Cardiac Pacemakers v. St. Jude Medical (en banc 2009)
Patent law is ordinarily considered territorial. Infringement of a US patent normally requires practicing an entire patent claim within the US. 35 U.S.C. § 271(f) details an exception to the rule that creates a cause of action for patent infringement for the action of supplying components of a patented invention to be assembled abroad. The Court of Appeals for the Federal Circuit has announced that it will hear a 271(f) case en banc to determine whether “35 U.S.C. § 271(f) appl[ies] to method claims, as well as product claims.”
The case is set for the Court to provide a resounding answer: “No, Section 271(f) does not apply to method claims.”
The statute in question reads as follows:
271(f)(1) Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
In the 2005 Union Carbide decision, the Federal Circuit interpreted 271(f) to encompass method claims. Thus, in that case, Shell was properly held liable for exporting a catalyst to be used abroad to practice the method in a foreign facility Union Carbide is the specific precedent followed by the three member Cardiac Pacemaker panel. Then, in the 2007 Microsoft v. AT&T decision, the Supreme Court found that 271(f) does not extend to cover foreign duplicated software – i.e., that the software in the abstract is not a “component.” Part of the Supreme Court’s justification for its narrow interpretation of 271(f) was based on the traditional presumption against extraterritorial application of US laws.
The court welcomes Amicus briefs on the subject.
“Then, in the 2007 Microsoft v. AT&T decision, the Supreme Court found that 271(f) does not extend to cover foreign duplicated software – i.e., that the software in the abstract is not a “component.”
Dennis,
I would be careful with this sentence as to basis for the holding in Microsoft v. AT&T. The majority actually said that “abstract software code is an idea without physical embodiment.” In other words, software embodied or encoded in a medium (e.g., disk) could be a “component.” In fact, in footnote 13, the majority specifically refused to say that software encoded in a medium that was exported abroad and used in a “patented invention” couldn’t be a “component.”
Also, the discussion by the majority about the “abstractness of software” (and the other bizarre comments on software being similar to a “blueprint”) is frankly dicta. The primary basis for the holding in Microsoft is that software “copied” abroad isn’t a “component” that is “supplied.” That’s a perfectly valid interpretation of 271(f), and frankly the majority would have been better off stopping with that. (The majority’s further discussion about avoiding the potential “extraterritorial effect” of 271(f) is frankly hogwash and shows a complete misreading of what 271(f) says; as the Federal Circuit correctly held in Waymark, and as AT&T argued, infringement under 271(f) doesn’t require the “traditional” act of infringement, only “supplying” the “component” with the “intent.”)
Microsoft v AT&T, and especially footnote 13, also doesn’t necessarily support the view that 271(f) is inapplicable to a patented process/method. Again, read the statute which says “patented invention”, not “patented product,” “patented article,” etc. Contrast this language in 271(f) with that in 271(g) which talks about a patented process producing a “product” and how 271(g) was interpreted in Bayer v. Housey Pharmaceuticals that “product” does not include data generated by the “patent process”. In addition, reading “patented invention” as excluding “processes” clashes with how SCOTUS interpreted “patented invention” in 271(e) in Eli Lilly v Medtronics to refer to all items subject to review under the FDA, not just patented drugs as many argued.
Also holding that a “component” can be “supplied” for a “patented process” isn’t illogical. Union Carbide case is an excellent example of this in that a catalyst (“component”) was exported for use in the patented process. Put differently, nothing in the literal language of 271(f) says it’s inapplicable to patented processes.
anon, no.
lol I posted these in the wrong thread tho thanks to the dam PO spam filter blocking jes us.
6, please start your own blog and stop spamming this one.
Perhaps while they are overturning the holding in Union Carbide, the Federal Circuit can take a moment to remind folks how to interpret structural limitations recited in a pseudo-method claim, i.e., a claim that is in fact limited only by recited structures and/or functional features because the only verbs are non-transformative steps such as “obtaining,” “determining,” “providing,” etc.
That would be interesting and useful.
Oh, and pds, there are reasons I call the law the lawlol. The reasons are: Graham, SS, ATT, Zurko, and now Robertson. Do you see a pattern start to emerge there at the beginning of that list? Soon we should be able to add TvD to that list as soon as the CAFC f’s that one up and the USSC sets things right. They can’t afford to have administrative law so bonked as to let it go unnoticed, people will be striking down admin rules left and right, heck, half the PTO’s current rules might get taken out. Who knows? Maybe the CAFC will get it right in the first place and we won’t have to wait on the USSC.
Also, I found out why PO now drops some posts. It will now drop your post instead of telling you that the spam filter caught it. If you value your post you will copy it before you post, see if it posts, then repost after editing after you see it not post.
Now on analyzing the caselaw with 6, Continental Can takes on MONSANTO!
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991).
link to bulk.resource.org
To start us off the DC f ed up summary judgment as per usual (How do they keep getting this wrong? Srsly?).
“The district court found that all the claims of the ‘324 patent were anticipated by U.S. Patent No. 3,468,443 (the Marcus patent). We conclude that the district court erred in claim interpretation, and also found disputed facts adversely to the nonmovant, thus inappropriately deciding the issue summarily.”
Moving on, we come to where inherency is involved.
“However, Marcus, testifying for Monsanto, testified that his ribs were hollow, and that conventional blow molding would inherently produce hollow ribs.”
Marcus, MONSONTO’s witness said that conventional blow molding (which he apparently used) makes hollow ribs, and he states that this happens as a matter of course, that is, inherently.
We then hit the issue of claim construction again:
“The district court defined “hollow” as meaning that “the inside contour of the ribs generally follows the outside contour thereof”, a definition on which the parties agreed. Continental, 11 U.S.P.Q.2d at 1764. See the court’s opinion, 11 U.S.P.Q.2d at 1764-68, for various sketches made by the witnesses. Continental states that the district court erred in construing “hollow”, and that the phrase “characterized by the feature that the ribs are hollow” must be construed in terms of the patent in which it appears. See, e.g., Tandon Corp. v. United States Int’l Trade Comm’n, 831 F.2d 1017, 1021, 4 U.S.P.Q.2d 1283, 1286 (Fed.Cir.1987). The ‘324 patent explicitly distinguished the Marcus patent teachings, stating that the ‘324 ribs are, unlike Marcus, not filled with plastic. The ‘324 specification uses the term “hollow”, as do the prosecution history and the claims, for this purpose. The ‘324 patent’s usage of “hollow” is illustrated in the rib cross-section in Figure 5A”
The court says that the DC gave a definition to which the parties agreed, and then states that Continental disputed the construction. I don’t know if the parties agreed to it or if they disagreed since it seems obvious that Continental did in fact disagree. But in any case the court goes on to give the dispute to Continental and thus uses their construction. This is key in this case because Marcus has testified that the hollow rib was formed inherently when we were using the other definition of hollow rib. His testimony is probably not even true now, as we see that “hollow ribs” as formed in the later patent are not inherently created.
In any event the court goes on to speak a bit about inherency:
“To serve as an anticipation when the reference is silent about the asserted inherent characteristic, such gap in the reference may be filled with recourse to extrinsic evidence. Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. In re Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 U.S.P.Q. 665, 667 (CCPA 1939)) provides:Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. [Citations omitted.] If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”
Where the court states that inherency MAY be shown by recourse to extrinsic evidence. Which of course is true. It can.
Now, does anyone see where the statement from Robertson is plucked from?
“To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991).”
Let’s find out!
“Such evidence must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill. In re Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 U.S.P.Q. 665, 667 (CCPA 1939)) provides:Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. [Citations omitted.] …”
That’s right! It was plucked from an earlier court’s description of what an even earlier court said on the matter! In fact, it was plucked from a description that wasn’t even relevant to the Continental case at hand because in Continental the only thing that mattered was the claim construction, because once that was settled then Continental contested (as rightly it should have) that the process in the prior art did not make hollow ribs as shown in their patent when the claim term was construed in their manner. And of course the DC screwed up resolving this issue by deciding that issue in favor of MONSANTO in the summary judgment when it should have gone to Continental by default since they were the non-moving party.
So … what we’re left with is some dicta from Continental being used in the Robertson case in a non-exclusionary manner to the other methods of showing inherency.
Summary on what is taught by these decisions in conjunction as relating to what is required for inherency:
Robertson’s quote is from a case one year after the BPAI decision in 1990 and is based solely on dicta that attempts to relate what an even earlier case from the CCPA in 1981 meant for no apparent reason since it would not affect the outcome of the Continental case at all. Robertson’s quote does not foreclose other well established means of establishing inherency, even if it were well founded, since Robertson itself acknowledges the different ways of establishing inherency. Furthermore, Robertson’s quote should have been dicta itself since the reference showed that allegedly inherent feature explicitly.
Conclusion: PDS’s reliance on Robertson is not well founded because 1. Robertson’s quote does not foreclose other manners of showing inherency and 2. There is doubt as to the foundations of the Robertson/Continental quote’s validity as used by PDS and 3. Because the Robertson court blatantly mishandled the case before it and made a statement that had nothing to do with the actual issues of the case and based the statement on what appears to be dicta from a previous case.
Overall conclusion on the issue of establishing inherency: Establish inherency in accordance with any of well established principles and you’re golden.
While you’re at it, if you’re ever on appeal over an issue like this, get the court to explicitly state for those like PDS who are incapable of understanding the law as a whole, and are wholly addicted to soundbites, that stating one can do one thing doesn’t mean one cannot do another and that such was the case in Robertson.
I look forward to your appeal anon pds. I could use a little jump in my numbers to help outweigh the numbers of others. And lord knows the other sound bite happy attorneys out there could use some explicit help on this topic from the Fed. Circ.
While I was bored tonight since my bud’s cousin decided he wanted to just stay in and party at my buds instead of going out I decided to look up this enigmatic In Re Robertson that PDS has been relying on to argue about inherency since idk when. btw, shout out to pds, if indeed the above poster is anyone but.
Tonight on analyzing the caselaw with 6:
In Re Robertson
link to bulk.resource.org
Upon review of the prior art, and only seeing the parts of the patent application’s claims that the court considered relevant, we note two things:
1. The reference anticipated the claim without the use of inherency.
2. The board should not have used inherency since there was no freaking way that an assertion of “”an artisan would readily understand the disposable absorbent garment of Wilson … as being inherently capable of [making the secondary load-bearing closure means] (third fastening element) mechanically engageable with [the other snap fasteners on the fastening strip] (first fastening element)”” would have any extrinsic evidence to support it or was factual at all. There is literally so close to a zero percent chance that there would be any extrinsic evidence to support this inherency statement that it is absurd.
The court states: “A. The Wilson patent does not expressly include a third fastening means for disposal of the diaper, as claim 76 requires.”
I guess because the examiner/board stated that it did not and because the court apparently doesn’t know how to designate claim terms. As is clear from the publication, the secondary means are means for disposal and they are identical to the first means and thus would have to be mechanically attachable to them and they are capable of the use stated in the patent. Therefor, the wilson patent does expressly include a third fastening means for disposal of the diaper.
The court asserts: “That means is separate from and in addition to the other mechanical fastening means and performs a different function than they do.” However, the secondary fasteners are separate from and in addition to the first fasteners and they also perform the function in the claim, and the fact that the function of the first fasteners in the claim is different from the function of the third fasteners is irrelevant because the claim does not make it clear that the first fasteners must ONLY have a different function (aka fastening the diaper at closing time) as opposed to having a “different function” (aka fastening the diaper at closing time) and the “same function” (aka fastening the diaper at “fastening” time) as in the patent. In other words the claim does not require that the functions be different, it requires that the two functions be present and they happen to be different, separate functions. I’m using “function” loosely here as it is really just an intended use.
The court goes on to state that: “Instead, the Board ruled that one of the fastening means for attaching the diaper to the wearer also could operate as a third fastening means to close the diaper for disposal and that Wilson therefore inherently contained all the elements of claim 76. In doing so, the Board failed to recognize that the third mechanical fastening means in claim 76, used to secure the diaper for disposal, was separate from and independent of the two other mechanical means used to attach the diaper to the person. The Board’s theory that these two fastening devices in Wilson were capable of being intermingled to perform the same function as the third and first fastening elements in claim 76 is insufficient to show that the latter device was inherent in Wilson. Indeed, the Board’s analysis rests upon the very kind of probability or possibility–the odd use of fasteners with other than their mates–that this court has pointed out is insufficient to establish inherency.”
which I whole heartedly agree with. The examiner/board needed to designate his fastening means differently, then state that they are capable of performing the intended use, not make a statement of inherency. OUTRAGEOUSLY bad designation and then a tacked on cover up? W T F? Being capable of performing an intended use does not make a basis for an inherency statement. Dear je sus.
The court says specifically: “In doing so, the Board failed to recognize that the third mechanical fastening means in claim 76, used to secure the diaper for disposal, was separate from and independent of the two other mechanical means used to attach the diaper to the person.”
But snaps on a pieces of fabric respectively on either side of the diaper are most definitely separate and independent of each and every other snap on the entire garment. This kind of analysis makes my head hurt. Looking at Fig. 1, 2, or 6 blatantly shows all snaps are separate and independent from all other snaps.
Finally, even if we make all the snaps on one little patch of fabric be one “means” then RADER goes on to show why this fails to distinguish the claims over the prior art as well.
RADER was the only one who got it right, but he affirms on other grounds. Grounds which I can neither confirm or deny, but I would bet that he got it right, because there appears to be a whole lot more to the claim and that is probably why the examiner/board f ed up so badly on how to make the rejection of the snap portion.
That’s the first time I’ve found myself on RADER’s side when opposed to all others iirc. NEWMAN as almost always, gets it wrong. This FRIEDMAN character is new to me, but I’ll chalk this up as his first blatant error I’ve observed.
Now to the issue at hand. The quote: “To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991).”
Which, funny enough, comes from a Fed Circ ruling in 1991, a mere one year after the Board’s ruling which I state does not contradict it, but merely compliments it.
So, since we’ve seen that the court clearly is addressing this issue we should take the little snippet that pds (you don’t mind if I call you her name do you?) relies upon in and make sure it is used in context and otherwise verify its usage.
“If the prior art reference does not expressly set forth a particular element of the claim, that reference still may anticipate if that element is “inherent” in its disclosure. To establish inherency, the extrinsic evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Id. at 1269, 948 F.2d 1264, 20 U.S.P.Q.2d at 1749 (quoting In re Oelrich, 666 F.2d 578, 581, 212 U.S.P.Q. 323, 326 (C.C.P.A.1981)).
16
In finding anticipation by inherency, the Board ignored the foregoing critical principles. The Board made no attempt to show that the fastening mechanisms of Wilson that were used to attach the diaper to the wearer also “necessarily” disclosed the third separate fastening mechanism of claim 76 used to close the diaper for disposal, or that an artisan of ordinary skill would so recognize. It cited no extrinsic evidence so indicating.”
Where we see that “The Board made no attempt to show that the fastening mechanisms of Wilson that were used to attach the diaper to the wearer also “necessarily” disclosed the third separate fastening mechanism of claim 76 used to close the diaper for disposal, or that an artisan of ordinary skill would so recognize. ” as well as “It cited no extrinsic evidence so indicating.” which indicates clearly that the two principles are different. And rightly they should be, as inherency can be established by either. Rational (including a mere statement of an undisputable fact that is easily recognizable to one of ordinary skill), or being supported by extrinsic evidence, evidence that need not even be specifically pointed to mind you because the rational is factual in the first place (based on evidence unseen, but it is none the less factual), but could be cited if for lulz the applicant appealed to a court of law and the court of law did not know that the rational was factually based because it does not have the technical background.
And so we see that this court has allowed for at least two ways to establish inherency and the office did neither, and asserted something as being inherent that was blatantly not.
As to the assertion that this case has made, we shall look to the previous case relied upon in Robertson.
Coming up next on analyzing Fed. Circ. Caselaw with 6:
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991).
link to bulk.resource.org
You were right, Dennis, and I was wrong to doubt the court would take this up en banc.
Grats to our own John “(mis)management!” Darling.
“Nixon & Vanderhye is pleased to announce that John P. Darling has been elected a shareholder in the firm effective January 1, 2009”
But your firm seems to be slipping in the top firms…
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