June 2004

TI Group Automotive Systems v. VDO


TI Group Automotive Systems v. VDO (Fed. Cir. June 30, 2004) [PDF].

TI Group is an automotive supplier that makes fuel tanks, fuel pump assemblies, and complete fuel tank systems. (U.S. Patent 4,860,714). TI Group has sold over thirty million fuel pump assemblies that embody the ’714 patent. VDO began selling an assembly that “were essentially drop-in replacements.”

After a jury verdict of willful infringement, the district court granted a JMOL in VDO’s favor based on non-infringement but denied VDO’s JMOL motion for invalidity.

Because we affirm some of the district court’s claim constructions, and because as to those limitations TI Group points to no evidence supporting the jury’s finding of infringement, we affirm the district court’s grant of VDO’s JMOL motion with respect to infringement. However, because we have broadened a number of the district court’s claim constructions, thus affecting the invalidity analysis, we vacate the district court’s denial of VDO’s JMOL motion with respect to invalidity and remand that issue for further proceedings consistent with this opinion.

Competitive Tech. v. Fujitsu: No Jurisdiction for Plasma Screen Appeal


In a patent infringement suit against Fujitsu over plasma screen technologies, the University of Illinois sought to have some of Fujitsu’s counterclaims dismissed on Eleventh Amendment sovereign immunity grounds. (U.S. Patent 4,866,349 and 5,081,400). The Northern District of California court denied the University’s motion to dismiss the claims. U of I appealed.

Without reaching a decision on the merits, the Federal Circuit (DYK, MAYER, GAJARSA) dismissed the University’s appeal for lack of appellate jurisdiction.

The judgment of the district court is not final under 28 U.S.C. § 1291, and the district court has not issued the certificate required by either Federal Rule of Civil Procedure 54(b) or 28 U.S.C. § 1292(b).

The appellate panel found that the district court’s decision on the issue of sovereign immunity did not “conclusively determine” that question. Thus, the case did not fall under the limited Cohen exception that could have created a jurisdictional basis.

EFF hopes to “bust” these 10 patents

The EFF has released the list of patents that they plan to challenge as part of their “patent busting project.” According to Wired,

As part of its Patent Busting Project, the EFF in mid-June began soliciting the public for submissions of patents that were both potentially invalid and used to stifle online innovation. The organization received nearly 200 suggestions, 10 of which it will now formally ask the U.S. Patent and Trademark Office to re-examine.

Acacia Technologies tops the list of offenders. Recently, Acacia sued a number of media technology companies for infringement of its patents that allegedly cover digital streaming technology. (Read more about Acacia here).

Patent Office Releases Public Record Processing Times

The USPTO’s Office of Public Records has released a report showing processing times for various document requests:

Document Services


Actual Processing Time

Certified Documents



Patent Applications-As-Filed

7 days

5 days

Patent Related File Wrappers

25 days

29 days

Patent Copies

10 days

3 days

Patent Assignments

10 days

5 days

Trademark Applications-As-Filed

7 days

4 days

Trademark Related File Wrappers

25 days

9 days

Trademark Assignments

10 days

5 days

Trademark Registrations, Expedited

5 days

3 days

Trademark Registrations, Regular

14 days

4 days




Uncertified Documents



Patent Copies

5 days

1 day

Plant Patents

5 days

1 day

Patent Assignments

10 days

3 days

Patent Related File Wrappers

25 days

47 days

Trademark Copies

5 days

3 days

Trademark Assignments

10 days

3 days

Trademark Related File Wrappers

25 days

7 days


Patent Infringement: No summary judgment of anticipation based on prepared model

NYSTROM v. TREX Co. (Fed. Cir. June 28, 2004).

In an appeal of a summary judgment in a patent infringement case involving specially manufactured boards for decking, the Federal Circuit reversed and remanded. (US Patent 5,474,831).

Because the district court erred in its constructions of the claim terms “board,” “manufactured to have,” and “convex top surface,” the district court’s grant of summary judgment of non-infringement of claims 1-15 of the ’831 patent is reversed.

The panel also reversed the district court’s judgment of invalidity.

The district court’s acceptance of TREX’s invalidity arguments based on models made from drawings contained in the Zagelmeyer patent was incorrect. The basis of the district court’s summary judgment of invalidity was a model that TREX developed based on that reference, and not on drawing dimensions or a written disclosure of dimensions contained directly in the patent itself. Under the principles set forth in our prior cases, the speculative modeling premised on unstated assumptions in prior art patent drawings cannot be the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art. Thus, we conclude that the district court erred in granting summary judgment of invalidity based on TREX’s models.

In dissent, Judge Gajarsa found that the term “board” should be limited to wooden boards.

Computerized Patent Bar Exam

The patent office has adopted final rules for the computerized patent registration examination. (69 FR 35428).

The patent bar has a historically low passing rate. Thus, one interesting aspect of the new rules is that those who fail the examination will be allowed to re-take the exam within thirty days rather than waiting six months, as has previously been the case.

Providing the examination in this manner will benefit persons seeking registration by enabling them to apply at any time, schedule the examination at a location and date convenient to them, and receive their results more quickly.

Registration for the examination is now available here.

Patent Lawyer

The Association of Patent Law Firms (APLF) recently published the inaugural edition of The Patent Lawyer. The magazine is available online (PDF) and has the rare combination of interesting topics and excellent writing.

This edition includes articles on patenting issues related to nanotechnology inventions; reexamination strategies; as well as EU piracy issues. There is also a profile article on the firm, McDonnell Boehnen Hulbert & Berghoff LLP (MBHB). The four page article, entitled “A Path of Its Own: Chicago’s McDonnell Boehnen Rewrote the Management Rules,” chronicles MBHB’s eight year rise from a small start-up firm to a major player in intellectual property legal services. (pp. 10-13).

Does your company have intellectual property issues and need the advice of a patent attorney?

Hockerson-Halberstadt v. JSP and FUBU

Hockerson-Halberstadt, Inc. v. JSP Footware, Inc. and FUBU The Collection (Fed. Cir. June 23, 2004) (not citable as precedent)

(RADER) The appellate court reversed a summary judgement against the patentee, holding that the plaintiff had met its section 287 notice obligation by sending a letter to a third party who was thought to control manufacture of the patented stabilized athletic shoes. (U.S. Patent 4,322,896).

In dissent, MICHEL argued that the section 287 notice requirement should not be satisfied by giving notice to a third party that has no corporate relationship with the defendant except for a trademark license.

How pharmaceutical patent rights affect access to medicine in poor nations

A new article published in Health Affairs studies the “relationship between patents and access to essential medicines.” Cambridge researcher Amir Attaran found that patenting is rare for the vast majority of products on the World Health Organization’s (WHO) list of essential medicines.

Only seventeen essential medicines are patentable, although usually not actually patented, so that overall patent incidence is low (1.4 percent) and concentrated in larger markets.

Attaran argues that his results show that the policy dialogue relating to patent protection in developing countries is often based on mistaken premises.

[P]atents very infrequently block access to generic versions of essential medicines. For the sixty-five countries we studied, where the majority of people in the developing world live, patents and patent applications exist for essential medicines 1.4 percent of the time (300 instances out of 20,735 combinations of essential medicines and countries). However, this overstates the frequency with which patents totally block access to generics, because it is only a subset of patents that are absolutely fundamental and that generic manufacturers can never circumvent (normally, a patent on the active pharmaceutical ingredient, and for medicines containing two such ingredients, a patent on their co-formulation). By this standard, there are 186 fundamental patents or applications, or 0.9 percent of the total. Thus, there are no patent barriers to accessing generic essential medicines in 98.6 percent of the cases we studied, which we stress is an overall probability and not prognostic in any specific case.

Update from Amir Attaran: I think you must also mention that with only 17 patents at issue, the pharma industry lacks vision on how to remove the apprehension that patents have negatively affected and are negatively affecting patients’ ability to access medicines in these few cases. Most of the patented meds are for AIDS, and so they attract disproportionate attention.

Patent Term Adjustment: Overlapping Delays

The USPTO has published a further explanation of the patent term adjustment rules in the Federal Register. (69 FR 34283). The purpose of the explanation is to clear up confusion regarding "overlapping" delays under 35 U.S.C. 154(b)(2)(A).

Specifically, the Office has consistently taken [and continues to take] the position that if an application is entitled to an adjustment under the three-year pendency provision of 35 U.S.C. 154(b)(1)(B), the entire period during which the application was pending before the Office (except for periods excluded under 35 U.S.C. 154(b)(1)(B)(i)-(iii)), and not just the period beginning three years after the actual filing date of the application, is the relevant period under 35 U.S.C. 154(b)(1)(B) in determining whether periods of delay ‘‘overlap’’ under 35 U.S.C. 154(b)(2)(A).

Microsoft patents human circuit

Microsoft has patented a network that uses the “body of a living creature” as a data bus and power supply for communication between two electronic devices. (U.S. Patent 6,754,472).

According to the abstract,

Methods and apparatus for distributing power and data to devices coupled to the human body are described. The human body is used as a conductive medium, e.g., a bus, over which power and/or data is distributed.

The patent includes the use of pulsed AC or DC to power miniature wearable devices.

100 Hz signal may be used to power a first device while a 150 Hz signal may be used to power a second device. Digital data and/or other information signals, e.g., audio signals, can be modulated on the power signal using frequency and/or amplitude modulation techniques.

For instance, a miniature speaker may be located within an earring while an audio input microphone may be attached to a bracelet.

(The drawing is from the face of the patent).

ProstaScint (R) Patent Noninfringement Holding Reversed

Goldenberg and Immunomedics, Inc v. Cytogen, Inc. and C.R. Bard, Inc. (Fed. Cir. June 23, 2004)

(GAJARSA) In an appeal of a summary judgment of noninfringement, the Federal Circuit upheld the district court’s claim construction and summary judgment of no literal infringement. However, the appellate panel reversed the lower court’s summary judgment of noninfringement based on the doctrine of equivalents (DOE).

The patent at suit issued in 1984 and involved tumor localization and antigen therapy. (U.S. Patent 4,460,559). Cytogen and Bard’s ProstaScint (R) products (used to image the extent and location of prostate cancer) allegedly infringe this and other patents held by the plaintiffs.


Summary judgment of noninfringement under the doctrine of equivalents is appropriate if “no reasonable jury could determine two elements to be equivalent.”

The district court explained that, under Dey, statements from the ’744 patent could not create prosecution history estoppel for the ’559 patent. For the same reasons stated above, we agree with the district court’s conclusion on this point. Despite the lack of estoppel, however, the district court still found that Immunomedics “had not met the requirements of the ‘function-way-result’ test.”

The district court appears to have viewed the world of antigens as consisting of two distinct categories—those that are intracellular and those that are on the cell surface—and concluded that antigens falling in different halves could not be equivalents as a matter of law. Transmembrane antigens, however, appear to be a category of their own, and are not susceptible to the black and white categorization made by the district court. As a “grey” category, transmembrane antigens are not addressed by the ’559 patent or its prosecution history and might be equivalents to either of the categories identified by the district court if such a finding was made. See generally Warner-Jenkinson, 520 U.S. at 40.

Thus, the court remanded for further proceedings.

In dissent, J PROST would have allowed the claim term “intracellular marker substance” to encompass portions of an antigen located inside a cell.

Google’s Amended SEC Filing Discusses Overture Lawsuit


Google has amended its SEC filings and has commented on Yahoo’s Overture patent infringement suit. (U.S. Patent 6,269,361).

Overture Services (now owned by Yahoo) has sued the [Google], claiming that the Google AdWords program infringes certain claims of an Overture Services patent. It also claims that the patent relates to an Overture Services own bid-for-ad placement business model and its pay-for-performance technologies. The Company is currently litigating this case. If Overture Services wins, it may significantly limit the Company’s ability to use the AdWords program, and the Company also may be required to pay damages.

Google plans to continue to “rigorously defend this lawsuit.”

Overture’s patent, filed in 1999, covers a “system and method for influencing a position on a search result list generated by a computer network search engine.”

Martin Schwimmer discusses Google’s potential trademark problems here. If “googling” becomes a generic term, then it would lose its power as a trademark.

Lerner Jaffe Book

Professors Lerner and Jaffe’s new book How our Broken Patent System is Endangering Innovation and Progress and What to do about It is due out this Fall.

In the book, Lerner and Jaffe will make the case that the approval rate for patent applications is absolutely too high. “In many cases it appears that a determined patentee can get almost any award he seeks,” the authors say.


Patent Maintenance Fee Statements

The USPTO has announced that maintenance fee statements are no longer being mailed for maintenance fees paid over the Internet.

When a maintenance fee is paid using the USPTO Internet Web site, a Web page becomes available that provides a Maintenance Fee Statement. That Web page displays the official USPTO Maintenance Fee Statement and must be printed in order to obtain a paper copy. The USPTO will only mail Maintenance Fee Statements for payments made by mail, facsimile or hand-delivery; and will not mail Maintenance Fee Statements for payments made over the Internet. Questions regarding patent maintenance fees should be directed to the Maintenance Fee Branch at (703) 308-5068.

Disc Golf Patents

In 1977 Ed Headrick patented this basket-target for disc (Frisbee) golf. (U.S. Patent 4,039,189) (PDF). After the patent had expired, Headrick’s company (DGA) sued Champion Disc for trade dress infringement. The district court threw out the case, finding that the patented design was functional and thus could not retain trade dress protection. The holding was affirmed by Disc Golf Assoc., Inc. v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1998).

In addition to this patent, “Steady” Ed invented the modern Frisbee and the game of disc golf! Before he died in 2002, he made this remark.

“I felt the Frisbee had some kind of a spirit involved. It’s not just like playing catch with a ball. It’s the beautiful flight.”

Find courses in your area. (Unfortunately for me, there are no courses in the city of Chicago).