August 20, 2009; Precedential

Sky Technologies, Llc. v. Sap Ag (link)

Fed. Cir. held that: (i) patent assignments can be only done by writing because of statutory section 35 U.S.C. section 261; (ii) ownership of a patent can be transferred in ways other than an "assignment;" and (iii) under Massachusetts law, naming a patent as a security interest will transfer ownership when the secured party needs to recover for a default.

QUESTIONS: Could an oral "assignment" of a patent work a transfer of ownership in equity notwithstanding section 261? Would it matter whether the oral "assignment" is supported by good and valuable consideration? Would state law, or more precisely state equity practice, matter?

August 11, 2009; Precedential

Hyatt v. Acting Director, Patent and Trademark Office (link)

Case about evidence rules in civil suits brought under 35 U.S.C. section 145 to obtain allowance of a patent application from a district court when the Patent Office refuses to allow the application.

COMMENT: The pro-patent, pro-applicant dissent by Judge Moore(!) was somewhat surprising and encouraging to me.

August 4, 2009; Non-Precedential

Taylor v. U.S. Patent and Trademark Office (link)

Pro se patentee underpaid a patent maintenance fee by $10. The Patent Office accepted the payment, but considered the patent as expired for failure to pay the maintenance fee. Importantly, the Patent Office did not notify the pro se patentee that the maintenance fee payment was considered insufficient despite the fact that the MPEP includes a procedure for notifying about maintenance fee payments that have not been accepted. Pro se patentee did not find out that his patent was considered expired until three years later when he went to pay the next maintenance fee. The Patent Office refused to accept payment of the later maintenance fee because it considered the patent to be expired and also refused to let the pro se patentee reinstate his patent by paying the $10 that was underpaid on the previous maintenance fee payment.

Fed. Cir. held that the Patent Office did not act in accordance with applicable administrative law because its actions were "arbitrary and capricious" for the following reasons: (i) Patent Office did not send the patentee any notification that his first attempted maintenance fee was not accepted; and (ii) Patent Office suggested that if it was forced by Fed. Cir. to accept late payment of the first underpaid maintenance fee payment then it would proceed to consider the patent expired for failure to timely pay the subsequent maintenance fee for which it had refused payment. As a remedy for the administrative law violation, Fed. Cir. ordered the Patent Office to reinstate the patent upon payment of all maintenance fees owing.

COMMENT: Fed. Cir. really stood up to the Patent Office here. This goes against the trend of deference to the Patent Office that has been going on for many years now.

July 27, 2009; Non-Precedential

In Re Reiffin Family Trust (link)

Many computers, especially older computers, work on only one task at a time. As it operates over time, the one-task-at-a-time type computer will switch between tasks. Reiffin filed a series of patent applications related to control of computers, and, more specifically, control of the way computers switch between tasks. The relevant portion of Reiffin's patent application filings is as follows: (i) original application in 1982; (ii) first continuation in 1990; (iii) second continuation in 1994; and (iv) reexamination application in 1998 or later. This Fed. Cir. case is an appeal of holdings by the Patent Office in the reexamination application which were adverse to Reiffin.

The main issue in the reexamination was how far back through his series of applications Reiffin could claim priority with respect to a concept called "multithreading." Fed. Cir. interpreted the term "multithreading" narrowly and decided that the disclosures of the original application and the first continuation did not disclose anything that could properly be considered as "multithreading" under a narrow construction that Fed. Cir. gave that term. Therefore, the claims of the reexamination were only entitled to a relatively late priority date, and were invalid over intervening prior art that came into existence between the earlier filings and the later one.

COMMENT: In a sense, Reiffin was too far ahead of his time. All the way back in 1982, he predicted, at least to some extent, that more sophisticated methods of switching between computer tasks was going to become an important innovation. However, it seems that his ideas were not really ready for a juicy patent lawsuit until more than ten years after he came up with his ideas. I think of Reiffin, and others like him, as a type called the ten-years-ahead-of-his-time inventor. The continuation system in place in the U.S. up until June 1995, with its facilitation of "submarine applications," was quite generous to the ten-years-ahead-of-his-time inventor. Since then, the U.S. patent system has become more hostile to the ten-years-ahead-of-his-time inventor. One can see this in the pejorative name "submarine application." One can see this in the repeated bashing by the patent bench and bar of another famous inventor named Lemelson. And now, in this present opinion, one can see the hostility to the ten-years-ahead-of-his-time inventor in the way Fed. Cir. performed its claim interpretation and written description requirement analyses.

QUESTIONS: Why is Fed. Cir. hostile to the ten-years-ahead-of-his-time inventor? Should it be hostile to the ten-years-ahead-of-his-time inventor?

A COUPLE OF LOADED QUESTIONS: In the KSR case, the Supreme Court spoke of the obviousness of "mere application of a known technique to a piece of prior art ready for the improvement." If the patent system is supposed to encourage inventors to figure out improvements early in time, before the prior art would even be considered as "ready for improvement," then isn't it counterproductive to use other portions of the patent law, like patent term law, claim interpretation, the enablement requirement law and the written description requirement to thwart the ten-years-ahead-of-his-time inventor at every turn? Is the U.S. patent system becoming a sort of catch-22 where every putative inventor is either: (i) too late in time and, hence, obvious, or (ii) too early in time and, hence, invalid for a whole host of other reasons?

STILL ANOTHER QUESTION: If Reiffin had never been born, when would multithreading have caught on as a popular computer control technique?

July 27, 2009, Precedential

Blackboard, Inc. v. Desire2learn, Inc. (link)

Fed. Cir. held certain patent claims invalid for indefiniteness because: (i) the claims included means-plus-function claim language; and (ii) the specification did not include sufficient structure to support the means-plus-function claim language.

COMMENT: The usual standard for determining whether a patent claim is indefinite is whether it is "insoluably ambiguous." This usual standard is pretty difficult to meet, and it is therefore usually difficult to show that a patent is invalid. However, when dealing with means-plus-function claim language, the "insoluably ambiguous" standard does not seem to be used or even mentioned, as in this case. In this case, the standard used for determining whether the means-plus-function claim language was sufficiently definite was: "adequate disclosure of what is meant by [the means-plus-function] language." (quoting In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994)). This standard seems to be easier to meet -- that is, it seems to be easier to show indefiniteness under this standard, apparently because 35 U.S.C. 112, paragraph 6 affirmatively requires that "structure" be shown in the specification, and this results in a heightened definiteness requirement.

CRITICISM: It is not immediately clear why 35 U.S.C. 112, paragraph 6 implicates the definiteness statute (35 U.S.C. 112, paragraph 2). here is what 35 U.S.C. 112, paragraph 6 says:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

If the claim fails not to disclose the covered structure, then it is not indefinite as to what the covered "corresponding structure" is. Rather, in that situation it is clear and definite and manifest that the "corresponding structure" is simply absent, a null set, empty, nothing. A null set is is not an indefinite thing, but rather an extremely definite thing. The indefiniteness statute, 35 U.S.C. 112, paragraph 2 would be met just fine.

Now, while the indefiniteness statute would be met under this statutory interpretation, the means-plus-function claim, under the terms of 35 U.S.C. 112, paragraph 6, is left with a zero scope of coverage. Nothing can infringe because no real world structure would meet the means-plus-function claim language because "corresponding structures" for that claim language is still a null set. The problem of no "corresponding structure," which Fed. Cir. has chosen to tackle with indefiniteness law, might better be handled with means-plus-function claim interpretation law and infringement law.

If the problem of "no corresponding structure" were handled using means-plus-function law, instead of indefiniteness law, then is the means-plus-function claim with zero scope invalid for having no scope? If so, why? Failure to meet 35 U.S.C. 112, paragraph 6 itself? If the zero scope claim is still valid, it does not seems that it should accorded any section 112 equivalents because that would amount to an end run around the statute. What about doctrine of equivalents style equivalents, though?

June 25, 2009, Non-Precedential

In Re Mettke (link)

Patent Office denied a reissue application on obviousness grounds. On a pro se appeal to Fed. Cir., applicant argued that his patent had been cited a lot by other patents (specifically 93 times), and that this large number of citations was secondary evidence of non-obviousness. Fed. Cir. decided that even if the number of citations could be considered as secondary evidence of non-obviousness, the strength of the secondary evidence in this particular case was not strong enough to rebut the strong prima facie showing of obviousness made by the Patent Office. Fed. Cir. declined to decide whether number of citations is generally good secondary evidence of non-obviousness.

COMMENT: This case seems to suggest the possibility that citation in other patents might be a new kind of secondary evidence of non-obviousness. Nice creative lawyering by the pro se appellant! Will be interesting to see whether big-time patent litigators follow up on this new thread.

5 June 2009, Precedential

Larson v. Correct Craft, Inc. (link)

Inventor brought various state law claims against his ex-employer because he believed that: (i) he was tricked into assigning his rights in a patent application to his then-employer; and (ii) his named co-inventors were not really co-inventors. The ex-employer removed to federal court on the theory that certain claims amounted to claims to correct inventorship under 35 U.S.C. section 256, meaning that there existed federal question jurisdiction. Fed. Cir. decided that the inventor had no standing to bring a 35 U.S.C. section 256 claim because: (i) he has no financial interest in being named sole inventor (unless and until his assignment to the ex-employer is rescinded); and (ii) the inventor did not allege any reputational damage caused by not being named as sole inventor. Because there was no standing, there was no federal court jurisdiction and Fed. Cir. accordingly instructed that the case should be sent back to state court.

COMMENT: Fed. Cir. stated that it has not decided either way as to whether reputational damage, standing by itself, is sufficient to confer standing for an action to correct inventorship.

March 5, 2009, Non-Precedential

O2 Micro International Ltd. v. Taiwan Sumida Electronics, Inc. (link)

Patent case involving one patent directed to an electrical technology, specifically DC-AC converter circuitry. Fed. Cir. vacated the jury verdict and judgement of infringement for collateral estoppel reasons because Fed. Cir. decided that the same patent was invalid in a different case.

COMMENT: Should have been precedential to make it clear that a later finding of invalidity will effectively vitiate even a judgement rendered before the invalidity finding.

QUESTION: What would have happened if the accused infringer in this case had already paid the judgement? Do they get their money back?

March 5, 2009, Precedential

Nartron Corp. v. Schukra U.S.A., Inc. (link)

Patent case involving one patent directed to an electrical and mechanical technology, specifically automobile seats with massage functionality. On an inventorship issue, Fed. Cir. decided that a putative co-inventor could not be considered a co-inventor because his contribution was a suggestion that other inventive aspects be combined with features well-known in the relevant area of technology.

March 5, 2009, Precedential

Monolithic Power Systems, Inc. v. O2 Micro International Ltd. (link)

Patent case involving three patents directed to electronics technology, specifically DC/AC converter circuitry. On a Constitutional / evidence issue, Fed. Cir. decided that the testimony of a court appointed expert for a jury did not deprive the patentee of its right to a jury trial under the Seventh Amendment because: (i) Congress did not see this as a Constitutional problem when drafting FRE 706 (allowing for this kind of expert testimony); and (ii) the jury did not fully go along with the expert's opinions.

On several obviousness issues, Fed. Cir. decided that the jury verdict of obviousness was sufficiently supported by the evidence.

QUESTION: Are FRE rules presumptively Constitutional?

COMMENT: Fun quote from the trial judge:

On the technical issues here . . . I find this extremely difficult to understand. And the notion that a jury is going to understand it, to me, is foolishness. You can talk for months and the jury isn’t really going to understand this in the sense of being able to make a reasoned, rational decision about it.
They will make a decision, we hope. Maybe they will hang because they’ll say that we can’t possibly understand this, but in my experience, they make a decision. But what is it based on? . . . It is kind of trial by ordeal or by sort of a champion, like a jousting contest rather than on the actual scientific merits of who is right and who is wrong.

February 24, Precedential

Eli Lilly and Co. v. Teva Pharmceuticals, USA (link)

Patent case involving one patent for a drug, specifically raloxifene (sold under the name EVISTA). Fed. Cir. decided that a thirty month stay under the Hatch-Waxman Act should be extended because the patent challenging party "recast" the drug it wanted to sell too close to the scheduled date of the Hatch-Waxman Act type trial.

February 24, 2009, Non-Precedential

Applied Medical Resources Corp. v. U.S. Surgical Corp. (link)

Patent case involving one patent directed to a medical device technology, specifically a trocar. On a means-plus-function claim interpretation issue, Fed. Cir. decided that only structures that perform the claimed function and are disclosed in the specification can be considered in determining what the means-plus-function literally covers, but that structures other than those necessary to perform the claimed function when determining the section 112, paragraph 6 equivalents.

COMMENT: Should have been precedential.

February 19, 2009, Non-Precedential

Pivonka v. Axelrod (link)

Patent interference case involving an issued patent and an application directed to a mechanical technology, specifically collapsible pet carriers. On an interference issue, Fed. Cir. decided that objections to the existence of proper grounds for the interference was waived for not being timely raised during the interference proceeding at the Patent Office.

On an obviousness issue, Fed. Cir. decided that the claims at issue were obvious because: (i) one of ordinary skill in the art would have "recognized the benefits" of the claimed collapsible pet carrier structure; and (ii) "a person of ordinary skill in the art would have had no difficulty in building" the claimed structure.

COMMENT: Seems like another case of design work in a "quotidian technology" being automatically deemed obvious. So far as I know, "quotidian technology" is my coinage. What I mean by "quotidian technology" is a subset of the predictable arts wherein the particular technology is something within the realm of everyday, common life.

February 13, 2009, Non-Precedential

Contec Stormwater Solutions v. BaysaverTechnologies (link)

Patent case involving a single patent directed to a mechanical technology, specifically a storm drain water filtration system. On a claim interpretation issue, Fed. Cir. decided that the word "wall" required a generally vertical structure. On another claim interpretation issue, Fed. Cir. decided that "water permeable" requires a porous material and not a water proof material with discrete openings defined therein.

On a business tort issue, Fed. Cir. decided that there was no business tort because: (i) a business tort based on a patent infringement claim requires both bad faith and objective baselessness; and (ii) the accused infringer did not show objective baselessness of the patent infringement claim. Fed. Cir. explained that objective baselessness means that "no reasonable litigant could realistically expect success on the merits" of the patent infringement claim.

February 13, 2009, Precedential

Revolution Eyewear v. Aspex Eyewear (link)

Patent case involving one patent directed to a mechanical technology, specifically eyeglasses. In the case, a patent infringement suit had been ongoing, and the patentee issued a covenant not to sue on the eve of trial, in an apparent attempt to avoid a jury trial on invalidity and unenforceability issues. The accused infringer wanted to keep the lawsuit going using its declaratory judgement counterclaims. On a declaratory judgement issue, Fed. Cir. decided that the the case-or-controversy requirement was met under the legal standards of MedImmune because: (i) the covenant not to sue did not extend past the proposed dismissal of the ongoing lawsuit; and (ii) the accused infringer had plans to resume selling the accused infringing eyeglasses; and (iii) the accused infringer had inventory of the accused infringing eyeglasses that it was ready to sell.

February 13, 2009, Precedential

Line Rothman v. Target (link)

Patent case involving one patent directed to a mechanical technology, specifically brassiere type garments. On an obviousness issue, Fed. Cir. decided that the patent was obvious, despite the fact that the expert of the accused infringer admitted that he had not appreciated any need for the patent's garment product in the relevant timeframe and that the patent's product was not "imaginable" to him. Fed. Cir. found that the fact that the inventor stitched together the first version of the patent's product by selectively cutting and sewing together a couple of pre-existing and widely available garments supported a conclusion of obviousness because this method of invention showed "the predictability and expectations in this field of art." With respect to the affect of predictable versus unpredictable art classification on the issue of obviousness, Fed. Cir. stated:

To the contrary, this invention falls into a very predictable field. In the predictable arts, a trial record may more readily show a motivation to combine known elements to yield a predictable result, thus rendering a claimed invention obvious. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1731, 1740-41 (2007) (listing “the effects of demands known to the design community or present in the marketplace” and “the background knowledge possessed by a person having ordinary skill in the art” as variables central to any obviousness analysis).

On an inequitable conduct issue, Fed. Cir. decided that there was no inequitable conduct because the uncited prior art had not been sufficiently known to the team prosecuting the patent for them to know whether it was material prior art. More specifically, they received letters saying that there was a similar design out there, but no photograph, sample, patent document, description or other information about the allegedly similar design. Given the scarcity of information, there was no need to investigation further on the part of the patent prosecution team.

On another inequitable conduct issue, Fed. Cir. decided that certain statements made by the prosecuting attorney were not considered as a representation that the patent attorney was an expert in the field, but rather as routine and expected attorney argument.

QUESTIONS: The accused infringer's expert was of ordinary skill in the art, but did not see the need for the patent's product at the time of filing and did not think of it. Still, Fed. Cir. found that this evidence could not show that one of ordinary skill would have lacked the motivation to make the invention. Given this, what evidence could a patentee possibly put forward to show that one of ordinary skill in the art would not have found the invention obvious? Does what those of ordinary skill in the art think others of ordinary skill in the art would have thought obvious somehow matter more than what those of ordinary skill in the art did think was obvious? Does what Fed. Cir. think those of ordinary skill in the art would have thought was obvious matter more than what those of ordinary skill in the art did think obvious? Would the patentee have won on obviousness if she had brought forward a hundred witnesses of ordinary skill in the art and they all testified that they were not even close to thinking of the patented idea? How about a thousand?

MORE QUESTIONS: If this idea that the predictable arts are generally obvious consistent with the fact that lots of predictable arts patents were granted both before and after the 1952 obviousness statute was enacted by Congress? If patenting predictable arts was a big red flag for obviousness (as it seems to be in this case), then wouldn't the statute have mentioned this? Wouldn't the Supreme Court have mentioned this in Graham in 1966? More broadly, is the idea that predictable arts patents are generally obvious consistent with the whole history of patents in the United States?

February 10, 2009, Non-Precedential

Kuhl Wheels, LLC v. General Motors, Corp. (link)

Patent case involving two patents directed to a mechanical technology, specifically steel wheels for vehicles. On a claim interpretation issue, Fed. Cir. decided that "spokes" must be "spaced apart radially." Under this claim interpretation there was no infringement.

February 9, 2009, Precedential

Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc. (link)

Patent case involving one patent directed to a mechanical technology, specifically candle holders.  On a claim construction issue, Fed. Cir. decided that the claim term "to seat" did not require engagement between the seated component and the component upon which it is seated.  

On an obviousness issue, Fed. Cir. decided that the claims at issue were obvious reasoning that the technology involved was something that an ordinary layperson of ordinary intelligence could understand, and that because an ordinary layperson of ordinary intelligence could implement the claimed candle holder device, there was therefore motivation to combine the prior art references under KSR.

On an infringement issue, Fed. Cir. found that there was no direct infringement because the claim required a configuration of the candle holder that would be set up by the end user (that is candle cover used as candle stand), but did not cover the configuration in which the defendant shipped out the product (that is, candle cover used as cover).

COMMENT: The idea that anything a person of ordinary skill can implement is obvious is a troubling one. I can swallow a fly, but I am not going to. Obviousness should be about what people are likely to do, and not what they can do.

QUESTION: If an ordinary people could have made the patented product in this case (and generations of people probably could have made it going back fifty or even one hundred years), then why hadn't they? Doesn't the fact that so many people failed to do what they could have done strongly suggest non-obviousness?

February 6, 2009, Non-Precedential

Smith v. CHF Industries, Inc. (link)

District court decision on design patent infringement vacated because of the recent new law of the Egyptian Goddess case.

February 2, 2009, Precedential

Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc. (link)

Patent case involving two patents directed to medical device technology, specifically a device for applying negative pressure to the body to promote healing. On a claim interpretation issue, Fed. Cir. decided that the district court's failure to instruct the jury on the meaning of the word "wound" was harmless error. More specifically, patentee wanted to limit the scope of the word wound to skin wounds and not wounds inside the body in order to avoid certain prior art references. Fed. Cir. agreed with patentee that the term "wound" should have been so limited. However, because the jury, acting without judicial interpretation with respect to the disputed term "wound," did not find the claims to be obvious, a proper instruction defining the word "wound" as the patentee proposed would not have changed anything.

On an obviousness issue, Fed. Cir. supported the jury finding of non-obviousness, primarily because the asserted prior art dealt with injuries inside of the body and not skin wounds.

On an indefiniteness issue, Fed. Cir. decided that certain claim terms were not indefinite because they were not "insolubly ambiguous."

On a direct infringement issue, Fed. Cir. supported the jury verdict of non-infringement because there was evidence to the effect that the accused infringing products did not have a screen to prevent overgrowth as required by the claims.

On an indirect infringement, Fed. Cir. decided that there was no indirect infringement because there was no direct infringement.

DISSENT: Judge Dyk dissented arguing that "wound" should have been construed broadly enough to cover injuries inside the body (for example, fistulas), and that under the correct interpretation, the claims are obvious over the asserted prior art.

January 30, 2009 Precedential

Sud-Chemie, Inc. v. Multisorb Technologies, Inc. (link)

Patent case involving one patent for a mechanical technology, specifically desiccant containers.  On an obviousness issue, Fed. Cir. vacated a summary judgement of obviousness because the applied prior art reference did not teach one of the claim limitations that the district court had held that it did.  Specifically, Fed. Cor. found that a limitation of using "compatible polymer" materials was not disclosed in the applied prior art reference.  Fed. Cir. also criticized the district court for failing to consider evidence on secondary considerations of non-obviousness, specifically unexpected results.

January 15, 2009, Precedential

Boston Scientific Scimed, Inc. v. Cordis, Corp. (link)

Patent case involving one patent directed to medical devices, specifically stents. On a claim interpretation issue, Fed. Cir. decided that "non-thrombogenic" means less thrombogenic than a stent coated for thrombogenicity purposes, and not necessarily less thrombogenic than a bare metal stent. This was because "non-thromogenic" was added to the claim during the prosecution history for purposes of distinguishing a stent coated to promote thrombogenicity. On another claim interpretation issue, Fed. Cir. decided that "long term" means longer than two weeks based on the certain teachings in the specification.

On an obviousness issue, Fed. Cir. decided that the claim at issue was obvious, explaining:

As we have explained, [the applied prior art reference] Wolff teaches all of the limitations of claim 8, and the record did not contain substantial evidence for the jury to conclude otherwise. The only qualification to this statement of fact is that all of the limitations are found in two separate embodiments pictured side by side in the patent, not in one embodiment. However, “[i]f a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” KSR, 127 S. Ct. at 1740. We agree with [the accused infringer] that one of ordinary skill in the art would have been motivated to combine the embodiment in figure 3B of Wolff with the embodiment in figure 4 of Wolff to arrive at a metal stent with two coating layers. Combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.

Fed. Cir. also noted that secondary considerations of non-obviousness do not overcome the prima facie case of obviousness established by the prior art. As far as the role of the court versus the role of the jury on obviousness, Fed. Cir. had this to say:

We are free to override the jury’s legal conclusion on the ultimate question of obviousness without deference. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1324–28 (Fed. Cir. 2008).

COMMENT: I thought Fed. Cir. did a good job establishing a motivation to modify here, and that was good to see.

COMMENT: In recent months, and as in this case, Fed. Cir. has been quite dismissive of secondary considerations of non-obviousness.

COMMENT: Not a lot of love for jury verdicts of non-obviousness.

January 13, 2009, Precedential

In Re Comiskey (link)

Appeal from the Patent Office involving one patent application directed to business methods and business software, specifically arbitration methods and software. On a procedural issue, Fed. Cir. decided that patentable subject matter issues under 35 U.S.C. section 101 should be decided prior to a determination of obviousness issues under 35 U.S.C. section 103.

On a patentable subject matter issue in this case, Fed. Cir. affirmed its earlier holding that certain method claims were not patentable subject matter under 35 U.S.C. section 101. On another patentable subject matter issue, Fed. Cir. decided that certain "system" claims including limitations in the form of "modules" might or might not be patentable subject matter, reversing an earlier Fed. Cir. holding (by this same panel) that these claims were patentable subject matter. The system claims were remanded to the Patent Office for a determination of whether or not they were patentable subject matter under the standards of 35 U.S.C. section 101.

January 13, 2009, En Banc

In Re Comiskey (link)

In a 2007 decision in this case, a Fed. Cir. panel issued an opinion on an appeal from the Patent Office in a patent application. The 2007 opinion: (i) declined to review the Patent Office's decision that the claims of the application were obvious; (ii) decided that the method claims of the application were not patentable subject matter under 35 U.S.C. section 101; and (iii) decided that the system claims of the application were patentable subject matter under 35 U.S.C. section 101. In this en banc order, Fed. Cir. remanded the case to the panel for the limited purpose of allowing the panel to revise the 2007 decision. Specifically, the panel is going to revise the holding that the system claims recite patentable subject matter under 35 U.S.C. section 101, and instead remand that determination back to the Patent Office. The order seems to assume that the panel, in its revisions, will not take up the obviousness issue and will not revise its holding that the method claims are unpatentable subject matter.

DISSENT: Judge Moore dissented that the original panel should have affirmed the obviousness holding, regardless of whether they took up unpatentable subject matter issues.

DISSENT: Judge Newman dissented that Fed. Cir. is incorrectly restricting the patentable subject matter statute 35 U.S.C. section 101, to the detriment of technological progress.

COMMENT: Judge Newman's dissent is yet another in her long line of great dissents.

January 12, 2009, Non-Precedential

Friskit, Inc. v. Realnetworks, Inc. (link)

Patent case involving (at least) two patents directed to software, specifically internet software for using a computer based media player. On an obviousness issue, Fed. Cir. decided that the claims at issue were obvious because key claim limitations were present in a prior art reference and because of "the state of the art at the time of the invention." Fed. Cir. also decided that the secondary considerations of non-obvious did not "overcome the strong prima facie showing of obviousness made in this case." With respect to evidence of copying by the infringer, Fed. Cir. stated:

[The patentee] introduced evidence that [the accused infringer] had copied its products after [the accused infringer] had been shown several live demonstrations of the [patentee's] products’ ability “to create playlists out of media search results” and to prioritize “catalogs of streaming media such as from Real’s content partners . . . within search results.” Copying by the accused infringer, however, has limited probative value in the absence of evidence of failed development efforts by the infringer, B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1583 (Fed. Cir. 1996); Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 317 (Fed. Cir. 1985), or of “more compelling objective indicia of other secondary considerations,” Ecolochem, Inc. v. S. Cal. Edison Co., 227 F.3d 1361, 1381 (Fed. Cir. 2000) (citing cases). As the district court noted, [patentee] failed to make such a showing, and it also failed to introduce sufficient evidence to show that the copied technology fell within the scope of the asserted claims. See Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1366 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1580-81 (Fed. Cir. 1995). The trial court therefore properly gave little weight to [the] evidence of copying.

COMMENT: While Fed. Cir. made it clear that certain key limitations were found in a certain prior art reference, called IUMA Radio, the opinion does not specify which claim limitations that IUMA Radio does not have. It is not clear why IUMA radio was not held to anticipate the claims in suit, although one gets the feeling that Fed. Cir. would have said if it did. Furthermore, the opinion cites to certain technologies, such as Javascript and ActiveX in a generalized way, but does not cite to specific prior art references explaining Javascript or ActiveX so that it can be determined whether there were reasons why these technologies might or might not have been applied in combination with IUMA Radio at the time the invention was made. Even more fundamentally, it is not even clear what specific features, if any, of Javascript and/or Active X Fed. Cir. was combining with IUMA Radio to establish its obviousness-based invalidity. In other words, not only is there no motivation to combine analysis, but there is no specific combination at least so far as I can tell from the opinion.

ANOTHER COMMENT: In light of the lack of a limitation by limitation breakdown as noted in the previous comment, it is interesting that Fed. Cir. still characterized the prima facie case of obviousness as "strong."

QUESTION: Did KSR effectively get rid of the need to do a limitation by limitation breakdown as part of obviousness analysis?

January 9, 2009, Non-Precedential

Tokyo Keiso Company v. SMC (link)

Patent case involving one patent directed to mechanical technology, specifically a fluid flow meter. Fed. Cir. decided that the claims at issue were obvious, on summary judgement, because: (i) most of the claim limitations were admitted prior art in the specification of the patent at issue; and (ii) the limitation not in the prior art could be found in another prior art flow meter reference. Specifically, the feature from the secondary reference was the use of an acoustic transmission line that transmitted sound at a speed slower than the metered fluid transmitted sound.

CRITICISM: This is another one of those cases where Fed. Cir. is apparently being careful not to apply the teaching-suggestion-motivation ("T-S-M") test while at the same time making it clear that the prior art did give a motivation to combine. More specifically, in this case, the secondary reference stated that it was better to make the acoustic transmission line out of a material that transmitted sound relatively slowly. Nevertheless, Fed. Cir.'s opinion seems to take pains not to rely on this fact, but rather on the fact that it would be an easy thing to implement the substitution in materials needed to meet the claim limitations. Because the motivation to combine references is right there, I think Fed. Cir. should have relied on it. I think that, even under KSR, the evidence that the substitution should be made is more probative and persuasive than evidence tending to show that the substitution could be made. That goes double for this case, where they are deciding obviousness (supposedly a common sense issue) by judge, rather than jury!

January 6, 2009, Precedential

Vehicle IP v. General Motors (link)

Patent case involving one patent directed to a wireless technology, specifically a mobile navigation system. On a claim interpretation issue, Fed. Cir. decided that the claim term "co-ordinates" means a set of at least two numbers (in other words, a vector) and does not include a single independent number (for example, a scalar). More specifically, Fed. Cir. came to this interpretation because all the examples in the specification had co-ordinates in the form of pairs of numbers and not single numbers.

DISSENT: Judge Mayer dissented that "co-ordinate" should be interpreted more broadly based on mathematical definitions of that term.

January 6, 2009, Non-Precedential

Panavise Products v. National Products (link)

Patent case involving one patent directed to a mechanical technology, specifically suction cup mounting devices. On a declaratory judgement issue, Fed. Cir. decided that the case or controversy requirement was not met and that there was therefore no jurisdiction. More specifically, Fed. Cir. stated that the fact that the patentee has never threatened infringement, or indeed communicated with the declaratory judgement plaintiff in any way, was not necessarily dispositive against meeting the case or controversy requirement, but it certainly did not help. Also, previous litigations brought by the patentee on the patent against other third parties were not against sufficiently similar products to meet the case or controversy requirement, at least in and of themselves.

On a frivolus appeal issue, Fed. Cir. stated:

Although the appeal can be viewed as very weak from both a factual and a legal stand point, we do not agree that it rises to the level of frivolousness. At the same time, we do note that this appeal approaches wasting the court’s time and unduly delaying more deserving litigants.

COMMENT: Should have been precedential.

December 30, 2008, Precedential

Accumed v. Stryker (link)

Patent case involving one patent for a medical device, specifically a bone screw. On a remedies issue, Fed. Cir. decided that permanent injunction was an appropriate remedy, stating the applicable law as follows:

Following eBay, a patentee must satisfy the well-established four-factor test for injunctive relief before a court may grant a permanent injunction:

(1) that [the plaintiff] has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.

547 U.S. at 391. We review a district court’s decision to grant a permanent injunction for abuse of discretion. Id. Abuse of discretion may be found on a showing “that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1379 (Fed. Cir. 2008) (quotation omitted).

More specifically, on the irreparable injury factor (1), Fed. Cir. stated that the fact that patentee had already granted two licenses to other third parties was relevant to analysis under the irreparable injury factor, but did not automatically mean that reasonable royalty damages were sufficient. On the public interest factor (4), Fed. Cir. stated that there were available non-infringing alternatives that would work well enough.

COMMENT: It is sort of funny that the patentee here was put in the position of arguing for the effectiveness of non-infringing products.

December 29, 2008, Order

In re TS Tech USA (link)

Patent case involving one patent for pivotable vehicle headrests. On a petition for writ of mandamus, Fed. Cir. issued order granting writ of mandamus requiring a Texas district court to transfer the case to an Ohio district court on 28 USC 1404 forum non conveniens grounds. More specifically, Fed. Cir. applied Fifth Circuit forum non conveniens law and decided for the transfer because: (i) plaintiff's choice of forum is accorded a limited amount of weight under Fifth Circuit law; (ii) convenience of witnesses and Fifth Circuit's related 100 mile rule; (iii) location of physical evidence (for example, the accused infringing headrests); and (iv) sales of accused infringing vehicles in a judicial district did not give rise to a public interest type consideration in favor of that district.

December 24, 2008, Precedential

Sundance, Inc. v. Demonte Fabricating, Ltd. (link)

Patent case involving one patent directed to a segmented covering system for truck trailers, swimming pools and the like. On an evidentiary issue, Fed. Cir. decided that proposed expert testimony should have been excluded under Federal Rules of Evidence 702 because the proposed expert did not have sufficient background in the area of technology of the patent to qualify as an expert. More specifically, the proposed expert was a patent attorney who had never worked in the area of covering systems for truck trailers, swimming pools and the like.

On an obviousness issue, Fed. Cir decided that the patent claim at issue was obvious over a combination of two prior art references. More specifically, Fed. Cir. stated that combining the secondary prior art reference with the primary prior art reference here "represents the 'mere application of a known technique to a piece of prior art ready for the improvement.'" (quoting KSR).

COMMENT: Although Fed. Cir. framed its obviousness holding in terms of language from the KSR case and the older Supreme Court Sakraida case, it looks to me like a classic application of the teaching-suggestion-motivation (or TSM) test for obviousness. I thought the same thing about KSR itself. Although there probably are cases where the classic TSM test does not work well, I don't think KSR or this case are good examples, and both cases might have been better have gotten to their respective conclusions of obviousness with reference to the classic TSM test.

December 23, 2008, Precedential

Hyatt v. Director, Patent and Trademark Office (link)

Patent case involving a Patent Office appeal of twelve patent applications, with some 2400 pending claims, directed to microcomputers, memories, displays and global positioning systems (GPS). All twelve applications were filed just before the rules on patent term changed, which means that, even though these patent applications have very old priority dates (back to the early 80s), they would still get a 17 year term if the applicant could get them to issue. So, there are 2,400 claims on appeal at the Patent Office, and these claims have the potential to have a big submarine affect on what have become some pretty big industries.

After previous proceedings at a district court in a section 145 action, the Patent Office was instructed to choose representative claims, and that applicant could not get separate, individual consideration of all his 2,400 claims. The Patent Office chose representative claims. Applicant appealed that choice, leading to the instant Fed. Cir. decision.

Fed. Cir. decided that the Patent Office chose its representative claims incorrectly because there was not a representative claim for each separate ground of rejection made in the underlying Patent Office claim rejections. Fed. Cir. explained what is meant by a separate "ground of rejection":

The PTO argues that a “ground of rejection” is simply the statutory section under which a claim was rejected. As applied here, the PTO argues that the ground of rejection is a failure to satisfy the written description requirement of 35 U.S.C. § 112 ¶ 1. Accordingly, the PTO argues that it can select a claim rejected for failure to satisfy the written description requirement as representative of all claims rejected for failure to satisfy the written description requirement—regardless of whether the limitation in the representative claim that lacks written description support is present in the non-representative claims. Conversely, [applicant] argues that a “ground of rejection” includes both (1) the statutory section under which a claim was rejected and (2) the reason why the claim failed to meet that statutory requirement. Thus, [applicant] contends that the PTO can only select a claim as representative of a group of claims rejected for failure to satisfy the written description requirement if the representative claim and all claims in the group share a common limitation that lacks written description support.
. . .

Thus, [precedent] establishes that a “ground of rejection” for purposes of Rule 1.192(c)(7) is not merely the statutory requirement for patentability that a claim fails to meet but also the precise reason why the claim fails that requirement.
The PTO’s interpretation of section 1.192(c)(7) in this case is strikingly similar to the interpretation that this court rejected in McDaniel. There, the Board considered a group of claims rejected for obviousness under 35 U.S.C. § 103 as a commonly rejected group, despite the fact that the non-representative claims in the group were obvious in view of different prior art references than the Board’s chosen representative claim. Here, the PTO seeks to treat a group of claims rejected for lack of written description under 35 U.S.C. § 112 ¶ 1 as a commonly rejected group, regardless of whether the limitations lacking written description support in its chosen representative claim are present in the other claims in the group. Thus, as in McDaniel, the PTO argues that a “ground of rejection” in section 1.192(c)(7) is merely the statutory section under which a group of claims was rejected, rather than the precise reason why the examiner determined that the group of claims failed that statutory requirement. We therefore conclude, as we did in McDaniel, that the PTO’s interpretation of section 1.192(c)(7) is plainly erroneous and inconsistent with the text of the regulation.

In addition to being faithful to the text of section 1.192(c)(7), this court’s interpretation of “ground of rejection” is consistent with the fact that the PTO “bears the initial burden . . . of presenting a prima facie case of unpatentability.” In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (alteration in original) (citation omitted). In Alton, we explained that, “[i]nsofar as the written description requirement is concerned, that burden is discharged by presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.” Id. (quotation omitted). Likewise, in Hyatt I we explained that the PTO cannot “reject a complex claim with numerous limitations by summarily declaring that no written description support exists. Rather, [the PTO’s Manual of Patent Examining Procedure (“MPEP”)] section 2163.04(I) expressly instructs the examiner to specify which claim limitation is lacking adequate support in the written description.” 492 F.3d at 1370. Thus, to be consistent with the PTO’s prima facie burden in rejecting claims, section 1.192(c)(7) must be interpreted such that, when a claim is rejected under 35 U.S.C. § 112 ¶ 1, the relevant “ground of rejection” is the PTO’s identification of a specific limitation that lacks written description support. To interpret section 1.192(c)(7) otherwise would allow the Board to subject claims to a new ground of rejection without following the procedures specified in 37 C.F.R. § 41.50(b). See McDaniel, 293 F.3d at 1384 . . .

Fed. Cir. explained that grounds of rejection can be waived on appeal by failure to argue against a separate ground of rejection in appellant's opening brief, but did not decide whether the applicant in this case had indeed made any waivers under the correct understanding of "ground of rejection."

December 23, 2008, Precedential

Ricoh Company, Ltd. v. Quanta Computer Inc. (link)

Patent case involving three patents directed to optical disc drive technology. On an obviousness issue, Fed. Cir. decided that certain patent claims were obvious because they claim operating speed ranges that overlapped ranges known in the prior art.

On a literal infringement issue, Fed. Cir. decided that certain claims were not infringed because claim language relating to starting a background process was not met by the accused device.

On another infringement issue, Fed. Cir. decided that selling software designed to perform a claimed method does not amount to selling the patented method itself under 35 USC 271(a). This has important consequences with respect to whether direct infringement analysis or third party infringement analysis is used in situations where software performs methods covered by method claims.

On an indirect infringement issue, Fed. Cir. decided that contributory infringement may exist where any component of a device that is sold has no substantial non-infringing uses. This is more favorable to contributory infringement than a rule that says contributory infringement exists only if the device that is sold, taken as whole, has no substantial non-infringing uses. Fed. Cir. was concerned about situations where a component of a device is meant to be used and would infringe, but where the infringing component happens to be connected to other components that are independently useful and do not infringe. Fed. Cir. cited a hypothetical example of a combination telephone / answering machine where the answering machine infringed, but use of the telephone part would not.

On another indirect infringement issue, Fed. Cir. decided that there were issues of fact on the issue of inducement of infringement because the inclusion of certain software in the optical disc drive at issue, coupled with knowledge of the patentee's patents, was some circumstantial evidence of inducement of infringement.

DISSENT: Judge Gajarsa dissented arguing that contributory infringement should only apply where the sold product-as-a-whole, as opposed to its constituent components, has no substantial non-infringing uses.

QUESTION: I wonder how "components" are supposed to be identified when doing contributory infringement analysis under the laws of this case. For example, if you sell software for performing an infringing method as a zip file over the internet, but you throw a separate useful and non-infringing program into the same zip file, how many "components" have you sold? Would there be a different answer if you sold as a CD-ROM? As a two CD-ROM set?

December 19, 2008, Non-Precedential

In Re Wheeler (link)

Appeal from the Patent Office on a rejected application for a fishing rod. Fed. Cir. decided no anticipation because of difference between the claims and the prior art applied in the rejection.

December 19, 2008, Non-Precedential

Classen Immunotherapies, Inc. v. Biogen IDEC (link)

Very short affirmance on a patentable subject matter issue per Bilski.

December 18, 2008, Non-Precedential

Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. (link)

Patent case involving one patent directed to defibrillator medical devices. On a procedural issue, Fed. Cir. decided that a claim interpretation provided by Fed. Cir. in a previous opinion did not serve to open the issue of anticipation back up in this case because the claim language interpreted was not relevant to the decision previously made on anticipation, especially because the prior art being argued as anticipation had not changed. On another procedural issue, Fed. Cir. decided that certain inequitable conduct issues were abandoned as being waived for various reasons, such as abandonment and binding stipulation.

On a literal infringement issue, and more specifically a 35 USC 271(f) (certain infringement by import / export) issue, Fed. Cir. decided that infringement under 35 USC 271(f) may occur where components are sold outside the US for use in an infringing method inside the US, notwithstanding the recent Supreme Court decision in Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007). Fed. Cir. noted that there are some judges who believe the Fed. Cir. law on the 271(f) issue is incorrect.

December 18, 2008, Precedential

Rentrop v. The Spectranetics Corp. (link)

Patent case involving one patent directed to a catheter medical device. On a procedural issue, Fed. Cir. decided that an obviousness argument had not been properly preserved with a JMOL. Despite the fact that the obviousness argument was waived, Fed. Cir. upheld the following obviousness-related jury instruction:

You must also keep in mind that the test for obviousness is not whether or not it would have been obvious to try to make the invention, but rather whether or not the inconvenience [sic] would have been obvious to a person of ordinary skill in the inventor’s field at the time the invention was made.

On an inequitable conduct issue, Fed. Cir. decided that there was no inequitable conduct, despite the fact that a "chicken bone test" of the patented device was not disclosed to the patent office because this undisclosed information had low materiality and because the circumstances surrounding its non-disclosure raised only a weak inference of intent.

December 16, 2008, Non-Precedential

Respironics, Inc. v. Invacare, Corp. (link)

Patent case involving four patents directed to sleep apnea treatment technology. On a claim interpretation issue, Fed. Cir. decided that "selected higher and lower pressure magnitudes" meant that the magnitudes must pre-selected before the claimed method steps are performed. Under this interpretation, Fed. Cir. decided that two of the four patents in suit were not infringed.

On another claim interpretation issue, Fed. Cir. decided that the term "shape" was to be accorded a relatively broad interpretation and that summary judgement of non-infringement based on this claim term was not appropriate.

On a procedural issue, Fed. Cir. decided that some non-infringement arguments which had not been raised prior to a jury trial were waived for not being timely raised.

On an anticipation issue, Fed. Cir. decided that certain claims might be anticipated because no differences between the claims and the asserted anticipatory art had been identified, at least as of yet.

December 16, 2008, Precedential

Avocent Huntsville Corp. v. Aten International Co., Ltd. (link)

Declaratory judgement patent case involving two patents directed to keyboard-video-mouse switch technology. Patentee was a Taiwanese company who had written letters to declaratory judgement plaintiff and a third party retailer accusing the declaratory judgement plaintiff of infringement and giving rise to this declaratory judgement action for non-infringement and invalidity of the two patents. Fed. Cir. decided that there was no personal jurisdiction over the patentee, stating the law of personal jurisdiction as it applies to patent cases as follows:

Against this backdrop of Supreme Court authority, we have held in the context of patent infringement litigation that an assertion of general jurisdiction “requires that the defendant have ‘continuous and systematic’ contacts with the forum state,” and that such activity will “confer[] [general] personal jurisdiction even when the cause of action has no relationship with those contacts.” Silent Drive, 326 F.3d at 1200. With respect to specific jurisdiction,

[t]his court employs a three-prong test, in which we determine whether: (1) the defendant purposefully directed its activities at residents of the forum, (2) the claim arises out of or relates to those activities, and (3) assertion of personal jurisdiction is reasonable and fair. With respect to the last prong, the burden of proof is on the defendant, which must present a compelling case that the presence of some other considerations would render jurisdiction unreasonable under the five-factor test articulated by the Supreme Court in Burger King.

Breckenridge, 444 F.3d at 1363 (internal citation and quotation marks omitted). “The first two factors correspond with the ‘minimum contacts’ prong of the International Shoe analysis, and the third factor corresponds with the 'fair play and substantial justice' prong of the analysis.” Inamed, 249 F.3d at 1360. We have also applied the stream of commerce theory, although we have not resolved the split in authority reflected in the competing plurality opinions in Asahi. See Beverly Hills Fan, 21 F.3d at 1566.

More specifically, Fed. Cir. decided that there was no specific jurisdiction because letters sent to an alleged infringer do not in and of themselves create specific jurisdiction and because other factors did not favor specific jurisdiction. Fed. Cir. decided that letters accusing infringement do not, in and of them selves, create specific jurisdiction because that would not "comport with fair play and substantial justice."

DISSENT: Judge Newman dissented:

This is not merely the forum to which Aten International sent its notice of infringement; it is also the forum in which Aten International conducts regular retail sales of its products, and in direct competition with Avocent’s products; the forum in which the accused infringing activities occur and in which Aten International’s threatened suit would be brought; and the forum whose state and common laws apply to the complaint’s counts of disparagement of Avocent’s products and tortious interference with commercial relations. In further distinction from the cases cited in the majority’s opinion, there is no other forum in which all of the counts of the complaint can be resolved as of right. Indeed, in the closest precedent on similar facts, where the foreign patentee had no place of business in the United States but charged a domestic company with infringement, that foreign patentee was held subject to personal jurisdiction in the state in which the declaratory plaintiff resided and the foreign patentee did business through a distributor. Viam Corp. v. Iowa Export-Import Trading Co., 84 F.3d 424 (Fed. Cir. 1996). In application of Due Process and fairness, all factors must be considered, including the availability of alternative fora, in deciding whether the defendant’s contacts with the forum are sufficient for the exercise of personal jurisdiction.

COMMENT / QUESTIONS: These days, Judge Newman always seems to be in dissent, and, once again, her dissent seems more compelling, at least to me, than the majority's opinion. Often Judge Newman's recent dissents are generally pro-patent positions dissenting from generally anti-patent positions, but that is not the case in this case -- here she favors the accused infringer. Is there any pattern to her dissents? Is the pattern that she is not as driven as the others to provide ways of quickly disposing of patent litigations?

December 15, 2008, Precedential

Welker Bearing Co. v. Phd Inc. (link)

Patent case involving two patents directed to a welding related tool. On a means plus function claim issue, Fed. Cir. decided that the claim language "mechanism for moving said finger" should be interpreted as a means plus function claim element, despite the fact that it does not use the word "means," because it would not imply sufficient structure to one of skill in the relevant art.

On a infringement issues, Fed. Cir. decided that the mean plus function claim language was not met by the accused infringing device. Fed. Cir. on 112 equivalents versus doctrine of equivalents equivalents:

[Patentee]’s argument that [the accused infringing product] might infringe under the doctrine of equivalents is equally unavailing. Indeed this case does not present a case for equivalents under the doctrine of equivalents at all. This case presents only the question of structural equivalents under §112 ¶ 6. Structural equivalents and the doctrine of equivalents are “closely related.” See, e.g., Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309 (Fed. Cir. 1998). They are related in the sense that both § 112 ¶ 6 and the doctrine of equivalents apply “similar analyses of insubstantiality of the differences” between a disclosed structure and an accused infringing structure. Id. at 1310. However, an important difference between the two inquiries “involves the timing of the separate analyses for an ‘insubstantial change.’” Al-Site Corp. v. VSI Int'l, Inc., 174 F.3d 1308, 1320 (Fed. Cir. 1999). Namely, an equivalent structure under § 112 ¶ 6 “must have been available at the time of the issuance of the claim,” whereas the doctrine of equivalents can capture after-arising “technology developed after the issuance of the patent.” Id.

QUESTION: If you need to add a limitation during prosecution, maybe you are better off adding it in means plus function form under the theory that you won't get foreseeable equivalents under the doctrine of equivalents no matter what because of Festo, but you would get them under section 112 style equivalents analysis. Or does amending the claims cut off section 112 equivalents in the same way it cuts off doctrine of equivalents equivalents? On the other hand, maybe it is better to focus on the literal scope when adding a limitation and not worry about equivalents -- for good literal scope it is probably better to stay away from means plus function.

December 12, 2008, Precedential

Sanofi Synthelabo v. Apotex Inc. (link)

Patent case re one patent directed to a drug. On an anticipation issue, Fed. Cir. decided that the patent was not anticipated because the prior art disclosures that were asserted to disclose the claimed drug did not, when properly interpreted, disclose the claimed drug.

On a prior art issue, Fed. Cir. decided that certain prior art was not enabled, despite the fact that the prior art was in the form of a US patent (presumed valid and enabled) because: (i) the embodiments discussed in detail in the prior art patent were different from the embodiment relevant to the invalidity analysis in this case; and (ii) the enantiomer chemistry dealt with in the prior art and the patent at issue in this case is quite unpredictable.

On an obviousness issue, Fed. Cir. decided that the patent was not obvious because it was in an unpredictable art.

COMMENT: There is an emerging Fed. Cir. trend that inventions in the classic "predictable arts" are obvious, while inventions in the "predictable arts" are non-obvious. This case seems to strongly espouse the mindset that patents in the unpredictable arts are going to be held non-obvious.

CRITICISM: I don't like the emerging trend. I think it is based on a flawed assumption of what economically healthy kinds of creativity are really about. The emerging trend is likely to make the law simple and predictable, but it is also going to skew research and investment priorities by unduly favoring unpredictable arts at the expense of predictable arts. I think it is possible and useful to be very creative (and hopefully patentable) within the context of the predictable arts, and that it is, conversely, possible and of little use to be uncreative (and hopefully unpatentable) in the context of the unpredictable arts.

December 11, 2008, Precedential

Ilor, LLC v. Google, Inc. (link)

Patent case re one patent directed to a method for hyperlinking hypertext.

On a finality judgement issue, Fed. Cir. decided that summary judgement of non-infringement was not sufficiently final to be appealable.

On a claim interpretation issue, Fed. Cir. decided that the claim language "the toolbar being displayable based on a location of a cursor" is limited to toolbars that are automatically displayed based on the cursor location alone and do not require further user input to be displayed. This interpretation was based on absence of any embodiments that required further user action (beyond hovering the cursor in the right place) to display the toolbar, as well as upon prosecution history.

LESSON FOR PATENT PROSECUTORS: In 20-20 hindsight, the key claim language should have read: "displayable based, at least in part, on the location of a cursor."

December 9, 2008, Precedential

Netcraft Corp. v. Ebay, Inc. (link)

Patent case re two patents involving internet billing methods. On a claim interpretation issue, Fed. Cir. decided that "providing a communications link through equipment of the third party" meant that the third party must provide internet access because the specification supported a definition of "communications link" that was limited to internet access as part of the communications link. More specifically, the specification repeated described "the present invention" in terms of providing internet access as part of the claimed method. Also, there were no embodiments where the communications link did not entail providing internet access.

LESSON FOR PATENT PROSECUTORS: Define your terms. It is true that that makes you take a clear position on claim scope early, but cases like this one (which have been legion out of Fed. Cir. over the past decade) make it clear that what the patentee does not say will be held against the patentee. It is clear to me at least that if the patent prosecutor had defined communications link, then s/he would have defined it as not necessarily limited to an internet connection. If the internet connection aspect is thought to have some contingent importance -- well, that is what dependent claims are for.

LESSON FOR PATENT PROSECUTORS: The patent applications I file these days have the following language: "Present invention: means at least some embodiments of the present invention; references to various feature(s) of the "present invention" throughout this document do not mean that all claimed embodiments or methods include the referenced feature(s)."

December 8, 2008, Precedential

Takeda Chemical Industries Ltd. v. Mylan Laboratories Inc. (link)

Two generic drug makers made insufficiently supported allegations of patent invalidity of a pharmaceutical patent in an ANDA. District court awarded $16.8M in attorney's fees and expert fees. Fed. Cir. affirmed holding of "exceptional case" under 35 U.S.C. § 285 and associated fee awards.

December 5, 2008, Precedential

The Procter and Gamble Co. v. Kraft Foods Global, Inc. (link)

Accused infringer requested inter partes re-exam on patentee's patent. Patentee subsequently sued for patent infringement in district court, and then moved for a preliminary injunctions against accused infringer. District court stayed the patent litigation without deciding the preliminary injunction motion.

Fed. Cir. decided that the grant of the stay prior to a decision on the preliminary injunction motion was an abuse of discretion because patentees are entitled to have this remedy considered. Fed. Cir. went on to comment that if a preliminary injunction were indeed granted, then a stay would be inappropriate because it would tend to hurt the accused infringer. Fed. Cir. also provided instructions as to how decisions in the re-examination might affect the issue of likelihood of success on the merits under the preliminary injunction motion.

COMMENT: It seems like it would be tempting for the district court to deny the preliminary injunction motion to get the stay.

December 3, 2008, Non-Precedential

Unitronics (1989) (R”G) Ltd. v. Gharb

Fed. Cir. explained to pro se litigant that it is the claims, and not the specification, that determines what is covered by a patent. Fed. Cir. enjoined pro se litigant from threatening any more infringement action against non-infringing products.

COMMENT: Should have been precedential -- sometimes it is nice to have the really fundamental fundamentals restated in recent vintage Fed. Cir. opinion form. And what is the harm in that anyway?

December 1, 2008, Precedential

Qualcomm Inc. v. Broadcom Corp. (link)

Patent case involving two patents re video compression technology. Patentee participated in a standards setting organization that set a standard for video compression. Patentee did not disclose its patents to the standards setting organization. After the standards were in place, patentee asserted that its patents covered products compliant with the standard and sued an accused manufacturer. During the patent litigation, patentee falsely denied participation in the standards setting organization at the relevant time.

Fed. Cir. confirmed that patentee's participation in the standards setting organization was sufficiently timely and substantive such that it had a duty to the standards setting organization to disclose its patents to the standards setting organization under the rules of the standards setting organization. Patentee argued that the fact that the accused products were found not to infringe the patents at the district court meant that its patents were not relevant to the activities of the standards setting organization after all. Fed. Cir. decided that the patents did need to be disclosed because patentee felt that the patents were sufficiently relevant both at the time of the activities of the standards setting organization (as evidenced by contemporaneous emails) and at the time of bringing its patent infringement suit (by basing its infringement allegations on the fact of compliance with the standard set by the standards setting organization).

On an an issue of choice of equitable claims, Fed. Cir. decided that both waiver and equitable estoppel were available as claims for providing equitable relief to the accused infringer against the patentee. On equitable remedies issues, Fed. Cir. decided that: (i) patent unenforceability was the appropriate remedy; but (ii) this unenforceability must be limited to products compliant with the standard set by the standards setting organization.

November 21, 2008, Non-Precedential

Lacks Industries, Inc v. McKechnie Vehicle Components USA, Inc. (link)

Patent case involving one patent re overlays for wheels. On an on-sale bar issue, Fed. Cir. decided that there were issues of fact as to whether an on-sale bar invalidated the claims. Fed. Cir. on the legal test for determining whether an on-sale bar exists:

[W]hether . . . clear and convincing evidence [establishes that]: (1) that any of the [any of the purported offers for sale documents] rises to the level of a commercial offer for sale under the Group One standard; (2) if so, that the same document was communicated to an offeree prior to the critical date; and (3) that the subject matter of the document satisfies each and every claim limitation of any of the [claims purported to be invalidated by on-sale bar].

November 20, 2008, Non-Precedential

Medegen MMS, Inc v. ICU Medical, Inc. (link)

Patent case involving one patent re a medical device for directing flow of IV fluids. On a claim interpretation issue, Fed. Cir. decided that "plug" is not limited to elastomeric plugs because that interpretation would read the preferred embodiments specification into the claims. On another claim interpretation issue, Fed. Cir. declined to interpret the claim term "displacing means," remanding this claim interpretation issue in light of Fed. Cir.'s ruling on the correct interpretation of "plug."

QUESTION: It is not clear to me why the claim interpretation of the non-means-plus-function term "plug" would have any affect on the claim interpretation of the means plus function term "displacing means," but Fed. Cir. seems to think it would.

LESSON FOR PATENT PROSECUTORS: Define your terms and define them broadly. Make a definition for "plug" that includes all embodiments (rigid AND elastomeric; absolutely fluid tight AND substantially fluid tight; separate piece part from fluid channel AND unitary with fluid channel, fully enclosed within fluid channel AND partially sticking out of fluid channel, etc., etc., etc.) If elastomeric plugs are preferred then: (i) say that in spec; and (ii) dependent claim that in a dependent claim. True enough that patentee won on "plug" here, arguing for a broad interpretation as the patentee so often does, but it was too close for comfort (read: an expensive victory) in that: (i) patentee lost at the District Court on this claim interpretation issue; and (ii) there was even a dissent at the Fed. Cir. level.

November 19, 2008, Non-Precedential

Andersen Corp. v. Pella Corp. (link)

Patent case involving one patent for an insect screen for a window. On an obviousness issue, Fed. Cir. decided that summary judgement of obviousness was not appropriate because: (i) the Patent Office had considered the asserted prior art references when examining the patent application; (ii) the asserted prior art was in a different technological field; and (iii) the asserted prior art arguably taught away from the claimed invention. More specifically, on reasons (ii) and (iii), the asserted prior art was in the technological field of electromagnetic shielding mesh, which type of mesh generally has certain characteristics that make it undesirable for use as an insect screen.

November 13, 2008, Precedential

In Re Basell Poliolefine Italia S.P.A.

The Patent Office instituted and held a re-examination to consider obviousness-type double patenting issues. Fed. Cir. decided that patent was invalid for obviousness type double patenting.

DISSENT: Judge Newman dissented, arguing that: (i) the re-examination was improperly instituted; (ii) the obviousness-type double patenting rejection was incorrect; and (iii) the delay / "submarining" that obviousness-type double patenting is designed to counter was, at least in this case, mostly the fault of the Patent Office.

COMMENT: Judge Newman is, of course, correct on all counts.

ANOTHER COMMENT: Generally speaking 9/11/01 to the present has been a time of relatively judicial defence to the executive branch, I think, and I also think this case is a typical example of that kind of jurisprudence.

YET ANOTHER COMMENT: Now that patents expire 20 years from priority date, they should do away with obviousness-type double patenting altogether. The argument for sustaining the doctrine is the fact that ownership can be split, but that argument is weak, and that concern (to the extent it is even sincere) can be handled by procedural consolidation of patent infringement lawsuits.

November 12, 2008, Non-Precedential

Touchcom, Inc. v. Bereskin & Parr (link)

Patentee sued Canadian law firm and its patent agent (the Defendants) for malpractice in preparing a US patent application, the patent on which was later held invalid for indefiniteness. Because the patent agent and his firm were in Canada there was a jurisdiction issue which was appealed to Fed. Cir. On the appeal, the Defendants moved to disqualify patentee's appeal counsel because the appeal counsel represented the patent agent at a deposition involving the (now-invalidated) patent. Fed. Cir. decided that appeal counsel should indeed be disqualified, analyzing the issue under Virginia law and the Model Rules of Professional Responsibility.

November 3, 2008, Precedential

In Re DBC (link)

Appeal of rejection of patent under (third party requested) re-examination by the Patent Office. Patent application involved food processing technology, specifically a nutraceutical composisition made from mangosteen fruit.

Fed. Cir. declined to hear a Constitutional issue involving propriety of appointments of certain Patent Office appeal judges, pointing at that: (i) the issue was not timely raised; and (ii) Congress has recently attempted some remedial legislation which will change the nature of those issues on a going forward basis.

Fed. Cir. decided that patent was obvious, explaining that: (i) applicant did not seem to dispute that a prima facie case of obviousness was established based on close prior art references; and (ii) attributing evidence on secondary considerations to marketing rather than inventiveness.

October 31, 2008, Non-Precedential

Amazin' Raisins International, Inc. v. Ocean Spray Cranberries, Inc. (link)

Patent case involving a food processing patent for adding flavor to dried fruit. On a claim interpretation issue, Fed. Cir. interpreted the claim term "dried fruit" to be limited to fruit having a moisture content in the range of 10-18%, citing the following language in the specification: "dried fruit which contains between about 10% to 18% moisture may be employed."

On an infringement issue, Fed. Cir. decided that masking a flavor did not meet claim language that required flavor to be "substantially remove[d]," citing the common meaning of the word "remove."

October 30, 2008, Non-Precedential

Depuy Mitek, Inc. v. Arthrex, Inc. (link)

Patent case re a medical device called sterilized heterogeneous braids. Patent claim required infringing braids to be "essentially consisting of" a certain structure. Accused infringing product had the claimed structure, but with an added silicone coating. Fed. Cir. upheld a jury verdict of non-infringement, explaining that the fact that the silicone coating affected the "basic and novel characteristics of the invention."

QUESTIONS FOR PATENT PROSECUTORS: Does the claim transition "consisting essentially of" now require identification of "basic and novel characteristics of the invention"? If so, when using the "consisting essentially of" transition, are patent prosecutors better off trying to define the "basic and novel characteristics" or are they generally better off allowing later tribunals to try to determine the "basic and novel characteristics"? It is not that, in this case, the identification of the "basic and novel characteristics" were not a matter of dispute, but rather only whether the accused infringing product was sufficiently different based upon the "basic and novel characteristics."

October 30, 2008, Prcedential

In Re Alonso (link)

Patent application re a method of treating neurofibrosarcoma using antibodies was rejected by Patent Office and appealed by applicant to Fed. Cir. Fed. Cir. decided that appealed claims were invalid for failure to meet the written description requirement. Specifically, Fed. Cir. decided that the claims failed to meet the following legal standard for proper written description of a chemical or biological genus:

A genus can be described by disclosing: (1) a representative number of species in that genus; or (2) its "relevant identifying characteristics," such as "complete or partial structure, other physical and/or chemical properties, functional characteristics when coupled with a known or disclosed correlation between function and structure, or some combination of such characteristics."

October 30, 2008, Precedential

In Re Bilski (en banc) (link)

Patent case involving a claim rejected by the Patent Office. The claim defined a particular way of managing a hedge fund and was rejected for lack of patentable subject matter under 35 USC 101. Fed. Cir. decided that a process is only patentable subject matter if: (i) it is tied to a particular machine; OR (ii) it transforms an article into a different state. This test is now called the machine-or-transformation test. If a process cannot be performed other than by a computer, then tying the process to a computer will not make it patentable subject matter under prong (i) of the machine-or-transformation test. "Field of use limitations" and/or "insignificant post-solution activity" are insufficient to make a process patentable under the machine-or-transformation test.

The Freeman-Walter-Abele test (from various software cases) is overruled. State Street (business methods patent case) is supposedly affirmed. The "technological arts" test (a modern proposal sort of endorsed by the Patent Office) is not adopted.

DISSENT: Judge Newman argued that Fed. Cir. is legislating by limiting the term "process" in the statute in unforeseen and/or arbitrary ways and failing to recognize that the machine-or-transformation test (at least as currently understood) fails to recognize the nature of computer technology, photonic technology and/or information services technology.

DISSENT: Judge Mayer argued that this case should have been decided by holding that business methods (as opposed to science and technology) are not patentable.

LESSON FOR PATENT PROSECUTORS: Bilski will make patent prosecution a lot more difficult in the computer area. I am already seeing it, and this decision is sure to make things a lot worse. The abstract issues involved in the determination of patentable subject matter are pretty far afield of the kind of training a typical patent examiner has, I think.

COMMENT: I think the test should be: "a patentable subject matter process is any process that is sold, or whose results are sold, in any commercial marketplace." There should then be carve outs for teaching, research, public health emergencies, national defense and/or charity, but these should be limits on permissible patent enforcement and not on patentable subject matter per se. Obviously, Fed. Cir. is pretty far from my preferred position, but maybe the Supreme Court will intervene here.

COMMENT: The exceptions for "field of use limitations" and "insignificant post-solution activity" are not at all clear to me.

COMMENT: I have no idea how "business methods" could ever meet the machine-or-transformation test.

October 29, 2008, Non-Precedntial

Systems Division Inc. v. Teknek LLC (link)

Loser of a patent case (three patents for "clean machines") tried creative bankruptcy and asset transfer to avoid paying the judgement. It didn't succeed in avoiding paying in the end. This opinion relates to a frivolous appeal arising out of the complicated proceedings out of which the patentee finally got its money.

October 27, 2008, Non-Precedential

Tavory v. NTP, Inc. (link)

Man claimed co-inventorship of email related patents involved in the famous Blackberry patent suit a couple of years ago. Fed. Cir. decided that he was not a co-inventor because his corroborating evidence of conception, as opposed to reduction to practice, was weak. Fed. Cir. decided that a state law unjust enrichment claim, based on failure to list the plaintiff as a co-inventor was pre-empted by federal patent law. Fed. Cir. also decided that plaintiff could not amend his pleading to add other causes because such an amendment would not be timely.

COMMENT: Based on Fed. Cir.'s opinion, it seems like the guy had pretty strong evidence of inventorship. It made me wonder if the fact that he waited so long (1991 to 2006) to assert inventorship claims influenced where Fed. Cir. came out on corroboration issues.

QUESTIONS: Fed. Cir. wants to see corroboration of conception, as contrasted with corroboration of reduction to practice, here. How often is there going to exist tangible evidence of corroborating conception, as contrasted tangible evidence corroborating reduction to practice, really, though? How often will there be unbiased witnesses to conception, as opposed to reduction to practice?

ANOTHER COMMENT: The patent owner of the patent in this suit was portrayed in the popular press as a "patent troll" circa 2005 when they had their famous lawsuit against the manufacturer of the Blackberry device. This opinion really calls into question whether the people who developed the technology really were "trolls," though. Although the plaintiff in this case seems to feel that the people who filed the patent application gave him the shaft, it certainly seems like these people were trying to develop useful products and not just rent-seeking trolls at the time they paid to have the application prepared and filed.

MORE QUESTIONS: With is emphasis on conception, as opposed to reduction to practice, is Fed. Cir. subtly encouraging trollish behavior -- giving all the glory to persons not to concerned with the practical difficulties of actually "working" an invention? Maybe Fed. Cir. is saying: don't worry too much about "working" the invention when you file, but years later, when you go to get a preliminary injunction remedy, make sure you are really "working" it. If so, isn't this slicing the bologna a bit thin?

October 23, 2008, Non-Precedential

Commonwealth Scientific & Ind. Research org. v. Toshiba America Information Systems Inc. (link)

Law firm represented a patentee in patent infringement litigation and also performed patent and trademark prosecution for a third party. Unbeknownst to the law firm, the third party had patent infringement indemnity agreements with a couple of companies being sued by law firm on behalf of patentee. When law firm found out about the conflict of interest it withdrew from representing the third party, and continued to represent patentee in the patent litigation. Third party tried to intervene in patent litigation and get the law firm disqualified. Fed. Cir. decided no right to intervene and no disqualification under the law of the regional circuit because: (i) law firm withdrew as soon as it found out about conflict; (ii) law firm didn't purposely create the conflict; and (iii) law firm didn't have confidential info of third party related to the patent litigation.

October 21, 2008, Precedential

Abbott Laboratories v. Sandoz (link)

Patent case involving two patents for extended release formulations for drug clarithromycin. District court issued preliminary injunction in favor of patentee / pharmaceutical maker and defendant / generic drug maker appealed the preliminary injunction.

On a preliminary injunction issue, Fed. Cir. applied the familiar four factor test: (i) likelihood of success on merits; (ii) irreparable harm; (iii) balance of hardships; and (iv) public interest. The opinion includes a long analysis of these factors. Discussion of a couple of the interesting points follows.

On obviousness:

We agree that the obviousness of selection of components, when there is no prediction in the prior art as to the results obtainable from a selected component, differs from the issue in KSR, where the Court provided guidance that "a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions." 127 S. Ct. at 1740. The Court explained the conditions in which "obvious to try" may negate patentability, depending on the relation of the prior art teaching to the later-developed technology. The Court explained that when the problem is known, the possible approaches to solving the problem are known and finite, and the solution is predictable through use of a known option, then the pursuit of the known option may be obvious even absent a “teaching, suggestion, or motivation” concerning that option. Then, “if this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.” 127 S. Ct. at 1742.

Abbott argued that the "known options" in the prior art were not "finite, identified, and predictable," the words of KSR, and are identified only with hindsight knowledge of Abbott’s new formulation and its pharmacokinetic properties. Abbott pointed to the discussion in the PCT Application of over a dozen possible drug delivery modes, including matrix systems, membrane-moderated or reservoir systems, osmotic pumps, coated hydrogel tablets and multiparticulates, sustained release compositions with delayed-release layers, pH-dependent coated tablets, bursting osmotic core devices, bursting coated swelling core devices, pH-triggered bursting osmotic core devices, pH-triggered bursting coated swelling core devices, enzyme-triggered supported liquid membrane devices, bacterially degradable coating devices, and swelling plug devices, all classes of controlled release for drug delivery systems, each containing sub-classes and variations. PCT App. at 8-38. The expert witnesses pointed out the difficulties in predicting the behavior of any composition in any specific biological system.

The evaluation of the choices made by a skilled scientist, when such choices lead to the desired result, is a challenge to judicial understanding of how technical advance is achieved in the particular field of science or technology. Such understanding is critical to judicial implementation of the national policy embodied in the patent statute. In Publication of Tomlinson, 363 F.2d 928 (CCPA 1966) our predecessor court discussed the role of "obvious to try" in scientific and technologic research and in patentability:

Slight reflection suggests, we think, that there is usually an element of "obviousness to try" in any research endeavor, that is not undertaken with complete blindness but rather with some semblance of a chance of success, and that patentability determinations based on that as the test would not only be contrary to statute but result in a marked deterioration of the entire patent system as an incentive to invest in those efforts and attempts which go by the name of "research."

Id. at 931. The Court in KSR did not create a presumption that all experimentation in fields where there is already a background of useful knowledge is "obvious to try," without considering the nature of the science or technology. The methodology of science and the advance of technology are founded on the investigator’s educated application of what is known, to intelligent exploration of what is not known. Each case must be decided in its particular context, including the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest.

DISSENT: There was discussion between the majority opinion and the dissent (by Judge Gajarsa) as to whether likelihood of success based on the merits meant that "clear and convincing" evidence of invalidity was required to meet the likelihood factor of the preliminary injunction test. Both the majority and dissent agreed that "clear and convincing evidence" should not be required, but the dissent argued that the majority opinion effectively required this relatively high standard of persuasion to get / sustain a preliminary injunction.

COMMENT: The obvious-to-try analysis makes it sound like it will be a lot easier to get a patent in the "unpredictable arts," rather than the "predictable arts."

Octover 20, 2008, Precedential

Net Moneyin Inc. v. Verisign, Inc. (link)

Patent case involving two patents re system for electronic credit card transaction. On an means plus function and indefiniteness issue, Fed. Cir. found several claims invalid for indefiniteness because certain means plus function claim language did not find corresponding structure in the specification.

On an anticipation issue, Fed. Cir. decided no anticipation, explaining:

In all of these cases, the prior art reference had to show the claimed invention arranged or combined in the same way as recited in the claim in order to anticipate. We thus hold that unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.

On a civil procedure issue, Fed. Cir. decided that patentee would not be allowed to amend pleadings to claim for inducement of infringement because the request to amend the pleadings was not timely.

October 17, 2008, Precedential

Minks v. Polaris Industries (link)

Patent case re electric governor system for internal combustion engines. On a damages issue, Fed. Cir. decided that patentee was entitled to a new trial on damages because the district court reduced a patent infringement award made by the jury that it considered excessive without offering patentee the option of a new trial as required under Seventh Amendment case law. On another damages issue, the district court was permitted to reduce the amount of attorney's fees awarded by the court because the patentee did a bad job explaining the economics of its damages theory at trial.

On a notice issue, Fed. Cir. decided that notice of prospective infringement can be given before an infringing product was made. That was relevant in this case because patentee and alleged infringer had an ongoing relationship and patentee gave notice of the patent based on some of accused infringer's business plans.

On an infringement issue, Fed. Cir. decided that accused infringing circuit was a Section 112, paragraph 6 equivalent to the circuit disclosed in the specification of the patent and therefore infringed corresponding means plus function claim language.

On a willful infringement issue, Fed. Cir. upheld jury verdict of willfulness, drawing heavily on the law of the regional circuit (that is, the Eleventh Circuit) in deciding to do so.

QUESTION: Was accused infringer home cooked in patentee's backyard by the Florida jury?

October 15, 2008, Precedential

In Re Ciprofloxacin Hydrochloride Antitrust Litigation (link)

Patent antitrust case involving Cipro patent and patent licenses between patentee drug manufacturers and certain generic drug manufacturers. Plaintiffs argued that patent licenses were not legal under antitrust laws under several theories, with many of the theories being based upon the premise that the Hatch-Waxman Act controlling pharmaceutical patent law has an affect on what types of patent licensing is not permissible for patents controlled by the Hatch-Waxman Act. Fed. Cir. decided that there were no antitrust violations and seemed quite hostile to all the theories.

COMMENT: I don't know too much about antitrust law, but it seems to have been at a low ebb since 1980 or so. For that reason, this decision did not surprise me.

15 October 2008, Non-Precedential

In Re Tzipori (link)

Case involving rejection of patent application re certain genetic engineering technology. Fed. Cir. decided that in an appeal on a patent application, the Patent Office could consider groups of claims that were actually separately argued, despite the fact that appellant stated that the claims do not stand or fall together.

On an obviousness issue, Fed. Cir. decided that claims were obvious over a combination of prior art references under the KSR standard. However, Fed. Cir. criticized the Patent Office for not explaining reasons to make the combination of references it did.

COMMENT: My interpretation is that Fed. Cir. is telling the Patent Office, in this non-precedential case, that while KSR liberalizes the kind of rationales that support an obviousness rejection based on a combination of references, the rationale should still be good and persuasive and not pro forma.

October 14, 2008, Precedential

Kyocera Wireless Corp. v. International Trade Commission (link)

Patent case re chips for cell phones. Fed. Cir. interpreted claim "different [wireless communications]" favorably to the patentee.

On an anticipation issue, Fed. Cir. decided that documents related to a GSM standard for cell phones were sufficiently accessible by the public to be considered as prior art. On another anticipation issue, Fed. Cir. decided that these related documents could not be considered as a single prior art reference for anticipation purposes.

On a civil procedure issue, Fed. Cir. decided that the defense of obviousness type invalidity had been waived by failure to raise in a timely manner.

On an inducement of infringement issue, Fed. Cir. said:

Although thought to be proper at the time, the approach adopted by the ITC is improper under this court’s decision in DSU. Proof of intent to cause infringing acts is a necessary but not sufficient condition for induced infringement. Inducement additionally requires “evidence of culpable conduct, directed to encouraging another’s infringement,” i.e., specific intent to encourage infringement. DSU, 471 F.3d at 1306. This specific intent may, of course, be demonstrated by circumstantial evidence such as that presented by [the patentee]. Id. But the ITC’s conclusion that “[the accused infringer] intends to induce infringement because it provides its customers with the system determination code” evinces, at most, a finding that [the accused infringer] generally intended to cause acts that produced infringement. Thus, the current record falls short of the necessary intent showing for inducement—that [the accused infringer] possessed a specific intent to cause infringement of [the patentee]’s patent.

Because the Commission based its finding on an approach overruled by DSU, this court vacates and remands the ITC’s determination of induced infringement. On remand, the ITC will have the opportunity to examine whether [the accused infringer]'s conduct satisfies the specific intent requirement set forth in DSU.

On an ITC issue, Fed. Cir. decided that ITC exceeded its authority by issuing Limited Exclusion Order ("LEO") that purported to cover downstream products made by non-parties to the ITC patent case.

October 10, 2008, Precedential

Technology Licensing Corp. v. Videotek (link)

Patent case involving two patents re video signal technology. Fed. Cir. gave lengthy explanation of burden of proof, burden of persuasion and burden of production as these burdens relate to entitlement of a patent claim from a continuation type application to an early priority date.Fed. Cir. stated that its Poweroasis case did not shift the burden of persuasion for priority date to the patentee, despite the fact that some have read this case in that way.

On the issue of entitlement of priority date, Fed. Cir. decided that the earlier, parent application did not have sufficient written description to support the claims in a child patent. because of the late effective priority date, the asserted claims were invalid for anticipation.

On an infringement issue, Fed. Cir. decided no infringement because accused infringing product did not include a signal with a "clamped sync position."

On an inequitable conduct issue, Fed. Cir. decided that an uncited piece of prior art was not material because it was cumulative.

On a written description issue, Fed. Cir. decided that lack of written description was not shown despite the existence of contested facts regarding the state of video processing art in 1992.

October 10, 2008, Precedential

Asyst Technologies v. Emtrak (link)

Patent case re technology for making silicon wafers. Jury verdict of non-obviousness was decided to be erroneous based on a comment that the jury made on the verdict form. Specifically, jury commented to the effect that an important prior art reference was not considered to be analogous art. Fed. Cir. decided that the asserted claims were obvious over the prior art reference not considered by the jury.

October 9, 2008, Precedential

Predicate Logic, Inc. v. Distributive Software Inc. (link)

Patent case involving re-examined patent re a software development tool. Accused infringer argued that the re-examination impermissibly broadened the patent in certain respects and also changed the scope of the claims in other respects.* Fed. Cir. decided that claims had been neither broadened nor changed.

COMMENT: Fed. Cir. gave a very close reading of the claims and set forth long, difficult-to-follow analysis. This is not a criticism. Some claim interpretation issues require this treatment. Just a fact of patent law life, maybe even part of the charm for practitioners. Case probably could have gone either way.

FOOTNOTE:

* If the claims change in scope then intervening rights can arise, which is why this issue of change in claim scope was relevant.

October 8, 2008, Non-Precedential

Sky Technologies v. SAP (link)

Fed. Cir.: (i) agreed to take discretionary appeal re transfer of patent ownership by operation of law and without written assignment; but (ii) declined to require stay district court case pending the appeal.

October 8, 2008, Non-Precedential

In re Volkswagen of America (link)

Patent case involving multiple actions and multiple patents re tire pressure monitoring systems. Petition for writ of mandamus re a forum non conveniens venue issue denied.

October 7, 2008, Non-Precedential

Murphey v. TPS Enterprises (link)

Pro se case. Fed. Cir. decided that patent license agreement permitted licensee to attempt to sub-license. *yawn*

October 7, 2008, Non-Precedential

Georgalis v. U.S. Patent and Trademark Office (link)

Pro se case. Something about maintenance fees being unconstitutional. Guy lost.

October 7, 2008, Precedential

Cohesive Tech. Inc. v. Waters Corp. (link)

Patent case involving two patents re chromatography devices. On a claim interpretation issue, Fed. Cir. decided that the term "rigid" did not automatically exclude polymer materials, despite some comments in the prosecution history that arguably suggested such a limitation on the interpretation of "rigid."

The district court judge refused to put an anticipation claim before the jury on the theory that the anticipation claim was subsumed by, or somehow duplicative of, an obviousness claim, based on the same prior art, that was tried to the jury. Fed. Cir. rejected this approach and decided that the anticipation claim should have gone to the jury.

On an inequitable conduct issue, there was disagreement, on a point of technology, between the inventors and a declarant who submitted a declaration in support of the patent application while it was pending. Fed. Cir. decided that this disagreement was not material because the disagreement did not really relate to the limitations of the pending claims.

On a claim interpretation issue, Fed. Cir. decided that "about 30 [micrometers]" meant "greater than 25.434 micrometers" based on the tolerance associated with measurements of 30 micrometers set forth in the specification. On a related issue, Fed. Cir. decided that the use of the word "about" prevented its literal interpretation of the "about 30 micrometers" numerical claim limitation from being expanded by the doctrine of equivalents. Fed. Cir. remanded for a determination of whether certain accused infringing products infringed under the correct literal and doctrine of equivalents interpretation of "about 30 micrometers."

On a willfulness issue, Fed. Cir. decided no willful infringement because claim interpretation disputes meant that there was not an "objectively high likelihood" of infringement under the Seagate standard. On a related issue, Fed. Cir. decided that it could not award enhanced damages absent a finding of willfulness, but also sort of suggested that the law may change on this point in the future per Judge Gajarsa's concurring opinion in Seagate.

Fed. Cir. decided not to reassign case to a different district court judge on remand despite the fact that the district court judge had delayed too long (five years) in its rulings after the bench trial.

October 3, 2008, Precedential

Impax Laboratories Inc. v. Aventis Pharmaceuticals Inc. (link)

Fed. Cir. decided that an asserted prior art reference was not really prior art because it was not enabling. The legal standard:

In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1336 (Fed. Cir. 2008) (citing In re Omeprazole Patent Litig., 483 F.3d 1364, 1379 (Fed. Cir. 2007)). In other words, the prior art must enable the claimed invention. Minn. Mining & Mfg. Co. v. Chemque, Inc. (3M), 303 F.3d 1294, 1301 (Fed. Cir. 2002). The “undue experimentation” component of that equation examines (1) the quantity of experimentation; (2) the amount of direction or guidance present; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).

October 2, 2008, Precedential

The John Hopkins University v. Datascope Corp. (link)

Patent case involving three patents re catheters for breaking up blood clots. On an infringement issue, Fed. Cir. decided that accused infringing catheter did not "expand to conform" with the inner wall of a blood vessel as required by the claims.

DISSENT: Judge Newman dissented, arguing that there was substantial evidence to support the jury verdict of non-infringement.

COMMENT: From what I can tell, this was essentially a claim interpretation case where the district court punted on the claim interpretation issue, and then Fed. Cir. wanted to second guess the jury's determination of the claim interpretation issue that they never should have been given in the first place.

September 29, 2008, Precedential

Praxair v. ATMI (link)

Patent case involving three patents re pressurized storage containers.

On an inequitable conduct issue, Fed. Cir. decided that an uncited prior art reference was material despite the facts that: (i) it clearly did not include all claim limitations of the claims under prosecution; and (ii) it disclosed only a short capillary, unlike the long capillaries of the preferred embodiment of the invention under prosecution. The materiality finding was based on statements made by applicant that were inconsistent with the uncited prior art. On another inequitable conduct issue, Fed. Cir. decided that there was also sufficient intent with respect to the material, uncited prior art reference, and that this patent was unenforceable for inequitable conduct. Specifically, Fed. Cir. decided that the facts of the case met a three part test for inferring inequitable conduct intent: (i) uncited reference was highly material; (ii) applicant should have known of the materiality of the reference; and (iii) patentee can't make a "credible good faith explanation" for failure to cite.

One of the other patents in suit was also challenged for inequitable conduct on the basis of the same uncited prior art reference, but Fed. Cir. decided that there was no inequitable conduct for the second challenged patent. This was because the second challenged patent was pretty much done with being prosecuted by the time the inconsistent statements, establishing materiality, were made in connection with the application of the first challenged patent.

On an indefiniteness issue, Fed. Cir. decided that the claim language "port body" was not indefinite because there were sufficient supporting teachings in the specification.

On a claim interpretation issue, Fed. Cir. decided that a "flow restrictor" must restrict flow sufficiently to "prevent a hazardous situation." On another claim interpretation issue, Fed. Cir. decided that "capillary" means "pertaining to or resembling a hair; fine and slender."

On an anticipation issue, Fed. Cir. decided that jury could find patent not anticipated under the statutory presumption of validity despite some expert testimony tending to show anticipation.

LESSON FOR PATENT PROSECUTORS: Fed. Cir. on inequitable conduct:

[The patentee] contends that a good faith explanation was offered, referring to testimony by [the patent prosecutor]. [The patent prosecutor] offered conclusory testimony that he never “intentionally misled the United States Patent Office
about anything” at any time during his career, . . . and that with respect to the ’609 and ’115 patent prosecutions he “did not knowingly withhold any information from the Patent and Trademark Office,” . . . Such statements are entitled to no weight. [The patent prosecutor] also testified as follows:

Q. And did the examiner – isn’t it true that the examiner did not have before him a piece of prior art that showed the use of a restricted flow orifice in the outlet port of a valve head of a pressurized gas cylinder?
A. No, I don’t believe – I believe he would have had prior art that showed that.
Q. Sitting here today, can you point to any such prior art that the examiner had before him in the ’609 patent?
A. Well, again l – I tried to – I asked if he wanted me to go through the file history. I would have to do that, I think. The references that were disclosed in all fairness could be looked at as showing that.

(emphasis added). At best, [the patent prosecutor] expressed his opinion, at the time of the trial, that unspecified references that had been before the examiner would have rendered disclosure of [the uncited prior art] cumulative. However, this testimony is insufficient as a good faith explanation in three respects: [the patent prosecutor]’s testimony does not suggest that, at the time of the prosecution of the ’115 patent, he believed that disclosure of [the uncited prior art] would have been cumulative; he also does not actually state that the alleged cumulativeness was the reason he failed to disclose [the uncited prior art] to the PTO; and he was unable to identify any specific reference that rendered the [the uncited prior art] cumulative. The fact that [the patent prosecutor] may have cited the ’693 patent to the PTO in another context is entirely irrelevant to his good faith in failing to disclose the [the uncited prior art]. Hindsight construction of reasons why a reference might have been withheld cannot suffice as a credible explanation of why, at the time, the reference was not submitted to the PTO.

September 25, 2008, Precedential

Lucent Tech. Inc. v. Gateway Inc. (link)


Patent case with two patents in suit re audio compression technology, specifically mp3. Jury awarded $1.5 billion dollar verdict, but Fed. Cir. reversed: (i) based on lack of standing in the case of a first patent; and (ii) based on non-infringement in the case of the second patent.

In the case of the first patent, Fed. Cir. decided that the plaintiff patentee was not the sole owner of the first patent based on some complicated contractual relationships between the inventors and their respective assignees. Because the plaintiff-patentee did not join the co-owner, it did not have standing to sue. $750M in damages out the window.

In the case of the second patent, the mp3 audio technology covered would only be used, by the customers of the accused infringer manufacturers under certain operating conditions which may (or may not) have been rare. Plaintiff patentee put in no evidence of direct infringement by customers of the accused infringer manufacturers. Fed. Cir. decided that this meant there was no proof of direct infringement. Hence, no indirect infringement and another $750M in damages out the window.

LESSON FOR PATENT PROSECUTORS: Patentee could have used some product and/or software claims on that second patent. Presumably, the manufacturer would have directly infringed a product claim merely by making the product with the software, even absence its actual and/or provable use.

September 24, 2008, Precedential

Broadcom Corp. v. Qualcom Inc. (link)

Patent case involving multiple patents re chipsets for cell phones. On a claim interpretation issue, Fed. Cir. decided that the claim at issue did not implicitly require a "global controller," despite the fact that this broad interpretation of the claim resulted in its invalidation over a prior art reference.

On a claim interpretation issue involving the claim language "simultaneously participate," Fed. Cir. decided that this claim language refers to (or at least encompasses) interleaved communications based largely on some inferences drawn a figure in the patent drawings.

On a claim interpretation issue involving the claim language "networks," Fed. Cir. decided that the issue was not timely raised before the district court and therefore could not be raised on the Fed. Cir. appeal.

On an infringement issue, Fed. Cir. decided that sufficient evidence supported the jury's verdict that the accused infringing product "selectively coupl[ed]" a cell phone to an appropriate communication network (for examples, telephone network, Internet network).

The accused infringer made an interesting argument based on inducement of infringement and willfulness. Specifically, because the law no longer requires* opinion of counsel letters to avoid willful infringement, accused infringer argued that the absence of opinion of counsel letters could no longer be used to establish intent for purposes of proving inducement of patent infringement. Fed. Cir. rejected this creative argument explaining that the standard of intent for inducement is different than that for willfulness and that different evidence may be relevant under the two different standards.

Fed. Cir. decided that patentee was entitled to a permanent injunction, largely because patentee sufficiently competed with accused infringer in the marketplace. It is noted that the directness and extent of their competition was a vigorously disputed issue.

COMMENT: Accused infringer's argument in this case deserves some reflection. At first blush one might be inclined to think that willful infringement is punitive and would require a lot of intent, and that inducement should be regarded as something to close a loophole, of sorts, in direct infringement law, with direct infringement being strict liability and suggesting that relatively low intent should be required. Whether you share this gut feeling about the relative intent that should be required for willfulness as contrasted with inducement, the accused infringer's argument in this case drilled down past this level of analysis to compare the actual intent standards that have been articulated by Fed. Cir. for the respective infringement doctrines. Willfulness requires "objective recklessness" while inducement requires
"inducement requires evidence of culpable conduct, directed to encouraging another’s infringement, not merely that the inducer had knowledge of the direct infringer’s activities."
DSU Medical Corporation v. JMS Company, 471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc in relevant part). When put side by side, the standard of intent for inducement looks a lot more rigorous. Once this is understood, it becomes understandable why accused infringer argued that evidence not sufficient to show mere willfulness (that is, absence of opinion letters in evidence) could be considered sufficient to show inducement. There is indeed a subtle inconsistency here.

CRITICISM: I don't think Fed. Cir. did a good job explaining away the subtle inconsistency noted above. Specifically, they did not put the willfulness intent and inducement intent standards side by side, thereby obscuring the force of the accused infringer's legal argument. I don't have great ideas about how to reconcile the apparent contradiction here, but it should be reconciled. As it stands now, it looks like Fed. Cir. thinks that "should have known" should be easier to prove than "was reckless," and that just be can't right.

FOOTNOTE(S):

* Sound, reliable opinion letters are still helpful, and almost certainly the most effective way, to avoid a willfulness and its frightening potential for treble damages.

September 22, 2008, En Banc, Precedential

Egyptian Goddess v. Swisa Inc. (link)

This en banc Fed. Cir. case makes some fundamental clarifications to the law of infringement of design patents. Fed. Cir. reversed recent design patent cases that used a two part test for design patent infringement, including an ordinary observer prong and a point of novelty prong. The standard for design patent infringement is now:

[W]e hold that the “point of novelty” test should no longer be used in the analysis of a claim of design patent infringement. . . . [I]n accordance with Gorham and subsequent decisions, we hold that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed. Under that test, as this court has sometimes described it, infringement will not be found unless the accused article “embod[ies] the patented design or any colorable imitation thereof.” Goodyear Tire & Rubber Co., 162 F.3d at 1116-17 . . .

In some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear “substantially the same” to the ordinary observer, as required by Gorham. In other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art, as in many of the cases discussed above and in the case at bar. . . .

Under the ordinary observer test, however, it makes sense to impose the burden of production as to any comparison prior art on the accused infringer.

Fed. Cir. also had comments about the respective roles of the fact finder and the legal decider on design patent infringement issues:

Given the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to “construe” a design patent claim by providing a detailed verbal description of the claimed design.
With that said, it is important to emphasize that a district court’s decision regarding the level of detail to be used in describing the claimed design is a matter within the court’s discretion, and absent a showing of prejudice, the court’s decision to issue a relatively detailed claim construction will not be reversible error. At the same time, it should be clear that the court is not obligated to issue a detailed verbal description of the design if it does not regard verbal elaboration as necessary or helpful. . . .

While it may be unwise to attempt a full description of the claimed design, a court may find it helpful to point out, either for a jury or in the case of a bench trial by way of describing the court’s own analysis, various features of the claimed design as they relate to the accused design and the prior art. In a case such as this one, for example, there would be nothing wrong with the court pointing out to a jury that in the patented design only three sides have buffers attached, while in the accused product (and in the three-sided [prior art] patent), all of the sides have buffers attached. It would similarly be permissible for the court to point out that, for example, although the Falley Buffer Block has four sides, it is not hollow, unlike the design of the ’389 patent, the Nailco patent, and the accused Swisa product.

Apart from attempting to provide a verbal description of the design, a trial court can usefully guide the finder of fact by addressing a number of other issues that bear on the scope of the claim. Those include such matters as describing the role of particular conventions in design patent drafting, such as the role of broken lines, see 37 C.F.R. § 1.152; assessing and describing the effect of any representations that may have been made in the course of the prosecution history, see Goodyear Tire & Rubber Co., 162 F.3d at 1116; and distinguishing between those features of the claimed design that are ornamental and those that are purely functional, see Oddzon Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997) (“Where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent.”).

Providing an appropriate measure of guidance to a jury without crossing the line and unduly invading the jury’s fact-finding process is a task that trial courts are very much accustomed to, and any attempt by an appellate court to guide that process in detail is likely to do more harm than good. We therefore leave the question of verbal characterization of the claimed designs to the discretion of trial judges, with the proviso that as a general matter, those courts should not treat the process of claim construction as requiring a detailed verbal description of the claimed design, as would typically be true in the case of utility patents.

COMMENT: While Fed. Cir.'s legal standards sound find to me in the abstract, I am a bit surprised by the result they decided on the facts of this case. Specifically, the opinion (at link above) has a picture of the patented design, the accused infringing design and the two closest pieces of prior art. To me, the patented design and the accused design look much closer to each other than either of them do to either piece of prior art. Accordingly, I am surprised that this case went in favor of the accused infringer. I am even more surprised that Fed. Cir. decided that this determination could be made by summary judgment. I am even more surprised that this summary judgment determination was en banc with no dissent.

QUESTION AND COMMENT: Fed. Cir. seems to suggest, without actually coming out and saying, that a comparison with the prior art can only be used to defeat design patent infringement, but not to strengthen a claim of design patent infringement. Is this a correct interpretation of Egyptian Goddess? By looking at those pictures in the opinion, the "closest" prior art makes me, personally, think that the case for infringement is less strong than when I look at only the patented design and accused design without letting my eyes wander over to the prior art.

September 22, 2008, Precedential

Aristocrat Technologies Australia PTY Lmtd. v. International Game Tech. (link)

Patent applicant abandoned application by filing national in the U.S. a day late. The Patent Office invited patent applicant to revive application by petition. Patent applicant filed a petition of the "inadvertent abandonment" type, rather than the "unavoidable abandonment" type. The Patent Office accepted the petition, and issued a patent and then a continuation patent. Patentee sued on its patents, and accused infringer defended on the basis that an inadvertent abandonment type petition was inappropriate for a missed PCT national filing date in the U.S. Fed. Cir.: (i) declined to decide whether an inadvertent abandonment petition was appropriate to correct the missed national filing date; (ii) decided that any inappropriate correction was not a defense in a patent infringement action; and (iii) cautioned that inequitable conduct might be found depending on the circumstances of the questionable petition.

COMMENT: Seems like Fed. Cir. could have and should have decided whether the petition was appropriate. Practitioners need to know.

September 19, 2008, Precedential

Broadcom Corp. v. International Trade Commission (link)

Patent case re chip sets for mobile phones. Fed. Cir. decided issues relating to: (i) correct timing for an appeal from the ITC up to Fed. Cir.; (ii) claim interpretation issues re the phrase "control signal"; and (iii) claim interpretation issues re the phrase "weighted current sources."

September 19, 2008, Precedential

Commonwealth Scientific and Industrial Research Org. v. Buffalo Tech. Inc. (link)

Patent case re wireless indoor computer networks. Roughly speaking, the patent in suit covered a certain kind of wireless network for computers located within the same building, while the prior art showed a similar wireless network for use across outdoor spaces (for example, computer equipment in moving vehicles). District court granted summary judgement of non-obviousness. Fed. Cir. vacated this summary judgement noting that there were fact issues, especially under the post-KSR state of obviousness law.

COMMENT: KSR, with its criticism of rigid legalistic rules and its invocation of common sense would seem to naturally make obviousness disputes less amenable to summary judgement, and this case seem to be a straightforward example of that.

QUESTION: When would the outdoor wireless networks (of the type at issue in this case) have come indoors if the inventor(s) had never been born?

September 18, 2008, Precedential

The Campbell Pet Co. v. Miale (link)

Patent case re animal stretchers. On a personal jurisdiction issue, Fed. Cir. decided that a State of Washington federal district court had specific jurisdiction over a declaratory judgement action for patent infringement, noting:

In this case, the district court erred by characterizing [the patentee]’s actions at the June 2007 convention as constituting nothing more than attempts to inform [the accused infringer] of suspected infringement. As [the accused infringer] points out, its employees’ affidavits assert that [the patentee] did more at the trade show than simply inform [the accused infringer] that its animal stretchers might infringe her patents. The affidavits state that [the patentee] attempted to have [the accused infringer]’s allegedly infringing products removed from the convention and that she told [the accused infringer]’s customers that [the accused infringer]’s products were infringing. Of critical importance to the issue of personal jurisdiction, [the patentee]’s attempts at "extra-judicial patent enforcement" were targeted at [the accused infringer]’s business activities in Washington and can fairly be characterized as attempts to limit competition from [the accused infringer] at the Seattle convention. Those efforts go beyond simply informing the accused infringer of the patentee’s allegations of infringement.

QUESTION: There does not seem to be a per se rule that sufficient grounds for declaratory judgement of patent infringement would necessarily provide Constitutionally sufficient grounds to bring a suit where the declaratory judgement plaintiff is located. Would such a per se rule be a good idea?

September 16, 2008, Precedential

Excelstor Tech. Inc. v. PAPST Licensing GMBH & Co. KG (link)

This is an important case. Earlier this year, the Supreme Court affirmed patent exhaustion in a case, called Quanta, making it clear that a patentee cannot give a patent license to a manufacturer and then sue a customer for buying or using the licensed product made by the manufacturer, at least absent some explicit language to this effect in the patent license. In this patent case re disk drive patents, Fed. Cir. explains some of the limits of patent exhaustion post-Quanta:

Furthermore, [the patent licensee's]’s claims do not establish federal subject matter jurisdiction because they do not require resolution of a substantial question of federal patent law. The exhaustion doctrine prohibits patent holders from selling a patented article and then “invoking patent law to control postsale use of the article.” Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. ___, 128 S. Ct. 2109, 2122 (2008). [The patent licensee's] amended complaint does not allege that [the patentee] invoked the patent laws to control the post-sale use of the hard disk drives. . . . [The patent licensee's] amended complaint alleges that [the patentee] violated the patent exhaustion doctrine by “collecting two different royalties from the same patented product.” Appellants’ Am. Compl. at 3. But there is no federal cause of action for collecting royalties twice on the same goods. Patent exhaustion prohibits patentees from enforcing patent rights in certain circumstances, but it does not forbid multiple licenses on a single product or even multiple royalties. [The patentee's] alleged collection of two sets of royalties in this case may, eventually, prove to have been prohibited by the terms of the individual license agreements, or such a collection scheme may prove to have been fraudulent, but patent law is not a necessary element of such determinations. They are properly made in this case by state, not federal, courts, under state law of contract and fraud.

(BIG) QUESTION: Can a patentee get more than one bite at a single supply chain, so long as the license documents are correctly worded and everybody is apprised of what is going on?

COMMENT: Fed. Cir. seems to be purposely leaving the big question open here, as did the Supreme Court in the Quanta case. It would be nice to have an answer, though. Issue comes up.

12 September 2008, Non-Precedential

Duratech Ind. International v. Bridgeview Manufacturing Inc. (link)

Patent case re farm equipment for handling hay bales. On a claim construction issue, Fed. Cir. decided that claim phrase "a manipulator mounted inside the container for driving the crop material" was not means-plus-function claim language under 35 USC section 112, paragraph 6, explaining:

The ordinary meaning of the term suggests that “manipulator” is a noun whose meaning connotes sufficient structure. “Manipulator” is not a generic structural term of the ilk of such placeholder terms as “mechanism,” “device,” or “element,” whose meaning requires illumination from the specification. No doubt, the term “manipulator” does not conjure up any one specific structure. However, it does convey to one of skill in the art a certain genus of structures known as “manipulators.” [Patentee] presented evidence that practitioners within the mechanical arts field frequently use the term “manipulator” to define structure coupled with functions, pointing out several prior art device patents in which the term is used in claims without being coupled to the word “means.” Tellingly, [The accused infringer's] own expert opined that “a manipulator performing nearly identical functions is shown in the prior art,” implicitly evidencing his understanding of “manipulator” as a word whose meaning is not purely functional. This court’s precedent is clear that “the fact that a particular mechanism . . . is defined in functional terms is not sufficient to convert a claim element containing that term into a ‘means for performing a specified function.’” Greenberg v. Ethicon Endo-Surgery, 91 F.3d 1580, 1582 (Fed. Cir. 1996). As this court noted in Greenberg, many devices take their names from the functions they perform, such as filters, brakes, locks, and clamps. Id. Similarly, simply because claim 1’s “manipulator” takes its name from the verb “manipulate,” this does not compel the application of § 112, paragraph 6.

CRITICISM: I have long doubted that there is any real, principled distinction between functionally defined nouns and structurally defined nouns, as Fed. Cir. tries to draw under 35 USC section 112, paragraph 6 law. I think this case really shows the difficulty with this distinction. Here, the expert's words do not mean what Fed. Cir. makes them out to mean, and this case could have just as easily gone the other way.

COMMENT: Should have been precedential to draw attention to the difficulty of applying current 35 USC section 112, paragraph 6 law.

September 9, 2008, Precedential

Medical Solutions v. C. Change Surgical (link)

Can the display of a patented device at a trade show ever be, in and of itself, grounds for personal jurisdiction of a patent infringement suit? Fed. Cir. declined to answer this question, but did decide that the activities at the trade show in this case did not meet the claim elements of the asserted patent and were insufficient to be a "use" of the patented technology sufficient to impart personal jurisdiction.

September 8, 2008, Precedential

Carnegie Mellon University v. Hoffmann La-Roche (link)

Patent case re genetic material. Fed. Cir. decided that patents were invalid under the written description requirement because they did not disclose a sufficient number and/or variety of species to support a claim to a wide genus. Fed. Cir. also noted that the Gentry Gallery case does not add an "essential element" requirement to written description requirement law. That is, claims are not invalid for failing to solve a problem alleged to be solved by the specification.

September 8, 2008, Non-Precedential

Hildebrand v. Steck Manufacturing Co. (link)

Pro se appeal of denial of costs.

COMMENT: *yawn*

September 4, 2008, Precedential

Janssen Pharmaceutica, N.V. v. Apotex (link)

Case involving ANDA's for generic drugs, and related rights and prerogatives for suing for related patent infringement (or lack thereof).

COMMENT: *yawn*

COMMENT: Somebody would have to pay me real money before I would try to understand this stuff.

September 4, 2007, Precedential

In Re Swanson

A prior art reference may raise a new question of patentability sufficient to support a re-examination, even if the reference has been considered by a the Patent Office, a district court and Fed. Cir. itself.  In this case, the previously-considered reference did raise a substantial question of patentability, and was sufficient to support a re-exam, because it was previously considered as a secondary reference and not as a primary reference.

September 2, 2008, Precedential

Howmedia Osteonics Corp. v. Wright Med. Tech. Inc. (link)

Patent case re knee prosthesis technology. On a claim interpretation issue, the claim language involved "at least one condylar element" that had to meet certain geometric limitations. The accused infringing product had a condylar element that met the geometric limitations and another condylar element that did not. Fed. Cir. decided that a prosthetic device would need only a single condylar element meeting the geometric limitation to be covered by the claim, noting that this was a close issue.

On a issue relating to a release contract, Fed. Cir. decided that the patent infringement claims of this case were not covered by the release.

CRITICISM: There was a dissent on the claim interpretation issue. I disagree that the claim interpretation issue was close and I strongly disagree with the dissent that the claim interpretation issue should have been decided that other way. There are enough claim meaning disputes without finding ambiguity where none exists. Patent claim drafters seem to be held to higher standards of precise usage than just about anyone else in any endeavor, legal or otherwise -- we deserve the benefit of getting it right where we do, as here, get it right.

August 29, 2008, Precedential

800 Adept, Inc. v. Murex Securities, Ltd. (link)

Patent case technology for routing 1-800 telephone calls. Both parties had patents and cross-sued each other.

On a claim interpretation issue, Fed. Cir. decided that "assigning a telephone number" based on certain geographic co-ordinates requires assignment of the number itself and not merely assignment of an algorithm used to determine the co-ordinates at a later time. Fed. Cir. reached this claim construction based on in part upon the prosecution history, drawing an interesting distinction between two different ways of using the prosecution history:

On a procedural issue, Fed. Cir. decided that the scope of a jury verdict of invalidity was limited to certain asserted claims because only these specific claims had been litigated at the district court. Fed. Cir. did overturn the jury verdict of invalidity in respect of certain of these certain asserted claims.

On a Constitutional patent-related issue, Fed. Cir. decided that state law tortious interference claims, based on accusations of patent infringement were preempted by federal patent law, unless there is bad faith, including: (i) an objective component of objective baselessness; and (ii) a subjective component of subjective bad faith. Fed. Cir. decided that the these standards of bad faith were not met in this case and that the tortious interference claims were therefore preempted.

August 28, 2008, Non-Precedential

Lexion Medical, LLC v. Northgate Tech. Inc. (link)

Patent case re laproscopic surgery patents. On one claim interpretation issue, Fed. Cir. decided in favor of patentee's proposed interpretation because patentee's arguments made during prosecution history were made in connection with claim language not present in the claims at issue in the present case. Also, Fed. Cir. decided that a claimed step of "sensing the temperature of the gas as it exits the chamber" would cover products or processes where this temperature was sensed remotely and indirectly by hardware not physically present right at the location of the chamber exit. Also, Fed. Cir. decided a claim interpretation issue relating to the phrase "predetermined temperature" unfavorably to the patentee.

Fed. Cir. also decided that continuing "infringement" after a jury verdict of infringement was not willful under the "objective recklessness" standard of In re Seagate, especially in light of the fact that Fed. Cir. vacated the infringement verdict due to reversal of one of the trial court's claim interpretations.

COMMENT: I often comment that Fed. Cir. cases should have been precedential. This one, really, really should have been. Helpful guidance on recurring fact patterns.

August 28, 2008, Non-Precedential

Linear Tech. Corp. v. International Trade Commission (link)

Patent case re dc/dc converter patent. Fed. Cir. decided that claims at issue were anticipated, primarily because of its interpretation of a disputed passage in the prior art reference regarding control of switches by feedback from an electrical output signal.

COMMENT: Should be precedential.

August 25, 2008, Precedential

Star Scientific Inc. v. R.J. Reynolds Tobacco Co. (link)

Patent case re tobacco curing. On inequitable conduct issue, Fed. Cir. decided no inequitable conduct because: (i) evidence about patentee's motivations did not meet the clear and convincing burden of proof; and (ii) a certain reference was cumulative.

On an indefiniteness issue, Fed. Cir. decided no indefiniteness despite the practical difficulty in determining whether the claim limitation at issue ("anaerobic condition") is met by a given product or process.

August 21, 2008, Non-Precedential

Merck & Co., Inc. v. Apotex, Inc. (link)

Dispute too speculative to meet the justiciable case or controversy requirement and associated standards of MedImmune. Fed. Cir. notes a recent development in pharmaceutical patent law:

Exclusivity forfeiture provisions were added by the Medicare Prescription Drug, Improvement and Modernization Act of 2003 (“MMA”), in order to reduce potential bottlenecks to competition which could be created by the Hatch-Waxman exclusivity periods. The MMA provides that the 180-day exclusivity period “shall be forfeited by a first applicant if a forfeiture event occurs with respect to that first applicant.” The forfeiture events are spelled out in 21 U.S.C. § 355(j)(5)(D)(i). The “failure to market” forfeiture events, 21 U.S.C. § 355(j)(5)(D)(i)(I)(aa) and (bb), are the ones primarily implicated in this action.

August 21, 2008, Precedential

Leggett & Platt Inc. v. Vutek, Inc. (link)

Patent case re printers. Interesting case that comes down to whether a prior art reference had a powerful enough radiation source to "substantially cure" ink. Fed. Cir. decided, on summary judgement, that it did. Patent invalid for anticipation.

COMMENT: Looked like a fact issue to me.

August 20, 2008, Precedential

In Re Omeprazole Patent Litigation (link)

Patent case re pharmaceutical patent on the drug Prilosec. On jurisdiction, fed. Cir. decided that the district court had jurisdiction despite expiration of the patents in suit. On infringement, Fed. Cir. affirmed holding of literal infringement and associated claim interpretations. On a public use bar, Fed. Cir. decided that the technology was not "ready for patenting" at the time of the public use, meaning that there is no public use bar invalidity. Fed. Cir. comment on "experimental use" defense (which it did not apply here):

[T]he district court misapplied this circuit’s law with respect to the experimental use exception. The district court found that, even if Astra’s formulation had been reduced to practice before or during the clinical studies, the studies were experimental and therefore negated the public-use bar to patentability. [The accused infringer] correctly points out, however, that it is clear from this court’s case law that experimental use cannot negate a public use when it is shown that the invention was reduced to practice before the experimental use. . . . We therefore do not agree with the district court’s ruling that the experimental use exception served to negate the public-use bar to patentability.

August 19, 2008, Precedential

DSW Inc. v. Shoe Pavilion Inc. (link)

Patent case re shoe displays. Preferred embodiment in the specification included some mechanical features called the "Track and Roller Limitation." Fed. Cir. declined to interpret certain method claims to require the Track and Roller Feature because: (i) the method claims did not really have words that implied the Track and Roller Limitation; and (ii) alternative embodiments in the specification did not use the Track and Roller Limitation.

On a damages issue, Fed. Cir. stated that after an infringer gets actual notice of infringement, then infringement damages begin to accrue immediately and there is no grace period for the infringer to phase out the infringing product or process. Fed. Cir. noted that phasing out the infringing product or process might be relevant in a willful infringement analysis.

LESSON FOR PATENT PROSECUTORS: Patent prosecutor got broad claim language, and also included alternative embodiments in the specification, which ended up helping to support the broad claim language. Very good work!

August 19, 2008, Precedential

Cooper Technologies Co. v. Director U.S. Patent and Trademark Office (link)

Are applications claiming pre-Novemeber-1999 priority eligible for inter partes reexam? Some are, yes:

Pursuant to section 4608 of the [American Inventors Protection Act of 1999 ("AIPA")], the inter partes reexamination procedure is available for “any patent that issues from an original application filed in the United States on or after” November 29, 1999—the date of the enactment of the AIPA. Id. § 4608, 113 Stat. at 1501A-572 (emphasis added). The United States Patent and Trademark Office (“Patent Office”) has interpreted the phrase “original application” in section 4608 “to encompass utility, plant and design applications, including first filed applications, continuations, divisionals, continuations-in-part, continued prosecution applications and the national stage phase of international applications.” Rules to Implement Optional Inter Partes Reexamination Proceedings, 65 Fed. Reg. 76,756, 76,757 (Dec. 7, 2000). Appellant contends that, contrary to the determination of the Patent Office and the district court, “original application” refers to the first application in a chain of applications from which priority is claimed. We conclude that the Patent Office’s interpretation is reasonable and is entitled to Chevron deference. See Chevron U.S.A., Inc. v. Natural Res. Def. Council, Inc., 467 U.S. 837 (1984).

August 19, 2008, Precedential

In Re Cygnus Telecommuincations Tech., LLC. (link)

Patent infringement case for patents related to cost effective ways of placing foreign telephone calls to the United States. In a consolidated, multiple defendant litigation, the district court held, on summary judgement, that the patents-in-suit were invalid by on-sale bar type anticipation.

On a collateral estoppel issue, Fed. Cir. decided that there was no collateral estoppel against the patentee on the invalidity issue despite the fact that the patentee did not appeal the district court's invalidity holding with respect to all defendants in the case.

On an appeal issue, Fed. Cir. decided that the patentee could not argue against summary judgement on appeal by pointing to evidence that was in the record, but not pointed out during summary judgement briefing at the district court.

On the on-sale bar issue, Fed. Cir. decided that the patents were invalid under on-sale bar type anticipation because they were: (i) ready for patenting prior to the critical date; and (ii) sold commercially prior to the critical date. Fed. Cir. rejected patentee's experimental use contentions and contentions that certain paying customers were beta testers.

On another appeal issue, Fed. Cir. also decided miscellaneous issues related to a joint appendix and costs associated therewith. Fed. Cir. on appeal tactics:

Finally, AT&T has moved to strike various portions of Cygnus’s reply brief that make accusations against AT&T and its counsel, such as “AT&T is not telling the truth,” “AT&T lied to the court . . . It was a lie to state that the 386 system was commercially used,” and “AT&T suborned false testimony, a crime. The case should be remanded to the district court to refer the crime to the appropriate authorities for investigation.” This court does not condone ad hominem attacks. Typically, however, such attacks do more harm than good to the party that launches them. At this point, because we see no useful purpose that would be served by taking a black marker to a few lines from the appellant’s reply brief, we deny the motion.

LESSON FOR PATENT PROSECUTORS: Get those patent applications on file early, not late (but you knew that).

August 18, 2008, Precedential

Voda v. Cordis Corp. (link)

Patent infringement case including a veritable grab bag of contested issues, specifically: (i) claim construction; (ii) anticipation; (iii) obviousness; (iv) doctrine of equivalents; (v) willfulness; and (vi) injunctive relief.

To set up the claim construction issue, it is noted that the accused infringer believed no infringement existed because a portion of the catheter that was straight (in its rest state before insertion into the human body) was made to be curved in the accused infringing catheter. For this reason, the accused infringer argued that the claim language specifying that the catheter be placed "along a line" should be interpreted as "along a straight line," thereby excluding the accused catheter. Fed. Cir. rejected the "straight line" interpretation, refusing to read this feature of the preferred embodiments of the specification into the claims.

On anticipation, Fed. Cir. decided that it was not immediately clear whether the prior art argued as anticipatory really disclosed all the limitations because it was unclear how the prior art catheter was precisely located in the human body when put into use. There was conflicting expert testimony on this, so Fed. Cir. decided that there was sufficient evidence to support the jury verdict of no anticipation.

On obviousness, Fed. Cir. decided that there was sufficient evidence to support the jury verdict, characterizing the argument for obviousness as "perfunctory."

On doctrine of equivalents, the issues related to whether the curved catheter of the accused infringer could doctrine of equivalents infringe claims that explicitly recited a straight catheter. Fed. Cir. decided some claims in the case were infringed under the doctrine of equivalents and others not. Specifically, because of prosecution history estoppel and the law of Festo, claims that had been amended to include the word "straight" could not be infringed under the doctrine of equivalents, but claims that included the word "straight" right from the start could be infringed under the doctrine of equivalents.

On willfulness, Fed. Cir. remanded for a determination under the legal standards of the intervening Seagate case:

Under the new Seagate standard for willfulness, “proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness.” 497 F.3d at 1371. “[T]o establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.” Id. “If this threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer.” Id. The Seagate decision also clarified that there is “no affirmative obligation to obtain opinion of counsel” in order to avoid liability for willful infringement. Id.

On injunctive relief, Fed. Cir. decided that showing "irreparable injury" to an exclusive licensee would not meet the "irreparable injury" standard for granting a permanent injunction to the patentee because the "irreparable injury" must be to the patentee itself.

COMMENT: The Festo part of the doctrine of equivalents decision did not include any foreseeability-tangentialness analysis. Perhaps this is because Fed. Cir. decided that other claims, to which Festo did not apply, would cover the accused product. Or perhaps Fed. Cir. stayed away from foreseeablity analysis because, in this case, with amended and unamended claims containing the same not-literally-infringed claim language, such analysis would heighten the mild absurdity that patent prosecutors are not deemed to consider design-arounds when drafting the original application, but rather only when facing a rejection from the Patent Office.

COMMENT: It is not clear why "irreparable injury" to an exclusive licensee cannot be imputed to a non-manufacturing patentee. Fed. Cir. opinion sort of treats this as self evident, but I don't think it is. Because the exact nature of the "irreparable injury" to the exclusive licensee is not identified or discussed, it is difficult to seriously consider whether or not it should be imputed to a non-manufacturing patentee under the policies underlying the Supreme Court's eBay decision.

August 15, 2008, Precedential

Prasco v. Medicus Pharmaceutical Corp. (link)

Fed. Cir. decided that a patent-related declaratory judgement action against the patentee should be dismissed because it did not meet the case or controversy requirement under the standards of MedImmune. Specifically, declaratory judgement plaintiff was planning to market a cleansing product similar to one marketed by the patentee. The patentee marked its cleanser product with four patent numbers. In the past, the patentee had also sued the declaratory judgement plaintiff for patent infringement for patent infringement pursuant to a different patent for a different product. The patentee also refused to sign a covenant not to sue. Although Fed. Cir. thought that some of these factors were relevant to the case or controversy analysis, it decided that, under the totality of the circumstances, there was no case or controversy.

August 15, 2008, Non-Precedential

Brady Construction Innovations Inc. v. Perfect Wall Inc. (link)

Reissue patent had a claim that was in some respects broader, and in some respects narrower, than corresponding claims of the original patent. Fed. Cir. decided that reissue claim was invalid as an impermissibly broadened reissue under 35 USC section 251.

Fed. Cir. decided case was not exceptional, primarily because no inequitable conduct had occurred, so no attorneys' fees under 35 USC section 285.

COMMENT: Should have been precedential.

August 13, 2008, Precedential

Jacobsen v. Katzer (link)

Fed. Cir. decides appeal in software copyright case because appellant's case also included a declaratory judgement action against appellee relating to a patent owned by the appellee.

August 7, 2008, Non-Precedential

Uniloc USA Inc. v. Microsoft Corp. (link)

District court judge hired an unpaid intern who had previously authored books on behalf of one of the parties to the litigation, and had a financial relationship with the litigant related to those books. Despite this, Fed. Cir. decided that district court judge did not have to recuse himself. Fed. Cir. used the legal standards of the regional circuit (that is, the First Circuit) in making its recusal decision.

In a split decision, Fed. Cir. also decided that patent infringement issues could not be decided on summary judgement here.

COMMENT: Should have been precedential.

CRITICISM: The fact issues that precluded summary judgement here looked to me more like claim interpretation issues than jury issues. The claim interpretation issue was extremely close -- it was one of those classic and intractable reading-the specification-into-the-claims versus interpreting-the-claim-language-in-light-of-the-specification claim interpretation issues. I sort of got the feeling that the closeness of this particular claim interpretation issue was what lead Fed. Cir. to (mis)characterize it as something else.

August 5, 2008, Precedential

Proveris Scientific Corp. v. Innovasystems Inc. (link)

Case involving the Hatch-Waxman safe harbor provision, 35 USC section 271(e), from patent infringement for certain drugs and medical devices. Fed. Cir. decided that the safe harbor did not cover a spray testing system used to scientifically study aerosol flow rates for various spray-on drugs. Although the spray testing system was used, pretty much exclusively, in the process of getting FDA approval for various drugs, the spray testing system was not itself subject to FDA approval.

August 1, 2008, Non-Precedential

In Re Freescale Semiconductor Inc. (link)

ITC refused to grant a stay pending re-examination proceedings at the USPTO because the ITC case was far along and the re-examination was just beginning. Fed. Cir. refused to grant a writ of mandamus to force the ITC to stay in these circumstances.

COMMENT: Should have been precedential.

August 1, 2008, Precedential

Sollami Co. v. Kennametal Inc. (link)

Fed. Cir. decided that district court case could be stayed pending reissue proceedings in the USPTO:

In Gould v. Control Laser Corp., 705 F.2d 1340 (Fed. Cir. 1983), we held that an order staying district court proceedings pending reexamination by the PTO was not appealable. By contrast, in Slip Track Sys., Inc. v. Metal Lite, Inc., 159 F.3d 1337, 1340 (Fed. Cir. 1998), this court held that under the facts of that case, an order staying district court proceedings pending reexamination by the PTO was an appealable order because it effectively could put one of the appellants out of court. We explained that after the PTO reexamination proceedings concluded, it was possible that the appellants would be unable to raise the issue of priority of invention in the district court, and the stay order was a “’final decision’ for appealability purposes.” Slip Track, 159 F.3d at 1340.

Sollami has not asserted that any patent issue would escape review by a federal court if the case is stayed pending PTO proceedings. Instead, Sollami contends that the case should not have been stayed because the PTO proceedings will not resolve an issue related to the pending matters before the district court. Thus, Sollami has not shown that the district court’s stay order effectively puts Sollami out of court.

August 1, 2008, Non-Precedential

Aspex Eyewear Inc. v. Altair Eyewear Inc. (link)

Patent infringement case involving eyeglasses frames with magnets for securing auxiliary lenses, such as sunglass lenses, to the rest of the eyeglasses assembly. On claim interpretation, Fed. Cir. gave: (i) a broad interpretation to the term "frame;" and (ii) a narrow interpretation to the term "retaining mechanism." On claim interpretation issue (ii), the reason that "retaining mechanism" was interpreted narrowly is because it was interpreted as means-plus-function claim language. Fed. Cir.'s explanation on this decision to treat the "retaining mechanism" as a means-plus -function element is worth reading:

On appeal, Aspex argues that the claim limitations that require the “retaining mechanisms” to “define a frontal plane” and recite “a bridge connecting the two retaining mechanisms and holding the two retaining mechanisms together” establish that the “retaining mechanisms” are “physical structures.” Appellant’s Br. at 27. But the question is not whether “retaining mechanisms” are physical structures but whether they are sufficiently definite structures.

In Massachusetts Institute of Technology & Electronics for Imaging, Inc. v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006), this court affirmed the district court’s determination that “colorant selection mechanism” was a means-plus-function limitation. We stated that “[t]he generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device’ typically do not connote sufficiently definite structure.” Id. at 1354. Thus, we noted that “[t]he term ‘mechanism’ standing alone connotes no more structure than the term ‘means.’” Id. We concluded that “colorant selection” had no generally understood meaning in the art that would connote sufficiently definite structure. Id.
On the other hand, in Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996), this court reversed the district court’s holding that the claim limitation “detent mechanism” was a means-plus-function limitation. We stated that “‘detent’ denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms.” Id. at 1583 (noting that dictionaries defined “detent,” among other ways, as a part of a mechanism that locks or unlocks a movement).

This case is more analogous to MIT than Greenberg. Here, “mechanism” is a generic term, and its modifier, “retaining,” is also quite broad, meaning “to hold back, keep, restrain.” E.g., Webster’s Ninth New Collegiate Dictionary 1006 (1990) (defining “retain”). Altair’s expert Dr. Leck stated in his expert report that “‘retaining mechanism’ has no common meaning in the eyeglass industry,” and that he had no “mental picture of a specific structure when [he heard] the term.” When David Chao, one of the inventors, was asked whether there was “a commonly recognized structure in the industry for a retaining mechanism,” he testified only that there were multiple types of retaining mechanisms that could retain lenses. Thus, there is no indication in the record that “retaining mechanism” connotes definite structure to a person of ordinary skill in the art. We affirm the district court’s holding that “retaining mechanism” is a means-plus-function limitation. Because it is undisputed that the only structure disclosed in the specification for performing the recited functions (i.e., supporting the lenses and defining a frontal plane) are rims, the district court correctly construed this claim limitation as “a structure that keeps the lenses in place using rims.”

QUESTIONS: Because of the means-plus-function determination here, the patentee would have had to describe all the different kinds of "retaining mechanisms" that it wanted to literally cover over its 20 year patent term at the time it filed its initial application. Given that the "retaining mechanism" itself was not the focus of the inventor's inventive effort, would this be a technologically helpful disclosure for the eyeglass assembly engineering community? Would it be likely to either produce or publicize types of "retaining mechanisms" that would not otherwise be used to their fullest potential and/or best advantage? Or would this effort of listing all kinds of "retaining mechanisms" just amount to a make-work laundry list for a patent agent somewhere?

MORE QUESTIONS: Eyeglasses that have auxiliary frames secured by magnets is another neat idea. Where can I get these? More importantly, why wasn't it invented earlier? And the always frustrating counterfactual: would these magnetic eyeglasses have been invented earlier or later if not for the US patent system?

August 1, 2008, Precedential

Research Corp. Technologies Inc. v. Microsoft Corp. (link)

Fed. Cir. decided that the district court judge had done a very bad job on this patent case on issues of inequitable conduct, priority claim, literal infringement and doctrine of equivalents infringement. Accordingly, Fed. Cir. variously reversed, vacated and/or remanded the work of the district court judge and ordered the district court to assign a different trial judge on remand.

July 31, 2008, Precedential

Yingbin Nature Wood Ind. Co. v. International Trade Commission (link)

Fed. Cir. decided that appeal was partially moot and partially not moot. Specifically, Fed. Cir. decided that: (i) certain infringement issues were moot; and (ii) certain validity issues were not moot. The infringement issues were moot because the accused products had been definitively established as infringing certain other claims of the patentee's patents, that is, other claims that had no validity issues. The validity issues were not moot because the patent claims with the validity issues expired 108 days later than other infringed claims that were not subject to validity issues.

On a written description requirement issue, Fed. Cir. decided that claimed physical "clearances" between parts of flooring panels were supported by the priority specification as originally filed, even though the specification originally did not use the term "clearances" and instead used other terms such as "recess" and "void."

COMMENT: If the patentee had not won on the written description issue, it might be wishing that it had disclaimed those 108 days of extra coverage. Tough litigation strategic decision.

July 30, 2008, Non-Precedential

Novo Nordisk A/S v. Sanofi-Aventis U.S. LLC (link)

Specification repeatedly characterized the "invention" as requiring certain features. Claims, on their face, did not require these certain features. Allegedly, the prosecution history made it clear that the claims were not intended to require the certain features. Accused infringer's product did not include these certain features. Fed. Cir. denied preliminary injunction because there was no "reasonable likelihood of success on the merits" because the specification required the certain features that the accused infringing product did not include them.

LESSON FOR PATENT PROSECUTORS: I actually include a definition of the term "the present invention" in my definitions section of each application. This definition of the "present invention" makes it clear that things characterized as the "present invention" are not necessarily claim limitations. Throughout my specifications, I also try to write --the present invention preferably has-- and avoid "the present invention must have."

============================================================= July 24, 2008, Non-Precedential

In Re Stauffer (link)

Patent application directed to automatic printing of caller id information. Fed. Cir. decided that this was obvious in view of prior art.

COMMENT: Really neat invention! Sadly, the prior art basically nailed the most impressive aspects despite some differences in how the caller id info was printed.

LESSON FOR PATENT PROSECUTORS: One question that patent prosecution clients frequently ask is: "can I get a patent on this?" This case shows how difficult that question is to answer. There were real differences here between the claimed printing system and the close prior art. I would not have been surprised if the Examiner had allowed the claims. I am not surprised that the Examiner rejected the claims, either. There is a large gray zone between: (i) "you would be crazy not to apply on this invention;" and (ii) "this is a real long shot." A lot of patent prosecution work, probably most of it, falls in this gray zone. How to best communicate this irreducible techno-legal uncertainty to clients can be a challenge.

============================================================= July 24, 2008, Precedential

Board of Regents of the Univ. of Texas System v. BENQ America Corp. (link)

Patent infringement case involving a system for using the limited telephone keypad as a full alphabetical keyboard based on computerized recognition of "syllabic elements" in the keypad input. Fed. Cir. decided that "syllabic elements" were limited to single syllable letter groups.

COMMENT: My first glance impression is that it would have been difficult, if not impossible, when drafting the application to come up with the definition of "syllabic element" that patentee end up wanting in the litigation. Nevertheless, the patent application probably should have been drafted with an explicit definition (or, better yet, definitions) of what a "syllabic element" meant exactly -- it would have been pretty foreseeable that this claim term would end up being an issue.

============================================================= July 21, 2008, Precedential

Eisai Co. Ltd. v. Dr. Reddy's Laboratories, Inc. (link)

Fed. Cir. decided that the chemical composition of rabeprazole, used to make the anti-ulcer drug Aciphex, is non-obvious:

Where, as here, the patent at issue claims a chemical compound, the analysis of the third Graham factor (the differences between the claimed invention and the prior art) often turns on the structural similarities and differences between the claimed compound and the prior art compounds. See Eli Lilly & Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1377 (Fed. Cir. 2006) (noting that, for a chemical compound, a prima facie case of obviousness requires “structural similarity between claimed and prior art subject matter . . . where the prior art gives reason or motivation to make the claimed compositions” (quoting In re Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990) (en banc))). Obviousness based on structural similarity thus can be proved by identification of some motivation that would have led one of ordinary skill in the art to select and then modify a known compound (i.e. a lead compound) in a particular way to achieve the claimed compound. See Takeda Chem. Indus. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007). In keeping with the flexible nature of the obviousness inquiry, KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007), the requisite motivation can come from any number of sources and need not necessarily be explicit in the art. See Aventis Pharma Deutschland GmbH v. Lupin, Ltd., 499 F.3d 1293, 1301 (Fed. Cir. 2007). Rather “it is sufficient to show that the claimed and prior art compounds possess a ‘sufficiently close relationship . . . to create an expectation,’ in light of the totality of the prior art, that the new compound will have ‘similar properties’ to the old.” Id. (quoting Dillon, 919 F.2d at 692).

. . .
In KSR, the Supreme Court noted that an invention may have been obvious “[w]hen there [was] . . . a design need or market pressure to solve a problem and there [were] . . . a finite number of identified, predictable solutions.” 127 S. Ct. at 1742 (tense changes supplied to clarify, as the Court stated and as per 35 U.S.C. § 103, that the obviousness inquiry must rely on evidence available “at the time” of the invention, see Takeda, 492 F.3d at 1356 n.2). The Supreme Court’s analysis in KSR thus relies on several assumptions about the prior art landscape. First, KSR assumes a starting reference point or points in the art, prior to the time of invention, from which a skilled artisan might identify a problem and pursue potential solutions. Second, KSR presupposes that the record up to the time of invention would give some reasons, available within the knowledge of one of skill in the art, to make particular modifications to achieve the claimed compound. See Takeda, 492 F.3d at 1357 (“Thus, in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.”). Third, the Supreme Court’s analysis in KSR presumes that the record before the time of invention would supply some reasons for narrowing the prior art universe to a “finite number of identified, predictable solutions,” 127 S. Ct. at 1742. In Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., 520 F.3d 1358, 1364 (Fed. Cir. 2008), this court further explained that this “easily traversed, small and finite number of alternatives . . . might support an inference of obviousness.” To the extent an art is unpredictable, as the chemical arts often are, KSR’s focus on these “identified, predictable solutions” may present a difficult hurdle because potential solutions are less likely to be genuinely predictable.

In other words, post-KSR, a prima facie case of obviousness for a chemical compound still, in general, begins with the reasoned identification of a lead compound. Teva cannot create a genuine issue of material fact on obviousness through the unsupported assertion that compounds other than lansoprazole might have served as lead compounds. Further, the record contains no reasons a skilled artisan would have considered modification of lansoprazole by removing the lipophilicity-conferring fluorinated substituent as an identifiable, predictable solution. In sum, the district court properly concluded that the record did not support a case of obviousness of the ’552 patent as a matter of law.

Fed. Cir. decided that no inequitable conduct had occurred despite several asserted grounds of inequitable conduct. With respect to a failure to disclose co-pending applications, Fed. Cir. explained that this kind of failure is material, but that materiality is low and the inference of intent is weak "because applicants routinely overcome this type of rejection . . . by amending claims or filing a terminal disclaimer."

============================================================= July 16, 2008, Precedential

Serdarevic v. Advanced Medical Optics, Inc. (link)

Putative inventor of six patents barred from her legal claim of inventorship by laches because: (i) there was an eight year delay in bringing suit; (ii) a re-examination proceeding on one of the patent did not reset the laches clock under the circumstances of this case; and (iii) inability to find a contingency basis patent lawyer is not a good excuse.

Fed. Cir. decided that unclean hands did not operate in equity here to deny patentee the laches defense to the inventorship claim because patentee's attempts to conceal the patent from the putative inventor do not matter once the putative inventor finds out about the patents anyway, which is when the laches clock started. Also on unclean hands, Fed. Cir. decided that mere failure to name the putative inventor could not be the basis of laches in an inventorship claim because then laches could never be applied in failure-to-name-an-inventor cases.

QUESTIONS: Could putative inventor preserved her inventorship claims merely by periodically writing to the patentee that she was not giving up her claims? Can this kind of laches-preventing letter be written effectively without representation? What would the associated legal risks be? Declaratory judgement action in an undesired forum? Something else?

============================================================= July 16, 2008, Non-Precedential

Merck & Co. Inc. v. Apotex Inc. (link)

"This case presents the issue of whether there is an Article III case or controversy between a patentee drug company and a generic drug company in the context of the Hatch-Waxman Act." Fed. Cir. decided that it the case had become moot because: (i) patentee granted a covenant not to sue; and (ii) the FDA took certain actions during the appeal such that the accused infringer would not suffer detriment based on the fact that the patentee had initially filed its infringement suit.

Fed. Cir. also affirmed district court denial of permission for the accused infringer to bring an antitrust counterclaim.

============================================================= July 15, 2008, Precedential

Jang v. Boston Scientific Corp. (link)

Fed. Cir. was supposed to review claim interpretation pursuant to a stipulated judgement. Fed. Cir. noted that it is appropriate for Fed. Cir. to review claim interpretation pursuant to stipulated judgement agreements, but remanded without interpreting the claims because the district court record was insufficiently clear and complete.

============================================================= July 14, 2008, Precedential

Muniauction, Inc. v. Thomson Corp. (link)

Patent infringement case involving a patent for electronic methods of conducting auctions of financial instruments. Fed. Cir. decided that certain claims were obvious as a matter of law, overturning a jury verdict on that issue. Fed. Cir. explained that the claimed methods were close to prior art claimed methods, except that the claims incorporated limitations requiring a web browser and other internet-related technology. Fed. Cir. rejected and/or minimized non-obviousness arguments based on secondary considerations.

With respect to an infringement issue, no single party performed every step of the claimed method. Rather, multiple parties combined to collectively perform all the claimed steps. Fed. Cir.:

In BMC Resources, this court clarified the proper standard for whether a method claim is directly infringed by the combined actions of multiple parties. The court’s analysis was founded on the proposition that direct infringement requires a single party to perform every step of a claimed method. . . . Yet the court recognized a tension between this proposition and the well-settled rule that “a defendant cannot thus avoid liability for direct infringement by having someone else carry out one or more of the claimed steps on its behalf.” . . . Accordingly, where the actions of multiple parties combine to perform every step of a claimed method, the claim is directly infringed only if one party exercises “control or direction” over the entire process such that every step is attributable to the controlling party, i.e., the “mastermind.” . . . At the other end of this multi-party spectrum, mere “arms-length cooperation” will not give rise to direct infringement by any party. . . . Under BMC Resources then, the issue of infringement in this case turns on whether [the accused infringer] sufficiently controls or directs other parties (e.g., the bidder) such that [the accused infringer] itself can be said to have performed every step of the asserted claims.

Fed. Cir. decided that the accused infringer did not have sufficient control over the other involved parties for infringement liability.

COMMENT: I can understand and sympathize with Fed. Cir.'s idea that taking an older computer program and adding internet compatibility and functionality is likely to be obvious. However, it seems like the Court could have and probably should have supported this argument with some specific references to specific prior art, especially, as here, where overturning a jury verdict of non-obviousness as a matter of law. Certainly, there has long been technology for performing auctions, as opposed to say, pet grooming or trick-or-treating or braille-reading, over the internet. Instead of relying on some overarching rule that putting any technology on the internet is obvious as a matter of law, it seems more sensible to drill down a couple levels of subject matter specificity and see how long it has been known to put a certain endeavor, such as auctions, on the internet. In no small part because of the patent system, this internet stuff is well-documented, and it makes sense to use it. Not saying that Fed. Cir. reached a wrong result, but the opinion leaves some to be desired on the obviousness head.

============================================================= July 10, 2008, Non-Precedential

Baystate Tech. Inc. v. Bowers (link)

District court must consider a law professor's motion to intervene in order to get access to papers protected by a Protective Order. The professor wants the papers for purposes of scholarly research.

============================================================= July 9, 2008, Precedential

Roche Palo Alto LLC v. Apotex Inc. (link)

Fed. Cir. declined to apply the reverse doctrine of equivalents as a basis for non-infringement.

Accused infringer argued that claim preclusion on a claim of obviousness invalidity should not apply because of the change of obviousness law occasioned by KSR v. Teleflex. Fed. Cir.: "[T]here is no "change of law" or fairness exception to prevent application of claim preclusion."

============================================================= June 27, 2008, Non-Precedential

Fargo Electronics Inc. v. Iris, Ltd. (link)

Patent claim recited "second supports other than the [missing word]." Fed. Cir. decided that the claim was invalid for indefiniteness because it is not clear what the missing word was.

============================================================= June 25, 2008, Non-Precedential

Heuft Systemtechnik GMBH v. Industrial Dynamics Co. (link)

Claim interpretation case involving the claim term "arranging . . . containers." Fed. Cir. decided that prosecution history, from an ancestor application of the application that directly issued as the patent in suit, meant that the quoted claim language effectively placed an exit angle limitation on the "arranged . . . containers."

COMMENT: I think Fed. Cir. simply got this wrong and that the prosecution history did not support the court's narrow claim interpretation because the patentee's applications never stated or implied that the "arranged . . . containers" language limited exit angle of the containers (at least in the portions of the prosecution cited in the opinion). Usually in these cases I like to draw some kind of 20-20 hindsight lesson about how the prosecution might have been done differently. However, I don't really see how the patent applicant cum patentee could have or should have done anything different here.

June 23, 2008, Non-Precedential

Realsource, Inc. v. Best Buy Co. (link)

Claim interpretation case involving patent related to debit card type technology. Patent specification treated a card number and a card ID information as two separate things, that is, two separate numbers. Accordingly, Fed. Cir. decided that "ID information," as used in the claim, could not simply be the card number.

LESSON FOR PATENT PROSECUTORS: Define important claim terms explicitly. In most cases, like this one, the court is not going to be your friend later on during claim interpretation.

============================================================= June 19, 2008, Precedential

Scanner Tech. Corp. v. Icos Vision Systems Corp. N.V. (link)

Fed. Cir. decided that district court erred in finding inequitable conduct and related finding that case was an "exceptional case." Specifically, Fed. Cir. decided that patent applicant's submission of a Petition To Make Special, with supporting paperwork, was not sufficiently false or misleading to be considered as inequitable conduct.

Fed. Cir. decided that the patent claim at issue was invalid for obviousness, citing KSR for the proposition that obviousness analysis "need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."

============================================================= June 19, 2008, Non-Precedential

Board of Trustees: Leland Stanford Jr. Uni. v. Motorola Inc. (link)

Case involving propriety of extensions to serve complaint. Remanded due to cursory district court decision.

COMMENT: Should have been precedential.

============================================================= June 18, 2008, Non-Precedential

Baychar v. Salomon North America (link)

Procedural issues involving waiver of argument by failure to appeal.

============================================================= June 18, 2008, Precedential

TIP Systems v. Phillips & Brooks/Gladwin (link)

Patent directed to a special telephone set for use in a prison. Fed. Cir. decided claim interpretation issues included interpretation of the following claim language: (i) "handset;" and (ii) "electrically connected."

Fed. Cir. also decided no doctrine of equivalents infringement because the claim element of a "handset" was completely absent from the accused device, which meant that extending coverage by DOE in that way would violate the all-elements rule.

============================================================= June 17, 2008, Precedential

Nilssen v. Osram Sylvania

Fed. Cir. decided that this was an exceptional case, under 35 USC Section 285 and permitting a shifting of attorney fees, because of: (i) inequitable conduct; (ii) frivolity of the lawsuit; and/or (iii) litigation misconduct. Fed. Cir. noted that inequitable conduct dies not a case "exceptional per se, but it may in the right circumstances.

The inequitable conduct in this case was payment of small entity fees when large entity fees were actually required. Fed. Cir. declined to characterize this kind of inequitable conduct as minor or insubstantial, but noted that the frivolity of certain claims and/or the litigation misconduct helped bolster the "exceptional case" finding.

Fed. Cir. also shifted certain expert witness fees to patentee under the "manifest injustice" language of F.R.C.P. 26(b)(4)(C).

DISSENT: Judge Newman's dissent attacked the frivolity and litigation misconduct findings as factually unsupported.

QUESTION: In these anti-patent-troll times, and despite its denial of doing so, is Fed. Cir. trying to make inequitable conduct a per se reason to shift infringement suit defense fees under 35 USC Section 285?

============================================================= June 16, 2008, Precedential

Innovation Technologies v. Splash! Medical Devices (link)

District court failed to support its "exceptional case," under 35 USC Section 285 finding. Fed. Cir. remanded for further findings on this issue.

============================================================= June 16, 2008, Non-Precedential

Central Admixture Pharmacy Services v. Advanced Cardiac Solutions (link)

In a previous opinion in this case, Fed. Cir. decided that the patentee could proceed with certain patent infringement claims. On remand, district court dismissed these claims on procedural grounds. In this opinion, Fed. Cir. reversed the dismissal and required that the patent infringement claims be allowed to proceed.

============================================================= June 16, 2008, Non-Precedential

ADC Telecommunications v. Switchcraft (link)

Patent was directed to a jack including "projections . . . positioned to provide impedance matching." Accused infringing jack did include projections, but the parties disputed as to whether the projections did improve impedance matching. Fed. Cir. decided that this was a jury issue and that sufficient evidence supported the jury verdict of no infringement.

============================================================= June 10, 2008, Precedential

Burandt v. Director, USPTO (link)

Patent's record owner failed to pay maintenance fees, apparently on purpose. Patent's record owner then, long after the patent was considered abandoned for failure to pay maintenance fees, assigned patent to one of the inventors who was styled as the "equitable owner." Fed. Cir decided that the inventor-assignee-equitable-owner would not be permitted to revive patent regardless of his circumstances, which happened to be a long bout with mental illness, because the equitable owner is not the owner for purposes of the unavoidable abandonment statute.

============================================================= June 10, 2008, Non-Precedential

In re Omeprazole Patent Litigation (link)

Literal infringement case involving a patent for a type of omeprazole pill (trade name: Prilosec (R)). Patent claim recited the presence of an "alkaline reacting compound." Patentee argued that this claim limitation was met by the presence of talc in the accused infringing pill. Fed. Cir. decided that the talc did not, in fact, meet the claim language for reasons of deference to the district court and of talc chemistry.

COMMENT: I am not generally a huge fan of these pharmaceutical cases, but this decision should have been precedential.

============================================================= June 6, 2008, Non-Precedential

Beam v. Roller Derby Skate Corp. (link)

Patentee brought a breach of patent license claim against licensor and lost. Then patentee brought a patent infringement case against licensor. Fed. Cir. dismissed the patent infringement suit based on claim preclusion. Fed. Cir, noted that corporations are not supposed to be represented by non-lawyers on a pro se basis.

QUESTION: Was Fed. Cir. convincing in distinguishing the recent Acumed v. Stryker case?

COMMENT: Fed. Cir. did not give much information about what the patent license dispute in the first action was all about. It characterized the accused patent infringement as being "based on substantially the same set of transactional facts as [the] earlier claims," but it is not clear that this is true in this case. At least, it doesn't necessarily seem like every conceivable patent license breach also amounts to a patent infringement, but the Fed. Cir. opinion doesn't give enough facts to determine the extent of the nexus between the previously litigated breach and the later asserted infringement here.

COMMENT: This case also raises more difficulties with its combined Fed. Cir. / regional circuit jurisprudence on procedural issues, and especially claim preclusion. The complex regime for choosing claim preclusion law is partially explained in Acumed v. Stryker, but this regime, as I understand it, does not map easily onto the facts of this case. Specifically, the issue of whether successive patent infringements are considered as the "same series of transactions" is an issue of Fed. Cir. law because patent law is Fed. Cir.'s bailiwick. So far, so good. However, in this case, the first claim was for breach of a patent license, presumably a state law issue, and the second claim was for patent infringement. This means that the issues of whether these two claims are considered as the same series of transactions is 50% a matter of regional circuit expertise and 50% a matter of Fed. Cir. expertise. So who's precedents matter? In the present case, Fed. Cir. looked to its own precedents on this "same series of transactions" issue, without explicit justification for its choice of law.

============================================================= June 5, 2008, Non-Precedential

Pellegrini v. Analog Devices Inc. (link)

More pro se mischief. *yawn*

============================================================= June 4, 2008, Precedential

Helmsderfer v. Bobrick Washroom Equipment Inc. (link)

Claim interpretation case involving the claim language: "[a surface] partially hidden from view." Patentee argued that this claim language should be interpreted to cover products where the relevant surface was completely hidden from view. Fed. Cir. decided that the claim language was not that broad and did not cover products where the surface was completely hidden from view.

LESSON FOR PATENT PROSECUTORS: It is difficult to know how often to use the phrase "at least" in patent claims. This is especially as a qualifier for a quantity that is a matter of degree, rather than a discrete quantity because, in the discrete quantity cases, use of the common transitional phrase "comprising" will dispense with the need to clutter up the claims with a bunch of extraneous recitations of "at least." However, in this case, hidden from view is a matter of degree, and not a discrete quantity. In 20-20 hindsight, it would have been better for the patentee if the claim had been written to recite "at least partially hidden from view."

QUESTION: Is Fed. Cir. asking too much verbal precision from patent prosecutors here?

============================================================= June 2, 2008, Precedential

Mars Inc. v. Coin Acceptors Inc. (link)

Patent licensing and infringement damages case. The issues included: (i) whether lost profits and reasonable royalty are the only permissible measures of patent damages (they are not); (ii) when a licensee is entitled to a lost profits measure of patent; (iii) when a parent company is entitled to lost profits damages based on profits lost by a subsidiary; (iv) correctness of the 7% reasonable royalty rate determined by the district court (the 7% was affirmed).

COMMENT: It looks like the identity of the "enforcer party," whom the licensing agreements empower to sue for infringement, can impact the measure of damages that will be available when the enforcer party acts the enforcer and sues. If this understanding is correct, this result is mildly surprising to me.

============================================================= May 28, 2008, Precedential

Cat Tech. LLC. v. Tubemaster Inc. (link)

An accused infringer wanted Declaratory Judgement of non-infringement for several product designs that it had designed, but not yet manufactured or sold. Fed. Cir. had to determine whether Constitutional "case of controversy" requirements were met by this somewhat inchoate infringement dispute and stated the applicable law:

We conclude that although MedImmune articulated a “more lenient legal standard” for the availability of declaratory judgment relief in patent cases, . . . the issue of whether there has been meaningful preparation to conduct potentially infringing activity remains an important element in the totality of circumstances which must be considered in determining whether a declaratory judgment is appropriate. . . . If a declaratory judgment plaintiff has not taken significant, concrete steps to conduct infringing activity, the dispute is neither “immediate” nor “real” and the requirements for justiciability have not been met.

Under this standard, Fed. Cir. decided that the "case or controversy" requirement was met and the Declaratory Judgement action could proceed because: (i) the dispute was sufficiently immediate; (ii) the dispute was sufficiently real; and (iii) the District Court's exercise of discretion was proper. With regard to item (iii), Fed. Cir. went on to state:

A plaintiff need not “bet the farm, or . . . risk treble damages . . . before seeking a declaration of its actively contested legal rights.” . . . Absent a declaratory judgment of non-infringement, [accused infringer] will be forced to “bet the farm” by making the “in terrorem choice,” see Arrowhead, 846 F.2d at 735, between a growing potential liability to [patentee] and abandoning its catalyst loading activities. Because this is precisely the type of “‘dilemma that it was the very purpose of the Declaratory Judgment Act to ameliorate,’” . . . the district court properly exercised its discretion to issue a declaratory judgment of non-infringement as to configurations [that it has designed but not yet manufactured nor sold]

Fed. Cir. also decided a claim interpretation issue unfavorably to the patentee resulting in summary judgement of non-infringement for an accused product that had been sold.

============================================================= May 27, 2008, Non-Precedential

Southwestern Bell Telephone Co. v. Collins (link)

On indefiniteness issue, Fed. Cir. decided that claim term "means for measuring" was indefinite because no structure is the specification was disclosed as being able to perform the recited function.

On a reexamination issue, Fed. Cir. stated: "[patentee] cannot use reexamination for the purpose of amending its claims to address an adverse claim construction."

On a literal infringement issue, Fed. Cir. decided that accused infringing device did not infringe because the manner in which its "control store" was connected to other circuitry did not meet certain claim limitations.

Other claim interpretation an infringement related issues were also decided.

COMMENT: This should have been precedential, especially in view of what seems to be new law on reexams.

============================================================= May 27, 2008, Non-Precedential

Lawler Manufacturing Co., Inc. v. Bradley Corp. (link)

Dispute over the scope of products permitted to be sold under a certain section of a patent license.

DISSENT: On the interpretation of the patent license language at issue, Judge Mayer's dissent is more persuasive than the majority opinion.

============================================================= May 22, 2008, Non-Precedential

Taltech Ltd. v. Esquel Apparel, Inc. (link)

On inequitable conduct, Fed. Cir. remanded for a determination as to whether an uncited reference was cumulative to an uncited reference.

On best mode, Fed. Cir. decided that a claim was invalid for failure to disclose best mode because patent specification did not disclose the preferred adhesive for use in the shirt-making method claimed in the claim.

On claim interpretation, Fed. Cir. decided that: (i) "abuts" required the abutting claim elements to be in direct contact with no intermediate layers; and (ii) the method steps were required to be performed in the order set forth in the claim.

LESSON FOR PATENT PROSECUTORS: You are the lexicographer if you want to be! Define your terms, especially when there are mechanical or electrical components that may be directly connected or indirectly connected. Putting in or taking out intermediate components is always a favorite tactic to design around.

LESSON FOR PATENT PROSECUTORS: Include boilerplate to the effect that claim steps do not need to be performed in order except to the extent a method claim itself may explicitly require something about the relative order of the steps.

May 22, 2008, Non-Precedential

Rattler Tools, Inc. v. Bilco Tools, Inc. (link)

Summary affirmance of district court claim interpretation with tiny opinion.

COMMENT: Why was there an "opinion" on this case at all?

May 21, 2008, Precedential

Golden Bridge Tech. Inc. v. Nokia Inc. (link)

Patentee argued that a particular prior art reference did not invalidate its patent by anticipation. The argument was raised too late, however, which meant that patent was considered to be anticipated.

May 14, 2008, Precedential

E.I. Du Pont de Nemours & Co. v. Macdermid Printing Solutions, L.L.C. (link)

Patentee accidentally agreed to an incorrect priority date in litigation proceedings. If the incorrect date were correct, then the patent would have probably been barred for public use. Patentee attempted to make correct date known when it discovered its mistake. District court decided that the initial agreement to the incorrect date meant that there was a validity issue sufficiently serious to defeat patentee's motion for preliminary injunction. Fed. Cir. reversed because it was so clear what the correct priority date was. Specifically, the correct priority date was based on a priority claim in the patent in suit to an earlier provisional.

COMMENT: It is a little mysterious as to why patentee's counsel agreed to the wrong priority date, but it appears that this mistake might possibly have been caused by the fact that the priority claim was added to the patent by a certificate of correction.

May 14, 2008, Non-Precedential

Genlyte Thomas Group LLC. v. Arch Lighting Group Inc. (link)

Fed. Cir. upholds jury verdict of literal infringement and Doctrine of Equivalents infringement, finding evidence in the record to support the verdict.

May 14, 2008, Precedential

Mangosoft Inc. v. Oracle Corp. (link)

Claim interpretation case involving a computer networking patent and use of the claim term "local." Patentee argued for a tortured definition of the word "local" that was not present in the spec. Not surprisingly, this was shot down in favor of a dictionary definition asserted by accused infringer.

COMMENT: Seems like this could have been affirmed without opinion, but whatever.

May 14, 2008, Precedential

Aventis Pharma S.A. v. Amphastar Pharmaceuticals Inc. (link)

During prosecution of an application, a Declaration in support of the application included data on some pharmaceutical trials, but dosage information was missing from at least some of this data. Fed. Cir. decided that this omission amounted to inequitable conduct because: (i) on materiality, the missing dosage information was relevant to the technological analysis; and (ii) on intent, not enough evidence of inadvertence in the omission of the dosage data to reverse the district court on that issue.

DISSENT: Judge Rader on dissent. Moneyquote(s):

Although designed to facilitate USPTO examination, inequitable conduct has taken on a new life as a litigation tactic. The allegation of inequitable conduct opens new avenues of discovery; impugns the integrity of patentee, its counsel, and the patent itself; excludes the prosecuting attorney from trial participation (other than as a witness); and even offers the trial court a way to dispose of a case without the rigors of claim construction and other complex patent doctrines. This court has even observed a number of cases, such as this one, that arrive on appeal solely on the basis of inequitable conduct where the trial court has apparently elected to try this issue in advance of the issues of infringement and validity. . . . This phenomenon is not new or unprecedented. At an earlier time, the Federal Circuit also observed that inequitable conduct as a litigation strategy had become a "plague." Burlington Indus. v. Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988). In response, this court took a case to reduce abuse of inequitable conduct. Kingsdown Med. Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867, 876 (Fed. Cir. 1988) (en banc).

In light of the rejuvenation of the inequitable conduct tactic, this court ought to revisit occasionally its Kingsdown opinion. . . .

Surely if [the Declarant] had intended to deceive the USPTO, he would not have made this omission so conspicuous. Moreover, I find it difficult to fathom that a scientist of [the Declarant]'s caliber and reputation would engage in such deception. As the district court points out, [the Declarant] has had a magnificent fifty year career with Aventis, has published over 350 scientific articles and has received numerous prestigious awards including the Galien Research Prize, France's highest award for drug discovery. This world-class scientist would hardly risk his reputation and tarnish his brilliant career for a single example in the prosecution of a patent for an invention in which he was not even involved.

May 13, 2008 Precedential

Acumed LLC. v. Stryker Corp. (link)

Patentee brought infringement suit against accused infringer for a first accused product made by accused infringer. This suit was decided on the merits. Patentee brought later infringement suit against same accused infringer for a second accused product made by accused infringer. Accused infringer argued that the second infringement suit was barred by claim preclusion. Fed. Cir. decided that it was not barred because the second accused product was not "essentially the same" as the first accused product.

In order to choose its claim preclusion law, Fed. Cir. looked to regional (Ninth Circuit) law for the basic claim preclusion law framework, which happened to be a three part test. When applying the (disputed) second part of the three part test, Fed. Cir. looked to Fed. Cir. law, and not to regional circuit law.

Fed. Cir. declined to bar the claim because it "could have been raised" in the prior litigation, despite some regional circuit and some Fed. Cir. cases that seemed to sort of suggest that standard for claim preclusion.

COMMENT: This case really shows the difficulty of of deciding procedural issues by sometimes applying Fed. Cir. precedents and sometimes applying regional circuit precedents. Once Fed. Cir. decided to get the basic framework from the regional circuit, they started looking to Fed. Cir. cases to put some meat on the bones of this framework. However, it is questionable whether Fed. Cir. precedents decided outside the claim preclusion framework of the particular regional circuit (here, the Ninth) should be applied as valid Fed. Cir. precedents within that particular regional circuit's test. Arguably, the regional circuit chose its framework in view of its own precedents, and not on precedents decided within the rubric of a competing framework from a different regional circuit. On the other hand, if Fed. Cir., heeding this concern, had limited itself to applying only Fed. Cir. precedents on this claim preclusion issue that happened to come up through a district court in the Ninth Circuit, then it seems that the amount and variety of applicable precedent would be severely curtailed.

COMMENT: And that is not the only difficulty apparent here as occasioned by Fed. Cir.'s mixed bag regime for choosing precedent on procedural issues. The main legal dispute in this case was whether the fact that a claim could have been brought in a prior case meant that it was the "same claim" for claim preclusion purposes. Fed. Cir. first decided that the "same claim" part of the Ninth Circuit's three part test was basically a patent issue, such that Fed. Cir. precedent would apply to the "same claim" part of the test. However, if the rule were that a claim would be deemed to automatically meet the "same claim" part of the test if it could have been brought in an earlier suit, then the "same claim" part of the test is not really a patent issue at all -- the "same claim" part of the test would apply across the board to tort, contract, patent, family law and every other kind of case. Fed. Cir. kind of dodged that issue by: (i) looking at the Ninth Circuit precedents on that; and (ii) ultimately deciding that that was not the way to apply the "same claim" part of the test. I don't have a pat answer for what Fed. Cir. should have done, but I do want the difficulty to be made clear: whether a procedural issue is a "patent issue" or a "non-patent issue" depends on the substance of the procedural law that is chosen, whether the procedural law chosen happens to care about the features that make patent cases unlike other kinds of cases. Therefore, making a choice of procedural law based on whether a procedural issue is a "patent issue" or a "non-patent issue" will be, at least in some cases, hopelessly circular.

May 12, 2008, Non-Precedential

General Atomics Diazyme Lab. Division v. Axis-Shield ASA (link)

Claim interpretation and infringement case involving chemical claims, specifically methods for assaying homocysteine." Part of the opinion involves interpretation of the claim term "homocysteine conversion product." Fed. Cir. decided that this claim term covered only products resulting from the products that result from the conversion of homocysteine, and not more broadly to "just any product resulting from the homocysteine conversion reaction."

LESSON FOR PATENT PROSECUTORS: Often an issue of disputed metes and bounds delineated by claim language will arise in the mechanical arts, the software arts or the electrical arts. Often chemical claims are less disputed because much of the claim scope is defined by chemical formulas, or chemical reactions requiring precisely and definitively controlled parameters. Here however, we see a difficult claim interpretation dispute coming into the chemical arts. As Fed. Cir. pointed out in its opinion, the claim drafter could have used different words to get the scope of coverage that the patentee sought unsuccessfully. If you are looking for products of a chemical reaction, then a broad claim should contemplate looking not just for the main products, but the by-products and the by-products of any reactions involving the by-products and so on -- lest these surrogate indicators become design-around loopholes.

QUESTIONS: It is not clear how Fed. Cir. differentiated the "product of a reaction" from "just any product resulting from the . . . reaction." It reminds me of the Abe Lincoln's axe conundrum -- "I had to replace the handle a few times, and this isn't the original blade either, but otherwise . . ." If any of the protons or electrons from the main molecule in the initial reaction are present in a resulting compound, is that enough to qualify as a product? Must a majority of the starting main ingredient's protons or electrons or atoms or radicals remain in the putative product for it to truly be considered as a product? Is the test less materialistic and more ontological?

May 8, 2008, Precedential

Lucent Tech. Inc v. Gateway, Inc. (link)

A first claim interpretation dispute over the claim term "terminal device." Fed. Cir. decided that a "terminal device" was not required, by definition, to completely determine positioning of displayed objects on its own, without help from a host processor. Fed. Cir. decided this despite the fact that parts of the specification and prosecution history indicated that the terminal device should have some ability to at least partially determine the position of displayed objects.

A second claim interpretation dispute over the claim phrase "each successive iteration including the steps of." Unsurprisingly, Fed. Cir. decided that each iteration did indeed need to include all the steps that followed this claim phrase.

DISSENT: Judge Lourie dissented on the "terminal device" interpretation.

COMMENT: It is not surprising that there was a divided opinion on the "terminal device" interpretation issue -- this was a close issue.

May 7, 2008, Precedential

Decisioning.com Inc. v. Federated Dept. Stores Inc. (link)

Claim interpretation case involving claim language "remote interface." The embodiment discussed in the patent specification was a kiosk dedicated to automated credit card transactions. Patentee, however, argued that patent could be read on transactions occurring over the Internet, with the "remote interface" being located in the credit card applicant's home on her home computer. Fed. Cir. decided that "remote interface" could not be interpreted so broadly and was limited to interfaces that were installed in publicly-accessible locations only.

DISSENT: Judge Linn dissented from this claim interpretation, arguing, effectively, that the majority read certain parts of the specification into the claims as a limitation.

COMMENT: Judge Linn is right.

May 7, 2008, Precedential

Solomon Tech. Inc. v. International Trade Commission (link)

Claim interpretation case interpreting claim language including: (i) "integral combination of [two elements]"; (ii) "within an envelope"; and (iii) power conversion means. On all these claim interpretation issues, Fed. Cir. rejected the broad interpretation that the patentee wanted, and gave a narrow interpretation that the accused infringer wanted.

LESSON FOR PATENT PROSECUTORS: On the "integral combination of [two elements]" claim language, the specific issue was whether the "integral combination" language required that the two elements be rigidly and directly attached, or, more broadly, whether the type and degree of mechanical connection could be through intermediate components and/or could allow for some relative motion between the two elements. This issue comes up over and over in claim drafting in the mechanical area. In fact, I even have three pre-written definitions for "mechanically connected," "directly mechanically connected," and "rigidly mechanically connected" for use in the applications that I write. Now, at a superficial level, it is appealing for a patent application drafter to be more vague about the degree and type of mechanical connection that a claim may require, but, this sort of coyness rarely seems to redound to the patentee's advantage, at least in court. This case is an example. Besides, it is possible to claim all three categories of mechanical connection -- a broad claim for any-old-kind of mechanical connection, a dependent claim for the rigid connections subset of mechanical connections and another dependent for the direct connections subset. Have another dependent claim to spare? Do one wherein the connection must be both rigid and direct.

May 6, 2008, Precedential

PSN Illinois LLC. v. Ivoclar Vivadent, Inc. (link)

Claim interpretation case involving the claim for a method of making artificial teeth, and more specifically the claim language: "ready for mounting." Fed. Cir. decided that "ready for mounting" means that the shape of the articifial teeth must be substantially established for the artificial teeth to be considered as "ready for mounting." Even if some finishing work was required to smooth the surfaces, a set of artificial teeth could still be considered "ready for mounting." However, in the accused infringer's process, the artificial teeth have a sprue attached, which must be removed. Because of this sprue, the shape of the artificial teeth is not established and there is no infringement under Fed. Cir.'s claim interpretation.

COMMENT: It is not clear why the "ready for mounting" language was in the claim. It would be interesting to know whether there was a way to draft this claim so as to cover the accused infringer and still avoid the prior art.

April 29, 2008, Precedential

Samsung Electronics Co. v. Rambus Inc. (link)

Attorneys fees under 35 USC section 285 were the only issue remaining in a patent case. Case became moot when the counterclaimant, who was facing the section 285 sanctions, offered to pay all claimed attorney fees. District court wanted to issue an opinion about why this was an exceptional case, but Fed. Cir. decided that this was an inappropriate advisory opinion because all issues had been resolved or mooted.

April 28, 2008, Precedential

Litecubes LLC. v. Northern Light Product Inc. (link)

Fed. Cir. clarifies the difference between: (i) subject matter jurisdiction; and (ii) elements of a federal claim. Item (ii), elements of a federal claim, refers to the things that must be established to prevail in a suit and get relief.

In this case, it was alleged that the accused infringer imported products into the United States, and that this importation was the act of infringement (both patent and copyright). The accused infringer counter-argued that its sales were f.o.b. in Canada, so the accused infringer could not be deemed as an importer, and therefore not be deemed as an infringer.

On the subject matter issue, Fed. Cir., citing several Supreme Court precedents, decided that proof of an act in the United States was not a subject matter jurisdiction requirement.

On the issue of whether the elements of the claim for patent/copyright infringement were met, Fed. Cir. decided that infringement was established because patent and copyright law deems f.o.b. sales to occur at the location of the buyer, regardless of where the f.o.b. point is.

COMMENT: In its analysis, Fed. Cir. notes that "[t]here is no absolute rule prohibiting the extraterritorial reach of federal statutes." I wonder how comfortable other countries, or even U.S. citizens, really are with this extraterritorial power the U.S. supposedly has.

April 25, 2008, Non-Precedential

In Re Reuning v. U.S. (link)

Fed. Cir. remands so that Appeal Board can consider patentability of some claims that they had failed to consider for procedural reasons.

CONCURRENCE: Judge Linn had some strong criticism of the Board. He felt that they had denied a full hearing to the applicant-appellant based on a technicality.