2004

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

Patent, Patent Cases 2004

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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

Patent, Patent Legislation

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

Patent

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
blackberry lawsuit
disc golf
acacia patent
ntp nokia
patent cases
IP Firms

— Dennis Crouch

SEARFOSS v. PIONEER

Patent, Patent Cases 2004

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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

Patent, Patent Cases 2004

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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.”

TI Group Automotive Systems v. VDO

Patent, Patent Cases 2004

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TI Group Automotive Systems v. VDO (Fed. Cir. June 30, 2004) [PDF].

TI Group is an automotive supplier that makes fuel tanks, fuel pump assemblies, and complete fuel tank systems. (U.S. Patent 4,860,714). TI Group has sold over thirty million fuel pump assemblies that embody the ’714 patent. VDO began selling an assembly that “were essentially drop-in replacements.”

After a jury verdict of willful infringement, the district court granted a JMOL in VDO’s favor based on non-infringement but denied VDO’s JMOL motion for invalidity.

Because we affirm some of the district court’s claim constructions, and because as to those limitations TI Group points to no evidence supporting the jury’s finding of infringement, we affirm the district court’s grant of VDO’s JMOL motion with respect to infringement. However, because we have broadened a number of the district court’s claim constructions, thus affecting the invalidity analysis, we vacate the district court’s denial of VDO’s JMOL motion with respect to invalidity and remand that issue for further proceedings consistent with this opinion.

Competitive Tech. v. Fujitsu: No Jurisdiction for Plasma Screen Appeal

Patent, Patent Cases 2004

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COMPETITIVE TECHNOLOGIES, INC., and UNIVERSITY OF ILLINOIS v. FUJITSU LIMITED and FUJITSU HITACHI PLASMA DISPLAY LIMITED (Fed. Cir. June 30, 2004).

In a patent infringement suit against Fujitsu over plasma screen technologies, the University of Illinois sought to have some of Fujitsu’s counterclaims dismissed on Eleventh Amendment sovereign immunity grounds. (U.S. Patent 4,866,349 and 5,081,400). The Northern District of California court denied the University’s motion to dismiss the claims. U of I appealed.

Without reaching a decision on the merits, the Federal Circuit (DYK, MAYER, GAJARSA) dismissed the University’s appeal for lack of appellate jurisdiction.

The judgment of the district court is not final under 28 U.S.C. § 1291, and the district court has not issued the certificate required by either Federal Rule of Civil Procedure 54(b) or 28 U.S.C. § 1292(b).

The appellate panel found that the district court’s decision on the issue of sovereign immunity did not “conclusively determine” that question. Thus, the case did not fall under the limited Cohen exception that could have created a jurisdictional basis.

EFF hopes to “bust” these 10 patents

Articles and Publications, Patent

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The EFF has released the list of patents that they plan to challenge as part of their “patent busting project.” According to Wired,

As part of its Patent Busting Project, the EFF in mid-June began soliciting the public for submissions of patents that were both potentially invalid and used to stifle online innovation. The organization received nearly 200 suggestions, 10 of which it will now formally ask the U.S. Patent and Trademark Office to re-examine.

Acacia Technologies tops the list of offenders. Recently, Acacia sued a number of media technology companies for infringement of its patents that allegedly cover digital streaming technology. (Read more about Acacia here).

Patent Infringement: No summary judgment of anticipation based on prepared model

Patent, Patent Cases 2004,

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NYSTROM v. TREX Co. (Fed. Cir. June 28, 2004).

In an appeal of a summary judgment in a patent infringement case involving specially manufactured boards for decking, the Federal Circuit reversed and remanded. (US Patent 5,474,831).

Because the district court erred in its constructions of the claim terms “board,” “manufactured to have,” and “convex top surface,” the district court’s grant of summary judgment of non-infringement of claims 1-15 of the ’831 patent is reversed.

The panel also reversed the district court’s judgment of invalidity.

The district court’s acceptance of TREX’s invalidity arguments based on models made from drawings contained in the Zagelmeyer patent was incorrect. The basis of the district court’s summary judgment of invalidity was a model that TREX developed based on that reference, and not on drawing dimensions or a written disclosure of dimensions contained directly in the patent itself. Under the principles set forth in our prior cases, the speculative modeling premised on unstated assumptions in prior art patent drawings cannot be the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art. Thus, we conclude that the district court erred in granting summary judgment of invalidity based on TREX’s models.

In dissent, Judge Gajarsa found that the term “board” should be limited to wooden boards.

Computerized Patent Bar Exam

Patent

The patent office has adopted final rules for the computerized patent registration examination. (69 FR 35428).

The patent bar has a historically low passing rate. Thus, one interesting aspect of the new rules is that those who fail the examination will be allowed to re-take the exam within thirty days rather than waiting six months, as has previously been the case.

Providing the examination in this manner will benefit persons seeking registration by enabling them to apply at any time, schedule the examination at a location and date convenient to them, and receive their results more quickly.

Registration for the examination is now available here.

Patent Lawyer

Articles and Publications, Patent

The Association of Patent Law Firms (APLF) recently published the inaugural edition of The Patent Lawyer. The magazine is available online (PDF) and has the rare combination of interesting topics and excellent writing.

This edition includes articles on patenting issues related to nanotechnology inventions; reexamination strategies; as well as EU piracy issues. There is also a profile article on the firm, McDonnell Boehnen Hulbert & Berghoff LLP (MBHB). The four page article, entitled “A Path of Its Own: Chicago’s McDonnell Boehnen Rewrote the Management Rules,” chronicles MBHB’s eight year rise from a small start-up firm to a major player in intellectual property legal services. (pp. 10-13).

Does your company have intellectual property issues and need the advice of a patent attorney?

Hockerson-Halberstadt v. JSP and FUBU

Patent, Patent Cases 2004

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Hockerson-Halberstadt, Inc. v. JSP Footware, Inc. and FUBU The Collection (Fed. Cir. June 23, 2004) (not citable as precedent)

(RADER) The appellate court reversed a summary judgement against the patentee, holding that the plaintiff had met its section 287 notice obligation by sending a letter to a third party who was thought to control manufacture of the patented stabilized athletic shoes. (U.S. Patent 4,322,896).

In dissent, MICHEL argued that the section 287 notice requirement should not be satisfied by giving notice to a third party that has no corporate relationship with the defendant except for a trademark license.

How pharmaceutical patent rights affect access to medicine in poor nations

Articles and Publications, Patent

A new article published in Health Affairs studies the “relationship between patents and access to essential medicines.” Cambridge researcher Amir Attaran found that patenting is rare for the vast majority of products on the World Health Organization’s (WHO) list of essential medicines.

Only seventeen essential medicines are patentable, although usually not actually patented, so that overall patent incidence is low (1.4 percent) and concentrated in larger markets.

Attaran argues that his results show that the policy dialogue relating to patent protection in developing countries is often based on mistaken premises.

[P]atents very infrequently block access to generic versions of essential medicines. For the sixty-five countries we studied, where the majority of people in the developing world live, patents and patent applications exist for essential medicines 1.4 percent of the time (300 instances out of 20,735 combinations of essential medicines and countries). However, this overstates the frequency with which patents totally block access to generics, because it is only a subset of patents that are absolutely fundamental and that generic manufacturers can never circumvent (normally, a patent on the active pharmaceutical ingredient, and for medicines containing two such ingredients, a patent on their co-formulation). By this standard, there are 186 fundamental patents or applications, or 0.9 percent of the total. Thus, there are no patent barriers to accessing generic essential medicines in 98.6 percent of the cases we studied, which we stress is an overall probability and not prognostic in any specific case.

Update from Amir Attaran: I think you must also mention that with only 17 patents at issue, the pharma industry lacks vision on how to remove the apprehension that patents have negatively affected and are negatively affecting patients’ ability to access medicines in these few cases. Most of the patented meds are for AIDS, and so they attract disproportionate attention.

Microsoft patents human circuit

Articles and Publications, Patent

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Microsoft has patented a network that uses the “body of a living creature” as a data bus and power supply for communication between two electronic devices. (U.S. Patent 6,754,472).

According to the abstract,

Methods and apparatus for distributing power and data to devices coupled to the human body are described. The human body is used as a conductive medium, e.g., a bus, over which power and/or data is distributed.

The patent includes the use of pulsed AC or DC to power miniature wearable devices.

100 Hz signal may be used to power a first device while a 150 Hz signal may be used to power a second device. Digital data and/or other information signals, e.g., audio signals, can be modulated on the power signal using frequency and/or amplitude modulation techniques.

For instance, a miniature speaker may be located within an earring while an audio input microphone may be attached to a bracelet.

(The drawing is from the face of the patent).

ProstaScint (R) Patent Noninfringement Holding Reversed

Articles and Publications, Patent

Goldenberg and Immunomedics, Inc v. Cytogen, Inc. and C.R. Bard, Inc. (Fed. Cir. June 23, 2004)

(GAJARSA) In an appeal of a summary judgment of noninfringement, the Federal Circuit upheld the district court’s claim construction and summary judgment of no literal infringement. However, the appellate panel reversed the lower court’s summary judgment of noninfringement based on the doctrine of equivalents (DOE).

The patent at suit issued in 1984 and involved tumor localization and antigen therapy. (U.S. Patent 4,460,559). Cytogen and Bard’s ProstaScint (R) products (used to image the extent and location of prostate cancer) allegedly infringe this and other patents held by the plaintiffs.

Holding:

Summary judgment of noninfringement under the doctrine of equivalents is appropriate if “no reasonable jury could determine two elements to be equivalent.”

The district court explained that, under Dey, statements from the ’744 patent could not create prosecution history estoppel for the ’559 patent. For the same reasons stated above, we agree with the district court’s conclusion on this point. Despite the lack of estoppel, however, the district court still found that Immunomedics “had not met the requirements of the ‘function-way-result’ test.”

The district court appears to have viewed the world of antigens as consisting of two distinct categories—those that are intracellular and those that are on the cell surface—and concluded that antigens falling in different halves could not be equivalents as a matter of law. Transmembrane antigens, however, appear to be a category of their own, and are not susceptible to the black and white categorization made by the district court. As a “grey” category, transmembrane antigens are not addressed by the ’559 patent or its prosecution history and might be equivalents to either of the categories identified by the district court if such a finding was made. See generally Warner-Jenkinson, 520 U.S. at 40.Thus, the court remanded for further proceedings.

In dissent, J PROST would have allowed the claim term “intracellular marker substance” to encompass portions of an antigen located inside a cell.

Google’s Amended SEC Filing Discusses Overture Lawsuit

Articles and Publications, Patent

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Google has amended its SEC filings and has commented on Yahoo’s Overture patent infringement suit. (U.S. Patent 6,269,361).

Overture Services (now owned by Yahoo) has sued the [Google], claiming that the Google AdWords program infringes certain claims of an Overture Services patent. It also claims that the patent relates to an Overture Services own bid-for-ad placement business model and its pay-for-performance technologies. The Company is currently litigating this case. If Overture Services wins, it may significantly limit the Company’s ability to use the AdWords program, and the Company also may be required to pay damages.

Google plans to continue to “rigorously defend this lawsuit.”

Overture’s patent, filed in 1999, covers a “system and method for influencing a position on a search result list generated by a computer network search engine.”

Martin Schwimmer discusses Google’s potential trademark problems here. If “googling” becomes a generic term, then it would lose its power as a trademark.

Lerner Jaffe Book

Articles and Publications, Patent

Professors Lerner and Jaffe’s new book How our Broken Patent System is Endangering Innovation and Progress and What to do about It is due out this Fall.

In the book, Lerner and Jaffe will make the case that the approval rate for patent applications is absolutely too high. “In many cases it appears that a determined patentee can get almost any award he seeks,” the authors say.

(Synopsis)