linear Corp., Toyoda Automatic Loom Works, Maxim Integrated Protduct, Unitrode Corp., and Ronald Vinsant (Fed. Cir. June 17, 2004).

After losing a summary judgment in an infringement suit, Linear mounted this appeal based on claim construction and other errors. The technology at suit related to voltage regulators designed to provide constant voltage output from a fluctuating input. (U.S. Patent 5,481,178).

Because the district court erred in construing the “circuit,” “vary the duty cycle,” and “simultaneously off” claim limitations of the ’178 patent, we vacate the judgment of non-infringement and remand for further consideration. We further vacate the district court’s summary judgment of no contributory infringement or inducement of the current reversal method claims of the ’178 patent, because genuine issues of material fact have been raised concerning Maxim’s contributory infringement or inducement. Because the district court did not abuse its discretion on Maxim’s cross-appeal in denying Maxim’s motion for summary judgment that Vinsant was a joint inventor of the ’178 patent, we affirm.

The appellate panel held that the district court had improperly found that the term “circuit” was a means-plus-function limitation and that the district court had failed to apply the “rebuttable presumption that § 112 6 does not apply.”

We hold that because the term “circuit” is used in each of the disputed limitations of claims 1, 44, 55, and 57 of the ’178 patent with a recitation of the respective circuit’s operation in sufficient detail to suggest structure to persons of ordinary skill in the art, the “circuit” and “circuitry” limitations of such claims are not means-plus-function limitations subject to 35 U.S.C. § 112 6. The district court’s holding to the contrary was an error of law.

The appellate panel also found error in the district court’s exclusion of PWM circuits from other means language in the claims.

Linear cites technical textbooks and electronic parts catalogs indicating that PWM circuits are well-known circuit structures to persons of skill in the art. Thus, we conclude that the district court erred in excluding PWM circuits.

…

New MPEP Version

The Patent Office has announced that a new version of the Manual of Patent Examination Procedure (MPEP) is available in electronic format. MPEP 8th Ed. (Latest Revision May 2004).

Acacia Streaming Video Lawsuit

According to reports, Acacia has sued several cable and satellite providers for infringing its patents relating to streaming video with compression. (E.g., U.S. Patent 5,132,992).

Acacia is seeking licensing fees of $1.25 per home per year for cable subscribers to video-on-demand services; $1 per home per year for digital cable subscribers and 50 cents per home per year for analog cable subscribers.

Link. Acacia already has ongoing suits with dozens of porn website providers alleging infringement of the same patents. More recently, EFF has identified Acacia's patents in its list of "problem" patents.

IPNewsflash

Stephen Nipper has discovered another great resource for those interested in up-to-date news about intellectual property issues: IP NewsFlash.

Nokia - NTP settle over BlackBerry Patent Infringement

ZD Net is reporting that Nokia has obtained a licensing agreement from NTP for use of patents that allegedly cover RIM's BlackBerry device. BlackBerry enabled Nokia devices should be available in the U.S. "in two to three months."

The patent infringement case between RIM and NTP is ongoing. The Federal Circuit recently heard oral arguments in an appeal of the district court's patent infringement finding. A ruling is expected within the next several weeks. Read more about the lawsuit here.

Although the terms of the agreement have not been made public, the license gives Nokia two big advantages. First, it allows Nokia to hedge its bets against the outcome of the RIM lawsuit. Second, and perhaps more important, Nokia is setting itself up to get a "first-mover" advantage over other carriers.

"There is a reasonable likelihood that they might not get all the patents thrown out,'' said patent lawyer Brad Hulbert of McDonnell, Boehnen, Hulbert & Berghoff LLP in Chicago. "It's better to pay now than pay more later." (Bloomberg)

(Drawing is from RIM's U.S. Design Patent D479,233).

Patent Marking and Infringement Damages

A common patent question is whether products should be marked with any relevant patent number. The simple answer is that marking provides “constructive notice” to infringers and may allow a patentee to collect greater damages in an infringement suit.

According to the marking statute:

In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice.

35 U.S.C. 287(a). As an added bonus, patent marking plates are becoming popular collectables.

Electronic Filing Software

LegalStar is offering its electronic patent filing software free until Labor Day 2004 (normally $50 per filing). I have not used their software yet, but am planning to try soon. The USPTO also offers EFS software here.

There are two reasons why I am convinced that electronic filing will be standard operating procedure for the majority of new filings within the next 18 months. First, it is likely that electronically filed applications will be given a hefty discount on filing fees. Second, attorneys will appreciate the peace of mind that comes with the immediate confirmation of filing.

It is difficult to predict whether practitioners will end up using USPTO's filing software or that of a company like LegalStar. Any software company will need a compelling argument to show that its software is better than the USPTO's free version. In the long run, electronic filing software will likely be tied to prosecution docketing programs and sold as a bundle.

Read the USPTO's memo on the legal framework for electronic filing.

In Re Jack Richard Simpson

In Re Jack Richard Simpson (Fed. Cir. June 9, 2004) (not citable as precedent).

In an appeal from the Board of Patent Appeals and Interferences ("Board") for a pending patent application, the Court affirmed the Board's rejection of Simpson's claims as anticipated by U.S. Patent 5,161,442 under 35 U.S.C. 102(b). (The application involved technology for cutting cardboard.) Although not explicitly described in the prior art, the Court found anticipation because the reference was "inherently 'capable' of performing the functions claimed by Simpson."

University of California v. Actagro (Preliminary Injunction Vacated)

The Regents of the University of California and Biagro Western Sales, Inc v. Actagro, LLC (Fed. Cir. June 9, 2004) (not citable as precedent).

In an infringement suit involving phosphorous fertilizer, the Federal Circuit panel vacated a preliminary injunction against Defendant Actagro because Actagro raised "a substantial question as to the validity of the '200 patent." (U.S. Patent 5,514,200).

Given the evidence offered by Actagro, which on its face suggests that the SSP reference is a concentrated phosphorus fertilizer as contemplated by the claims, we find that Actagro has raised a substantial question as to the validity of the '200 patent. For that reason, we must conclude that the first prerequisite for entry of a preliminary injunction is lacking.

Patent Busting Contest

In their first Patent Busting Contest, the Electronic Frontier Foundation (EFF) is "seeking nominations for ten patents that deserve to be revoked because they are invalid."

In order to qualify for our ten most-wanted list, a patent must be software or Internet-related and there must be a good reason to suspect that the patent claims are invalid. We're especially interested in patents that target tools of free expression, such as streaming media, blogging tools, and voice over IP (VoIP) technology. Most importantly, the patent-holder must be aggressively enforcing its patent and suing (or threatening to sue) alleged infringers. We're particularly interested in cases where the patent-holder is trying to force small businesses, individuals, nonprofits, and consumers to pay licensing fees. Deadline to enter is June 23.

The 10 best (worst) patents will be selected for reexamination proceedings

Links:
EFF Press Release
Inter partes reexamination rules

Patent Registration Examination (Patent Bar Exam)

June 7, 2004: The USPTO has announced that the "announcement of the time for beginning administration of the computerized registration examination should be forthcoming shortly." Accordingly, new rules for the computerized examination will be "published in the Federal Register as soon as they are finalized, and delivery of the examination will begin thirty days thereafter."

Nipper has further information.

Nonobviousness

IPCentral has an ongoing discussion of the nonobviousness requirement of patentability. They quote one of my favorite law school professors (John Duffy).

[T]he Supreme Court ... has not heard a case involving the nonobviousness doctrine in more than a quarter century. I recently gave a presentation at a patent reform conference in which I gave reasons why this drought may end very soon. Many people are not satisfied with the state of the law concerning nonobviousness.

Specifically, many are arguing that nonobviousness is taken much too lightly by the Federal Circuit.

Watson v. H.J. Heinz Co.

Richard Watson v. H.J. Heinz Co. (Fed. Cir. June 8, 2004) (nonprecedential opinion)

In this trade secret case, the appellate panel held that Watson had no legal standing to sue Heinz for allegedly stealing his "trap cap" design for squeeze bottles of ketchup. Watson had filed for bankruptcy and not listed any trade secrets as assets. The court found that any property rights in the trade secret passed to the bankruptcy estate and no longer belong to Watson.

Animatics v. Quicksilver Controls

Animatics Corp. v. Quicksilver Controls, Inc. and Donald P. Labriola II (Fed. Cir. June 8, 2004) (nonprecedential opinion)

After a hung jury could not decide the issue of infringement, the judge granted a JMOL of infringement as to some claims and noninfringement/invalidity as to others. The Federal Circuit affirmed in part, vacated in part, and remanded for further findings.

We agree with Quicksilver's contention that the district court's reliance on claim differentiation was legal error. Claim differentiation is a judicial doctrine that cannot be used to override statute.

Shimano v. SRAM

Shimano has requested an inter partes examination of SRAM's patent 6,520,297, Title: Cable feed for a mechanical ball bearing disc brake.

Metabolite Labs. v. LabCorp

Metabolite Laboratories, Inc. and Competitive Technologies, Inc. v. Laboratory Corporation of America Holdings (doing business as LabCorp) (Fed. Cir. June 8, 2004)

The Federal Circuit (J. Rader) affirmed the jury verdict of indirect infringement and breach of contract, and affirmed the district court's award of over $8 million in damages to Metabolite (including damages for willfulness).

As expected, the appellate court ruled that the same claim construction should be used for damage calculations as is used for infringement and validity analysis.

This court declines the invitation to apply a different claim construction for computation of damages than for infringement liability.

Additionally, the court refused to vacate the willfullness damages even though the district court did not examine any of the Read factors in its decision.

That the district court did not explicitly set forth its rationale for awarding Metabolite enhanced damages based on LabCorp’s willful indirect infringement is not fatal to its decision.... The district court’s failure to discuss the Read factors, although contrary to this court’s strong preference for the enumerated bases underlying its decision, in this case was at most harmless error.

Finally, the Appellate Panel held that no justification for a permanent injunction is required once infringement is found.

[T]he district court properly granted the injunction because LabCorp was found to infringe. See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1281 (Fed. Cir. 1988) (“[A]n injunction should issue once infringement has been established unless there is a sufficient reason for denying it.”).

USPTO will be closed Friday, June 11

The federal government [including the USPTO] will be closed on Friday, June 11, as a mark of respect for Ronald Reagan, the 40th President of the United States.

Holiday Matinee v. Rambus

Holiday Matinee, Inc. v. Rambus, Inc., No. H026142 (Cal. App. May 27, 2004)

In a consumer class action for alleged anticompetitive conduct in connection with patents on computer memory chip technology, the California State Court held that the complaint was demurrable because the Federal Courts have exclusive jurisdiction over patent matters.

W.E. Hall v. Atlanta Corrugating

W.E. Hall Company, Inc. v. Atlanta Corrugating, LLC (Fed. Cir. June 7, 2004)

In a patent infringement suit, the Federal Circuit affirmed the lower court's claim construction and noninfringement summary judgment. (U.S. Patent 4,838,317, on a Hydraulically Efficient Ribbed Pipe)

Appellant argued that ambiguity in the written description and prosecution history warranted a special meaning for several contested terms. The court disagreed:

Where, as here, the written description and prosecution history are ambiguous as to whether the patentee used the claim terms inconsistent with their ordinary and customary meanings, it is the ordinary and customary meanings that the terms obtain.

BlackBerry Lawsuit

The CAFC is expected to hear oral arguments today in the patent infringement case against RIM, the maker of the BlackBerry. The district court issued an injunction against RIM and awarded over $50 million in damages to NTP. The injunction was stayed awaiting the results of the appeal.

NTP's patents are directed toward an "electronic mail system with RF communications to mobile processors." (e.g., U.S. Patent No. 5,436,960).

NYTimes Article (Free Subscription)

For what it's worth, RIM's patent drawings are much more interesting.

Prior Art Citations

A new working paper by Juan Alcacer and Michelle Gittelman (Both at NYU) examines prior art citations in patents. One interesting finding:

On a per patent basis, 2/3 of all cited art was discovered by Examiners rather than submitted by Inventors.

Alcacer, Juan and Gittelman, Michelle, "How do I Know what you Know? Patent Examiners and the Generation of Patent Citations"

Judge Paul Michel

A recent interview with Federal Circuit Judge Paul Michel is published here by Managing Intellectual Property. Excerpt:

Q: What makes a good appeal advocate?

A: The most important quality is selectivity - to select the right issues, the right facts, and the right authorities. The second is to appreciate the power of clarity. It's startling given the intelligence, industry, knowledge and familiarity with the law of the lawyers that they're so often unclear.

I would rather have a 10-page brief written by hand on a pad of paper by a really great lawyer than have a 50-page brief by somebody who is mainly throwing dicta at me, which is what the majority of briefs do. I'd rather have the sense that one good legal mind has wrestled the problems of the case until they are pinned to the mat rather than the sense that a committee of mostly younger lawyers have written an enormously long, enormously complicated and often somewhat unclear brief. Clarity and logic can't be overdone and they are very often, in my opinion, underdone.

Bill Heinze provided the link.

Walkman Inventor May Sue Apple

Washington Times is reporting that the inventor of the portable stereobelt (Andreas Pavel) may sue Apple over its iPod technology. Mr. Pavel holds several patents including US Patent No. 5,201,003. The '003 patentissued in 1992, but claims priority to a 1978 application.

Reportedly, Sony recently paid Mr. Pavel several million dollars after a long dispute and settlement negotiation over Walkman technology.

Link here and here. Thanks to macsurfer for the backlink.

Patent Law Fiction

Brian C. Coad has published his second Wally Mason book. This one titled "Notes of a Patent Attorney: The Wally Mason Stories." According to his Bio, Coad holds about twenty patents, and has published technical papers, poetry, and op-ed pieces for the local newspapers in addition to his fiction.

International Trademark Classification Schedule

The USPTO, the European Office of Harmonization, and the JPO have agreed on a list of identifications and classifications for goods and services for trademark applications filed in the three offices. The initial list includes over 7,000 entries. More are expected to be added as they are agreed to by the offices.

According to the USPTO Press Release:

“This is a wonderful step for all three offices, but its greatest significance is that it benefits users of our trademark registration systems,” noted Acting Under Secretary for Intellectual Property Jon Dudas. “Knowing that a given trademark identification will be accepted by the European Union, Japan and the United States provides the type of certainty that facilitates business and encourages American entrepreneurs to obtain intellectual property protection in global markets.”

Contact:
Ruth Nyblod
703-305-8341
ruth.nyblod@uspto.gov

Post Card Postage

Hopefully none of you have had this problem.

The USPTO has asked applicants to ensure that they place proper postage on return receipt postcards. An inordinate number have been recently returned to the Patent Office for inadequate postage. Here are post card postage rules:

1. In order to be eligible for the First-Class Mail card rates (currently $0.23 per card, domestic delivery), cards must be of uniform thickness and made of unfolded and uncreased paper or card stock of approximately the quality and weight of a Postal Service stamped card. Cards claimed at the First-Class postcard rate must be:

(a) Rectangular;
(b) No less than 3-1/2 inches high, 5 inches long, and 0.007 inch thick; and
(c) No more than 4-1/4 inches high, 6 inches long, and 0.016 inch thick.

2. Cards that measure more than 4-1/4 inches high, 6 inches long, or 0.016 inch thick are charged postage at the First-Class Mail letter rates.

3. Cards that measure less than 3-1/2 inches high, 5 inches long, and 0.007 inch thick are nonmailable. Any return receipt postcard that does not contain sufficient postage or is not acceptable may not be delivered by the United States Postal Service (USPS) to the address provided on the postcard, and, if returned to the Office, may be discarded.

Link.

Petition to withdraw holding of abandonment

The USPTO has issued a memo to clarify its position on untimely filed petitions to withdraw holdings of abandonment. The clarifications have been developed to prevent delays from inapropriately extending the patent term.

Some Highlights:

UTILITY APPLICATIONS FILED AFTER MAY 29, 2000:

If a petition is not filed within 2-months from the mailing date of the notice of abandonment, any patent term adjustment will be reduced under 37 CFR 1.704(c)(4).

If applicant does not receive the notice of abandonment, any patent term adjustment may be reduced under 37 CFR(a) by a period equal to the time the applicant 'failed to engage in reasonable efforts to conclude prosecution' ... any period of adjustment shall be reduced by the number of days, if any, beginning on the day after the date that is twelve months from the date of applicant’s filing or submission of correspondence with the USPTO for which further action by the USPTO can reasonably be expected and ending on the filing date of a grantable petition to withdraw the holding of abandonment.

UTILITY APPLICATIONS FILED BETWEEN (INCLUSIVE) JUNE 8, 1995 AND MAY 29, 2000:

The USPTO has no authority to grant patent term extension after withdrawing a holding of abandonment unless the application is held abandoned during 1) an interference proceeding; 2) after imposition of s secrecy order; or 3) during a successful appellate review.

...
The clarifications will be added to the MPEP in due course.
For specifics, see the link.

Patent Office Address

After the 9/11 attacks, the USPTO established a Post Office Box in Arlington, Virginia (P.O. Box 2327, Arlington, VA 22202) for use on an emergency basis. Effective immediately, the Office will no longer accept patent-related correspondence at that address.

Use this address instead (with appropriate mail stops):

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Link.