March 2005

Panel Prevents Piling-on of the Period of Patent Protection by Patenting Precursor Product

PatentlyOImage007In re Fujimura (Fed. Cir. 2005) (NONPRECEDENTIAL).

Fujimura’s earlier patent that covers a sintered permanent magnet had expired, but the applicant hoped to obtain a patent on a permanent magnet alloy, a precursor to the sintered permanent magnet.  During prosecution, the examiner rejected the claims of the application on the basis of obviousness-type double patenting.  This rejection was affirmed by the BPAI (Board). 

On appeal, the Court of Appeals for the Federal Circuit affirmed, finding that the applicant was impermissibly attempting to extend patent protection.

Reduced to its essentials, this is a case in which the patentees have attempted to extend the period of patent protection for their invention by claiming a composition that is a direct precursor of the product for which their patent protection has expired. In that setting, the examiner and the Board properly found that the appellants’ new claims are obvious in light of the expired ones, and we therefore affirm.


CAFC: No Disclaimer of Claim Scope When Patentee Makes Contradictory Statements.

PatentlyOImage005Outlast Technologies v. Frisby Technologies (Fed. Cir. 2005)(Nonprecedential).

Most of you arrived at this post looking for information on patents on Frisbee discs and disc golf.  Unfortunately this is not a Frisbee case.  

However, it does involve temperature-resistant, phase changing materials that resist temperature change by changing between their solid and liquid state. (Remember latent heat from physics 101).

After claim construction, the district court awarded summary judgment of noninfringement to the defendant Frisby.  Specifically, the court found that the patentee had, during prosecution, clearly disclaimed certain ‘impregnated materials’ from the claim scope.  On Rule 54(b) certified appeal, Outlast argued for an alternative claim construction.

The Appellate Panel found that the district court had erred by finding disclaimer.  The rule, of course, is that a disclaimer must be unequivocal and unambiguous.  In this case, the patentee made one statement that is easily read as a disclaimer, but also made another statement that tends to contradict a disclaimer. 

The Panel found that such contradictory statements are ambiguous of the patentee’s desire to disclaim the subject matter, and thus cannot serve as such a disclaimer.

These seemingly contradictory statements do not unequivocally or unambiguously disclaim articles in which the microcapsules are impregnated within the interstices of the substrate. On the contrary, such contradictory statements are indicative of ambiguity.

The court remanded for a determination of infringement under its newly constructed claim construction using an ordinary meaning approach.

March 2005 Report on New Academic Research


Each month I post a note discussing new research from the academic side of patent law.  This March edition includes three great articles that relate to either legislative changes (prior use statute, post grant opposition) or upcoming court decisions (Phillips claim construction case).  Feel free to e-mail suggestions for April’s edition.

  1. Tom Fairhall and Paul Churilla, Prior Use of Trade Secrets and the Intersection with Patent Law, 14 Fed. Cir. Bar J. 455.  Fairhall and Churilla present a timely article on prior use rights that notes how the current prior use statute (35 USC 273) does not provide the scope necessary to truly protect a prior user’s expectations or investments.  The article is quite timely because FTC proposals to expand the statutory prior use rights is gaining some teeth in the patent community and on the Hill.
  2. Mark Lemley, The Changing Meaning of Patent Claim Terms, available at SSRN.  Professor Lemley’s article is also timely — he discusses at what particular point in time should the meaning of claim terms be fixed.  This is important because the ordinary meaning of terms in the English language change over time.  The major temporal candidates are (i) at the time of the invention (currently used for novelty and nonobviousness); (ii) at the time the application was filed (currently used for enablement or written description); (iii) a the time the patent issues (currently used for means-plus-function claim construction); and (iv) at the time of the infringement (at least some times used to determine infringement).  Lemley agrees that each candidate has a sound legal foundation.  However, he argues that the best approach moving forward is to fix the meaning at the time the patent application is first filed.
  3. Jay Kesan and Andres Gallo, Why ‘Bad’ Patents Survive in the Market, available at SSRN. The professors provide a game theory model to show how would-be invalid patents can survive and be valuable in the marketplace.  Essentially, the transaction costs make it difficult to mount an effective challenge to improperly granted patents.  Their work will serve as the theoretical basis any proposed post-grant opposition procedures.  Specifically, the authors “conclude that a low-cost, post-grant opposition process based primarily on written submissions within a limited estoppel effect . . . will serve as an effective instrument for improving the quality of patents that are issued and enforced.”

Metabolite Labs versus LabCorp — Request for Certiorari.

The Metabolite Labs case is procedurally interesting because the Supreme Court appears to be focused in a question that is quite different from the one raised by Metabolite in its petition for certiorari.  From a practical standpoint, this case has the potential to once again shatter our current notion of patentable subject matter.

In February, the Court invited the Solicitor General to file a brief expressing the views of the United States on the question of whether a medical diagnosis method patent is invalid as non-patentable subject matter under Diamond v. Diehr, 450 U.S. 175, 185 (1981) (holding that one cannot patent laws of nature, natural phenomena, and abstract ideas).  The patent at issue claims a method of detecting a vitamin deficiency in a human body by using a device to determine whether there is an elevated amino acid level.

The court expressed its interest in the patentability question at a point that was too late for amicus to file briefs on the issue, however, some parties have been lobbying the office of the Solicitor General to submit a brief in their favor. The Public Patent Foundation, for instance, has issued a statement outlining its lobbying efforts asking the government to support the proposition that the method is unpatentable and invalid. Of course, to my knowledge, PubPat has never been publicly in favor of the validity of any patent. 

In the opinion below, the CAFC (Rader, J.) affirmed jury verdict of indirect infringement and breach of contract, and affirmed the district court’s award of over $8 million in damages to Metabolite (including damages for willfulness).  The dissent (Schall, J.) argued that claim interpretation had been mishandled. Metabolite Laboratories, Inc. v. Laboratory Corp. of America Holdings, dba as LabCorp., 370 F.3d 1354 (Fed. Cir. 2004) (read my summary).  The question that the High Court is now considering does not appear to have even been addressed by the CAFC decision.  The Court’s docket shows that the case has already been distributed for conference five times since January 1, 2005.  

The SG is expected to file a brief in the case.  However, even with SG support, the court is still unlikely to take this one up.

For general information, Professor Eileen Kane’s article on the patentability of Genes and DNA provides an excellent analysis of issues surrounding patentable subject matter. Kane argues that the genetic code should be characterized as a law of nature. Available at SSRN, 71 Tennessee Law Review 707.


Court Agrees that Sony PlayStation Infringes Immersion Patent

Immersion Picture

Brandon Rash at the EEJD blog provides info on the most recent win for Immersion technology.  Sony has been ordered by the Court to pay $90 million and halt to PlayStation sales in the United States for violating Immersion’s patents on “tactiley responsive” technology. Today’s ruling comes in the wake of last September’s jury verdict of infringement.  Microsoft was a named defendant, but settled prior to trial.

The permanent injunction is stayed pending appeal to the Federal Circuit. In her decision to issue the stay, Judge Claudia Wilken of the Northern District of California determined that four factors weighed in Sony’s favor: (i) the strength of Sony’s showing that it is likely to succeed on the merits of its appeal, (ii) whether Sony will be irreparably injured absent a stay, (iii) whether the stay will substantially injure Immersion, and (iv) where the public interest lies. Following Standard Havens Products, 897 F.2d 511, 512 (Fed. Cir. 1990).  “The Court finds that on balance, these factors weigh in favor of granting a stay.”

Here are the case documents:

CAFC: Indefiniteness Issues Overcome by Defining Terms According to Goal of the Invention

Artificial Hip

Howmedica Osteonics v. Tranquil Prospects (Fed. Cir. 2005).

by Dennis Crouch

In a dispute over a patented artificial hip prosthetic, a Federal Court in Indiana determined that Tranquil’s patent claims were invalid as indefinite under 35 U.S.C. Section 112, paragraph 2.  Specifically, the court found that the term “transverse sectional dimension” was indefinite to one skilled in the art. 

The second paragraph of Section 112 provides that the “specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”  This section has been read to create a invalidity defense based on a lack of definiteness of the patent claims.  Generally, a claim is indefinite if its legal scope is not clear enough that a person of ordinary skill in the art could determine whether a particular [product or method] infringes or not.  Geneve Pharms, 349 F.3d 1373.

On appeal, the Court of Appeals for the Federal Circuit relied upon the purposes of the invention to determine that the one of ordinary skill would readily ascertain that the “transverse sectional dimension” is definite and calls for a two-dimensional measurement.

Transverse Hip Section

One of ordinary skill in this art would recognize that a one-dimensional linear measurement of the “transverse sectional dimensions” would defeat the purpose of the invention to provide a snug fit of the prosthesis in the medullary canal. A two-dimensional measurement, on the other hand, provides the snug fit that is the centerpiece of this invention.

The court went on to vacate the district court’s summary judgments on both indefiniteness and noninfringement. The case was remanded for further proceedings. 

Download Decision: Howmedica Osteonics Corp. v. Tranquil Prospects, Ltd. (04-1302).pdf

Stage Set For Hearing on Experimental Use Safe Harbor Statute at Supreme Court

Party and amicus briefs have been filed and the stage is now set for the April 20 hearing of Merck KGaA v. Integra LifeSciences at the Supreme Court. 

Merck v. Integra is slated to determine the scope of 35 U.S.C. §271(e)(1), the safe harbor statute that permits a drug manufacturer to perform potentially infringing experiments needed to obtain FDA approval without incurring liability for patent infringement.  A major question will be how attenuated an experiment may be and still fall within the protection from infringement liability offered by the statute.

I have summarized the various party and amicus briefs here.  The following links provide PDF copies of the briefs.

In Support of Merck:

In Support of Integra:

In Support of Neither Party:

Federal Circuit Confirms that the Patent & Trademark Office is Not Bound to the Paris Convention


In re Dr. Matthias Rath (Fed. Cir. 2005).

In this trademark case, Dr. Rath appealed from a decision by the U.S. Patent & Trademark Office’s Trademark Trial and Appeal Board (TTAB) that refused to register the marks “DR. RATH” and “RATH.”

Dr. Rath is German and holds a German trademark registration for the marks.  However, the U.S. Examiner refused to register the marks after finding them to be “primarily merely surnames.”  Mere surnames are not registrable under the Lanham Act (Section 1052(e)(4)).

On appeal, Dr. Rath argued that the “primarily merely a surname” rule conflicts with the United States’ obligations under the Paris Convention.  The Federal Circuit dismissed his argument because, although the U.S. is a signatory to the Paris Convention, the Paris Convention is not ‘self executing’ and thus has no direct effect on U.S. law.

Further, the court held that the requirements under Section 44(e) of the Lanham Act cannot be read to require the U.S. to register marks with foreign priority if those marks fail to meet U.S. eligibility requirements.

In concurrence, Judge Bryson argued that there is no reason to decide whether the Lanham Act trumps the Paris Convention because in this case the two are in accord.




CAFC: Licensee must hold all substantial rights under a patent to bring an infringement suit.

Aspex Eyewear v. E’lite Optik (Fed Cir. 2005) (04-1292)(NON PRECEDENTIAL).   PatentlyOImage001

by Joseph Herndon

In general, a licensee is not entitled to bring suit in its own name as a patentee, unless the licensee holds all substantial rights under the patent.

Aspex appealed the decision of the District Court stating that Aspex lacked standing to sue as an exclusive licensee for infringement of two patents (one naming Richard Chao as the sole inventor and the second being a CIP of the first with brothers David and Richard Chao as the named inventors). 

Aspex entered into a written license agreement with Chic that granted Aspex an exclusive license in the U.S. to any rights Chic had acquired from third parties relating to patents involving magnetic eyewear. Later, Richard Chao granted Chic an exclusive license for two patents.

In September 2000, Aspex sued E’Lite for infringement of the two patents. Chic was not named as a party to the suit. The district court concluded that Aspex lacked standing to sue because Chic did not convey any future-acquired patent rights to Aspex, and thus Aspex was not an exclusive licensee of the asserted patents.

On appeal, the Federal Circuit held that the plain language of the Chic-Aspex Agreement makes it clear that the agreement relates only to patents then-owned by Chic, not future-acquired ones. The court contended that if the parties had intended to include future-acquired patents, it more likely would have stated “is and/or will become the owner,” within the agreement. The court also looked to use of the past tense “LICENSED” in term “LICENSED PATENTS” to suggest which patents were at issue.

The court further iterated that even though the license covered patents “relating to magnetic eyewear for eyeglasses,” a provision which certainly covers the two patents at issue, the specific grant provisions control the scope of the license agreement—not the general subject matter of the license. Thus, the court held Chic did not grant an exclusive license to either of the patents to Aspex, and as such, Aspex lacks standing to sue.

Joseph Herndon is a law clerk and at MBHB and is a registered patent agent. Joe has a stellar background in electrical engineering and will graduate from law school this year.

Patents, String Theory, Anti-Aging, and the Warp Drive


I was discussing string theory with a buddy on the way to work this morning.  It turns out that the practical applications of string theory have not yet been fully realized — at least as far as patented technology is concerned.  Only eight issued patents and eight published applications refer to string theory in any way.  Of these, the two most interesting include Jerry Jacobson’s patented method for ameliorating the aging process by using electro-magnetic energy.  (U.S. Patent No. 6,004,257).

Although not yet issued, UK scientists Andrew Worsley and Peter Twist have applied for their patent on specifications for warp drive technology based on the theoretical underpinnings of both general relativity and string theory. (U.S. Pub. No. 2003–0114313). The Worsley-Twist warp drive does not depend upon traditional emissions of matter to create thrust.  Rather, the drive creates a change in the curvature of the space-time continuum — thus allowing travel by warping space-time.  Worsley & Twist recently responded to a rejection under Section 101 of the patent act.  The patent examiner raised concerns over the possibility of the claimed terms “graviton” and “warp drive.”  In their response, the applicants pointed out that the warp drive does not necessarily require superluminal (faster than light) travel.



Monsanto Asks The Federal Circuit To Examine The Utility Requirement for Patenting Biotech Inventions

Patentlyo064_1In re Fisher (Fed. Cir. 2005)(04–1465) (Oral Arguments Scheduled for May 3, 2005).

Fisher could have an even greater impact to the field biotechnology than the upcoming Supreme Court case of Merck KGaA v. Integra.  After being denied a patent by the USPTO’s Board of Patent Appeals & Interferences (BPAI), Monsanto has appealed to the Court of Appeals for the Federal Circuit (CAFC). 

Monsanto’s argument is that the USPTO, without any statutory authority, is applying a heightened standard of utility to biotechnology inventions — specifically their argument is directed to the standard of usefulness under 35 U.S.C. Section 101 applied to nucleotide sequences known as expressed sequence tags (EST’s).  [EST definition]. On appeal, Monsanto has asked the CAFC to consider whether the BPAI’s ruling that EST’s corresponding to genes of unknown function are incapable of satisfying the utility requirement, even though the EST’s are quite useful as research tools. 

Monsanto’s appeal is a blunt attack against USPTO patent prosecution procedures and will impact a large number of biotech applications, past, present and future.  Hal Wegner has noted Monsanto may even be hoping to lose the appeal and thereby firmly establish a standard of utility that would keep others from obtaining patents in the area.

The briefs have all been filed, and oral arguments are scheduled for May 3, 2005. 

I have uploaded the briefs filed in the case.

The BPAI Decision is Available here: File Attachment: Ex Parte Fisher.pdf (209 KB)

Thanks to Paula Davis at Eli Lilly and Stephan Walsh at the USPTO for providing the PDF versions.

University of Texas files patent infringement suit against cell phone manufacturers


Regents of UT v. BenQ (N.D. Tex.) (05–CV-181).

The University of Texas has filed suit against fourteen electronics manufacturers for infringement of a patented method that allows text messaging through a standard telephone keypad.  The patent was issued to Professor George Kondraske in 1987 and covers a form of “predictive text.”  (U.S. Patent No. 4,674,112).  According to Katherine Mangan in the Chronicle of Higher Education, Kondraske teaches electrical and biomedical engineering at the system’s Arlington campus.

The lawsuit was filed this month in U.S. District Court in Austin, and charges Kyocera, the Sanyo North America, Sony Ericsson Mobile Communications, NEC USA, and others of infringement.  Judge Sam Sparks has been assigned the case.

According to the U.S. Patent Office, the University of Texas system received 101 patents in 2004 — ranking fourth behind the University of California, CIT, and MIT.


Plaintiff’s Misconduct Results in a Loss of Damages and a New Trial


Schreiber Foods v. Beatrice Cheese (Fed. Cir. 2005).

Schreiber sued Keuster for infringement of a patented method of slicing and storing cheese.  (U.S. Patent No. 5,701,724).  At trial, a Schreiber director falsely testified that Schreiber Foods owned the patent that had actually been assigned to a third party during the litigation. After trial and verdict, Schreiber’s trial counsel assisted Schreiber in re-acquiring the patent, but did not disclose the assignment to the district court or to opposing counsel.

Upon a Rule 60(b) motion to vacate the judgment, the district court found that Schreiber’s lack of ownership during the litigation deprived Schreiber of standing and rendered the suit moot — thus voiding the judgment.  In the alternative, the district court found that the plaintiff’s litigation conduct constituted fraud, misrepresentation or misconduct.

On appeal, the CAFC first found that the case was not moot, because Schreiber had standing when the trial started (before the original assignment) and had now re-acquired standing.

A temporary loss of standing during patent litigation can be cured before judgment.

On the issue of fraud, the CAFC agreed that there “can be no claim that Schreiber’s conduct is not sanctionable.”

Quite apart from whether Schreiber’s misstatements in the period before September 1998 were sanctionable, the conduct of Schreiber and its counsel after September 1998, when counsel became aware of the assignment of the ’860 patent, was plainly sanctionable. Once counsel became aware that highly material false statements had been made by a witness, in pleadings submitted to the court and in response to discovery requests, and that highly material documents had not been produced as required, Schreiber and its counsel were under an obligation to promptly correct the record.

The CAFC therefore held that the district court properly vacated the entire judgment and that a new trial on all issues is the appropriate sanction.  

File Attachment: Schreiber Foods v. Beatrice Cheese.pdf (67 KB)

Asyst Technologies v. Emtrak


Asyst Technologies v. Emtrak (Fed. Cir. 2005).

Asyst sued several companies for infringement of its patented information processing system directed at an inventory management system used in the production of integrated circuits. 

On appeal, Asyst argued that the lower court had improperly awarded summary judgment of noninfringement to two of the defendants  Based on an ordinary meaning contextualized by the specification and prosecution history, the CAFC found that “mounted on” language of the claims should be given an ordinary, but not overly broad meaning.

The appellate panel took a step back when asked to determine whether a defendant was liable under the doctrine of equivalents.

Inasmuch as the district court has not addressed that question, we think that rather than address that issue ourselves, it is preferable to leave that question to the district court, which is conversant with the evidence proffered by the parties at the summary judgment stage.


File Attachment: Asyst Tech v. Emtrak.pdf (92 KB)

Microsoft requests rehearing in Eolas Appeal.


“Exporting this brief could violate 35 U.S.C. Section 271(f) under the Panel’s mistaken construction of that statute.”

So begins the Amicus brief submitted by Bentley Systems, et al., in support of Microsoft’s petition for rehearing in Eolas v. Microsoft (Golden Master I).  Bentley goes on to argued that the Court should maintain a principled and clear distinction between (a) supplying physical components of a physical patented invention, versus (b) supplying engineering design information that can be used to manufacture components of a patented invention. 

In Eolas v. Microsoft, a three member appellate panel at the Federal Circuit appears to have expanded the scope of Section 271(f) – a statute that creates a cause of action for infringement due to foreign sales when a component of a patented invention is supplied from the U.S., knowing that the component will be combined in an infringing manner outside the U.S.  Microsoft had shipped a “Golden Master” of computer code for Internet Explorer (IE) to its foreign suppliers who then copied the disk and sold the copies on foreign soil.  This activity was seen as infringing, even though the patented invention was not practiced until at least the 3rd step above.

Of course, Microsoft agrees that the CAFC’s decision was mistaken.  In its petition for a rehearing Microsoft argues that the that the panel decision is contrary to Pellegrini v. Analog Devices — a case that were virtually ignored by the CAFC opinion.  In their brief, AOL & Intel agree that the panel’s application of 271(f) cannot be reconciled with Pellegrini and prior U.S. patent law. [AOL & Intel Amicus Brief].

As I have mentioned before, this case may have wide reaching effects.  In its amicus brief, Shell Oil notes that the panel’s opinion overreached when it declared that “every form of invention eligible for patenting falls within the protection of section 271(f).” Specifically, Shell, one of the most multinational of corporations, is concerned that they will be found to be violating patented processes that were somehow exported from the U.S. [Shell Oil Amicus Brief].

In disagreeing with the CAFC decision, the Business Software Alliance (BSA) makes both a legal argument and a policy argument.  On the legal side, BSA describes the Golden Master disks as templates that are not incorporated into patented inventions.  Their argument, that is not controverted by the CAFC decision, is that 271(f) was not enacted to “ensnare companies that transmit know-how.” On the policy side, the BSA notes that the decision hurts U.S. software developers and adds another incentive to outsource such work to developers in another country. [BSA Amicus Brief].

It is difficult to even make an educated guess as to how long it may take for the Federal Circuit to decide the petition.  In one case, a petition for rehearing has now been pending for almost a full year.

Thanks to Joseph Milowic, Janine Carlan, Joe Miller and John Vandenberg for helping me locate the briefs.

How to Get a Job in Intellectual Property Law

PLI is hosting a free audio webcast titled “How to Get a Job in IP Law," March 28, 2005 from 1:00 – 2:00 p.m. (EST) (also available as a teleconference).  Katharine Patterson a consultant in the area of recruitment & training of IP profesionals will share her knowledge on the talents, training, and backgrounds that firms and corporations are seeking in the IP field. This presentation will be geared toward law students and young professionals — although it will be useful for anyone considering a job change.  Topics include:

  • A survey of the types of IP jobs available.
  • Jobs for scientists and non-scientists.
  • How to demonstrate interest in experience to potential employers.
  • What are the best networking opportunities.
  • And more. . .

There will also be some time for questions at the end of the presentation.



Ford settles patent lawsuit

Ford MyColor Patent

The Chicago Tribune (Jim Mateja) is reporting that Ford has settled a patent infringement action initiated by individual inventor, Frank Weyer. In the suit, Weyer accused Ford of infringing his patent that covers a "user selectable multi-color automobile instrument panel illumination."  (Patent No. 5,975,728).

Ford’s new 2005 Mustang had planned to include a MyColor feature that reportedly infringes. According to the Tribune, “Ford had been barred from offering its My Color option or delivering cars with it because of the suit, but now can start sales and shipments.”

In addition to being an inventor, Weyer is a patent attorney with an office in Beverly Hills, California.  In an earlier lawsuit, Weyer sued Network Solutions and for violating their patent on the selection of an e-mail address based on a domain name.  He also spent time coordinating the rural technology unit of the Peace Corps.

2005 Business Methods USPTO Partnership Meeting

In May 2005, the USPTO will host its Spring 2005 Business Methods Customer Partnership Meeting.  This forum will likely provide a valuable opportunity for patent prosecutors to learn what goes on at TC 3600 beyond the MPEP. 

The director and managers of of the Business Methods workgroup will be there for an informal partnership meeting to discuss topics such as public pair, quality initiatives, the determination of statutory subject matter, and other topics specific to business methods.

DATES AND LOCATION: The partnership meeting will be held on Wednesday May 4, 2005, from 1:00 P.M.-5:00 P.M. at the USPTO MADISON AUDITORIUM, Concourse Level, Madison Building, 600 Dulany Street, Alexandria, VA 22313.

Attendance reservations are taken on a first-come first-served bases.  However, the USPTO may limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms should designate an official representatives. No one will be permitted to attend without an accepted attendance request.

To attend, contact Joe Thomas via FAX: (703) 746-5897, or e-mail: by April 20, 2005.