Harvard’s Journal of Law & Technology is generally considered on of the top two academic journals focusing on Law & Technology (along with Berkeley’s TLJ). JOLT recently increased its online footprint with the JOLT DIGEST where they regularly cover important new cases. - Software Patents: Although in Bilski, the CAFC is not likely to consider software patents per se, there is a strong and growing movement to eliminate all software patents. The descriptively named “End Software Patents” group is led by Ben Klemens (Author of Math You Can’t Use) and is continuing to move forward. Interestingly, Microsoft Explorer crashed when I visited their site. [See LegalPad’s article]
- Software Patents: On the more academic side, two serious patent dataheads (Iain Cockburn and Megan MacGarvie) have analyzed economic results of software patents in various industries. Their results: (1) When patents are held by those currently market, it is more difficult for a startup to get financing; and (2) When a startup holds patents, it has a greater chance of obtaining financing. [LINK] DDC Comment: This is, of course, exactly how we would expect the market to react.
- Auctioning the Right to File a Patent Application: Ayres and Parchomovsky have an interesting, if misguided, paper on patent rights. They see a problem with too many patents and suggest a “cap.” The right to file patent applications could be auctioned and then traded or sold in a secondary market. [LINK]
- Kempton Lam has an interesting discussion on patents and other matters with Mike Dillon GC of Sun. [LINK]
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Feb 28, 2008
Claim Construction Reversal Rates II – District Court Judge Experience
How do district court judges with varying levels of experience perform on claim construction? Are judges more likely to have their decisions affirmed when they have previous claim construction experience? Yesterday I provided some background on the large database I compiled and some overall results. [LINK] Today's post provides an analysis of the data based upon the number of previous appeals of claim construction. A draft of the paper, Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases, can be downloaded here.
If district court judges improve after appellate review of claim construction, one would expect that the reversal rate would decrease as the number of appeals increases. More specifically, a district court judge with more prior Federal Circuit feedback should have a lower reversal rate than a district court judge with less experience. Assuming that the judge decided the second case after learning of the decision of the Federal Circuit in the prior case, the second time a particular judge is before the Federal Circuit, he or she should be more likely to have his or her claim construction affirmed. Figure A below illustrates the reversal rates of district court judges broken down by the number of prior claim construction appeals.
The left-most set of bars represents the results from every judge's first appeal, with the blue bar indicating the percentage of cases that had to be reversed or vacated due to an incorrect claim construction, and the red bar indicating the percentage of cases with any erroneous claim construction. Moving to the right, the pairs of bars represent the results from each judge's subsequent appeals.
These results suggest that district court judges do not improve as the Federal Circuit reviews their cases. Contrary to conventional wisdom, the reversal rate does not appear to decrease when a district court judge has multiple decisions reviewed by the Federal Circuit on claim construction. In fact, the highest reversal rate is for judges with four prior claim construction appeals. Other than judges who have been appealed exactly four times, the range is very narrow, between 26.8% and 30.5% for reversals and 31.0% and 40.4% for errors. Thus, there does not appear to be significant expertise gained by district court judges via direct Federal Circuit review that causes the claim construction reversal rate to decrease. (As discussed in more detail in the paper, the study is subject to several limitations inherent in studying appellate cases, including for example, a potential selection bias and a potential distortion if the cases are not distributed evenly across the district court judges. Ideally, for research purposes, cases would be randomly assigned to a judicial district (i.e., no forum shopping), and a random subset of those cases would be appealed.)
Up next: Reversal rates based performance by district court judges after a first reversal by the Federal Circuit.
I welcome comments from the readers of Patently-O.
Feb 27, 2008
Feb 25, 2008
Reviving Unintentionally Abandoned Patent Applications
Aristocrat Technologies v. IGT (pending before the CAFC).
The pending Aristocrat case is interesting for several reasons: (1) it involves the greatest fear of many practicing patent prosecutors — missing a deadline; (2) it will decide the scope of PTO authority in advance of Tafas v. Dudas; and (3) pending legislation would expand PTO authority to cover some of the issues here.
Background: The Patent Act discusses revival for unintentional abandonment due to failure to submit proper application fees (35 USC 111) and failure to rescind a nonpublication request (35 USC 122). In other cases, however, the Patent Act only explicitly allows revival of unavoidably abandoned cases — a much higher standard. These include Abandonment due to failure to respond to a PTO notice (35 USC 133); failure to pay the issue fee (35 USC 151); and failure to comply with national stage filing requirements (35 USC 371). The fee schedule (35 USC 41) further provides for a specific fee for revival of unintentionally abandoned applications as an explicit alternative to revival of unavoidably abandoned applications.
Aristocrat's patent application was originally filed in Australia, but the US national stage filing was one day late. Per its usual operation, the PTO allowed Aristocrat to revive the application based on the unintentional standard. The district court (J. Jenkins N.D. Cal.) found that the PTO lacked authority to revive the application.
Revival is Common: The USPTO estimates that it has revived approximately 73,000 patent applications since 1982. If the lower court's decision is upheld, most of the related patents would be put in jeopardy. In addition, many of the revived applications have spawned multiple family members – potentially leading to further invalidation.
In a brief supporting the appeal, the Patent argues that Section 41(a)(7) of the Patent Act authorizes the Office to revive unintentionally abandoned patent applications – regardless of the form of abandonment. As a backup, the Office demands Chevron deference:
"To the extent that any ambiguities or gaps exist between § 41(a)(7) and the other provisions of Title 35, the USPTO's reasonable and contemporaneous interpretations of its governing statute is entitled to Chevron deference. "
Beyond Chevron, the Patent Office argues that it is entitled to "great deference" because it has been applying its interpretation for so many years. See US v. Clark, 454 U.S. 555 (1982). In amicus, the Neurotechnology Industry Organization also argues that 35 U.S.C. § 2(b)(2)(A) requires that the PTO be given great deference.
Notes:
-
Briefs & Documents:
- PTO Amicus Brief
- NIO Amicus Brief
- Aristocrat Merits Brief [Patently-O Discussion of Aristocrat Appeal Brief]
- IGT Merits Brief
- District Court Decision [Patently-O Discussion of Original District Court Decision]
-
Statutory provisions for revival due to unintentional abandonment:
- 35 USC 111: Failure to submit fee and oath of a patent application;
- 35 USC 41: Fee schedule for revival of unintentionally abandoned applications. This section provides a specific fee for revival of unintentionally abandoned applications as an explicit alternative to revival of unavoidably abandoned applications; and
- 35 USC 122: Abandonment due to failure to rescind nonpublication request.
-
Statutory provisions that only refer to revival due to unavoidable abandonment:
- 35 USC 133: Abandonment due to failure to respond to PTO notice (Normally a 6–month deadline, but may be less);
- 35 USC 151: Revival for failure to pay issue fee; and
- 35 USC 371: Failure to comply with national stage filing requirements.
-
PTO Rules:
- 37 C.F.R. 1.137(b) provide for revival of applications based on an applicant's unintentional delay in replying. Under the rule, abandoned applications, reexamination prosecution terminated under §§ 1.550(d) or 1.957(b) or limited under § 1.957(c), or lapsed patents may all be revived under this standard. The PTO rules are, however, subordinate to statutes.
-
Caselaw:
- Lumenyte v. Cable Lite (Fed. Cir. 1996): Patentee revived case as unintentionally abandoned. The CAFC affirmed the ruling without questioning whether such revival is ever permissible.
- Morganroth v. Quigg (Fed. Cir. 1989): Affirming that the Director does not have authority to revive an unintentionally abandoned patent application "that resulted from the applicant's failure to appeal from a final district court judgment that upheld the Commissioner's prior refusal to issue a patent."
- New York Univ. v. Autodesk, Inc., 2007 U.S. Dist. LEXIS 50832 (SDNY 2007): The court found that the delay in reviving was not even unintentional. The court explicitly did not reach the question of whether revival for unintentional abandonment due to failure to respond to an office action is even permitted. (Remember, 35 USC 133 only allows for revival of unavoidably abandoned applications.)
- Field Hybrids v. Toyota (D.Minn 2005).
- This case is not the recently decided Aristocrat v. Multimedia Games.
De-Stabilizing Preliminary Injunctions through De Novo Review of Claim Construction
Chamberlain Group v. Lear Corp. (Fed. Cir. 2008)
Chamberlain's patent is directed to improved security for remote garage door controls. After an initial claim construction, the N.D. Ill. court granted summary judgment for Chamberlain and issued a preliminary injunction.
A major point of contention was the claimed "binary code" limitation. In a portion of its system, Lear used a three-symbol (trinary) code. Of course the underlying processor is binary and thus encodes the trinary code as binary numbers. In its preliminary injunction decision, the lower court held that Lear likely infringed because of the trinary coded binary numbers.
De Novo Review: On appeal, the CAFC reversed, but only after noting that the "district court commendably strove to follow this court's rules for claim construction." In particular, the CAFC found in its de novo review that the specification requires a finding that a trinary code is not a binary code even though it is stored in binary format.
De Novo Preliminary Injunction: A preliminary injunction requires a showing that the patentee has a strong likelihood of success on the merits of the case. Because a showing of success on the merits depends upon the claim construction, the appellate panel held that reversal on claim construction will almost always lead to vacatur of a preliminary injunction. I.e., "A correct claim construction is almost always a prerequisite for imposition of a preliminary injunction."
Preliminary Injunction Vacated.
Notes:
- This decision is important because it shows how de novo review of claim construction can de-stable holdings that are otherwise reviewed only for clear error.
- Background on the Litigation
Patently-O Bits and Bytes No. 17
Increasing Complexity: The House Judiciary Subcommittee on IP is holding its PTO oversight hearing on Feb 27 at 1:30 pm. These graphs, originally from Patently-O, will be used by POPA when demanding enhanced examiner pay.
- Judicial Conference: The CAFC's Judicial Conference is scheduled for May 15, 2008 in DC at the Grand Hyatt. INFO.
- Seagate: The Supreme Court has declined to grant certiorari in the Seagate decision. That decision has eliminated much of the need for a formal opinion of counsel prepared for litigation. Expect a study next summer showing treble damages in severe decline.
- Supreme Court Quanta: Quanta is awaiting decision. This decision may follow antitrust regulation and inject more economic analysis into decisions of whether particular license agreements are acceptable.
- Supreme Court Biomedical v. California: The U.S. Chamber of Commerce has filed an amicus brief supporting Biomedical Devices in its attempt to strip California of its immunity from patent infringement litigation. For an unknown reason, the IP Bar associations have refused to provide any input on this case.
- EPC 2000: The European Patent Convention has received its first major revision in 30 years. Nicholas Fox provides an excellent summary in book form for £25. Hat tip to Bill Heinze.
Feb 24, 2008
Patent Troll Tracker, Trade Secrets, and other Bits, No. 16
Troll Tracker Revealed: After learning that Ray Niro paid $10,000+ for information leading to his actual identity, the Patent Troll Tracker has revealed his identity — Cisco IP Director Rick Frenkel [LINK]
- Trade Secret: Although perhaps a novel theory, I would argue that an anonymous blogger's identity is a protectable trade secret. Improper means used to reveal the trade secret can create liability.
- Quote of the day (from 1895):
"It should also be borne in mind that no property is so uncertain as "patent rights"; no property more speculative in character or held by a more precarious tenure. An applicant who goes into the patent office with claims expanded to correspond with his unbounded faith in the invention, may emerge therefrom with a shriveled parchment which protects only that which any ingenious infringer can evade. Even this may be taken from him by the courts. Indeed, it is only after a patentee has passed successfully the ordeal of judicial interpretation that he can speak with any real certainty as to the scope and character of his invention. Especially is this true of patents on spring-tooth harrows." [1]
[1] E. Bement & Sons v. La Dow (C.C.) 66 Fed. 185 (Circuit Ct. N.Y. 1895)
Feb 22, 2008
Warning: Do Not Rely on the Experimental Use Exception to 102(b)
Atlanta Attachment v. Leggett & Platt (Fed. Cir. 2008)
The CAFC once again reaffirmed patent law's parallel to Chicago democracy: File early and often.
The patentee, Atlanta Attachment, won a summary judgment on issues of infringement and validity. Missouri based defendant Leggett & Platt appealed — arguing that the patented sewing machine had been "on sale" for more than one year before Atlanta Attachment filed its patent application.
The on sale bar of 102(b) invalidates an issued patent that was on sale prior to the one-year critical date. In Pfaff, the Supreme Court defined "on sale" as requiring an embodiment of the claimed invention being subject to a commercial offer for sale and being ready for patenting at the time of the sale. The on sale bar can be negated in certain cases where experimentation was still occurring.
Facts: Atlanta Attachment was working with Sealy to develop a special ruffle producing sewing machine. Over the course of a few years, several prototypes were sent to Sealy for experimentation. Each one was returned to the plaintiff for improvements. The third prototype included all of the claimed elements. Atlanta Attachment invoiced Sealy and was paid for the prototype. Instead of delivering the prototype, however, Sealy merely tested the prototype at the patentee's facility and was later refunded its purchase price. At that time. Sealy made further suggestions regarding changes. In addition, Atlanta Attachment had offered to sell 50 production units prior to the critical date.
Holding:
- On Sale: Although never actually delivered, prototype was sold an invoice was sent and paid. Additionally, the offer to sell the 50 production units constitutes an offer to sell. Here, the invention was considered on sale because the asserted claim was broadly written – even though the prototype was not the eventual preferred embodiment.
- Experimental Use: First, the CAFC held that the experimental use exception does not apply after a commercial offer for sale has taken place. Additionally, Atlanta Attachment cannot claim the experimental use exception for Sealy's tests since "experimentation conducted to determine whether the invention would suit a particular customer's purposes does not fall within the experimental use exception" and because Atlanta Attachment did not control the testing. This is a subtle point – the patentee apparently retained control over the device by keeping it in its facility, but did not control the testing of the device.
- Ready for Patenting: A prototype that is reduced to practice and works for its intended purpose is ready for patenting. The "intended purpose" here is shaped by the patent claim. And, later refinement of a device does not mean that it wasn't ready for patenting.
Thus the claim is invalid under the on sale bar of 35 U.S.C. §102(b). Additionally, the CAFC asked the court to reexamine whether the patentee's failure to submit information about the prototypes would be sufficient to lead to a finding of unenforceability due to inequitable conduct.
Concurrence: Judges Prost and Dyk joined the majority opinion, but also penned a separate concurring opinion begging for en banc review of the "confusing" jurisprudence on the experimental use exception to 102(b). "Without considering these issues in a comprehensive manner in future cases, we will never escape from the confused status of our current caselaw." They specifically believe that this and other CAFC decisions are wrongly decided because of the absolute disregard of any experimental use after an invention is reduced to practice.
Feb 20, 2008
Patently-O Bits and Bytes No. 14
- Design Patent Law: The House Subcommittee on IP held hearings on amendments to the design patent laws. The two primary specific issues on the table are (1) whether to eliminate design patents covering replacement automobile parts and (2) whether to extend IP protection to fashion designs. [LINK]. The IP group will hold PTO oversight hearings again next week.
- Replacement Parts: IPO recently voted to oppose any legislative exemption for particular products or technologies from the IP laws: "In particular, IPO opposes legislation that would exempt replacement automobile parts from infringing U.S. design patents."
- LexisNexis Patent Center: lexisnexis is now in the blog world with their "Patent Center."
Missing Dates: The PTO revived Aristocrat's national stage application even though filed a day late. During litigation, however, the district court found the revival an improper extension of the law. [Link] The patentee appealed to the CAFC with the question of "Whether a patent application abandoned for failure to comply with deadlines set forth in 35 U.S.C. §§ 371(d) and 133 may be revived based on mere 'unintentional' delay where those provisions provide for revival only for "unavoidable" delay." Now, IGT responds.
- New Administrative Judge: According to Hal Wegner, the PTO has appointed Professor Lorelei Ritchie de Larena to the position of administrative judge on the TTAB BPAI. Judge Ritchie has been working in tech-transfer for several years while teaching at the same time. As the rate of appeals continues to rise, the PTO will need to continue to hire high quality judges. At the same time, these judges will begin to feel an even stronger pull to jump ship to law firms looking for inside experience and connections. [Related note: can someone send me a list of BPAI Judges? dcrouch@patentlyo.com]
CAFC: As a Matter of Law, Preliminary Injunction Defeated by "Casting Doubt" on Patent's Validity
Erico Int'l v. Vutec & Doc’s Marketing, 2007-1168 (Fed. Cir. 2008)
Claim 17 of Erico’s patent covers a method of supporting communication cables with saddle-hooks so that the sag distance (B) is less than 30 cm. During an earlier reexamination, the PTO cancelled several claims, but the validity of claim 17 was reaffirmed. Doc’s copied Erico’s saddle-hook design (called j-hooks) and follows the patented method in its daily business. Litigation ensued.
During litigation, the district court granted a preliminary injunction against Doc’s — finding that Erico had sufficiently satisfied the traditional four factor test of equitable preliminary relief: (1) patentee’s likely success on the merits; (2) irreparable harm associated with continued infringement; (3) a balance of hardships favoring the patentee; and (4) the public interest favoring preliminary relief.
Preliminary Injunction: For preliminary relief, the first factor is critical. Without showing probable success, a plaintiff has no chance of succeeding on the motion. More to the point, this usually requires proof of infringement of a valid enforceable claim. Here, the lower court considered issues of novelty, obviousness, and inequitable conduct in determining that the asserted claim was likely valid and enforceable.
Substantial Question of Validity: On appeal, the CAFC vacated the PI, finding that the defendant had raised sufficiently “substantial question of invalidity to show that the claims at issue are vulnerable.” According to the divided appellate panel (Judges Rader & Dyk), the threshold substantial question is met when the evidence “cast[s] doubt on the validity” of the asserted claims.
Here, the panel was able to find doubt because of a combination of prior art and their “reasonableness” of combination.
“It is reasonable to see that downwardly flared flanges coupled with the EIA spacing requirements could implicitly motivate a person of ordinary skill to use J-Hooks with the EIA spacing to achieve cable sag of no more than about 30 centimeters. See KSR”
Looking next at secondary considerations of validity, the majority panel found that such considerations cannot overcome the reasonable inference found above.
“Thus, Doc's invalidity challenge based on obviousness cast enough doubt on the validity of Claim 17 to negate likelihood of success on the merits as to infringement of a valid patent. At this point, of course, Doc's has only cast doubt on the validity of the '994 patent.”
Abuse of Discretion: A preliminary injunction is overturned only for clear error or mistake of law. Consequently, the majority’s holding is not simply a difference of opinion — rather it is a finding that the lower court committed an abuse of discretion by weighing the validity issues in the patentee’s favor.
Preliminary injunctions were difficult to obtain even before the Supreme Court’s decision in EBay and KSR. This decision simply moves the ratchet another half turn.
In Dissent, Judge Newman makes three primary arguments: (1) that preliminary injunctions should be easier to obtain because they preserve the status quo; (2) that the first factor of equitable relief should not determine the outcome (all four factors must be considered); and (3) that, even if the first factor is most important, a defendant simply ‘casting doubt’ on a patent’s validity is not sufficient. Rather, the inquiry should focus on which party is more likely to actually succeed on the merits.
Notes:
- Board Decision: Ex parte Raimond Scott Laughlin, Appeal No. 2002-0244 (heard on May 14, 2002).
- Asserted claim of U.S. Patent No 5,740,994: “17. A method of supporting a run of a bundle of low voltage communication cable, comprising the steps of providing spaced supports, each comprised of a curved saddle having smooth down-turned obtuse angle lateral edges, suspending the run from saddle to saddle, and spacing the saddles along the run so that the run sags between saddles no more than about 30 cm below the saddles.”
Feb 18, 2008
Feb 15, 2008
Patently-O Bits and Bytes No. 12
Anti-DataTreasury Provision: Although DataTreasury is not named in the Patent Reform Act of 2007, it is clear that Section 14 of the Senate Bill is primarily directed at that single patent holder. The bill would excuse “financial institutions” from charges that their check imaging methods constitute patent infringement. DataTreasury has sued a number of banks, including City National, Wells Fargo, BOA, US Bank, Wachovia, Suntrust, BB&T, Bancorp South, Compass, Frost National, First Tennessee, HSBC, Harris, National City, Zions First National Bank, Bank of NY, Bank of TOkyo, Comerica, Deutsche Bank, First Citizens, Keycorp, LaSalle, M&T, PNC, and others. The cases are at least partially stayed pending reexamination of a DataTreasury patent. The core issue here is that DataTreasury claims that its patent is necessarily infringed when a bank follows the Federal “Check 21” procedure for electronically processing checks. See patents 5,910,988 and 6,032,137. [Washington Post Fills in Details]. - Takings: The DataTreasury bill raises takings concerns, and it appears that the Government agrees. According to reports, the Congressional Budget Office has calculated that the “taking” of DataTreasury’s right to sue is worth about one billion dollars.
- What happens when patent attorneys blog: I left my firm to teach; Michael Smith left his firm and joined another [now partner at Siebman Reynolds]; so did Peter Zura [Now partner at KattenMuchin]; so did Matt Buchanan [now of counsel at Dunlap Codding]; David Donoghue joined DLA Piper; Bill Heinze joined GE; John Welch joined Lowrie Lando; and the Troll Tracker is still in hiding. (Note — Nipper, Sorocco, Albainy-Jenei, and others are still rock-solid in their firms).
- Valentines Day: Americans spend an average of $100+ for Valentines day — this year you might consider giving it away.
- Delay in the Senate: IPO reports a strong likelihood that no action will take place in the Senate until April 2008. In the meantime, the Reform Act is in secret revision in Senator Leahy’s office.
Feb 14, 2008
IR v. IXYS: Appellate Jurisdiction and Narrowing/Broadening Amendments
International Rectifier (IR) v. IXYS (Fed. Cir. 2008)
IR’s patents cover particular layouts for MOSFET semiconductor chips. After an earlier appeal IXYS was found to infringe under the Doctrine of Equivalents. (Only one of the three patents were held infringed)
Jurisdiction on Appeal: IXYS did not file a notice of appeal within thirty days as required by FRAP 4(a). However, the defendant did file a motion with the district court to stay the permanent injunction pending appeal. Because the motion gave notice of the appeal to both IR and the district court, the CAFC ruled that it satisfied the requirements of Rule 4(a). (The stay was subsequently denied by both the district court and the CAFC motions panel).
Narrowed Amendment: On appeal IXYS argued that a narrowing amendment made by IR during prosecution of the patent forecloses any reliance on the doctrine of equivalents. The claim had been substantially rewritten and was undeniably broader in certain areas. However, the amendments also added an “adjoining” limitation to overcome a Section 112 rejection. Holding: A claim that is both narrowed and broadened is still narrowed — Thus Festo estoppel can apply.
Tangential Narrowing Amendment: A narrowing amendment does not limit DOE coverage if the amendment was made for a reason that is only tangentially related to the claimed equivalent. Here, the amendment was not tangential because the “adjoining” region limitation was clearly related to the asserted charges against products with only non-adjoining regions. The court rejected (as irrelevant) IR’s argument that the amendment was not necessary for patentability: IR’s decision to claim that structure using the limiting term "adjoining, whether or not required to overcome the rejection, cannot be described as only tangentially related to the equivalency of a structure with non-adjoining regions. [This paragraph updated 2/15/08]
Finding of infringement reversed and remanded.
Issues With Employee Assignment Agreements
DDB Tech v. MLB Advanced Media (Fed. Cir. 2008)
Mr. Barstow (head of DDB) was still an employee of Schlumberger when he invented his system for simulating a baseball game. As part of his employment agreement, Barstow assigned all rights to inventions relating to or resulting from Schlumberger business. At the time, Schlumberger’s GC for software agreed that Barstow’s baseball software was his own personal work and not Schlumberger related. After DDB filed suit, MLB bought “any interest that Schlumberger had in the patents” along with a retroactive license.
The district court (Judge Yeakel) dismissed the case for lack of subject matter jurisdiction — finding that the baseball software invention fell within the employment agreement and that MLB is now the patent owner. DDB appeals.
Employee Assignment: Under the Texas law, the employment agreement creates an instant assignment as soon as a qualifying invention is created. Thus, if the patents “qualify” as within the employment agreement, then they were owned by employer regardless of any seeming waiver, estoppel, or statute of limitations. Those defenses could prevent enforcement of an agreement to assign, but do not negate an already consummated assignment.
The CAFC ordered the lower court to reopen discovery so that the parties could collect evidence on whether the baseball software invention fell within the scope of the employment agreement.
Notes:
- Employees beware: Your employer likely owns your future inventions! Best practice for garage inventors is to obtain a written exception to the policy prior to inventing. Otherwise, you should obtain an assignment from the company. Of course, this depends upon state law and whether the agreement includes the magic language: “[The employee] does hereby grant and assign.” If Barstow had been employed at the University of Missouri, he might have won because the employment agreement only requires the employee “upon request [to] assign … all domestic and foreign rights.” For prolific home inventors, this difference may be enough to warrant a job change.
- Loyalty?: Not to pick on Schlumberger, but isn’t it odd that they chose to do business with MLB over their own former employee…
- Patently-O Discussion of district court case.
- This case was handled by my former firm, MBHB LLP. However, I was in Boston by the time that they took over the litigation.
- Recordation of Assignment: A reader suggested that the patent recordation statute (35 U.S.C. 261) be considered. If you remember 1L property, the patent recordation statute is a notice statute with a three-month grace period. Thus, a subsequent assignee of a patent will hold title over a prior assignee if two conditions are met: (1) the prior assignee did not record in time (which would give constructive notice); and (2) the subsequent assignee was “without notice” of the prior assignment. The timing is no question here — Schlumberger did not record until after DDB had already sued. The only issue then is whether DDB had notice of the prior assignment.
- Notice of Prior Assignment: Under Federal Circuit law, a subsequent assignee can have notice of a prior assignment based on actual notice, constructive notice, or even inquiry notice under the principles of equity. Unfortunately, the leading CAFC case on this issue is non-precedential, Katz v. Lear Siegler, 1993 US App Lexis 17507 (Fed. Cir. 1993), and at least two law firms have been publicly chastised for citing the case to the CAFC.
Feb 13, 2008
Patently-O Bits and Bytes No. 11
- Pharma/Biotech Patent Claim Drafting and Prosecution: West Coast patent attorneys Joyce Morrison and Robin Silva are chairing the ACI pharma/biotech patent drafting and prosecution conference Feb 25–26 in New York City. Donald Zuhn of PatentDocs will be signing autographs and PTO officials (including TC 1600 Director Kisliuk) will explain the new PTO examination mindframe. Patently-O readers use Keycode SP1 to save $200 on the registration fee: www.americanconference.com/claimdrafting.
- Duke IP & Cyberlaw folks are hosting their annual “Hot Topics” workshop on Feb 29 in Durham. I had a wonderful time at last year’s event, but won’t be able to make it this year. The program includes a big discussion of Tafas v. Dudas. [LINK]
- E.D.Texas Jury: $431 Million to Doctor Bruce Saffran from Boston Scientific. [Link][Patent]
Best name for a patent enforcement company: the “National Institute for Strategic Technology Acquisition and Commercialization” has just sued Ford. NISTAC is a non-profit run by K-State. Interestingly, according to Stu Soffer the patents were originally owned by Ford and then donated to the predecessor of NISTAC in 1997. (Ford claimed a charitable deduction of $27 million). The patents were listed as for sale in the April 2006 Ocean Tomo auction, but were were withdrawn prior to live bidding. - Congratulations to Jennifer Kurcz; David Ciesielski; and Paula Fritsch who recently became partners at MBHB LLP. We started as first-year associates on the same day way back when.
- Patent Law Jobs posted in the last two weeks:
Feb 12, 2008
Court Refuses to Pierce Plutus/Orion/Taurus/Spangenberg Corporate Veil Without Better Evidence
Taurus IP v. Ford, Mazda, and Volvo (W.D.Wisc. 2008)
Erich Spangenberg owns Plutus IP. Plutus, in turn, owns a host of patent assertion companies, including Orion [Texas] IP, Constellation IP, Caelum IP, and the plaintiff, Taurus IP. (Polaris IP is in the mix as well.) A September 2007 article tells the story of the asserted patents, [Link][PTT], and how they were acquired from Firepond in 2004 for $1,000 by Spangenberg (a former director of Firepond).
Prior Settlement: After separate patent litigation in 2006, Orion IP settled with the defendants. (Taurus was not a party at that point). The settlement included a mandatory alternate dispute resolution process. Although Taurus is owned by the same company as Orion, Taurus is a separate corporate entity. Consequently, without some proof of “alter ego,” Taurus will not be bound by a settlement agreement signed by Orion.
At this stage, defendants have failed to show that plaintiff and Orion are “alter egos” of Spangenberg [under Wisconsin law]. All that plaintiff has established is that Spangenberg was a sole managing member of both and was involved in the transfer of the patent from one entity to another in a suspicious time period. This is a far cry from the requirement that the entity have “no separate mind, will or existence” and be used to commit fraud against defendants.
Interestingly, the same Wisconsin court has already pierced the veil on Orion IP and Taurus IP — finding them merely alter egos. See Taurus IP v. DaimlerChrysler, 519 F. Supp. 2d 905 (W.D. Wis. 2007). The court refused to carry-over that holding made in a different case and “different context.” In particular, the court implied that the veil was pierced in that case because of the manner that Spangenberg and the his multiple parties dealt with the DaimlerChrysler defendants.
More Definite Statement: The court did require that Taurus provide a “more definite statement” that identifies the particular claims and products that it believes are infringing or to provide “a criteria by which defendants can identify the infringing products.” The Taurus IP patent appears to be directed at a way of selecting the features of an automobile through an interactive online system. (U.S. Patent No. 6,141,658).
Notes:
Feb 11, 2008
PharmaStem Appeals Stem Cell Patent: Asks for Greater Deference to Patent Examiners
PharmaStem Therapeutics Inc. v. ViaCell Inc. (on petition for certiorari, January 2008)
In 2007, the CAFC found two of PharmaStem’s stem cell cryopreservation patents to be invalid as obvious. [Patently-O][Decision] Now, PharmaStem has petitioned the Supreme Court for a writ of Certiorari and and opportunity to challenge the legal basis of the ruling.
The CAFC found the patents invalid based on prior art that had already been examined by the PTO. In addition to the standard examination, the patents had also been reexamined twice and the PTO confirmed the validity of the claims.
Now, PharmaStem asks for some greater level of deference to “PTO determinations that patent claims are valid over particular prior art.” Is there ever any issue preclusion?; and Does the presumption of validity strengthen after successful reexamination?
Notes:
- PharmaStem failed to discuss the CAFC’s finding that the Examiner’s reasons for allowance contained an important factual misstatement.
The Brief makes issue of the fact that Judge Newman (who dissented from the appellate decision) has a PhD and worked as a research scientist while Judges Bryson and Prost are not scientists. “If this breakthrough in using cord blood was not ‘inventive,’ it is difficult to imagine many biotechnological or pharmaceutical achievements that would be patentable. Most discoveries made by biotechnology and pharmaceutical companies are rooted in diligent application of the scientific method. As a former scientist, Judge Newman appreciated this in a way that her colleagues could not.” Perhaps Judge Newman’s dissents should be given greater deference as well. - Photo: Judges Bryson, Newman, and Prost intermingled with Nayar and Bunch in 2004.
- Reexamination Request
Egyptian Goddess v. Swisa (en banc 2008)
Egyptian Goddess v. Swisa (en banc 2008)
More than a handful of studies and articles have discussed how the rise in patent law power parallels the founding and evolution of the Court of Appeals for the Federal Circuit (CAFC). Those articles gloss over the CAFC’s negative impact on design patent law. Today, design patent law is in the weakest and most confused state since before the Supreme Court’s landmark 1871 decision of Gorham v. White. (Although, the law is admittedly more uniform now than it was pre-CAFC).
Through its en banc rehearing of Egyptian Goddess, the CAFC now has the opportunity to change course and breathe new life into this languishing area of intellectual property.
In Gorham, the Supreme Court created the test governing design patent infringement. The so-called ordinary observer test considers whether an ordinary purchaser of the claimed product, “giving such attention as a purchaser usually gives” would consider that “two designs are substantially the same.” Later, cases recognized a problem with this simple formulation — finding that the ordinary observer test could potentially capture prior-art designs as infringing. In response, the CAFC added an additional “points of novelty” test that requires a showing that accused devices appropriate the specific novel features of a patented design.
To many, this points-of-novelty requirement and the apparent rule requiring transform the design-patent picture claims into paragraph form as unduly limiting the potential scope of a design patent. The requirements are also seen by some as unnecessary because of the parallel validity requirements of novelty and nonobviousness. Two additional points-of-novelty test issues that raise ire are whether the design as a whole can be a point of novelty and whether the points of novelty can include “trivial” points.
The en banc appeal will focus on three separate questions:
- Should "point of novelty" be a test for infringement of a design patent?
- If so, (a) should the court adopt the non-trivial advance test adopted by the panel majority in this case; (b) should the point of novelty test be part of the patentee's burden on infringement or should it be an available defense; (c) should a design patentee, in defining a point of novelty, be permitted to divide closely related or, ornamentally integrated features of the patented design to match features contained in an accused design; (d) should it be permissible to find more than one "point of novelty" in a patented design; and (e) should the overall appearance of a design be permitted to be a point of novelty? See Lawman Armor Corp. v. Winner Int'l (Fed. Cir. 2006).
- Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis? See Elmer v. ICC (Fed. Cir. 1995).
Now, the plaintiff, Egyptian Goddess along with its amici have filed opening briefs in the case. (Attached below). Swisa’s opposition will arrive in a few weeks.
- File Attachment: EG.EGBrief.pdf (750 KB)
- File Attachment: EG.AIPLA.pdf (226 KB)
- File Attachment: EG.FICPI.pdf (347 KB)
- File Attachment: EG.IPO.pdf (962 KB)
- File Attachment: EG.ISDA.pdf (607 KB)
- File Attachment: EG.FCBA.pdf (468 KB)
- File Attachment: EG.Apple.pdf (425 KB)
- File Attachment: EG.Daisy.pdf (4103 KB)
- File Attachment: EG.HIPLA.doc (181 KB)
- File Attachment: EG.IPLAC.pdf (79 KB)
- File Attachment: EG.Nike.pdf (339 KB)
- File Attachment: EG.ProfFryer.rtf (125 KB)
Points of Novelty: Several of the briefs dismiss the points-of-novelty test as unnecessary in light of the validity requirements of novelty and nonobviousness. That suggestion is ultimately unworkable because of a disconnect between a strict ordinary observer test of infringement and the obviousness test of invalidity. This disconnect would potentially allow a finding that a prior art design infringes a valid design patent. (Obviousness is in the eye of PHOSITA at the time of the invention while ordinary observer infringement is in the eye of an ordinary purchaser at the time of purchase). The points-of-novelty approach is, however, seriously flawed — it is an odd process akin to separating a painting into various individual components and then making a list of those components that have never been used before. In most cases, the final list has little relation to the patented design. (This process is further facilitated by an overzealous Markman process).
The better approach is suggested in the AIPLA and Apple briefs. The ordinary observer test should necessarily include some consideration of the prior art, but that consideration should be at the level of the ordinary observer in a three-way visual comparison test. Thus, in the Braun case (below), the accused design would be found to infringe if the ordinary observer finds it substantially the same as the patented design and more similar to the patented design than to the prior art.
Academics are Out: It is notable that for this important case, only one academic (Professor Fryer of Baltimore) filed an amicus brief. Perry Saidman’s brief for Apple was the only brief citing a law review article, and it cited one by Perry Saidman. Saidman also cited a Patently-O comment made by Chris Carini (author of the AIPLA brief).
Feb 09, 2008
Tafas v. Dudas: Summary Judgment Hearing February 8, 2008
Patent attorney Jill Browning attended today’s Tafas v. Dudas hearing on behalf of Patently-O and provides the following report.
Judge Cacheris entertained arguments relating to the three pending summary judgment motions in the consolidated cases of Tafas and GSK vs. Dudas, taking the matters under advisement and indicating that the Court would present a final decision as soon as his docket permitted. A brief summary of the almost 2 hours of argument follows.
Substantive vs. Procedural: The Court actively directed the parties with questions throughout the argument, beginning with questions directed to why the proposed rule changes were “substantive” and following up with a question regarding the proposed remedy if the Court were to determine that the proposed rules were substantive.
GSK responded by indicating that the proposed rules were substantive because they (i) affect individual applicants’ rights and/or obligations (i.e., limit the number of continuations and claims); (ii) reflect a change in existing law and/or policy and (iii) interpret the patent statute.
In response, the USPTO argued that the debate between identifying the rules as either “substantive” or “procedural” was the plaintiffs’ attempt to distract the Court from the real issue, which, according to the USPTO, is whether Congress delegated the proper authority to the USPTO to enact the proposed rules.
The PTO’s authority arises from 35 U.S.C. § 2(b)(2). The arguments primarily focusing on subsections (A) and (B), which state, in relevant part, that the USPTO:
- (2) may establish regulations, not inconsistent with law, which-
- (A) shall govern the conduct of proceedings in the Office;
- (B) shall be made in accordance with section 553 of title 5;
Plaintiffs read the above statute as requiring the USPTO to comply with both (A) and (B), which would mean that the USPTO may only enact rules that (i) are not inconsistent with law; (ii) govern the procedures to handle the applications at the USPTO; and (iii) that are enacted only after the USPTO engages in the notice and comment rulemaking procedures of the Administrative Procedures Act (“APA”). Thus, plaintiffs indicated that the USPTO would not properly be permitted to enact even procedural rules without engaging in the notice/comment procedures of the APA.
The USPTO advanced the position that a fair reading of 35 U.S.C. § 2 clearly supports its position that Congress delegated the authority to the USPTO to enact the proposed rules.
Further, the USPTO argued that the proposed rules are not “substantive” because they are not directed to the substantive eligibility requirements (such as novelty or written description) for an applicant to obtain a patent. According to the PTO, the proposed rules merely affect the “timing,” as they encourage applicants to claim their invention early.
To support this position, the USPTO analogized to powers granted to other agencies to impose timing restrictions, pointing out that agencies’ ability to completely cut-off third parties benefits applications have been upheld. In response, Plaintiffs pointed out that the USPTO, as an agency, is different from other agencies because the USPTO was not awarding “benefits” as other agencies such as, for example, the FCC when it grants the right to certain bandwidths. Here, the patents applicants have the “benefit” and are electing to confer that benefit to the public in return for the limited right to exclude others for the term of the patent.
Remedy – Void Rules: With respect to the proposed remedy, GSK and Tafas argued that, should the Court find that the rules proposed are “substantive” in nature, as opposed to only affecting the procedural aspects of examining patent applications, then the rules should be struck as void and not remanded to the patent office. The USPTO indicated that, should the rules be found to be “substantive,” then they should be accorded less deference.
Plaintiffs argued that the proposed rules retroactively impact applications already on file, abrogating the quid pro quo the applicants believed it had when it filed the application (i.e., disclosing its trade secrets to the public in return for the limited monopoly). When an applicant filed its application, it was permitted to file an unlimited number of continuations, RCE’s and claims (subject to extreme cases wherein the Federal Circuit has permitted the USPTO to refuse further applications).
Property Interest in Patent Application: The USPTO argued that the “quid pro quo” is a fallacy because an application is not a property right (only patents are property rights) and, moreover, there are no property rights in “procedures.” Further, the USPTO argued that the applicant is the party who elects to disclose the trade secret – the USPTO is willing to maintain the confidentiality of all applications filed. Further, the USPTO appeared to concede that substantive rules cannot be applied retroactively, but compared the proposed rules to newly enacted Federal Rules of Civil Procedure, indicating that newly enacted Federal Rules were routinely applied to pending cases, as these proposed rules should be applied to pending applications. The USPTO indicated that, should the Court find the rules have an improper retroactive impact, the Court should simply change the effective date of the Rules.
Mr. Walsh of the USPTO presented arguments relating to Sections 120 and 132. Echoing the concerns already articulated by his co-counsel, Mr. Walsh further indicated that the USPTO had experienced a significant increase in applications, particularly continuation applications. The proposed rules were a reasonable restriction on the growing numbers of applications and provide ample opportunity (at least 8) for the applicant to present its position to the Examiner, after which, they should appeal to the Board. Further, if the applicant believes that it requires additional applications, the applicant can petition for permission to file an additional application, he must only indicate why they need additional bites at the apple.
He further indicated that delay in presenting claims has never been favored and that Section 120 does not compel the USPTO to accept an unlimited number of continuation applications. With respect to Section 132, the USPTO’s proposed new rule 114 limits application families to a single RCE. The USPTO argued this limit is justified (and more stringent requirements could be imposed) because the wording of § 132 is that the applicant can “request” the continued application, indicating discretion on the USPTO’s part regarding whether or not to grant the request. The USPTO further argued that, should the petition to file additional RCE’s be denied, the applicant has the remedy of judicial review.
In response, plaintiffs pointed out that an increase in patent application filings or other administrative burdens cannot grant the USPTO the authority to enact rules.
Notes:
- Arguing Attorneys included John Desmerais of K&E for GSK; Lauren Wetzler and Steve Walsh for the Administration; Jim Nealon of Kelley Drye for Tafas.
- Insider prediction (not DDC): Court may rule that rules are substantive and that PTO lacks substantive rulemaking authority. This allows the court to give a clean ruling without worrying potentially more difficult secondary issues.
Feb 08, 2008
Tafas v. Dudas: Under Advisement
Patent attorney Jill Browning attended today’s Tafas v. Dudas hearing on behalf of Patently-O. Her report will be out later today. Bottom line: Judge Cacheris heard the arguments and has taken them under advisement. He did not make any substantive ruling from the bench.
Feb 07, 2008
Feb 06, 2008
Patently-O Bits and Bytes No. 10
- Financial Services Event: The Securities Industry and Finance Markets Association (SIFMA) is hosting a half-day patent law symposium for the financial industry on March 11 in New York City. Speakers includes Chief IP counsel for several major financial institutions and Ocean Tomo. See www.sifma.org/patentlaw2008. The cost is regularly $595, but we’ve secured a $200 discount for Patently-O readers who use this registration document.
- Standard Setting Event (STARTING NOW): The FTC’s recent decision in N-Data raises a number of dramatically important issues for how patent holders should operate during a standard setting process. The MoFo law firm is hosting a lunchtime event on Feb 6 (Noon PST) to discuss the FTC’s change in course. Via WEB or live (4290 El Camino, Palo Alto). Free.
- IDS Rules Status: We expected to see the new IDS in January and receive an implementation schedule. We have no word on when or whether those will be forthcoming.
Patent Blogs: Brett Trout is an Iowa patent attorney with a fun blog: blawgit.com. In a recent post, he provided a nice up-to-date list of patent blogs. LINK. Brett is becoming well known for his book titled “Cyber Law.” The book is great (Brett sent me a free copy), but the fame comes from another attorney’s attempt to enforce a trademark to the “CyberLaw” phrase. (See also Stephen)
Claimed "Insert" Limitation Creates Product by Process
Miken Composites v. Wilson Sporting Goods (Fed. Cir. 2008)
This case involve the same patent that prompted Judge Rader’s intriguing 2006 koan:
“while a claim is not to be construed in light of the accused device,
in an infringement case,
it must inevitably be construed in context of the accused device.”
See Wilson v. Hillerich.
The Wilson patent is directed to a type of softball bat that includes a internal structural inserts that allow for a lighter and stronger bat. On summary judgment, Miken won a declaratory judgment non-infringment. In particular, the lower court found that Miken’s bats did not contain the required “insert.” Rather the internal structural members of thte Miken composite bats were created using a successive layering process.
Product by Process: Normally, a device claim can be infringed regardless of the construction methods used. Miken argued that in this case, the patentee’s inclusion of the “insert” claim language transformed that portion of the claim into a product-by-process.
On appeal, the CAFC agreed with Miken that the insert limitation required an element that was “put or fit into something else.” Consequently, Miken’s products cannot infringe because the accused structural members were never “inserted or intended for insertion.”
Vitiation and DOE: Even without an insert, Miken’s products are arguable equivalents of the Wilson invention. However, the issue of ‘equivalent as a whole’ is irrelevant to whether a product infringes under the doctrine of equivalents. Rather, the all elements rule requires that each element of a patent claim be infringed either literally or by an equivalent element found in the product. Here, that means that to infringe under the DOE, Miken’s bat must have an element that is the structural and functional equivalent of an insert. Because Wilson did not provide evidence of such an element, the CAFC affirmed the lower court’s holding of non-infringement under the DOE.
Monsanto's Roundup Ready GMO Patents Convincingly Upheld on Appeal (Again)
Monsanto v. David (Fed. Cir. 2008)
Once again, the CAFC has upheld Monsanto’s Roundup Ready Soybean patents and the company’s strategy of enforcing those patents against farmers. The facts here are similar to the McFarling case. David – is a big-time soybean farmer – was found to have saved a portion of his soybean seeds and planted them the following year. David also signed Monsanto’s technology agreement, in which farmers agree not to save and re-plant.
Here, the CAFC refused to reexamine the question of whether plant genes are patentable under Section 101 and J.E.M Ag Supply. Rather, the court is precedentially bound by the McFarling and other cases to find the subject matter appropriately patentable. David’s “inconsistent testimony” allowed the court to also agree that no clear error had been made in the lower court’s factual findings in favor of Monsanto.
The court also agreed that this is an exceptional case: “It is a case of a farmer with apparent disregard for patent rights, license agreements, and the judicial process. With that in mind, as well as the record evidence of David’s inconsistent testimony, we agree with the district court that this is an "exceptional" case.” Thus affirming the award of costs and fees.
Notes:
U.S. Patent No. 5,352,605 titled “Chimeric genes for transforming plant cells using viral promoters”. (See IPVision’s Map)- Earlier this month, the Supreme Court refused to hear McFarling’s appeal on the first sale doctrine. However, there is some chance that the upcoming Quanta case will impact GMO licensing.
- Monsanto v. McFarling: CAFC Affirms "Reasonable Royalty" of 140% of Purchase Price
- McFarling Petitions Supreme Court to Hear RoundUp Ready Patent Case
- Monsanto v. Scruggs: Roundup Ready Patents Survive Appeal
- Monsanto wins in Canadian Supreme Court
- At this point, I should have included a witty turn of phrase about David versus Goliath.
Soybeans reproduce asexually and thus, the saved seeds were genetic copies of the originals — and thus covered by Monsanto’s gene patent.(Thanks G)
Feb 05, 2008
Don't forget to vote
There is a continuum of technology law interest amongst the leading five candidates. I’ve listed them from most-interested to least interested (in my subjective view):
- Romney (R)
- Obama (D)
- Clinton (D)
- Huckabee (R)
- McCain (R)
The issue for IP focused voters is whether interest is better than neglect.
Feb 04, 2008
PubPat: Proposed Post-Grant Review Cuts-Out Public Interest
There is a possibility that a passed Patent Reform statute would eliminate third-party-requested reexaminations (ex parte and inter partes) and yet fail to create any substantive third-party initiated post-grant procedure to replace the current options.
In addition, the proposed post-grant review procedure would block a non-threatened party from challenging the validity of a patent more than a year after its issuance. In a letter sent today to the Senate reformers, Dan Ravicher of PubPat asks that third-party reexamination be preserved. The non-profit groups such as PubPat and EFF have filed dozens of reexamination requests asking the PTO to invalidate “wrongfully issued” patents.
The Current Proposal Found in S.1145: The proposed system of post-grant review would have two windows for third-party filings:
- First Window: Post-Grant oppositions filed by anyone within one year of issuance. Patents reviewed in the first window would not be given any presumption of validity.
- Second Window: Opposition must be filed by party who has a likelihood of feeling “significant economic harm” based on the patent. A presumption of validity would apply in reviews within the second window.
The PTO would be required to complete its review work within 18 months. Post grant reviews would be conducted by a three-member panel of administrative judges rather than by examiners. Parties to the review may settle the case.
- PubPat Recent Successes:
- Forgent Networks '672 "JPEG" patent: Broadest claims finally rejected;
Patentee abandoned assertion of patent. - Columbia '275 Axel Cotransformation Patent: All claims finally
rejected; Patentee abandoned assertion of patent. - Microsoft '517 FAT Patent: Patentee modifies claims, which are allowed.
- Pfizer '156 Lipitor Patent: Patentee modifies claims, which are allowed.
- WARF Stem Cell patents and Gilead Tenofovir (AIDS drug) patents have had all claims non-finally rejected, but are still pending.
- Forgent Networks '672 "JPEG" patent: Broadest claims finally rejected;
CAFC Continues to Expand Doctrine of Full Scope Enablement
Sitrick v. Dreamworks (Fed. Cir. 2008)
Sitrick’s patented invention involves a method for a integrating user-generated audio and visual effects into a video game or movie. The solo-inventor sued Dreamworks and other defendants who use the “ReVoice Studio” software to allow users to add their own voice to the imagery. The issue on appeal is whether the asserted claims are enabled under 35 U.S.C. 112 ¶ 1.
Full Scope Enablement: Although loosely tied to the patent statute — the enablement requirement continues to grow and develop through Federal Circuit panel opinions. Generally, the “requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation."
When analyzing enablement, the court looks to ensure that the “full scope of the invention” is enabled — and thus looking beyond whether the particular accused design is enabled. The “full scope” doctrine has recently been applied by the Federal Circuit to invalidate several patents. (See below)
Broad Claim Narrow Disclosure: It is easy to criticize patentees who attempt to enforce broad claims supported only by a narrow disclosure. This is especially true in cases such as Liebel’s where the claim scope had been expanded well after filing the original application. (i.e., “late claiming”).
However, the “full scope” doctrine has serious deficiencies. The most notable are the potentially chaotic results from applying the doctrine to claims that include the comprising transition language. The problem arises because the comprising transition allows a claim to implicitly encompass a wide variety of add on limitations that might be found in an infringing device. See, for example Automotive Technologies Int’l v. BMW (Fed. Cir. 2007) (claim scope that implicitly covered both mechanical and electrical sensor was not enabled by description of mechanical sensor); Liebel-Flarsheim v. Medrad (Fed. Cir. 2007) (claim scope that implicitly covered both jacketed and jacket-free needle holders was not enabled by description of jacketed needle holders).
Here, the asserted claims were construed as covering both movies and video games. Thus, the patent must enable both types of applications. Here, the CAFC confirmed that Sitrick had failed to enable its use in movies — and thus that the claims are not fully enabled.
- Buyer Beware: As with other recent enablement cases, this one may be best seen through the lens of the claim construction process. In each case, the patentee requested (or at least did not challenge) broad claim construction. Consequently, the court was not sympathetic to enablement arguments that could have been avoided by a narrower construction of the claims. This line of thinking was spelled out by Judge Laurie in the Liebel case: “The irony of this situation is that Liebel successfully pressed to have its claims include a jacketless system, but, having won that battle, it then had to show that such a claim was fully enabled, a challenge it could not meet. The motto, “beware of what one asks for,” might be applicable here.” This buyer beware theory is also useful to break the potential analytical morass of full scope enablement of claims drafted with comprising transitions.
- Don’t Begin with the Specification: One aspect of enablement that is continually bothersome. In the opinion, the court noted that “enablement analysis begins with the disclosure in the specification.” That approach unduly confuses enablement with written description. Rather, I would contend that enablement should begin with the knowledge of one skilled in the art and move forward from there.
- Johnson v. M’Intosh: In my property law class, we recently discussed Johnson v. M’Intosh and the doctrine of of sovereign authorized discovery of land. In those empire building years, we also saw over-zealous claiming.
- David Sitrick: The inventor, David Sitrick, is a Skokie based patent attorney registered with the firm of Sitrick & Sitrick. (Reg. No. 29349). Mr. Sitrick prosecuted the patent himself. His son, Greg Sitrick, is an associate at the Bell Boyd firm in Chicago. (Reg. No. 57195).
Feb 03, 2008
Northern District of California's New Patent Rules
by Edward Reines
The Northern District Of California posted on Friday substantially revised patent rules that apply to all cases filed on or after March 1, 2008. ND Cal pioneered the first set of patent rules in 2001, as the vision of Judge Ronald M. Whyte, a leading jurist in the patent field. Since then, seven other Districts have followed and promulgated patent rules that are modeled to a greater or lesser extent on those original rules.
ND Cal's new 2008 patent rules feature two significant changes and a number of other updates. First, the new rules require the parties to identify together the claim construction disputes that are most significant to the outcome of the case, including an identification of which may be case dispositive. By default, under the new rules, the number of most significant terms ("MST") to be identified by the parties is ten, but that number can be scaled by the court to suit the needs of each particular case. The purpose of this new rule is to address the concern that parties identify too many terms, including many insignificant terms, for construction. By identifying MSTs, resources can be focused on the most important issues without a court outrightedly capping the number of terms to be construed.
Second, the new rules eliminate the concept of “preliminary” contentions in favor of a single round of contentions which can be modified only for good cause. Many had critiqued the old rules as allowing changes “as of right” in circumstances where such changes are not in fact warranted, while also creating undue barriers to their amendment when the circumstances did warrant modification. For guidance, the new rules set forth recurring circumstances where the good faith standard might be satisfied.
The efficacy of the new rules will, in the end, be judged by the test of time. In any event, the ND Cal judges deserve credit for staying at the forefront of case management innovation in the complex world of patent litigation. The District has published on its website a committee report that provides helpful background on how the new rules were developed and explains the intent behind the changes that have been adopted.
-
Ed Reines is a partner at the Weil Gotshal firm. He chaired the Northern District’s Local Rules Advisory Committee.
-
Read the Rules:
Feb 01, 2008
Time to Toss the General Dictionary?
Via Lexis search.
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