July 2004

Alticor v. Ultra-Sun Technologies

img037
Alticor v. Ultra-Sun Technologies (Fed. Cir. 2004) (not citable as precedent)

(NEWMAN, PLAGER, CLEVENGER). In an infringement suit over Alticor’s patented water purification technology, the lower court granted summary judgment of noninfringement in favor of Ultra-Sun. The system uses UV light as a radiant energy source for killing contaminating microorganisms. The appellate panel reversed, finding that a reasonable jury could have found infringement based on the district court’s claim construction.

ThermoGenesis v. PharmaStem

img036
The USPTO has announced a reexamination request of PharmaStem Therapeutics patent on technology for the “preservation of fetal and neonatal hematopoeitic stem and progenitor cells of the blood.” (U.S. Patent 5,004,681). The reexam was requested by a competitor, ThermoGenesis.

ThermoGenesis commented that it “made the request for re-examination based on our assessment that these patent claims do not distinguish over the “prior art,” including the publication of several medical journal articles describing similar techniques that predated the patents.” According to Nicholas Didier, President and CEO of PharmaStem, approximately two thirds of the cord blood banking industry operates under a PharmaStem license.

The patent at suit issued in 1991 and survived a first reexamination in 2000.

Eli Lilly v. Aradigm

img035
In an inventorship dispute, over an insulin delivery system, the federal circuit (LOURIE, CLEVENGER, and GAJARSA) reversed a jury’s verdict to add an inventor to the disputed patent.

While circumstantial evidence may in some cases be sufficient to surmount the clear and convincing evidence burden of proof, we conclude that the circumstantial evidence presented here is insufficient and that the jury’s verdict cannot stand.

In a concurring opinion, LOURIE argued that the burden of to show joint inventorship should be a preponderance of the evidence rather than clear and convincing.

Federal Circuit Revives Patent Suit Against the State of California

retaining wall
California Department of Transportation v. Tycor Walls, Inc. (Fed. Cir. 2004) (not citable as precedent).

Tycor sued the California DOT for infringement of its patented retaining wall technology. (U.S. Patent 6,036,405). The trial court granted summary judgment to the DOT based on its noninfringement analysis. On appeal, the Federal Circuit vacated, holding that the lower court “erred in its analysis of infringement under the doctrine of equivalents.”

The Appellate Panel (LOURIE, FRIEDMAN, CLEVENGER) found that equivalents of a claimed “slot” need not perform a “sliding function” as requred by the lower court.

Patent Examiner Jobs

The USPTO has a new ad on their main page (www.uspto.gov):

We’re Hiring Now! PATENT EXAMINERS

For those who don’t know, patent examiners work at the patent office in Washington DC and determine whether a patent should be issued for each invention. It can be an exciting job because you get to work with cutting edge technologies every day. Albert Einstein was one of the most famous patent examiners — although he worked in Europe.

Qualifications include U.S. Citizenship and the equivalent of a bachelor’s degree in some area of technology or science. A form is available online for applying for the Job.

I know a number of people who worked at the patent office during the day and attended law school at George Washington University in the evenings. Once they graduated, they had great experience and did not have much problem finding excellent jobs as patent attorneys. (Although past success does not necessarily foretell future success).

Landes and Posner’s Newest Law & Economics Book

posner_landes_book
Two of the great University of Chicago professors have teamed up again. Professor Bill Landes and 7th Circuit Judge Richard Posner’s newest work is titled The Political Economy of Intellectual Property Law.

This monograph seeks to explain the expansion of intellectual property law over the last half century, focusing in particular on the rapid growth that began with the 1976 Copyright Act. In so doing, it explores a fundamental, unresolved issue in the theory of regulation: why some kinds of regulation have increased dramatically over this period while others have virtually disappeared.

Read about Posner’s recent stint as a patent law judge here.

More Mail Stop Changes

More Revisions have been made to the list of mail stops. The most up-to-date list of USPTO mailing information is available here.

Specific Changes:

These Mail Stops should not be used: Mail Stop Application Number, Mail Stop CPA, Mail Stop Design, Mail Stop Non-Fee Amendment, Mail Stop PGPUB-ABD, Mail Stop Patent Application, and Mail Stop Provisional Patent Application.

Mail Stop Non-Fee Amendment has been changed to Mail Stop Amendment. In addition, Mail Stop PGPUB-ABD has been changed to Mail Stop Express Abandonment. and all requests and petitions for an express abandonment under 37 CFR 1.138 should be directed to Mail Stop Express Abandonment or transmitted by facsimile to 703-305-8568.

Mail Stop L&R and Mail Stop Post Issue have been established.

Dennis Crouch

Huang v. CIT (Lab Notebook Must be Witnessed)

automatic_dna_sequencer
Huang v. California Institute of Technology (C.D. Cal. 2004)

Dr. Huang sued, alleging that he should be a named inventor of CIT’s automatic DNA sequencing patents. As evidence, Dr. Huang submitted his own testimony and his laboratory notebooks. The Court found that the lab notebooks were insufficient because they were not witnessed or reliably dated.

Only in those instances where Dr. Huang’s lab notebooks were corroborated by independent evidence were they considered at all persuasive.

Find more information here and here.

Shimano’s Inter Partes Reexamination

sram_gear
Shimano has requested two more inter partes reexaminations of patents owned by competitors:

1) Campagnolo SLR’s U.S. Patent 6,490,737 Titled ELECTRIC CONTROL DEVICE FOR A MOTOR-DRIVEN DERAILLEUR FOR BICYCLES; and

2) SRAM’s U.S. Patent 6,681,652 Titled GEAR SELECTION DEVICE FOR A VARIABLE GEAR MECHANISM, ESPECIALLY FOR A BICYCLE DRIVE.

USPTO Notice.

See Shimano’s prior request here.

Read more about inter partes reexaminations here.

AFG INDUSTRIES and ASAHI GLASS v. CARDINAL IG and ANDERSEN WINDOWS

window_patent
AFG Indus. v. Cardinal IG CO. (Fed. Cir. July 13, 2004)

In an infringement suit involving AFG and ASAHI’s patented window treatment, the District Court (E.D. Tenn) held that Cardinal did not infringe. (U.S. Patent 4,859,532). On appeal, the Federal Circuit (RADER) vacated and remanded.

A structure that falls within the meaning of “layer” due to its structure and optical properties remains a single layer whether it was deposited in a single sputtering operation or multiple operations. By the same token, that unitary structure of the same material that constitutes a “layer” does not become multiple layers because the manufacturer decided to deposit it in multiple passes rather than in a single pass. The method of making is not determinative of the structure and properties of a “layer.” Because the trial court considered the method of creating the layer dispositive of its structure and character in the accused LoE2 products, this court vacates the grant of summary judgment.

Because genuine issues of material fact preclude summary judgment of noninfringement of the ’532 patent, this court vacates and remands.In dissent, J. NEWMAN argued that the case should not be remanded again, but rather, should be decided by the appellate panel.

I respectfully dissent from the panel’s decision to remand this case for the third time on the issue of claim construction with respect to the claim term “layer.” Claim construction is a matter of law, and as such it receives de novo review. The purpose is objective correctness; the record is complete, the question is ripe. It is time for decision, not for remand.

There have been three Markman hearings and now three appeals, all directed to the meaning of the term “layer.” For the first two hearings the definition was applied to the titanium dioxide deposits, and in the second appeal this court held that a layer is a material of optically significant uniform chemical composition. In the third Markman hearing the district court held that Cardinal’s multiple deposits of its center zinc oxide component produced multiple layers. This court now appears to hold that its definition in the previous appeal, wherein “layer” was defined in the context of the “interlayers” of titanium dioxide, bars the district court from considering the additional aspect of whether multiple sputtering deposits can produce multiple “layers,” unless they affect the structure and optical properties. However, when the later claim construction is made in a different technical context from that which was earlier considered, in the interest of correctness the court must consider the new context.

This case was filed in 1996. Before the district court the parties produced extensive evidence, in the form of expert and other witness testimony, and physical exhibits and demonstrations. The district court has three times held, on summary judgment upon deciding the legal question of claim construction, that there is no infringement. It is a relatively simple technical question, for which the record is fully developed. After eight years this question of law requires finality, not a fourth cycle of Markman hearing and appeal. From my colleagues’ remand for this purpose, I respectfully dissent.

Willful Patent Infringement: en banc appeal

UPDATE: On September 13, the Federal Circuit issued its opinion, read the full case review here: Knorr-Bremse v. Dana .

Original: The Federal Circuit recently heard en banc oral arguments in the willful patent infringement appeal Knorr-Bremse v. Dana Corporation. John Marshall Professor Janice Mueller’s new article discusses this case and the dilemmas faced by litigants hoping to defend against willfulness charges by disclosing privileged advice of counsel.

Subject to virtually unanimous condemnation is the Federal Circuit’s “adverse inference” rule, which forces a party accused of willful infringement to choose between two unpalatable options: (i) disclosing privileged advice of counsel to mount a willfulness defense, or (ii) not disclosing such information and being subjected to an adverse inference that an exculpatory opinion was not or could not be obtained.

The appellate decision is expected this quarter.

“Willful Infringement and the Federal Circuit’s Pending En Banc Decision in Knorr-Bremse v. Dana Corp.,” 3 J. Marshall Rev. Intellectual Prop. L. 218 (Spring 2004), available at http://www.jmls.edu/ripl/vol3/issue2/mueller.pdf.

Unitherm Food v. ConAgra: Patent Antitrust Holding Vacated, Tortious Interference Affirmed

UNITHERM FOOD SYSTEMS, INC. and JENNIE-O FOODS, INC. v. SWIFT-ECKRICH, INC. (doing business as Conagra Refrigerated Foods) (Fed. Cir. July 11, 2004).

In a declaratory action over a method of browning precooked meats, an Oklahoma district court granted summary judgment of invalidity and unenforceability based on both prior use and prior sale of ConAgra’s patented method. (United States Patent 5,952,027). In addition, the Jury determined that ConAgra’s pre-litigation actions constituted tortious interference and created antitrust violations.

On appeal, the Federal Circuit (GAJARSA) affirmed all appealed actions except for the antitrust holdings.

Because the district court erred, however, in allowing the jury to decide Unitherm’s antitrust claims despite the total absence of economic evidence capable of sustaining those claims, we vacate the judgment finding ConAgra liable for violating § 2 of the Sherman Act. We also vacate all damages awarded consequent to antitrust liability. We remand the matter to the district court for further proceedings consistent with this opinion.

Prior to litigation, ConAgra wrote to several companies who sell equipment for preparing and browning pre-cooked meats. ConAgra attached a copy of the ‘027 Patent to that letter, which included the explicit warning:

“Others in the industry may approach your company regarding this patent, and we would appreciate it if you would inform them that we intend to aggressively protect all of our rights under this patent.”

These letters formed the basis of Unitherm and Jennie-O’s claims of tortious interference. Surprisingly, the court did not mention the “objectively baseless” standard that it recently outlined in Globetrotter Software.

Evans and Dudas Discuss Patent Protection with Chinese Officials

Jon Dudas, Acting Director of the USPTO, recently returned from a trip to China with Commerce Secretary Don Evans. Their mission was to “urge China to ratify and implement the World Intellectual Property Organization (WIPO) treaties in the near terms, provide draft criminal judicial interpretations to the United States for review and facilitate enforcement against end user software piracy by declaring that it harms the public interest.”

Dudas commented:

[The] message to the Chinese about the importance of IP protection provided a strong impetus for the productive discussions we had. Thanks to the leadership of Secretary Evans, I believe we made solid progress and have forged new cooperatives ties with China in the area of intellectual property protection and enforcement.

Later this year, former Patent Office Director Q. Todd Dickinson will lead a delegation of professionals specializing in intellectual property law and public policy to china to participate in bilateral exchanges with their professional counterparts in China, under the auspices of People to People Ambassador Programs. I was honored to be nominated for the delegation; unfortunately I have a previously scheduled commitment.

IPO responds to the FTC Patent Law Report

In October 2003, the FTC released a patent law report that continues to generate activity. Most recently, the Intellectual Property Owners Association (IPO) released its response.

IPO agrees with many of the FTC recommendations directed to improving the quality of patents. IPO strongly believes that improving the quality and timeliness of patents is critical to achieving the proper balance of rights between patent owners and the public.… IPO does not, however believe that the courts or USPTO should actively attempt to balance patent law with economic policy through strategies such as limiting the scope of patentable subject matter or denying the grant or limiting enforcement of a patent. [S]uch an attempt would profoundly undercut the foundation of the patent system. Further, efforts to balance patent and antitrust policy based on today’s technologies will likely cause unintended and adverse economic consequences today and in the future.

Specifically, the IPO takes the following positions:

1. IPO supports enacting legislation to create a new administrative procedure to allow post-grant review, and opposition to, patents.
2. IPO does not support lowering the evidentiary standards for evaluating the validity of patents.
3. IPO does not support changing the statutory standard of non-obviousness.
4. IPO agrees with FTC that we must improve the quality of patents by providing USPTO with adequate funding and no fee diversion.
5. IPO agrees with FTC that Congress should adopt USPTO’s 21st Century Strategic Plan, including expanding the “second pair of eyes” review, but does not support the proposed change to Rule 105.
6. IPO does not support the FTC recommendation concerning considering potential harm to competition in deciding upon the scope of patentable subject matter.
7. IPO endorses the 18 month publication of all patent applications recommendation.
8. IPO supports expansion of prior user rights.
9. IPO supports changes to the notice requirement as a predicate for willfulness determinations.
10. IPO does not support expanding economic considerations in patent law decision making.

Earlier this year, the AIPLA gave its corresponding response (link).

Nipper had the scoop.

Bocce Weekend Update

Bocce
In 1966 J.M. Boulanger patented the rolling-ball game shown above. (U.S. Patent 3,231,278). Boulanger’s game is very similar to Bocce. According to the rules:

Bocce originated in Italy and is one of the oldest of all lawn bowling games. It is now gaining popularity in the United States since it can be played by people of all ages and on a great variety of surfaces. Bocce is played between two players or two teams of up to four players on a team. Bocce is played with 8 large balls, 4 of one color, 4 of another color and one small target ball called the “Jack,” or “Pallino.” Players seek to place their Bocce Balls nearer to the target jack than their opponent or displace the opponent’s Bocce Ball and so improve the position of their Bocce Ball in relation to the Jack, (Pallino). Bocce can be played in a variety of ways using various rules. LINK.

Taser Prevails in Patent Infringement Appeal at Federal Circuit

stun_gun_patent
McNulty v. Taser (Fed. Cir. July 7, 2004) (NONPRECEDENTIAL)

Plaintiff McNulty is the exclusive licensee of a patent entitled “Stun Gun with Low Battery Indicator and Shutoff Timer.” (U.S. Patent 5,193,048). The district court granted summary judgment of non-infringement to Taser and the other co-defendants (Cities of Los Angeles, Ontario, and Buena Park California).

On appeal, the Federal Circuit affirmed,

Accepting all of McNulty’s evidence as true and drawing all inferences in his favor, we agree with the district court that there is no genuine issue of material fact and that Taser’s U3400 and M-series products do not infringe the “trigger means” limitation…. Accordingly, the decision of the district court is affirmed.

Update from TASER’s Press Release:

“We were confident that the District Court’s ruling would be upheld,” said Doug Klint, Vice President and General Counsel for TASER International, Inc. “Our intellectual property portfolio is very strong, and there was never any evidence that TASER International infringed on Mr. McNulty’s patent. We feel vindicated that both the District Court and the Court of Appeals have ruled in our favor,” concluded Mr. Klint.