At the biosimilars conference last week, everyone was puzzled about whether you could be liable for inducement if you had a good faith belief that a patent was invalid but the patent was valid. That seems to be the law, right now at least, pending Commil. (Dennis’s write up is here, along with a link to the CAFC decision.) I think Commil’s wrong for a lot of reasons, but…
Let’s have some fun on Saturday morning and combine it with Frolow (Dennis’s post here.) Suppose I mark a product as patented, but I’m wrong: although I in good faith marked it, it doesn’t meet the limitations of a claim. (Obviously, this could occur for various reasons, including manufacturing tolerances.)
So, now let’s say someone is sued for inducing manufacture of the product. If they’re wrong about infringement, under Frolow, the fact of marking, alone, is enough evidence to get to the jury on literal infringement. Under Commil, it seems that a mistaken belief in invalidity is also enough to get to the jury, on non-infringement.
So, you could end up with someone (a) in fact not infringing (b) a valid patent, but liable for infringing it because she mistakenly thought she was infringing it. You could also end up with someone (a) infringing by inducement (b) a valid patent, but not being liable for inducing infringement because she mistakenly thought the patent was invalid.
Stoller holds several patents directed to a winterizing golf course greens. In particular, Stoller’s approach is to roll-out a rubber blanket over the turf. His most recent patent application was rejected by the USPTO examiner — with the broadest claim being anticipated and the dependent claims obvious. That decision was then affirmed by the PTAB. Now, the Federal Circuit has largely affirmed — finding that the anticipation finding was erroneous but that the obviousness findings were correct. The result then is that on remand the examiner should now also reject the broadest claim as obvious.
The broadest claim requires a layer of polyurethane “laminated” to a fabric layer and the primary dispute on appeal is the broadest reasonable interpretation of laminated clause. The importance of the construction comes up because the prior art uses for the anticipation rejection fastens its layers together by with strings going through a series of grommets at the cover’s perimeter. The USPTO took the position that be broadest reasonable interpretation of a laminated structure would require only that the structure have multiple layers while Stoller argued that laminated requires a fusing or bonding.
The application itself provides no definition of the term but it does provide an example that requires using a molten polymer to bond the layers and repeatedly explains the durability benefits of the laminate approach. [I should note here that I’m hard-pressed to understand how the Court’s broadest reasonable construction is different or any broader than the seemingly more narrow construction that would be used post-issuance.]
On appeal, the Federal Circuit sided with the patent applicant – finding that even a broad dictionary definition of the laminate terms requires “uniting” layers in a way that goes beyond simply stacking them together.
Because the cited anticipation reference did not disclose laminated layers, the rejection was improper. On the other hand, a number of additional references taught laminating in its ‘properly’ construed form and those references were included in the obviousness rejections of the more narrow claims. As such, the court found those obviousness rejections proper.
Thus, we’re left with the odd situation that the broader claim is not rejected while the narrower claims are rejected. Addressing that situation, the Federal Circuit refused to take the logical step of finding the the broader claim obvious as well. Instead, the court simply remanded with – I assume – the expectation that the USPTO will make that determination for itself.
We do not turn a blind eye to the many references in this record that demonstrate that laminating two (or more) layers together was well-known in the art. The only rejection of claim 35 before us, however, is a § 102 rejection based only on Sibbet. That rejection is not supported in the record. Accordingly, we reverse the rejection of claim 35.
In NeuroRepair v. Nath Law Group (Fed. Cir. 2015), the Federal Circuit has dismissed NuroRepair’s malpractice case against its patent prosecution attorneys – holding that the Federal Courts lack subject matter jurisdiction because the case does not arise under the patent law. Citing Gunn v. Minton, 133 S. Ct. 1059 (2013). The basics of the case here appear to be that the client was upset with the defendants alleged (1) lack of communication; (2) ineffective pursuit of the patent application; and (3) failure to accurately record and bill time. However, the district court had sided with the attorneys – finding no malpractice.
Although patent attorneys are regulated by the USPTO’s Office of Enrollment and Discipline (OED), malpractice cases are generally based upon state law – here, the plaintiff alleged “professional negligence, breach of fiduciary duty, breach of written contract, breach of oral contract, breach of implied covenant of good faith and fair dealing, negligent misrepresentation, and false promise” – all of which are protected by California law rather than Federal Law. The lawsuit was originally filed in California State Court (Superior Court) but then removed by the defendants to Federal Court on the grounds that the case “related to patents.”
All of that occurred prior to the Supreme Court’s decision in Gunn v. Minton. And, as in the Gunn case, the plaintiff has appealed – asking that the entire case be set aside because of a lack of subject matter jurisdiction.
Federal Law provides for exclusive federal jurisdiction over patent cases – this means that state courts cannot decide patent infringement cases. However, there exists a large grey area of cases that arise under a state cause of action (such as breach of contract or legal malpractice) but that turn on an interpretation of either a patent or the Patent Act. Are those “patent cases?”
In Gunn v. Minton, the Supreme Court released most of this grey-area to state court jurisdiction — holding that a state law claim relating to patents creates arising under jurisdiction if it “necessarily raise[s] a stated federal [patent] issue, [2] actually disputed and [3] substantial, [4] which a federal forum may entertain without disturbing any Congressionally approved balance of federal and state judicial responsibilities.” Quoting Grable & Sons Metal Products, Inc. v. Darue Engineering & Mfg., 545 U. S. 308 (2005). The Court went on to note that malpractice cases will “rarely, if ever, arise under federal patent law” because their resolution will not substantially impact the patent laws.
The Nath case here was fairly easy to decide because the court found only one patent law issue necessary for decision — whether the patent could have issued earlier and with broader claims. As in Gunn, the appellate court here found that issue not of substantial importance to the patent system and that relegating cases such as this to Federal Court would “disrupt the federal-state balance.”
The case ends with an order to the district court to remand the case back to California state court where the plaintiff will get another shot at proving malpractice.
It has now been 24 months since the USPTO has been led by a Senate confirmed director and, for the past year Michelle Lee has been in the limbo position as being de facto head of the USPTO without actually being named director or acting director. In October 2014, President Obama finally nominated Lee to take over as Director of the USPTO and Undersecretary of Commerce. Although a first confirmation hearing was held in 2014, Senators agreed to delay a confirmation vote until after the Republicans took over this term.
Acting quickly, new Republican chair of the Senate Judiciary Committee Chuck Grassley has acted quickly to schedule a new hearing for January 21 (with Senator Cornyn scheduled to preside). Barring some unforeseen complications, I expect that Lee will be confirmed as director forthwith despite the new Republican control of the Senate. The hearing will also focus on Daniel Marti who has been nominated as the White House Intellectual Property Enforcement Coordinator — the so called IP Enforcement Czar. That role began with Victoria Espinel in 2009 and focuses primarily on international counterfeiting and copyright enforcement.
If you learn that your case is being examined and you have related ones in front of that examiner/art group, call him. They have incentives to get them done that way if they can. There’s also something called “first office action estimator” on the PTO site that you can use to guestimate.
If you’re pondering doing an RCE versus a CON, call the examiner because they may be able to give you timelines on each, suggesting which will get you a patent more quickly.
I’ll add to this as it goes on. Again, live-posting so excuse any typos.
They’re doing a lot of live and on-line examiner training to deal with AIA/FITF cases, since those will be popping up for examination “soon” (in patent-prosecution terms). They all say don’t check the “statement under 37 cfr 1.555 or 1.78” box on the application data sheet for a CON or DIV if a claim has an effective filing date after the AIA, because they’ll treat it as AIA forever until you fix it. “You are committing malpractice.” I’m not sure I understand their point – hard to read the slide and I don’t know this form. The more I think about what they said, the less sense it makes: if it does have a post-AIA claim then you have to check that box. See 2 paragraphs below.
The training materials are on the PTO web page.
There’s a lot of discussion about whether to file a preliminary amendment the day after a CON to avoid having an entire case become AIA if you added new matter after the ultimate parent and post-AIA to support a new claim. The SPEs seemed confused about this issue, so that may explain why my notes are not clear. This relates to that box – be careful about that box is the only clear lesson!
I now own a cool laminated card that shows what counts/doesn’t under the AIA. If you email me I’ll try to send a photo copy. Nice and in color! Shows the grace periods, etc for the 102 provisions. If many of you email I’ll put it up here.
Surprisingly, a few people actually are examining AIA/FITF cases (besides the Track 1 stuff).
In traversing rejections, they highly recommend to refer to the MPEP/guidance document (e.g., from the 101 guidelines). “Don’t rub their nose in it” but if, e.g., unexpected results exist point to the MPEP section that says “unexpected results means non-obviousness.” “Don’t paraphrase the MPEP” but instead quote it. The examiner will have more comfort — know you’re not shading/spinning.
Regarding new matter, don’t rely on the examples in the MPEP blindly but if you find one point the examiner to it so you can better cabin and identify the issues. If you are adding new language to claims, even though not required, point to where in the spec the support is, so they don’t waste time. This is also a good check for you to make sure you have support. But, don’t be too specific where you point to (for litigation/enforcement). Use general language or “for example, support can be found at…” This is especially useful to point out support if there’s one spot in a huge spec for the support. Some practitioners are using page/line to point out support to avoid the new matter rejection.
Regarding interviews, they’re helpful but be sure to ask that the SPE or primary be present. Often examiner and lawyer will be talking past each other and so having third party hear the problem. Interviews can be helpful even if don’t result in allowance it will cut down on the number of issues. Ask if the rejection can be overcome by X, Y, or Z. When you call to set up an interview, say “I want to compact prosecution.” Don’t show up in a suit and let them know ahead of time you’re not dressing up to make it more informal/negotiation. (That’s a smart one!). If you want to have discussion-purposes-only claims, that will not work: regs/procedures say everything written has to be part of the file. (Apparently some folks are doing this. Anything written/emailed should end up in the interview summary.) SPE said “ask for copies back.” Not sure I’d be comfortable with that since a reg says anything in writing must be part of the file. Thoughts?
In person interviews deemed to be marginally more helpful than phone interviews. (Interesting.)
Timing of interview: after first OA, before response. Not after response. Don’t put at end “if this doesn’t work call me.” The time to interview is before you write response, due to examiner incentives. But, some examiners want the response before responding to the OA.
They’re about to get to eligibility! The flow-chart (infamous) about if the claim “directed to” a law of nature, a natural phenomenon, or an abstract idea you have a 101 problem unless the claim adds “significantly more”.
As with patent law, willful copyright infringement also leads to enhanced damages. In Seagate (Fed. Cir. 2007), the en banc Federal Circuit drew an analogy to copyright doctrine in determining that willfulness in the patent context should also include reckless indifference. Truthfully though, copyright law was not as uniform in its approach as suggested by the panel decision.
In Olem Shoe Corp. v. Washington Shoe Corp. (11th Cir. 2015), the Eleventh Circuit goes the other way and relies on the Federal Circuit doctrine on willfulness to help it further refine the test for copyright. In a issue of first impression for the Atlanta-based Court of Appeals, affirmed that willfulness in copyright law also requires proof that the infringer acted “despite an objective high likelihood that the actions taken” constituted infringement and that the risk of infringement was known or should have been known by the infringer.
The district court had found infringement but no willfulness. (See comparisons above). On appeal, the panel affirmed — finding that the copyright holder presented no evidence “with regard to actual knowledge that Olem’s boots infringed Washington Shoe’s copyrights. That is, there is no evidence that Olem knew of Washington Shoe’s copyrights and chose to violate them.” The panel also found insufficient evidence to raise a genuine issue of material fact of reckless disregard.
In particular, Washington Shoe argued that its cease-and-desist letters should have created sufficient notice. However, that suggestion was rejected because the letters “did not include reference to copyright registration numbers or deposit copies. . . [and thus] provided nothing from which Olem could have determined that the claim was legitimate.” Washington Shoe also noted the similarity of the boots – including evidence that the boots are identical – as a clear signpost of infringement. However, the appellate panel also found that similarity to provide no basis for a willfulness finding. Finally, for willfulness, the panel refused to place any burden on the infringer to prove that it had an alternative design source.
* * * * *
A few interesting aspects of the case:
First, I should note that, although expounding upon new law, the panel determined that the decision was non-precedential. This is likely because two of the three panel members were sitting by designation (one from a district court and the other from the USCIT).
As part of its deliberative process, the district court requested insight from the register of copyrights regarding whether certain alleged inaccurate information regarding the copyright registration would have caused the register to deny registration. Such a request is permitted under 17 U.S.C. 411(b). This approach is wildly different from the patent law approach where there is essentially no communication between the patent office and the court of enforcement.
The copyright statute only particularly provides for enhanced willfulness damages if the copyright holder first chooses statutory damages (rather than proving actual damages).
I’m speaking shortly on ethics (inequitable conduct, mostly), but have been listening intently to the various speakers. Some big picture issues:
They all think that the 101 jurisprudence is unworkable and puts at risk entire industries. First, (by definition) pretty much everything involves natural phenomenon or a natural product. Second, it’s idiotic: if you discover (which, despite the Constitution and the definitions in the statute is not an “invention” according to the Supreme Court) a natural product, if it’s easy to make use of you can’t get a patent; if it’s really hard to use, then you can. (That is, if you can use (viewed post hoc, of course) conventional methods on the newly discovered natural product, you can’t get a patent, but if it takes a lot of new stuff beyond that, you can.)
They’re worried about the Akamai mess and divided infringement and its impact on method claims in this field.
People should obtain opinions of counsel due to the “you believe it’s invalid” aspect of inducement.
More on that point: suppose I know I induce infringement of a patent. But, I reasonably believe it’s invalid. But it turns out the CAFC, PTO, etc. say it’s valid. Does it matter for pre- CAFC conduct versus post-CAFC? What if I have art that the CAFC/PTO didn’t consider? Commil is wrong, imho.
Three upcoming conferences that may be of interest to readers:
This Friday and Saturday, January 16 and 17, the University of San Diego School of Law’s Center for Intellectual Property Law & Markets is holding its 5th Annual Patent Law Conference. This year’s topic is “Patent Invalidity after the America Invents Act.” Speakers include Judges Bencivengo, Bartick & Chen. I attended last year as part of PatCon and thought it was a great event. More details here: http://www.sandiego.edu/law/centers/ciplm/detail.php?_focus=49377#overview
Hal Wegner’s 3rd Annual Naples Patent Law Experts Conference will be held February 9 and 10. This beachfront Conference in Naples, Florida, will involve an interactive discussion by more than thirty faculty members. Topics to be covered include recent and pending Supreme Court patent law decisions, potential legislative activity, issues of international law, and more. Further information from the sponsoring organization, the University of Akron, is available here: http://www.uakron.edu/law/ip/naples-midwinter.dot
On March 5-6, Don Chisum and Janice Mueller will conduct a two-day patent roundtable seminar. The program is limited to a total of ten participants to maximize opportunities for interactive discussion and debate. All sessions are led by treatise authors and educators Don Chisum and Janice Mueller. Coverage focuses on recent significant patent decisions of the Federal Circuit and U.S. Supreme Court. Topics currently planned for discussion include:
The Supreme Court’s Alice Corp. decision on patent-eligible subject matter and subsequent Federal Circuit decisions applying Alice;
The Supreme Court’s grant of certiorari in Commil USA concerning the intent requirement for inducing infringement;
The Supreme Court’s grant of certiorari in Kimble v. Marvel concerning the propriety of post-patent expiration royalties;
The Supreme Court’s pending decision in Teva v. Sandoz on review of patent claim construction;
The Federal Circuit’s grant of en banc review in SCA Hygiene to determine whether the Supreme Court’s Petrella decision changed the law of laches as a defense to patent infringement;
Patent Practice Gone Wrong: Lessons from Patent Malpractice, Exceptional Case and Rule 11 Sanctions, and Inequitable Conduct Cases;
Patent Claim Construction and Definiteness in the Wake of Nautilus (and Anticipating Teva); and
Inter Partes Review: Two-Year Snapshot and Lessons from Case Studies.
Two pending Supreme Court now have higher profiles with the Supreme Court’s invitation to the Solicitor General to provide views of the administration. In both cases, the petitioners have set-up the Federal Circuit as a misguided court.
The focus of Google v. Oracle (Sct. Docket No. 14-410) is the extent that software is eligible for copyright protection. The petition asks:
Whether copyright protection extends to all elements of an original work of computer software, including a system or method of operation, that an author could have written in more than one way.
Unlike patent law, the copyright eligibility statute includes a set of express exclusions. In particular, although “original works of authorship” are generally eligible for copyright protection, “[i]n no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b). In its decision the Federal Circuit found Oracle’s Java API taxonomy copyrightable as a whole. In particular, the appellate panel led by Judge O’Malley rejected the idea/expression merger doctrine since there are many other ways that functionally equivalent method-calls could have been constructed besides those found in Java. “Merger cannot bar copyright protection for any lines of declaring source code unless Sun/Oracle had only one way, or a limited number of ways, to write them.” [Read my prior discussion here and here]
The second case – also involving Google – is Google v. Vederi (Sct. Docket No. 14-448). In that case, the Google raises the following question:
Whether, when an applicant for a patent amends a claim to overcome the PTOs earlier disallowance of the claim, a court should (i) presume that the amendment narrowed the claim and strictly construe the amended claim language against the applicant, as this Court has held; or (ii) presume that the claim scope remained the same and require that any narrowing be clear and unmistakable, as the Federal Circuit has held.
Although the first part of the question is interesting, the second part appears quite misguided as Federal Circuit law does not presume that claims maintain the identical scope following an amendment to overcome a rejection by the PTO. That said, the Federal Circuit has strayed significantly from Pre-1952 disclaimer law exemplified by cases such as Supply Co. v. Ace Patents Corp., 315 U.S. 126, 137 (1942); Keystone Driller Co. v. Nw. Eng’g Corp., 294 U.S. 42, 48 (1935); Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 789–90 (1931); I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443–44 (1926); and Hubbell v. United States, 179 U.S. 77, 84 (1900).
Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc. (Fed. Cir. 2015) 14-1114.Opinion.1-7-2015.1 Panel: Prost (author), Hughes (concurring), Newman (dissenting)
Professor Tom Cotter has an excellent write-up of this opinion over on his blog, Comparative Patent Remedies. The main issue involves willful infringement: applying the de novo standard of review to the objective prong of the willfulness inquiry, as per Seagate and the earlier Bard decision, the majority affirmed the district court’s conclusion that Bard willfully infringed because its noninfringement defense is not “susceptible to a reasonable conclusion of no infringement. ” Judge Hughes wrote separately to reiterate his “belief that the full court should review our willfulness jurisprudence in light of the Supreme Court’s recent decisions” in Highmark and Octane Fitness. Judge Newman dissented; in her view, the majority failed to apply the de novo standard of review required by Seagate; applying that standard, the district court erred. Judge Newman also questioned the imposition of double damages.
Judge Hughes’ concurrence, like Judge O’Malley’s concurrence in Halo v. Pulselast fall, suggests that the Federal Circuit remains divided on the appropriate legal standard for willful infringement post-Highmark and Octane Fitness. Panels remain bound by the de novo standard set out in Seagate, but Judges Hughes and O’Malley strongly believe that the court should reconsider that precedent. It may be only a matter of time before the Federal Circuit either addresses this divide en banc or the Supreme Court grants cert. It’s also possible that the Court will provide some guidance on the issue in Commil v. Cisco; we’ll know later this year.
Guest Post by Peter Arrowsmith. Arrowsmith is a patent attorney and partner at the London based firm Cleveland IP.
Non practicing entities (NPEs) are a familiar part of the IP landscape in Europe, just as they are in the US. However, NPE activity has historically been lower in Europe. This article analyses the present situation in Europe compared to the US. In addition, we analyse how NPE activity might develop in Europe with the anticipated arrival of the Unified Patents Court (UPC).
Factors that encourage NPE activity
There are various factors in a patent system that might influence or encourage activity by a NPE. A non-exhaustive list of possible factors is outlined below, and Europe is compared against the US.
1. Low cost risk in litigation
A NPE is likely to be encouraged to litigate if they can initiate infringement proceedings without incurring a significant cost risk. In the US this is often possible because the losing side does not typically pay the winner’s legal costs. Additionally, NPEs can often find a law firm willing to take the case on a conditional fee basis. In Europe, by contrast, the losing side is typically required to pay at least a portion of the winner’s legal costs. Conditional fee arrangements are also less common.
Verdict: US more favourable to NPEs
2. High costs in litigation for the other side
A NPE is likely to benefit in a system where the opposing side will incur high costs in defending themselves. In such a system the pressure to settle will be significant, simply to avoid the costs involved in litigation. In Europe the cost of multi-jurisdictional litigation is likely to be high, but not necessarily higher than the costs involved in US litigation.
Verdict: Dead heat
3. Uncertainty
A NPE is likely to benefit in a patent system where the outcome of a case is difficult to predict, especially if this is coupled with high costs in litigation. This is likely to encourage a NPE to bring more cases on the basis that they are statistically likely to register some wins. In turn, this will increase pressure to settle before trial. Europe may be considered more predictable than the US in this comparison, simply because decisions are made by experienced patent judges, rather than lay juries.
Verdict: US more favourable to NPEs
4. Size of Market
A NPE is likely to benefit if their patent has a wide geographical scope in an important market because a single adverse decision could have a large economic impact on the other side. In the US a single decision can be effective across the entire country, whereas in Europe it is necessary to enforce patents country-by-country.
Verdict: US more favourable to NPEs
5. Bifurcation
A system in which the issues of infringement and validity are considered separately is also likely to favour a NPE. In such a system the NPE can obtain a favourable decision on infringement before validity is even considered. This may increase pressure on the other side to settle following an initial decision, even in cases where the validity of the patent is questionable. Europe may be more attractive to NPEs in this comparison since certain countries (notably Germany) permit bifurcation.
Verdict: Europe more favourable to NPEs
6. Speed
A fast system can allow a NPE to exert pressure on the other side, which can encourage early settlement. These systems are likely to favour NPEs. In this comparison there is little to choose between Europe and the US, since fast or slow decisions are possible in both systems, depending on the forum chosen to commence proceedings.
Verdict: Dead heat
Overall this analysis suggests that the US patent system is more attractive than Europe for NPEs, which is consistent with the reality that we see. The European system is, however, still viable for NPEs, although they may need to be more selective about the cases and targets they pursue.
The Unified Patents Court – a new opportunity for NPEs
NPEs have registered a number of recent successes in European Courts (see, for instance, Vringo vs. ZTE in the UK), demonstrating that the European patent system can support this business model. All of the factors above would need to be considered by a NPE to decide whether litigation would be worthwhile in each case.
Of course, the patent system in Europe is on the verge of significant change, and the Unified Patents Court (UPC) is close to becoming a reality. The introduction of this Court will significantly alter the litigation landscape, meaning that a change in NPE activity can be expected.
In the current European system only national courts of individual countries are competent to decide on the infringement of European patents. Once it is established, the UPC will be competent to decide on validity and infringement of patents across the cooperating states, which covers most of Europe. A significant motivation in the development of this Court has been the desire to increase simplicity and decrease the cost of pan-Europe patent litigation. If successful, the new Court is likely to have many advantages for conventional business. However, a side effect is that the new Court may increase the attractiveness of Europe from the perspective of a NPE.
In particular, the UPC would appear to present a number of potential advantages from the perspective of a NPE.
1. Size of Market
The UPC will issue decisions that are effective across most of the European continent. Thus, the economic impact of individual decisions is likely to be high for the losing party – much higher than in the present system.
2. Bifurcation
The UPC is likely to permit bifurcation in certain instances. This is likely to favour NPEs, since they may be able to obtain a favourable decision on infringement before validity is considered. This is likely to increase the pressure to settle, even in situations where a patent has questionable validity.
3. Uncertainty
There is currently a great deal of uncertainty about how the new Court will operate, especially in the early days, in the absence of a body of case law. This initial uncertainty is likely to favour NPEs, since it will be harder to predict how a case will be decided, increasing the pressure to settle before trial.
Once the UPC is established there will be a period during which patent owners can ‘opt out’ of the exclusive jurisdiction of the Court. During the early years, this will allow patent owners to continue to use national courts, while there is uncertainty over how the UPC will operate. Many European practitioners anticipate that conventional applicants are likely to exercise this opt out, provided the fee for doing so is not exorbitant. For a NPE there are likely to be more advantages in the UPC than the current system, meaning that few are likely to opt out of the Court’s jurisdiction. This means that a significant number of early cases in the UPC may involve NPEs.
I have an article about to come out (I bet it’s in your mailbox) about whether or not Section 285 permits courts to award fees directly against lawyers.
Turns out it’s an open question with good arguments on both sides.
Sony just argued that an award against Dorsey & Whitney and its client, a losing patentee, should be affirmed. The oral argument in Sony v. Biax is here. A story (I hope not behind a paywall) is here.
Stay tuned. I’ll let y’all know when my article is available, and I’ll post it here once it is in fact in print (I’m obligated to let the ABA go first).
The general rule is that a lawyer can’t be adverse to a current client; but, mere economic adversity is not enough. What if I’m seeking to enjoin party A, who sells products to one of my clients, and so any injunction may cause economic harm to my client?
This is a potentially very dangerous opinion for patent firms. Jones, Day was representing Apple when it entered an appearance in a case where the defendant had been preliminarily enjoined from making certain batteries. Apple used those batteries.
Apple moved to intervene in the Federal Circuit to disqualify Jones, Day from representing the battery maker on appeal. The motions panel (Dyk-auth; Newman Hughes) granted the motion to disqualify, though in a non-prec opinion.
Jones, Day stated it would not be adverse to Apple in any direct negotiations for licensing, etc. Nonetheless the panel disqualified the firm. The key passage:
[T]he burden placed on the attorney- client relationship here extends well beyond the sort of unrelated representation of competing enterprises allowed under Rule 1.7(a). Apple faces not only the possibility of finding a new battery supplier, but also additional targeting by Celgard in an attempt to use the injunction issue as leverage in negotiating a business relationship. Thus, in every relevant sense, Jones Day’s representation of Celgard is adverse to Apple’s interests. This conclusion is not altered by the fact that Apple is not named as a defendant in this action. The rules and cases such as Freedom Wireless interpreting them make clear it is the total context, and not whether a party is named in a lawsuit, that controls whether the adversity is sufficient to warrant disqualification. 2006 WL at *2; see also Arrowpac Inc. v. Sea Star Line, LLC, Nos. 3:12-cv- 1180-J-32JBT et al., 2013 WL 5460027 at *10 (M.D. Fla. Apr. 30, 2013) (interpreting same rule as encompassing “any representation directly adverse to the interests of a current client.”). Celgard contends that despite the conflict we should not grant disqualification because of the prejudice involved in impinging on Celgard’s right to choose their counsel and secure new counsel. Celgard further suggests that if Rule 1.7(a) were to cover conflicting representations merely because the client is up or down the supply chain then “lawyers and clients would have no reliable way of determining whether conflicts of interest exist in deciding whether to commence engagements.” Opposition at 13, Celgard, LLC v. LG Chem, Ltd., Appeal Nos. 2014- 1675 et al. (Oct. 14, 2014).
That, however, is not our holding. Nor is it the facts of this case. As evidenced by Jones Day’s attempts to limit the nature of the representation, Jones Day and Celgard clearly knew the potential for conflict here yet elected to continue with the representation. See id. at 4 (“Jones Day explained that it could represent Celgard against LG Chem, but not against customers of LG Chem who were also Jones Day clients—such as Apple.”). Thus, the legal costs and delay in proceedings that may result from a disqualification are attributable in no small way to Celgard and Jones Day themselves.
The case is not on-line but I’ve posted it, I hope, here.
So… watch out for injunctive relief that might affect current clients! Good luck running conflicts checks on this one (though seemingly Jones Day knew of the ‘conflict’ before it appeared, in this case). By the way, there is another case, in the ITC, involving Google where the ITC came to a somewhat different conclusion, though under more attenuated facts.
Promega Corp. v. Life Tech. Corp. (Fed. Cir. 2014) Download Promega v. Life Tech Panel: Prost (dissenting-in-part), Mayer, Chen (author)
Before the holidays, I wrote about the enablement issue in this case. Today I’ll talk about the inducement issue, which involves two significant—and probably erroneous—doctrinal developments. I say “probably erroneous” because in my view at least one, if not both, would likely be reversed by the Supreme Court were it to grant cert.
The short version is that the majority held that in 35 U.S.C. § 271(f)(1), “induce” means “specific intent to cause” and “a substantial portion of the components” includes “a single important or essential component.” The consequence of the former is that one can induce oneself; the consequence of the latter is that merely supplying a single “main” or “major” component of the claimed invention is sufficient for purposes to 271(f)(1). Judge Prost dissented as to “induce” and would not have reached the “substantial portion” issue.
The patent claim: The asserted claim, claim 42 of patent No. RE 37,984, is directed to “[a] kit for analyzing polymorphism in at least one locus in a DNA sample.” The claim limitations involve vessels containing a variety of materials: a mixture of primers, a “polymerizing enzyme suitable for performing a primer-directed polymerase chain reaction,” adenosine, guanine, cytosine and thymidine, a buffer solution, and template DNA.
LifeTech’s activities: LifeTech manufactured Taq polymerase in the United States and shipped it to its facility in the U.K. where it was combined with foreign-manufactured components to produce kits containing all the claimed elements. While some of the kits were sold in the United States, the main issue on appeal involved kits that never entered the United States. Taq is indisputably “a polymerizing enzyme suitable for performing a primer-directed polymerase chain reaction.”
Procedural History: At trial, the jury was instructed to consider liability for all “United States sales,” which included “all kits made, used, offered for sale, sold within the United States or imported in the United States as well as kits made outside the United States where a substantial portion of the components are supplied from the United States.” Id. at 11 (emphasis added). LifeTech preserved its challenge to the italicized language. The jury returned a verdict finding that “all of LifeTech’s worldwide sales were attributable to infringing acts in the United States.” Id. The district court subsequently granted JMOL in LifeTech’s favor.
On appeal, Promega challenged the court’s grant of JMOL as to both sales infringing under 271(a) and under 271(f)(1). The Federal Circuit focused primarily on the 271(f)(1) issue. 35 U.S.C. § 271(f)(1) states:
Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
(emphasis added). LifeTech raised two legal grounds for affirming the district court’s grant of JMOL. First, it argued that 271(f)(1) requires inducement of another; one cannot induce oneself. Thus, it could not be liable under 271(f)(1) for exporting the Taq polymerase to itself to combine with the other components. Second, it argued that 271(f)(1) requires that a “substantial portion” of the components be exported; “one” component is not a “substantial portion” of the components.
For 271(f)(1), one can induce oneself: The majority first rejected LifeTech’s argument that 271(f)(1) should be interpreted as requiring another person to be induced. Rather, it means “merely the specific intent to cause the combination of the components of a patented invention outside the United States.” Slip Op. at 23. In reaching this conclusion, it first looked to the dictionary definition of “induce,” observing that it means “to bring about, to cause.” Id. From this, it concluded that “[t]he object of the transitive verb ‘induce’ can either be a person or a thing, such as an activity or result.” Id. Here, it is the activity that is being “induce[d]”: “The statute is written such that an activity—”the combination”—is the object of “induce,” not a person.” Id. Thus, no third party is necessary. Furthermore, “[h]ad Congress wanted to limit “induce” to actions contemplated by two separate parties, it could easily have done so by assigning liability only where one party actively induced another “to combine the [p]atented components.” Id. To bolster its conclusion, the majority drew upon its reading of the legislative history and what it divined as Congress’s intent in passing the statute. The result is to effectively turn the word “induce” into word “cause.”
The majority’s pseudo-textualist analysis: I’m thoroughly unconvinced by the majority’s analysis. Setting aside the majority’s reading of the legislative history, which Judge Prost criticizes in her dissent, its textual analysis is deeply flawed. Proper textualism involves the consideration of the ordinary meaning of words, evaluated in context, and an application of the canons of statutory construction. But just as in patent law, “ordinary meaning” doesn’t just mean “ordinary meaning.” Rather, terms with a legal meaning (such as “person”) are given their ordinary legal meaning. The problem with the majority’s analysis begins with its reliance on a general-purpose dictionary for a term that has a well-established legal meaning and goes downhill from there.
While “induce” might mean “to bring about, to cause” in the general-usage context, in the legal context—and particularly the patent law context—its meaning invariably involves a relationship between two separate persons. I am not aware of any instances (but would be interested to learn of them) where courts have interpreted “induce” as encompassing one’s own performance of the proscribed acts. This is especially true with respect to 271(b), where both the Federal Circuit and the Supreme Court have written extensively about the requirements for the relationship to rise to the level of inducement. One would not “induce” infringement of a patent by using a machine to carry out a claimed process; one would be liable for direct infringement. To treat the word as if it were necessary to start from first principles, looking it up in a general purpose dictionary, is to ignore all of this well-established legal meaning.
As part of my background reading for this post, I took a look at Bryan Garner’s Black’s Law Dictionary. Here’s his entry for “inducement” (there is no separate entry for “induce”), defining it as “The act or process of enticing or persuading another person to take a certain course of action”:
Congress did not have the benefit of Professor Garner’s text in 1984, when it passed 274(f); this definition comes from the 1999 version of Black’s.* But my sense is that Garner’s definition is a lot closer to the legal meaning of “actively inducement” than “http://www.merriam-webster.com/dictionary/induce.” Slip Op. at 23. And to the extent it is descriptive of the legal meaning, it unquestionably supports the interpretation as involving another person.
Edit to add a legal citation: “It is, however, well established that “[w]here Congress uses terms that have accumulated settled meaning under… the common law, a court must infer, unless the statute otherwise dictates, that Congress means to incorporate the established meaning of these terms.” CCNV v. Reid, 490 U.S. 730 (1989) (quoting NLRB v. Amax Coal Co., 453 U.S. 322, 329 (1981)).
“Congress knows how to say…”: In addition to its dictionary definition, the majority also observed that Congress could easily have included the word “another” in the statute. The main problem with this interpretative principle is that it only applies when it’s clear that Congress actually does know how to say something. Typically, the principle is invoked in the context of a parallel statute in which Congress actually said it. See, e.g., Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111, 2118 (2014) (“As this provision illustrates, when Congress wishes to impose liability for inducing activity that does not itself constitute direct infringement, it knows precisely how to do so.”) (emphasis added). Here, however, there is no such contrasting statute that contains that “something;” worse, the closest parallel—Section 271(b)—does not contain the word “another.” Rather, it says simply “Whoever actively induces infringement of a patent shall be liable as an infringer.”
Edit to add a citation: “Ordinarily, ‘Congress’ silence is just that—silence.” CCNV v. Reid (quoting Alaska Airlines, Inc. v. Brock, 480 U.C. 678, 686 (1987)).
Judge Prost’s Dissent: Judge Prost’s dissent identifies another problem with the majority’s interpretation: that interpretation is foreclosed by precedent. “[W]e have never before held—in the context of either § 271(f) or § 271(b)—that a party can induce itself to infringe. And for good reason: this conclusion runs counter to unambiguous Supreme Court precedent.” Dissent at 2.
Twice the Supreme Court has held that inducement liability requires a third party. In interpreting the phrase “induces infringement” in § 271(b), the Supreme Court wrote that it requires “that the inducer lead another” or “persuade another.” Global-Tech Appliances, Inc. v. SEB SA, 131 S. Ct. 2060, 2065 (2011) (emphases added). Additionally, in Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., a case in the analogous copyright context, the Supreme Court stated that inducement is defined as “entic[ing] or persuad[ing] another” to infringe. 545 U.S. 913, 935 (2005) (emphasis added). The majority cannot point to a single case—from the Supreme Court or otherwise—that supports its contrary interpretation of inducement.
Id. at 2-3.
Judge Prost might go too far in arguing that the majority’s interpretation is foreclosed by precedent (As the majority points out, none of these cases directly confronted the question of whether one can “induce” oneself), but her underlying point is sound: these cases demonstrated that the meaning of “induce” is already well-established as requiring another person.
Multinational companies must be careful: As long as the accused party meets the “supplies…a substantial portion of the components” requirement, it will be liable for its own foreign combination of those elements.** This has particular importance for multinational companies that engage in distributed manufacturing. As a policy matter, the court’s decision pushes those companies towards one of two alternatives: purchasing their components from another (possibly US) supplier or simply making the components abroad. Perhaps the lack of liability in this situation was an oversight in the statute, a statutory loophole. But if so, the appropriate response would be—as was the case following Deepsouth—legislative action. (I’m not convinced that it’s necessarily a loophole, but need to think further on that point.)
Every “essential” component is a “substantial portion of the components.” The majority also interpreted the requirement that “all or a substantial portion of the components of a patented invention” be supplied, concluding that “substantial portion of the components” includes “a single important or essential component.” Slip Op. at 27. Here, that component was the Taq polymerase, a widely-used enzyme for polymerase chain reaction. The court concluded that supplying Taq was enough based on the following evidence: “Without Taq polymerase, the genetic testing kit recited in the Tautz patent would be inoperable because no PCR could occur. LifeTech’s own witness admitted that the Taq polymerase is one of the “main” and “major components of the accused kits.” Id. at 32. As the Taq example demonstrates, under the court’s interpretation any component of a patented invention is an essential component. If one removes Taq, the kit won’t work; if one removes the primers, the kit won’t work; if one removes the nucelotide bases, the kit won’t work. This has the potential to greatly expand liability under 271(f)(1).
Rendering 271(f)(2) superfluous: In my view, the majority’s textual analysis of “substantial portion” suffers from similar flaws as its analysis of “induce.” The deepest, however, is that by reading “substantial portion” as it does, the majority renders 271(f)(2) superfluous. That section states:
(2)Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.
.
Under the majority’s interpretation of “substantial portion,” 271(f)(1) reads:
.
“Whoever without authority supplies or causes to be supplied in or from the United States an important or essential component of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.”
.
The only differences between the two are that (f)(2) is limited to components that are “especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use;” a knowledge of infringement requirement in (f)(2); and the “intending that such component will be combined” language of (f)(2) versus the “in such manner as to actively induce the combination” language of (f)(1). The first two differences make (f)(2)’s scope narrower than that of (f)(1), and the third does not constitute a meaningful difference under the majority’s interpretation of “actively induces.”*** The result is that, under the majority’s interpretation, I can’t envision any conduct that would fall within (f)(2) that would not also fall within (f)(1).
—
*The older definition of “induce” from Black’s doesn’t provide much interpretative help in my view. See Black’s Law Dictionary, Fourth Edition (West 1951) (defining “induce” as “to bring on or about, to affect, cause, to influence to an act or course of conduct, lead by persuasion or reasoning, incite by motives, prevail on”) (this definition was carried forward through at least the 1990 version). Part of my ambivalence is that without looking at the source of the definition, it’s not clear that another party isn’t required. And once you look at the source of the definition, it’s apparent that the case wasn’t talking about the legal meaning of “induce” but it’s general purpose meaning. See State v. Stratford, 55 Idaho 65 (Idaho 1934).
**Nor does the argument that the majority’s interpretation still imposes an “intent” requirement change the analysis. The majority concludes that “actively induce the combination” means “merely the specific intent to cause the combination of the components of a patented invention outside the United States.” Slip Op. at 23. This is nothing more than a volitional conduct requirement: a person that combines the elements will necessarily have the “specific intent to cause the combination” except in very rare, very unusual circumstances. And the jury instruction discussed above did not mention any requirement of intent.
***If “actively induce” were interpreted as requiring the participation of a third party, then there might be a difference between the two in that a reasonable reading of 271(f)(2) is that it covers one’s own combination of the components.
Side note: This appeal is one of the two that were at the heart of In reReines; Ed Reines represents LifeTech.In the other appeal, the district court’s judgment in favor of Promega was summarily affirmed in March.
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Guest Post by Peter Arrowsmith. Arrowsmith is a patent attorney and partner at the London based firm Cleveland IP
In a recent judgment from the High Court in England & Wales, a Vringo patent was found valid and infringed by ZTE, the Chinese telecommunications giant. This case involved an interesting combination of parties: Vringo, an alleged patent troll, against ZTE, a leading Chinese innovator. The case is also of interest because the relevant patent was deemed essential to the 3GPPP telecommunications standard, which means that hardware produced according to the standard would inevitably infringe the patent.
Vringo is a US company headquartered in New York City. Its website says the following about its activities:
Vringo, Inc. is engaged in the innovation, development and monetization of intellectual property and mobile technologies. Vringo’s intellectual property portfolio consists of over 500 patents and patent applications covering telecom infrastructure, internet search, and mobile technologies. The patents and patent applications have been developed internally, and acquired from third parties.
In this case the relevant patent was filed by Nokia, and acquired by Vringo after grant.
Vringo’s website has details of various patent enforcement activities around the world against companies such as ZTE, ASUS, Google and AOL. Despite their global activities and sizeable patent portfolio, Vringo employ only 27 people, and do not produce any physical products. As such, Vringo could reasonably be called a non-practicing entity (NPE), or even a patent troll, if one wanted to be pejorative.
The judgment dealt with Vringo’s business model directly, as follows:
Although they never say so bluntly, ZTE contend that Vringo are ‘patent trolls’. They contend that Vringo have conducted themselves in various inappropriate ways around the world against ZTE. However ZTE have not alleged or pleaded that any of this conduct amounts to a defence relevant to the issues I have to decide at this trial. For example, no defence in competition law is relied on. Vringo do not accept that ZTE’s allegations are correct. Whether ZTE are right or wrong about this is irrelevant and I will ignore these allegations.
Thus, the case was correctly decided without reference to Vringo’s business model. This seems just, especially given the difficulty in agreeing upon a definition of a NPE or patent troll.
ZTE is a Chinese telecommunications company with around 70,000 employees. They have grown into one of the largest telecommunications companies in the world, and are also very active users of intellectual property. In fact, ZTE filed more PCT applications than any other company in the world in 2011 and 2012.
It is not straightforward to identify the bad guys and good guys in patent litigation. In general, this is simply a matter of perspective. However, Chinese companies are often cast in the role of bad guys, due to a reputation of disregard for IP rights. Meanwhile, US companies are often cast as the good guys, as they pioneer new technologies for the benefit of humanity. In this case it is clear that the stereotypic labels do not apply. Indeed, it is an indication of evolution in the IP landscape to see a Chinese innovator being sued by a Manhattan company, which did not contribute to the patented technology but acquired it from overseas.
The technology in this case relates to the handover of mobile phone calls from one cell to another. In particular, it relates to a ‘soft’ handover between cells.
The invention was developed by Nokia during a rapid period of development in 1999. At this time Nokia were involved in the process for establishing the 3GPP standard and met regularly with contributors from the other leading telecommunications companies of the day. The patent is relevant to one specific working group, which was involved in issues relating to the handover of calls. The working group, WG3, produced various memoranda and papers regarding the progress of their work. These papers formed part of the prior art, against which the validity of the patent was assessed.
Nokia developed the invention while discussions regarding the standard were ongoing, and they filed a patent application. The invention was subsequently disclosed to the working group, and was eventually adopted as part of the finalised standard. As a consequence, equipment produced in accordance with the standard would inevitably infringe the patent. The key question in this case was therefore whether the patent is valid over the papers produced by the working group before the date of filing.
In this case the judge was not persuaded by ZTE’s case that the invention was obvious. Therefore, the patent was found to be valid and infringed by ZTE.
This decision is also the first of a series of patent trials scheduled to be heard in the UK between these parties in the next year or so. It will be fascinating to follow this intriguing battle in the coming months.
The most impactful patent decision in 2014 looks to be Alice Corp. In that case, the Supreme Court outlined its jurisprudential steps for determining whether a claimed innovation is patent eligible. In the process, the court narrowed the scope of eligibility (implicitly invalidating many issued patents) and also seemingly unified the approach to eligibility across the potential subject matter. Alice Corp. applies equally to USPTO administrative procedures as well as to patent challenges in federal courts.
Gaps in the Process: Although the court created a framework for decisionmaking, it also left a number of important gaps that make it quite difficult for a bureaucrat patent examiner to follow the steps without substantial creative legal thinking.
To help fill this whole, in mid-December the USPTO released its 2014 Interim Guidance on Patent Subject Matter Eligibility. The guidelines where released in “interim-but-final” form and I expect that some amendments to those will come in 2015 in response to both advances in case law as well as commentary from interested parties. To that end, the USPTO has requested feedback by March 15, 2015 sent to 2014_interim_guidance@uspto.gov.
FORUM: The Office is also holding an public forum on the guidlines at the USPTO main campus in Alexandria on Jan 21, 2015. Anyone wanting to attend and/or present at the event needs to contact the USPTO (at the same email address above) by Friday January 9, 2015. More info here. According to the release, “only those with an accepted attendance request will be permitted to attend.”
The forum will provide an opportunity to provide specific examples of how the USPTO should be drawing the line between eligible and ineligible subject matter.
Last week, in writing about the Federal Circuit’s grant of en banc review in SCA Hygiene Products v. First Quality Baby Products, I observed that the order was not yet available on the court’s website. Upon checking again this morning, I noted that it continues to be unavailable.
As a general matter, I tend to favor the existence of the Federal Circuit and believe that the judges who sit on that court are largely just folks who are trying to do the best they can in deciding very challenging cases. I don’t always agree with the judges’ reasoning, but I appreciate the difficulty of what they are called upon to do (as well as how much easier it is to criticize an analysis than it is to assemble an analysis).
Where I tend to be most disappointed is with those aspects of the court that do not operate at this high level; or even at a “pretty good” level. In particular, I am routinely unimpressed with the lack of public transparency when it comes to information about the court’s decisions. One example is the court’s statistics page, which contains data that can be difficult to interpret because no methodology is provided. Worse, the variety of statistics that the court has publicly released has shrunk over the years. The court used to provide data on the dispositions of patent infringement cases, for example; that data is no longer provided by the court.
Much greater than problems with the court’s statistical data, however, is the lack of transparency in connection with the court’s decisions themselves. This is not to say that there is no information: the court deserves credit for deciding, several years ago, to post its opinions on the Federal Circuit webpage. These opinions are published at http://www.cafc.uscourts.gov/opinions-orders/ throughout the day. Since around the middle of 2007, the material released at this location has included summary affirmances under Rule 36, and for the past few years “selected” orders have been published there as well.
Unfortunately, no criteria for which orders are “selected” for publication on the website are provided, and extremely significant and important orders are sometimes not released there. For example, even though the Federal Circuit’s announcements page contains an announcement about the grant of en banc review in SCA Hygiene and an invitation for amicus participation, the order itself (which contains the questions presented) is not available on the court’s website. Instead, users are directed to download the order from PACER, a registration-required, fee-based system that is routinely criticized on access to justice grounds. Surely, such an important order would be easily available to the interested public. It is not.
In addition, as Hal Wegner recently pointed out in his email newsletter, the court’s public revelation of its decisions via PACER creates a second, possibly more significant, issue: those folks who do have PACER access will know about the court’s decisions before those who merely follow its public website. This is because the decisions can appear on PACER up to two hours before they appear on the Federal Circuit’s website. The result is that those who follow that particular docket on PACER will gain first knowledge about the outcome of the case, something that may have significant financial implications.
There are some actions that followers of the Federal Circuit can take if they want to stay on the cutting edge of the court’s dispositions. First, the court has an RSS feed through which it announces releases of opinions on PACER. You can subscribe to the RSS feed here: http://www.cafc.uscourts.gov/rss-opinions.php (thanks to Hal Wegner for the tip!). I’m told, but haven’t yet confirmed, that this feed updates at the same time that an opinion is released on PACER. Second, if you have access to a document monitoring service, such as BNA, you can set it to alert you when individual dockets are updated. Again, I haven’t yet confirmed how “real time” the alert is. Both approaches have drawbacks, but they do provide partial solutions.
But the bigger problem remains: the challenge of gaining access to all of the court’s theoretically “public” decisions. PACER is not like, say, the USPTO‘s trademark search system, which a model of transparency and ease of use. Instead, it is the electronic equivalent of the warehouse at the end of Indiana Jones and the Raiders of the Lost Ark, with the addition of a fee to open each box. And the court’s recent elimination of the “daily disposition sheet” has only made it more difficult to even know what’s kept in that warehouse.
With all the technological and political issues surrounding PACER, figuring out how to open up all the court’s judicial decisions to greater public access is, perhaps, not an easy problem to solve. But given the court’s ability to address complex issues of fact and law in its decisions, it’s rather disappointing that it hasn’t applied that same ability to releasing those decisions in a more transparent way.
One possible start might be to ensure that court opinions and orders are released simultaneously on the court’s website and PACER. Another would be to post all the court’s orders on the website, not just those that are “selected.” And a third would be to create an electronic, publicly-available historic set of all the court’s decisions, not just the incomplete set that is currently provided. All three would would go a substantial way to ensuring greater judicial transparency and to avoid any more embarrassing lapses like the SCA Hygiene snafu.
By the way – if you are looking for that particular order, you can download it here: SCA Hygiene en banc order
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Edit to add a reference to the elimination of the daily disposition sheet after the comment from Pilgrim. Some additional minor edits for clarification.
In Teashot v. Green Mountain Coffee, the Federal Circuit has affirmed the lower court determination that tea-filled K-Cups do not infringe T-Shot’s Patent No. 5,895,672.
K-Cups originally included only disposable coffee pods for use in Keurig machines, but now also include tea-pods for quickly brewing tea. T-shot’s patent covers a disposable tea-pod, but the asserted claims require that the pod be a “sealed body . . . constructed of a water-permeable material which allows flow of a fluid through said sealed body to produce a tea extract from said tea composition.” The figures from the patent look like the disposable coffee-pods that you might find in a hotel room – essentially tea wrapped and sealed within a coffee filter. One feature of the patent is that the pod include both tea leaves as well as some instant tea powder that allows for very quick brewing.
At first glance, K-Cups do not appear to be made of a water-permeable membrane but rather are constructed of a impermeable combination of plastic and metal foil. The Keurig machines operate by first puncturing a hole in both the top and bottom of the K-Cup and then sending water through the holes as shown in the schematic below.
T-shot’s infringement argument was that – once punctured – the K-cup also becomes water permeable. (Of course, the patentee couched this as a claim-construction issue in order to receive de novo review). On appeal, the Federal Circuit rejected the argument, finding that the claim requires the pod to simultaneously be a “sealed body” and “water permeable” and that the hole-puncturing scheme does not fit within that requirement.
Doctrine of Equivalents: In a move that is seemingly increasingly common, the Colorado district court refused to allow the patentee to amend its infringement contentions following the claim construction decision in order to include allegations of infringement under the doctrine of equivalents.
The proposed doctrine of equivalents claim was not disclosed in the patentee’s original or supplemental infringement contentions nor in response to any interrogatory. As a discovery sanction under Fed. R. Civ. Pro. 37, the district court refused to allow the new infringement theory to be presented — writing “Plaintiff
waived its right to raise the doctrine of equivalents by failing to timely disclose it as an infringement theory.” On appeal, the Federal Circuit affirmed that holding.
[As a side-note, the doctrine of equivalents theory here might have been viable given that the patent was issued without amendment.]
Personal loans – such as a mortgage or automobile purchase financing – require that the borrower purchase insurance to cover at least some of the lender’s risk. Business loans and venture investments are no different and a variety of insurance products are available to ensure a wide variety of entrepreneurial endeavors.
Although the particular order is rather mundane, the factual background of the investment/insurance in ABC v. Ironshore Speciality Ins. (2nd. Cir. 2014) is quite interesting.
Eidos holds several patents, including the U.S. Patent No. 5,879,958 covering certain LCD displays. In 2010, Eidos obtained financing from Stairway Capital in order to fund its patent enforcement litigation campaign. As part of the deal, Eidos also obtained insurance from Ironshore to cover the loan payable if the campaign fails to recoup at least the loan amount. The infringement litigation was still ongoing in 2013, but Ironshore must have predicted a bad outcome and filed a demand for arbitration of its contention that the insurance policy was void ab initio. And, the appellate order linked-to here affirms the lower court order requiring non-binding mediation followed by arbitration if necessary (as spelled out by the contract). The patentee had raised a new argument on appeal that the panel refused to hear.
In the parallel infringement litigation, the patent has now been found invalid as indefinite. That decision is apparently on still appeal to before the Federal Circuit.
