Prison: The last stand for land line phones.

TIP Systems v. Phillips & Brooks (PBG) (Fed. Cir. 2008)

"This is a patent infringement case pertaining to wall-mounted telephones designed for use by prison inmates."  Both the accused device and the patents focus on a telephone system that operates without the dangers of a phone cord. However, the TIP patents require a "handset" mounted in the wall of the phone box with a mouthpiece that "extends through" the wall.  These claims are exemplified in the figures.

The accused devices do not use a traditional handset, but rather use a separate ear-piece and mouthpiece. In addition, the accused device wall is flush – and the mouthpiece does not break through the wall.

Questionable claims of infringement are naturally resolved by a Markman hearing and subsequent summary judgment of noninfringement. Here, the district court found (i) that the claimed handset must include a handle with both an ear-piece and mouthpiece and (ii) that the mouthpiece must pass through an aperture in the front wall of the phone box.  It was clear that the accused device did not exhibit either of these features and thus could not infringe.

The definition of the handset was made easy because the claims stated that: "a telephone handset being a handle with an ear-piece at one end and a mouthpiece at an opposite end." The exact definition is support from the figures is also provided in the specification.

The CAFC affirmed on claim construction then went on to consider whether the elements may still be covered under the doctrine of equivalents (DOE). 

If an element is not literally covered by a claim, the device may still be considered infringing if the accused element is equivalent to the claimed element. Thus, to infringe a patent, each claim element or its equivalent must be found in an accused device.

Whether equivalency exists may be determined based on the "insubstantial differences" test or based on the "triple identity" test, namely, whether the element of the accused device "performs substantially the same function in substantially the same way to obtain the same result." 

The game in the doctrine of equivalents is defining an 'element.'  The patentee wants a broad definition (the telephones as a whole are very similar) while the defendant argues for a narrow definition. Here, the defendants won when the courts found that a "handle" is an element of the claim.  Since the accused devices have no structure that is similar to a handle, they cannot infringe even as an equivalent.

  

Comments

[Malcolm Mooney]

"The definition of the handset was made easy because the claims stated that: “a telephone handset being a handle with an ear-piece at one end and a mouthpiece at an opposite end.” The exact definition is support from the figures is also provided in the specification."

Is anyone else disturbed that this case was even given a hearing by the CAFC? Taken as a whole, the facts suggest that if you own a patent you can sue anybody for anything and expect to get a hearing before the CAFC before you are shut down.

On what planet would any attorney expect to have a chance of succeeding on the merits with this claim and this accused product? If the answer is earth then, yes, the US patent system is corrupt and broken beyond repair.

[Alan McDonald]

This case is Example 1 of why we should go to loser pays.

Imagine if this patent owner's litigation attorney had to say, "well, you can sue, but the odds of winning are much less than 50-50 and if you lose you will owe the other side $2.5 million in attorney's fees plus what you paid me."

[Anon E. Moose]

"Questionable claims of infringement are naturally resolved by a Markman hearing and subsequent summary judgment of noninfringement."

DC, you forgot to close the /sarcasm tag.

[e6k]

"The crime you see now, it's hard to even take its measure."

[the mad prosecutor]

I agree with the comment regarding loser pays. Perhaps more cases need to be held exceptional.

[GP]

Patent Law will be dead soon.

When oil reaches 250, GDP is cut in half, and 1/2 the world is starving because our "agricultural" system of turning oil into food through the use of land is not working, they'll Hank Rearden all the patents.

I'm just sayin.

[CaveMan]

Mooney, what planet are you on? The presumption of validity suggests that if I have a valid patent and I identify what I have reason to believe is an accused infringer then I can file an action.

Once again, in Mooney's little world, every patent cause of action that isn't "interesting" or world changing must, by Mooney's definition be self evidently bogus.

Just because you personally can't get hours of intellectual stimulation dissecting it doesn't make it meritless. Like I've said before, sometimes patent law is boring. Maybe you need to get a clue and a different hobby - like theater.

As for GP, it is precisely BECAUSE of the above noted dire predictions that developers of new fuels and technologies for power generation will beat a pathway to the USPTO.

You need a clue too.

Maybe GP and Mooney should take off your night vision goggles, turn off "Goodbye Horses," climb out of your moth infested basements and get some fresh air.

[CaveMan Killer]

Err CaveMan, the presumption of validity isn't the same as a presumption of infringement!!

An essential feature of the claim was clearly missing from the alleged infringement - therefore the case WAS "meritless"

[MaxDrei]

Question: This meritless case: is it a freak, a one-off, an atypical example of otherwise hundreds or thousands of meritorious bona fide serious claims of patent infringement. Or is it just the tip of a rather large wrecking iceberg of vexatious claims of patent infringement that, although under the surface of Dennis'blog, is nevertheless steadily raising the cost of doing business in the USA?

2nd Question: is the "reject, reject, reject" posture at the USPTO a direct consequence of the presuption of validity. With PTO as gatekeeper, and the dangerous consequences of letting the bull out of the field, they err on the side of caution, and let nothing at all through the gate. In Europe, with no presumption of validity, and courts having no compunction about revoking on a preponderance of evidence, Examiners do allow through to issue most every app that is filed at the EPO.

[T]

When I consider all time I spend arguing that fairly technical things are not "obvious" in light of a fist full of documents that happen to have similar words in them, but that are otherwise unrelated, I'm stunned that a patent for a microphone and speaker flush mounted in a wall mounted box gets allowed in the first place.

Didn't Andy Griffith use to turn a crank on the side of such a box and yell into it for Clara or Sara or someone to connect him to Aunt Bea? So...the non obvious invention over that was to mount the hear piece in the same box the way the microphone was? Yikes.

[Daniel]

What's everyone talking about "meritless" for? I think the DOE question here was really good. From the article, I get the impression that the word "handle" wasn't in the claim language. Am I right? (There was no patent no. given and the link seems to go to the wrong case, so I couldn't check!) If so, we're applying "all elements" rule to limitations not explicitly in the claim language. Is that so trivial? Is it even legally right? Does a definition in the spec turn one element into three for DOE purposes?

[EG]

Max,

Responding to your 2nd Question, this has nothing to do with the presumption of validity under 35 USC 282. Instead, it has everything to do with the political "posturing" by the PTO hierarchy that fewer allowances = examination quality to address another political "hot potato", namely the backlog of pending patent applications. I've seen on the blogs lots of rumors about the Examining groups being under orders not to allow more than 10% of the filed applications, and from what I've seen empirically, that may reflect how certain Examining groups currently operate.

[MaxDrei]

I read you EG but am not convinced. If we graft a presumption of validity into European patent law, the instant effect would be catastrophic for workflow in the EPO. Sophisticated EPO Applicants today know that it is self-defeating to harangue the examining divisions, because the post-issue tribunals, helped by the petitioner for revocation (patent owner's wily competitor), and the file wrapper, will unhesitatingly revoke anything that doesn't smell right or "pass muster". The examiners know it and operate on a sort of "On his own head be it" laissez faire philosophy when issuing Notices of Allowance. But should it ever come to a presumption that the allowed claims are valid, and "clear and convincing" is the invalidity standard, then Applicants and their attorney reps will go at the EPO with unrelenting aggression till the exr eventually submits, filing divisions, generation after generation, because that's the way to gain a business advantage. And the EPO will fight back, with all means at its disposal. That would, of course, pump up the EPO backlog too. That's how I come to the idea that the presumption is responsible for 1) the backlog and 2) the acrimony.

[T]

Daniel -
The claim recited --handset-- and the spec said a handset includes a handle.

That said, the only element of NON-equivilence I see there is the protruding of the ear and mouth pieces through the wall. I think that such a design would be far easier to use than the flush mount design of the infringer. That said, the protrusions make the patented device ridiculously close to Andy Griffith's phone.

[SF]

"a fist full of documents that happen to have similar words in them ..."

So true, so true!

[EG]

Max,

I was only addressing the presumption of validity in the U.S. (which is governed by 35 USC 282), not that in the EPO. Having dealt with EPO prosecution (including "there is no final record" in EPO oppositions), I know what you've got in Europe is a different animal, so a presumption of validity may not make sense (and the national courts certainly don't seem to recognize one). But here in the U.S., without a presumption of patent validity provided by 35 USC 282, the patentee (especially the David patentees) would be completely at the mercy of the Goliaths in an infringement suit.

[Malcolm Mooney]

"From the article, I get the impression that the word "handle" wasn't in the claim language. Am I right?"

No, you are wrong.

Dennis' article is quite clear (as is the opinion): "The definition of the handset was made easy because **the claims** stated that: 'a telephone handset being a handle with an ear-piece at one end and a mouthpiece at an opposite end.'"

You can see the entire claim on page 3 of the opinion. The link Dennis provided above is incorrect. The correct link is found here http://www.cafc.uscourts.gov/dailylog.html (scroll down to the case)

According to the Opinion, TIP's argument was the following: "According to TIP, the term “handset” has been re-defined in the context of the hands-
free nature of the patented invention to be nothing more than a mounted earpiece and mouthpiece, and “handle” is simply a means for mounting the earpiece and mouthpiece to the housing at a fixed distance apart."

Everybody follow that? According to the patentee, the infringer "re-defined" the structures of their device so that it only **appeared* as if the elements recited in the claim were missing! But they weren't really "missing." The handset was still there. It's just that now it looks like a wall and you can't hold it. But it's still a handset. Really!

Why such idiocy is not sanctioned by district court judges escapes me. Evidently attorneys are allowed to behave like utterly naive children in court, as long as they preface each of their inane arguments with "your honor."

[CaveMan]

Sorry "Killer" you missed the point. I don't see the cause for outrage that a legitimate patentee had the raw nerve to sue. Heck, the CAFC went to the merits of the case, how meritless could it be?

Guess you need a clue too.

[Malcolm Mooney]

"Heck, the CAFC went to the merits of the case, how meritless could it be?"

Pretty darn meritless. That's the point, Cavey.

[MaxDrei]

How meritless does a case have to be, before the defendant can immediately counter-claim, that the mere issuing of infringement proceedings (an objectively reckless act) constitutes inequitable conduct?

[CaveMan]

26 page opinion including de novo review, sure sounds meritless to me....

Get a clue/life Mooney. Max, since you're just a pup, I'll give you a break.

[DrDudeMuch]

This cordless telephone is flaawed, the 90 degrees of the ex-handle is the fuucked thing of the stuupid non-medical inventor.

The enough correct way is 45 or 135 degrees.

[DrDudeMuch]

I said it can be valid for 99.99% of prisoners, but i can be wrong if the prisoner has not an ear in the correct side.

Then i failed and there is not another better solution than either 2 mouthpieces or 2 ear-pieces, with a non-dangerous switcher, two LEDs and 2 signaling lines of the which of either is for use.

[DrDudeMuch]

My final question is it: is it or not a telephonic system? (a.k.a a system of audio's communication between two remote points)

Yes. No. Unknown. Yes but limited to not be used as telephone. Etc.