Patent Law Blog (Patently-O)

TiVo Wins on Appeal: Permanent Injunction against EchoStar to be Reinstated

TiVo v. EchoStar (Fed. Cir. 2008)

Around the turn of the century, TiVo’s time shifting DVR television technology took the world by storm and has since become immensely popular.  In 2004, TiVo sued EchoStar and others in the Eastern District of Texas for infringement of its patent claims directed at the DVR hardware and software. EchoStar was found to infringe both the hardware and software claims. The Jury then awarded $73 million in damages and the judge ordered a permanent injunction to stop future infringement.

On appeal, the CAFC used thirty pages of dense claim construction to conclude that the hardware claims were not infringed but that the software claims were infringed.

The jury’s damage calculation did not divide out the portion of damages associated with the hardware invention and the portion associated with the software invention. Consequently, the court found that infringement of the software claims alone is still sufficient to sustain the entire $73 million judgment.

Because the damages calculation at trial was not predicated on the infringement of particular claims, and because we have upheld the jury’s verdict that all of the accused devices infringe the software claims, we affirm the damages award entered by the district court.

As reported, Chief Judge Michel stayed the permanent injunction pending resolution of this appeal. According to the court, that stay “will dissolve when this appeal becomes final.” The lower court will, however, need to add additional damages based on continued infringement during the appeal.

Notes:

• EchoStar operates the DISH Network brand of satellite television.
• TiVo has partnered with DIRECTV, DISH Network’s biggest competitor.
• Part of the claim construction dispute centered on whether the claimed element “an MPEG stream” should be limited to a single MPEG stream.  Here, the CAFC rejected the traditional rule that “a” or “an” mean one or more. Instead, the Court made an unusual ruling here because “the context clearly evidences that the usage is limited to the singular.”
• EchoStar (DISH) released the following press release, stating that the injunction is meaningless: "We are pleased the Federal Circuit found for us on Tivo’s hardware claims, but are disappointed in the Federal Circuit’s decision on the software claims. The decision, however, will have no effect on our current or future customers because EchoStar’s engineers have developed and deployed ‘next-generation’ DVR software to our customers’ DVRs. This improved software is fully operational, has been automatically downloaded to current customers, and does not infringe the Tivo patent at issue in the Federal Circuit’s ruling. All DISH Network customers can continue to use their DVRs without any interruption or changes to the award-winning DVR features and services provided by DISH Network”
• Echostar stock (NASDAQ: SATS) fell immediately upon news of the decision, but quickly rose again.

CAFC Allows Lost Profit Damages Based on Defendant's "Offer to Sell" Infringing Product

American Seating v. USSC (Fed. Cir. 2008)

Under 35 U.S.C. Section 271(a), offering to sell a patented invention is a form of patent infringement. This case examines, inter alia, what damages might ensue from such "on sale" activities even when an infringing product is not actually manufactured or sold.

In a separate part of the case, USSC's VPRo-I wheelchair tiedowns for mass transit were found to infringe a patent held by American Seating.  At some point, USSC stopped selling the VPRo-I and switched to a non-infringing design (presumably to avoid infringement). For pending VPRo-I orders, USSC simply notified customers that the new design would serve as a substitute.

After finding the patent valid and infringed by the offer to sell, the Michigan jury awarded American Seating lost profit damages based on the USSC’s non-infringing sales “because in those cases USSC first made infringing offers to sell the VPRo I, but ultimately delivered the [non-infringing] VPRo II.”

On appeal, the CAFC affirmed that a damage award for the non-infringing sales was appropriate because USSC had essentially pulled a bait-and-switch on its customers. Although courts have “significant latitude” in types of harms that can lead to an award of lost profits. However, plaintiffs must at least prove that the infringement was a “but for” cause of the lost profits.

The Federal Circuit’s 1999 Grain Processing decision also dealt with cases where the an infringing product was not actually sold. In that case, the court held that lost profit damages should only be available when the the product sold is not a substitute for the infringing product. Thus, lost profits would not be available if the replacement was “acceptable to all purchasers of the infringing product.” American Seating provided evidence that some customers had complained about the new model — thus proving that it was not an adequate.

Thus, the CAFC affirmed the lost profit award — finding that “absent USSC’s offer to sell the [infringing] VPRO-I, the sales would have gone to American Seating.”

Notes:

• Look for a follow-up post on this case in the coming days discussing other lost profit issues, including damages for “collateral sales”  and a discussion of public use under 102(b).

The Unethical Practice of Patenting Life

In the State of the Union address earlier in January 2008, President Bush made one statement regarding patents:

And as we explore promising avenues of research, we must also ensure that all life is treated with the dignity it deserves. And so I call on Congress to pass legislation that bans unethical practices such as the buying, selling, patenting, or cloning of human life.

 

Patently-O Bits and Bytes No. 8

• Upcoming Events:
• Web Seminar on the implications of Nuijten and Comiskey on Business Method Patenting on Feb 14, 2008 hosted by the World Research Group (WRG) [Link] Patently-O readers receive a 20% discount with code NGD759.  (Regularly $299).
• Web Seminar on Tafas v. Dudas on Feb 5, 2008 hosted by the Washington Legal Foundation (WLF). (FREE)
• Cambridge, MA: Feb 14, 2008, PIUG 2008 Boston Biotechnology Meeting hosted by Genzyme. $50 registration fee (must register by Feb 7).
• Nuijten and Comiskey are mentioned above. These cases are still under consideration at the CAFC for en banc rehearing.  Although rehearings are usually denied, one of these cases (or a consolidation) will likely be re-heard en banc — especially considering the mixed messages that patentees and the public have received regarding patents the extent that patent scope may be divorced from any specific technological innovation. Two other cases, Bilski (Bryson, Clevenger, Moore) and Ferguson, are still pending as well.
• Speaker Needed: Cyberlaw and Data Privacy Committee needs a speaker for February 19.

Claim Interpretation Should Include Disclosed Embodiments

Oatey v. IPS (Fed. Cir. 2008)

Oatey’s asserted claim is directed to a washing machine drain with “first and second juxtaposed drain ports.”  The patentee originally lost on summary judgment of noninfringement because the district court construed that element to require “two separate identifiable physical elements” and not simply a single divided drain port. Thus, the lower court agreed that the claim would cover the design showed in Figure 2 of the patent, but excluded the design shown in Figure 3.

On appeal, the CAFC reversed. Writing for a unanimous panel, Judge Newman held that absent disclaimer or estoppel, claims should normally be interpreted to include disclosed embodiments.

We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification. . . . At leas[t] where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary.

Because there was no evidence of disclaimer or prosecution history estoppel, Judge Newman found that the claim must be given a broader construction.

Notes:

• U.S. Patent No. 6,148,850.
• Lower Court Judge was Kathleen O’Malley (who has tremendous patent experience).

Patent Refom: Unsettling Rights

By Dennis Crouch

There have been numerous reports calling the US Patent System broken or at least in need of severe repair. From my view, the greatest problems with US patent law arise because of its common lack of clearly drawn property lines.  In academic lingo, we call this a failure of the public notice function.  

Examples of the fuzzy lines of patent law are well known to Patently-O readers and include the secret rights of unpublished patent applications; shifting rights that may be altered via extended prosecution, future continuing applications, and second look examination; and uncertain rights potentially crumbling under the vagaries of claim construction and obviousness jurisprudence.

These problems are exacerbated in certain technology areas – such as electronics – by massively overlapping claims and speculators asserting patents in a seemingly more aggressive fashion.  At the same time, there is a strong consensus that these issues do not arise in the same fashion in the pharmaceutical and bio-technological areas. Pharmaceutical patent law is often heralded as an incredible success — especially in the post Hatch-Waxman days of strong generic competition.

Now comes the Patent Reform Act of 2007. Unfortunately, the proposed patent reforms now being debated by the Senate do virtually noting to address these serious problems and instead potentially cause harm to the current regime.

CAFC Chief Judge Michel has publicly discussed patent reform and its potential impact on the judicial process. Apart from the Chief’s particular quarrels with damage apportionment and expanded interlocutory appeals, he makes a particular point about the destabilizing effect of major Congressional patent reforms.  In the decades following reforms, each amended word will be litigated and eventually construed. Unfortunately, during the wait for new statutory interpretations, patent holders and accused infringers will be left guessing.  Judge Michel’s ultimate point is that changes in the property regime should only be made when we have a genuine reason to believe that the changes will improve the system as a whole.  For the majority of the proposed patent reforms, that case simply has not yet been made.

 

Patently-O Bits and Bytes No. 7

• Patent Reform: The Senate has now placed the Patent Reform Act (S.1145) on the senate Calendar. [Link].  “Minority views” have been filed but are not yet available.
• BPAI Composition: The CAFC has denied an en banc request in the Translogic case. That case challenged the legality of past BPAI appointment practices. [See Duffy]
• Harmonization & Work Sharing: The PTO & JPO have announced a new bit of work-sharing cooperation. Under the agreement, a filing in one patent office would be deemed a filing in the partner office as well.  If successful, this proposal could eventually replace the PCT system. [LINK]
• UK Patenting Computer Programs: A UK Court has now ordered the UK PTO to stop rejecting patents simply because they claim computer programs. [IPKAT]
• Valuing Patents: Accountants don’t know how to place a value on patents. The solution appears to be an arbitrary standard. [LINK]

 

Bt-Corn Patent Unenforceable Due to Failure to Submit Internal Employee Notes

Monsanto v. Bayer (Fed. Cir. 2008)

Bayer holds several patents relating to genetically modified Bt corn.  This case arose when Monsanto sued Bayer in Missouri for a declaratory judgment stating that the patents were not infringed; invalid; and unenforceable.  The Eastern District of Missouri Court (Judge Webber) held all the patents unenforceable due to inequitable conduct during prosecution. On appeal, the Federal Circuit affirmed the holding of unenforceability.

Bt corn contains a gene that codes for Bt toxin — an insect repellent protein found naturally in Bacillus thuringiensis (Bt) bacteria. Bayer’s patents cover the chimeric Bt-plant-promoter gene; plant cells expressing Bt toxin; plants expressing Bt toxin; and the method of modifying plants to express Bt toxin.

Notes from a Conference: Before Bayer’s patent application, another scientist (Dr. Wayne Barnes) attended a conference and presented a poster on Bt genetic issues.  One Bayer scientist attended the conference and took extensive notes from the poster. Those notes were given to other Bayer Bt scientists including the individual responsible for prosecuting Bayer’s patent applications.

During prosecution, Bayer submitted Dr. Barnes Abstract, but did not submit the notes. According to the court, those notes were material because they provided evidence of Dr. Barnes disclosure. (A reasonable examiner would have considered them “important in deciding whether to allow the … application”). The inference of intent was easily made since Bayer took a position at the PTO that was directly refuted by information contained in the note.

Not Prior Art: One important – but unstated – aspect of this case is that the notes are not prior art. Rather, in this case the prior art was the publicly displayed poster.  Thus, the reminder: Rule 56 requires submission of prior art as well as information about the prior art that is either (1) material to patentabilty or (2) a reasonable examiner would consider important in deciding whether to allow the application. 

Declaratory Judgment Power: Monsanto filed its DJ action against four Bayer patents. In response, Bayer provided a “statement of non-liability” along with a promise not to sue Monsanto on three of the patents. Under CAFC precedent, such a statement normally removes a court’s jurisdiction over those patents — except where, as here, the court retains separate jurisdiction based on a Section 285 request for attorney fees. Thus, because the patents are still before the court, it retains jurisdiction to hold them unenforceable. In addition, the CAFC noted that the recent Nilssen case also allows a court to hold patents unenforceable even after being dropped from the lawsuit.

• 2004 decision on claim construction in same case

Patently-O Bits and Bytes No. 6.

• Patent Reform in February: Hal Wegner notes "widespread predictions" that Senator Leahy now has enough votes to push the Patent Reform Act through the Senate.
• Patent Reform Writeup: Professor Jay Thomas (Georgetown) is also tasked as the IP guy for the Congressional Research Service (CRS). In that capacity, Thomas has taken to explaining some of the pros and cons of the Patent Reform Acts of 2007. (HR 1908; S 1145).  [CRS REPORT ON PATENT REFORM] According to Thomas: “The provisions of the proposed legislation would arguably work the most sweeping reforms to the U.S. patent system since the nineteenth century.”  Thomas does an excellent job of quickly discussing each proposed reform measure in language as neutral as he can muster.
• PCT Seminar: April 25–26 Pierce Law will host its 10th annual Comprehensive PCT Seminar in Concord, NH. Cost is under $400 ($100 for students). Two of the leading PCT Experts Carol Bidwell and David Reed will lead the seminar. [LINK]
• Position: Director of the Office of Technology Management and Industry Relations at the University of Missouri. (Join me in Columbia). “The University of Missouri, Columbia (MU) is seeking an innovative, energetic, and experienced individual to serve as Director of the Office of Technology Management and Industry Relations.” [LINK]

IEEE Standards: FTC Finds Patent Enforcement "Unfair Competition" Based on Patentee's Prior Offers to License

Federal Trade Commission v. N-Data (FTC Complaint and Settlement 2008)

The FTC has announced both a complaint and settlement with the patent enforcement company N-Data. 

N-Data had purchased Patent Nos. 5,617,418 and 5,687,174 from a distressed company (Vertical Networks) who had received the patents from National Semiconductor.  Both patents related to NWay ethernet technology that has become an IEEE standard. 

An Encumbrance: National was interested in having its technology adopted as an IEEE standard. Consequently, prior to assigning away its patent rights, National wrote to the IEEE with a promise to “offer to license its NWay technology to any requesting party …. on a nondiscriminatory basis” for a one-time fee of $1,000. The evidence showed that each party in the chain of patent title were aware of those statements at the time of transfer.  Soon after the promise, IEEE adopted the NWay standard.

Enforcement: Despite the $1,000 license promise by its predecessor, Vertical (and subsequently N-Data) began enforcement proceedings — asking rather for a reasonable royalty totaling approximately $20 million per year.

FTC Complaint:  In a 3–2 decision, the five-member FTC voted to issue a complaint against N-Data’s activities under Section 5 of the FTC Act.  That section provides the Commission with authority to stop unfair methods of competition and deceptive commercial practices.  The Majority opinion particularly noted the problem of “lock-in”: “Respondent engaged in conduct that was both oppressive and coercive when it engaged in efforts to exploit licensees that were locked into a technology by the adoption of a standard.” 

This holding is notable because there is no finding that N-Data had monopoly power or any antitrust liability. Consequently, Chairman Majoras (writing in dissent) had difficulty finding any oppression.  Majoras likewise had difficulty characterizing the sophisticated corporate players on the IEEE committee as “victims.” “The novel use of our consumer protection authority to protect large corporate members of a standard-setting organization is insupportable.”

N-Data chose not to fight and has agreed to the majority findings.

California Should Not be Immune from Charges of Patent Infringement (But it is Immune)

BPMC v. California Department of Health (on petition for certiorari). [Read the Petition]

States generally support strong patent rights. Why? Because States are free to enforce their patent rights yet are generally immune from suit for infringing patents owned by others. 

The Eleventh Amendment – ratified in 1795 – provides immunity to State governments from suits by “Citizens of another State … [or] any Foreign State.” The US Supreme Court has expanded the literal reading of the amendment — holding that state immunity broadly extends to almost all lawsuits brought against a state.

A State may, of course, waive its immunity.  A classic example of waiver occurs when a state files a patent infringement lawsuit.  After filing the lawsuit, the State cannot claim immunity against related counterclaims filed by a defendant. 

The facts of this case are quite simple: Healthcare Giant Kaiser filed a declaratory judgment action against the patent holder BPMC back in 1997. The State of California intervened in that case in support of Kaiser’s position.  The DJ action was eventually dismissed for improper venue. Almost a decade later, BPMC filed an identical (mirror image) infringement action against the State asserting the identical patent and issues and in the same venue as the 1997 action.

The issue then is whether California’s original waiver of immunity also applies to this second – seemingly identical case.

On appeal, the CAFC narrowly construed California’s waiver of immunity to be limited to only the same action. The court noted precedent that the waiver would apply if BPMC had been able to file its case as a revival of the original action an “numbered as that cause of action.”

The appellate panel also rejected BPMC’s argument that the DOH should be judicially estopped from changing its position in this litigation. According to the court, the about-face was excusable because of an intervening change in the law of immunity.  In particular, during the interim, the Supreme Court decided Florida Prepaid. That case held that Congress could not legislatively eliminate a State’s sovereign immunity from patent infringement claims without showing cause under the 14^th amendment.

In its petition for certiorari, BPMC focuses on the issue of waiver due to litigation conduct. The patentee argues that its case is particularly special — because of past waiver in the same transaction. In addition, however, the patentee argues that some states – such as California – have become such major market participants in patent litigation that it would be unjust to allow immunity to continue:

California’s effort to invoke sovereign immunity selectively in this case is part of a larger scheme to use the federal courts as both a sword and a shield. California embraces federal patent jurisdiction when it seeks to benefit but avoids that jurisdiction when it faces liability. Through its frequent voluntary invocation of federal patent jurisdiction, however, California has unambiguously demonstrated that it is generally amenable to federal jurisdiction in these matters and has thereby waived its Eleventh Amendment immunity.

Although not likely, BPMC has a better than average chance at certiorari.  It is a fundamental constitutional question with a circuit split and changed business circumstances (States are now major patent players).  Another plus is that noted Supreme Court specialist Andy Pincus is on the brief and would likely argue for BPMC. 

Notes:

• BPMC v. California Department of Health (Fed. Cir. 2007).
• Vas-Cath v. University of Missouri (Fed. Cir. 2006).
• Tegic v. U.Texas (Fed. Cir. 2006)
• Pennington Seed v. Produce Exchange No. 299 and Univ. of Arkansas (Fed. Cir. 2006).
• Interestingly, BPMC’s claims are quite similar to those in the LabCorp v. Metabolite debacle. Here, we have a method of diagnosing placental disfunction by comparing a pregnant woman’s HCG levels against normal levels. Justice Breyer may want to hear this case to take another shot at medical methods.
• WSJ Article by Peter Lattman

Patently-O Bits and Bytes No. 5

• Majority Leader Harry Reid Plans to Move Quickly on Patent Reform: In the first work period of the Senate, Reid intends to move on patent reform (after handling the defense appropriations bill and economic stimulus). “Once we work these issues out, time permitting, we will also turn to two other priorities in this first work period: patent reform and an energy package.”  Perhaps appropriately, Reid’s concept of invention is tied-up with entrepreneurs: “On patent reform, we must carefully strike the right balance with a bill that promotes rather than blocks innovation from enterprising entrepreneurs.”  In Reid’s view, the bills should have become law in 2007: “If not for the obstruction of just a few Senators, we would have passed these bills last year. I am hopeful that the overwhelming majority of Senators – Democrats and Republicans alike – will have their voices heard this year.” [Zura]
• Comments for Japanese Patent Office: The JPO recently established a Policy Committee and have a schedule to recommend JPO policy changes in a report in April/May 2008. The Committee has generated broad goals of (1) a global system; (2) a predictable system; and (3) a system that promotes both creation and utilization. Comments on the goals and potential solutions are requested by Feb 25 (Japan time). [More Info] [Committee Broad Goals and Plan]
• Patent Bar Exam: Patent Agent Alex Nix has created an excellent wiki to help those studying for the Patent Registration Exam: www.PatentBarQuestions.com. Learn and Contribute!

USPTO News: Update Your Inventor Oath Forms

The Patent Office continues to beef-up its discussion of how to enforce Rule 1.56 duties of disclosure.  The most recent announcement declares that the Office will reject any inventor oath or declaration submitted after July 2008 that does not acknowledge a duty to disclose information material to patentability as defined in Rule 1.56.

37 CFR 1.63(b)(3) expressly requires that the oath include a statement that “acknowledges the duty to disclose to the Office all information known to the person to be material to patentability as defined in § 1.56.” Thus, this notice by the PTO can be seen simply as a nice way to announce future enforcement of the law.

The problem: Apparently, many of the oaths currently submitted only acnowledge a slightly narrower duty to disclose information “material to examination in accordince with 1.56(a).” 

Of course, all applicants (and individuals involved in prosecution) have the same duty to disclose regardless of which oath was signed.

• PTO Notice of Oath Enforcement
• Forms are available here: LINK
• Query: Should 1.56 be modernized to include a duty on the company filing the patent allowing us to break free from “the antiquated notion that it is the inventor who files the application, not the company-assignee.”

Non-Resident Filings as a Percentage of Total Filings by Office

LINK

Patently-O Bits and Bytes No. 4

• Patent Reform: The influential Intellectual Property Owners association (IPO) recently reported its belief that the Senator Leahy will “attempt to pass a revised version of S. 1145 in the Senate in February.”  The Bill has already successfully passed through the Senate judiciary committee. [www.ipo.org]
• RelatIP: An “online community tailored exclusively to the unique requirements of intellectual property (IP) attorneys.” [www.relatIP.com]. 
• Facebook: To meet Patently-O readers, join the Patently-O Facebook Group.
• Patent Troll Tracker Concedes: The Patent Troll Tracker is tired of the “kerfuffle” and plans to limit use of the occasionally offensive term troll.  PTT’s specialty is sifting through the chain of shell corporations used by patent enforcers.  Feeling the fire, Ray Niro’s $10,000 reward is reportedly dangerously close achieving success — unmasking the identity of the troll tracker.  See McIntyre v. Ohio Elections Commission (“Protections for anonymous speech are vital to democratic discourse. Allowing dissenters to shield their identities frees them to express critical, minority views . . . Anonymity is a shield from the tyranny of the majority. . . . It thus exemplifies the purpose behind the Bill of Rights, and of the First Amendment in particular: to protect unpopular individuals from retaliation . . . at the hand of an intolerant society.”). (Image of Hamilton as the anonymous Publius).

Innogenetics: Forward Looking Damages Approved

The injunction decision in Innogenetics deserves a second look. In that case, the Federal Circuit closely examined the Wisconsin District Court’s award of both injunctive relief and $1.2 million in forward looking damages.

The $7 million total damage award was divided into two parts by the jury: a $5.8 million “market entry fee” and a $1.2 million “ongoing royalty payment.”*  This award “exactly tracked” the damage award proposed by the patentee’s expert and also fit within the jury instructions, which called for “both an up-front payment and an ongoing royalty payment.” 

In addition to receiving a lump-sum to cover ongoing royalties, the District Court also awarded an injunction to stop ongoing infringement.  On appeal, the CAFC rejected this double-dipping. In her opinion, however, Judge Moore, was careful to cast the reversal in the language of eBay v. MercExchange.  Thus, the appellate panel held that a patentee who asked for and received future licensing royalties has no standing to complain of irreparable harm.

The reasonable royalties awarded to Innogenetics include an up-front entry fee that contemplates or is based upon future sales by Abbott in a long term market. When a patentee requests and receives such compensation, it cannot be heard to complain that it will be irreparably harmed by future sales.

Although the court did not use the words, the rule here appears to be akin to that of equitable estoppel.  This is a simple case for the appellate panel because the patentee asked for the forward looking damages.  However, the panel also implicitly accepts forward looking damages as an adequate substitute for injunctive relief.  The collection of damages negates irreparable harm — the most important eBay factor.**

On remand, the CAFC also appears to have vacated the lump-sum future sale damages. Without discussion, the appellate panel ordered that the district court instead implement a compulsory license with a running royalty payment. The only clue to the court’s reasoning lies in Footnote 9, which notes that the shift to a running royalty would allow the district court to retain jurisdiction to “ensure the terms of the compulsory license are complied with.” 

Notes:

• * Innogenetics argued a semantic mix-up, that the “ongoing royalty” was intended only to apply from the point of infringement through judgment. The CAFC rejected that contention.
• ** Moreover, this factor [the lack of inequitable harm] greatly outweighs the other eBay factors in this case.
• Read the decision.
• Patently-O: Appealing the Kitchen Sink
• Patent Prospector: OOPS
• Patent Docs: Innogenetics Loses Injunction
• Patent Docs: Discussion of District Court Decision
• Patent Baristas: Abbott Learns Not To Turn In Its Homework At 9:30 p.m. On The Night Before The Test

Design Patents: Claim Construction Rules Lead to Summary Judgment of Non-Infringement

One question to be answered in the upcoming Egyptian Goddess en banc rehearing is whether Markman style claim construction should apply to design patent cases.  George Raynal, an associate at the Saidman firm, took a look at the practical impact of such claim construction: summary judgment.

---

by George Raynal

The effect of applying Markman to design patent claim construction prior to determining infringement has resulted in an overwhelming likelihood that an accused infringer will bring a successful motion for summary judgment of non-infringement. 

In a survey, 63 design patent infringement cases have been identified since Markman was first applied to a design patent claim in Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995).  Of these, the accused infringer moved for summary judgment of non-infringement in 43 cases.  The movant was successful in 31 (72%)[1] of those 43 cases, whereas the motion for summary judgment of non-infringement was denied only 12[2] times.  Of the successful 31, ten[3] were appealed and only one[4] of those ten was reversed because the court could not agree that no reasonable jury could find infringement based on the record. 

Additionally, summary judgment of infringement has been granted in only four design patent infringement cases since Elmer.[5]  A motion for summary judgment of infringement has been denied once.[6]

Appealing the Kitchen Sink

Innogenetics v. Abbott Labs (Fed. Cir. 2008).

Innogenetics holds a patent covering a method of detecting Hepatitis C Virus (HCV) using hybridizing probes complementary to the 5’ untranslated region of HCV. The patent was found infringed and not invalid.

On appeal, Abbott follows the currently favored “kitchen sink” approach:

On appeal, Abbott challenges a myriad of issues, including the district court’s claim construction [of the word “as”], summary judgment of literal infringement, evidentiary exclusions as to Abbott’s obviousness and anticipation defenses, judgment as a matter of law that the Resnick patent did not anticipate claim 1 of the ’704 patent, summary judgment of no inequitable conduct, award of attorney’s fees to Innogenetics for Abbott’s counterclaim of inequitable conduct due to its exceptionality, and grant of a permanent injunction.

The appellate panel patiently discussed each issue. Here, we only discuss a few:

Infringement by Later-Invented Technology: Abbott proposed that it could not infringe because its particular “Realtime PCR” method of detecting HCV had not yet been invented at the time of the patent application.  Although the CAFC held that Abbott had procedurally forfeited that argument, the appellate body also noted that the argument is “lacks merit.”

Essentially, Abbott argues that a patent can never be literally infringed by embodiments that did not exist at the time of filing. Our case law allows for after-arising technology to be captured within the literal scope of valid claims that are drafted broadly enough. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 878-80 (Fed. Cir. 2004).

Late Disclosure: Abbott disclosed a prior art reference (the Cha patent) the day before discover closed (and after all depositions had been completed). Then, on the day before trial, Abbott requested that the jury instructions be amended to include the Cha patent as an anticipatory reference.  The district court denied Abbott’s motion as unduly late and prejudicial to Innogenetics. On appeal, the CAFC affirmed — taking Abbott to task for its hard litigation tactics.

This case aptly demonstrates the pitfalls of playing fast and loose with rules of discovery. Conclusory expert reports, eleventh hour disclosures, and attempts to proffer expert testimony without compliance with Rule 26 violate both the rules and principles of discovery, and the obligations lawyers have to the court. Exclusion and forfeiture are appropriate consequences to avoid repeated occurrences of such manipulation of the litigation process.

Anticipation: The kitchen sink tactic worked — The CAFC did agree with Abbott that its expert’s testimony on anticipation had been improperly disregarded. The district court had disregard the testimony - finding that the expert had based his conclusions on an incorrect understand of the claim term ‘genotyping.’  On appeal, the CAFC used its own knowledge of biotech law to find that the district court’s findings on this issue were ‘clearly erroneous.’ Consequently, Abbott gets a new trial on the issue of anticipation.

Injunctive Relief: The plaintiff agreed to jury instructions that would allow the jury to award both past and future damages. The award of $7 million appeared to include both past and future damages. In addition, the court issued an injunction to halt future infringement. On appeal, the CAFC held that the plaintiff was improperly double-dipping — a patentee may not collect a lump-sum for future damages and, at the same time, be awarded injunctive relief to stop future infringement.

The reasonable royalties awarded to Innogenetics include an upfront entry fee that contemplates or is based upon future sales by Abbott in a long term market. When a patentee requests and receives such compensation, it cannot be heard to complain that it will be irreparably harmed by future sales. . . . As a result, the district court’s grant of an injunction prohibiting future sales of Abbott’s genotyping assay kits was an abuse of discretion and must be vacated.

Patent Reform and the Ethos of the American Inventor

Although I understand the reality that most patent prosecution is handled on behalf of corporate assignees, I still hold a special place in my heart for the maverick American inventor.  Some might understand the slight pangs I felt when reading the inventorship section of the Senate report on patent reform.  The report suggests eliminating from the law “the antiquated notion that it is the inventor who files the application, not the company-assignee.” Perhaps it is time my thoughts of the American inventor to go the way of the Wild West and horse drawn carriages.

The Bill (S.1145) is intended to fix an understandable problem — that of inventors who fail to fulfill their contractual obligation to assign patent rights to the Corporate owner.  This is a serious problem as shown by the current issue of IPToday which includes a full-length article describing the complex set of hoops currently required to overcome these so called “problem inventors.” [LINK]

Beyond the sound-bites, the specific reform provisions are not so bad. The revised statute would allow an “obligated assignee” to file the patent application on its own behalf. An inventor’s oath is still required unless the “obligated inventor” is either unable or unwilling to sign. Under the provision, a patent cannot be challenged as invalid or unenforceable based on a corporations mistaken claim that the inventor had an obligation to assign.  The savings clause appears to also include protection against mistakes in correctly naming inventors in the application.

Quanta v. LG: Will the Supreme Court Clarify the Exhaustion Doctrine?

Editorial and News by Charles R. Macedo, Joseph Casino, Michael Kasdan, and Howard Wizenfeld.

Today, for the first time in half a century, the Supreme Court heard oral argument on the extent to which a patentee can license its patents to different members of the same sales chain for the same product. [Transcript] In Quanta v. LG Electronics, the High Court heard arguments on whether a patentee can grant patent rights and at the same time contract around the exhaustion doctrine.  Further, the issue of whether patent exhaustion applies to method claims was also before the Court.  Charley Macedo attended the oral arguments to get a first hand impression of how the Supreme Court might deal with the issues related to patent exhaustion.

An interesting aspect of oral argument at the Supreme Court was the focus of the Justices on whether patent exhaustion is an issue of patent law, contract law, or antitrust law.  Justice Breyer's questions appeared to suggest that, under contract law theories, a patentee should not be able to put a post customer restriction in a license because it would impose improper "equitable servitudes on chattel".  He also suggested that placing such a restriction could violate antitrust law doctrines.  By contrast, Justice Roberts focused on whether exhaustion is a patent law or contract law doctrine.

In fact, the theory of patent exhaustion probably implicates both patent law and contract law.  It implicates patent law because, once an authorized sale is made, the patentee should have no further right to limit the sale of that item in commerce.  It implicates contract and antitrust law to the extent the patentee tries to impose an improper restriction in its license agreement.  Either way, the Supreme Court should preclude a patentee from contracting around the exhaustion doctrine.

The Justices were also interested in knowing why the exhaustion doctrine was codified in the Copyright Act but not in the 1952 Patent Act.  In this regard the Amici were unable to cite to any useful discussion.

During argument LGE also argued that the notices Intel sent to its customers were valid techniques of avoiding a defense of implied license.  LGE objected to the use of the exhaustion doctrine as an end-around to the defense of implied license.

The role of patent protection in the U.S. economy continues to remain important and should not be undermined.  However, once a patentee has authorized goods or services to be sold under its patent, it should not be entitled to obtain a second payment for the same patent.   The Supreme Court has a chance to reestablish this fundamental principle of U.S. Patent Law.  We will have to wait and see if the Court takes advantage of this opportunity.

Patently-O Bits and Bytes No. 3

• Patent Prosecution Highway Pilot Program extends to include Canada, Korea, Japan, and Hong Kong. Under the program, allowed US claims can receive “accelerated examination” in the other patent offices. Likewise, cases seeking claims first allowed in the other countries will be “made special” in the US. (MPEP 708.02(a) procedures for a petition to make special do not apply here). [LINK]. [via “C’est é-p@tent!”]
• Outside the Box v. Travel Caddy: In an non-precedential opinion, CAFC judges disagreed on the meaning of the claim term “between.” The majority (Archer & Bryson) held that the term “between” limited the location of a panel only to an area within two end points.  In dissent, Judge Dyk argued that the open claim transition “comprising” should be interpreted to allow infringement even if the panel extends beyind the end points. [LINK]
• Quanta: Today, the Supreme Court is hearing Oral Arguments in the Quanta case. Three Supreme Court / IP veterans are handling the oral arguments: Maureen Mahoney (Quanta); Thomas Hungar (DOJ); Carter Phillips (LGE, patentee).
• ACPC Conference: In-house patent counsel may enjoy the upcoming ACPC meeting in Santa Barbara, Jan 27–30. [Link]

Revisiting Foreign Infringing Activity

CNET v. ETILIZE, 2007 U.S. Dist. LEXIS 87205 (N.D. Cal. 2007).

CNET sued Etilize for infringement of its patented method and system for creating an electronic website catalog.  

International Infringement: The accused infringer Etilize employs Pakistanis (in Pakistan) to manually comb the Internet and update its database of websites.

Method and System Claims: Because Etlilize performs some steps of the patented method outside of the US, it cannot be found to infringe the method claims under 35 U.S.C. 271(a).

On the other hand, CNET argued that the system claim would be infringed because the control and beneficial use of the system stems from the US. (NTP v. RIMM). On summary judgment, Judge Patel distinguished the RIMM decision and sided with the accused infringer. In particular, the court found that the claimed “system for creating” was not controlled or used by American end-users of the compiled data.

That a copy of the catalog is located on a server in the United States … does not change the fact that overall control of the data collection and catalog creation is exercised from Pakistan.

Import under 271(g): 35 U.S.C. 271(g) provides an additional avenue for capturing foreign infringement. That statute specifically charges importation of a product made by a patented process. Under Bayer v. Housey and NTP, this statute has been limited to physical products that have been manufactured.

Here, Judge Patel found that the electronic catalog (when stored on computer readable media) is a physical product and qualifies under 271(g).  In Microsoft v. AT&T, the Supreme Court followed the same analysis in holding that “a copy of Windows, not Windows in the abstract qualifies as a ‘component’ under 271(f).”

Federal Circuit Residency Requirements

28 USC 44(c) provides that any newly appointed Federal Circuit judge must live within fifty miles of the District of Columbia. This rule appears to unduly limit the judges that may be appointed to the CAFC.  Other circuits also have residency requirements, but those circuits serve only a limited geographic area. And, the geographic boundaries of the regional circuits are often quite large. The Tenth Circuit, for instance meets in Denver, but Judges may reside 900 miles away in southern Oklahoma. Likewise, the First Circuit, which sits in Boston, includes one judge who resides in Puerto Rico. The other ‘national’ appellate court — the DC Circuit — has no residency requirements.

The Senate’s version of Patent Reform would eliminate the Federal Circuit residency requirement. From the Committee Report:

Without casting any aspersions on the current occupants of the Federal Circuit bench, the Committee believes that having an entire nation of talent to draw upon in selecting these judges could only be a benefit. The duty stations of the Federal Circuit judges will, of course, remain in the District of Columbia. Judges in regional circuits often travel considerable distances for court sessions within the circuit, far from their homes and chambers, and there is no practical reason why Federal Circuit judges could not do so as well. Discussion of changes Section 11 of the Act eliminates the residency restriction for Federal Circuit judges by repealing the relevant portion of subsection 44(c) of title 28.

Hal Wegner has often argued that the geographic limitation should be eliminated:

“There should be no special geographic limitation on the residence of Federal Circuit judges. To those who would say that it is important that judges live close to a central courthouse to be with all their colleagues[, that notion] goes against the reality of most circuits. For example, the Seventh Circuit sits in Chicago, yet six of the regular members of the court have chambers outside Illinois, four in Wisconsin and two in Indiana. The Third Circuit, which generally meets in Philadelphia, has members with chambers in New Jersey and Delaware, and one with chambers 300 miles away in Pittsburgh.”

The appointment process will be especially important over the next several years as several of the current judges move to senior status. Within two years, most of the current judges will be eligible for senior status.  (I sincerely hope that these experienced judges continue their decisions without slowing down.)

Claim Construction: CAFC Cautions Co-Interpretation of System and Method Elements.

Baldwin Graphics v. Siebert (Fed. Cir. 2008). [UPDATED 1/15/08 7:30pm]

Judge Moran of the Northern District of Illinois granted Siebert’s motion for summary judgment of non-infringement — finding that Baldwin’s patented printing press cleaning system and method did not extend to cover Siebert’s products. On appeal, the CAFC reversed the district court’s claim construction and remanded.

“A” Means One or More: In a well tred battle, the CAFC found that the lower court had mistakenly limited the claim element of “a pre-soaked fabric roll” to only allow for a single fabric roll.  This follows the general rule that “a” or “an” are interpreted as “one or more.”  Exceptions do apply, but only when the patentee has shown “clear intent” to limit the meaning of those articles. As a corollary, later use of “the” or “said” when referring to the element either in the patent or in PTO correspondence does nothing to alter the rule.

System versus Method Elements: The parties agreed that the system element “reduced air content cleaning fabric” was substantially similar to the method of “reducing air content of a cleaning fabric.”  Judge Moran interpreted these together and required that the system element also have reduced air content “prior to being wound.” On appeal, the CAFC cautioned district courts about joint interpretation of system and method claims and found that the lower court had improperly imported a limitation into the system.

Patently-O Bits and Bytes No. 2

• Patent Reform: A draft report on S.1145 is available here.  [via PatentDocs]. Although currently supported by more Democrats than Republicans, this is a bipartisan bill that could pass. A summary:
• Change the system to a “first-inventor-to-file” system;
• Reduce patent damage awards;
• Enhance post-grant opposition proceedings;
• Provide for publication of all applications;
• Allow for better third-party submissions;
• Limit patent infringement venues;
• Allow the PTO to set its own fees;
• Remove the residency restriction for judges on the United States Court of Appeals for the
  Federal Circuit;
• Authorize USPTO to require pre-filing patent searches and explanations;
• Re-vamp the doctrine of inequitable conduct;
• Clarify the rules on unintentional delays in filing;
• Limit patent infringement liability for electronic check processing;and
• End USPTO “fee diversion”.
• Patent Reform: Remember, the House has already passed the companion bill. Passage could allow President Bush to ride out of office as the innovation president.
• Patent Baristas discusses PTO’s “Suspicious Behavior” in the Tafas case.

Inequitable Conduct: Backdating in Patent Law

ASP v. IQ Hong Kong (E.D. Wisc. 2007)

In 2001, Armament Systems (ASP) sued IQ Hong Kong and twenty-three other companies for infringement of its LED flashlight patent. (Patent No. 6,190,018).  Litigation was stayed while the PTO conducted a defendant-requested ex parte reexamination.  The patent subsequently was re-confirmed by the PTO as valid and litigation resumed in 2004.

During reexamination, the inventor (and ASP president) submitted a Rule 131 declaration evidenced by an early sketch of the invention.

Inequitable Conduct: The defendants allege that the sketch submitted during re-exam was a false document that had been fraudulently back-dated to overcome cited prior art.

A patent applicant’s inequitable conduct during prosecution can render a patent unenforceable. Inequitable conduct is proven with (1) affirmative misrepresentations of material facts with (2) intent to deceive the PTO.  Because most PTO proceedings are ex parte, inequitable conduct has been seen as an important tool to ensure proper applicant behavior.

ElectroStatic Detection: The defendants forensic expert used an ElectroStatic Detection Apparatus of the submitted sketch to uncover imprints of other sketches made on the same graph pad but with much later signature dates.  Using the physical evidence, the expert (former FBI chief of questioned documents) testified that it was a ‘near certainty’ that the submitted sketch had been falsely back-dated.

The inventor disputed these charges and instead offered several alternative potential methods by which the imprints could have occurred. This amorphous story did not help his cause — as noted by the court:  “[The inventor’s] evidence, taken as a whole, demonstrates that ASP has offered shifting, inconsistent, and un-corroborated explanations to account for indentation of the later sketches on Q1. As such, the evidence undermines the credibility of the [new] explanation offered by [the inventor] for the first time a trial.”

Occam’s Razor: Applying Occam’s Razor, the court sided with the simplest explanation — that of falsification.  As the basis for allowance, the submission was clearly material. Falsification secured a finding of intent. Thus, the court found the patent unenforceable for inequitable conduct.

 The case is now on appeal to the CAFC.

Patently-O Bits and Bytes

• A new Intellectual Property Symposium is coming up in April 15–16 in San Jose with EETimes as the main sponsor. Speakers include Jon Dudas, Peter Detkin, Michael Meurer, David Pressman, Jim Malankowski, Steve Baik, and others. The price is a steep $1,795. Patently-O readers receive a $100 discount by following this link: https://www.cmpevents.com/ESCip08/a.asp?option=B&SC=BPO1?cid=patentlyo. (Note: Conference organizers get top billing by offering a discount to Patently-O readers.).
• Jay Wahlquist at Fogg & Powers has created a new free toolbar termed “The Patent Pal.”
• The IRS is holding a hearing on Feb 21 on its proposals for requiring reporting of any licensed use of tax strategy patents. Comments are due by January 31. File Attachment: IRS.Notice.pdf (103 KB); File Attachment: IRS.ProposedRules.pdf (33 KB).
• New Patent Jobs:
  • Assistant/Associate Clinical Professor of Law - University of Connecticut
  • Associate Attorney, Chemical Prosecution - Law Firm - Washington D.C.
  • Patent Attorney - Law Firm - Beverly, Mass.
  • Patent Agent/Attorney - Law Firm - Alexandria, Va.
  • IP Associate - Law Firm - Chanhassen, Minn.
  • Experienced Patent Attorney - Law Firm - Spokane, Wash.
  • Director, Global Patent Counsel - Small Corporation - St. Louis, Mo.

Top Thirty Patent Law Programs (Ranked by Patently-O Hits!)

This post is silly, but still interesting. Below, I have listed a ranking of the top thirty law school patent programs based solely on the number of Patently-O* visits received from the associated university in the calendar year 2007. In theory, the number of hits has some correlation with the intensity of interest in patent law issues at the particular school. Of course, university computers represent only a small portion of the 2.8 million total hits received in 2007.

Rank	School	Relative Score
1	The George Washington University	100%
2	University of Texas at Austin	75%
3	DePaul University	74%
4	Columbia University	72%
5	University of Virginia	72%
6	University of California at Berkeley	61%
7	Harvard University	59%
8	University of Tennessee	54%
9	Cornell University	54%
10	Boston University	52%
11	Georgetown University	49%
12	New York University	47%
13	University of Houston	46%
14	Stanford University	45%
15	University of Missouri-Columbia	44%
16	Washington University	42%
17	University of Chicago	41%
18	University of Iowa	41%
19	Indiana University-Purdue University at Indy	39%
20	Suffolk University	38%
21	George Mason University	38%
22	University of Richmond	35%
23	University of Washington	33%
24	Northwestern University	29%
25	American University	29%
26	Indiana University	29%
27	University of Michigan	28%
28	Santa Clara University	25%
29	Ohio State University	24%
30	University of Minnesota	23%

There are many issues with this study. Here are a few: First, law school rankings are generally quite silly. Second, some schools may not use their name in their IP address — making them lose their ranking. This appears to be true of Franklin Pierce Law Center. Schools where students (and professors) primarily study away from campus building may also rank relatively lower.  Fourth, many of these hits come from the Technology Transfer office rather than the law school.

Up next… Top Thirty Procrastinating IP Law Firms based on number of Patently-O hits…

The Telephone Gambit: Chasing Alexander Graham Bell’s Secret

by Seth Shulman

I thank Dennis Crouch for letting me tell Patently-O readers directly about my latest book, The Telephone Gambit: Chasing Alexander Graham Bell’s Secret out this week from W.W. Norton.

The book recounts my experience, while working for a year as a fellow at MIT’s Dibner Institute for the History of Science and Technology, of stumbling upon evidence that reveals a twisted mystery surrounding Alexander Graham Bell’s role in the invention of the telephone. Working from Bell’s laboratory notebooks and his voluminous correspondence, I soon found myself caught up in the surprising story behind the invention of the telephone: a tale of romance, unchecked ambition—and corruption at the U.S. Patent Office.

In the book, I try to capture the feel of the rich and exciting time in which Bell lived at the second half of the 1800s. This was, after all, one of the true golden ages of invention. As Thomas Hughes notes in his classic historical work American Genesis, the number of U.S. patents issued each year during this period rose astronomically. Consider, for instance, that the U.S. Patent office issued 688 patents in 1846 but, by 1890 was issuing more than 26,000 annually. Talk about dramatic technological change!

The rapid technological change emerging in a Victorian, horse-and-carriage era serves as the backdrop for my tale, but the focus of the book is tight: I wrote it as a kind of a nonfiction detective story, recounting my own story of becoming relatively obsessed with chasing down clues about Bell’s life and times in rare archives and artifact collections around the world to unravel the surprising and long-hidden truth about him.

In the course of my research, I unearth a “smoking gun” that leaves little doubt that Bell furtively—and illegally—plagiarized his initial telephone design from his major competitor, Elisha Gray in his quest to secure what would become the most valuable U.S. patent ever issued. It is shown below. The sketch circled at the right appears in Alexander Graham Bell’s notebook on March 8, 1876, two days before his famous success calling to Watson in the next room. The circled inset on the left is a confidential patent filing (then called a caveat) rival inventor Elisha Gray had made at the U.S. Patent Office three weeks earlier.

This is not the denouement of the story, but rather its start. When I discovered this connection, I decided to go back to all the primary documents to learn what I could about how Gray’s elegant and successful liquid transmitter design for the telephone could have ended up in Bell’s laboratory notebook. I wanted to know whether it could possibly be true that Bell plagiarized the telephone, how he could have gotten away with it, why Gray wouldn’t have contested his claim, and why we remember history the way we do. I shed light on all these questions as the story unfolds.

Reviews are just starting to come in and they mostly very gratifying. Barnes & Noble Review just wrote “It’ll be stacked in the science shelves, but The Telephone Gambit might be an early contender for best thriller of the year…Shulman pulls it off, producing a book that’s rigorous, provocative, and, like any thriller worth its salt, a blast to read.” I hope the many readers of this site with expertise in patenting will give the book a look and feel free to share their perspective about the story with me via my website www.sethshulman.com.  

Paper Posted to Non-Indexed FTP Site Not 102(b) Prior Art

SRI Int’l v. Internet Security Systems (Fed. Cir. 2008).

In Delaware federal court, SRI accused ISS of infringing four  patents relating live traffic analysis of computer network gateways.  On summary judgment, Judge Sue Robinson held the patents invalid — anticipated by SRI’s own prior work.

In a split panel, the Federal Circuit vacated — finding a lack of evidence that SRI’s prior publication was sufficiently publicly available more than one year before the patent applications were filed.

Event History:

• Aug 1, 1997 — “Live Traffic” paper e-mailed to a conference chair and posted the paper on an accessible SRI FTP site as a “backup” for the conference chair. Paper remained on the FTP site for seven days.
• Nov 10, 1997 — SRI displays the paper on its website.
• Nov 9, 1998 — SRI files its patent application.

Although 35 USC 102(b) contains no explicitly requirement of ‘public accessiblity’ of a prior printed publication, such accessibility has long been required and fills-out the definition of the term ‘publication.’

In the 2006 Bruckelmyer case, the CAFC noted that public accessibility could be satisfied if a person who is “interested and ordinarily skilled in the subject matter” could locate the publication using “reasonable diligence.”  Otherwise hidden publications can often be considered accessible if they are somehow indexed or cataloged by subject.

In Bruckelmyer, the court found that an unpublished Canadian patent document was sufficiently accessible because it was related to an on-point issued patent and could be retrieved at the Canadian patent office.

In this case, the court found insufficient evidence to rule on summary judgment. The FTP server was publicly accessible. However, it was uncataloged and would have been difficult to search. Additionally, only one non-SRI person (the conference chair) was shown to have knowledge of the paper on the FTP site.

Thus, the court vacated summary judgment for further development of the facts.

Judge Moore dissented — arguing forcefully that the facts showed public accessibility of the FTP site. (For instance, the FTP site had been used previously and was linked-to from over 70 Google Group posts). Procedurally, Judge Moore also faulted SRI for failing to present any facts on its side (as opposed to attorney argument). Under Rule 56, an opposing party “must set forth specific facts showing that there is a genuine issue for trial.”

Out of the Office

Patently-O will be returning shortly…

Remembering Mark Banner

With regret, I report the passing of leading patent attorney Mark T. Banner. Mark was generous and helpful to me in my first few years of practice in Chicago. He was also an occasional Patently-O contributor.

Mark T. Banner, a Partner in the law firm of Banner & Witcoff, Ltd., died in Tucson, Arizona, Sunday, December 30, at age 57. At the time of his death he was with his wife of thirty two years, Kathie German, and surrounded by those he loved and who loved him.

Mark was a leader in the field of intellectual property law, specializing in jury trials of technologically complex cases for both plaintiffs and defendants across the country. He was an avid user of the latest technology in an effort to improve cost-effective trial presentations. Mark lectured frequently on patent law, trade secrets, and other intellectual property matters, as well as how to conduct patent trials. He served as a faculty member of the first National Institute of Trial Advocacy program specifically geared to patent litigation trial skills. He was also an adjunct professor at the John Marshall Law School and the Georgetown Law Center, teaching courses on patent law advocacy and enhanced use of technology in the trial of complex cases. Mark served as Chair of the American Bar Section of Intellectual Property Law, and was a bar course administrator for the Master Class on Appellate Advocacy, taught by the Hon. Paul R. Michel, Chief Judge, United States Court of Appeals for the Federal Circuit. For his work in intellectual property law, Mark was listed in Euromoney's "Guide to the World's Leading Patent Law Experts" and featured in The Best Lawyers in America, the Leading American Attorneys, The International Who's Who of Patent Lawyers and the Illinois Super Lawyers.

Mark received a B.A. degree from Purdue University and went on to receive his law degree from the John Marshall Law School, where he was a member of the Law Review and graduated with high honors.

Those in the intellectual property law field know well Mark’s rich legacy of accomplishments and recognitions for those accomplishments. He spoke and published widely on the patent law and its importance to encouraging creativity and promoting the general welfare of our country. Those who knew him loved him for his wit, his integrity, his determination, his passion for life and his commitment to teaching.

In addition to his wife, Mark is survived by his two sisters – Peggy (Mrs. James) Dau of Bartlesville, and Pamela (Mrs. Robert) Banner Krupka of Los Angeles, two brothers Donald J. (Helen) of Pueblo  (Colo.),Brian E. (Cathleen) of Washington, DC., his step-mother Jean Banner of Tucson,  and his step sisters Nancy (Mrs. Robert) Phipps of Nashville, Helen (Mrs. George) Smith of Atlanta, and Louise ( Mrs. Robert) Whitaker of Franklin  (Tenn.).

A memorial service will be held in Chicago in January 2008.

The family requests that memorials be made to the Donald W. Banner and Mark T. Banner Scholarship Fund at the John Marshall Law School (315 South Plymouth Court, Chicago IL 60604).

 

Wegner's Top Ten for 2008

Hal Wegner has released his top ten upcoming cases for 2008:

1. Quanta v. LG – Patent “Exhaustion”
2. McFarling – Patent “Exhaustion”
3. Kubin – Biotech Obviousness; Enzo Disclosure
4. Classen v. Biogen – “Metabolite déjà vu”
5. Convolve v. Seagate – Petition from In re Seagate
6. Bilski – Patent-Eligibility under § 101
7. Sanofi-Synthelabo – The Plavix Case
8. Sang Su Lee II – Post-KSR Motivation
9. Ferguson – Method of Marketing a Product
10. Barnett – Internet-driven Method

 Hal Wegner’s list focuses on utility patent litigation. I would add three other cases from a slightly different vein:

• Tafas v. Dudas – Challenging the PTO’s power to implement rules limiting continuations and claims. (summary judgment briefs filed).
• Egyptian Goddess v. Swisa – Redefining the meaning of infringement and claim construction for design patents. (rehearing en banc pending).
• Bender v. Dudas – Challenging the PTO’s ability to regulate patent attorney business relationships that go beyond ‘practice before the office.’ (on petition for certiorari).