August 2004

ITC Issues Order to Stop Importation of Unlicesed Viagra Imitations

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

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

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

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

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

Download PDF of Decision.

Lessig Guest Blogger: Judge Richard Posner

Seventh Circuit Judge and University of Chicago Law School Professor Richard Posner is slated to guest host Larry Lessig’s blog over the next week (Aug 23-27). Upon meeting Judge Posner, you would not immediately guess that he is one of the most prolific legal writers (even more than Grisham) as well as perhaps the most cited legal scholar ever.

posner_citations
(Shapiro, Fred R, 2000. “The Most-Cited Legal Scholars,” Journal of Legal Studies, University of Chicago Press, vol. 29(1), pp. 409-26).

Face-to-face, Posner is humble, polite, and sincere. In his books and opinions, he is often Darwinian. I’m sure his posts will be excellent. Check them out.

SRAM loses patent appeal

SRAM

SRAM Corp. v. AD-II Engineering, Inc. (Fed. Cir. 2004) (not precedent).

In the Northern District of Illinois, SRAM sued AD-II for infringement of its patented rotatable grip technology. (U.S. Patent No. 5,662,000).  The district court granted summary judgment of infringement holding that “there is simply no question that the notches on the AD-II device serve the same function (engaging the spring) in the same way (through rotation of the grip) to achieve the same result (releasing or pulling on a cable and shifting derailleur gears).” 

On appeal, AD-II argued that SRAM had disclaimed coverage over “any gear shifter having a rotatable support member,” and thus SRAM’s claims should not cover AD-II’s products that contain such a member.  Based on amendments made by SRAM during prosecution, the Appellate Panel (BRYSON) agreed.  Reversed and remanded.

In dissent, Chief Judge Mayer argued that the amendments made during prosecution were to provide an antecedent basis for claim terms — not to overcome prior art or obviousness type objections.  As such, no disclaimer should be found.

Grokster not liable

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

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

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

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

Pear-to-Pear communication:

Federal Circuit: Utica Enterprises v. Federal Broach and Machine

Broaching Patent

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

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

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

Law review topic

I think that the high rate of reversal at the Federal Circuit creates some special implications for patent law. Rather than going for the more extreme position on a contested issue, it may make sense for you as a litigator to propose a more reasonable approach that you think both the district and appellate courts may accept. This is especially true in areas with high reversal rates, such as claim construction. A converse of this theory may also be true — in areas that are rarely appealed, such as discovery, a more extreme position may be more beneficial to your cause.

An analysis of these issues could make an excellent law review note topic. You could, for instance, go into game theory as well as some of the current legal practices. An author who is creative with analogies will find that many of the issues have already been examined by Becker and followers. One beneficial aspect of this topic is that, although the focus is purportedly patent law, it really crosses into any field of litigation.

A couple of other ideas that I already gave out relate to a) the recent Honeywell v. Hamilton Sundstrand case that may be taken up by the Supreme Court and b) an analysis of when academic presentations do/should constitute 102(b) anticipation as printed publications based on this recent case. In part b, perhaps you would focus on the case of a power point presentation at a two day conference.

Let me know what you find.

AIPLA Annual Meeting

The American Intellectual Property Law Association (AIPLA) has opened registration for its annual meeting to be held October 14 – 16, 2004 in Washington, DC.

This year’s program promises to be an interesting one with sessions examining patent law in the Pacific Rim, the Doctrine of Equivalents, trademark dilution, Constitutional challenges to copyright, Federal Circuit decision making, prosecuting the difficult patent application, trademark fair use, licensing programs, and patent, copyright, and trademark litigation.

Jon Dudas, the … Director of the USPTO will speak during the Friday Lunch Program. David Nimmer will address the Thursday Lunch program with a discussion of the recent accomplishments of the US Copyright Office.In addition to the learning, AIPLA meetings always have their share of good times.

Book: Patents and How to Get One

I wrote this for the ASME Intellectual Property Community that I help facilitate.

The U.S. Department of Commerce publishes a small book titled “Patents and How to Get One: A Practical Handbook.” I would recommend this book to anyone who is planing to apply for a patent. It will also give you a fairly solid foundation in the process so that you can spend time discussing real issues with your patent attorney rather than reviewing the legal background. The best part — the book is $4.95 and available from Amazon.com.

The ASME Communities of Practice (CoP) is a new web-based community group that is open to both ASME members and non-members. You do have to create an account before accessing the groups, but it is all free.

FYI: ASME = American Society of Mechanical Engineers

Lichtman & Posner: ISP Immunity is too great

In a recent working paper, Professors Doug Lichtman and Eric Posner (both at University of Chicago) question the current legal policy that leaves Internet service providers “largely immune from liability for their role in the creation and propagation of worms, viruses, and other forms of malicious computer code.” According to Lichtman and Posner:

In our view, such immunity is difficult to defend on policy grounds, and sharply inconsistent with conventional tort law principles. Internet service providers control the gateway through which Internet pests enter and reenter the public computer system. They should therefore bear some responsibility for stopping these pests before they spread and for helping to identify individuals who originate malicious code in the first place.

At least three factors point toward the benefit of ISP liability:

1) Often true bad actors are beyond the reach of the law.
2) An ISP has some real control over what passes through its Chunk of the net.
3) End-user self-help mechanisms are often inadequate.

Read a lengthy abstract, or request the full paper from Marjorie Holme at the Law School.

Update: Tim Wu guest at Lessig’s Blog provides more comments on Doug’s stand.

Poster Presentation at Conferences Constitutes 102(b) Printed Publication

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

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

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

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

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

New Electronic Filing and Authoring Software

The USPTO has announced improvements to its Patent Electronic Filing System (EFS).  Beginning Sunday, August 22, 2004 the Office will make available EFS-ABX version 1.1 and ePAVE version 5.1d. 

EFS-ABX is the new authoring tool used to create patent application specifications. EFS-ABX allows users to develop a patent application completely in Microsoft® Word which greatly improves the workflow of creating a patent specification over current authoring tools.

Electronic Filing Software can be Downloaded here :  <http://www.uspto.gov/ebc/efs/index.html>.

Federal Circuit: Fisher-Price v. Safety 1st

Fisher Price

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

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

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

Frivolous arguments over FJC patent video

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

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

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

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

Glaxo Disclaims Allergy Patent

According to the USPTO Official Gazette, Glaxo Group has filed a disclaimer that dedicates its Patent No. 5,290,815 to the public.  The ‘815 patent involves a method of treating a late asthmatic reaction and reportedly covered the use of Advair Diskus and Serevent.  The patent was apparently de-listed from the Orange Book in 2003.

MPEP 1.321 provides for statutory disclaimers:

A patentee owning the whole or any sectional interest in a patent may disclaim any complete claim or claims in a patent. In like manner any patentee may disclaim or dedicate to the public the entire term, or any terminal part of the term, of the patent granted. Such disclaimer is binding upon the grantee and its successors or assigns.

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

Linear Technologies Figure

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

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

Summary:

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

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

Read the original federal circuit opinion.

Online Inventor’s Forum

The USPTO has released a transcript from its on-line chat.  Here are some Excerpts:

Inventor 
Can I use an invention promotion company to help me with my invention

USPTO Expert
Yes, however you should do a thorough search of what they offer including their costs and their success rate. Be sure and get references to ensure you are working with a reputable business. Also, registered patent practitioners are available to help you. For a list of questions to ask an invention promotion company go to our independent inventor link at our website.  http://www.uspto.gov/web/offices/com/iip/data.htm

Inventor
can drawings be revised after the original non-provisional application?

USPTO Expert
Drawings can be revised as long as no new matter (additional information supported by the original specification) is added by the revision. Revision of drawings is accomplished by filing replacement drawings.

Inventor
Is there a difference in preference/priority between individual patent applicants verses corporation applicants?

USPTO Expert
Although there are reduced fees for independent inventors and small businesses, the USPTO treats all applications in the same manner regardless of the fee paid.

Inventor
Can I market my provisional patent, after I mailed the application? If not, when?

USPTO Expert
Yes, you may market your invention at any time after your file the provisional. But you could lose your patent rights if you sell or offer to sell your invention more than one year before the effective filing date of your invention. The filing date of the provisional will be the effective filing date of a subsequent non-provisional as long as the disclosure of the provisional provides sufficient disclosure for the claims of the non-provisional, but you must file a non-provisional application in order to obtain a patent.

Inventor
What should I do if the (patent) examiner misunderstands the descriptions and benefits of the invention and compares it to prior art that has nothing to do with it?

USPTO Expert
In response to feedback from previous chat sessions, this month we have decided to answer more technical questions off-line in the written transcript of this chat which will be available in about a week on our website.  You can request an interview with the examiner. This interview can be in person or over the telephone. Give the examiner some advance notice of your request so that you both can agree on a convenient time. The interview could assist you in preparing your written response to the office action. An examiner has a burden to establish a basis for a conclusion of non-patentability. Section 2100 of the Manual of Patent Examining Procedure (MPEP) offers requirements to the examiner on developing a rejection. Probably MPEP 2111+ would be appropriate to your situation. From the MPEP sections, determine what rationale the examiner was required to use when drafting the rejection. If you can develop sound arguments why the examiner’s rejection failed to follow the MPEP guidance, then you may be successful in convincing the examiner to withdraw the rejection. http://www.uspto.gov/web/offices/pac/mpep/mpep_e8r2_2100_508.pdf

Inventor
I just want to say that the PTO is providing an excellent service to the public.

 

Federal Circuit: Power Mosfet v Siemens and Infineon

Power Mosfet Technologies (PMT) v. Siemens AG (Fed. Cir. 2004)

PMT sued Siemens for infringement of its patented technology covering a voltage sustaining layer for a MOSFET.  (U.S. Patent No. 5,216,275)Following a bench trial, the district court found that the accused products did not infringe the ‘257 patent. The Appellate Panel agreed with the district court and affirmed.

Because we affirm the district court’s claim construction, we must also agree with its conclusion that neither Infineon’s nor ST’s accused devices infringe the ‘275 patent.  We also find that, because a full construction of the claims was never completed prior to the district court’s final judgment, the district court could not have changed the claim construction and therefore did not abuse its discretion in denying PMT’s new trial motion.  Regarding Infineon’s cross-appeal, we conclude that the district court did not abuse its discretion in denying Infineon’s costs under either Rule 11 or 35 U.S.C. § 285.  Finally, we find that, in light of IR’s representations to the district court, the district court did not abuse its discretion in denying IR’s motion for costs under Rule 54(d).  Accordingly, the district court’s judgment of noninfringement, its denial of PMT’s motion for a new trial, and its denial of Infineon’s requests for fees and IR’s request for costs are all

 

Which Dictionaries are Used for Claim Construction?

Professor Joseph Miller along with James Hilsenteger have pulled together an interesting working paper discussing the Federal Circuit’s use of dictionaries in claim construction. (Abstract and Article Download). They looked at all Federal Circuit cases since 1995 and tallied the use of dictionaries. Findings:

1) General purpose dictionaries are much more popular than technical dictionaries (more than a 2:1 ratio).
2) Webster’s Third International is the most popular dictionary (25% of total).
3) Use of dictionaries appears to vary widely according to the members of each Appellate Panel (Miller provides a nice table in the appendix).

Finally, the authors propose a rule change that would “require that every patent applicant put her dictionary selections (general purpose and technical) on the record during examination, and that any resulting issued patent state the applicant’s dictionary selections on its face.”  According to the paper, this requirement would help to strengthen the public notice function of patents.

Comment: Interestingly, I was discussing a similar proposal with another attorney last week. We were thinking of scenarios where it would be in the Applicant’s best interest preset the dictionary to be used. For instance, linking your terms to a dictionary will result in well defined terms that are cheaper to litigate. However, many patent attorneys are reluctant to completely define their terms for fear of losing some undefined scope. This complex issue may be resolved quite soon by the Federal Circuit in Phillips v. AWH.