September 2005

On Sale Bar Invalidates DNA Probe Patent

Patent, Patent Cases 2005

Enzo Biochem v. Gen-Probe (Fed. Cir. 2005).

Patentlyo003At the district court, Enzo’s patent, covering DNA probes for hybrodizing N. gonorrhoeae, was held invalid under the on sale bar. Specifically, the district court found that the claimed invention had been offered for sale before the critical date — more than one year before the patent application was filed.

In June 1982/83, Enzo and Ortho Diagnostics entered into a joint research that specifically focused on the gonorrhea probe. In 1984 Enzo supplied Ortho a probe like that claimed.  However, it was not until 1986 that Enzo filed its patent application.  The district court found the transfer to be an invalidating sale and awarded summary judgment of invalidity.

On appeal, the CAFC reviewed the two prong Pfaff test for application of the on sale bar:

  1. Subject to a commercial offer for sale; and
  2. Invention ready for patenting.

Offer for sale: Taking the two elements in turn, the appellate panel first found that the research agreement “created the necessary contractual obligations” to be considered a commercial offer for sale. Specifically, the court pointed to the following language in the agreement:

ENZO shall supply to ORTHO and ORTHO shall purchase from ENZO for use in Licensed Products no less than ninety percent (90%) of ORTHO’s United States requirements or seventy-five percent (75%) of ORTHO’s worldwide requirements of Active Ingredients. . . .

Ready for Patenting: Because the invention had been reduced to practice and its utility as a gonorrhea probe had been recognized, the court also determined that the invention was “ready for patenting.”

Method Claim: The CAFC found that the method claims were put “on sale” by including instructions for use with the probe.

Summary judgment of invalidity affirmed.

Eolas v. Microsoft: Eolas Patent Set to Reissue

Patent, Patent Cases 2005, ,

Patentlyo001Eolas v. Microsoft (Reexamination at the PTO).

Microsoft’s appeal of this case is currently pending before the Supreme Court. In a parallel action, however the Eolas patent has been undergoing reexamination at the USPTO. 

As occurs in almost all inter partes and director-ordered reexaminations, the patent office issued a non-final rejection to Eolas.  Although this first rejection was a good sign for Microsoft, on September 27, 2005, the patent office indicated that it was filing a “Notice of Intent to Issue a Reexam Certificate” for patent number 5,838,906. 

This means that the PTO has decided, for a second time, that the ‘906 patent is valid. 

Links:

EBay v. MercExchange: Automatic Injunction in Patent Cases

Patent,

MercExchangePatent_small1eBay v. MercExchange (on petition for certiorari).

In July, 2005, eBay filed a petition for writ of certiorari, asking the Supreme Court to review the Federal Circuit’s decision to grant a permanent injunction to MercExchange.  In this case, the Federal Circuit held that, absent exceptional circumstances, a district court should issue a permanent injunction after a finding of infringement.

I. eBay’s Petition: In its petition for certiorari, eBay spells out the traditional four-factor injunctive relief test and argues that the four-factor test should apply to patent cases rather than the de facto per se test applied by the CAFC.  The four-factor test includes consideration of (i) irreparable harm from not issuing an injunction; (ii) whether an adequate remedy exists in law (damages); (iii) whether the injunction would be in the public interest; and (iv) whether a balance of hardships would tip in the plaintiff’s favor.  Download eBay Brief.pdf (4452 KB)

II. MercExchange’s Opposition: MercExchange opposes the petition.  In its brief, MercExchange first point to the statutory guidelines:

  • 35 USC 154: Every patent shall contain . . . a grant . . . of the right to exclude others from making, using, offering for sale, or selling the invention . . .
  • 35 USC 261: . . . patents shall have the attributes of personal property . .
  • 35 USC 283: . . . courts having jurisdiction . . . may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.

Citing a series of Supreme Court cases that support the patentee’s right to exclusivity, MercExchange argues that eBay’s argument would require overruling long established precedent. Additionally, MercExchange provides its own argument under the four-factor test — explaining how it would easily fit within that test as well. Download MercExchange Brief.pdf (3480 KB)

III. Electronic Frontier Foundation in Support: In support of eBay’s petition, the EFF argues that the CAFC’s ‘per se’ injunction is inconsistent with 35 USC 283 and does not consider “countervailing free speech interests.”

Regarding free speech, the EFF argues that patent rights are “increasingly affecting free expression online” and that consideration of the public interest should not be limited to exceptional cases — rather those considerations should be routine.

The most offensive element . . . is [the CAFC’s] promulgation of an impoverished vision of the public interest. While public health concerns are doubtless important . . . courts must be encouraged to consider other public interests as well. In particular, the Federal Circuit offers little, if any, room for consideration of an increasingly evident public interest in patent litigation—free speech. . . . [C]ourts of equity must be free to weigh the need for injunctive relief against the potential impact such relief may have on speech and speech related activities.

Download the EFF brief. 

IV. Computer & Communications Industry Association in Support: With a litany of complaints against the Federal Circuit and PTO, the CCIA asked the Supreme Court to turn the tide of potent, low quality patents.  Specifically, CCIA argues that:

  • The CAFC has made patents more potent.
  • The CAFC has made patents easier to get.
  • The CAFC has made patents more versatile and broadly available.
  • The CAFC has made patents easier to assert.
  • The PTO’s Bureaucracy undermines patent quality.
  • And, that the automatic injunction rule exacerbates these problems by encouraging litigation.

Download the CCIA Brief.

Links:

USPTO Updates Rules On Filing Translations and Allows Pre-Action Interviews

Patent

The USPTO has amended its rules of practice to require a copy of an English translation of any foreign-language provisional application that is used as a priority document for a nonprovisional application. The new rules, applicable to any application filed on or after November 25, 2005, require that the English translation be filed in the provisional application rather than filed in each nonprovisional claiming benefit of the filing date of the provisional.  37 C.F.R. 1.78.  The translation, however, may be filed after abandonment of the provisional, i.e., more than one year after filing.

Other changes to 37 C.F.R. include:

  • Examiner interviews will now be allowed “in any application if the examiner determines that such an interview would advance prosecution of the application.”  Thus, there will no longer be a prohibition on interviews before the first Office action in non-continuation cases.(Section 1.133).  
  • Requirement that, before taking action in a patent case, the assignee must establish ownership in the patent by recording an assignment at the PTO.
  • Defining “Patent practitioner” as “a registered patent attorney or registered patent agent under Section 11.6.”
  • When not using a customer number, the power of attorney must list the registration number of the patent practitioner (Section 1.32(c)(3)).
  • Assignment documents to be recorded should each include a single coversheet (and not multiple cover sheets).
  • A notice that attorneys must update the roster of patent practitioners.

Link: New Rules

CAFC Goes on Tour to Chicago

Conference or CLE, Patent

Image014The Court of Appeals for the Federal Circuit (CAFC) has announced that it will be “Sitting in Chicago, Illinois” for the week of November 8, 2005 — providing a great opportunity for students and practitioners who rarely get to see the CAFC in action. 

Schedule (CAFC patent cases):  

Tuesday, November 8, 2005, 10:00 A.M., University of Chicago Law
       04-1609   GOLDEN BLOUNT V RBT H PETERSON CO
Tuesday, November 8, 2005,  2:00 P.M., DePaul Law
       05-1113   VIAD CORP V STAK DESIGN
Wednesday, November 9, 2005, 10:00 A.M., U.S. District Court
       05-1122   OMEGA ENGINEERING V RAYTEK CORP
Wednesday, November 9, 2005,  2:00 P.M., Chicago-Kent Law
       05-1126   GRAYZEL V ST. JUDE MEDICAL
Thursday, November 10, 2005, 10:00 A.M., Northwestern Law
       05-1144   HARRAH’S V STATION CASINOS
 
I expect that each venue will have a good crowd.  While all of these are “open to the public,” some will be more “open” than others and may require advanced seating.
 
As we move forward, I will provide more of a preview of these cases.  Please let me know if you have information regarding either the hearing or the cases. 
 
Dennis
312.913.3316

CAFC Remands — Requesting District Court Opinion on Attorney Fees

Patent

ScreenShot026International Rectifier v. Samsung & IXYS (Fed. Cir. 2005)

After judgment, International Rectifier (IR) filed suit against the defendants for contempt based on an alleged violation of a permanent injunction entered after a consent decree.  IR lost an appeal in September 2004 after the CAFC determined that the permanent injunction was overly broad and the defendants eventually won the lawsuit. On motion, the Court awarded reduced attorney’s fees to Samsung — noting that the case was “terribly over-lawyered.”

On appeal, the CAFC applied 9th Circuit law to review the attorney fee award that arose from the consent decree.  However, because the district court failed to provide an explanation for the reduction in fee, the appellate panel vacated — requesting a “concise but clear explanation of how the district court arrived at its fee reduction.”

Ninth Circuit Upholds Semiconductor Chip Protection Act Claim Asserting Protection for Logic Groupings

Patent,

Image012Altera v. Clear Logic (9th Cir. 2005).

The Semiconductor Chip Protection Act of 1984 (SCPA) fills a perceived gap between copyright law and patent law and is intended to provide an incentive for investment in novel chip layouts (mask works).

The SCPA grants the owner of a mask work the exclusive rights to reproduce the mask work and to “import or distribute a semiconductor chip product in which the mask work is embodied.” 17 U.S.C. § 905.

Altera sued Clear Logic for violation of its SCPA rights and won a $30 million+ jury verdict. On appeal to the 9th Circuit, Clear Logic argued that the district court misinterpreted the SCPA.

Specifically, Clear Logic argued that its chips were only similar to Altera’s registered mask at a level of abstraction, and that only those ideas that are “physically expressed in the mask work are subject to protection under the SCPA.”

However, the 9th Circuit affirmed the district court’s application of the SCPA — finding that “groupings” shown in the mask (a level of abstraction) were “physically a part of the mask work.” As such, the groupings are protectable.

The placement of logic groupings in a mask work is not an abstract concept; it is embodied in the chip and affects the chip’s performance and efficiency as well as the chip’s timing.

In concurrence, Judge Rymer suggested that “this is the type of case in which it might have been useful to have a court-appointed, independent expert [to provide n]eutral definitions and a common understanding of the underlying technology.”

Link:

USPTO Outsources Patent Searches

Patent

The US Patent Office has begun an experiment with outsourcing of patent searches.  In the initial phase, the PTO has contracted with two DC search firms to perform searches on PCT international applications.

According to the patent office, “[b]y outsourcing some of the processing of international applications, the USPTO can focus on reducing the backlog of pending national applications, thus increasing productivity and enhancing quality.”

The USPTO may also contract out PCT related work to other governmental IPO offices.

Links:

U.S. Philips CD Patent Pool Given Green Light by Court of Appeals

Patent, Patent Cases 2005

PhilipsPatentU.S. Philips v. International Trade Commission (Fed. Cir. 2005)

Philips owns patents on recordable compact discs including CD-R and CD-RW technology and offers licenses to various manufacturers in pools of “essential” and “nonessential. Several foreign manufacturers refused to pay and, upon Philips request, the ITC initiated an investigation.

During the investigation, the ITC administrative law judge found that the manufacturers infringed the claims of the asserted Philips patents but rules the patents unenforceable for patent misuse.  Specifically, the judge ruled that the pooling arrangement constituted misuse because some of the “essential” patents were actually not essential. 

Among the grounds invoked by the administrative law judge for finding patent misuse was his conclusion that the package licensing arrangements constituted tying arrangements that were illegal under analogous antitrust law principles and thus rendered the subject patents unenforceable.

In Philips first appeal, the Commission affirmed the judge’s ruling, concluding that nonessential patents were impermissibly tied to essential patents because “none of the so-called essential patents could be licensed individually for the manufacture of CD-RWs and CD-Rs apart from the [essential] package.”

Court of Appeals for the Federal Circuit, however, reversed, finding that the license pool was not patent misuse even if some of the pooled patents were nonessential.

[T]he Commission erred when it characterized the package license agreements as a way of forcing the intervenors to license technology that they did not want in order to obtain patent rights that they did.

The CAFC’s decision relied on the theory that it would be “entirely rational” for a patentee who has an “essential” patent to “charge what the market will bear for the essential patent and to offer the others for free.”

Thus, the CAFC held that that the Commission’s application of both  per se and rule-of-reason analyses to the package license agreement to be legally flawed.

REVERSED AND REMANDED

Jury must be presented with a structural analysis of means+function elements

Patent, Patent Cases 2005

Image011CytoLogix v. Ventana (Fed. Cir. 2005).

CytoLogix sued Ventana for infringement of its patents covering an automated microscopic slide stainer.  The case went to trial and the jury found that the patent was not invalid and that Ventana infringed.

The district court entered a permanent injunction but did not yet reach the issue of damages.

Final Judgment: As a preliminary matter, the CAFC determined that it had jurisdiction to hear an appeal even though the court had not entered a final judgment with respect to liability damages.  Specifically, the court held that it had jurisdiction over the interlocutory appeal because Ventana was appealing a permanent injunction order.

Means+Function: The CAFC overruled the jury’s verdict on claim 13 — a means plus function claim.  The appellate court ruled that CytoLogix had failed to present “substantial evidence” of infringement of the means plus function claim because it did not construct a specific structural analysis of that claim.

To establish infringement under § 112, ¶ 6, it is insufficient for the patent holder to present testimony “based only on a functional, not a structural, analysis.”  Here, CytoLogix failed to identify the structure in the specification that is the “temperature controller means” and compare it to the structure of the accused device. Accordingly, because CytoLogix failed to present substantial evidence of infringement of claim 13 of the ’693 patent, the jury verdict of infringement of claim 13 must be reversed.

 

Upcoming Patent Law Conferences

Patent

This week’s 42nd Annual Corporate Patent Seminar was a big success. The Seminar’s organization is very loose with no membership roster, no dues, and no advertising budget.  Through word of mouth, the seminar keeps coming back and turns out to provide a relaxed, open environment for senior corporate patent professionals to exchange their ideas and experiences about the field.  It was great to meet everyone there. Thank you for organizing this excellent event.  If this meeting sounds interesting to you, then think about attending next year.

I have listed a few upcoming seminars and conferences that look interesting.  I hope to attend one of these — I have not decided which.

Upcoming Seminars and Conferences:

Let me know if there are some good ones that I have missed.  — Dennis 

Citation of Unpublished Opinions

Patent

Every opinion of the Federal Circuit is published in one form or another (such as on this website).  However, there are a set opinions that are classified as “unpublished” or “not citable as precedent.”  Under local rule 47.6(b), the Federal Circuit does not allow unpublished cases to be cited in briefs to the court except in certain cases such as claim preclusion.

Over the CAFC’s opposition, the Judicial Conference has endorsed a new rule of Federal Appellate Procedure (R. 32.1) that would allow citation of non-precedential or unpublished opinions but would only be applicable to decisions issued after January 1, 2007.

The proposed rule, which still must be approved by the Supreme Court and transmitted to Congress, was first published for comment in August 2003. Since then, studies have been conducted, a public hearing convened, and more than 500 comments submitted. The present practice governing citation of unpublished opinions varies among the circuits, with some permitting citation, others disfavoring citation but permitting it in certain circumstances, and others prohibiting citation. Proposed Rule 32.1 permits the citation in briefs of opinions, orders, or other judicial dispositions that have been designated “not for publication,” “non-precedential,” or the like. The rule applies only to decisions issued on or after January 1, 2007 .   

According to a Legal Times article by Tony Mauro (Link), Supreme Court nominee John Roberts has put his weight behind the change — “A lawyer ought to be able to tell a court what it has done.”

The Supreme Court must approve any change in the rules.

Links:

Assignor Estoppel: Inventor barred from testifying for defense

Patent, Patent Cases 2005

RailroadPandrol v. Airboss Railway (Fed. Cir. 2005).

Pandrol sued Airboss for infringement of its RR track fastening system that resists erosion.  On summary judgment, the district court found that the patent description was “adequate to satisfy the written description requirement.”  In addition, the lower court barred one of the inventors from testifying for the defense.

Written Description: Section 112 of the patent act requires “sufficient information in the specification to show that the inventor possessed the invention at the time of that original disclosure.”  On appeal, the CAFC affirmed, finding that the claims (as construed) were sufficiently supported.

Assignor Estoppel: In addition, the CAFC reviewed the district court’s exclusion of one of the inventor’s testimony under the doctrine of assignor estoppel.  The judicial doctrine of assignor estoppel prevents the assignor of a patent from later contending that the patent is invalid.

In this case, the defendant wanted to have one of the inventors testify that the patent was invalid — a request denied by the district court. 

On appeal, the CAFC agreed that the court had correctly excluded the inventor’s testimony because it would be “unfair” to allow the inventor to testify against the patent.

File Attachment: 04-1069.pdf (83 KB)

 

Nystrom v. Trex: Take Two

Patent, Patent Cases 2005, ,

Nystrom v. Trex Co. (Fed. Cir. 2005). This summer’s Phillips v. AWH decision shifted the focus of claim construction from extrinsic evidence (e.g. dictionaries) to the patent specification. After agreeing to rehear the Nystrom v. Trex appeal to address the effects of Phillips, a Federal Circuit panel (Mayer, Gajarsa, and Linn) has withdrawn its June 28, 2004 opinion (in which Gajarsa had dissented) and has substituted a new unanimous opinion that reaches a different claim construction, resulting in a different case outcome.

Nystrom’s patent related to a design for deck boards that are shaped to shed water. The main claim construction issue related to whether the claim term “board” was limited to boards made of “wood cut from a log” or whether a broader dictionary definition (e.g. “a flat piece of wood or similarly rigid material adapted for special use”) would apply.  In its pre-Phillips opinion, the panel relied on the dictionary definition and claim differentiation (a dependent claim specifically called for “wood cut from a log,” while broader claims did not) to determine that “board” was to be construed broadly.

In its post-Phillips opinion, the same panel noted that Nystrom’s specification and the prosecution history consistently described boards made of wood cut from a log.  The panel dismissed claim differentiation as a basis for its previous broad construction: “[d]ifferent terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper.” Regarding the broad dictionary definition previously relied on, the panel noted:

What Phillips now counsels is that in the absence of something in the written description and/or prosecution history to provide explicit or implicit notice to the public – i.e., those of ordinary skill in the art – that the inventor intended a disputed term to cover more than the ordinary and customary meaning revealed by the context of the intrinsic record, it is improper to read the term to encompass a broader definition simply because it may be found in a dictionary, treatise, or other extrinsic source.

Importantly, there was no clear disavowal of claim scope in this case – Phillips doesn’t require as much – but nothing in the intrinsic record supported a construction broader than “wood cut from a log.”

Marcus Thymian is still a Minnesota Vikings fan and has been involved with several recent litigations in which claim construction turned on intrinsic extrinsic.  He is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in < ?xml:namespace prefix = st1 />Chicago.  [Marcus Thymian’s Bio]

Open Claim Language Saves Patentee From Disclaimer

Patent

WeightMachineFree Motion Fitness v. Cybex (Fed. Cir. 2005).

Free Motion sued Cybex and Nautilus for infringement of its patents relating to pulley-based exercise machine. After construing the claims, the district court granted summary judgment of noninfringement to the defendants and also found that an amendment made to the claims during prosecution estopped Free Motion from asserting equivalence.

‘First’ pivot point: On appeal, the CAFC took issue with the district court’s interpretation of the term ‘first’ — finding in patent claims, the adjective ‘first’ generally does not suggest a location of the element.  Rather, terms such as ‘first’ and ‘second’ are used as labels to distinguish similar elements from one another.

‘Adjacent’: Construing the term ‘adjacent,’ the  CAFC resorted to a dictionary definition, but first “scrutinize[d] the intrinsic evidence in order to determine the most appropriate definition.” 

‘A cable’: Because the specification described the cable system as using a “single cable,” defendants argued that the claimed ‘a cable’ should be limited to a single cable rather than the usual ‘one or more cables.’  The CAFC rejected that argument, because there was not evidence of “a clear intent by the patentee to limit the article to the singular.”

Disclaimer: During prosecution, the patentee argued over a piece of prior art and included a statement that “the claimed assembly provides for virtually no variation in in cable tension [as disclosed in the prior art].” Defendants argued that, because their system did include the variation in cable tension, that Free Motion should be estopped from asserting infringement. 

The CAFC disagreed, holding that patent law does not allow a party to “avoid infringement of a patented claim using an open transitional phrase, such as comprising, by adding additional elements.”

The presence of an undesirable prior art feature in addition to the elements recited in the claim, even when the undesirability of that feature formed the basis of an amendment and argument overcoming a rejection during prosecution, does not limit the claim unless there is a clear and unmistakable disclaimer of claim scope. Here, there is no such disclaimer. The “comprising” language allows additional features. The disclaimer, if there was one, only applied to the “claimed assembly,” not unclaimed features added to the patented device.

Vacated and Remanded.

DISSENT: In dissent, Judge Prost dove into the intrinsic evidence and argued that it fully supported the lower court’s decision.

 

Including Claims in Provisional Patent Applications?

Claim Drafting Tips, Patent, Patent Prosecution

An ongoing debate amongst some patent attorneys is whether to include claims in provisional applications.  According to the rules of practice, claims are not required in the provisional application. (MPEP 601).  However, there are a few good reasons for including claims in the application.

In the wake of Phillips v. AWH, it has become even more important to ensure that a patent’s specification accurately describes the meaning of the associated claim terms.  This task is all but impossible in the absence of any claim terms to describe.   Thus, it is important to draft at least a few model claims with the provisional application.  Some practitioners, such as Russ Krajec, have advocated drafting the claims but then deleting them from the application before filing.  Russ argues that claims in the provisional can only hurt the applicant.

I disagree.  The claims can be helpful in ensuring adequate disclosure and enablement — this is especially true in cases where the provisional is rushed through on a very short deadline and/or low budget.  The claims, as part of the specification, can easily tie together loose ends that may have been created in the rush.  As Todd Mayover aptly points-out, including claims in the provisional creates a clear record associating those claims with the earliest filing date or priority date.  It is also unlikely that patent attorneys would seriously stick to the practice of initially drafting claims that will eventually be deleted — this is especially true in the fast-paced area of provisional applications.  One newfound fear is that including claims in the provisional leaves the patentee open to Festo-type prosecution history estoppel.  However, we have no evidence that presenting new claims in a subsequent nonprovisional would create any such estoppel — especially since the nonprovisional is newly-filed rather than simply an amended version. 

An astute Patently-O reader provided the following comment:

I include at least one extremely broad, never likely obtainable claim in a provisional.  First under US law, it is true that a provisional need not include one in order to be considered valid.  But foreign courts can say otherwise and render the US provisional (if serving as a priority document) invalid in a foreign court. Not including a provisional claim is only useful if you are absolutely certain that you won’t go foreign.

I hear the arguments related to the effect of narrowing by amendment as creating PHE.  In the post-Festo world, you can at least explain the amendment so as to overcome the presumption of PHE.  Let’s face it, if you are relying on the DOE to win your case anyway and the case rests on whether you started broad and narrowed by amendment, you are fighting a likely unwinnable battle.  In the last 10 years or so, how many DOE cases has the Fed. Circuit actually upheld? Not too many.

No U.S. practitioner has been able to cite a case, rule, regulation, expanded Board of Appeals decision, etc. from a foreign court that has categorically said, “A U.S. provisional application serving as a priority document [to this foreign application] that does not include at least one claim is nonetheless considered a permissible priority document.”  Why take the chance of not including a claim in a provisional if there is a likelihood that the foreign counterpart could get knocked out.

Another reason to the include at least a broad claim is that most foreign laws have strict adherence to the rule that the broadest initially presented claim will set the claim scope for the application.  So if you present a very broad claim initially, you can amend narrower.  But if you present a narrower claim first then realize that you can go broader, you cannot amend to go broader.  It is for this reason you can include a “claim” that says something like, “I claim, the product comprising any feature described, either individually or in combination with any feature, in any configuration.” or a “process to […] comprising any process described, in any order, using any modality, …”

Anonymous

Please leave your own comment below.

Microsoft Asks Supreme Court to Hear $500 Million Eolas Appeal

Patent, Patent Cases 2005

271f

Microsoft v. Eolas (on petition for certiorari).

At trial, Eolas won a half-billion dollar judgment against Microsoft after the jury found that Microsoft’s Internet Explorer violated an Eolas patent.  On appeal at the Federal Circuit, Microsoft won a new trial on several issues, but lost a major legal contention that allows Eolas to obtain extraterritorial damages under Section 271(f) of the Patent Act. 

Now, Microsoft has asked the Supreme Court to determine whether the Federal Circuit erred in determining that software code can qualify as a “component” of a patented invention under 271(f).

Question Presented: Whether 35 U.S.C. 271(f) — which imposes infringement liability on one who “supplies” “components” of a patented invention from the United States for “combination” abroad — is satisfied if no physical parts are suppled from the U.S. and all that is supplied is software code that foreign computer manufacturers use to program computers that are made and sold outside the U.S.?

Microsoft’s brief in support of the petition outlines jumbled nature of CAFC precedent on this point — Specifically noting cases such as:

  • Deepsouth (“these acts of Congress do not, and were not intended to, operate beyond the limits of the United States”);
  • Pellegrini (shipment of design instructions do not qualify under 271(f));
  • Bayer v. Housey (271(g) limited “component” to physical products);
  • NTP v. RIM (“it is difficult to conceive of how one might supply or cause to be supplied all or a substantial portion of the steps of a patented method in the sense contemplated by the phrase ‘components of a patented invention’ in section 271(f)”).

Documents:

Biagro v. Grow More (Fed. Cir. 2005).

Patent, Patent Cases 2005

Biagro v. Grow More (Fed. Cir. 2005).

Claim Construction: In a step-back from recent claim construction holdings, the Court of Appeals for the Federal Circuit held that an “attorney’s statements” made during prosecution “do not alter the ordinary meaning of the claim language.”

Biagro’s patents relate to a phosphorus-based fertilizer for plants.  Representative claim 1 requires a “phosphorous-containing acid or salt . . . in an amount of about 30 to about 40 weight percent.”

Grow More’s product contains phosphorous, but the final product does not contain any phosphorous acid (although it is created using phosphorous acids).  Biagro argued that the claims should be interpreted as requiring the “chemical equivalent” rather than actually requiring an acid in the final product.  Biagro also pointed to the prosecution history where the attorney had pointed to the phosphorous acid in two examples — when in fact those examples only included chemical equivalent amounts of phosphorous acid. The CAFC found Biagro’s arguments unappealing and affirmed the district court’s construction and dismissal.

Doctrine of Equivalents: Biagro had amended the claims during prosecution to include the “phosphorous acid,” but contended that Festo should not apply.  The CAFC disagreed:

Burden: Even at summary judgment, the patentee has the burden of showing that it can overcome the Festo presumption associated with a narrowing amendment.

Reason for the Amendment Merely Tangential: A narrowing amendment made when were claims were rejected but done without any discernible reason is presumed to be made for a patentable reason, and not for a reason merely tangential to the equivalent.

The prosecution history revealed no reason for the amendment, and therefore Festo could not show that the rationale underlying the amendment was only tangential to the accused nonmagnetizable equivalent. Similarly, in this case, since the prosecution history shows no reason for adding an upper limit to the concentration range, Biagro cannot claim that the rationale for the amendment is merely tangential.

Other Reason: The court rejected the Biagro’s reasoning that the patentee had believed the claims meant “chemical equivalent” when, in fact, they did not.

Summary judgment of noninfringement affirmed.

 

 

CAFC: No Right to Jury for Declaratory Judgment Action

Patent

In re Technology Licensing Corporation (Fed. Cir. 2005).

On petition for writ of mandamus, the Court of Appeals for the Federal Circuit considered the right of trial by jury attaches to a declaratory judgment for patent invalidity.

Relying on the case of Lockwood, TLC argued that a patentee has a right to a jury trial in any declaratory judgment action to determine patent validity — regardless of whether damages are sought in a separate cause of action.  The CAFC disagreed, finding that:

[I]f TLC had filed a standard infringement action as plaintiff and had requested only an injunction, neither TLC nor Gennum would have been entitled to a jury trial, regardless of whether Gennum raised invalidity as a defense or in a counterclaim. By choosing the equity route for its infringement action, TLC would have ensured that neither claim would be triable to a jury. For that reason, the inverted lawsuit, with Gennum as plaintiff and TLC as defendant, seeking only equitable relief on its claim of infringement, confers no jury trial right on TLC.

Mandamus denied.  Judge Newman dissented, arguing that patent validity is a question of law that raises the right to a trial by jury.