July 2004

Federal Circuit gives Paint-Roller Patentee Chance for a Second Coat

July 9, 2004Patent, Patent Cases 2004Claim ConstructionDennis Crouch

Diversified Dynamics v. Wagner Spray Tech (Fed. Cir. 2004) (NONPRECEDENTIAL)

In a patent infringement suit involving Diversified’s patented “duckbill check valve” for controlling paint flow to a paint-roller, the Federal Circuit reversed the district court’s dismissal of claims. The appellate panel found that a prior settlement agreement between the parties did not bar the present suit.

We conclude that the plain language of the release requires a narrow construction. The plain language releases Wagner from “any and all actions … arising out of or in any way related to the ‘176 Patent” (emphasis added). We agree with both of the parties that the release is unambiguous; however, we agree with Diversified as to its proper construction. The phrases “arising out of” and “in any way related to” refer back to the ‘176 patent and require a relationship between the action and the patent itself. We similarly note the order of the language in the release. Under the language of the release, the issue is whether an action is related to the ‘176 patent, not whether the ‘176 patent is related to the action.
Based on our reading of the release, we conclude that the district court improperly construed it to preclude Diversified’s suit on the ‘123 patent. As discussed, we focus on the nature of the action and its relation to the ‘176 patent. Here, the action arises out of and is related to the ‘123 patent.

Reversed and remanded.

Patent Law Mailing List

July 9, 2004PatentDennis Crouch

After receiving a number of requests, we implemented an e-mail service to provide updates to the "Patently-O" patent blog. List members receive a free daily e-mail (usually between 1 and 5 a.m. EST) that contains any new articles or posts.

Rather than sending entire posts (that are occasionally long), the e-mail only contains a snippet from each post. Html links will be provided for users to click-through to the full text articles. However, to save bandwidth, no images will be e-mailed.

If you decide that you do not like getting the e-mail, it is quite easy to unsubscribe. Each daily e-mail includes an unsubscribe link, all you have to do is click on the link and your subscription will be cancelled. I’m not going to distribute your e-mail address to anyone except for my secretary. However, I may e-mail you personally to see whether you have any suggestions for or comments on the patent blog.

If you have any other questions, please feel free to e-mail me.

Federal Circuit: U.S. Patent Laws Require Physical Supply or Manufacture of Components Within the U.S.

July 8, 2004Patent, Patent Cases 2004Affirmed Without OpinionDennis Crouch

PELLEGRINI v. ANALOG DEVICES (Fed. Cir. July 8, 2004)

Plaintiff Pellegrini appealed to the Federal Circuit after the district court granted partial summary judgment in favor of Analog. In the patent infringement suit, Pellegrini alleged that Analog was infringing its patented brushless motor drive circuits. (U.S. Patent 4,651,069). Because of Analog’s international manufacturing process, the case provided a novel question for the Federal Circuit.

This case presents the question whether components that are manufactured outside the United States and never physically shipped to or from the United States may nonetheless be “supplie[d] or cause[d] to be supplied in or from the United States” within the meaning of 35 U.S.C. § 271(f)(1) if those components are designed within the United States and the instructions for their manufacture and disposition are transmitted from within the United States. This is a matter of first impression for this court. According to § 271(f)(1),

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 a manner as to actively induce the combination of such components outside 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.

35 U.S.C. § 271(f)(1) (2000). Section 271(f) was enacted in the wake of the United States Supreme Court’s decision in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972), in which the Court acknowledged that unauthorized manufacturers of patented products could avoid liability for infringement under the then-existing law by manufacturing the unassembled components of those products in the United States and then shipping them outside the United States for assembly. Congress enacted § 271(f) in order to close that loophole.

In its opinion, the appellate panel determined that Section 271 requires “physical supply of components, not simply to the supply of instructions or corporate oversight.” Because the U.S. division of Analog only provided designs and corporate oversight, no infringing activity took place. Affirmed.

NOVARTIS v. ABBOTT (JMOL of noninfringement of Novartis patents affirmed)

July 8, 2004Patent, Patent Cases 2004Claim ConstructionDennis Crouch

NOVARTIS PHARMACEUTICALS CORPORATION v. ABBOTT LABORATORIES (Fed. Cir. July 8, 2004).

Novartis brought a patent infringement suit against Abbott based on its patented cyclosporin compositions. (U.S. Patent 6,007,840). A jury determined that Abbott infringed claim 81 of the ‘840 patent. However, the district court issued a judgment as a matter of law (JMOL) of noninfringement in Abbott’s favor.

On appeal, the appellate panel found that the district court’s claim construction was erroneous, but that those errors were harmless to the JMOL decision. Affirmed.

In dissent, J. BRYSON argued that the court unduly applied the the specific exclusion principle to narrowly construe the term “lipophilic component.”

The statement on which the court relies refers to the role performed by excess amounts of the substance that serves the role of the surfactant in the claimed composition. The quoted language indicates that the composition of the invention must have at least three components in addition to the cyclosporin, as required by claim 81. In addition, it contemplates that the substance that serves as the surfactant may also serve as part of either the hydrophilic or the lipophilic component. The quoted language therefore makes clear that the composition may not consist of only two components in addition to the cyclosporin, as would be the case if one ingredient served as both the surfactant and the lipophilic component in the composition. However, the quoted language does not address the case presented by Abbott’s composition, which contains three components in addition to the cyclosporin, and in which a hydrophilic surfactant serves as the surfactant, while Span 80 serves the function of the lipophilic component (dissolving and carrying the cyclosporin). Thus, because in Abbott’s composition Span 80 does not serve as the surfactant referred to in claim 81, the quoted language from the specification does not apply to Abbott’s composition. For that reason, I agree with Novartis that, where another substance serves as the hydrophilic surfactant, the specification does not disclaim the use of a lipophilic surfactant such as Span 80 as the sole component of the lipophilic component of the claimed invention. I therefore do not find a disclaimer of subject matter in the specification. A fortiori, I do not find a specific exclusion of subject matter for purposes of the doctrine of equivalents.

Intellectual Property Association (AIPLA) calls for the creation of a post-grant opposition procedure

July 7, 2004Patent, Patent LegislationUSPTO DirectorDennis Crouch

Michael Kirk, Executive Director of the American Intellectual Property Law Association, recently testified before congress and called for the creation of an effective post-grant opposition procedure in the Patent Office.

Appearing at a congressional oversight hearing, Kirk pointed out that issued patents of questionable validity undermine the confidence of business and consumers. While the validity of such patents may be tested through litigation, reexamination, reissue, and interference proceedings, he observed that these options all suffer significant deficiencies. What is needed is a procedure that satisfies a competitor’s need for an adequate opportunity to challenge, the patent owner’s need for a prompt resolution of that challenge, and both parties’ need for an inexpensive proceeding.

Calendar of AIPLA Events:

Aug. 11-13: Practical Patent Prosecution Training for New Lawyers
Hyatt Regency Crystal City, Arlington, VA

Oct. 14-16:2004 Annual Meeting
Grand Hyatt Washington, Washington, DC

Patently-O: The First Three Months of a Patent Resource

July 7, 2004PatentobviousnessDennis Crouch

Today marks the end of the first quarter-year of this ‘Patently-O’ website. What began as a simple toy project has quickly evolved into a modestly successful site. During this time, I have written a brief summary of each patent law appellate opinion. In addition, many interesting unpublished appellate and published district court decisions have been reviewed. The result is about one case brief every two days.

Many times individuals involved in patent litigation are more interested in case law while those on the patent prosecution side may be more interested in patent office procedure. We monitor changes to patent office procedure and post them soon after they are announced. Changes can range from the minutia of mail stop address changes to commentary on changes in the rules for publishing patent applications.

Other types of information available on the site include articles and publications, patent legislation, patent drafting tips, and interesting inventions.

I believe that the beauty of this site is its spotlight on patent law issues. The narrow focus makes my job easier by reducing the amount of potential material, and it gives stability to the content of the site.

STATS:

A stat-counter was not installed until about day 10, but it shows a total of 25,517 hits over the past 80 days. The (incomplete) visitor list includes over 475 corporations, 125 universities, 50 government agencies, and 190 law firms. This total does not include visitors who reach the site through a “feed reader” such as bloglines or Kinja.

Major Referrers (past 1000 visitors):
google.com
yahoo.com
IPNewsFlash.com
nip.blogs.com
promotetheprogress.com

Most Popular Search Terms (past 1000 visitors):
patently obvious
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IP Firms

— Dennis Crouch

SEARFOSS v. PIONEER

July 6, 2004Patent, Patent Cases 2004Claim ConstructionDennis Crouch

SEARFOSS v. PIONEER CONSOLIDATED CORPORATION (Fed. Cir. June 6, 2004)

Searfoss appealed the district court’s claim construction and resulting summary judgment of non-infringement of its patented truck bed covers. (U.S. Patent 5,031,955).

Because a finding of infringement under the doctrine of equivalents would vitiate the requirement of a direct connection through an actuation means, no reasonable jury could find that the accused device is insubstantially different than the claimed invention. Summary judgment of non-infringement is thus appropriate.

Because the district court correctly construed the disputed claim terms of the ’955 patent and thus Pioneer did not infringe claim 3 under the doctrine of equivalents, the district court’s entry of summary judgment on non-infringement is AFFIRMED

TypeRight Keyboard v. Microsoft

July 6, 2004Patent, Patent Cases 2004Dennis Crouch

TYPERIGHT KEYBOARD CORPORATION v. MICROSOFT CORPORATION (Fed. Cir. June 6, 2004).

Plaintiff TypeRight appealed the district court’s summary judgment based on invalidity of its patented ergonomic keyboards. (U.S. Patent 5,372,441 and 5,503,484). Additionally, Microsoft cross-appealed the district court’s dismissal (without prejudice) of its claims for non-infringement.

First, the court dismissed the cross-appeal for lack of jurisdiction.

A party that is not adversely affected by a judgment lacks standing to appeal. . . . Because Microsoft’s rights under the judgment of invalidity are actually broader than its rights would be under a judgment of non-infringement, Microsoft has not been adversely affected by the district court’s judgment. Because there is no jurisdiction for the cross-appeal, we dismiss the cross-appeal

Next, the appellate panel reversed the finding of invalidity and remanded the case.

Summary judgment should not be denied simply because the opposing party asserts that the movant’s witnesses are not to be believed. However, summary judgment is not appropriate where the opposing party offers specific facts that call into question the credibility of the movant’s witnesses.

Here, TypeRight pointed to specific facts that tend to discredit the testimony of [Microsoft’s witnesses]. These facts create a genuine issue as to the credibility of Microsoft’s witnesses. Thus, while the evidence is sufficient to support a jury finding that the [] document is prior art, a reasonable jury could ultimately conclude otherwise. In such circumstances, “[t]he court may not assess the credibility of testimony when granting summary judgment.”