Green Edge Ent. LLC v. Rubber Mulch Etc. LLC (Fed. Cir. 2010)
You might guess from the names of the parties that the subject matter of the dispute is rubber mulch. Green Edge's patent covers a synthetic rubber mulch that is shaped and colored to imitate a natural mulch. In its patent application, Green Edge indicated that a variety of systems could be used to add color to the rubber, but the application also spelled out one particular "VISICHROME" system by Futura Coatings as being the "most preferred" system. It turns out that Futura Coatings never made or sold system under the name of VISICHROME. Rather, the product Green Edge should have identified was "Product Code 24009." The name VISICHROME apparently came from a sales letter from a Futura Vice President who had referred to a VISICHROME system.
Best Mode: During the infringement litigation, the Eastern District of Missouri court held the patent invalid for failure to disclose the best mode under 35 USC § 112 – finding that VISICHROME did not exist and "that Green Edge had concealed the best mode by disclosing 'a misleading, non-existent name instead of the number' when no similar product was available on the market."
Section 112 of the patent act requires that the patent specification "set forth the best mode contemplated by the inventor of carrying out his invention." Federal Circuit precedent has held that such a "best mode" need only be described if the inventors subjectively possessed a best mode on the filing date of the application. Even then, the question is whether the inventor "concealed" the preferred mode from the public.
The second prong asks whether the inventor has disclosed the best mode and whether the disclosure is adequate to enable one of ordinary skill in the art to practice the best mode of the invention. The second inquiry is objective; it depends upon the scope of the claimed invention and the level of skill in the relevant art.
Although not suggested by the statute, the best mode requirement is generally examined on an element-by-element basis. Here, Green Edge clearly had a preferred approach for coloring the rubber pieces and thus was required to disclose that "best mode."
On appeal, the Federal Circuit reversed – holding that the best mode had not been objectively concealed. The court's reasoning was that a competitor looking for "VISICHROME" might have been able to find it around the time of the invention since at least one Futura Coatings executive had been using that name in sales letters.
The disclosure might have, at the time the application was filed, been specific enough to describe the colorant so as to enable a person of ordinary skill in the art to make the claimed product using Futura's 24009 product. The application for the '514 patent was filed in October 1997, and [the Futura VP's] letter describing Futura's "Visichrome" colorant system was written in July 1997. Thus, despite [the VP's] inability to remember why he used the term "Visichrome" in his letter, it is at least possible, even likely, that in October 1997, at the time of filing, someone contacting Futura to obtain the "Visichrome" colorant system would have received a response similar to Jarboe's letter of that July.
In the end, the court held that summary judgment was inappropriate. On remand, a jury could still find the patent invalid on best mode.
The only ones be screamin are those who go against my main man IANAE.
Unless of course, my man be lost in middle earth. The Nazgul just might be tougher.
That even comes with twilight zone music.
And the sound of your hourly rate screaming in agony and recoiling in horror?
“Patent law, unlike bankruptcy law, is not appreciably more complex than other areas of law.”
That even comes with twilight zone music.
If a Judge is not a bankruptcy judge then they do not hear bankrupcty cases.
There is definitely some value in designating judges to hear only patent cases. It will give them a better understanding of the law and refine their internal BS detectors in patent matters.
The problem is, that’s not really the problem. Patent law, unlike bankruptcy law, is not appreciably more complex than other areas of law. There’s no reason why a generally qualified federal judge couldn’t competently hear a patent case and get the questions of law right with about the usual success rate. Except of course for the Federal Circuit’s love affair for revisiting questions de novo. Sure, you’d get slightly better decisions out of a specialist court, but no more so than you would for contract cases or tort cases or any other commonly litigated area of law.
The complexity in patent matters, it is argued, is in the technology itself. I stand by my opinion upthread that it would be wildly impractical to staff a court to hear patent litigation according to the technical qualifications of the judges, and I don’t think a general science or engineering background makes a judge any better than average for hearing a random patent case outside his technical field.
IANAE Bankruptcy judes are specialists and provide a very good model by which to base the patent courts that I advocate. If a Judge is not a bankruptcy judge then they do not hear bankrupcty cases.
You do not need any specialized education or training related to bankruptcy to qualify for appointment as a bankruptcy judge, so I’m not sure if this is a good analogy for what you’re advocating.
As long as the judge is literate and has a good internal BS detector, it’s up to the parties to do the rest.
Ditto.
IANAE Bankruptcy judes are specialists and provide a very good model by which to base the patent courts that I advocate. If a Judge is not a bankruptcy judge then they do not hear bankrupcty cases.
It is, however, essential that the Judge have life tenure in the patent courts.
Show me a patent that has been invalidated by a District Court by a judge with a technical background.
Show me a patent that has been upheld by a District Court judge with a technical background.
Most judges don’t have a background in patents. Or technology. Or bankruptcy. Or corporate law. Or contracts, even. They’re not supposed to, and it would be unrealistic to expect as much from a court of general jurisdiction.
You go before a court of general jurisdiction, and you plead the facts and the law. It’s your job as a litigant to explain both the technology and the applicable law to the judge, who in any event can’t be expected to know the entire body of US law off the top of his head. If you walk into a District Court expecting the judge to already understand whatever area of law you’re pleading that day, you’re doing it wrong.
As long as the judge is literate and has a good internal BS detector, it’s up to the parties to do the rest.
Ok, let’s take this from a different angle. Show me a patent that has been invalidated by a District Court by a judge with a technical background.
Show me a District Court case where a patent agent would found to have committed Inequitable Conduct.
I beseech you to show me these cases. This is where the discussion must start. As of today, I have never heard of any of the aforementioned instances. This is not to say that they don’t exist. However, I have been in this business on 17 years and have spent much of my time focused on getting the job done correctly. I have not spent much time focused on those that have not done the job correctly. This is probably why I didn’t become concerned until the Judges of the Federal Circuit themselves indicated that they have not been clear about IC. I always assumed that Judges understood the mantra of the Great Chief Justic . . . it is the role of the Court to say what the law is. What could be said when the judges themselves admit that they aren’t sure what the law is.
Good question Cy. LOL. There are 37 Member States of the EPO.
That said, in a typical case, isn’t the action done and dusted, effectively for all Europe, once it is seised by a court in DE, GB or NL?
The Europeans handle patent infringement in a more efficient manner.
Which Europeans? The Italians? The Portuguese?
The Europeans handle patent infringement in a more efficient manner. You bring the patent and you bring the description of the accused product and there is infringement or not. In short, it is about the technology and the actions of the party having the accused device and/method. Many of the skills that you believe are great for a litigator to posess are irrelevant when we focus on the technology. What you advocate is preserving the status quo on patent litigation, because tort reform over the last 30 years has put a great deal of litigators out of business. What we need here is patent reform that focuses on the technology . . . not on the spurious and often inconsdquential issues. Tell me, how in the world does focusing on IC advance the useful arts when the underlying technology is ignored. That in and of itself draws into question the constitutionality of focusing on IC. The courts should only be allowed to focus on the technology, because that is what Art. I, sect. 8, cl. 8 allows.
Ima agreeing with Cy and IANAE and disagreeing with Kenny (shockers!)
Litigators are generalists just like judges, and what hope does a judge have of understanding a technical issue that you can’t explain to an experienced general litigator?
That’s right on the money. I’ve played the supporting patent attorney role several times, and it’s unquestionably vital (at least on the defense side), but the talented litigator brings a whole bunch of additional skills to the bar.
This whole “technical acumen” of judges thing is misguided, in my humble opinion. There is far too much variety in the technologies at issue for us to ever have judges with solid backgrounds in every technical field. We need smart judges who know the law, who enforce the rules that we already have (especially including the law and rules of evidence relating to expert testimony), and who aren’t afraid to call out BS when they spot it.
I submit that Congress should experiment with establishing basic core competencies in technical areas or mathematics before a Judge can hear a patent infringement action.
Unless you’re going to designate those judges to only hear cases in their area of technology, I don’t think you’re solving the problem. A seasoned electrical engineer is just as unqualified to hear a drug case as a judge with a fine arts degree and a JD.
And if you do divide the District Court for the District of Dulany Street into “art units”, we’ll have the same issue we have at the PTO – some art units will be overused and understaffed, and will experience a disproportionate backlog. You think the PTO has it hard? Try staffing a court where every appointee has to be not only technically qualified, but also an experienced lawyer in desperate need of a pay cut.
Moreover, the Federal Circuit was created as a direct result of what was deemed procedural irregularities among the Circuit courts with respect to the validity of patents. I advocate that Congress use its power over the jurisdiction of the Federal Courts to establish requisite qualifications for certain subject matter that are vital to the national security. Technology is such an area. It was not sufficient that the Congress created the Federal Circuit to provide more uniformity among the patent laws. This is clear from the current IC debacle. I see that the Judges on the Federal Circuit with technical backgrouns have reached far different rationale for IC than the Judges without IC. Thus, with respect to uniformity of patent jurisprudence I would submit that the experiment with the creation of the Federal Circuit cannot be called a resounding success. I submit that Congress should experiment with establishing basic core competencies in technical areas or mathematics before a Judge can hear a patent infringement action.
To that end, a statistical analysis of the IC cases and the technical acumen of all parties involved would be beneficial.
The situation with patent invlidity and IC in particular is that either being registered as a patent practitioner creates a presumption of propensity for fraudulent activity with the Federal Government or there is something amiss with the system.
I have heard Judge Rader talk about this topic several times and many he expresses frustration as to how much resources are wasted in fpursuit of IC claims. Therefore, either the criteria for selecting patent attorneys to work before the USPTO is flawed or something in the infringement procedures is flawed. Either way it is clear that things must change. That is all I have been advocating and look at the technical background of judges to idetnify a correlation.
I am looking for statistical evidence of correlation between the lack of technical experience the finding of invalidity of patents.
Considering that you’re sampling District Court judges who are pretty much universally formally inexperienced in science, technology, and patent law, I think you’ll find a correlation between said lack of qualification and whatever usually happens at trial anyway.
Morevoer, many of the litigators that bring these patent infringement suits do not have the requisite technological background to sit for the patent bar.
To be honest, I would rather be represented by an experienced litigator than an experienced patent attorney. That litigator is always welcome to consult a patent attorney to fill out his technical understanding. Litigators are generalists just like judges, and what hope does a judge have of understanding a technical issue that you can’t explain to an experienced general litigator?
A fine organization, but a fourth-tier law school.
Unless you need to request a stay.
IANAE:
I am looking for statistical evidence of correlation between the lack of technical experience the finding of invalidity of patents. Tehcnical acumen is not something that is learned over night. And the mere fact that one can traverse the bureaucracy of under graduate school and law school does not necessarily result in one having the analyitical ability grasp the technical issues that arise in patents suits. Morevoer, many of the litigators that bring these patent infringement suits do not have the requisite technological background to sit for the patent bar. It could very well be that the infringment actions are a gaping hole in the design that Congress established in ensuring that technically qualified people are involved with patents.
As a result, he is from the alumni ranks when the privilege and wealthy attended college and not necessarily the most academically gifted. Any thoughts?
Says the guy who went to law school at the YMCA. A fine organization, but a fourth-tier law school. Any thoughts?
Well it appears that the District Court Judge spent 20 years as a criminal prosecutor.
Well, that’s what you get when you give first instance jurisdiction to the District Court for the District of Wherever. I’m sure patents aren’t the only subject matter in which many of these judges are inexpert but over which they nevertheless enjoy jurisdiction.
They’re not hired to be experts in everything. They’re hired to be able to hear evidence and make findings of fact and apply the law as pleaded by the parties, in whatever type of case comes before them. If they make a real mess of it, at least the appellate court has more experience in patents and can set them right.
If this is really a bigger problem for patents than it is for other, similarly arcane areas of law, perhaps we need a dedicated trial court for patents. Maybe then the Federal Circuit would be more inclined to trust them to make decisions.
But if you want to question the qualifications of a particular District Court judge, the time to do that is when he’s in danger of being appointed to the bench. Not when he makes a decision you’re not crazy about.
Well it appears that the District Court Judge spent 20 years as a criminal prosecutor.link to judgepedia.org Perhaps that is not the best background to handle complex technological issues. Perhaps a special master should be required in these cases. In addition there is indicated that he graduated from Law School in 1970. That would have resulted in his attending college before the 1964 Education Act had come into full force. As a result, he is from the alumni ranks when the privilege and wealthy attended college and not necessarily the most academically gifted. Any thoughts?
Now we must ask ourselves . . . what is the technological background of the Judge who heard this case?
“…behoove a diligent applicant to identify particular third-party components by an unambiguous part number or product code or similar, rather than by a brand name.”
For the BM analysis, why should it matter if you identify by brand or part number, so long as you get it correct? Unless by “brand” there is no way to include sufficient other information as needed to for unique identity. If for example there are more than one toaster sold as “Procter-Silex 4-Slot Deluxe Kool-Touch Toaster”.
Okay, I guess part numbers would be less likely to cause ambiguity. Throw them in, too.
Speaking of improper use of trade names, here’s Green Edge’s claim 3:
“3. The synthetic mulch of claim 1 wherein said colorant is a water based acrylic called VISICHROME.”
Hey, call me whatever you like, just don’t call me late fer dinner.
JJ: Although not reported in the opinion, at oral argument the attorney for the infringers admitted that his clients were themselves obtaining the colored coating for their infringing product from Futura.
Interesting, though the question “well, how did you infringe, then?” is really only an answer to an allegation of non-enablement. I understand the written description requirement is something more. Or at least, something different.
Although not reported in the opinion, at oral argument the attorney for the infringers admitted that his clients were themselves obtaining the colored coating for their infringing product from Futura. Also, there was nothing in the record indicating that the inventors were aware of the Futura product number at the time they submitted their patent application, although the product code was used by them and their licensees in ordering product once commercial production began.
DC: “The name VISICHROME apparently came from a sales letter from a Future Vice President who had referred to a VISICHROME system. ”
Is that a “Future” VP or a “Futura” VP?
Magistrate Judge Terry I. Adelman in the Eastern District of Missouri probably doesn’t see a lot of patent cases.
Are there certain Districts that get overturned more than others at the Fed. Cir.?
“It would behoove a diligent applicant to identify particular third-party components by an unambiguous part number or product code or similar, rather than by a brand name.”
IANAE,
I with you on this one. What’s unclear from the case is whether Green Edge (the patentee) knew the Futura product code (“24009”, which may have been a product code adopted later by Futura). If all Green Edge knew was the “fictitious” VISICHROME that Futura provided them in the letter, it’s really “draconian” to call this a “best mode” violation. But if Greed Edge knew the product code for this colorant was “24009” at the time the application was filed, they may have survive the SJ motion, but not a trial on the merits.
So it seems particularly punitivie for the District Court to rule that the patent is invalid simply because the patentee’s apparently honest effort to go the “extra mile” by naming the particular product available from Futura was unsuccessful.
It does seem punitive and a little over the top. I can see that punitive measure being appropriate if the spec misdirected the reader away from the best mode (either by identifying the wrong product or making the right one harder to find), but that appears not to be the case here.
However, there is no intent element to 112. Either the information is in there or it’s not, and if it’s not you lose your patent. It would behoove a diligent applicant to identify particular third-party components by an unambiguous part number or product code or similar, rather than by a brand name.
I can’t help but wonder if the patent had simply specified that a suitable product or products are available from Futura Coatings, if that would not be enough to satisfy the requirement. I would think that it should be enough under practically any circumstances, as a all to Futura would surely ferret out the appropriate product or products. So it seems particularly punitivie for the District Court to rule that the patent is invalid simply because the patentee’s apparently honest effort to go the “extra mile” by naming the particular product available from Futura was unsuccessful.
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