Patent Law Blog (Patently-O)

Patent Case: Bard v. United States Surgical

Bard v. U.S. Surgical (Fed. Cir. 2004). 

Bard owns a patent on a method of repairing hernias with a flexible mesh plug. Bard sued U.S. Surgical for infringement and for inducing surgeons to infringe. Because in the prosecution history and specification Bard defined the claimed plug as having pleats, the district court's claim construction requiring "pre-formed pleats" was affirmed.  Noninfringement affirmed.

Concurrence by Judge Prost:

In this case, the inventors clearly and deliberately disclaimed any coverage of non-pleated plugs they might otherwise have had when they stated during reexamination that “the surface of the inventive plug is pleated” in an attempt to overcome the prior art-based rejections of claims 19 and 20. Under the theory that the inventors acted as lexicographers, the majority holds that this statement, among others, shows that the inventors “clearly defined the plug of claim 20 as having pleats.”  The statement, in my view, is a surrender of claim scope, which precludes Bard from recapturing coverage of non-pleated plugs. Litton Sys., Inc. v. Honeywell, Inc., 140 F.3d 1449, 1458 (Fed. Cir. 1998). Because the inventors clearly disclaimed coverage of non-pleated plugs in the reexamination, I believe we may affirm the judgment of the district court on that basis alone; accordingly, I find it unnecessary to reach the remaining grounds for affirmance relied upon by the majority.

 

Patent Suit Alleges Disney Stole fastPass Idea

Disney's patented fastPass system allows customers to reserve a time to ride an attraction, rather than waiting in line.  (U.S. Patent No. 6,173,209). 

According to a report by Sean Mussenden at the Sun Sentinel, a Tennessee man has sued Disney for stealing his idea for the line management system. 

After Robert Keyes watched a man pass out in a ride queue at Disney-MGM Studios, he had an epiphany, he said: Theme park visitors do not have to stand in line.

So, according to a patent lawsuit Keyes filed this month in federal court in Orlando, he sent a letter to Disney executives in 1991 describing a system that would allow some theme-park visitors to wait in a "standby" line but give others a ticket to return later and avoid the wait.

A top Disney executive sent him a letter back a month later, telling him the idea wouldn't work and would result in "more guest inconvenience," according to Keyes' lawsuit.

Now, Keyes has sued Disney for "stealing his idea."  In the complaint, he has requested correction of inventorship and damages for unjust enrichment.

On their website, Disney notes that "we are unable to accept or examine any creative idea, suggestion or document other than those solicited by the company itself.  We hope that you understand the aim of this policy, which is designed to prevent any future misunderstandings or problems which might arise if projects developed by [Disney] were to show a resemblance to creative work originated from third parties."

Links:
Download the complaint against Disney.
Download Disney's patent.

In a parallel case, the 9th Circuit Court of Appeals, in Jeff Grosso vs. Miramax Film Corp., found that movie and television executives enter an implied contract every time they read a script or hear a pitch.

Caterpillar Jury Trial Vacated Because Juror's Spouse Was an Employee

Caterpillar v. Sturman (Fed. Cir. October 28, 2004). 

The Court of Appeals for the Federal Circuit (CAFC) today vacated a jury verdict in a trade secret and contract dispute involving Caterpillar. 

The technology at issue involved the use of residual magnetic latching in a fuel injector.  (See, for example, U.S. Patent 3,646,898).  The Appellate Panel, led by Judge Newman, decided several important issues in this case.  One of the most interesting involved Juror No. 3 whose spouse was a current Caterpillar employee.

At the beginning of trial, during the jury selection process, Sturman moved to dismiss for cause any current or former Caterpillar employees and their spouses. The district court denied Sturman’s blanket objection, but specifically allowed Sturman to show cause for individual jurors. . . . Sturman did not individually challenge for cause Juror No. 3, the spouse of a current Caterpillar employee, nor did it use one of its peremptory challenges to have her removed. Juror No. 3 ultimately sat on the jury.

Sturman appealed the district court's opinion to allow Juror No. 3 to sit on the jury.

Potential for bias reviewed de novo.

Normally, the question of whether an individual juror is biased is a factual determination entitled to deference on appeal.  However, the CAFC ruled that a district court's decision on "implied bias, as opposed to actual bias" is reviewed de novo.

Spouse of Employee is Biased as a Matter of Law.

Applying Seventh Circuit law, the court found that implied bias is demonstrated by "showing that the juror has a personal connection to the parties or circumstances." 

Juror No. 3 had a financial interest in this case because her husband worked for Caterpillar at the time of the trial. As noted in Polichemi, even a tiny financial interest is enough to warrant dismissal. And it is legally irrelevant whether this financial interest arose due to his employment in management or under a union contract. . . . In addition, we find no distinction in the law between the financial interest of an at-will management employee and the interest of an employee under a union contract, nor do we advocate creating one.

Jury verdict vacated. Case remanded for a new trial.

Trademarks granted on Mies van der Rohe's 1929 furniture designs.

Knoll has received trademark registrations on several Mies van der Rohe furniture designs.  (NYTimes Article). These pieces, originally designed in 1929, have been increasingly copied by furniture importers.  A Knoll spokesman noted that the registration "gives a green light to U.S. customs to stop unauthorized products from reaching this country."  Knoll's licensed version of the Barcelona Chair retails at just under $5,000.  Ernest Beck reported that the registration has the potential to "reduce the availability of replicas of [the] classic modern furniture."

Ludwig Mies van der Rohe was a famous German architect who left for Chicago in the late 1930's to head the architecture program at the Illinois Institute of Technology. He is known for the International Style of Modernism and for his catch-phrase "less is more."

 

 

iPod Receives Design Patent

Apple has received a design patent on its 3G iPod. The application was filed just days before the public release of the new iPods, and issued as a new patent on October 26. (U.S. Patent No. D497,618). Apple Insider and Steve Nipper have more information.

What is a Design Patent?
A design patent covers ornamental, non-functional characteristics of an article of manufacture. The Patent Act provides that a design patent should be issued for any new, original and ornamental design for an article of manufacture. As such, a design patent only protects the appearance of an article and not any structural or utilitarian elements. A design patent has a term of 14 years from the date of issuance.

LINK: The patent laws provide for the granting of design patents to any person who has invented any new and nonobvious ornamental design for an article of manufacture. The design patent protects only the appearance of an article, but not its structural or functional features. The proceedings relating to granting of design patents are the same as those relating to other patents with a few differences. See current fee schedule for the filing fee for a design application. A design patent has a term of 14 years from grant, and no fees are necessary to maintain a design patent in force. If on examination it is determined that an applicant is entitled to a design patent under the law, a notice of allowance will be sent to the applicant or applicant’s attorney, or agent, calling for the payment of an issue fee. The drawing of the design patent conforms to the same rules as other drawings, but no reference characters are allowed and the drawing should clearly depict the appearance, since the drawing defines the scope of patent protection. The specification of a design application is short and ordinarily follows a set form. Only one claim is permitted, following a set form.

DMCA weakened again: Court overturns Lexmark injunction

Link: Denise Howell has the scoop on the 6th Circuit's reversal of the Lexmark DMCA injunction.

"We should make clear that in the future companies . . . cannot use the DMCA in conjunction with copyright law to create monopolies of manufactured goods for themselves[.]"

Read the opinion. Coverage by Jason Schultz of Copyfight.

Background on the Case:

Via EFF: Lexmark's DMCA case against Static Control is aimed at eliminating aftermarket laser printer toner cartridges. Lexmark has implemented an "authentication" handshake between its printers and toner cartridges. When Static Controls reverse-engineered the authentication procedure in order to enable refilled and remanufactured cartridges to work with Lexmark printers, Lexmark sued in Lexington, KY, claiming both copyright infringement and circumvention in violation of the DMCA.

Read the Federal Circuit's rejection of the DMCA.

Free desktop software for downloading PDF patent documents

freePat: Canadian patent attorney Peter Eliopoulos has written a bit of desktop software that allows you to download PDF patent documents.  The software is free and each download is free -- no money changes hand.

Catch: The only problem is that the software is only in Version 0.6.  I.e., beta.  Peter has written a great tool -- someone should take Peter's code and build a nice GUI around it.

Patents: Federal Circuit Defines Requirements For Declaratory Judgment Action

Capo v. Dioptics (Fed. Cir. 2004).

Background

Dioptics produces "wear-over" sunglasses that are adapted to fit over or clip onto eyeglasses.  Capo is a wholesale marketer of sunglasses.  Prior to suit, the president of Dioptics (Henry Lane) called the president of Capo (Mark Ascik):

Lane left a voice mail message stating that if he did not hear promptly from Ascik, he would have to "presume that you are just ducking and racing forward to infringement;" Lane cautioned Ascik about "charging down a path here that's going to end up into a multi-million dollar lawsuit." Ascik then phoned Lane, and Ascik's affidavit states that Lane said that Dioptics had thirteen United States patents and would soon have forty, and that these patents covered all of the basic wear-over sunglass frame shapes. Lane said that Dioptics would have no choice but to defend its patents against infringement, and that he was sure he would win an infringement suit.

After the conversations, Capo filed a declaratory judgment complaint, asking for a preemptive noninfringement holding.  Dioptics moved for dismissal of the declaratory action, on the ground that Dioptics could not have threatened suit because no one at Dioptics had seen Capo's product or analyzed it for infringement.

The district court dismissed the declaratory action, finding that the dispute was not "sufficiently crystallized" for declaratory action.  On appeal, the Federal Circuit reversed:

Objective Apprehension Of Being Sued Sufficient For Declaratory Judgment Action.

Dioptics' argument that it could not have ethically filed suit at that time may be relevant to whether Dioptics acted responsibly, but it is irrelevant to whether the patentee's threats of suit instilled a reasonable apprehension of suit.  Although Dioptics now characterizes Lane's words as "cursory," the record well supports the conclusion that Capo had the objectively reasonable apprehension that it would be sued by Dioptics for patent infringement. This objective apprehension was deliberately and intentionally created by the president of Dioptics. It is irrelevant whether Dioptics had adequately investigated the basis of its threats, if they created the requisite objective apprehension. . . . We conclude that the district court clearly erred in declining to find that Capo had a reasonable apprehension of suit.

Failure to Raise Counterclaims Does Not Warrant Dismissal.

The district court gave weight to Dioptics failure or refusal to make compulsory counterclaims for infringement.  The Appellate Court found that Dioptics' waiver of the claims should not add any weight to the argument for dismissal.

The Existence of Pending Patent Applications Does Not Justify Dismissal.

The district court also gave weight to Dioptics' argument that it had pending patent applications that upon issuance would strengthen its case for infringement.  The Appeals Court disagreed with this finding:

Capo is entitled to resolution of the infringement accusations already made, for the patents that already exist. The possibility of future patents is irrelevant to present rights and liability.

Conclusion

Resolution of this dispute is within the court's capability, and it is the district court's responsibility to resolve it. Declining to do so is an abuse of discretion.

We conclude that the dismissal was improperly granted. The dismissal is vacated, and the case is remanded for further proceedings.

 

BEvERage dispenser

You will not be surprised to learn that Randy Flann, the inventor of Patent No. 5,966,743 is from Milwaukee, Wisconsin.  In fact, you can buy real gear from Randy at his website www.rofoheadgear.com. The working old world barrel headgear runs just under $30.

Thanks to Mark Chael for the link.

Federal Circuit Denies Petitions to Rehear

Today, the Federal Circuit, without opinion, denied several petitions for rehearing en banc:

• Toro v. White Consolidated Industries petition for rehearing DENIED.
• Home Diagnostics v. LifeScan petition for rearing DENIED.
• Chamberlain Group v. Skylink Technologies petition for rehearing DENIED.

Earlier this week, the CAFC denied petitions for en banc rehearings in Monsanto v. Ralph and International Rectifier v. IXYS.

Barring an appeal to the United States Supreme Court, the holdings on appeal represent the final rule of law.

California Appeals Court Upholds Genentech Verdict

City of Hope v. Genentech (Cal. App. 2004) (B161549). 

Decision: A California state appellate court has upheld a $500 million verdict against Genentech for back payment of royalties on drug sales from a 1976 agreement with City of Hope National Medical Center.  The court found that Genentech breached a fiduciary duty to City of Hope.

Genentech does not dispute that it failed to disclose various licenses and pay royalties on those licenses. Rather, it contends that it did not breach any fiduciary duty so long as it was adhering to an erroneous but legally tenable interpretation of the agreement. In essence, Genentech would have us hold that even if it followed an interpretation it knew was contrary to what the parties intended and agreed upon, it could not be held liable so long as that interpretation was objectively sustainable under the law. . . . None of [the cases cited by Genentech] allows a party to profit from a legally tenable contract interpretation when the party knows that the agreement has a wholly different meaning. In any event, it would be antithetical to the very nature of the obligations imposed on fiduciaries for us to hold that a fiduciary could act in the manner suggested by Genentech.

To the extent Genentech contends that its interpretation of the agreement was held in good faith, that contention fails. The jury’s finding of fraud or malice demonstrates that it believed that Genentech acted in bad faith. That finding . . . is supported by substantial evidence and is sufficient for concluding that Genentech breached its fiduciary duty.

According to a California based patent attorney, several amici curiae -- including Intel Corp., TechNet and the California Chamber of Commerce -- pleaded with the court to reverse the judgment, saying that imposing fiduciary status as a cost of using third-party intellectual property would impede innovation.  Genentech has announced its plans to appeal the decision to the California Supreme Court.

About the Case: In 1978, City of Hope biologists Arthur Riggs and Keiichi Itakura developed a technique for splicing into a bacteria gene the DNA for human insulin, which became the world's first biotechnology drug. Genentech agreed to pay City of Hope 2% on net sales of products that were tied to the DNA provided by the cancer center.  (see Patent No. 4,704,362). Royalties had been paid for sales of insulin and on sales growth hormone products, but the cancer center is asking for royalties on products made under 20 other license agreements. 

UK High Court Rejects Doctrine of Equivalents

Hal Wegner recently reviewed the House of Lords case of Kirin-Amgen v. Hoechst Marion.  This case presented the first opportunity for the British high court to interpret the "new" patent law (introduced a quarter-century ago).

According to Hal, the court "held that the 'purposive construction' test for determination of patent scope should be maintained and is consistent with the European Patent Convention. The doctrine of equivalents as an alternative test is expressly repudiated."

There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.

In rejecting the American style doctrine of equivalents, the Lord Hoffman noted that:

I cannot say that I am sorry [that our precedent is antithetical to a doctrine of equivalents] because the Festo litigation suggests, with all respect to the courts of the United States, that American patent litigants pay dearly for results which are no more just or predictable than could be achieved by simply reading the claims.

Invention Submission Corporation versus Jon Dudas, USPTO Director

In January 2002, the PTO initiated an advertising campaign to warn the public of invention promotion scams. In a press release describing the campaign, the PTO noted that the agency's advertisements would feature "an actual inventor, Edward Lewis, who lost several thousand dollars." In the advertisements, Lewis described how he had spent $13,000 dollars on the services of an invention promotion company but "ha[d]n't seen a penny." The advertisements did not accuse any particular promotion company of engaging in scams, nor did they identify the company to which Lewis referred.

A news organization then published a story on the Invention Submission Corporation, noting that Lewis had filed a complaint against ISC and how the FTC had investigated the ISC for "misrepresentation in patent marking schemes."

The Invention Submission Corporation then sued the PTO under the Administrative Procedure Act (APA) alleging that the PTO's advertisements exceeded its statutory authority and were done in order to penalize ISC.

Both the district court and 4th Circuit Court of Appeals dismissed ISC's claims, noting that the PTO's ad campaign was not a "final decision" as required for jurisdiction under the APA.

 Now, ISC has petitioned the Supreme Court of the United States for a hearing on the case.  ISC argues that the the PTO's actions constitute a sanction against the company, and is therefore reviewable under the APA.

The government brief in opposition to the petition is available here. The briefs have been distributed for conference scheduled for October 29.

 

Courts Rely on Internet Articles to Deny Trademark Application

In re DSS Environmental (Fed. Cir. 2004) (unpublished).

The USPTO refused to register DSS's trademark DUALSAND on the grounds that the term is merely descriptive.

Under 15 USC 1052(e)(1), the PTO may refuse to register a mark if the mark, “when used on or in connection with the goods of the applicant,” is “merely descriptive” of the applicant’s goods. 

The Federal Circuit agreed with the PTO, concluding that the PTO's decision was supported by substantial evidence.

Interestingly, the Appellate Panel supported the PTO's reliance on articles from the Internet. 

DSS argues that the articles in the record lack credibility because their source was the Internet. However, the examining attorney was not relying on the articles for their accuracy, but merely to ascertain how the term “dual sand” is used in the context of water wastewater filtration. In making such a determination, the examining attorney may obtain evidence from “any competent source, such as dictionaries, newspapers, or surveys.” . . . The Internet articles in this case, including on-line copies of newspaper articles, fully satisfy that requirement.

Refusal to register mark affirmed.

 

Design patents: Bernhardt v. Collezione Europa

Bernhardt v. Collezione Europa (Fed. Cir. 2004) (04-1024).

Bernhardt sued low cost furniture dealer Collezione for infringement of six design patents. The district court, however, held that several of patents were invalid under 102(b) for prior public use.  Specifically, the court found that Bernhardt's disclosure of the designs at a Pre-Market exhibition rendered the patents invalid.  In addition, the court found that Collezione's products did not infringe the patents.

On appeal, the Federal Circuit vacated and remanded:

I. Public use analysis for a design patent requires substantially similar appearance in the eyes of ordinary user as compared to the claimed designs or their points of novelty.

While the court concluded that each of Bernhardt’s furniture pieces ... were “similar to” the furniture design “shown in” each of Bernhard’s design patents, the analysis does not discuss or explain whether the furniture designs actually displayed at Pre-Market were substantially similar in appearance in the eyes of an ordinary observer to the claimed designs or appropriated the points of novelty of the patented designs. Only after making these determinations could the district court properly assess whether an invalidating public use within the scope of § 102(b) had occurred.

II. Witness testimony is not required to establish infringement of design patent.

The court apparently did not consider the evidence actually introduced—the design patents, their prosecution histories, and the cited prior art—from which Bernhardt’s proposed points of novelty and contentions regarding how Collezione’s accused designs appropriated Bernhardt’s proposed points of novelty might have been discerned. Because the district court incorrectly required Bernhardt to explain its points of novelty through the testimony of a witness, and concluded, based on the absence of such testimony, that Bernhardt failed to prove that Collezione had appropriated the novel ornamental features of the patents-in-suit, we vacate the district court’s judgement of non-infringement, and remand the infringement issue to the district court for further proceedings consistent with this opinion.

Kim v. Dawn Food

Kim v. Dawn Food Products, Inc. (N.D. Ill. October 12, 2004) (10 C 1906).

Historically, potassium bromate has been used in bread-making.  However, the substance causes cancer in laboratory animals.  As a substitute, Yoon Kim invented a potassium bromate replacer that includes ascorbic acid to act as an oxidant. (RE 36,355).

Kim sued Dawn Foods in the Northern District of Illinois, alleging that defendants doughnut mix infringed the patent.  After construing the terms, the court found that Dawn Foods' products clearly did not infringe. 

Interestingly, Kim's case may have been hurt most by her rapid succession of representation.

Attorneys for Lord, Bissell & Brook, LLP filed a notice of appearance in this Court to represent Kim on April 30, 2003.  On February 12, 2004, Kim requested that the Court grant the Lord, Bissell, & Brook, LLP attorneys' motion to withdraw in light of "irreconcilable differences concerning the future handling of the above-captioned case."  Two months later, attorneys for Ryndak & Suri filed a notice of appearance in this Court to represent Kim.  On July 23, 2004, Kim requested that the Court grant Ryndak & Suri attorneys' motion to withdraw, citing "conflicts between attorneys and the plaintiff."

 

USPTO's Role is to Protect Intellectual Property Rights

USPTO Director Jon Dudas recently gave a stirring speech at the AIPLA annual meeting in Washington DC.  Here is the money quote:

[M]y charge is very clear, the charge of the USPTO is very clear. We are resolved to protect your intellectual property rights. Internationally, we are resolved to protect your rights in the treaties we debate, the enforcement measures that we promote, and the Free Trade Agreements that we negotiate. Domestically, we are resolved to protect your intellectual property rights through administration policy and, perhaps most importantly, by ensuring that you have the highest-quality patents and trademarks in the shortest time possible, in short, to give you the certainty and the quality that you need and deserve.

Transcript.

Canadians hope to Ban Drug Exports to the U.S.

Link: Yesterday, we reported on how Patent Law is likely to shape the debate on drug importation from Canada and other countries.  Now, the AP is reporting that a coalition of Canadian groups is beginning to pressure the government there to ban prescription drug exports.  The coalition argues that the rise in exports is likely to lead to shortages and price hikes in Canada.

Here in Illinois, Governor Rod Blagojevich has been a strong advocate of legalizing imported drugs. (Link). 

Canada may also be able to share its surplus flu vaccine with the U.S. (Link).

States May Face Patent Liability For Importing Drugs

In a recent paper, Penn State Professor Daniel Cahoy analyzed the importation of inexpensive drugs from Canada and other countries. His research looked at potential liability for patent infringement by various levels of government. Cahoy arrived at several conclusions:

• Both private organizations and municipalities share the same, crushing liability under the Patent Act;
• Despite Eleventh Amendment immunity, state governments face nearly equivalent liability for takings claims based on the Fourteenth Amendment;
• The federal government confronts liability under the Fifth Amendment that broadens its exposure under the recognized just compensation statute; and
• Attempts by Congress to modify the Patent Act to permit importation would likely constitute an unconstitutional taking.

Cahoy, Daniel R., "Patent Fences and Constitutional Fence Posts: Property Barriers to Pharmaceutical Importation" . Fordham Intellectual Property, Media & Entertainment Law Journal, Vol. 15, Winter 2005. http://ssrn.com/abstract=603121

Note: Under U.S. Law, the first sale (AKA "Exhaustion") doctrine does not apply to products sold in a foreign country.

United States patent rights are not exhausted by products of foreign provenance. To invoke the protection of the first sale doctrine, the authorized first sale must have occurred under the United States patent.

Jazz Photo v. ITC, 264 F.3d 1094 (Fed. Cir. 2001), cert. denied, 536 U.S. 950 (2002).

The object of the invention is to create inventions

If only it were this easy to create inventions that actually work: The Prior-Art-O-Matic.

Patent Cases See Increasing Number Of Dissenting Opinions

Link: America was founded as a dissenting opinion in the 18th Century colonial world.  Not wishing to be unpatriotic, the Court of Appeals for the Federal Circuit has been on a rampage -- issuing dissents with abandon.  According to Professor Polk Wagner's research, the percentage of dissenting or concurring opinions in CAFC cases has risen from under 5% in the late 1990's to over 25% today.  (chart from www.fedcir.org).

Comments: The amount of dissent on the court clearly indicates that the composition of the panel for your case will have a major impact on your outcome.  As Stephen Nipper and Hal Wegner have noted, if the composition of the panel was known well in advance of appeal, the resulting certainty would lead to more settlements.  Despite any internal conflict within the Federal Circuit, it would be laughable to argue that the law is less settled or less certain than it was prior to the formation of the court.

Eolas, Microsoft and Pellegrini

The recently filed petition in Pellegrini may ultimately decide the damage award in Eolas v. Microsoft.  Both cases discuss the international application of U.S. Patent Law, and the requirements of 35 U.S.C. 271(f)(1).

271(f)(1) provides for liability for causing components of a patented invention to be supplied for assembly abroad:

Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. 35 U.S.C. 271(f)(1).

At the district court level, Eolas won a $500 million verdict for Microsoft's alleged patent infringement.  A portion of the award fell under 271(f).  In Eolas, no physical component of the patented invention had shipped from the U.S.  However, the District Court ruled that Microsoft's shipment of information on a "golden master" disk created a sufficient nexus with the U.S.  The Eolas case is now on appeal.

Similarly in Pellegrini, no physical components were shipped from the U.S.  However, the evidence indicates that the accused infringer made sales and controlled manufacture of components from the U.S.  Unlike in Microsoft, the Federal Circuit found no infringement because no physical components of the patented invention were shipped from the U.S. 

Now, Pellegrini has asked the Supreme Court to review its case.  In addition to solidifying the meaning of the infringement statute, the outcome may also help determine the utimate damages in Eolas.

UPDATE: Professor Joe Miller reminded me of another related case that is pending appeal: AT&T v. Microsoft, (S.D.N.Y. 2004).  That case involved another "Golden Master" disk shipped by Microsoft.  In AT&T, the court held that object code contained on the disk constituted a component under 271(f) even though the object code on the disk was replicated abroad before being incorporated into the final product.

A Tool For Predicting The Outcome Of Claim Construction in Patent Appeals

Professor Polk Wagner has a background in empirical research.  Lately, he has been using his statistical tools to help provide a better picture of how the Federal Circuit operates.  You can see his work at the "Claim Construction Project."  His site and papers are loaded with information.  Perhaps the most fun is the Predictor Tool.  By selecting the panel of appellate judges, the tool will predict the panel's decision methodology.

Contingent Patent Cases

Link: The American Jobs Creation Act of 2004 is ready for President Bush's signature.   The act may be a boon for patent litigators who work on contingency. 

The IRS has previously forced victorious plaintiffs to pay taxes on the entire award, then taxed the attorneys for their contingent fee.  In essence, a large chunk of the earnings are double taxed.  The Jobs Creation Act of 2004 reportedly eliminates this double taxation -- thus increasing the size of the pot to be split between the plaintiff and its attorneys.

Patent Case: On-Line Technologies v. Perkin-Elmer

On-Line Technologies v. Perkin-Elmer (Fed. Cir. 2004).

On-Line sued Perkin-Elmer for infringement of its patent that provides a method of increasing the light-path in a spectrometer with corrected astigmatism and reduced diffusion. (U.S. Patent No. 5,440,143).  After construing the claims, the district court granted summary judgment of noninfringement. 

On appeal, On-Line argued that the claims were too narrowly construed, and that the allegedly infringing mirrors having a toroidal surface fall within the claim limitation of a substantially spherical surface. Perkins-Elmer disagreed, noting that On-Line specifically omitted toroidal surfaced mirrors from its claims, and thus "that On-Line had dedicated surfaces of that shape to the public."

The Federal Circuit agreed with On-Line that toroidal surfaces are covered by the claims.

We reach that conclusion because the specification makes clear that the claim language referring to spherical surfaces with cylindrical components includes toroidal surfaces. 

The court vacated and remanded this portion of the district court decision, but affirmed the rest.

 

Can Dependant Claims Define Structure of Means-Plus-Function Term?

Ghaly v. Hasbro - Re-mix

Ghaly has asked the Court of Appeals for the Federal Circuit for a rehearing based on perceived errors in its prior ruling on the case.  Rehearings are rarely granted.  However, in this case, Ghaly may have a point.

Ghaly's patent claims an "entry control means" limitation.  A major bone of contention is whether the control means is limited to bi-stable switches (Hasbro's position) or include momentary switches (Ghaly's position).  In its initial decision, the CAFC sided with Hasbro, finding that the disclosure limited the claim to bi-stable switches. 

However, Ghaly raises two interesting points in his petition to rehear: 1) In its opinion, the CAFC defined momentary switches to be "like keys on a keyboard [that] revert to their original status the moment a user stops pressing on them."  2) In the dependent claims, Ghaly disclosed that the "entry control means" could be a "key pad switch."  Ergo, argues Ghaly, a key pad switch is a momentary switch.

Ghaly does not cite any cases directly on point, and thus raises the following legal question:

Should means-plus-function language be interpreted in light of the claims as well as the body of the specification?

Hasbro's counsel, Tony Sitko disagrees with Ghaly's interpretation of the case. He noted that "Hasbro thinks that the Court's opinion speaks for itself, and quite frankly, that the Court got it right."

Honeywell Enforces LCD Patent

This week, Honeywell sued some of the biggest names in the consumer technology industry for infringement of its patents related to liquid crystal display (LCD) technology. (Patent No. 5,280,371).  The patent claims a backlight diffuser consisting of two sheets of cylindrical lenses between the backlight and the screen. 

Included on the list of defendants are Apple, Casio, Dell, Kodak, Fuji, Fujitsu, Nikon, Nokia, Pentax, Sony, Toshiba, and more. The two largest producers of flat panel monitors, LG Philips and Samsung, have already taken licenses under the patent. 

Patents for sale (not babies)

The Patent Offices publishes the Official Gazette (OG) in an online version every Tuesday. One section of the OG includes patents that are available for license or sale. Patentees can list patents they have available in a high-tech garage sale.

This week's patents for sale include a Caulking Gun (U.S. Patent 6,435,373), A credit card for apartment renters (the card always had enough credit in reserve to pay the monthly rental fee) (U.S. Patent 6,738,751), and a diaper restraint system. (U.S. Patent 6,755,198).  Contact information for the inventors is is available here.

Question: Is this type of listing ever successful? E-mail your story.

Blawger Bowl

 

Although only news for some, the Blawger Bowl continues to rise in status as the premier “sporting league” for legal bloggers.  Here is a rundown of this week's results:

 

 

The InventBlog, now 5-0, showed itself once again to be the team to beat by skunking Loosely Coupled.  Halfway through the match, LC was quoted as saying “My team sucks.”  From an objective perspective, at 1-4, Loosely Coupled is quite awful. Just before the game, LC made a number of roster changes.  That time could have been better spent whistling Dixie.

 

Dante Culpepper once again helped Patently-O get a win.  Detractors might also note that the win could be a result of The Importance Of . . . failing to field a team of actual players – rather than those injured and on a bye week.

 

 

 

Looking like two country mice lost in the big city, TechLawAdvisor and ActualMalice had miserable games.  Fortunately for the TLA, Actual Malice earned the lowest point total of the whole season thus far.  The big win puts TechLawAdvisor in a heated tie for second with Patently-O – They will match up head-to-head next week.

The Libertarians fell out of the top bracket by suffering a defeat at the hands of the Buzzmodo.  If I were Mr. Kinsella, I would be hiding my face too. As noted by his loss, UnbillableHours may actually be spending some time working on his client's projects.  Kudos go to CRC Inducers for the win. 

Finally, PromoteTheProgress gave Ernie another haircut.

 

 

 

 

Gerald Pellegrini is an inventor in Worcester, Massachusetts.  For the past few years, he has been engaged in a patent dispute with Analog Devices, headquartered in Norwood, Massachusetts.  Now, the case has reached the United States Supreme Court.

APPEALS COURT USES PATENT LAW TO CREATE UNEVEN PLAYING FIELD IN COMPETITION BETWEEN AMERICAN AND FOREIGN WORKERS

Outsourcing of manufacturing and other jobs continues at an unprecedented pace, resulting in the loss of a great many jobs in the United States. American companies often retain their nerve center in the U.S., but delegate the physical labor to employees and contractors located abroad. Foreign outsourcing allows American companies to reduce their payroll and tax burden, and to avoid the more stringent U.S. environmental requirements. Now, the Court of Appeals for the Federal Circuit (CAFC) has offered an interpretation of the patent statute that provides American companies another incentive to outsource -- avoidance of U.S. patent laws. Under the CAFC's interpretation of the patent act, companies that would ordinarily be guilty of patent infringement can now copy patented products with impunity by simply shifting the manual labor of manufacturing outside the U.S.

Gerald Pellegrini, inventor of a specialized motor drive circuit, has taken steps to challenge the CAFC's opinion as legally wrong and also bad public policy. Last week, Pellegrini filed a petition asking the U.S. Supreme Court to hear an appeal of the Analog Devices case. This patent infringement lawsuit, originally filed by Pellegrini in 2002, was partially dismissed because Analog's accused products were manufactured by subcontractors outside the United States and were never physically present in the United States. Pellegrini is asking the Supreme Court to rule that a company who manufactures and sells components of a patented product from the U.S. cannot avoid liability for infringement simply by using outside foundries to fabricate their products.

The statute at issue is 35 U.S.C. Section 271(f)(1). This statute was enacted twenty years ago to prevent U.S. companies from avoiding patents by supplying components for foreign assembly.

Two prominent law professors have called for major reforms in the practice of filing continuation patent applications. In a recent paper, Professors Mark Lemley and Kimberly Moore outlined their view that continuation applications "have led to abuse of the patent prosecution process." According to Lemley and Moore, "they serve very little useful purpose, and what benefits they confer may be outweighed by their potential for mischief. The world would probably be a better place if continuation applications were abolished."

Specifically, the professors propose to limit each application to only one continuation application. "Allowing even one continuation application will give the applicant five or six bites at the apple. Surely that is enough." In addition, the professors would create "intervening rights" for competitors who begin making a patented invention prior to a broadening continuation.

Article: Ending Abuse of Patent Continuations, 84 B. U. L. Rev. 63 (2004).

IP-Updates provides more details.

Comment: Lemley and Moore are formally correct that an applicant always has an opportunity to keep an application alive by filing a continuation. However, as each day passes, the eventual resulting patent becomes less and less valuable because the patent term will be calculated from the filing date of the original parent application. At the limit, a continuation that issues 20 or more years after the original parent was filed is completely unenforceable. Thus, there is a practical 20-year limit on the filing of continuations.

Vastfame Camera v. International Trade Commission, et al. (Fed. Cir. 2004)

In the ITC, Fuji was granted a general exclusion order based in its patented disposable camera technology. Fuji then sought to enforce the order through the ITC against specific violators.

On appeal to the Federal Circuit, one alleged violator, VastFrame, questioned the ITC’s statutory authority to conduct enforcement proceedings against specific companies based on a general exclusion order. In its decision, the Appellate Panel found that there was no explicit statutory authority for enforcement proceedings, but that such authority was implied in Section 1337(b).

VastFrame next argued that Commission violated § 1337 in not allowing VastFame to present any invalidity defense. Based on statutory language, this time the Court agreed with VastFrame.

Because we hold that the Commission erred by not allowing VastFame to present its invalidity defense based on the clear language of § 1337(c), we do not reach the issue of whether VastFame’s due process rights were violated in this case.

Vacated and Remanded

Last week, the U.S. Supreme Court took a step toward accepting Merck's petition of writ of certiorari by inviting the Solicitor General to file a brief expressing the views of the U.S. Government.

The appeal questions the limits of the safe harbor statute (35 USC 271(e)(1)) that permits drug manufactures to perform the experiments needed to obtain FDA approval of their drugs without incurring liability for patent infringement, even if their activities infringe other's patent rights.

Some district courts had interpreted the act broadly to protect many types of infringing activities. However, the Federal Circuit, in Integra v. Merck, decided that safe harbor does not apply to early drug development activities. The case is now on appeal to the Supreme Court.

Background: Integra brought this patent infringement suit based on several patents relating to a short tri-peptide segment of fibronectin having the sequence Arg-Gly-Asp. The peptide sequence promotes cell adhesion to substrates in culture and in vivo.

Fuji Film v. ITC (Fed. Cir. 2004).

After an enforcement proceeding at the ITC, Fuji appealed.

The Appellate Panel made several rulings on claim construction. Additionally, the CAFC found that the Commission did not abuse its discretion in refusing to issue cease and desist orders against foreign respondents with no inventory in the United States and foreign respondents that did not directly import products into the United States.

Finally, Fuji argued that enforcement of the general exclusion order would be ineffective in light of the Customs Service’s new responsibilities in combating terrorism. The Federal Circuit rejected this arguments out of hand.

With respect to the first point, Fuji’s argument is similar to the argument advanced in the Hyundai case, which we rejected as “a thinly veiled and vaguely expressed dissatisfaction with the certification procedure it expects the Customs Service to devise when it implements the Commission’s order.” 899 F.2d at 1210. As we did in Hyundai, we reject Fuji’s suggestion that the Customs Service is incapable of enforcing the Commission’s general exclusion order effectively because of a lack of expertise and other priorities. To the extent that Fuji’s argument is directed at a perceived lack of resources or competence on the part of the Customs Service, we cannot address that problem through a judicial directive that would, in effect, require the Commission to alter its practices based on our unsupported suspicion that the Customs Service is incapable of performing the duties Congress has assigned to it.

Note: This is a companion case to VastFrame v. ITC (Fed. Cir. 2004).

Bilstad v. Wakalopulos (Fed. Cir. 2004) (03-1528).

Both Bilstad and Wakalopulos claim to have invented a device for sterilizing objects using ionizing radiation. Bilstad provoked an interference proceeding to determine which party was deserving of the patent.  The Patent Board (BPAI) rejected Bilstad's claims for failure to meet the written description requirement because Bilstad had broad claims (genus) based on a more narrow disclosure (species).

On appeal, the Court of Appeals for the Federal Circuit (CAFC) vacated-in-part because the Board "failed to apply the appropriate standard in its analysis of whether Bilstad's application included sufficient written description to support the count under 35 U.S.C. § 112."

This court has continued to apply the rule that disclosure of a species may be sufficient written description support for a later claimed genus including that species. . . . If the difference between members of the group is such that the person skilled in the art would not readily discern that other members of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then disclosure of more species is necessary to adequately show possession of the entire genus.

Note: According to USPTO assignment data, the real parties in interest in this case appear to be Baxter International (Bilstad) and USHIO Technologies (Wakalopulos).

The PTO has waived a requirement that drawings filed through the Trademark Electronic Application System (TEAS) have a length and width of no less than 250 pixels and no more than 944 pixels.

According to the rules, submitted images must be in .jpg format having at between 300 and 350 dots per inch. All lines must be clean, sharp and solid, not fine or crowded, and produced a high quality image when copied.

Source: 69 FR 59810.

Budde v. Harley-Davidson (Fed. Cir. 2004) (03-1610) (Unpublished Opinion).

William Budde sued Harley-Davidson for infringement of his patent on an electronic fuel injection system for V-twin motorcycle engines. After a long procedural history, the district court determined that the Harley-Davidson's systems were not infringed, either literally or under the DOE.

The Federal Circuit agreed: "we hold that no reasonable juror could find that Harley-Davidson's [] EFI systems infringe."

In other bike news, Russell Ballentine of Onaga Kansas just received Design Patent No. D496,897 for his "Motorcycle Exhaust Muffler."

 

Astrazeneca AB v. Mutual Pharmaceutical Co. (Fed. Cir. 2004): Specification king in claim construction, despite the absence of a clear lexicography or disavowal.

By Dr. Baltazar Gomez,

Astrazeneca sued Mutual for patent infringement based on submission of an ANDA to the FDA.  The patent in question was Astrazeneca's U.S. Patent No. 4,803,081 (the "'081 patent") directed to extended-release formulations for felodipine using "a semi-solid or liquid nonionic solubilizer."  Mutual's ANDA was for extended-release felodipine using a co-solvent as a solubilizer.  The question analyzed by the CAFC was whether the definition of "solubilizer" in the '081 patent takes priority in claim construction or if the ordinary meaning of the term, as determined from sources such as treatises and dictionaries, controls claim construction in the absence of clear lexicography or disavowal.

Both parties agreed that "solubilizer" embraced surface active agents (or surfactants), co-solvents, and complexation agents.  But the CAFC accepted Mutual's argument that the Patentees acted as their own lexicographers and limited the scope of "solubilizer" to surfactants.  The '081 patent states that "[t]he solubilizers suitable according to the invention are defined below", and later, states that "[t]he solubilizers suitable…are semi-solid or liquid non-ionic surface active agents."  The '081 patent also describes micelle structures as features of the claimed formulation.  Astrazeneca argued that these statements referred to preferred embodiments of suitable solubilizers.  The CAFC disagreed because the '081 patent did not state, for example, "a solubilizer suitable for," but in fact, the specification stated "the solubilizers suitable for."  The CAFC noted that the language of the '081 patent provided a strong signal of lexicography that clearly disavowed nonsurfactant solubilizers.

Thus, the CAFC held that Mutual did not infringe Astrazeneca's patent because the '081 patent limited "solubilizer" to surfactants and overcame any ordinary meaning of the term derived from any other evidence.  The CAFC followed a long line of cases that indicate that a patent's specification is the primary source for determining claim meaning.  Where the ordinary meaning of a claim is evident, the inventor's written description of the invention is relevant only insofar as it provides clear lexicography or disavowal of the ordinary meaning.

Note: Dr. Baltazar Gomez is a law clerk at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched biochemistry and molecular biology as a PostDoc at Cornell.  He is now a law student at DePaul. 

 

Insituform v. CAT Contracting (Fed. Cir. 2004).

Underground pipes, such as sewer pipes, are often subject to great stress. As a result, over time, the pipes develop cracks and other structural defects, which can result in leakage. In the past, the only way to rehabilitate a section of underground pipe was to dig up the broken section and replace it. Eric Wood pioneered a process for rehabilitating underground pipe without digging it up. He patented his invention and sued several companies for infringement. The case has been ongoing for nearly fourteen years, and included an appeal to the Supreme Court.

During prosecution, plaintiffs made amendments to the claims.  The question in this rehearing was whether the plaintiffs have rebutted the Festo presumption that a narrowing amendment made for a reason of patentability surrenders the entire territory between the original claim limitation and the amended claim limitation.  The Federal Circuit found that the presumption had been rebutted.  "We reach this conclusion because we conclude that the prosecution history establishes that "the rationale underlying" the amendment narrowing the scope of literal claim coverage from multiple cups to a single cup bears "no more than a tangential relation to the equivalent in question." 

[T]he narrowing amendment in this case was for the purpose of distinguishing the invention over Everson.  Insituform made it clear that the difference between its process and Everson was that its process did not have the disadvantage of the Everson process of a large compressor at the end of the liner.  There is no indication in the prosecution history of any relationship between the narrowing amendment and a multiple cup process, which is the alleged equivalent in this case.  Thus, we hold that plaintiffs have successfully rebutted the Festo presumption by establishing that the amendment narrowing the claimed invention from multiple cups to a single cup was tangential to accused Process 1, which used multiple cups attached at different points along the liner tube.  We therefore affirm the judgment of infringement under the doctrine of equivalents.

Accordingly, the Court affirmed the judgment that the accused process infringed the claims under the doctrine of equivalents.

What is the Festo Presumption: During prosecution of a patent application, the Applicant may make amendments that narrow the scope of the claims.  Under ordinary circumstances, the court's will presume that these amendments were made for a reason of patentability, and will not allow any allegations of infringement of "equivalent" structures -- because claims to equivalents were relinquished through the amendment.  The presumption can be rebutted by showing that the amendment only bears a tangential relation to the equivalent in question.

The PTO has begun holding on-line chats for inventors.  Here are some interesting responses.  The full transcript is available here.  

Q: If I want to meet with my patent examiner, what is the procedure?

USPTO Expert: If you are represented by a patent agent or attorney, they can contact the examiner, and set up an interview generally limited to 1/2 hour in length. Your attorney or agent must attend and you may be present during the interview. However, if you are not represented by a patent agent/attorney (a pro-se applicant) you may directly contact the examiner via contact information provided to you at the end of each correspondence from the Office. For more information, you can browse MPEP 713 – 713.10. The MPEP is available on-line through our website.
http://www.uspto.gov/web/offices/pac/mpep/mpep.htm

Q: What is the current USPTO position on software / business method patents?

USPTO Expert: Please see the following link for more information on business methods, http://www.uspto.gov/web/menu/pbmethod/. Software/business methods claims are patentable if they meet the requisite criteria for patenting as set forth in the patent statutes.

Q: What's the estimated time that will take for a patent on a product to be approved once I file for a patent at the USPTO?

USPTO Expert: The length of time will depend on the specific technology, it generally takes about 18 months to receive a first written opinion. Some technologies are experiencing backlogs and therefore it may take longer. On average, it takes about 27 months for a patent to issue after its filing.

Q: How long is the waiting period for a fairly simple patent pending application for a design patent?

USPTO Expert: With our current back log in designs, the average waiting time is eleven or twelve months to first Office action.

Be careful of your hair design.  Frank & Donald Smith of Orlando, Florida own the patent on a method for styling hair to cover bald areas using only the individual's own hair -- AKA, the combover. (U.S. Patent No. 4,022,227). Actually, the patent issued in 1977 and appears to be expired.

Some potential infringers:

The Smiths were awarded the 2004 Ig Nobel Award from Harvard University for their contribution to the engineering field.

Other winners included the authors of a published report "The Effect of Country Music on Suicide" as well as Jillian Clarke, a Chicago high school student who investigated the scientific validity of the Five-Second Rule.

 

Supreme Court: Patent Law Treds Into Political World of Outsourcing

Gerald Pellegrini is an inventor in Worcester, Massachusetts.  For the past few years, he has been engaged in a patent dispute with Analog Devices, headquartered in Norwood, Massachusetts.  Now, the case has reached the United States Supreme Court.

APPEALS COURT USES PATENT LAW TO CREATE UNEVEN PLAYING FIELD IN COMPETITION BETWEEN AMERICAN AND FOREIGN WORKERS

Outsourcing of manufacturing and other jobs continues at an unprecedented pace, resulting in the loss of a great many jobs in the United States. American companies often retain their nerve center in the U.S., but delegate the physical labor to employees and contractors located abroad. Foreign outsourcing allows American companies to reduce their payroll and tax burden, and to avoid the more stringent U.S. environmental requirements. Now, the Court of Appeals for the Federal Circuit (CAFC) has offered an interpretation of the patent statute that provides American companies another incentive to outsource -- avoidance of U.S. patent laws. Under the CAFC's interpretation of the patent act, companies that would ordinarily be guilty of patent infringement can now copy patented products with impunity by simply shifting the manual labor of manufacturing outside the U.S.

Gerald Pellegrini, inventor of a specialized motor drive circuit, has taken steps to challenge the CAFC's opinion as legally wrong and also bad public policy. Last week, Pellegrini filed a petition asking the U.S. Supreme Court to hear an appeal of the Analog Devices case. This patent infringement lawsuit, originally filed by Pellegrini in 2002, was partially dismissed because Analog's accused products were manufactured by subcontractors outside the United States and were never physically present in the United States. Pellegrini is asking the Supreme Court to rule that a company who manufactures and sells components of a patented product from the U.S. cannot avoid liability for infringement simply by using outside foundries to fabricate their products.

The statute at issue is 35 U.S.C. Section 271(f)(1). This statute was enacted twenty years ago to prevent U.S. companies from avoiding patents by supplying components for foreign assembly.

Patent Law Professors Call For Reform

Two prominent law professors have called for major reforms in the practice of filing continuation patent applications. In a recent paper, Professors Mark Lemley and Kimberly Moore outlined their view that continuation applications "have led to abuse of the patent prosecution process." According to Lemley and Moore, "they serve very little useful purpose, and what benefits they confer may be outweighed by their potential for mischief. The world would probably be a better place if continuation applications were abolished."

Specifically, the professors propose to limit each application to only one continuation application. "Allowing even one continuation application will give the applicant five or six bites at the apple. Surely that is enough." In addition, the professors would create "intervening rights" for competitors who begin making a patented invention prior to a broadening continuation.

Article: Ending Abuse of Patent Continuations, 84 B. U. L. Rev. 63 (2004).

IP-Updates provides more details.

Comment: Lemley and Moore are formally correct that an applicant always has an opportunity to keep an application alive by filing a continuation. However, as each day passes, the eventual resulting patent becomes less and less valuable because the patent term will be calculated from the filing date of the original parent application. At the limit, a continuation that issues 20 or more years after the original parent was filed is completely unenforceable. Thus, there is a practical 20-year limit on the filing of continuations.

Patent: ITC's Enforcement Authority Upheld

Vastfame Camera v. International Trade Commission, et al. (Fed. Cir. 2004)

In the ITC, Fuji was granted a general exclusion order based in its patented disposable camera technology. Fuji then sought to enforce the order through the ITC against specific violators.

On appeal to the Federal Circuit, one alleged violator, VastFrame, questioned the ITC’s statutory authority to conduct enforcement proceedings against specific companies based on a general exclusion order. In its decision, the Appellate Panel found that there was no explicit statutory authority for enforcement proceedings, but that such authority was implied in Section 1337(b).

VastFrame next argued that Commission violated § 1337 in not allowing VastFame to present any invalidity defense. Based on statutory language, this time the Court agreed with VastFrame.

Because we hold that the Commission erred by not allowing VastFame to present its invalidity defense based on the clear language of § 1337(c), we do not reach the issue of whether VastFame’s due process rights were violated in this case.

Vacated and Remanded

Supreme Court: Merck v. Integra

Last week, the U.S. Supreme Court took a step toward accepting Merck's petition of writ of certiorari by inviting the Solicitor General to file a brief expressing the views of the U.S. Government.

The appeal questions the limits of the safe harbor statute (35 USC 271(e)(1)) that permits drug manufactures to perform the experiments needed to obtain FDA approval of their drugs without incurring liability for patent infringement, even if their activities infringe other's patent rights.

Some district courts had interpreted the act broadly to protect many types of infringing activities. However, the Federal Circuit, in Integra v. Merck, decided that safe harbor does not apply to early drug development activities. The case is now on appeal to the Supreme Court.

Background: Integra brought this patent infringement suit based on several patents relating to a short tri-peptide segment of fibronectin having the sequence Arg-Gly-Asp. The peptide sequence promotes cell adhesion to substrates in culture and in vivo.

Fuji Film v. ITC

Fuji Film v. ITC (Fed. Cir. 2004).

After an enforcement proceeding at the ITC, Fuji appealed.

The Appellate Panel made several rulings on claim construction. Additionally, the CAFC found that the Commission did not abuse its discretion in refusing to issue cease and desist orders against foreign respondents with no inventory in the United States and foreign respondents that did not directly import products into the United States.

Finally, Fuji argued that enforcement of the general exclusion order would be ineffective in light of the Customs Service’s new responsibilities in combating terrorism. The Federal Circuit rejected this arguments out of hand.

With respect to the first point, Fuji’s argument is similar to the argument advanced in the Hyundai case, which we rejected as “a thinly veiled and vaguely expressed dissatisfaction with the certification procedure it expects the Customs Service to devise when it implements the Commission’s order.” 899 F.2d at 1210. As we did in Hyundai, we reject Fuji’s suggestion that the Customs Service is incapable of enforcing the Commission’s general exclusion order effectively because of a lack of expertise and other priorities. To the extent that Fuji’s argument is directed at a perceived lack of resources or competence on the part of the Customs Service, we cannot address that problem through a judicial directive that would, in effect, require the Commission to alter its practices based on our unsupported suspicion that the Customs Service is incapable of performing the duties Congress has assigned to it.

Note: This is a companion case to VastFrame v. ITC (Fed. Cir. 2004).

Disclosure of species can support genus claims

Bilstad v. Wakalopulos (Fed. Cir. 2004) (03-1528).

Both Bilstad and Wakalopulos claim to have invented a device for sterilizing objects using ionizing radiation. Bilstad provoked an interference proceeding to determine which party was deserving of the patent.  The Patent Board (BPAI) rejected Bilstad's claims for failure to meet the written description requirement because Bilstad had broad claims (genus) based on a more narrow disclosure (species).

On appeal, the Court of Appeals for the Federal Circuit (CAFC) vacated-in-part because the Board "failed to apply the appropriate standard in its analysis of whether Bilstad's application included sufficient written description to support the count under 35 U.S.C. § 112."

This court has continued to apply the rule that disclosure of a species may be sufficient written description support for a later claimed genus including that species. . . . If the difference between members of the group is such that the person skilled in the art would not readily discern that other members of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then disclosure of more species is necessary to adequately show possession of the entire genus.

Note: According to USPTO assignment data, the real parties in interest in this case appear to be Baxter International (Bilstad) and USHIO Technologies (Wakalopulos).

Trademark Electronic Submission Requirements

The PTO has waived a requirement that drawings filed through the Trademark Electronic Application System (TEAS) have a length and width of no less than 250 pixels and no more than 944 pixels.

According to the rules, submitted images must be in .jpg format having at between 300 and 350 dots per inch. All lines must be clean, sharp and solid, not fine or crowded, and produced a high quality image when copied.

Source: 69 FR 59810.

Budde v. Harley-Davidson

Budde v. Harley-Davidson (Fed. Cir. 2004) (03-1610) (Unpublished Opinion).

William Budde sued Harley-Davidson for infringement of his patent on an electronic fuel injection system for V-twin motorcycle engines. After a long procedural history, the district court determined that the Harley-Davidson's systems were not infringed, either literally or under the DOE.

The Federal Circuit agreed: "we hold that no reasonable juror could find that Harley-Davidson's [] EFI systems infringe."

In other bike news, Russell Ballentine of Onaga Kansas just received Design Patent No. D496,897 for his "Motorcycle Exhaust Muffler."

 

Astrazeneca v. Mutual Pharmaceutical: specification primary source for claim interpretation

Astrazeneca AB v. Mutual Pharmaceutical Co. (Fed. Cir. 2004): Specification king in claim construction, despite the absence of a clear lexicography or disavowal.

By Dr. Baltazar Gomez,

Astrazeneca sued Mutual for patent infringement based on submission of an ANDA to the FDA.  The patent in question was Astrazeneca's U.S. Patent No. 4,803,081 (the "'081 patent") directed to extended-release formulations for felodipine using "a semi-solid or liquid nonionic solubilizer."  Mutual's ANDA was for extended-release felodipine using a co-solvent as a solubilizer.  The question analyzed by the CAFC was whether the definition of "solubilizer" in the '081 patent takes priority in claim construction or if the ordinary meaning of the term, as determined from sources such as treatises and dictionaries, controls claim construction in the absence of clear lexicography or disavowal.

Both parties agreed that "solubilizer" embraced surface active agents (or surfactants), co-solvents, and complexation agents.  But the CAFC accepted Mutual's argument that the Patentees acted as their own lexicographers and limited the scope of "solubilizer" to surfactants.  The '081 patent states that "[t]he solubilizers suitable according to the invention are defined below", and later, states that "[t]he solubilizers suitable…are semi-solid or liquid non-ionic surface active agents."  The '081 patent also describes micelle structures as features of the claimed formulation.  Astrazeneca argued that these statements referred to preferred embodiments of suitable solubilizers.  The CAFC disagreed because the '081 patent did not state, for example, "a solubilizer suitable for," but in fact, the specification stated "the solubilizers suitable for."  The CAFC noted that the language of the '081 patent provided a strong signal of lexicography that clearly disavowed nonsurfactant solubilizers.

Thus, the CAFC held that Mutual did not infringe Astrazeneca's patent because the '081 patent limited "solubilizer" to surfactants and overcame any ordinary meaning of the term derived from any other evidence.  The CAFC followed a long line of cases that indicate that a patent's specification is the primary source for determining claim meaning.  Where the ordinary meaning of a claim is evident, the inventor's written description of the invention is relevant only insofar as it provides clear lexicography or disavowal of the ordinary meaning.

Note: Dr. Baltazar Gomez is a law clerk at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched biochemistry and molecular biology as a PostDoc at Cornell.  He is now a law student at DePaul. 

Festo presumption rebutted.

 

Insituform v. CAT Contracting (Fed. Cir. 2004).

Underground pipes, such as sewer pipes, are often subject to great stress. As a result, over time, the pipes develop cracks and other structural defects, which can result in leakage. In the past, the only way to rehabilitate a section of underground pipe was to dig up the broken section and replace it. Eric Wood pioneered a process for rehabilitating underground pipe without digging it up. He patented his invention and sued several companies for infringement. The case has been ongoing for nearly fourteen years, and included an appeal to the Supreme Court.

During prosecution, plaintiffs made amendments to the claims.  The question in this rehearing was whether the plaintiffs have rebutted the Festo presumption that a narrowing amendment made for a reason of patentability surrenders the entire territory between the original claim limitation and the amended claim limitation.  The Federal Circuit found that the presumption had been rebutted.  "We reach this conclusion because we conclude that the prosecution history establishes that "the rationale underlying" the amendment narrowing the scope of literal claim coverage from multiple cups to a single cup bears "no more than a tangential relation to the equivalent in question." 

[T]he narrowing amendment in this case was for the purpose of distinguishing the invention over Everson.  Insituform made it clear that the difference between its process and Everson was that its process did not have the disadvantage of the Everson process of a large compressor at the end of the liner.  There is no indication in the prosecution history of any relationship between the narrowing amendment and a multiple cup process, which is the alleged equivalent in this case.  Thus, we hold that plaintiffs have successfully rebutted the Festo presumption by establishing that the amendment narrowing the claimed invention from multiple cups to a single cup was tangential to accused Process 1, which used multiple cups attached at different points along the liner tube.  We therefore affirm the judgment of infringement under the doctrine of equivalents.

Accordingly, the Court affirmed the judgment that the accused process infringed the claims under the doctrine of equivalents.

What is the Festo Presumption: During prosecution of a patent application, the Applicant may make amendments that narrow the scope of the claims.  Under ordinary circumstances, the court's will presume that these amendments were made for a reason of patentability, and will not allow any allegations of infringement of "equivalent" structures -- because claims to equivalents were relinquished through the amendment.  The presumption can be rebutted by showing that the amendment only bears a tangential relation to the equivalent in question.

USPTO On-Line Inventor Chat

The PTO has begun holding on-line chats for inventors.  Here are some interesting responses.  The full transcript is available here.  

Q: If I want to meet with my patent examiner, what is the procedure?

USPTO Expert: If you are represented by a patent agent or attorney, they can contact the examiner, and set up an interview generally limited to 1/2 hour in length. Your attorney or agent must attend and you may be present during the interview. However, if you are not represented by a patent agent/attorney (a pro-se applicant) you may directly contact the examiner via contact information provided to you at the end of each correspondence from the Office. For more information, you can browse MPEP 713 – 713.10. The MPEP is available on-line through our website.
http://www.uspto.gov/web/offices/pac/mpep/mpep.htm

Q: What is the current USPTO position on software / business method patents?

USPTO Expert: Please see the following link for more information on business methods, http://www.uspto.gov/web/menu/pbmethod/. Software/business methods claims are patentable if they meet the requisite criteria for patenting as set forth in the patent statutes.

Q: What's the estimated time that will take for a patent on a product to be approved once I file for a patent at the USPTO?

USPTO Expert: The length of time will depend on the specific technology, it generally takes about 18 months to receive a first written opinion. Some technologies are experiencing backlogs and therefore it may take longer. On average, it takes about 27 months for a patent to issue after its filing.

Q: How long is the waiting period for a fairly simple patent pending application for a design patent?

USPTO Expert: With our current back log in designs, the average waiting time is eleven or twelve months to first Office action.

The Combover

Be careful of your hair design.  Frank & Donald Smith of Orlando, Florida own the patent on a method for styling hair to cover bald areas using only the individual's own hair -- AKA, the combover. (U.S. Patent No. 4,022,227). Actually, the patent issued in 1977 and appears to be expired.

Some potential infringers:

The Smiths were awarded the 2004 Ig Nobel Award from Harvard University for their contribution to the engineering field.

Other winners included the authors of a published report "The Effect of Country Music on Suicide" as well as Jillian Clarke, a Chicago high school student who investigated the scientific validity of the Five-Second Rule.