It is Labor day in the U.S. Enjoy a day of rest.
2004
CAFC refuses to examine Request for Comments (RFCs) when defining ordinary meaning of claim terms
Many Internet standards are initially developed in papers known as Requests for Comments (RFCs). A purpose of an RFC is to collect propose a common language for facilitating development and to collect commentary. Often, however, the RFCs become the authoratitive document describing a particular function. For example, RFC-1738 was created by Berners-Lee in 1994 and is thought of as an authoritative, unbiased source relating to the meaning of the term “URL.” The Federal Circuit, however, has refused to allow RFCs to take an authoritative position in claim construction. ACTV v. Disney, 346 F.3d 1082 (Fed. Cir. 2003). In ACTV, the Appellate Court differentiated RFC documents that attempt to shape meaning of terms from dictionaries that reflect established usage.
Juicy Whips up on Orange Bang: CAFC Affirms Entire Market Value Rule
Juicy Whip v. Orange Bang (Fed Cir. 2004)
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
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
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
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.
Patent Infringement: Recognition of a problem does not render the solution obvious
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
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
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.
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.
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.
Links:
Opinion;
Dale Ford’s Commentary
Handcuff Patent: Nike and Marshall Gobuty
Marshall Gobuty (MGI) has reportedly sued Nike Inc. for infringing MGI’s patented “handcuff” technology. According to USPTO’s office of assignment recordation, MGI owns three patents on this type of hand-covering apparel. (e.g., U.S. Patent No. 6,035,441). The patents claim priority to a 1995 application that is now abandoned.
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.
VACATED and REMANDED
PTO Board Places Enablement Burden on Examiner
Ex parte FALSAFI (BOARD OF PATENT APPEALS AND INTERFERENCES) (2004) (Unpublished)
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