September 2004

Juicy Whips up on Orange Bang: CAFC Affirms Entire Market Value Rule

Patent, Patent Cases 2004

Juicy Whip v. Orange Bang (Fed Cir. 2004)

 

by Joseph Herndon

 

This is the latest appeal in the lengthy litigation between Juicy Whip and Orange Bang.  (U.S. Patent No. 5,575,405). On remand to determine damages, the district court rejected Juicy Whip’s argument that it would have sold more syrup “but for” Orange Bang’s infringement.  Juicy Whip appealed. 

 

Juicy Whip claimed that there exists a functional relationship between its patented dispenser and the unpatented syrup, a link adequate to justify recovery of lost profits.  The CAFC agreed and vacated the jury’s award and remanded this case back to the district court for a third time to allow Juicy Whip to prove lost profits on its syrup sales.

 

The CAFC followed the “functional unit” test set forth in Rite-Hite, e.g., that the entire market value rule is a principle of patent damages that defines a patentee’s ability to recover lost profits on unpatented components typically sold with a patented item, if both constitute a functional unit. 

 

The CAFC found that Juicy Whip’s dispenser and the syrup were analogous “to parts of a single assembly … as the syrup functions together with the dispenser to produce the visual appearance that is central to Juicy Whip’s ’405 patent.”  The Court explained that “a functional relationship between a patented device and an unpatented material used with it is not precluded [from profit determination] by the fact that the device can be used with other materials or that the unpatented material can be used with other devices.” 

Note: Joseph Herndon is a law clerk and at the intellectual property firm McDonnell Boehnen Hulbert & Berghoff and is a registered patent agent.  Joe has a stellar background in electrical engineering and plans to graduate from law school in 2005. herndon@mbhb.com.

Means-Plus-Function Limitation Rarely Found When Claim Lacks “Means” Language

Patent, Patent Cases 2004

Lighting World v. Birchwood Lighting (Fed. Cir. 2004).  

In its complaint, Lighting World asserted that Birchwood’s fluorescent lamp fixtures infringed Lighting World’s patents. At the close of Lighting World’s case-in-chief, the court granted Birchwood’s motion for JMOL on the ground that Lighting World had not shown equivalence under the doctrine of equivalents.

Lighting World appealed the District Court’s claim construction determination that the term “connector assembly” was a means-plus-function limitation.  The unanimous Appellate Panel vacated, finding that Birchwood did not demonstrate that section 112 ¶ 6 should apply.

[W]e have seldom held that a limitation not using the term “means” must be considered to be in means-plus-function form.  In fact, we have identified only one published opinion since Greenberg (Fed. Cir. 1996) in which we have done so, and that case provides a useful illustration of how unusual the circumstances must be to overcome the presumption that a limitation lacking the word “means” is not in means-plus-function form. 

 

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IBM and Intel license blade server specifications, but not associated patents

Articles and Publications, Patent, ,

blade_server_patent

IBM and Intel have announced a general license agreement on their patented blade server technology. This move is expected to create a level of standardization in the blade server market. (The Register).

The license (PDF) is directed at “copyright and trade secret rights in the Specification, to use the Specification for the limited purpose of designing and manufacturing Licensed Products, and to reproduce a limited number of copies of the Specification as is reasonably necessary to design and manufacture Licensed Product.”

Most notably, the license does not extend to patents, patent application, or trademarks.

Licensors grant no license … under any patents, patent applications, mask works or trademarks of the Licensors. Licenses under any patents of IBM or Intel will be addressed in separate patent license agreements.

Instructions for registering for a license are available here.

Note: This move falls in line with IBM’s open source philosophy. However, it is important to note that IBM and Intel may likely retain control over much of this technology through their vast patent portfolios.

Universal Garage Door Opener not subject to DMCA provisions

Articles and Publications, Patent

Declan McCullagh at Cnet News is one of the best tech-law reporters on the scene.  In his recent report on the Digital Millennium Copyright Act (DMCA) case Chamberlain v. Skylink, McCullagh begins:

A federal appeals court has reaffirmed what might seem obvious: Replacement garage door openers are legal to sell.

More particularly, a Federal Circuit Appellate Panel found that the encrypted code that allows your garage door receiver to recognize a signal from your remote control opener is not subject to copyright law — and thus not subject to the DMCA.

The so called “anticircumvention provision” of the DMCA bars attempts to circumvent technological measures that are put in place to control access to copyrighted works.  In this case, the court dismissed the plaintiff’s appeal because the encrypted code garnered no underlying copyright protection.

Prior Article

Patent Infringement: Recognition of a problem does not render the solution obvious

Patent, Patent Cases 2004,

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Cardiac Pacemakers (CPI) v. St. Jude Medical

(Fed. Cir. 2004).

CPI (Guidant) controls several patents relating to implantable cardiac defibrillators (ICDs) that are permanently installed under the skin, and that determine abnormal cardiac activity and treat that activity by delivering electrical shocks to the heart muscle in appropriate strengths. CPI charged St. Jude with infringement of two of these patents.

A jury found both patents valid and enforceable, but only one infringed.  After trial, the district court granted St. Jude’s motions for JMOL — holding both patents invalid and not infringed. The court also granted a new trial (in the event of reversal) and awarded sanctions for witness misconduct. CPI appealed the judgment of invalidity and non-infringement.

The Appellate Panel agreed with CPI and reversed, finding that the district court improperly granted JMOL. With respect to obviousness, the Federal Circuit found a nonobvious difference between the prior art’s recognition of a problem and the patented solution.

We think that the district court, in granting JMOL, applied an incorrect standard to the ultimate question. Recognition of the problem of treating complex heart arrhythmias does not render obvious the eventual solution. Recognition of a need does not render obvious the achievement that meets that need. There is an important distinction between the general motivation to cure an uncured disease (for example, the disease of multiple forms of heart irregularity), and the motivation to create a particular cure.

The lower court had also invalidated the patent based on a failure to state a best mode for supplying batteries. However, the Appellate panel found that there was “evidence before the jury that persons knowledgeable in the field of the invention would know the sources of batteries for pacemakers and related devices. There was no evidence of concealment, and the jury had evidence that the Honeywell battery was published in a publication for battery specialists. There was substantial evidence whereby a reasonable jury could have found that the best mode requirement had not been violated. The grant of JMOL on this issue is reversed, and the jury verdict is reinstated.”

The Appellate Panel continued: “The jury verdicts on the issues of obviousness and best mode were not against the manifest weight of the evidence.” Thus, no new trial may be held on the issues of obviousness or best mode. However, a new trial was warranted with respect to infringement because the district court erred in its claim construction.

AFFIRMED IN PART, REVERSED IN PART, AND REMANDED.

Update:
Peter Zura at the 271 Patent Blog has more information on the case.
Reuters story.

Modern Practice Magazine Provides Legal Insight

Articles and Publications, Patent

FindLaw’s Modern Practice magazine is published monthly and is an excellent resource for those interested in technology related legal practices. 

The September issue spotlights the recent Jib Jab controversy (“This land is my land”) pursues the definition of parody under copyright law.  Anita Ramasastry also provides an analysis of the proposed Anti-Phishing Act of 2004.

Finally, Patently-O is honored as Modern Practice’s Weblog Chronicle of the month.

Method of Cloning Mammals Issues as Patent

Patent

cloning_patent

AIPLA: Last week, the USPTO issued a patent on a method of cloning mammals (U.S. Patent No. 6,781,030). The patent, issued August 24, 2004 is assigned to Tufts University and was originally submitted as an application in 1999.

Claim one is listed here:

1. A method of cloning a mammal, comprising the steps of:

a. fusing a somatic activated donor cell and an activated, enucleated oocyte in telophase II and of the same species as the donor cell, to thereby form a nuclear transfer embryo;
b. impregnating a mammal of the same species as the nuclear transfer embryo with the fused nuclear transfer embryo under conditions suitable for gestation of the cloned mammal; and
c. gestating the embryo in step b., thereby causing the embryo to develop into the cloned mammal.