August 2004

Xechem v. University of Texas

Xechem v. University of Texas (Fed. Cir. 2004) (03-1406).

Xechem brought several claims against the University of Texas that were dismissed after the University asserted Eleventh Amendment and state immunity from suit. The issue on appeal is whether the University is subject to suit in federal court to obtain correction of inventorship in the patents flowing from a collaboration between Xechem and the University. (US-5877205-A). The Federal Circuit affirmed the lower court’s dismissal based on Supreme Court precedent.

Comment: In this case, the court (Newman, J.) seemed to almost go out of its way to emphasize the strong points of Xechem’s argument — giving an indication that it would, but for Supreme Court precedent, refuse to grant immunity to the university.  I would predict that this case will be granted a Writ of Certiorari.

Dennis Crouch

Federal Circuit: DMCA does not create a new property right for copyright owners

Chamberlain Group v. Skylink Technologies (Fed. Cir. 2004).

In a well reasoned opinion, the Federal Circuit (GAJARSA) affirmed a district court’s dismissal of a suit arising under anti-trafficking provisions of the Digital Millennium Copyright Act (DMCA).

The DMCA does not create a new property right for copyright owners.  Nor, for that matter, does it divest the public of the property rights that the Copyright Act has long granted to the public.  The anticircumvention and anti-trafficking provisions of the DMCA create new grounds of liability.  A copyright owner seeking to impose liability on an accused circumventor must demonstrate a reasonable relationship between the circumvention at issue and a use relating to a property right for which the Copyright Act permits the copyright owner to withhold authorization-as well as notice that authorization was withheld.  A copyright owner seeking to impose liability on an accused trafficker must demonstrate that the trafficker’s device enables either copyright infringement or a prohibited circumvention.  Here, the District Court correctly ruled that Chamberlain pled no connection between unauthorized use of its copyrighted software and Skylink’s accused transmitter.  This connection is critical to sustaining a cause of action under the DMCA.  We therefore affirm the District Court’s summary judgment in favor of Skylink.

This case involved electronic garage door technology with a “rolling code” to encrypt signals transmitted signals.  Skylink distributes a universal remote that can decode the encrypted rolling code.  In an attempt to control the aftermarket in remote control units, Chamberlain sued.

The court’s basic premise is that an element of a DMCA cause of action is an underlying copyright violation — without such a violation, there can be no remedy.

Updates: According to Ernest Miller, the court rescued the DMCA from “one of its most absurd aspects.” He is still concerned, however, that the Act, even as narrowly interpreted, will continue “stifling creativity and innovation.” More on the story from copyfight.

Federal Circuit: Disclosure of only a single embodiment does not result in disavowel of claim scope

Home Diagnostics v. LifeScan (Fed. Cir. 2004) (03-1370).

After construing the claims in this patent infringement lawsuit, the Northern District of California Court held that Home Diagnostics’ (HDI) blood glucose meters do not infringe LifeScan’s patent on the use of reflectance to determine blood glucose concentration.  (U.S. Patent No. 6,268,162).

On appeal, LifeScan argued that the lower court’s claim construction should be overturned.  Specifically, LifeScan argued that the district court overlooked “the accepted contextual meaning” of the method of stopping a measurement period and unduly limited terms to those disclosed in a preferred embodiment.  HDI argued that any broader interpretation was disavowed by LifeScan when they disclosed only a single embodiment.

The Federal Circuit agreed with LifeScan, following their own precedent that disclosure of a single embodiment “does not mean that the patent clearly and unambiguously disavowed other embodiments.” 

Reversed-in-part, Vacated-in-part, and Remanded

Paintball Patent Infringement: Smart Parts’ Patent Lacks Proper Inventorship

Smart Parts v. WDP (D. Oregon 2004)

In a patent infringement suit over electropneumatic paintball guns, an inventorship controversy arose. Smart Parts contends it is the sole owner of U.S. Patent No. 6,474,326. Dr. Edward Hensel, a former investor, claims to be a co-inventor. Hensel, now acting on behalf of WDP, provided evidence that he designed various elements of the patented invention – namely the electrical timing circuit and bolt action control. In addition, Hensel created a working model in his home. The court agreed that Hensel should be at least a co-inventor and granted summary judgment to WDP on the issue of inventorship.

Dale Ford’s Commentary

Dennis Crouch

Claim term “substantially” is approximate

Dana Corp. v. American Axle  (Fed. Cir. 2004) (not citable as precedent).

In a patent infringement suit, the district court granted summary judgment of non-infringement to the defendant, holding that no reasonable jury could find that the defendant’s driveshaft technology infringed plaintiff’s patents.

The Federal Circuit vacated, finding that the district court incorrectly ignored the claim phrase  “substantially uniform wall thickness.”  According to the Appellate Panel, the term substantially allows for variation in wall thickness.


PTO Board Places Enablement Burden on Examiner


During prosecution of their patent application for a new dental cement composition, the applicants added the term “about” to modify an upper concentration range. The Examiner rejected addition of “about,” arguing that the broadened claims were not enabled.

The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims. Extending the claimed range beyond the range described in the specification is not enabling and is new matter.

On appeal, the BPAI overturned the Examiner’s rejection, holding that the Examiner had not “met the required burden of proof for a rejection based on lack of enablement.”

The claims are directed to a dental composition and nothing in the specification indicates that minor differences in concentration render the composition unsuitable. The Examiner simply has provided no basis for the conclusion that one of ordinary skill in the art would not have been able to make the dental compositions at the slightly higher levels of the claims, if, indeed, the upper levels are outside the ranges discussed in the specification.

LaundraPak Success


In another solo-inventor success story, fellow tiger Jeremy Kestler has turned his invention into a successful business. The LaundraPak hangs over a door and can be carried on your back to the laundry room. (U.S. Patent No. 6,729,519). As students are returning to college and law school, I’m sure that sales will be booming. Jeremy has a 6-minute time-slot on QVC to get his message out. (Between 6:30 and 7:00 on Tuesday, August 31, CTD).

More on Rational Ignorance at the Patent Office

Professor Mark Lemley has promoted an idea of “rational ignorance” at the patent office. In his now famous article, Lemley argues that patent examiners should not attempt to completely search all prior art because such searches would be too expensive. Thus, according to Lemley, the patent office should issue patents even when there is a substantial likelihood that prior art could be found by mounting a more thorough search. Because the vast majority of patents are never litigated, Lemley argues that good cost saving measure is to perform a minimal search during patent prosecution and delay a more complete search until the time of litigation (if any).

In their recent article Professors Ghosh and Kesan take issue with Lemley’s results. Although they agree with proposition that the “USPTO cannot be omniscient,” Ghosh and Kesan question Lemley’s empirical bases.

But we question his basis for determining how much the USPTO should be expected to know and not know. This inquiry rests on an assessment of the social benefits of patents, not just on the private decision of the USPTO and its examiners. We would agree with Professor Lemley that simply devoting more time to patent review is not the solution. But Professor Lemley frames the debate as a choice between administrative restructuring and more extensive judicial review. He opts for the latter because so few patents are actually litigated, and therefore the benefits from reduced litigation are not justified by the increased costs in administrative review. We contend that such an argument ignores (in neither a rational nor an optimal way) the benefits of a patent system. It is far from clear that more extensive judicial review is more effective than some restructuring of the USPTO in terms of more careful scrutiny or more rigorous assessment and accumulation of the prior art. The judicial option is more dubious in light of the USPTO’s mandate of promoting progress and its practical purpose in resolving the revelation and appropriation problem. Professor Lemley provides an assessment of the private and social costs without proper attention to private and social benefits.

What Do Patents Purchase?: In Search of Optimal Ignorance in the Patent Office, with S. Ghosh, 40 HOUS. L. REV. 1219 (2004).

Conclusions: Improved prior art searching at the patent office can be accomplished through a combination of improved information systems and increased funding for Patent Examiners. There is certainly an optimal limit to searching by the patent office. However, we have been given no indication that the limit has been reached.

Update: LB Ebert has more criticism of Lemley here.

Federal Circuit: Lifestream Diagnostics v. Polymer Technologies

Lifestream Diagnostics v. Polymer Technologies (Fed. Cir. 2004) (unpublished opinion).

Lifestream sued Polymer Tech for alleged infringement of its patent on HDL cholesterol testing equipment.  (U.S. Patent No. 5,135,716).  After conducting a Markman hearing, the district court awarded a judgment of noninfringement to Polymer Tech.

On appeal, the Federal Circuit reversed in part.

We hold that reliance by the Patent Office upon arguments mae by the patentee during prosecution is not necessary to find argument-based estoppel…. Because we reverse some of the district court’s claim construction, we vacate the court’s judgment of noninfringement and remand.

EOLAS: W3C Submission Based On Prior Art Submitted by Microsoft?

An anonymous reader passed along some information regarding the Reexamination of the Eolas Patent. Apparently, the original reexamination plea by Tim Berners-Lee’s plea did not contain any new prior art. Rather, the parties involved (Microsoft, et. al.) had provided the USPTO with the same prior art weeks before Berners-Lee’s W3C submission. Download Microsoft’s Original Submission (PDF). Download W3C Subsequent Submission (PDF).

NOTE: I obtained these documents from the USPTO, so they are authentic (but truncated). However, I have not yet compared them to determine the degree of similarity between the Microsoft submission and the W3C submission. — DC

Read more about Eolas here and here.

Update: Slashdot article.

Update II: Another anonymous reader sent me this e-mail (edited) that discusses the references cited by the examiner and a possible response

Dear Mr. Crouch

I have read the Office Action issued in the Eolas reexamination proceeding. The rejection is based mainly on the following two references:

Reference 1: Ragget I and Ragget II teach embedding objects in a hypermedia documents. The objects are first processed by invoking an external application, and then displayed within the hypermedia browser. Just as in the Eolas Patent, Ragget teaches embedding foreign objects in a hypermedia document, which are processed by an external application. Also, just as in the Eolas Patent, the foreign objects are displayed within the browser window, as if being part of the hypermedia document. However unlike the Eolas Patent, in Ragget, once the objects are imported into the document, the user cannot interact with objects, or with the external application.

Reference 2:Toye teaches a browser (i. e. “notebook”) which displays hypermedia documents. The hypermedia documents in Toye can reference external foreign “interactive objects”, which are processed by external applications. A browser displays the foreign objects in “virtual windows”. If a user wishes to modify and interact with an object, he selects the displayed object, which invokes an external application for processing the foreign object. As in the Eolas Patent, Toye discloses that a user can interact with the object that is displayed in a separate window. However in contrast to the Eolas Patent, in Toye, the external object is not displayed in the same window of the browser program.

The Rejection: The examiner rejected the Eolas claims by arguing that one skilled in the art would have modified Ragget to include embedding in the browser window the interactive objects of Toye.

Possible Response: A very simple refute of the rejection would be as follows. In the Eolas Patent, the interaction with the external program is “via interprocess communications between the browser and the application”. (I.e., in Eolas, communications are routed via the browser).  Toye does not teach this type of routing. Rather, in Toye if a user wants to interact the object, he would need to click on the object, which would “restart” the external application and allow the user to modify the object. Toye provides the analogy: “The functionality is similar to opening a file using the Macintosh Finder and automatically invoking the appropriate application for processing the file”. Thus in Toye the user’s interaction with the application is only by “restarting” and launching the external application, and then interacting directly with the external application. In contrast, in the Eolas Patent, the interaction with the embedded object does not require the launching of the external application, rather it’s achieved via “interprocess communications between the browser and the application”.

ps. Thanks, for a very interesting and informative Blog.

Anonymous Emailer

Research Reveals Patent Grant Rate of 75%

The past few years, several researchers have delved into patent statistics to try to determine how likely it is for a patent application to result in an issued patent.  Figures have ranged from 62% (USPTO Statistics) to 97% (Quillen).  A middle of the road statistic of 75% has also been proffered by Robert Clarke of the USPTO. 

In a recent article (Chicago-Kent Journal of Intellectual Property), Lawrence Ebert discusses the various results and concludes that Clarke’s 75% estimate is the most reliable because it avoids a double-counting flaw associated with Quillen.

Conclusion: Given no knowledge about the particular invention, a patent application has a 75% chance of resulting in a patent on the invention.

Eolas browser patent fight goes into new phase (Tribune)

Today’s Chicago Tribune (subscription) has a nice article on the Eolas case by reporter Barbara Rose.  Most interestingly, her reporting does not fall in line with the trendy headlines like “Microsoft Wins Again,” “Two Strikes for Eolas,” and “USPTO Close to Rejecting Plug-in Patent.”  Rose correctly notes that the Examiner accepted Eolas arguments that prior art submitted by WC3 did not invalidate the patent at issue. 

Doyle’s attorney, Martin Lueck, said Eolas and the University of California are “very pleased” that the examiner accepted their arguments.

The examiner wrote that Eolas’ rebuttal to his office’s previous rejection of the patent’s claims “has been fully considered and is deemed persuasive.”

Eolas is not out of the water — the Patent Examiner was able to discover three more references and argue that the combination of those references rendered the Eolas patent obvious.  Eolas must now respond to this new rejection. I was quoted in the article as saying that Eolas is in a “fairly good position.” 

— Dennis Crouch

Fair-Use: Scientific Research Exception?

7th Circuit Judge Richard Posner is writing Larry Lessig’s Blog for the rest of the week. In his latest post, Judge Posner outlined a proposal for expansion a fair-use exception for patent law. Specifically, he and Professor Bill Landes have promoted the concept of allowing unlicensed use of scientific research tools by researchers who have no plans to patent their results.

Landes and I advocate an expansion of the patent fair-use principle to allow scientists to use patented research tools (such as the oncomouse) without license–provided the scientists aren’t allowed to use the tools to produce their own patented products!

Their monograph (The Political Economy of Intellectual Property Law) is available as a free download. (Link)

Tribune Calls For a Sober Discussion of Patent Law

Chicago Tribune Columnist Steve Chapman is hoping that presidential debate will quickly move from Vietnam to Patent Law:

From listening to both sides, you’d think Kerry and President Bush were running for trustee of VFW Post 836. Though the differing war stories may be endlessly fascinating to anyone who served in Vietnam, or anyone who strove heroically to avoid serving in Vietnam, the rest of us would rather hear the candidates recite from a volume on patent law. (Tribune — Free Subscription).

Read the Onion.

USPTO: Inter Partes Reexaminations

Acushnet, the maker of Cobra golf clubs and Titleist balls has requested an inter partes reexamination of Taylor Made Golf Company’s patent no. 6,623,378.  In the proceedings, Acushnet will argue that Taylor Made’s golf club patent should be held invalid over prior art.

Starting Industrial has also requested an inter partes reexamination of Kioritz Corporation’s patented rope recoil starter for an internal combustion engine (U.S. Patent No. 6,588,390).




Federal Circuit: A hairbrush has no more relation to a toothbrush than does hair resemble teeth

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In re Alberto Lee Bigio (Fed. Cir. 2004)

Bigio’s patent application claims a hair bursh with an “hourglass configuration for both the bristle substrate and the overall bristle array.”  (Patent Application Serial No. 09/451,747).  After receiving obviousness rejections from the Examiner and the BPAI, Bigio pursued his claims at the Federal Circuit. Some of the cited references were designed for use on animals rather than human hair, and Bigio argued that they should not apply because non-human hair brushes where excluded from the patent scope by language in the specification.

[T]he Board rejected Bigio’s interpretation of “hair brush” as limited to brushes only for scalp hair.  Instead, the Board broadly construed “hair brush” to encompass “not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal bodies (e.g. human facial hair, human eyebrow hair, or pet hair).” 

On appeal, the Appellate Panel (RADER, J.) affirmed, finding that the Board correctly declined to import limitations on terms from the specification.  Next, the Panel found that a toothbrush was an analogous art — and thus could form a basis of an obviousness rejection.

[I]t is necessary to consider ‘the reality of the circumstances’ – in other words, common sense – in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.”  In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) [].  Accordingly, the examiner and the Board must consider the “circumstances” of the application – the full disclosure – and weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor. …

[T]he Board applied the test for analogous art in keeping with the counsel of this court’s predecessor:  “The differences are mere change of size and substitution of material of the most obvious kind, on a par with the differences between a hairbrush and a toothbrush.”  In re Wolfe, 251 F.2d 854, 856 (CCPA 1958). Thus, on this record, this court affirms the findings of the Board and upholds its traditional tests for determining the scope of prior art analogous to the claimed invention.  

In Dissent, Judge Newman argued that the toothbrush should not be considered a 103(a) reference.

The toothbrush art is not analogous to the hair brush art.  Bigio’s patent application is directed to a hair brush, and his claims are limited to a hair brush. 

Newman concluded with the money quote: “A brush for hair has no more relation to a brush for teeth than does hair resemble teeth.”



EOLAS Reexam Office Action

For those who are interested in the Microsoft Case, here is a link to the Office Action rejecting all ten of Eolas’ claims under 103(a) for obviousness.  The rejection is based primarily on references from Berners-Lee and Raggett.  The Office Action appears well reasoned and nicely written.  I suspect that the Patent Examiner (Andrew Caldwell) was given much more time to research and write this OA is than the norm.

U.S. Patent No. 5,838,906
ZDNet Article by Paul Festa

Download eolas_office_action.pdf

Update: After a reader e-mailed, I looked into the case a little more. Although I am not completely familiar with the case, the headline of the OA could be “Eolas wins Round I of Highly Anticipated Re-Examination.” In the most recent OA, the Examiner accepted Eolas’ argument as to the initial ground for rejection — thus, according to the Examiner, the combination of references cited in the original application do not render the patent obvious. Now, in Round II, the Examiner has cited a new set of references. As you may know, this type of back-and-forth is common in patent prosecution.

Federal Circuit: Koito Manufacturing v. Turn-Key-Tech (Patent Case)

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Koito Manufacturing v. Turn-Key-Tech (Fed. Cir. 2004) (PDF).


In February 2002, Koito brought a declaratory judgment action against Turn-Key, requesting that Turn-Key’s patent covering an injection molding technique be declared invalid, unenforceable, and not infringed. (< ?xml:namespace prefix ="" st1 />U.S. Patent 5,045,268). The Jury issued a special verdict finding the patent invalid for lack of enablement, written description, and the addition of new matter. Additionally, the Jury found that the patent was not infringed and that several claims were anticipated and obvious. After the verdict, however, the district court judge granted in-part Turn-Key’s JMOL.  On appeal, the Federal Circuit affirmed-in-part and remanded.  The Appellate Panel held that Koito had not met its burden of showing non-enablement, lack of written description, impermissible new matter, anticipation, or obviousness.

 We affirm (1) the jury’s verdict that Koito did not infringe the ’268 patent and (2) the district court’s grant of a JMOL with respect to the jury’s finding that the ’268 patent was not enabled, did not meet the written description requirement, and impermissibly added new matter.  However, we vacate the district court’s denial of Turn-Key’s JMOL with respect to anticipation and obviousness.  On remand, the district court should evaluate the evidence proffered by Koito … to determine whether the jury’s verdict of anticipation and obviousness was adequately supported.

Affirmed-in-part, Vacated-in-part, and Remanded.



The unanimous decision, which was returned by a three-judge panel on Monday, August 23, upheld an April 2003 jury verdict in the same case.  As in this case, the court found that the manufacturing process Koito used to mold plastic tail light lenses in no way infringed on a patent for another process that was held by Turn-Key-Tech. (LINK)

Court: FDA’s Role is Not to Analyze Patent Claims

Alphapharm PTY v. Tommy G. Thompson (Secretary of HHS) (D.D.C. 2004) (CA 03-2269).


By Mark Chael

Recently, the District Court in Washington, D.C. agreed with the Federal Circuit, the Fourth Circuit, and a District Court in Maryland by determining that the listing of patents in the Orange Book by the Food and Drug Administration (FDA) is merely “a ministerial act” and that the Hatch-Waxman Act does not require the FDA “to police the listing process by analyzing whether the patents listed by NDA (New Drug Application) applicants actually claim the subject drugs or applicable methods of using those drugs.”


In a case captioned, Alphapharm PTY Limited v. Tommy G. Thompson, the court reasoned that substantive patent analysis is beyond the expertise of the FDA and is a function they are not mandated to perform.  Rather, substantive patent analysis is better left with the U.S. Patent and Trademark Office. The function of the FDA, on the other hand, is to assure the safety and availability of useful pharmaceutical compounds.  The laws and regulations that govern the FDA, in particular those laws and regulations that govern the listing of patents in the Orange Book, “commit the resolution of disputes between ANDA (Abbreviated New Drug Application) applicants and patent holders regarding the validity or correctness of the listed patent information to actions between ANDA applicants and patent holders, rather than to FDA action.”

Note: This is the first post by patent attorney Mark Chael, PhD.  Mark’s prior research in biochemistry, molecular biology, and cellular biology make him well equipped to understand the intricacies involved in biotech and pharmaceutical patents. He is an associate at the intellectual property law firm McDonnell Boehnen Hulbert & Berghoff in Chicago. [Brief Biography]