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.
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.
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.
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 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.
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, . . .”
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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?
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.”
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 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.
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.
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.
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 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.
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.
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.
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.
