Patent Law Blog (Patently-O)

Supreme Court: Patent Law Treds Into Political World of Outsourcing

Gerald Pellegrini is an inventor in Worcester, Massachusetts.  For the past few years, he has been engaged in a patent dispute with Analog Devices, headquartered in Norwood, Massachusetts.  Now, the case has reached the United States Supreme Court.

APPEALS COURT USES PATENT LAW TO CREATE UNEVEN PLAYING FIELD IN COMPETITION BETWEEN AMERICAN AND FOREIGN WORKERS

Outsourcing of manufacturing and other jobs continues at an unprecedented pace, resulting in the loss of a great many jobs in the United States. American companies often retain their nerve center in the U.S., but delegate the physical labor to employees and contractors located abroad. Foreign outsourcing allows American companies to reduce their payroll and tax burden, and to avoid the more stringent U.S. environmental requirements. Now, the Court of Appeals for the Federal Circuit (CAFC) has offered an interpretation of the patent statute that provides American companies another incentive to outsource -- avoidance of U.S. patent laws. Under the CAFC's interpretation of the patent act, companies that would ordinarily be guilty of patent infringement can now copy patented products with impunity by simply shifting the manual labor of manufacturing outside the U.S.

Gerald Pellegrini, inventor of a specialized motor drive circuit, has taken steps to challenge the CAFC's opinion as legally wrong and also bad public policy. Last week, Pellegrini filed a petition asking the U.S. Supreme Court to hear an appeal of the Analog Devices case. This patent infringement lawsuit, originally filed by Pellegrini in 2002, was partially dismissed because Analog's accused products were manufactured by subcontractors outside the United States and were never physically present in the United States. Pellegrini is asking the Supreme Court to rule that a company who manufactures and sells components of a patented product from the U.S. cannot avoid liability for infringement simply by using outside foundries to fabricate their products.

The statute at issue is 35 U.S.C. Section 271(f)(1). This statute was enacted twenty years ago to prevent U.S. companies from avoiding patents by supplying components for foreign assembly.

Patent: ITC's Enforcement Authority Upheld

Vastfame Camera v. International Trade Commission, et al. (Fed. Cir. 2004)

In the ITC, Fuji was granted a general exclusion order based in its patented disposable camera technology. Fuji then sought to enforce the order through the ITC against specific violators.

On appeal to the Federal Circuit, one alleged violator, VastFrame, questioned the ITC’s statutory authority to conduct enforcement proceedings against specific companies based on a general exclusion order. In its decision, the Appellate Panel found that there was no explicit statutory authority for enforcement proceedings, but that such authority was implied in Section 1337(b).

VastFrame next argued that Commission violated § 1337 in not allowing VastFame to present any invalidity defense. Based on statutory language, this time the Court agreed with VastFrame.

Because we hold that the Commission erred by not allowing VastFame to present its invalidity defense based on the clear language of § 1337(c), we do not reach the issue of whether VastFame’s due process rights were violated in this case.

Vacated and Remanded

Supreme Court: Merck v. Integra

Last week, the U.S. Supreme Court took a step toward accepting Merck's petition of writ of certiorari by inviting the Solicitor General to file a brief expressing the views of the U.S. Government.

The appeal questions the limits of the safe harbor statute (35 USC 271(e)(1)) that permits drug manufactures to perform the experiments needed to obtain FDA approval of their drugs without incurring liability for patent infringement, even if their activities infringe other's patent rights.

Some district courts had interpreted the act broadly to protect many types of infringing activities. However, the Federal Circuit, in Integra v. Merck, decided that safe harbor does not apply to early drug development activities. The case is now on appeal to the Supreme Court.

Background: Integra brought this patent infringement suit based on several patents relating to a short tri-peptide segment of fibronectin having the sequence Arg-Gly-Asp. The peptide sequence promotes cell adhesion to substrates in culture and in vivo.

Fuji Film v. ITC

Fuji Film v. ITC (Fed. Cir. 2004).

After an enforcement proceeding at the ITC, Fuji appealed.

The Appellate Panel made several rulings on claim construction. Additionally, the CAFC found that the Commission did not abuse its discretion in refusing to issue cease and desist orders against foreign respondents with no inventory in the United States and foreign respondents that did not directly import products into the United States.

Finally, Fuji argued that enforcement of the general exclusion order would be ineffective in light of the Customs Service’s new responsibilities in combating terrorism. The Federal Circuit rejected this arguments out of hand.

With respect to the first point, Fuji’s argument is similar to the argument advanced in the Hyundai case, which we rejected as “a thinly veiled and vaguely expressed dissatisfaction with the certification procedure it expects the Customs Service to devise when it implements the Commission’s order.” 899 F.2d at 1210. As we did in Hyundai, we reject Fuji’s suggestion that the Customs Service is incapable of enforcing the Commission’s general exclusion order effectively because of a lack of expertise and other priorities. To the extent that Fuji’s argument is directed at a perceived lack of resources or competence on the part of the Customs Service, we cannot address that problem through a judicial directive that would, in effect, require the Commission to alter its practices based on our unsupported suspicion that the Customs Service is incapable of performing the duties Congress has assigned to it.

Note: This is a companion case to VastFrame v. ITC (Fed. Cir. 2004).

Disclosure of species can support genus claims

Bilstad v. Wakalopulos (Fed. Cir. 2004) (03-1528).

Both Bilstad and Wakalopulos claim to have invented a device for sterilizing objects using ionizing radiation. Bilstad provoked an interference proceeding to determine which party was deserving of the patent.  The Patent Board (BPAI) rejected Bilstad's claims for failure to meet the written description requirement because Bilstad had broad claims (genus) based on a more narrow disclosure (species).

On appeal, the Court of Appeals for the Federal Circuit (CAFC) vacated-in-part because the Board "failed to apply the appropriate standard in its analysis of whether Bilstad's application included sufficient written description to support the count under 35 U.S.C. § 112."

This court has continued to apply the rule that disclosure of a species may be sufficient written description support for a later claimed genus including that species. . . . If the difference between members of the group is such that the person skilled in the art would not readily discern that other members of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then disclosure of more species is necessary to adequately show possession of the entire genus.

Note: According to USPTO assignment data, the real parties in interest in this case appear to be Baxter International (Bilstad) and USHIO Technologies (Wakalopulos).

The Combover

Be careful of your hair design.  Frank & Donald Smith of Orlando, Florida own the patent on a method for styling hair to cover bald areas using only the individual's own hair -- AKA, the combover. (U.S. Patent No. 4,022,227). Actually, the patent issued in 1977 and appears to be expired.

Some potential infringers:

The Smiths were awarded the 2004 Ig Nobel Award from Harvard University for their contribution to the engineering field.

Other winners included the authors of a published report "The Effect of Country Music on Suicide" as well as Jillian Clarke, a Chicago high school student who investigated the scientific validity of the Five-Second Rule.

 

Laboratory Corporation of America v. Chiron

Laboratory Corporation of America v. Chiron (Fed. Cir. 2004) (03-1572).

Chiron developed a method of nucleic acid testing for Hepatitis-C virus in the human blood.  (U.S. Patent 5,712,088).  LabCorp supplies nucleic acid testing products for testing the presence and quantity of Hep-C virus and performs tests at its North Carolina facility. 

Chiron sued LabCorp in California for infringement only hours after LabCorp filed a declaratory judgment suit against Chiron in Delaware.  During the course of litigation, the Delaware District Court granted LabCorp's motion to enjoin Chiron from prosecuting parallel litigation that was co-pending in the Northern District of California.  Chiron appealed the decision. At issue was whether to apply Federal Circuit or Third Circuit law:

In this case, the decision whether to follow Federal Circuit or Third Circuit law is critical: as we have previously observed, the Third Circuit has held that injunctions against litigation in other forums are not appealable, while under Federal Circuit law such injunctions are appealable under 28 U.S.C. § 1292(a)(1). Thus, we must decide which law applies.

Citing the importance of national uniformity in patent cases, the appellate panel held that injunctions arbitrating between co-pending patent declaratory judgment and infringement cases in different district courts are reviewed under the law of the Federal Circuit.

On review of the actual order to enjoin, the panel determined that the district court had not abused its discretion in enjoining the parallel California action. 

Affirmed.

Payless Shoesource v. Genfoot

Payless Shoesource v. Genfoot (D. Kans. 2004) (03-4227-JAR).

After receiving a threatening letter from Genfoot, Payless filed for a declaratory judgment in Kansas, requesting a judgment of patent invalidity, unenforceability, and noninfringement of Genfoot's patent on a boot. Genfoot, a Canadian company, moved to dismiss based on a lack of personal jurisdiction.

Holding:

Sending an infringement letter, without more, is insufficient to satisfy the requirements of due process when exercising jurisdiction over an out-of-state patentee.

A web site may form the basis of personal jurisdiction. Genfoot's website, however, does not allow for on-line sales. "Although a customer is interacting with the web sites, this interaction alone likely is not sufficient for minimum contacts without a more substantial exchange of commercial information."

Genfoot sells to a national distributor. However, "doing business with a company that does business in the state is not the same as doing business in the state."

The combination of all these elements may be sufficient to create minimum contacts with the state. ... Therefore, Genfoot is subject to specific personal jurisdiction in Kansas.

Constitutionality of PTO Fee Diversion

Figueroa v. United States.

Figueroa is a class action suit filed on behalf of inventors in the Court of Federal Claims. The cases challenges the constitutionality of congressional diversion of USPTO fee revenue to other non-IP government programs.

The suit alleges three grounds of unconstitutionality: 1) an unconstitutional violation of the Patent Clause that directs congress "to promote the progress of science and the useful arts;" (2) an unconstitutional direct tax on private property, and (3) an unconstitutional taking of private property. However, the Court has trimmed the suit to solely examine whether the Patent Clause restricts the fee diversion.

Recently, the AIPLA filed an Amicus brief in the case.

While taking no position on the request for relief, AIPLA pointed out that fee diversion increases the burdens on examiners and decreases patent quality, thereby adversely impacting the Office’s ability to carry out the Constitutional command of promoting the progress of the useful arts.

Heath Hoglund, a patent attorney in Puerto Rico appears to be heading the charge for the class.

Experimental Use must be Non-Educational

Madey v. Duke University (M.D.N.C. Sept 20, 2004) (97CV01170).

Before arriving at Duke as a professor, Dr. Madey obtained several patents for microwave electric guns for use in free electron studies. (E.g., Patent 4,641,103). After Duke & Madey had a falling out, and the professor left the university.

Dr. Madley now asserts in a patent infringement suit that Duke continued to use his patented technology without license.

Duke requested summary judgment based on the experimental use defense. Duke contended that its use of the plaintiff's patents was done "for the sole purpose of gratifying a philosophical taste, or curiosity, or for mere amusement," and thus, that the use was experimental.

The court held that 1) the burden of proof for experimental use lies with the accused infringer, in this case Duke; and 2) the defense of experimental use cannot be applied to this case simply because the invention is used in a lab. "Duke [failed to establish] that its alleged use of Plaintiff's patented inventions was not in keeping with its legitimate business as an educational institution but was instead solely for amusement, . . ."

Phillips v. AWH: The Amicus Briefs

Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc).

As you may know, the Phillips case, which is presently awaiting decision en banc, is expected to be the next major decision impacting the issues of claim construction.  For those who are interested, here is a rundown of some of the Amicus Briefs that were filed in the appeal:

1. United States Patent and Trademark Office (USPTO): The Patent Office took the position that dictionaries should not be a primary reference for claim construction, in part because they are not used by examiners during prosecution. The PTO brief was filed jointly with the DOJ and FTC.

2. Intellectual Property Owners (IPO): The IPO brief, argues that the primary evidence of claim meaning should be found in the patent specification and prosecution history.  If a court must resort to extrinsic evidence to determine claim meaning, there should be no pre-determined hierarchy of importance.  The Court should only consider claim construction evidence in the record on appeal. The IPO brief was written by Paul Berghoff and Josh Rich of MBHB LLP.

3. Electronic Frontier Foundation (EFF): Judges should invalidate and Patent Office Examiners should reject ambiguous claims.  Claims should be given their broadest possible construction during prosecution and narrowest reasonable meaning thereafter.  Professor Joshua Sarnoff is the Counsel of Record on the EFF brief.

4. American Bar Association: Neither the specification nor dictionary should have primacy. Invalidity should play no role in claim construction, as that approach is contrary to the public notice function. The Appellate Court should defer to findings of fact made during claim construction.

5. American Intellectual Property Law Association (AIPLA): The fundamental standard that should govern claim construction is that a claim term must be construed from the perspective of a person of ordinary skill in the relevant art at the time the patent issued seeking to understand the term's meaning from a study of the entire intrinsic record.

6. Intel, IBM, Google, Micron, and Microsoft: Where those construing patent claims focus on dictionary meanings of claim terms without an appropriate grounding in the specification and prosecution history, there is a danger the interpretation of patent claims will differ markedly from the true scope of the invention they seek to define. Indeed, there are so many different dictionary definitions for any given word that it is impossible to predict with any confidence what meaning a court will choose. The Intel brief was written by Stanford professor Mark Lemley.

7. Federal Circuit Bar Association (FCBA): Dictionaries should not be the primary focus of claim construction. Claim construction may require findings of fact, which should be reviewed for clear error.

8. International Trade Commission Trial Lawyers Association (ITCTLA): The specification and prosecution history should control. When dictionaries are used, technical dictionaries should have a rebuttable preference over general dictionaries. Claim language should not be narrowly construed for the sole purpose of avoiding invalidity. The claim interpretation should not be limited to only the embodiment described in the specification. Expert testimony should be allowed and evaluated as would any other piece of evidence. Deference to the trial court's claim construction may be appropriate in some cases.

9. Biotechnology Industry Organization (BIO): Specification first.  Dictionaries second, when specification does not establish meaning of claim terms. Claims should never be narrowly construed for the sole purpose of avoiding invalidity.

10. Bar Association of District of Columbia (BADC) Patent Trademark Copyright (PTC) Section: The specification always provides context for the claims. The court should not determine the question of deference because it would be an advisory opinion.

11. Professors Wagner & Miller: The professors argue that the patent document should be the primary and preferred source of claim meaning -- as long as it is clear, specific, and objective. Where the term is not clearly defined in the patent document, there should be a heavy presumption in favor of the ordinary meaning of the term. Dictionaries are not a panacea, but they offer the best opportunity to provide a term's ordinary meaning with clarity, certainty, and predictability.

12. Public Patent Foundation (PUBPAT): Dan Ravicher of PUBPAT argued that "claim construction should never be impacted by considerations of validity." Consistent with Markman, subsidiary factual determinations by the trial court during claim construction should be reviewed for clear error.

13. Intellectual Property Law Association of Chicago (IPLAC): Courts may look to the plain meaning of claim terms but asserts that dictionaries should in general be subordinate to the patent specification and other intrinsic evidence when determining what is meant objectively by challenged claim terms. Dictionaries may be considered, but the guiding light must be what the hypothetical ordinarily skilled artisan would have understood by the claim terms – not in a vacuum, and not armed with only a technical or general purpose dictionary, but also with the full panoply of intrinsic evidence. Courts may receive expert witness testimony on this determination. Edward Manzo wrote the brief for IPLAC, and was given assistance by Brad Lyerla, Dean Monco, Pat Burns and Tim Vezeau.

14. Association of Corporate Counsel: Public notice is best served by first looking at claims, specification and prosecution history. Dictionaries should not be the primary source for claim construction. Because the guiding inquiry is the meaning of terms to those of ordinary skill in the relevant art, relevant technical dictionaries should usually be consulted before general dictionaries.

15. Infineon: The public notice function of patent claims is best served by looking first and foremost to the intrinsic specification, not an extrinsic dictionary definition, to interpret claim terms.

16. Boston Patent Law Association: Dictionaries should not be the primary source of claim construction because they do not stay current, are not necessarily authoritative, and because meaning is not always found in books. Validity and claim construction should be kept separate.

17. Connecticut Intellectual Property Law Association: Inflexible rules of construction are ineffective in interpreting the widely varying universe of language found in patent claims.

18. Medrad, Inc: Claim construction should be based upon the intrinsic evidence (spec, drawings, cited prior art, and prosecution history).

19. NYC Association of the Bar: Dictionary definitions should not provide the primary source of meaning or a separate restriction on claim coverage. Validity should be considered during claim construction. Expert testimony can provide important information. Deference to the trial court's claim construction findings is blocked by procedural and practical obstacles.

20. New York IP Law Association, et. al.:

21. Norvatis:

22. Oregon Patent Law Association:

23. Parus Holdings:

24. Pharmaceutical Patent Attorneys:

25. San Diego IP Law Association:

26. Sughrue Mion: Claims should be interpreted as of the time of filing or earlier. The patent document provides the best notice of the claim's meaning. Deference should be accorded to a trial court's factual findings underlying claim construction.

27. VISA USA and Mentat:

28 Wisconsin Alumni Research Foundation (WARF), UVA, Yale, etc.:

Party Briefs:

1. Edward H. Phillips

2. AWH Corporation

3. Phillips reply brief

Links:

• Link: My review of the case published in Patent World magazine.

ASIDE:

Interestingly, Mr. AWH Phillips was a famous economist who discovered a consistent inverse relationship between the rate of wage inflation the rate of unemployment.

Kangaroo Court

This trademark opinion is so good, I wanted to quote the entire thing:

Klein-Becker v. Bodyworx.com (Western District of Texas, July 21, 2004)

BE IT REMEMBERED on the 21st day of July 2004 and the Court took time to make its daily review of the above-captioned case, and thereafter, enters the following:

When the undersigned accepted the appointment from the President of the United States of the position now held, he was ready to face the daily practice of law in federal courts with presumably competent lawyers. No one warned the undersigned that in many instances his responsibility would be the same as a person who supervised kindergarten. Frankly, the undersigned would guess the lawyers in this case did not attend kindergarten as they never learned how to get along well with others. Notwithstanding the history of filings and antagonistic motions full of personal insults and requiring multiple discovery hearings, earning the disgust of this Court, the lawyers continue ad infinitum. On July 20, 2004, the Court’s schedule was interrupted by an emergency motion so the parties’ deposition, which began on July 20, would and could proceed until 6:30 in the evening. No intelligent discussion of the issue was accomplished prior to the filing and service of the motion, even though the lawyers were in the same room. Over a telephone conference the lawyers, of course, had inconsistent statements as to the support of their positions. On July 20, 2004, the Court entered an order allowing the plaintiffs/counter-defendants until July 23, 2004 (two days from today) to answer a counterclaim. Yet, on July 21, 2004, Bodyworx.com, Inc.’s lawyers filed a motion for reconsideration of that Court order arguing the pleadings should have been filed by July 19, 2004.

The Court simply wants to scream to these lawyers, “Get a life” or “Do you have any other cases?” or “When is the last time you registered for anger management classes?”

Neither the world’s problems nor this case will be determined by an answer to a counterclaim which is four days late, even with the approval of the presiding judge.

If the lawyers in this case do not change, immediately, their manner of practice and start conducting themselves as competent to practice in the federal court, the court will contemplate and may enter an order requiring the parties to obtain new counsel. In the event it is not clear from the above discussion, the Motion for Reconsideration is DENIED. SIGNED this 21st day of July 2004.

In more refreshing news, Phil Mann reports that "Sanity Returns to Court of Appeals." (Federal Circuit).

I can’t believe it. Maybe I’m wrong (I’ll re-read the case Tuesday). But it sure seems the Court of Appeals has finally let common sense influence one of its decisions.

Yahoo & Inktomi chip away at Teknowledge patent

District court has no power to redraft claim language to change its ordinary meaning.

Teknowledge v. Akamai (N.D. Cal. 2004) (C 02-05741 SI).

In the Summer of 2002, Teknowledge sued Akami, Inktomi, Yahoo, Microsoft, and Netscape for infringement of its patent involving "automatic retrieval of changed files by a network software agent". (US6029175). As part of the litigation, Yahoo and Inktomi filed for summary judgment of invalidity of some claims.

In order to avoid summary judgment of invalidity for claim 29, Teknowledge argued that a typographical error existed in the patent, and that the court should redraft the claim based on the intended meaning. Judge Illston disagreed, citing the "clear line of Federal Circuit authority" that bars district courts from re-drafting claims to change their ordinary meaning, "even if the ordinary meaning produces a nonsensical result. (citing Chef America). Because the ordinary meaning produced a nonsensical result, the Court found the claim invalid.

Summary Judgment Granted to Yahoo & Inktomi.

Citing the ongoing litigation, Yahoo's attorney had no comment.

Patent's transition language limits its use as an anticipatory reference

In re Morrison (BPAI 2004) (unpublished opinion).

Acarbose is an oral alpha-glucosidase inhibitor approved for use in the management of non-insulin-dependent diabetes mellitus (NIDDM). In 2001, James Morrison applied for a patent for using acarbose in a sustained release matrix as a weight loss stimulant. The PTO examiner assigned to the case rejected the claims as anticipated by prior art.

One reference cited by the examiner suggested the use of acarbose as a weight loss stimulant to be used alongside a lipase inhibitor. However, the Board overruled the Examiner's rejection because the reference included the language "consisting essentially of" when describing the acarbose-lipase-inhibitor combo.

The basic and novel characteristics of the claimed composition do not include inhibition of lipase enzymes. Thus, the addition of a lipase inhibitor would materially affect the basic and novel characteristics of the claimed composition. The claims do not read on the compositions disclosed by Bremer, which all contain a lipase inhibitor. The rejection under 35 U.S.C. § 102(b) is reversed.

REVERSED, 37 CFR § 1.196(b)

Echostar wins appeal: DISH Network found to not infringe patent

Irdeto Access v. Echostar (Fed. Cir. 2004).

Irdeto's patent is directed to a system for controlling the broadcast of digital information signals by using three types of complementary encryption and decryption keys -- “service keys,” “group keys,” and “box keys.”  (U.S. Patent No. 4,531,020).  Irdeto sued Echostar, arguing that Echostar's DISH Network infringed the patent.  On summary judgment, the district court granted summary judgment to Echostar, finding that Echostar's product did not infringe.  The Appeal revolved around the definition of the term "group."

Irdeto, in effect, argues is that even after telling the PTO and the public that given the absence of ordinary meaning in the art for the term “group,” the specification sets forth the full intended scope of that term, a patentee can nonetheless later lay claim to a broader, general-usage dictionary meaning of “group” absent explicit narrowing statements in the specification.  This cannot be.  ... [W]hile the specification does not contain any statements of explicit disavowal or words of manifest exclusion, it repeatedly, consistently, and exclusively uses “group” to denote fewer than all subscribers, manifesting the patentee’s clear intent to so limit the term.  The specification also contains no affirmative indication that group can consist of all subscribers within the system.  A reasonable competitor reading the patent could only understand “group” to refer to a subset of all subscribers.  The claims must be limited accordingly.

Summary Judgment of Noninfringement Affirmed.

Patent Case: Landmark Decision Strengthens Attorney-Client Privilege

In a landmark decision, a panel of eleven Federal Circuit judges has overruled their prior precedent, relieving accused patent infringers of the feared "Quantum Dilemma."

Willful patent infringement brings with it the potential for treble damages (3x), usually resulting in multi-million dollar awards. (35 USC § 284). Prior cases have held that an important factor for determining willfulness is whether the accused infringer obtained an opinion of counsel that presents a strong case for invalidation or noninfringement.

During litigation, presentation of the exculpatory opinion as evidence triggers broad waiver of attorney-client privilege. Under prior precedent, failing to present the opinion conversely leads the court to an inference that either the opinion was not exculpatory or that there was no opinion of counsel.

The modified Hobson's choice is known as the Quantum Dilemma, based on the case of Quantum v. Tandon.

In their en banc decision written by Judge Newman, the appellate court held that no adverse inference should flow from a party's refusal to present an exculpatory opinion of counsel.

We now hold that no adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer's failure to obtain or produce an exculpatory opinion of counsel. Precedent to the contrary is overruled.

The Case: KNORR-BREMSE v. DANA CORP. (Fed. Cir. 2004) (01-1357) (en banc).

Knorr-Bremse is a German company, but is the owner of a U.S. patent on Disk Brake technology. (U.S. Patent No. 5,927,445). Dana Corporation and other defendants were found liable for infringement. And, based on an inference of an unfavorable counsel, the defendants were found liable for willful infringement. Although no actual damages were awarded, because of the finding of willful infringement the court awarded partial attorney fees under 35 U.S.C. § 285.

During litigation, the defendants told the court that they had consulted European and United States counsel concerning Knorr-Bremse's patents, but declined to produce any legal opinion or to disclose the advice received, asserting the attorney-client privilege. The district court found that "It is reasonable to conclude that such opinions were unfavorable."

The Decision:

In its decision, the Court answered four questions revolving around willfulness:

In the first question, the Court based its response on the strong historical significance of attorney-client and work-product privileges.

1. When the attorney-client privilege and/or work-product privilege is invoked by a defendant in an infringement suit, is it appropriate for the trier of fact to draw an adverse inference with respect to willful infringement?

The answer is "no." Although the duty to respect the law is undiminished, no adverse inference shall arise from invocation of the attorney-client and/or work product privilege.

In the second question, the Court found that there is no legal duty of a potential infringer to consult with counsel.

2. When the defendant had not obtained legal advice, is it appropriate to draw an adverse inference with respect to willful infringement?

The answer, again, is "no."

Question three revolved around the case at hand.

3. If the court concludes that the law should be changed, and the adverse inference withdrawn as applied to this case, what are the consequences for this case?

As an answer, the Court vacated the willfulness finding and remanded for a redetermination of willfulness in the absence of the inference of a nonexculpatory opinion.

The final question, number four, offered the Court the opportunity to create a clear rule that mounting a substantial defense to infringement should defeat a willfulness finding.

4. Should the existence of a substantial defense to infringement be sufficient to defeat liability for willful infringement even if no legal advice has been secured?

The answer is "no."

The Court concluded that willfulness involves a "totality of the circumstances" and should not be limited to a per se rule.

The Dissent:

Dissenting in part, Judge Dyk argued that enhanced damages for willfulness are punitive damages. Punitive damages are awarded to "punish reprehensible behavior." As such, there is a "substantial question as to whether the due care requirement is consistent with the Supreme Court cases holding that punitive damages can only be awarded in situations where the conduct is reprehensible. ... I would recognize that the due care requirement is a relic of the past and eliminate it as a factor in the willfulness and enhancement analysis."

Note: Paul Berghoff and Joshua Rich of McDonnell Boehnen Hulbert & Berghoff took part in an amicus curiae brief submitted by the Intellectual Property Owners Association.

According to Dan Boehnen, also of McDonnell Boehnen, "clients often spend thousands of dollars to obtain window-dressing opinions that are designed solely to defend against a charge of willful infringement. Also, clients sometimes feel compelled to have different law firms handle opinion work versus litigation work. All that artificial conduct is likely to be swept away by the Court's recent decision."

Cite as Dennis Crouch, Landmark Decision Strengthens Attorney-Client Privilege, Patently-O, September 14, 2004 available at http://patentlyo.com.

Federal Circuit: Injunction to "not infringe the patent" is overly broad.

International Rectifier (IR) v. IXYS (Fed. Cir. 2004) (04-1014).

On the day that its patent issued, IR filed a patent infringement suit against IXYS.  IR's patent relates to semiconductor device (MOSFET) packages having a higher current capacity without increased size. (U.S. Patent No. 6,476,481).  The issue for appeal is "whether the [permanent] injunction granted the patentee is overly broad, and, if so, what is the proper remedy."

The Federal Circuit rejected the injunction because it was overly broad under Rule 65(d) of the Federal Rules of Civil Procedure. 

In the patent infringement context, this court has rejected as overly broad a permanent injunction that simply prohibits future infringement of a patent. ... [T]he trial court's injunction in this case does not meet the specificity requirements of Rule 65(d).  The injunctive language set forth in the trial court's judgment prohibits infringement by "any device covered by one or more of Claims 1 through 5" of the '481 patent. 

Thus, the Appellate Panel vacated the injunction entered by the trial court and remanded the case with instructions to issue an injunction that meets the specificity requirements of Rule 65(d).

Comment: One interesting dichotomy is that the International Trade Commission (ITC) commonly issues broad injunctions or import restrictions that prohibit unlicensed entry of products that infringe certain patents.  For example, in the recent plastic bag case, the ITC issued a general exclusion order prohibiting the unlicensed entry of plastic grocery bags that infringe patent 5,188,235.

 

Patent Law: Disclosure-Dedication Rule Takes Shape

Toro v. White Consolidated (WCI) (Fed. Cir. 2004).

The Toro Company sued White for infringement of its patent on a leaf blower. (U.S. Patent No. 4,694,528).  The Minnesota district court granted summary judgment of non-infringement under the doctrine of equivalents -- finding that White's two-piece cover/ring was dedicated to the public in Toro's patent because it was disclosed, but not claimed. (Citing Johnson & Johnson v. R.E. Service). The Federal Circuit (LINN) agreed, finding that the disclosure of unclaimed subject matter "triggers the disclosure-dedication rule."

Because J&J had been decided after claim construction in this case, Toro also argued that the issues should be re-examined in light of the new law.  The Appellate Panel Disagreed.

While Toro argues that Johnson & Johnston represents a change of law, its argument is misplaced.  Johnson & Johnston did not alter our precedent as to claim construction, the issue at the crux of this case.... The doctrine of the law of the case is intended to prevent just the kind of speculation and second-guessing invited by the appellant here, in the broader interests of certainty, finality, and legal efficiency. The law is well-settled; decisions once made are not to be disregarded except for exceptional circumstances. Such circumstances are not evident here.

 

 

Football Invention Tests Quarterback Timing

In re Oister (BPAI 2004).

On appeal to the Board of Patent Appeals and Interferences, the patent applicants argued that their "ball having integrated timers for measuring or counting at least one time period" was novel over the asserted prior art. The Board agreed that the device was patentable because the prior art did not use a predetermined countdown time period.

Sample Claim from the Patent Application:

21. An apparatus comprising:

a ball having a surface and at least one internal cavity;
at least one timer for measuring at least one predetermined time period; and
the timer integrated with the ball.

According to USPTO records, the patent application (10/014,297) is assigned to the Classic Sports Company of Denver.

Out of Left Field: MLB Sued for Patent Infringement

Major League Baseball (MLB) is the subject of a new patent infringement lawsuit.  A Texas based patent holding company has sued MLB Advanced Media for infringement of its patents covering "computer simulation" of live events, such as baseball games. (e.g., Patent No. 6,204,862).  The case, filed in Austin, revolves around MLB's Internet-based products.

The following specific MLBAM products and services are implicated in the lawsuit: (1) Gameday, (2) Condensed Games, (3) Searchable Video (formerly called Custom Cuts), (4) Highlight Reels and (5) Fantasy Player Tracker. (DDB Press Release).

The four asserted patents are members of a single "patent family" and date back to a patent application filed in 1990.  David Barstow, Plaintiff DDB Technologies' head honcho, is listed as an inventor.

Last year CBS's SportsLine settled with DDB -- licensing its patent portfolio on a non-exclusive basis. (Link).

Tables Turned: RIAA Accused of Patent Infringement

Invent Blog: An online music distributor has reportedly sued the Recording Industry Association of America (RIAA) for patent infringement.  The asserted patent claims a method for generating a unique identifier based on content of a datafile, then later using the identifier to track files containing identical content.  (U.S. Patent No. 5,978,791).  The RIAA is accused of using the patented technology to track down peer-to-peer (P2P) copyright violators.

In a suit filed with the Los Angeles District Court, Altnet maintains that the RIAA, Loudeye subsidiary Overpeer and a fellow anti-piracy operation, MediaDefender, have all violated a patent it holds covering the identification of files on a P2P network using digital fingerprint technology. (The Register).

Altnet is a partner with Kazaa, and according to cNet news, "has been trying for several years to persuade record labels and music studios to allow Altnet to sell authorized versions of their products through the Kazaa file-swapping network." 

The lawsuit was filed in the Southern District of California.

 

Federal Circuit: National Instruments v. MathWorks

National Instruments v. MathWorks (Fed. Cir. 2004) (03-1540) (unpublished opinion).

National Instruments (NI) sued MathWorks overs for infringement of its patented method of creating data flow diagrams.  The jury sided with NI and the district court denied Mathworks' subsequent motion for JMOL.

On appeal, MathWorks raised several issues and argued that the permanent injunction issued by the district court went impermissibly beyond the jury's findings.  Specifically, MathWorks argued that its Simulink software had many non-infringing use and that a product based injunction was unduly broad.  However, the Appellate Panel, reviewing for an abuse of discretion, affirmed -- holding that the trial court was sufficiently cognizant of MathWorks arguments in its decision.

MathWorks VP Richard Rovner outlined their position going forward:

First, The MathWorks will abide by the decision of the court and will make modifications to the Simulink product.

Second, the decision affirms that customers can continue to use previously purchased Simulink products and that The MathWorks can continue to provide technical support for these products.

Third, The MathWorks remains fully committed to the Simulink product family and, consistent with the court’s decision, will continue to support and enhance it.

National Instruments Press Release
MathWorks Press Release

Monsanto wins patent infringement appeal over Tennessee farmer

 Monsanto v. Ralph (Fed. Cir. 2004) (03-1243).

Mr. Ralph appealed from a Missouri court judgment imposing sanctions for discovery abuses, violation of court orders, repeated attempts to conceal misconduct and a three million dollar damage award for patent infringement and an alternative award of liquidated damages for breach of contract.

This case falls in line with the recent McFarling opinion involving Monsanto's Roundup-Ready seeds.  Mr. Ralph owns a Tennessee farm.  He purchased Roundup-Ready seeds and then reportedly saved seeds from the F1 generation -- a violation of the patent and the licensing agreement.  During discover, Ralph burned some seed stockpiles -- apparently to avoid discovery.

The Federal Circuit agreed with Monsanto that the district court properly applied sanctions for discovery abuses and properly calculated a reasonable royalty. However, the Appellate Panel did find that Monsanto's "one-size-fits-all" 120 multiplier for breach of contract failed to distinguish between various modes of breach -- and thus was not enforceable.

Conclusion

Although we have determined that the contract-based damages are excessive in light of our recent decision in McFarling, the trial court did not abuse its discretion in its choice of sanction or its denial of Ralph's post-judgment motion, and Ralph has not shown that the jury award for patent infringement is "grossly excessive or monstrous," clearly not supported by the evidence, or based only on speculation or guesswork.  Accordingly, the decision of the district court is

CAFC refuses to examine Request for Comments (RFCs) when defining ordinary meaning of claim terms

Many Internet standards are initially developed in papers known as Requests for Comments (RFCs). A purpose of an RFC is to collect propose a common language for facilitating development and to collect commentary. Often, however, the RFCs become the authoratitive document describing a particular function. For example, RFC-1738 was created by Berners-Lee in 1994 and is thought of as an authoritative, unbiased source relating to the meaning of the term "URL." The Federal Circuit, however, has refused to allow RFCs to take an authoritative position in claim construction. ACTV v. Disney, 346 F.3d 1082 (Fed. Cir. 2003). In ACTV, the Appellate Court differentiated RFC documents that attempt to shape meaning of terms from dictionaries that reflect established usage.

Juicy Whips up on Orange Bang: CAFC Affirms Entire Market Value Rule

Juicy Whip v. Orange Bang (Fed Cir. 2004)

 

by Joseph Herndon

 

This is the latest appeal in the lengthy litigation between Juicy Whip and Orange Bang.  (U.S. Patent No. 5,575,405). On remand to determine damages, the district court rejected Juicy Whip’s argument that it would have sold more syrup “but for” Orange Bang’s infringement.  Juicy Whip appealed. 

 

Juicy Whip claimed that there exists a functional relationship between its patented dispenser and the unpatented syrup, a link adequate to justify recovery of lost profits.  The CAFC agreed and vacated the jury’s award and remanded this case back to the district court for a third time to allow Juicy Whip to prove lost profits on its syrup sales.

 

The CAFC followed the “functional unit” test set forth in Rite-Hite, e.g., that the entire market value rule is a principle of patent damages that defines a patentee’s ability to recover lost profits on unpatented components typically sold with a patented item, if both constitute a functional unit. 

 

The CAFC found that Juicy Whip’s dispenser and the syrup were analogous “to parts of a single assembly … as the syrup functions together with the dispenser to produce the visual appearance that is central to Juicy Whip’s ’405 patent.”  The Court explained that “a functional relationship between a patented device and an unpatented material used with it is not precluded [from profit determination] by the fact that the device can be used with other materials or that the unpatented material can be used with other devices.” 

Note: Joseph Herndon is a law clerk and at the intellectual property firm McDonnell Boehnen Hulbert & Berghoff and is a registered patent agent.  Joe has a stellar background in electrical engineering and plans to graduate from law school in 2005. herndon@mbhb.com.

Means-Plus-Function Limitation Rarely Found When Claim Lacks "Means" Language

Lighting World v. Birchwood Lighting (Fed. Cir. 2004).  

In its complaint, Lighting World asserted that Birchwood's fluorescent lamp fixtures infringed Lighting World's patents. At the close of Lighting World's case-in-chief, the court granted Birchwood's motion for JMOL on the ground that Lighting World had not shown equivalence under the doctrine of equivalents.

Lighting World appealed the District Court's claim construction determination that the term "connector assembly" was a means-plus-function limitation.  The unanimous Appellate Panel vacated, finding that Birchwood did not demonstrate that section 112 ¶ 6 should apply.

[W]e have seldom held that a limitation not using the term “means” must be considered to be in means-plus-function form.  In fact, we have identified only one published opinion since Greenberg (Fed. Cir. 1996) in which we have done so, and that case provides a useful illustration of how unusual the circumstances must be to overcome the presumption that a limitation lacking the word “means” is not in means-plus-function form. 

 

 

Patent Infringement: Recognition of a problem does not render the solution obvious

Cardiac Pacemakers (CPI) v. St. Jude Medical (Fed. Cir. 2004).

CPI (Guidant) controls several patents relating to implantable cardiac defibrillators (ICDs) that are permanently installed under the skin, and that determine abnormal cardiac activity and treat that activity by delivering electrical shocks to the heart muscle in appropriate strengths. CPI charged St. Jude with infringement of two of these patents.

A jury found both patents valid and enforceable, but only one infringed.  After trial, the district court granted St. Jude's motions for JMOL -- holding both patents invalid and not infringed. The court also granted a new trial (in the event of reversal) and awarded sanctions for witness misconduct. CPI appealed the judgment of invalidity and non-infringement.

The Appellate Panel agreed with CPI and reversed, finding that the district court improperly granted JMOL. With respect to obviousness, the Federal Circuit found a nonobvious difference between the prior art's recognition of a problem and the patented solution.

We think that the district court, in granting JMOL, applied an incorrect standard to the ultimate question. Recognition of the problem of treating complex heart arrhythmias does not render obvious the eventual solution. Recognition of a need does not render obvious the achievement that meets that need. There is an important distinction between the general motivation to cure an uncured disease (for example, the disease of multiple forms of heart irregularity), and the motivation to create a particular cure.

The lower court had also invalidated the patent based on a failure to state a best mode for supplying batteries. However, the Appellate panel found that there was "evidence before the jury that persons knowledgeable in the field of the invention would know the sources of batteries for pacemakers and related devices. There was no evidence of concealment, and the jury had evidence that the Honeywell battery was published in a publication for battery specialists. There was substantial evidence whereby a reasonable jury could have found that the best mode requirement had not been violated. The grant of JMOL on this issue is reversed, and the jury verdict is reinstated."

The Appellate Panel continued: "The jury verdicts on the issues of obviousness and best mode were not against the manifest weight of the evidence." Thus, no new trial may be held on the issues of obviousness or best mode. However, a new trial was warranted with respect to infringement because the district court erred in its claim construction.

AFFIRMED IN PART, REVERSED IN PART, AND REMANDED.

Update:
Peter Zura at the 271 Patent Blog has more information on the case.
Reuters story.

Xechem v. University of Texas

Xechem v. University of Texas (Fed. Cir. 2004) (03-1406).

Xechem brought several claims against the University of Texas that were dismissed after the University asserted Eleventh Amendment and state immunity from suit. The issue on appeal is whether the University is subject to suit in federal court to obtain correction of inventorship in the patents flowing from a collaboration between Xechem and the University. (US-5877205-A). The Federal Circuit affirmed the lower court's dismissal based on Supreme Court precedent.

Comment: In this case, the court (Newman, J.) seemed to almost go out of its way to emphasize the strong points of Xechem's argument -- giving an indication that it would, but for Supreme Court precedent, refuse to grant immunity to the university.  I would predict that this case will be granted a Writ of Certiorari.

-- Dennis Crouch

Federal Circuit: DMCA does not create a new property right for copyright owners

Chamberlain Group v. Skylink Technologies (Fed. Cir. 2004).

In a well reasoned opinion, the Federal Circuit (GAJARSA) affirmed a district court's dismissal of a suit arising under anti-trafficking provisions of the Digital Millennium Copyright Act (DMCA).

The DMCA does not create a new property right for copyright owners.  Nor, for that matter, does it divest the public of the property rights that the Copyright Act has long granted to the public.  The anticircumvention and anti-trafficking provisions of the DMCA create new grounds of liability.  A copyright owner seeking to impose liability on an accused circumventor must demonstrate a reasonable relationship between the circumvention at issue and a use relating to a property right for which the Copyright Act permits the copyright owner to withhold authorization-as well as notice that authorization was withheld.  A copyright owner seeking to impose liability on an accused trafficker must demonstrate that the trafficker's device enables either copyright infringement or a prohibited circumvention.  Here, the District Court correctly ruled that Chamberlain pled no connection between unauthorized use of its copyrighted software and Skylink's accused transmitter.  This connection is critical to sustaining a cause of action under the DMCA.  We therefore affirm the District Court's summary judgment in favor of Skylink.

This case involved electronic garage door technology with a "rolling code" to encrypt signals transmitted signals.  Skylink distributes a universal remote that can decode the encrypted rolling code.  In an attempt to control the aftermarket in remote control units, Chamberlain sued.

The court's basic premise is that an element of a DMCA cause of action is an underlying copyright violation -- without such a violation, there can be no remedy.

Updates: According to Ernest Miller, the court rescued the DMCA from "one of its most absurd aspects." He is still concerned, however, that the Act, even as narrowly interpreted, will continue "stifling creativity and innovation." More on the story from copyfight.

Federal Circuit: Disclosure of only a single embodiment does not result in disavowel of claim scope

Home Diagnostics v. LifeScan (Fed. Cir. 2004) (03-1370).

After construing the claims in this patent infringement lawsuit, the Northern District of California Court held that Home Diagnostics' (HDI) blood glucose meters do not infringe LifeScan's patent on the use of reflectance to determine blood glucose concentration.  (U.S. Patent No. 6,268,162).

On appeal, LifeScan argued that the lower court's claim construction should be overturned.  Specifically, LifeScan argued that the district court overlooked "the accepted contextual meaning" of the method of stopping a measurement period and unduly limited terms to those disclosed in a preferred embodiment.  HDI argued that any broader interpretation was disavowed by LifeScan when they disclosed only a single embodiment.

The Federal Circuit agreed with LifeScan, following their own precedent that disclosure of a single embodiment "does not mean that the patent clearly and unambiguously disavowed other embodiments." 

Reversed-in-part, Vacated-in-part, and Remanded

Paintball Patent Infringement: Smart Parts' Patent Lacks Proper Inventorship

Smart Parts v. WDP (D. Oregon 2004)

In a patent infringement suit over electropneumatic paintball guns, an inventorship controversy arose. Smart Parts contends it is the sole owner of U.S. Patent No. 6,474,326. Dr. Edward Hensel, a former investor, claims to be a co-inventor. Hensel, now acting on behalf of WDP, provided evidence that he designed various elements of the patented invention - namely the electrical timing circuit and bolt action control. In addition, Hensel created a working model in his home. The court agreed that Hensel should be at least a co-inventor and granted summary judgment to WDP on the issue of inventorship.

Links:
Opinion;
Dale Ford's Commentary

-- Dennis Crouch

Claim term "substantially" is approximate

Dana Corp. v. American Axle  (Fed. Cir. 2004) (not citable as precedent).

In a patent infringement suit, the district court granted summary judgment of non-infringement to the defendant, holding that no reasonable jury could find that the defendant's driveshaft technology infringed plaintiff's patents.

The Federal Circuit vacated, finding that the district court incorrectly ignored the claim phrase  "substantially uniform wall thickness."  According to the Appellate Panel, the term substantially allows for variation in wall thickness.

VACATED and REMANDED

PTO Board Places Enablement Burden on Examiner

Ex parte FALSAFI (BOARD OF PATENT APPEALS AND INTERFERENCES) (2004) (Unpublished)

During prosecution of their patent application for a new dental cement composition, the applicants added the term "about" to modify an upper concentration range. The Examiner rejected addition of "about," arguing that the broadened claims were not enabled.

The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. Extending the claimed range beyond the range described in the specification is not enabling and is new matter.

On appeal, the BPAI overturned the Examiner's rejection, holding that the Examiner had not "met the required burden of proof for a rejection based on lack of enablement."

The claims are directed to a dental composition and nothing in the specification indicates that minor differences in concentration render the composition unsuitable. The Examiner simply has provided no basis for the conclusion that one of ordinary skill in the art would not have been able to make the dental compositions at the slightly higher levels of the claims, if, indeed, the upper levels are outside the ranges discussed in the specification.

Federal Circuit: Lifestream Diagnostics v. Polymer Technologies

Lifestream Diagnostics v. Polymer Technologies (Fed. Cir. 2004) (unpublished opinion).

Lifestream sued Polymer Tech for alleged infringement of its patent on HDL cholesterol testing equipment.  (U.S. Patent No. 5,135,716).  After conducting a Markman hearing, the district court awarded a judgment of noninfringement to Polymer Tech.

On appeal, the Federal Circuit reversed in part.

We hold that reliance by the Patent Office upon arguments mae by the patentee during prosecution is not necessary to find argument-based estoppel.... Because we reverse some of the district court's claim construction, we vacate the court's judgment of noninfringement and remand.

Eolas browser patent fight goes into new phase (Tribune)

Today's Chicago Tribune (subscription) has a nice article on the Eolas case by reporter Barbara Rose.  Most interestingly, her reporting does not fall in line with the trendy headlines like "Microsoft Wins Again," "Two Strikes for Eolas," and "USPTO Close to Rejecting Plug-in Patent."  Rose correctly notes that the Examiner accepted Eolas arguments that prior art submitted by WC3 did not invalidate the patent at issue. 

Doyle's attorney, Martin Lueck, said Eolas and the University of California are "very pleased" that the examiner accepted their arguments.

The examiner wrote that Eolas' rebuttal to his office's previous rejection of the patent's claims "has been fully considered and is deemed persuasive."

Eolas is not out of the water -- the Patent Examiner was able to discover three more references and argue that the combination of those references rendered the Eolas patent obvious.  Eolas must now respond to this new rejection. I was quoted in the article as saying that Eolas is in a "fairly good position." 

-- Dennis Crouch

USPTO: Inter Partes Reexaminations

Acushnet, the maker of Cobra golf clubs and Titleist balls has requested an inter partes reexamination of Taylor Made Golf Company's patent no. 6,623,378.  In the proceedings, Acushnet will argue that Taylor Made's golf club patent should be held invalid over prior art.

Starting Industrial has also requested an inter partes reexamination of Kioritz Corporation's patented rope recoil starter for an internal combustion engine (U.S. Patent No. 6,588,390).

Link.

 

 

Federal Circuit: A hairbrush has no more relation to a toothbrush than does hair resemble teeth

 

In re Alberto Lee Bigio (Fed. Cir. 2004)

Bigio's patent application claims a hair bursh with an "hourglass configuration for both the bristle substrate and the overall bristle array."  (Patent Application Serial No. 09/451,747).  After receiving obviousness rejections from the Examiner and the BPAI, Bigio pursued his claims at the Federal Circuit. Some of the cited references were designed for use on animals rather than human hair, and Bigio argued that they should not apply because non-human hair brushes where excluded from the patent scope by language in the specification.

[T]he Board rejected Bigio's interpretation of "hair brush" as limited to brushes only for scalp hair.  Instead, the Board broadly construed "hair brush" to encompass "not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal bodies (e.g. human facial hair, human eyebrow hair, or pet hair)." 

On appeal, the Appellate Panel (RADER, J.) affirmed, finding that the Board correctly declined to import limitations on terms from the specification.  Next, the Panel found that a toothbrush was an analogous art -- and thus could form a basis of an obviousness rejection.

[I]t is necessary to consider ‘the reality of the circumstances’ – in other words, common sense – in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.”  In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) [].  Accordingly, the examiner and the Board must consider the “circumstances” of the application – the full disclosure – and weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor. ...

[T]he Board applied the test for analogous art in keeping with the counsel of this court's predecessor:  "The differences are mere change of size and substitution of material of the most obvious kind, on a par with the differences between a hairbrush and a toothbrush."  In re Wolfe, 251 F.2d 854, 856 (CCPA 1958). Thus, on this record, this court affirms the findings of the Board and upholds its traditional tests for determining the scope of prior art analogous to the claimed invention.  

In Dissent, Judge Newman argued that the toothbrush should not be considered a 103(a) reference.

The toothbrush art is not analogous to the hair brush art.  Bigio's patent application is directed to a hair brush, and his claims are limited to a hair brush. 

Newman concluded with the money quote: "A brush for hair has no more relation to a brush for teeth than does hair resemble teeth."

 

 

Federal Circuit: Koito Manufacturing v. Turn-Key-Tech (Patent Case)

 

Koito Manufacturing v. Turn-Key-Tech (Fed. Cir. 2004) (PDF).

 

In February 2002, Koito brought a declaratory judgment action against Turn-Key, requesting that Turn-Key's patent covering an injection molding technique be declared invalid, unenforceable, and not infringed. (U.S. Patent 5,045,268). The Jury issued a special verdict finding the patent invalid for lack of enablement, written description, and the addition of new matter. Additionally, the Jury found that the patent was not infringed and that several claims were anticipated and obvious. After the verdict, however, the district court judge granted in-part Turn-Key's JMOL.  On appeal, the Federal Circuit affirmed-in-part and remanded.  The Appellate Panel held that Koito had not met its burden of showing non-enablement, lack of written description, impermissible new matter, anticipation, or obviousness.

 We affirm (1) the jury’s verdict that Koito did not infringe the ’268 patent and (2) the district court’s grant of a JMOL with respect to the jury’s finding that the ’268 patent was not enabled, did not meet the written description requirement, and impermissibly added new matter.  However, we vacate the district court’s denial of Turn-Key’s JMOL with respect to anticipation and obviousness.  On remand, the district court should evaluate the evidence proffered by Koito ... to determine whether the jury’s verdict of anticipation and obviousness was adequately supported.

Affirmed-in-part, Vacated-in-part, and Remanded.

 

Update:

The unanimous decision, which was returned by a three-judge panel on Monday, August 23, upheld an April 2003 jury verdict in the same case.  As in this case, the court found that the manufacturing process Koito used to mold plastic tail light lenses in no way infringed on a patent for another process that was held by Turn-Key-Tech. (LINK)

Court: FDA's Role is Not to Analyze Patent Claims

Alphapharm PTY v. Tommy G. Thompson (Secretary of HHS) (D.D.C. 2004) (CA 03-2269).

 

By Mark Chael

Recently, the District Court in Washington, D.C. agreed with the Federal Circuit, the Fourth Circuit, and a District Court in Maryland by determining that the listing of patents in the Orange Book by the Food and Drug Administration (FDA) is merely “a ministerial act” and that the Hatch-Waxman Act does not require the FDA “to police the listing process by analyzing whether the patents listed by NDA (New Drug Application) applicants actually claim the subject drugs or applicable methods of using those drugs.”

 

In a case captioned, Alphapharm PTY Limited v. Tommy G. Thompson, the court reasoned that substantive patent analysis is beyond the expertise of the FDA and is a function they are not mandated to perform.  Rather, substantive patent analysis is better left with the U.S. Patent and Trademark Office. The function of the FDA, on the other hand, is to assure the safety and availability of useful pharmaceutical compounds.  The laws and regulations that govern the FDA, in particular those laws and regulations that govern the listing of patents in the Orange Book, “commit the resolution of disputes between ANDA (Abbreviated New Drug Application) applicants and patent holders regarding the validity or correctness of the listed patent information to actions between ANDA applicants and patent holders, rather than to FDA action.”

Note: This is the first post by patent attorney Mark Chael, PhD.  Mark's prior research in biochemistry, molecular biology, and cellular biology make him well equipped to understand the intricacies involved in biotech and pharmaceutical patents. He is an associate at the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff in Chicago. [Brief Biography]

ITC Issues Order to Stop Importation of Unlicesed Viagra Imitations

In the Matter of Certain Sildenafil (International Trade Commission) (Inv. No. 337-TA-489).

Pfizer brought this complaint against 15 companies that were importing forms of Viagra (sildenafil citrate) that infringed its patent.  (U.S. Patent No. 5,250,534).  In its decision, the ITC issued a general exclusion of such importation.  The Commission found that the general exclusion was necessary because of the difficulty in identifying the source of the infringing products and because of the ease that sellers can mask or change their identity by operating over the Internet.

Pfizer has demonstrated that suppliers of infringing products could readily mask their identity or be replaced by other suppliers. Further, Pfizer has shown that there is a pattern of violation of section 337 and that it is difficult to identify the source of infringing products. As Pfizer has noted, eleven defaulting respondents have been found to be in violation of section 337. Pfizer has also shown that it is difficult to identify the source of infringing products, many of whom deal directly with U.S. customers over the Internet and can readily mask or change their identity.

Further, the Commission considered it important that Pfizer has established a strong market for its product and that foreign manufacturers can easily copy the pharmaceutical.

Comment: A General Exclusion Order is a broad remedy issued by the ITC that is directed to any article that infringes the patents-in-suit, rather than just those of the named respondents. Therefore, the exclusion applies to parties that were not part of the ITC proceedings. 

Download PDF of Decision.

Grokster not liable

In an extremely well written opinion by Judge Thomas of the 9th Circuit, the appellate court found that Grokster is not liable for the peer-to-peer swapping of copyrighted songs that occurs through its file-sharing software. 

In the context of this case, the software design is of great import. As we have discussed, the software at issue in Napster I and Napster II employed a centralized set of servers that maintained an index of available files. In contrast, under both StreamCast’s decentralized, Gnutella-type network and Grokster’s quasi-decentralized, supernode, KaZaa-type network, no central index is maintained. Indeed, at present, neither StreamCast nor Grokster maintains control over index files. As the district court observed, even if the Software Distributors “closed their doors and deactivated all computers within their control, users of their products could continue sharing files with little or no interruption.” Grokster I, 259 F. Supp. 2d at 1041. Therefore, we agree with the district court that the Software Distributors were entitled to partial summary judgment on the element of knowledge. [Because knowledge is a required element of contributory copyright infringement, Grokster could not be held liable.]

NOTE: This does not mean that individual users will not be held liable for copyright infringement using Grokster.

The opinion is rather short and easy to read: Opinion in PDF format.  Give it a go. Update: More information from the INDUCE Act Blog.

Pear-to-Pear communication:

Federal Circuit: Utica Enterprises v. Federal Broach and Machine

Utica Enterprises v. Federal Broach and Machine (Fed. Cir. Aug. 19, 2004) (nonpublished opinion).

Utica sued Federal Broach for infringement of its patented metal finishing process, known as "broaching." (U.S. Patent No 6,256,857).  After construing the claims in a Markman hearing, the Michigan district court entered summary judgment of non-infringement for Federal Broach.

Utica appealed the judgment, arguing incorrect claim construction. The Federal Circuit (LOURIE, J) held that the court unduly limited claim terms, and thus vacated and remanded.  Mayer, CJ, dissented without opinion.

Poster Presentation at Conferences Constitutes 102(b) Printed Publication

In re Klopfenstein and Brent (Fed. Cir. 2004) (three day poster presentation at academic conference without any paper distribution or indexing was a printed publication under 102(b)).

More than one year prior to filing their application, the inventors of a new method of peparing foods using extruded soy fiber presented a poster presentation at two academic conferences (for a total of less than 3 days).  No copies of the presentation were distributed.  The Patent Examine rejected the claims as anticipated by the prior publication.  The applicants did not dispute that the presentation fully disclosed the invention.  Rather applicants argued that the presentation was not a prior art publication under 35 USC 102(b).

The only question in this appeal is whether the Liu reference constitutes a "printed publication" for the purposes of 35 U.S.C. § 102(b).  As there are no factual disputes between the parties in this appeal, the legal issue of whether the Liu reference is a "printed publication" will be reviewed de novo.

The Appellate Panel affirmed the rejection holding that  distribution or indexing is not required of printed publications. 

The reference itself was shown ... to members of the public having ordinary skill ... Those members of the public were not precluded from taking notes or even photographs of the reference.  And the reference itself was presented in such a way that copying of the information it contained would have been a relatively simple undertaking for those to whom it was exposed-particularly given the amount of time they had to copy the information and the lack of any restrictions on their copying of the information.  For these reasons, we conclude that the Liu reference was made sufficiently publicly accessible to count as a "printed publication" under § 102(b).

Federal Circuit: Fisher-Price v. Safety 1st

Fisher-Price v. Safety 1st (Fed. Cir. 2004) (not citable as precedent)

Fisher-Price is the assignee of several patents on baby items, such as carriers, strollers and bassinets.  (e.g., U.S. Patent No. 6,274,755).  Fisher-Price sued Safety 1st for infringement and won a jury trial.  The district court denied Safety 1st's JMOL motion on validity, infringement, and the period of damage recovery.  Safety 1st appealed.

The Federal Circuit affirmed, finding that the patents were valid and infringed.  Ironically, the only modification to the district court's order was to expand the scope of damages in Fisher-Price's favor.

Frivolous arguments over FJC patent video

Just a snippet of this case out of Iowa: Engineered Products v. Donaldson Co. (N.D. Iowa 2004)

Donaldson was found liable for infringement of Engineered Product's patent on a mechanical air filter. (U.S. Patent No. 4,445,456).  In a post trial argument, Donaldson's attorneys argued that the patent law videotape prepared by the Federal Judicial Center, which was intended to provide potential jurors with an introduction to patent law should not have been shown during jury selection.  The judge was not happy with this argument:

While the undersigned has been restrained in his ten years as a federal district court judge about characterizing any party’s argument as “frivolous,” Donaldson’s argument concerning use of the videotape is one of the rare ones for which the undersigned can find no other characterization. Zealous representation at times requires judicious determination of which arguments are worth advancing or preserving, and which are not, or the credibility of even meritorious arguments may be called into question by the assertion of meritless ones.

Donaldson announced that it intends to "vigorously challenge the judgment and will appeal the decision to the Federal Circuit Court of Appeals."  The appeal will likely be on other grounds.  The patent expired in 2001, but EPC was suing for past damages.

Federal Circuit: Linear Technology v. Impala Linear and Maxim Integrated

Linear Technology v. Impala Linear and Maxim Integrated (Fed. Cir. 2004)

After losing an appeal last month, Maxim filed a request for an en banc rehearing.  Although the court denied the petition to rehear, it did issue a substitute opinion in the case.

Summary:

Because genuine issues of material fact have been raised concerning Maxim’s contributory infringement or inducement, we vacate the district court’s summary judgment of no contributory infringement or inducement of the current reversal method claims of the ’178 patent.  Because Maxim failed to raise a genuine issue of material fact, the matter of inventorship was amenable to determination on summary judgment on the undisputed factual premises.  On these premises, the district court correctly held that Vinsant was not a joint inventor of the ’178 patent.

As in the prior opinion,the court found error in the district court's claim construction.  Vacated-in-part, affirmed-in-part, and remanded.

Read the original federal circuit opinion.

Federal Circuit: In re WILHELM ELSNER

In re WILHELM ELSNER (Fed. Cir. 2004)

German plant breeder William Elsner filed for a plant patent on his new variety of geraniums.  After receiving a 102(b) rejection from the Examiner that was affirmed by the BPAI, Elsner appealed to the Federal Circuit.

The Appellate Panel vacated and remanded.

We agree that the publication of the (international) applications coupled with foreign sales of the plants may constitute a §102(b) bar to patentability.  However, because the record is silent on the extent to which the foreign sales were known to the public, and because the Board did not adequately address the degree to which availability of the plants through foreign sales enabled the preparation of the claimed plants, we vacate the Board’s decisions in both cases and remand for further proceedings.

Public Use Evidence Required: Aspex Eyewear v. Concepts in Optics

Aspex Eyewear v. Concepts in Optics (Fed. Cir. August 12, 2004) (not citable as precedent).

Aspex sued Concepts for infringement of its patented technology that covers a magnetically attachable auxillary lens for eyeglasses. (U.S. Patent No. RE 37,545 E). The district court granted summary judgment for the defendant based on a finding of invalidity under 35 USC 102 -- finding that another person had invented the claimed eyeglasses before the critical date.

On appeal, the Appellate Panel reversed and remanded for two primary reasons:

1) drawings relied upon by the district court were not "printed publications" because there was no evidence of public availability; and
2) the testimony of prior public use (or "known ... by others") was not incontestable on summary judgment.

ITC: Plastic Bag Import Restrictions

The International Trade Commission (ITC) has issued a general exclusion order prohibiting the unlicensed entry of plastic grocery and retail bags that infringe Superbag's patented technology. (U.S. Patent No. 5,188,235). The Commission also determined that "public interest factors" do not preclude the issuance of the exclusion order.

Superbag had filed a complaint against four parties:

Thai Plastic Bags of Thailand; Hmong Industries of St. Paul, Minnesota; Spectrum Plastics of Cerritos, California; and Pan Pacific Plastics of Union City, California.

Read the full order here.
Thanks to IP-Updates for the link.

Federal Circuit: In Re David Wallach

In re David Wallach (Fed. Cir. 2004).

By Donald Zuhn

In an appeal from a decision of the PTO Board, the Federal Circuit affirmed the rejection of claims directed to isolated DNA molecules encoding TNF binding protein II (TBP-II) under the written description requirement of 35 U.S.C. § 112.

Appellants had purified TBP-II from urine and determined (a) the amino acid sequence of an N-terminal portion of the protein, (b) the protein’s molecular weight, and (c) that the protein inhibited TNF activity. Appellants then pursued, in separate divisional applications, claims directed to proteins having the partial sequence, molecular weight, and inhibitory activity described and claims directed to isolated DNA molecules encoding such proteins. The DNA claims were rejected under § 112 as lacking an adequate written description in the specification. Appellants appealed to the Board, which affirmed.

Appellants asserted that because the PTO had effectively conceded that claims to the TBP-II protein were adequately described in the specification, the claims to isolated DNA molecules encoding the TBP-II protein were therefore adequately described in the specification. Specifically, Appellants argued that because the complete amino acid sequence of a protein is an inherent property of an isolated, fully characterized protein, and the determination of a protein’s complete amino acid sequence puts one in possession of all DNA sequences encoding that protein (as a result of the unequivocal correspondence between amino acids and DNA codons in the genetic code), Appellants’ full characterization of TBP-II (i.e., determination of its N-terminal amino acid sequence, molecular weight, and inhibitory activity) demonstrated possession of all DNA sequences encoding TBP-II. The PTO countered that because Appellants’ specification included neither the complete amino acid sequence of TBP-II nor any actual DNA sequence, and disclosed the sequence of only ten of the 185-192 amino acids that make up TBP-II, Appellants had not demonstrated possession of all DNA sequences encoding TBP-II.

The Court noted that while “the state of the art has developed such that the complete amino acid sequence of a protein may put one in possession of the genus of DNA sequences encoding it,” Appellants had not disclosed the complete amino acid sequence of TBP-II, but rather, had provided only a partial sequence of the protein. In addition, the Court concluded that Appellants’ possession of TBP-II “says nothing about whether they were in possession of the protein’s amino acid sequence [since] Appellants have not provided any evidence that the full amino acid sequence of a protein can be deduced from a partial sequence and the limited additional physical characteristics that they have identified.” With respect to the DNA claims at issue, the Court determined that absent a description of the complete TBP-II amino acid sequence or any evidence of a “known or disclosed correlation between the combination of a partial structure of a protein, the protein’s biological activity, and the protein’s molecular weight, on the one hand, and the structure of the DNA encoding the protein on the other,” the Board’s decision to affirm the rejection of Appellants’ DNA claims was proper.

NOTE: This is the first post by patent attorney Donald Zuhn, PhD. Don is a true expert in cutting edge biotech patent law and practices both prosecution and litigation at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. [Brief Biography].