Patent Law Blog (Patently-O)

Laboratory Corporation of America v. Chiron

Laboratory Corporation of America v. Chiron (Fed. Cir. 2004) (03-1572).

Chiron developed a method of nucleic acid testing for Hepatitis-C virus in the human blood.  (U.S. Patent 5,712,088).  LabCorp supplies nucleic acid testing products for testing the presence and quantity of Hep-C virus and performs tests at its North Carolina facility. 

Chiron sued LabCorp in California for infringement only hours after LabCorp filed a declaratory judgment suit against Chiron in Delaware.  During the course of litigation, the Delaware District Court granted LabCorp's motion to enjoin Chiron from prosecuting parallel litigation that was co-pending in the Northern District of California.  Chiron appealed the decision. At issue was whether to apply Federal Circuit or Third Circuit law:

In this case, the decision whether to follow Federal Circuit or Third Circuit law is critical: as we have previously observed, the Third Circuit has held that injunctions against litigation in other forums are not appealable, while under Federal Circuit law such injunctions are appealable under 28 U.S.C. § 1292(a)(1). Thus, we must decide which law applies.

Citing the importance of national uniformity in patent cases, the appellate panel held that injunctions arbitrating between co-pending patent declaratory judgment and infringement cases in different district courts are reviewed under the law of the Federal Circuit.

On review of the actual order to enjoin, the panel determined that the district court had not abused its discretion in enjoining the parallel California action. 

Affirmed.

Payless Shoesource v. Genfoot

Payless Shoesource v. Genfoot (D. Kans. 2004) (03-4227-JAR).

After receiving a threatening letter from Genfoot, Payless filed for a declaratory judgment in Kansas, requesting a judgment of patent invalidity, unenforceability, and noninfringement of Genfoot's patent on a boot. Genfoot, a Canadian company, moved to dismiss based on a lack of personal jurisdiction.

Holding:

Sending an infringement letter, without more, is insufficient to satisfy the requirements of due process when exercising jurisdiction over an out-of-state patentee.

A web site may form the basis of personal jurisdiction. Genfoot's website, however, does not allow for on-line sales. "Although a customer is interacting with the web sites, this interaction alone likely is not sufficient for minimum contacts without a more substantial exchange of commercial information."

Genfoot sells to a national distributor. However, "doing business with a company that does business in the state is not the same as doing business in the state."

The combination of all these elements may be sufficient to create minimum contacts with the state. ... Therefore, Genfoot is subject to specific personal jurisdiction in Kansas.

Constitutionality of PTO Fee Diversion

Figueroa v. United States.

Figueroa is a class action suit filed on behalf of inventors in the Court of Federal Claims. The cases challenges the constitutionality of congressional diversion of USPTO fee revenue to other non-IP government programs.

The suit alleges three grounds of unconstitutionality: 1) an unconstitutional violation of the Patent Clause that directs congress "to promote the progress of science and the useful arts;" (2) an unconstitutional direct tax on private property, and (3) an unconstitutional taking of private property. However, the Court has trimmed the suit to solely examine whether the Patent Clause restricts the fee diversion.

Recently, the AIPLA filed an Amicus brief in the case.

While taking no position on the request for relief, AIPLA pointed out that fee diversion increases the burdens on examiners and decreases patent quality, thereby adversely impacting the Office’s ability to carry out the Constitutional command of promoting the progress of the useful arts.

Heath Hoglund, a patent attorney in Puerto Rico appears to be heading the charge for the class.

Doctrine of Equivalents for Means-Plus-Function Claims Limited to "After Invented Technology."

Ghaly v. Hasbro (Fed. Cir. 2004) (04-1124) (unpublished opinion).

Ghaly, a pro se plaintiff, sued Hasbro for infringement of his patent on a hand-held electronic game that operates something like a "hand-held electronic version of a Rubik's cube."  (U.S. Patent No. 5,286,037).  After construing the terms in the patent, the district court (E.D.N.Y.) granted summary judgment of noninfringement (both literal and DOE) to Hasbro. 

On appeal, the Federal Circuit agreed with the lower court's claim construction -- finding that the means-plus-function language of the switch means limited Ghaly's claims to the bi-stable switches disclosed in the specification.  Because Hasbro's devices were momentary switches, they could not literally infringe.

Further, the Court disregarded Ghaly's allegations under the doctrine of equivalents because Hasbro's momentary switches were not "after invented technology."

With regards to the "entry control means" limitation . . . there is no after-invented technology in the accused Hasbro device that would render the accused Hasbro devices infringing under our precedents regarding the doctrine of equivalents for means-plus-function limitations.  Momentary switches existed at the time of the '037 patent's filing in 1991.

Summary judgment affirmed.

Of course, the "after-invented technology" limitation is based on the holding of Chiuminatta Concrete v. Cardinal Indus. (Fed. Cir. 1998).

MPEP Online Version

Link: In May 2004, the USPTO released a new revision of the Manual of Patent Examining Procedure (MPEP, 8th ed., rev. 2). For several months, the electronic version was only available in PDF format. Now, the Office has released each chapter of the MPEP in HTML. The HTML version is much smaller (less diskspace) and can be searched much more quickly.

A CD-ROM version of the manual is expected in mid-October. You can contact the Office of Electronic Information Products at (703) 306-2600 for more information.

Improved Patent Searching at the EPO

Link: The European Patent Office (EPO) has released Version 3 of their patent searching website, esp@cenet. The new version is more user-friendly and had improved field-searching.

Version 3 is the culmination of a long process aimed at developing a new improved user interface for the esp@cenet service. During this time, we have consulted extensively with both current and potential users of esp@cenet, as well as specialists in the area of human computer interaction, in order to improve the usability of the service, with particular attention being paid to the needs of the non-specialist user.

According to David Orange at the University of Washington, the site provides "a title-abstract keyword search, along with various number options, [such as] applicant, inventor etc. You can retrieve PDFs of US patents (and published applications), [and patent documents from] WIPO, Japan, EPO, Great Britain, France and Germany."

Finally, an on-line forum is provided for discussing search techniques.

Entec requests Inter Partes Reexamination

Entec Engine of Atlanta has filed for an inter partes reexamination of Caterpillar's patent no. 6,651,618.  The patent, titled "Air and Fuel Supply System for Combustion Engine," issued in November 2003.

In February 2004, USPTO Under Secretary Jon Dudas held a roundtable to discuss the equities of inter partes reexaminations.  A PDF version of the transcript from the roundtable discussion is available here.

Experimental Use must be Non-Educational

Madey v. Duke University (M.D.N.C. Sept 20, 2004) (97CV01170).

Before arriving at Duke as a professor, Dr. Madey obtained several patents for microwave electric guns for use in free electron studies. (E.g., Patent 4,641,103). After Duke & Madey had a falling out, and the professor left the university.

Dr. Madley now asserts in a patent infringement suit that Duke continued to use his patented technology without license.

Duke requested summary judgment based on the experimental use defense. Duke contended that its use of the plaintiff's patents was done "for the sole purpose of gratifying a philosophical taste, or curiosity, or for mere amusement," and thus, that the use was experimental.

The court held that 1) the burden of proof for experimental use lies with the accused infringer, in this case Duke; and 2) the defense of experimental use cannot be applied to this case simply because the invention is used in a lab. "Duke [failed to establish] that its alleged use of Plaintiff's patented inventions was not in keeping with its legitimate business as an educational institution but was instead solely for amusement, . . ."

Silly Inventions are Easy to Patent?

Eugene Quinn, the "IPWatchdog," made an interesting comment recently in his newsgroup. Quinn sees a "double standard" in the Patent Office's examination procedure.

[T]he Patent Office just doesn't apply the law any more. There seems to be a double standard in the office. Things that are silly/stupid get patented without much time or consideration, perhaps because the Patent Office doesn't believe anyone will ever use the patent. Things that are what we would consider "science related" actually get stricter scrutiny. This may make some sense, but the patent laws do not make such a distinction. I also think that the craziness that the Patent Office is allowing significantly contributes to the existence of scam invention submission companies. These scam companies can say with a straight face that any invention can and will receive a patent. Therefore, I think the Patent Office is to blame for many of the scams. Perhaps if Congress would let the Patent Office keep its own revenue better examinations could be had. That looked like it would be the casee earlier in the year, but last week the Senate seems to have stripped that measure in the appropriations bill.

-Gene

Phillips v. AWH: The Amicus Briefs

Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc).

As you may know, the Phillips case, which is presently awaiting decision en banc, is expected to be the next major decision impacting the issues of claim construction.  For those who are interested, here is a rundown of some of the Amicus Briefs that were filed in the appeal:

1. United States Patent and Trademark Office (USPTO): The Patent Office took the position that dictionaries should not be a primary reference for claim construction, in part because they are not used by examiners during prosecution. The PTO brief was filed jointly with the DOJ and FTC.

2. Intellectual Property Owners (IPO): The IPO brief, argues that the primary evidence of claim meaning should be found in the patent specification and prosecution history.  If a court must resort to extrinsic evidence to determine claim meaning, there should be no pre-determined hierarchy of importance.  The Court should only consider claim construction evidence in the record on appeal. The IPO brief was written by Paul Berghoff and Josh Rich of MBHB LLP.

3. Electronic Frontier Foundation (EFF): Judges should invalidate and Patent Office Examiners should reject ambiguous claims.  Claims should be given their broadest possible construction during prosecution and narrowest reasonable meaning thereafter.  Professor Joshua Sarnoff is the Counsel of Record on the EFF brief.

4. American Bar Association: Neither the specification nor dictionary should have primacy. Invalidity should play no role in claim construction, as that approach is contrary to the public notice function. The Appellate Court should defer to findings of fact made during claim construction.

5. American Intellectual Property Law Association (AIPLA): The fundamental standard that should govern claim construction is that a claim term must be construed from the perspective of a person of ordinary skill in the relevant art at the time the patent issued seeking to understand the term's meaning from a study of the entire intrinsic record.

6. Intel, IBM, Google, Micron, and Microsoft: Where those construing patent claims focus on dictionary meanings of claim terms without an appropriate grounding in the specification and prosecution history, there is a danger the interpretation of patent claims will differ markedly from the true scope of the invention they seek to define. Indeed, there are so many different dictionary definitions for any given word that it is impossible to predict with any confidence what meaning a court will choose. The Intel brief was written by Stanford professor Mark Lemley.

7. Federal Circuit Bar Association (FCBA): Dictionaries should not be the primary focus of claim construction. Claim construction may require findings of fact, which should be reviewed for clear error.

8. International Trade Commission Trial Lawyers Association (ITCTLA): The specification and prosecution history should control. When dictionaries are used, technical dictionaries should have a rebuttable preference over general dictionaries. Claim language should not be narrowly construed for the sole purpose of avoiding invalidity. The claim interpretation should not be limited to only the embodiment described in the specification. Expert testimony should be allowed and evaluated as would any other piece of evidence. Deference to the trial court's claim construction may be appropriate in some cases.

9. Biotechnology Industry Organization (BIO): Specification first.  Dictionaries second, when specification does not establish meaning of claim terms. Claims should never be narrowly construed for the sole purpose of avoiding invalidity.

10. Bar Association of District of Columbia (BADC) Patent Trademark Copyright (PTC) Section: The specification always provides context for the claims. The court should not determine the question of deference because it would be an advisory opinion.

11. Professors Wagner & Miller: The professors argue that the patent document should be the primary and preferred source of claim meaning -- as long as it is clear, specific, and objective. Where the term is not clearly defined in the patent document, there should be a heavy presumption in favor of the ordinary meaning of the term. Dictionaries are not a panacea, but they offer the best opportunity to provide a term's ordinary meaning with clarity, certainty, and predictability.

12. Public Patent Foundation (PUBPAT): Dan Ravicher of PUBPAT argued that "claim construction should never be impacted by considerations of validity." Consistent with Markman, subsidiary factual determinations by the trial court during claim construction should be reviewed for clear error.

13. Intellectual Property Law Association of Chicago (IPLAC): Courts may look to the plain meaning of claim terms but asserts that dictionaries should in general be subordinate to the patent specification and other intrinsic evidence when determining what is meant objectively by challenged claim terms. Dictionaries may be considered, but the guiding light must be what the hypothetical ordinarily skilled artisan would have understood by the claim terms – not in a vacuum, and not armed with only a technical or general purpose dictionary, but also with the full panoply of intrinsic evidence. Courts may receive expert witness testimony on this determination. Edward Manzo wrote the brief for IPLAC, and was given assistance by Brad Lyerla, Dean Monco, Pat Burns and Tim Vezeau.

14. Association of Corporate Counsel: Public notice is best served by first looking at claims, specification and prosecution history. Dictionaries should not be the primary source for claim construction. Because the guiding inquiry is the meaning of terms to those of ordinary skill in the relevant art, relevant technical dictionaries should usually be consulted before general dictionaries.

15. Infineon: The public notice function of patent claims is best served by looking first and foremost to the intrinsic specification, not an extrinsic dictionary definition, to interpret claim terms.

16. Boston Patent Law Association: Dictionaries should not be the primary source of claim construction because they do not stay current, are not necessarily authoritative, and because meaning is not always found in books. Validity and claim construction should be kept separate.

17. Connecticut Intellectual Property Law Association: Inflexible rules of construction are ineffective in interpreting the widely varying universe of language found in patent claims.

18. Medrad, Inc: Claim construction should be based upon the intrinsic evidence (spec, drawings, cited prior art, and prosecution history).

19. NYC Association of the Bar: Dictionary definitions should not provide the primary source of meaning or a separate restriction on claim coverage. Validity should be considered during claim construction. Expert testimony can provide important information. Deference to the trial court's claim construction findings is blocked by procedural and practical obstacles.

20. New York IP Law Association, et. al.:

21. Norvatis:

22. Oregon Patent Law Association:

23. Parus Holdings:

24. Pharmaceutical Patent Attorneys:

25. San Diego IP Law Association:

26. Sughrue Mion: Claims should be interpreted as of the time of filing or earlier. The patent document provides the best notice of the claim's meaning. Deference should be accorded to a trial court's factual findings underlying claim construction.

27. VISA USA and Mentat:

28 Wisconsin Alumni Research Foundation (WARF), UVA, Yale, etc.:

Party Briefs:

1. Edward H. Phillips

2. AWH Corporation

3. Phillips reply brief

Links:

• Link: My review of the case published in Patent World magazine.

ASIDE:

Interestingly, Mr. AWH Phillips was a famous economist who discovered a consistent inverse relationship between the rate of wage inflation the rate of unemployment.

Copies of Pending Applications not Required in IDS

The PTO has now eliminated the requirement of submitting copies of pending U.S. patent applications in an Information Disclosure Statement (IDS) if the pending application was filed after June 30, 2003, or entered National Stage after June 30, 2003.  The requirement is also waived for pending applications filed before June 30, 2003, if a copy of the application is available through the USPTO's private PAIR system. 

This waiver is limited to the specification, including the claims, and drawings in the U.S. application (or portion of the application). If material other than the specification, including the claims, and drawings in the file of a U.S. patent application is being cited in an IDS, the IDS must contain a legible copy of such material. See 37 CFR 1.98(a)(1)(iv).

When citing to a published application, the PTO prefers that the citation be to the patent application publication (by publication number) rather than to the application itself (by application number).

This waiver is effective immediately

Note: For those of you following PTO rule changes closely, Deputy Commissioner Stephen Kunin signed the waiver using the newly approved /s/ signature procedure.

 

Immersion v. Sony

In 2002, Immersion filed suit against both Microsoft and Sony for patent infringement in the Northern District of California. Immersion claimed that the game systems manufactured by the two companies violated Immersion's patents on "tactiley responsive" technology. Microsoft and Immersion settled before trial, and on Tuesday, Immersion was awarded $82 million based on Sony's infringement. Sony plans to appeal.

Patent Office Now Hiring

Douglas Bourgeois, the Patent Office's former Chief Information Officer (CIO) recently left to become a director at the Interior Department. The PTO has announced a job search to replace Bourgeois. (Peter Zura posted the announcement as did the PTO.) With the PTO's move to a paperless office and electronic filing, it is critical that the Office finds a highly qualified canditate for the position.

Kangaroo Court

This trademark opinion is so good, I wanted to quote the entire thing:

Klein-Becker v. Bodyworx.com (Western District of Texas, July 21, 2004)

BE IT REMEMBERED on the 21st day of July 2004 and the Court took time to make its daily review of the above-captioned case, and thereafter, enters the following:

When the undersigned accepted the appointment from the President of the United States of the position now held, he was ready to face the daily practice of law in federal courts with presumably competent lawyers. No one warned the undersigned that in many instances his responsibility would be the same as a person who supervised kindergarten. Frankly, the undersigned would guess the lawyers in this case did not attend kindergarten as they never learned how to get along well with others. Notwithstanding the history of filings and antagonistic motions full of personal insults and requiring multiple discovery hearings, earning the disgust of this Court, the lawyers continue ad infinitum. On July 20, 2004, the Court’s schedule was interrupted by an emergency motion so the parties’ deposition, which began on July 20, would and could proceed until 6:30 in the evening. No intelligent discussion of the issue was accomplished prior to the filing and service of the motion, even though the lawyers were in the same room. Over a telephone conference the lawyers, of course, had inconsistent statements as to the support of their positions. On July 20, 2004, the Court entered an order allowing the plaintiffs/counter-defendants until July 23, 2004 (two days from today) to answer a counterclaim. Yet, on July 21, 2004, Bodyworx.com, Inc.’s lawyers filed a motion for reconsideration of that Court order arguing the pleadings should have been filed by July 19, 2004.

The Court simply wants to scream to these lawyers, “Get a life” or “Do you have any other cases?” or “When is the last time you registered for anger management classes?”

Neither the world’s problems nor this case will be determined by an answer to a counterclaim which is four days late, even with the approval of the presiding judge.

If the lawyers in this case do not change, immediately, their manner of practice and start conducting themselves as competent to practice in the federal court, the court will contemplate and may enter an order requiring the parties to obtain new counsel. In the event it is not clear from the above discussion, the Motion for Reconsideration is DENIED. SIGNED this 21st day of July 2004.

In more refreshing news, Phil Mann reports that "Sanity Returns to Court of Appeals." (Federal Circuit).

I can’t believe it. Maybe I’m wrong (I’ll re-read the case Tuesday). But it sure seems the Court of Appeals has finally let common sense influence one of its decisions.

Avoid Festo Presumptions With a Letter to the File?

Professor Douglas Lichtman at the University of Chicago writes with a question about patent prosecution:

Why haven't patent prosecutors begun to aggressively document the purpose behind their claim language changes, for example by writing letters to the file making clear a precise and narrow construction of the change. The argument to do so is that such documents would rebut the broad Festo presumptions that right now threaten to construe every change broadly. And it would be cheap to do.

I am not advocating anything misleading. But often changes are made for a very specific reason, and claim language changes (like claim language itself) can be imprecise. So why not clearly document the precise change the examiner requested, making clear what you meant to sacrifice and protecting the rest from Festo?

Please e-mail your comments to me or Professor Lichtman.

UPDATE: The real question is why patent attorneys do not precisely define in their office action response what you intend to give up in an amendment. For example, why not say "of course, my purpose here is only to exclude red wheels, leaving fully intact everything else that might have been included in the original claim language."

Free Patent Downloads on Your PC

For a short time, websites offering free online downloading went out of vogue. Recently, however, Pat2PDF.org was started by a generous patent attorney as "a free search tool." Pat2PDF allows you to download U.S. patents in PDF format.

Now, a Canadian attorney, Peter Eliopoulos, has taken the code from Pat2PDF given us an installation guide so that the script that can run locally on our WindowsXP systems. There is one problem with Peter's installation guide. The Guide is only slightly longer than an AA 12-step program. Installation appears to take about an hour, and the result will be easy downloading of patents from your PC.

Update: Peter asked me to also give credit to the script's authors Oren Tirosh and Thomas Boege.  According to Peter he "only wrote the installation instructions for those of us still using Windows."

Suggestion: At some point, the PTO should make PDF versions of the patents freely available from their website.

Blanke files for inter partes reexamination.

Blanke Corporation of Atlanta has requested an inter-partes reexamination of a patent owned by Schluter-Systems, a German company.  The patent (6,434,901), claims a support plate maid of a foil-like plastic material for a plate-lined floor.

An inter partes reexamination may be requested by any third party, but, unlike ex parte proceedings, the real "party in interest" must be disclosed. During an inter partes reexamination, the third party requester is permitted to submit comments on official actions and the patentee's responses thereto as long as such comments are filed within 30 days of the patentee's response to the action.

PTO Rule Changes:

The PTO has announced a large set of rule changes. I have listed a few of the highlights:

Incorporation by Reference: A claim for priority or benefit will now be considered an incorporation by reference of the prior-filed application as to an inadvertently omitted portion of the specification or drawings.

Newly added Sec. 1.57(a) now allows for all or a portion of the specification or drawings that is inadvertently omitted from an application containing a priority claim for a prior-filed foreign application, or a benefit claim for a prior-filed provisional, nonprovisional, or international application, to be added to the application by way of a later filed amendment if the inadvertently omitted portion of the specification or drawings is completely contained in the prior-filed application even though there is no explicit incorporation by reference of the prior-filed application. The phrase "completely contained'' requires that the material to be added to the application must be expressly (as opposed to implicitly) disclosed in the prior application.

Information Disclosure Statements: The format of the IDS has been codified -- however, PTO Form 1449 is still accurate.  The Office has also announced that "it will no longer be necessary to require a copy of each cited U.S. patent or U.S. patent application publication in an IDS regardless of the filing date of the application or the national stage entry date under 35 U.S.C. 371, unless it is [explicitly] required by the Office."

Signatures: 37 CFR 1.4 has been amended to allow for "S-signatures" made by electronic means for many types of submissions to the PTO.  An S-signature is a signature inserted between forward slash marks.

Fees: The Office has determined the fees for many petitions do not "recover the Office's costs of treating many of these types of petitions."  Thus, fees have been increased.

Small-Entity Status: The Code has been amended to clarify that the fact that a large entity holds a security interest in a patent application does not bar the assignee to small entity status (unless the security interest is defaulted upon).  The notice also points out that a foreign owned and operated business can still qualify for small entity fee reductions.

69 FR 56482

NOTE: LINK to PDF Rule Change.

Update: Be Spacific and PHOSITA have more information on the /s/ signatures.

Yahoo & Inktomi chip away at Teknowledge patent

District court has no power to redraft claim language to change its ordinary meaning.

Teknowledge v. Akamai (N.D. Cal. 2004) (C 02-05741 SI).

In the Summer of 2002, Teknowledge sued Akami, Inktomi, Yahoo, Microsoft, and Netscape for infringement of its patent involving "automatic retrieval of changed files by a network software agent". (US6029175). As part of the litigation, Yahoo and Inktomi filed for summary judgment of invalidity of some claims.

In order to avoid summary judgment of invalidity for claim 29, Teknowledge argued that a typographical error existed in the patent, and that the court should redraft the claim based on the intended meaning. Judge Illston disagreed, citing the "clear line of Federal Circuit authority" that bars district courts from re-drafting claims to change their ordinary meaning, "even if the ordinary meaning produces a nonsensical result. (citing Chef America). Because the ordinary meaning produced a nonsensical result, the Court found the claim invalid.

Summary Judgment Granted to Yahoo & Inktomi.

Citing the ongoing litigation, Yahoo's attorney had no comment.

Patent's transition language limits its use as an anticipatory reference

In re Morrison (BPAI 2004) (unpublished opinion).

Acarbose is an oral alpha-glucosidase inhibitor approved for use in the management of non-insulin-dependent diabetes mellitus (NIDDM). In 2001, James Morrison applied for a patent for using acarbose in a sustained release matrix as a weight loss stimulant. The PTO examiner assigned to the case rejected the claims as anticipated by prior art.

One reference cited by the examiner suggested the use of acarbose as a weight loss stimulant to be used alongside a lipase inhibitor. However, the Board overruled the Examiner's rejection because the reference included the language "consisting essentially of" when describing the acarbose-lipase-inhibitor combo.

The basic and novel characteristics of the claimed composition do not include inhibition of lipase enzymes. Thus, the addition of a lipase inhibitor would materially affect the basic and novel characteristics of the claimed composition. The claims do not read on the compositions disclosed by Bremer, which all contain a lipase inhibitor. The rejection under 35 U.S.C. § 102(b) is reversed.

REVERSED, 37 CFR § 1.196(b)

Interview with Nick Godici

Kojo Nnamdi at American University's radio station (WAMU) recently interviewed Nick Godici, the USPTO's Commissioner for Patents.  You can listen online with RealAudio:

The plow, the fire extinguisher, the rocking chair, all are inventions that at one point came thru the patent office. A look at the innerworkings of the patent office and how to get that patent for your next big idea. http://www.wamu.org/ram/2004/k1040913.ram

Thanks to Gary Price for this great link.  Gary is a law librarian in DC and runs the ResourceShelf.

TV Guide Patent on Program Schedule Given Second Chance

TV Guide (Gemstar) v. ITC (Fed. Cir. 2004).

TV Guide owns several patents relating to interactive program guides in digital cable television set-top boxes that enable viewers to search through TV schedules and pre-select programs for viewing and recording.  In a case before the ITC, the commission concluded that Scientific-Atlanta did not infringe the patents and that one of the patents was unenforceable because an inventor was improperly excluded from the patent.

TV Guide Appealed: In an opinion released September 16, the Federal Circuit (CAFC) found that the ITC erred in claim construction and erred in determining that Mr. Neil was an unnamed co-inventor. 

Inventorship is presumed correct without clear and convincing evidence otherwise:

Because Neil failed to present facts supported by clear and convincing evidence of his co-inventorship, the ITC erred in holding Neil to be an unnamed co-inventor....  Neil principally relies on his own testimony and the content of two product disclosure documents, an original disclosure document and a "second version" of the disclosure document.   

The ITC found that Neil's testimony was "credible and straightforward," while Young's testimony "lacked those characteristics."  Under our precedent, more than just the alleged co-inventor's testimony is required to establish co-inventorship by facts supported by clear and convincing evidence.  Trovan, 299 F.3d at 1302.  The mere fact that the ITC found the alleged inventor's testimony to be more credible than the named inventor does not itself rise to the level of clear and convincing evidence.

Affirmed-in-part, vacated-in-part, reversed-in-part, and remanded for further proceedings.

Now, the case is returned to the ITC to for another determination of whether the devices imported by Pioneer, EchoStar, and Scientific-Atlanta infringe the patents in suit in violation of 19 U.S.C. 1337.

Zero Gravity Hopes to Cash in on Patented Technology

By Joseph Herndon.

 

The venture involving Zero Gravity Corporation and Amerijet International is the first to win approval from the FAA for zero-gravity airplane flights in the United States.  For $2,950, regular folks can get a tamed-down taste of what astronauts feel.  Zero Gravity's price tag for the daylong tour includes preflight training and a postflight party.

 

Passengers aboard a modified Boeing 727-200 jet will experience weightlessness for about 25 seconds at a time, courtesy of the plane's special parabolic flight path.  A typical parabolic flight lasts about 90 minutes, with 15 up-and-down parabolas at an altitude of 24,000 to 34,000 feet. Two "Martian" arcs simulate one-third Earth gravity, three "lunar" arcs feel like one-sixth Earth gravity, and the final 10 provide the full zero-gravity experience.

 

Zero Gravity aims to keep capital expenses down by using Amerijet's cargo planes only when needed — a scheme that Peter Diamandis (co-founder and CEO of Zero Gravity) and his partners patented five years ago (U.S. Patent No. 5,971,319).  The arrangement calls for a cargo jet to be converted to zero-gravity service in a matter of hours, then converted back after the flight.

 

Zero Gravity's launch caps an 11-year effort for Diamandis, who is also chairman of the foundation behind the $10 million Ansari X Prize for private spaceflight.

 

More complete story found at on MSN.

 

Note: Joe Herndon is a law clerk and at the intellectual property firm McDonnell Boehnen Hulbert & Berghoff and is a registered patent agent.  Joe is looking out for his chance for a ride in the "vomit comet." herndon@mbhb.com.

 

Pirelli requests reexamination of Stanford's Patent on Fiber Optic Technology

Lin k: Italian cable manufacturer Pirelli has requested an ex parte reexamination of Stanford University's patent number 4,859,016.  The patent, entitled "Fiber Optic Amplifier," survived a first reexamination four years ago.

The patent reexamination system is intended to provide a less-costly alternative to litigation -- and can be especially useful when the validity of an issued patent is questioned.  Reexamination allows the patent office to consider newly discovered prior art and printed publications.  However, the evidence available to the patent office during a reexamination is limited.  In addition an ex parte reexamination does not allow an open forum for a potential defendant to argue its case.

After a reexamination is requested, the PTO has three months to determine whether a substantial new question of patentability exists.  Once a reexamination is ordered, the patent holder can respond to the questions of patentability and may propose amendments to the patent claims.  The reexamination requester may then file a counter-statement.  After filing the counter-statement, the claims are examined without any further input from the requester. 

Following a reexamination, the PTO issues a reexamination certificate showing changes made to the patent.

Echostar wins appeal: DISH Network found to not infringe patent

Irdeto Access v. Echostar (Fed. Cir. 2004).

Irdeto's patent is directed to a system for controlling the broadcast of digital information signals by using three types of complementary encryption and decryption keys -- “service keys,” “group keys,” and “box keys.”  (U.S. Patent No. 4,531,020).  Irdeto sued Echostar, arguing that Echostar's DISH Network infringed the patent.  On summary judgment, the district court granted summary judgment to Echostar, finding that Echostar's product did not infringe.  The Appeal revolved around the definition of the term "group."

Irdeto, in effect, argues is that even after telling the PTO and the public that given the absence of ordinary meaning in the art for the term “group,” the specification sets forth the full intended scope of that term, a patentee can nonetheless later lay claim to a broader, general-usage dictionary meaning of “group” absent explicit narrowing statements in the specification.  This cannot be.  ... [W]hile the specification does not contain any statements of explicit disavowal or words of manifest exclusion, it repeatedly, consistently, and exclusively uses “group” to denote fewer than all subscribers, manifesting the patentee’s clear intent to so limit the term.  The specification also contains no affirmative indication that group can consist of all subscribers within the system.  A reasonable competitor reading the patent could only understand “group” to refer to a subset of all subscribers.  The claims must be limited accordingly.

Summary Judgment of Noninfringement Affirmed.

Patent Case: Landmark Decision Strengthens Attorney-Client Privilege

In a landmark decision, a panel of eleven Federal Circuit judges has overruled their prior precedent, relieving accused patent infringers of the feared "Quantum Dilemma."

Willful patent infringement brings with it the potential for treble damages (3x), usually resulting in multi-million dollar awards. (35 USC § 284). Prior cases have held that an important factor for determining willfulness is whether the accused infringer obtained an opinion of counsel that presents a strong case for invalidation or noninfringement.

During litigation, presentation of the exculpatory opinion as evidence triggers broad waiver of attorney-client privilege. Under prior precedent, failing to present the opinion conversely leads the court to an inference that either the opinion was not exculpatory or that there was no opinion of counsel.

The modified Hobson's choice is known as the Quantum Dilemma, based on the case of Quantum v. Tandon.

In their en banc decision written by Judge Newman, the appellate court held that no adverse inference should flow from a party's refusal to present an exculpatory opinion of counsel.

We now hold that no adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer's failure to obtain or produce an exculpatory opinion of counsel. Precedent to the contrary is overruled.

The Case: KNORR-BREMSE v. DANA CORP. (Fed. Cir. 2004) (01-1357) (en banc).

Knorr-Bremse is a German company, but is the owner of a U.S. patent on Disk Brake technology. (U.S. Patent No. 5,927,445). Dana Corporation and other defendants were found liable for infringement. And, based on an inference of an unfavorable counsel, the defendants were found liable for willful infringement. Although no actual damages were awarded, because of the finding of willful infringement the court awarded partial attorney fees under 35 U.S.C. § 285.

During litigation, the defendants told the court that they had consulted European and United States counsel concerning Knorr-Bremse's patents, but declined to produce any legal opinion or to disclose the advice received, asserting the attorney-client privilege. The district court found that "It is reasonable to conclude that such opinions were unfavorable."

The Decision:

In its decision, the Court answered four questions revolving around willfulness:

In the first question, the Court based its response on the strong historical significance of attorney-client and work-product privileges.

1. When the attorney-client privilege and/or work-product privilege is invoked by a defendant in an infringement suit, is it appropriate for the trier of fact to draw an adverse inference with respect to willful infringement?

The answer is "no." Although the duty to respect the law is undiminished, no adverse inference shall arise from invocation of the attorney-client and/or work product privilege.

In the second question, the Court found that there is no legal duty of a potential infringer to consult with counsel.

2. When the defendant had not obtained legal advice, is it appropriate to draw an adverse inference with respect to willful infringement?

The answer, again, is "no."

Question three revolved around the case at hand.

3. If the court concludes that the law should be changed, and the adverse inference withdrawn as applied to this case, what are the consequences for this case?

As an answer, the Court vacated the willfulness finding and remanded for a redetermination of willfulness in the absence of the inference of a nonexculpatory opinion.

The final question, number four, offered the Court the opportunity to create a clear rule that mounting a substantial defense to infringement should defeat a willfulness finding.

4. Should the existence of a substantial defense to infringement be sufficient to defeat liability for willful infringement even if no legal advice has been secured?

The answer is "no."

The Court concluded that willfulness involves a "totality of the circumstances" and should not be limited to a per se rule.

The Dissent:

Dissenting in part, Judge Dyk argued that enhanced damages for willfulness are punitive damages. Punitive damages are awarded to "punish reprehensible behavior." As such, there is a "substantial question as to whether the due care requirement is consistent with the Supreme Court cases holding that punitive damages can only be awarded in situations where the conduct is reprehensible. ... I would recognize that the due care requirement is a relic of the past and eliminate it as a factor in the willfulness and enhancement analysis."

Note: Paul Berghoff and Joshua Rich of McDonnell Boehnen Hulbert & Berghoff took part in an amicus curiae brief submitted by the Intellectual Property Owners Association.

According to Dan Boehnen, also of McDonnell Boehnen, "clients often spend thousands of dollars to obtain window-dressing opinions that are designed solely to defend against a charge of willful infringement. Also, clients sometimes feel compelled to have different law firms handle opinion work versus litigation work. All that artificial conduct is likely to be swept away by the Court's recent decision."

Cite as Dennis Crouch, Landmark Decision Strengthens Attorney-Client Privilege, Patently-O, September 14, 2004 available at http://patentlyo.com.

Patent Office Appoints Attaché to China

The U.S. Patent Office is hoping to help China improve its intellectual property laws.  Today, PTO Director Jon Dudas announced the appointment of Mark Cohen as intellectual property attaché to the U.S. Embassy in Beijing, China.  This is the first time that a PTO official has been placed overseas for the purpose of improving intellectual property protection in a specific country. Cohen begins his two-year assignment this week.

In addition to being an IP Attorney, Mr. Cohen is knowledgeable about Chinese language, culture and law.  Cohen, a graduate of Columbia University Law School,  accompanied Under Secretary Dudas on his trip to China this past Spring.  He is also the principal editor of Chinese Intellectual Property Law and Practice (Kluwer Law International, 1999).

The Commerce Department had previously recommended that the USPTO place an official in China to provide support in the fight against IP crime.

Patent Appeals Process Overhauled

New rules for appealing rejections and for patent interferences have been put in place at the U.S. Patent Office. Last month, the PTO announced changes to the rules that became effective today, September 13, 2004.  Generally, any paper filed with the Board of Patent Appeals and Interferences (BPAI) must now comply with the new rules set forth by the BPAI final rule.

LINKS:
FAQ Page.
Read more about the changes here.
Read more about publication of BPAI opinions here.

Federal Circuit: Injunction to "not infringe the patent" is overly broad.

International Rectifier (IR) v. IXYS (Fed. Cir. 2004) (04-1014).

On the day that its patent issued, IR filed a patent infringement suit against IXYS.  IR's patent relates to semiconductor device (MOSFET) packages having a higher current capacity without increased size. (U.S. Patent No. 6,476,481).  The issue for appeal is "whether the [permanent] injunction granted the patentee is overly broad, and, if so, what is the proper remedy."

The Federal Circuit rejected the injunction because it was overly broad under Rule 65(d) of the Federal Rules of Civil Procedure. 

In the patent infringement context, this court has rejected as overly broad a permanent injunction that simply prohibits future infringement of a patent. ... [T]he trial court's injunction in this case does not meet the specificity requirements of Rule 65(d).  The injunctive language set forth in the trial court's judgment prohibits infringement by "any device covered by one or more of Claims 1 through 5" of the '481 patent. 

Thus, the Appellate Panel vacated the injunction entered by the trial court and remanded the case with instructions to issue an injunction that meets the specificity requirements of Rule 65(d).

Comment: One interesting dichotomy is that the International Trade Commission (ITC) commonly issues broad injunctions or import restrictions that prohibit unlicensed entry of products that infringe certain patents.  For example, in the recent plastic bag case, the ITC issued a general exclusion order prohibiting the unlicensed entry of plastic grocery bags that infringe patent 5,188,235.

 

Patent Law: Disclosure-Dedication Rule Takes Shape

Toro v. White Consolidated (WCI) (Fed. Cir. 2004).

The Toro Company sued White for infringement of its patent on a leaf blower. (U.S. Patent No. 4,694,528).  The Minnesota district court granted summary judgment of non-infringement under the doctrine of equivalents -- finding that White's two-piece cover/ring was dedicated to the public in Toro's patent because it was disclosed, but not claimed. (Citing Johnson & Johnson v. R.E. Service). The Federal Circuit (LINN) agreed, finding that the disclosure of unclaimed subject matter "triggers the disclosure-dedication rule."

Because J&J had been decided after claim construction in this case, Toro also argued that the issues should be re-examined in light of the new law.  The Appellate Panel Disagreed.

While Toro argues that Johnson & Johnston represents a change of law, its argument is misplaced.  Johnson & Johnston did not alter our precedent as to claim construction, the issue at the crux of this case.... The doctrine of the law of the case is intended to prevent just the kind of speculation and second-guessing invited by the appellant here, in the broader interests of certainty, finality, and legal efficiency. The law is well-settled; decisions once made are not to be disregarded except for exceptional circumstances. Such circumstances are not evident here.

 

 

Football Invention Tests Quarterback Timing

In re Oister (BPAI 2004).

On appeal to the Board of Patent Appeals and Interferences, the patent applicants argued that their "ball having integrated timers for measuring or counting at least one time period" was novel over the asserted prior art. The Board agreed that the device was patentable because the prior art did not use a predetermined countdown time period.

Sample Claim from the Patent Application:

21. An apparatus comprising:

a ball having a surface and at least one internal cavity;
at least one timer for measuring at least one predetermined time period; and
the timer integrated with the ball.

According to USPTO records, the patent application (10/014,297) is assigned to the Classic Sports Company of Denver.

Patent News Sources

A reader asked about how I find news to post.  Here are some tips and rules that I follow:  

 

1. The primary sources for the Patently-O Blog are judicial opinions released by the Federal Circuit and various district courts.  In addition, I pay attention to rule changes at the Patent Office and legislative changes in Congress.  My policy is to post a review of every appellate opinion directly related to patent law, most rule/legislative changes, and some district court opinions. 

 

2. Secondarily, the world of blogs (or blawgs) provides lots of interesting points of interest.  For example, I read about the recent patent lawsuit against the RIAA on Stephen Nipper's blog.  I use the online news reader "Bloglines" check for new items from blogs around the world. I have about 35 blogs in my list.  There are millions of blogs, so 35 is quite culled. 

 

There are definitely other blogs that should be on my list, but I just don't have time to process that much information.  Here are four patent related blogs that I often use as sources. (in no particular order). 

a. The Invent Blog

b. PHOSITA

c. Promote the Progress

d. Anything Under the Sun Made By Man

I also like to read the Blawg Channel and the Anonymous Lawyer.

 

3. I look to the mainstream media to uncover some items more related to the business of patents and patent law.  For example, I read about the patent suit against Major League Baseball on c-Net News.  Generally, I try to add to the story in a meaningful way.  For example, for the MLB case, I downloaded the patent from the USPTO and looked at the claim language and figures.  Then, I contacted the plaintiff's attorney to get his comments about the case. 

 

Here are my three best news sources:

a. Google News patent search

b. Topix.net Patent/Trademark page

c. Chicago Tribune

Google and Topix are both news aggregators.  They seem to use quite different algorithms for ranking news stories.  Thus, it is unlikely that a scan of the top 10 stories will reveal more than 2 or 3 overlapping repeats.  Apparently, Yahoo News is more popular, but I don't really like it.

 

4. Other. I get lots of e-mails from readers about various items of interest.  This often spurs me to delve into the story to see whether I can provide some insight.  In addition, I just do what seems interesting to me.  For example, Last year I drove through the hills of western North Carolina and truly enjoyed the scenery and people.  On a whim, I looked for recent patents issued to inventors located in Asheville -- and posted a brief article on the topic.

North Carolina Inventor Helps Eliminate Bug Problems

A few months ago, David Nelson of Asheville, North Carolina received a patent on his device for capturing insects.  (U.S. Patent No. 6,651,379).  Essentially, David has created a stack of extra sticky pads -- like Post-It® notes on steroids -- that can be used to capture flies and other bugs.

Each sheet has a region is coated with a mild compression adhesive material capable of trapping of an insect in response to the physical manipulation by a human being.... For increasing the maneuverability of the device, the device can be attached to an elongated rod such as a fly swatter's handle.  

Online Patent Searching

In his recent article "Patent and Trademark Searching Via the Web," Robert Ambrogi provides a concise guide for using the Internet to find both U.S. and international patents and trademarks. Robert's first stops are the USPTO and the EPO. These sites are free, easy to use, and fairly comprehensive. Several fee-based services, such as Delphion and Micropatent are good second options if a more comperhensive search is required. Finally, Robert mentions the ROSSCO website that provides a matrix of patent search options.

Mr. Ambrogi is a lawyer in Massachusetts and author of The Essential Guide to the Best (and Worst) Legal Sites on the Web. In a recent article, he was kind enough to mention Patently-O, hopefully one of the best.

Out of Left Field: MLB Sued for Patent Infringement

Major League Baseball (MLB) is the subject of a new patent infringement lawsuit.  A Texas based patent holding company has sued MLB Advanced Media for infringement of its patents covering "computer simulation" of live events, such as baseball games. (e.g., Patent No. 6,204,862).  The case, filed in Austin, revolves around MLB's Internet-based products.

The following specific MLBAM products and services are implicated in the lawsuit: (1) Gameday, (2) Condensed Games, (3) Searchable Video (formerly called Custom Cuts), (4) Highlight Reels and (5) Fantasy Player Tracker. (DDB Press Release).

The four asserted patents are members of a single "patent family" and date back to a patent application filed in 1990.  David Barstow, Plaintiff DDB Technologies' head honcho, is listed as an inventor.

Last year CBS's SportsLine settled with DDB -- licensing its patent portfolio on a non-exclusive basis. (Link).

Tables Turned: RIAA Accused of Patent Infringement

Invent Blog: An online music distributor has reportedly sued the Recording Industry Association of America (RIAA) for patent infringement.  The asserted patent claims a method for generating a unique identifier based on content of a datafile, then later using the identifier to track files containing identical content.  (U.S. Patent No. 5,978,791).  The RIAA is accused of using the patented technology to track down peer-to-peer (P2P) copyright violators.

In a suit filed with the Los Angeles District Court, Altnet maintains that the RIAA, Loudeye subsidiary Overpeer and a fellow anti-piracy operation, MediaDefender, have all violated a patent it holds covering the identification of files on a P2P network using digital fingerprint technology. (The Register).

Altnet is a partner with Kazaa, and according to cNet news, "has been trying for several years to persuade record labels and music studios to allow Altnet to sell authorized versions of their products through the Kazaa file-swapping network." 

The lawsuit was filed in the Southern District of California.

 

NIH proposes open access to experimental results

The National Institutes of Health (NIH) has proposed a program of full public access to clinical results from agency funded research. 

Establishing a comprehensive, searchable electronic resource of NIH-funded research results and providing free access to all, is perhaps the most fundamental way to collect and disseminate this information.

Although lauded by many, it is expected that publication of results would injure the market for journals and other publications.

The NIH is encouraging the public to submit comments to publicaccess@nih.gov.

Link: NIH Public Access

Patent Board of Appeals continues practice of issuing unpublished opinions

Last week, the U.S. Patent Office (USPTO) Board of Patent Appeals and Interferences (BPAI) released released nineteen new patentability opinions.  Each of opinion contained the following header:

The opinion in support of the decision being entered today is not written for publication and is not binding as precedent of the Board. (Emphasis in original).

In fact, there appear to be no "published" BPAI opinions issued within the last twelve months. (Ex Parte Eggert from May 2003 being the most recently published opinion).  IP-Updates recently uncovered a 2003 article on point: Binding Precedent in the Trial Section of the BPAI.  In the article, attorney Charles Gholz notes the "stunning fact about binding precedent in the Trial Section of the BPAI is that there is very little of it."  Gholz provides a listing of seventeen binding cases for the period of 1999-2003 -- in contrast with thirty-one unpublished cases.  According to law professor Carl Moy commented that "[a]t its root, the Board’s position seems to be at odds with the basic ways in which common-law adjudication works."

The BPAI is in the process of revamping the appeals procedure.  Perhaps the changes will also result in a greater proportion of precedential opinions.

 

Amazon wins initial battle in patent case.

Pinpoint v. Amazon. (N.D. Ill. Aug 31, 2004) (Conlon, J.).

Pinpoint has sued Amazon and others for infringement of its patented system for scheduling broadcast and providing access to video programs. (E.g., U.S. Patent No. 5,758,257). Pinpoint claims that Amazon's website infringes by providing personalized book and music video suggestions.

In an August 31 decision, Judge Conlon of the Northern District of Illinois (E.D.) granted in-part Amazon's motion for summary judgment -- holding that claims 1-7 of one asserted patent to be invalid over several prior art references. However, Conlon's decision will allow Pinpoint's other claims, based on two additional patents, to move toward trial.

Amazon is entitled to judgment as a matter of law as to the invalidity of claims 1-7 of U.S. Patent No. 5,754,939. Pinpoint's claims with respect to U.S. Patent Nos. 5,758,257 and 6,088,722 must proceed to trial.

Trial is scheduled in Chicago for December 6, 2004.

Summary Judgment Decision:Pinpoint v. Amazon (pdf)

Boeing continues to patent

Chicago based Boeing recently patented a method of assembling a wing using a pair of wing spars. (U.S. Patent 6,779,272). According to patent office records, the Boeing Company holds thousands of patents on various aerospace technologies. Boeing also has several hundred more patents applications on file at the Patent Office awaiting action.  In 2003, Boeing received 266 issued patents -- slightly more than the country of Norway.

USPTO to offer conference for Alexandria based small business contractors

The USPTO along with the Alexandria Small Business Development Center are offering a workshop entitled "How to Do Business with the USPTO." The workshop, running from 8:00 - 11:00 a.m. is intended to "educate and guide Alexandria's small business community about the contract opportunities available at the USPTO by providing information on how the agency acquires its goods and services."

Wednesday, September 8, 2004
8:00 – 11:00 a.m.
Jefferson Building Conference Room
500 Dulany Street, Alexandria, VA

Link: http://www.uspto.gov/web/offices/com/speeches/04-21.htm

Federal Circuit: National Instruments v. MathWorks

National Instruments v. MathWorks (Fed. Cir. 2004) (03-1540) (unpublished opinion).

National Instruments (NI) sued MathWorks overs for infringement of its patented method of creating data flow diagrams.  The jury sided with NI and the district court denied Mathworks' subsequent motion for JMOL.

On appeal, MathWorks raised several issues and argued that the permanent injunction issued by the district court went impermissibly beyond the jury's findings.  Specifically, MathWorks argued that its Simulink software had many non-infringing use and that a product based injunction was unduly broad.  However, the Appellate Panel, reviewing for an abuse of discretion, affirmed -- holding that the trial court was sufficiently cognizant of MathWorks arguments in its decision.

MathWorks VP Richard Rovner outlined their position going forward:

First, The MathWorks will abide by the decision of the court and will make modifications to the Simulink product.

Second, the decision affirms that customers can continue to use previously purchased Simulink products and that The MathWorks can continue to provide technical support for these products.

Third, The MathWorks remains fully committed to the Simulink product family and, consistent with the court’s decision, will continue to support and enhance it.

National Instruments Press Release
MathWorks Press Release

Monsanto wins patent infringement appeal over Tennessee farmer

 Monsanto v. Ralph (Fed. Cir. 2004) (03-1243).

Mr. Ralph appealed from a Missouri court judgment imposing sanctions for discovery abuses, violation of court orders, repeated attempts to conceal misconduct and a three million dollar damage award for patent infringement and an alternative award of liquidated damages for breach of contract.

This case falls in line with the recent McFarling opinion involving Monsanto's Roundup-Ready seeds.  Mr. Ralph owns a Tennessee farm.  He purchased Roundup-Ready seeds and then reportedly saved seeds from the F1 generation -- a violation of the patent and the licensing agreement.  During discover, Ralph burned some seed stockpiles -- apparently to avoid discovery.

The Federal Circuit agreed with Monsanto that the district court properly applied sanctions for discovery abuses and properly calculated a reasonable royalty. However, the Appellate Panel did find that Monsanto's "one-size-fits-all" 120 multiplier for breach of contract failed to distinguish between various modes of breach -- and thus was not enforceable.

Conclusion

Although we have determined that the contract-based damages are excessive in light of our recent decision in McFarling, the trial court did not abuse its discretion in its choice of sanction or its denial of Ralph's post-judgment motion, and Ralph has not shown that the jury award for patent infringement is "grossly excessive or monstrous," clearly not supported by the evidence, or based only on speculation or guesswork.  Accordingly, the decision of the district court is

Patent Cooperation Treaty: Chapter II filings in sharp decline

From Promote The Progress: As the figure shows, the use of Chapter II demands in PCT filings is in sharp decline. The driving force is that many countries no longer requre the Chapter II proceedings for the 30 month national stage filing extension. At the same time, the number of international patent applications continues to rise. (Data from WIPO).

Labor Day in America

It is Labor day in the U.S. Enjoy a day of rest.

CAFC refuses to examine Request for Comments (RFCs) when defining ordinary meaning of claim terms

Many Internet standards are initially developed in papers known as Requests for Comments (RFCs). A purpose of an RFC is to collect propose a common language for facilitating development and to collect commentary. Often, however, the RFCs become the authoratitive document describing a particular function. For example, RFC-1738 was created by Berners-Lee in 1994 and is thought of as an authoritative, unbiased source relating to the meaning of the term "URL." The Federal Circuit, however, has refused to allow RFCs to take an authoritative position in claim construction. ACTV v. Disney, 346 F.3d 1082 (Fed. Cir. 2003). In ACTV, the Appellate Court differentiated RFC documents that attempt to shape meaning of terms from dictionaries that reflect established usage.

Juicy Whips up on Orange Bang: CAFC Affirms Entire Market Value Rule

Juicy Whip v. Orange Bang (Fed Cir. 2004)

 

by Joseph Herndon

 

This is the latest appeal in the lengthy litigation between Juicy Whip and Orange Bang.  (U.S. Patent No. 5,575,405). On remand to determine damages, the district court rejected Juicy Whip’s argument that it would have sold more syrup “but for” Orange Bang’s infringement.  Juicy Whip appealed. 

 

Juicy Whip claimed that there exists a functional relationship between its patented dispenser and the unpatented syrup, a link adequate to justify recovery of lost profits.  The CAFC agreed and vacated the jury’s award and remanded this case back to the district court for a third time to allow Juicy Whip to prove lost profits on its syrup sales.

 

The CAFC followed the “functional unit” test set forth in Rite-Hite, e.g., that the entire market value rule is a principle of patent damages that defines a patentee’s ability to recover lost profits on unpatented components typically sold with a patented item, if both constitute a functional unit. 

 

The CAFC found that Juicy Whip’s dispenser and the syrup were analogous “to parts of a single assembly … as the syrup functions together with the dispenser to produce the visual appearance that is central to Juicy Whip’s ’405 patent.”  The Court explained that “a functional relationship between a patented device and an unpatented material used with it is not precluded [from profit determination] by the fact that the device can be used with other materials or that the unpatented material can be used with other devices.” 

Note: Joseph Herndon is a law clerk and at the intellectual property firm McDonnell Boehnen Hulbert & Berghoff and is a registered patent agent.  Joe has a stellar background in electrical engineering and plans to graduate from law school in 2005. herndon@mbhb.com.

Copies of Patent Application Records

Earlier this summer, the USPTO announced that all copies of patent application records would be provided only in electronic form.  That change has been repealed.

Now, unless otherwise requested, certified copies of patent application records provided pursuant to 37 CFR 1.19 (b) will be produced with a paper certification statement, continuing the practice in effect prior to July 30, 2004. The certification statement will include an embossed seal and original signature.

USPTO Notice
Earlier Notice

Means-Plus-Function Limitation Rarely Found When Claim Lacks "Means" Language

Lighting World v. Birchwood Lighting (Fed. Cir. 2004).  

In its complaint, Lighting World asserted that Birchwood's fluorescent lamp fixtures infringed Lighting World's patents. At the close of Lighting World's case-in-chief, the court granted Birchwood's motion for JMOL on the ground that Lighting World had not shown equivalence under the doctrine of equivalents.

Lighting World appealed the District Court's claim construction determination that the term "connector assembly" was a means-plus-function limitation.  The unanimous Appellate Panel vacated, finding that Birchwood did not demonstrate that section 112 ¶ 6 should apply.

[W]e have seldom held that a limitation not using the term “means” must be considered to be in means-plus-function form.  In fact, we have identified only one published opinion since Greenberg (Fed. Cir. 1996) in which we have done so, and that case provides a useful illustration of how unusual the circumstances must be to overcome the presumption that a limitation lacking the word “means” is not in means-plus-function form. 

 

 

IBM and Intel license blade server specifications, but not associated patents

IBM and Intel have announced a general license agreement on their patented blade server technology. This move is expected to create a level of standardization in the blade server market. (The Register).

The license (PDF) is directed at "copyright and trade secret rights in the Specification, to use the Specification for the limited purpose of designing and manufacturing Licensed Products, and to reproduce a limited number of copies of the Specification as is reasonably necessary to design and manufacture Licensed Product."

Most notably, the license does not extend to patents, patent application, or trademarks.

Licensors grant no license ... under any patents, patent applications, mask works or trademarks of the Licensors. Licenses under any patents of IBM or Intel will be addressed in separate patent license agreements.

Instructions for registering for a license are available here.

Note: This move falls in line with IBM's open source philosophy. However, it is important to note that IBM and Intel may likely retain control over much of this technology through their vast patent portfolios.