September 2004

Laboratory Corporation of America v. Chiron

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

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

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

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

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

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


Payless Shoesource v. Genfoot


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

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


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

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

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

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

Constitutionality of PTO Fee Diversion

Figueroa v. United States.

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

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

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

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

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

Doctrine of Equivalents for Means-Plus-Function Claims Limited to “After Invented Technology.”

Ghaly v. Hasbro (Fed. Cir. 2004) (04-1124) (unpublished opinion).

Ghaly, a pro se plaintiff, sued Hasbro for infringement of his patent on a hand-held electronic game that operates something like a "hand-held electronic version of a Rubik's cube."  (U.S. Patent No. 5,286,037).  After construing the terms in the patent, the district court (E.D.N.Y.) granted summary judgment of noninfringement (both literal and DOE) to Hasbro. 

On appeal, the Federal Circuit agreed with the lower court's claim construction -- finding that the means-plus-function language of the switch means limited Ghaly's claims to the bi-stable switches disclosed in the specification.  Because Hasbro's devices were momentary switches, they could not literally infringe.

Further, the Court disregarded Ghaly's allegations under the doctrine of equivalents because Hasbro's momentary switches were not "after invented technology."

With regards to the "entry control means" limitation . . . there is no after-invented technology in the accused Hasbro device that would render the accused Hasbro devices infringing under our precedents regarding the doctrine of equivalents for means-plus-function limitations.  Momentary switches existed at the time of the '037 patent's filing in 1991.

Summary judgment affirmed.

Of course, the "after-invented technology" limitation is based on the holding of Chiuminatta Concrete v. Cardinal Indus. (Fed. Cir. 1998).

MPEP Online Version

Link: In May 2004, the USPTO released a new revision of the Manual of Patent Examining Procedure (MPEP, 8th ed., rev. 2). For several months, the electronic version was only available in PDF format. Now, the Office has released each chapter of the MPEP in HTML. The HTML version is much smaller (less diskspace) and can be searched much more quickly.

A CD-ROM version of the manual is expected in mid-October. You can contact the Office of Electronic Information Products at (703) 306-2600 for more information.

Improved Patent Searching at the EPO

Link: The European Patent Office (EPO) has released Version 3 of their patent searching website, esp@cenet. The new version is more user-friendly and had improved field-searching.

Version 3 is the culmination of a long process aimed at developing a new improved user interface for the esp@cenet service. During this time, we have consulted extensively with both current and potential users of esp@cenet, as well as specialists in the area of human computer interaction, in order to improve the usability of the service, with particular attention being paid to the needs of the non-specialist user.

According to David Orange at the University of Washington, the site provides “a title-abstract keyword search, along with various number options, [such as] applicant, inventor etc. You can retrieve PDFs of US patents (and published applications), [and patent documents from] WIPO, Japan, EPO, Great Britain, France and Germany.”

Finally, an on-line forum is provided for discussing search techniques.

Entec requests Inter Partes Reexamination

Entec Engine of Atlanta has filed for an inter partes reexamination of Caterpillar’s patent no. 6,651,618.  The patent, titled “Air and Fuel Supply System for Combustion Engine,” issued in November 2003.

In February 2004, USPTO Under Secretary Jon Dudas held a roundtable to discuss the equities of inter partes reexaminations.  A PDF version of the transcript from the roundtable discussion is available here.

Experimental Use must be Non-Educational

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

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

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

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

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

Silly Inventions are Easy to Patent?

Eugene Quinn, the “IPWatchdog,” made an interesting comment recently in his newsgroup. Quinn sees a “double standard” in the Patent Office’s examination procedure.

[T]he Patent Office just doesn’t apply the law any more. There seems to be a double standard in the office. Things that are silly/stupid get patented without much time or consideration, perhaps because the Patent Office doesn’t believe anyone will ever use the patent. Things that are what we would consider “science related” actually get stricter scrutiny. This may make some sense, but the patent laws do not make such a distinction. I also think that the craziness that the Patent Office is allowing significantly contributes to the existence of scam invention submission companies. These scam companies can say with a straight face that any invention can and will receive a patent. Therefore, I think the Patent Office is to blame for many of the scams. Perhaps if Congress would let the Patent Office keep its own revenue better examinations could be had. That looked like it would be the casee earlier in the year, but last week the Senate seems to have stripped that measure in the appropriations bill.


Phillips v. AWH: The Amicus Briefs

Baffle Image

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

21. Norvatis:

22. Oregon Patent Law Association:

23. Parus Holdings:

24. Pharmaceutical Patent Attorneys:

25. San Diego IP Law Association:

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

27. VISA USA and Mentat:

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

Party Briefs:

1. Edward H. Phillips

2. AWH Corporation

3. Phillips reply brief


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


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

Copies of Pending Applications not Required in IDS

The PTO has now eliminated the requirement of submitting copies of pending U.S. patent applications in an Information Disclosure Statement (IDS) if the pending application was filed after June 30, 2003, or entered National Stage after June 30, 2003.  The requirement is also waived for pending applications filed before June 30, 2003, if a copy of the application is available through the USPTO's private PAIR system. 

This waiver is limited to the specification, including the claims, and drawings in the U.S. application (or portion of the application). If material other than the specification, including the claims, and drawings in the file of a U.S. patent application is being cited in an IDS, the IDS must contain a legible copy of such material. See 37 CFR 1.98(a)(1)(iv).

When citing to a published application, the PTO prefers that the citation be to the patent application publication (by publication number) rather than to the application itself (by application number).

This waiver is effective immediately

Note: For those of you following PTO rule changes closely, Deputy Commissioner Stephen Kunin signed the waiver using the newly approved /s/ signature procedure.


Immersion v. Sony

In 2002, Immersion filed suit against both Microsoft and Sony for patent infringement in the Northern District of California. Immersion claimed that the game systems manufactured by the two companies violated Immersion’s patents on “tactiley responsive” technology. Microsoft and Immersion settled before trial, and on Tuesday, Immersion was awarded $82 million based on Sony’s infringement. Sony plans to appeal.

Patent Office Now Hiring

Douglas Bourgeois, the Patent Office’s former Chief Information Officer (CIO) recently left to become a director at the Interior Department. The PTO has announced a job search to replace Bourgeois. (Peter Zura posted the announcement as did the PTO.) With the PTO’s move to a paperless office and electronic filing, it is critical that the Office finds a highly qualified canditate for the position.

Kangaroo Court

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

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

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

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

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

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

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

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

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

Avoid Festo Presumptions With a Letter to the File?

Professor Douglas Lichtman at the University of Chicago writes with a question about patent prosecution:

Why haven’t patent prosecutors begun to aggressively document the purpose behind their claim language changes, for example by writing letters to the file making clear a precise and narrow construction of the change. The argument to do so is that such documents would rebut the broad Festo presumptions that right now threaten to construe every change broadly. And it would be cheap to do.

I am not advocating anything misleading. But often changes are made for a very specific reason, and claim language changes (like claim language itself) can be imprecise. So why not clearly document the precise change the examiner requested, making clear what you meant to sacrifice and protecting the rest from Festo?

Please e-mail your comments to me or Professor Lichtman.

UPDATE: The real question is why patent attorneys do not precisely define in their office action response what you intend to give up in an amendment. For example, why not say “of course, my purpose here is only to exclude red wheels, leaving fully intact everything else that might have been included in the original claim language.”

Free Patent Downloads on Your PC

For a short time, websites offering free online downloading went out of vogue. Recently, however, was started by a generous patent attorney as “a free search tool.” Pat2PDF allows you to download U.S. patents in PDF format.

Now, a Canadian attorney, Peter Eliopoulos, has taken the code from Pat2PDF given us an installation guide so that the script that can run locally on our WindowsXP systems. There is one problem with Peter’s installation guide. The Guide is only slightly longer than an AA 12-step program. Installation appears to take about an hour, and the result will be easy downloading of patents from your PC.

Update: Peter asked me to also give credit to the script’s authors Oren Tirosh and Thomas Boege.  According to Peter he “only wrote the installation instructions for those of us still using Windows.”

Suggestion: At some point, the PTO should make PDF versions of the patents freely available from their website.

Blanke files for inter partes reexamination.

Blanke Corporation of Atlanta has requested an inter-partes reexamination of a patent owned by Schluter-Systems, a German company.  The patent (6,434,901), claims a support plate maid of a foil-like plastic material for a plate-lined floor.

An inter partes reexamination may be requested by any third party, but, unlike ex parte proceedings, the real “party in interest” must be disclosed. During an inter partes reexamination, the third party requester is permitted to submit comments on official actions and the patentee’s responses thereto as long as such comments are filed within 30 days of the patentee’s response to the action.

PTO Rule Changes:

The PTO has announced a large set of rule changes. I have listed a few of the highlights:

Incorporation by Reference: A claim for priority or benefit will now be considered an incorporation by reference of the prior-filed application as to an inadvertently omitted portion of the specification or drawings.

Newly added Sec. 1.57(a) now allows for all or a portion of the specification or drawings that is inadvertently omitted from an application containing a priority claim for a prior-filed foreign application, or a benefit claim for a prior-filed provisional, nonprovisional, or international application, to be added to the application by way of a later filed amendment if the inadvertently omitted portion of the specification or drawings is completely contained in the prior-filed application even though there is no explicit incorporation by reference of the prior-filed application. The phrase "completely contained'' requires that the material to be added to the application must be expressly (as opposed to implicitly) disclosed in the prior application.

Information Disclosure Statements: The format of the IDS has been codified -- however, PTO Form 1449 is still accurate.  The Office has also announced that "it will no longer be necessary to require a copy of each cited U.S. patent or U.S. patent application publication in an IDS regardless of the filing date of the application or the national stage entry date under 35 U.S.C. 371, unless it is [explicitly] required by the Office."

Signatures: 37 CFR 1.4 has been amended to allow for "S-signatures" made by electronic means for many types of submissions to the PTO.  An S-signature is a signature inserted between forward slash marks.

Fees: The Office has determined the fees for many petitions do not "recover the Office's costs of treating many of these types of petitions."  Thus, fees have been increased.

Small-Entity Status: The Code has been amended to clarify that the fact that a large entity holds a security interest in a patent application does not bar the assignee to small entity status (unless the security interest is defaulted upon).  The notice also points out that a foreign owned and operated business can still qualify for small entity fee reductions.

69 FR 56482

NOTE: LINK to PDF Rule Change.

Update: Be Spacific and PHOSITA have more information on the /s/ signatures.

Yahoo & Inktomi chip away at Teknowledge patent


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

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

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

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

Summary Judgment Granted to Yahoo & Inktomi.

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

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

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

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

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

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

REVERSED, 37 CFR § 1.196(b)