Link: America was founded as a dissenting opinion in the 18th Century colonial world. Not wishing to be unpatriotic, the Court of Appeals for the Federal Circuit has been on a rampage — issuing dissents with abandon. According to Professor Polk Wagner’s research, the percentage of dissenting or concurring opinions in CAFC cases has risen from under 5% in the late 1990’s to over 25% today. (chart from www.fedcir.org).
Comments: The amount of dissent on the court clearly indicates that the composition of the panel for your case will have a major impact on your outcome. As Stephen Nipper and Hal Wegner have noted, if the composition of the panel was known well in advance of appeal, the resulting certainty would lead to more settlements. Despite any internal conflict within the Federal Circuit, it would be laughable to argue that the law is less settled or less certain than it was prior to the formation of the court.
The recently filed petition in Pellegrinimay ultimately decide the damage award in Eolas v. Microsoft. Both cases discuss the international application of U.S. Patent Law, and the requirements of 35 U.S.C. 271(f)(1).
271(f)(1) provides for liability for causing components of a patented invention to be supplied for assembly abroad:
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. 35 U.S.C. 271(f)(1).
At the district court level, Eolas won a $500 million verdict for Microsoft’s alleged patent infringement. A portion of the award fell under 271(f). In Eolas, no physical component of the patented invention had shipped from the U.S. However, the District Court ruled that Microsoft’s shipment of information on a “golden master” disk created a sufficient nexus with the U.S. The Eolas case is now on appeal.
Similarly in Pellegrini, no physical components were shipped from the U.S. However, the evidence indicates that the accused infringer made sales and controlled manufacture of components from the U.S. Unlike in Microsoft, the Federal Circuit found no infringement because no physical components of the patented invention were shipped from the U.S.
Now, Pellegrini has asked the Supreme Court to review its case. In addition to solidifying the meaning of the infringement statute, the outcome may also help determine the utimate damages in Eolas.
UPDATE: Professor Joe Miller reminded me of another related case that is pending appeal: AT&T v. Microsoft, (S.D.N.Y. 2004). That case involved another “Golden Master” disk shipped by Microsoft. In AT&T, the court held that object code contained on the disk constituted a component under 271(f) even though the object code on the disk was replicated abroad before being incorporated into the final product.
Professor Polk Wagner has a background in empirical research. Lately, he has been using his statistical tools to help provide a better picture of how the Federal Circuit operates. You can see his work at the “Claim Construction Project.” His site and papers are loaded with information. Perhaps the most fun is the Predictor Tool. By selecting the panel of appellate judges, the tool will predict the panel’s decision methodology.
Link: The American Jobs Creation Act of 2004 is ready for President Bush’s signature. The act may be a boon for patent litigators who work on contingency.
The IRS has previously forced victorious plaintiffs to pay taxes on the entire award, then taxed the attorneys for their contingent fee. In essence, a large chunk of the earnings are double taxed. The Jobs Creation Act of 2004 reportedly eliminates this double taxation — thus increasing the size of the pot to be split between the plaintiff and its attorneys.
On-Line sued Perkin-Elmer for infringement of its patent that provides a method of increasing the light-path in a spectrometer with corrected astigmatism and reduced diffusion. (U.S. Patent No. 5,440,143). After construing the claims, the district court granted summary judgment of noninfringement.
On appeal, On-Line argued that the claims were too narrowly construed, and that the allegedly infringing mirrors having a toroidal surface fall within the claim limitation of a substantially spherical surface. Perkins-Elmer disagreed, noting that On-Line specifically omitted toroidal surfaced mirrors from its claims, and thus “that On-Line had dedicated surfaces of that shape to the public.”
The Federal Circuit agreed with On-Line that toroidal surfaces are covered by the claims.
We reach that conclusion because the specification makes clear that the claim language referring to spherical surfaces with cylindrical components includes toroidal surfaces.
The court vacated and remanded this portion of the district court decision, but affirmed the rest.
Ghaly has asked the Court of Appeals for the Federal Circuit for a rehearing based on perceived errors in its prior ruling on the case. Rehearings are rarely granted. However, in this case, Ghaly may have a point.
Ghaly’s patent claims an “entry control means” limitation. A major bone of contention is whether the control means is limited to bi-stable switches (Hasbro’s position) or include momentary switches (Ghaly’s position). In its initial decision, the CAFC sided with Hasbro, finding that the disclosure limited the claim to bi-stable switches.
However, Ghaly raises two interesting points in his petition to rehear: 1) In its opinion, the CAFC defined momentary switches to be “like keys on a keyboard [that] revert to their original status the moment a user stops pressing on them.” 2) In the dependent claims, Ghaly disclosed that the “entry control means” could be a “key pad switch.” Ergo, argues Ghaly, a key pad switch is a momentary switch.
Ghaly does not cite any cases directly on point, and thus raises the following legal question:
Should means-plus-function language be interpreted in light of the claims as well as the body of the specification?
Hasbro’s counsel, Tony Sitko disagrees with Ghaly’s interpretation of the case. He noted that “Hasbro thinks that the Court’s opinion speaks for itself, and quite frankly, that the Court got it right.”
This week, Honeywell sued some of the biggest names in the consumer technology industry for infringement of its patents related to liquid crystal display (LCD) technology. (Patent No. 5,280,371). The patent claims a backlight diffuser consisting of two sheets of cylindrical lenses between the backlight and the screen.
Included on the list of defendants are Apple, Casio, Dell, Kodak, Fuji, Fujitsu, Nikon, Nokia, Pentax, Sony, Toshiba, and more. The two largest producers of flat panel monitors, LG Philips and Samsung, have already taken licenses under the patent.
This week’s patents for sale include a Caulking Gun (U.S. Patent 6,435,373), A credit card for apartment renters (the card always had enough credit in reserve to pay the monthly rental fee) (U.S. Patent 6,738,751), and a diaper restraint system. (U.S. Patent 6,755,198). Contact information for the inventors is is available here.
Question: Is this type of listing ever successful? E-mail your story.
Although only news for some, the Blawger Bowl continues to rise in status as the premier “sporting league” for legal bloggers. Here is a rundown of this week’s results:
The InventBlog, now 5-0, showed itself once again to be the team to beat by skunking Loosely Coupled.Halfway through the match, LC was quoted as saying “My team sucks.”From an objective perspective, at 1-4, Loosely Coupled is quite awful. Just before the game, LC made a number of roster changes.That time could have been better spent whistling Dixie.
Dante Culpepper once again helped Patently-O get a win.Detractors might also note that the win could be a result of The Importance Of . . . failing to field a team of actual players – rather than those injured and on a bye week.
Looking like two country mice lost in the big city, TechLawAdvisor and ActualMalice had miserable games.Fortunately for the TLA, Actual Malice earned the lowest point total of the whole season thus far.The big win puts TechLawAdvisor in a heated tie for second with Patently-O – They will match up head-to-head next week.
The Libertarians fell out of the top bracket by suffering a defeat at the hands of the Buzzmodo. If I were Mr. Kinsella, I would be hiding my face too. As noted by his loss, UnbillableHours may actually be spending some time working on his client’s projects. Kudos go to CRC Inducers for the win.
Gerald Pellegrini is an inventor in Worcester, Massachusetts. For the past few years, he has been engaged in a patent dispute with Analog Devices, headquartered in Norwood, Massachusetts. Now, the case has reached the United States Supreme Court.
APPEALS COURT USES PATENT LAW TO CREATE UNEVEN PLAYING FIELD IN COMPETITION BETWEEN AMERICAN AND FOREIGN WORKERS
Outsourcing of manufacturing and other jobs continues at an unprecedented pace, resulting in the loss of a great many jobs in the United States. American companies often retain their nerve center in the U.S., but delegate the physical labor to employees and contractors located abroad. Foreign outsourcing allows American companies to reduce their payroll and tax burden, and to avoid the more stringent U.S. environmental requirements. Now, the Court of Appeals for the Federal Circuit (CAFC) has offered an interpretation of the patent statute that provides American companies another incentive to outsource — avoidance of U.S. patent laws. Under the CAFC’s interpretation of the patent act, companies that would ordinarily be guilty of patent infringement can now copy patented products with impunity by simply shifting the manual labor of manufacturing outside the U.S.
Gerald Pellegrini, inventor of a specialized motor drive circuit, has taken steps to challenge the CAFC’s opinion as legally wrong and also bad public policy. Last week, Pellegrini filed a petition asking the U.S. Supreme Court to hear an appeal of the Analog Devices case. This patent infringement lawsuit, originally filed by Pellegrini in 2002, was partially dismissed because Analog’s accused products were manufactured by subcontractors outside the United States and were never physically present in the United States. Pellegrini is asking the Supreme Court to rule that a company who manufactures and sells components of a patented product from the U.S. cannot avoid liability for infringement simply by using outside foundries to fabricate their products.
The statute at issue is 35 U.S.C. Section 271(f)(1). This statute was enacted twenty years ago to prevent U.S. companies from avoiding patents by supplying components for foreign assembly.
Two prominent law professors have called for major reforms in the practice of filing continuation patent applications. In a recent paper, Professors Mark Lemley and Kimberly Moore outlined their view that continuation applications “have led to abuse of the patent prosecution process.” According to Lemley and Moore, “they serve very little useful purpose, and what benefits they confer may be outweighed by their potential for mischief. The world would probably be a better place if continuation applications were abolished.”
Specifically, the professors propose to limit each application to only one continuation application. “Allowing even one continuation application will give the applicant five or six bites at the apple. Surely that is enough.” In addition, the professors would create “intervening rights” for competitors who begin making a patented invention prior to a broadening continuation.
Article: Ending Abuse of Patent Continuations, 84 B. U. L. Rev. 63 (2004).
Comment: Lemley and Moore are formally correct that an applicant always has an opportunity to keep an application alive by filing a continuation. However, as each day passes, the eventual resulting patent becomes less and less valuable because the patent term will be calculated from the filing date of the original parent application. At the limit, a continuation that issues 20 or more years after the original parent was filed is completely unenforceable. Thus, there is a practical 20-year limit on the filing of continuations.
In the ITC, Fuji was granted a general exclusion order based in its patented disposable camera technology. Fuji then sought to enforce the order through the ITC against specific violators.
On appeal to the Federal Circuit, one alleged violator, VastFrame, questioned the ITC’s statutory authority to conduct enforcement proceedings against specific companies based on a general exclusion order. In its decision, the Appellate Panel found that there was no explicit statutory authority for enforcement proceedings, but that such authority was implied in Section 1337(b).
VastFrame next argued that Commission violated § 1337 in not allowing VastFame to present any invalidity defense. Based on statutory language, this time the Court agreed with VastFrame.
Because we hold that the Commission erred by not allowing VastFame to present its invalidity defense based on the clear language of § 1337(c), we do not reach the issue of whether VastFame’s due process rights were violated in this case.
Last week, the U.S. Supreme Court took a step toward accepting Merck’s petition of writ of certiorari by inviting the Solicitor General to file a brief expressing the views of the U.S. Government.
The appeal questions the limits of the safe harbor statute (35 USC 271(e)(1)) that permits drug manufactures to perform the experiments needed to obtain FDA approval of their drugs without incurring liability for patent infringement, even if their activities infringe other’s patent rights.
Some district courts had interpreted the act broadly to protect many types of infringing activities. However, the Federal Circuit, in Integra v. Merck, decided that safe harbor does not apply to early drug development activities. The case is now on appeal to the Supreme Court.
Background: Integra brought this patent infringement suit based on several patents relating to a short tri-peptide segment of fibronectin having the sequence Arg-Gly-Asp. The peptide sequence promotes cell adhesion to substrates in culture and in vivo.
After an enforcement proceeding at the ITC, Fuji appealed.
The Appellate Panel made several rulings on claim construction. Additionally, the CAFC found that the Commission did not abuse its discretion in refusing to issue cease and desist orders against foreign respondents with no inventory in the United States and foreign respondents that did not directly import products into the United States.
Finally, Fuji argued that enforcement of the general exclusion order would be ineffective in light of the Customs Service’s new responsibilities in combating terrorism. The Federal Circuit rejected this arguments out of hand.
With respect to the first point, Fuji’s argument is similar to the argument advanced in the Hyundai case, which we rejected as “a thinly veiled and vaguely expressed dissatisfaction with the certification procedure it expects the Customs Service to devise when it implements the Commission’s order.” 899 F.2d at 1210. As we did in Hyundai, we reject Fuji’s suggestion that the Customs Service is incapable of enforcing the Commission’s general exclusion order effectively because of a lack of expertise and other priorities. To the extent that Fuji’s argument is directed at a perceived lack of resources or competence on the part of the Customs Service, we cannot address that problem through a judicial directive that would, in effect, require the Commission to alter its practices based on our unsupported suspicion that the Customs Service is incapable of performing the duties Congress has assigned to it.
Note: This is a companion case to VastFrame v. ITC (Fed. Cir. 2004).
Bilstad v. Wakalopulos (Fed. Cir. 2004) (03-1528).
Both Bilstad and Wakalopulos claim to have invented a device for sterilizing objects using ionizing radiation. Bilstad provoked an interference proceeding to determine which party was deserving of the patent. The Patent Board (BPAI) rejected Bilstad’s claims for failure to meet the written description requirement because Bilstad had broad claims (genus) based on a more narrow disclosure (species).
On appeal, the Court of Appeals for the Federal Circuit (CAFC) vacated-in-part because the Board “failed to apply the appropriate standard in its analysis of whether Bilstad’s application included sufficient written description to support the count under 35 U.S.C. § 112.”
This court has continued to apply the rule that disclosure of a species may be sufficient written description support for a later claimed genus including that species. . . . If the difference between members of the group is such that the person skilled in the art would not readily discern that other members of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then disclosure of more species is necessary to adequately show possession of the entire genus.
Note: According to USPTO assignment data, the real parties in interest in this case appear to be Baxter International (Bilstad) and USHIO Technologies (Wakalopulos).
The PTO has waived a requirement that drawings filed through the Trademark Electronic Application System (TEAS) have a length and width of no less than 250 pixels and no more than 944 pixels.
According to the rules, submitted images must be in .jpg format having at between 300 and 350 dots per inch. All lines must be clean, sharp and solid, not fine or crowded, and produced a high quality image when copied.
Budde v. Harley-Davidson (Fed. Cir. 2004) (03-1610) (Unpublished Opinion).
William Budde sued Harley-Davidson for infringement of his patent on an electronic fuel injection system for V-twin motorcycle engines. After a long procedural history, the district court determined that the Harley-Davidson’s systems were not infringed, either literally or under the DOE.
The Federal Circuit agreed: “we hold that no reasonable juror could find that Harley-Davidson’s [] EFI systems infringe.”
In other bike news, Russell Ballentine of Onaga Kansas just received Design Patent No. D496,897 for his “Motorcycle Exhaust Muffler.”
Astrazeneca AB v. Mutual Pharmaceutical Co. (Fed. Cir. 2004): Specification king in claim construction, despite the absence of a clear lexicography or disavowal.
By Dr. Baltazar Gomez,
Astrazeneca sued Mutual for patent infringement based on submission of an ANDA to the FDA. The patent in question was Astrazeneca’s U.S. Patent No. 4,803,081 (the “‘081 patent”) directed to extended-release formulations for felodipine using “a semi-solid or liquid nonionic solubilizer.” Mutual’s ANDA was for extended-release felodipine using a co-solvent as a solubilizer. The question analyzed by the CAFC was whether the definition of “solubilizer” in the ‘081 patent takes priority in claim construction or if the ordinary meaning of the term, as determined from sources such as treatises and dictionaries, controls claim construction in the absence of clear lexicography or disavowal.
Both parties agreed that “solubilizer” embraced surface active agents (or surfactants), co-solvents, and complexation agents. But the CAFC accepted Mutual’s argument that the Patentees acted as their own lexicographers and limited the scope of “solubilizer” to surfactants. The ‘081 patent states that “[t]he solubilizers suitable according to the invention are defined below”, and later, states that “[t]he solubilizers suitable…are semi-solid or liquid non-ionic surface active agents.” The ‘081 patent also describes micelle structures as features of the claimed formulation. Astrazeneca argued that these statements referred to preferred embodiments of suitable solubilizers. The CAFC disagreed because the ‘081 patent did not state, for example, “a solubilizer suitable for,” but in fact, the specification stated “the solubilizers suitable for.” The CAFC noted that the language of the ‘081 patent provided a strong signal of lexicography that clearly disavowed nonsurfactant solubilizers.
Thus, the CAFC held that Mutual did not infringe Astrazeneca’s patent because the ‘081 patent limited “solubilizer” to surfactants and overcame any ordinary meaning of the term derived from any other evidence. The CAFC followed a long line of cases that indicate that a patent’s specification is the primary source for determining claim meaning. Where the ordinary meaning of a claim is evident, the inventor’s written description of the invention is relevant only insofar as it provides clear lexicography or disavowal of the ordinary meaning.
Note: Dr. Baltazar Gomez is a law clerk at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Dr. Gomez obtained his PhD in biochemistry from the University of Texas and researched biochemistry and molecular biology as a PostDoc at Cornell. He is now a law student at DePaul.
Underground pipes, such as sewer pipes, are often subject to great stress. As a result, over time, the pipes develop cracks and other structural defects, which can result in leakage. In the past, the only way to rehabilitate a section of underground pipe was to dig up the broken section and replace it. Eric Wood pioneered a process for rehabilitating underground pipe without digging it up. He patented his invention and sued several companies for infringement. The case has been ongoing for nearly fourteen years, and included an appeal to the Supreme Court.
During prosecution, plaintiffs made amendments to the claims. The question in this rehearing was whether the plaintiffs have rebutted the Festo presumption that a narrowing amendment made for a reason of patentability surrenders the entire territory between the original claim limitation and the amended claim limitation. The Federal Circuit found that the presumption had been rebutted. “We reach this conclusion because we conclude that the prosecution history establishes that “the rationale underlying” the amendment narrowing the scope of literal claim coverage from multiple cups to a single cup bears “no more than a tangential relation to the equivalent in question.”
[T]he narrowing amendment in this case was for the purpose of distinguishing the invention over Everson. Insituform made it clear that the difference between its process and Everson was that its process did not have the disadvantage of the Everson process of a large compressor at the end of the liner. There is no indication in the prosecution history of any relationship between the narrowing amendment and a multiple cup process, which is the alleged equivalent in this case. Thus, we hold that plaintiffs have successfully rebutted the Festo presumption by establishing that the amendment narrowing the claimed invention from multiple cups to a single cup was tangential to accused Process 1, which used multiple cups attached at different points along the liner tube. We therefore affirm the judgment of infringement under the doctrine of equivalents.
Accordingly, the Court affirmed the judgment that the accused process infringed the claims under the doctrine of equivalents.
What is the Festo Presumption: During prosecution of a patent application, the Applicant may make amendments that narrow the scope of the claims. Under ordinary circumstances, the court’s will presume that these amendments were made for a reason of patentability, and will not allow any allegations of infringement of “equivalent” structures — because claims to equivalents were relinquished through the amendment. The presumption can be rebutted by showing that the amendment only bears a tangential relation to the equivalent in question.
The PTO has begun holding on-line chats for inventors. Here are some interesting responses. The full transcript is available here.
Q: If I want to meet with my patent examiner, what is the procedure?
USPTO Expert: If you are represented by a patent agent or attorney, they can contact the examiner, and set up an interview generally limited to 1/2 hour in length. Your attorney or agent must attend and you may be present during the interview. However, if you are not represented by a patent agent/attorney (a pro-se applicant) you may directly contact the examiner via contact information provided to you at the end of each correspondence from the Office. For more information, you can browse MPEP 713 – 713.10. The MPEP is available on-line through our website. http://www.uspto.gov/web/offices/pac/mpep/mpep.htm
Q: What is the current USPTO position on software / business method patents?
USPTO Expert: Please see the following link for more information on business methods, http://www.uspto.gov/web/menu/pbmethod/. Software/business methods claims are patentable if they meet the requisite criteria for patenting as set forth in the patent statutes.
Q: What’s the estimated time that will take for a patent on a product to be approved once I file for a patent at the USPTO?
USPTO Expert: The length of time will depend on the specific technology, it generally takes about 18 months to receive a first written opinion. Some technologies are experiencing backlogs and therefore it may take longer. On average, it takes about 27 months for a patent to issue after its filing.
Q: How long is the waiting period for a fairly simple patent pending application for a design patent?
USPTO Expert: With our current back log in designs, the average waiting time is eleven or twelve months to first Office action.
