January 2005

palmOne Comes Out on Top in NCR’s Patent Infringement Appeal

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NCR v. Palm and Handspring (now collectively known as "palmOne") (Fed. Cir. 2005).

by Marcus Thymian

In an unpublished decision, the Federal Circuit affirmed the Delaware District Court’s claim construction, essentially putting to rest NCR’s patent infringement suit against palmOne for its popular Palm and Handspring handheld devices.  NCR’s Patent Nos. 4,634,845 and 4,689,478 are directed to a handheld device and system employing such a device.  The claims generally call for a handheld device having discrete display elements overlapped with discrete switches, along with control means and circuitry for interfacing with another device.

The Federal Circuit focused on the "plurality of discrete switches" and the closely related "means for entering data" elements.  In an attempt to read on palmOne’s resistive touchscreen technology, NCR argued that the "plurality of discrete switches" should be construed as "more than one individually distinct programmed device for indicating that one of alternative states or conditions have been chosen."  The Federal Circuit rejected this "programmed device" definition, and instead adopted the district court’s "physical switch" definition:  "two or more distinct and separate manual or mechanically actuated devices for making, breaking, or changing the connections in an electric circuit."  It based its decision on the claim language (which contradicted NCR’s assertion that software integrated into the plurality of switches, rather than the "control means," handled variable user instructions), and the patent specifications, which showed an array of switches made of "a few plastic-film layers and strips of conductive material."  Similarly, the Federal Circuit agreed that the "means for entering data," a means-plus-function element under 35 U.S.C. § 112 ¶ 6, was limited to the physical switches set forth in the patent specifications.

Marcus Thymian is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  Mr. Thymian is experienced in planning, creating, enforcing, and defending against patent portfolios, and was part of the team from McDonnell Boehnen Hulbert & Berghoff that represented Palm (now palmOne) before the Delaware District Court and on appeal.  [Marcus Thymian’s Bio]

LINKS:

  • [Link] Ina Fried has a CNET report on the case;
  • [Link] 2003 CNET Report on the district court case won by Palm.

eBay infringement decision expected

There is an interesting article in the Post (free subscription) about Thomas Woolston, creator of the MercExchange and Patently-O Reader.  Woolston won a $35 million patent infringement suit against eBay that is now on appeal.  According to the article he and I have the same schedule:

Every morning at 11, Woolston stops whatever he’s doing, sits at his computer and clicks "refresh" on the Federal Circuit Court of Appeals Web site.

Woolston checks the Federal Circuit’s website because the court is expected to release its decision in the eBay case within the next few weeks.  I check the website so that I can provide the most up-to-date news on patent cases.

Looming specter of litigation creates sufficient uncertainty for declaratory judgment action

Electronics for Imaging v. Coyle (Fed. Cir. 2005) [pdf]. 

By Dennis Crouch

EFI makes controllers for network printing.  Coyle obtained patents on his network printing inventions and informed EFI that it was (allegedly) violating his patent.

Coyle began to pressure EFI on an almost daily basis, threatening to drive EFI out of business. EFI alleges that Coyle repeatedly warned that he would bring multiple lawsuits, stating that “we’ll sue all of your customers” and “bad things are going to happen.”  Coyle even identified specific attorneys and law firms in support of his litigation threats.

EFI sued for declaratory judgment.  The district court, however, dismissed the action. EFI appealed to the Federal Circuit.

A declaratory action allows a party “who is reasonably at legal risk because of an unresolved dispute, to obtain judicial resolution of that dispute without having to await the commencement of legal action by the other side.” 

The district court had dismissed the declaratory judgment action because it determined that EFI did not have any uncertainty about Coyle’s intention to sue (Coyle stated flatly that it he would sue).  Additionally, the court found that EFI was not uncertain about the strength of its legal position.

On appeal, the Federal Circuit reversed, disagreeing with the district court’s interpretation of "uncertainty."

The proper inquiry should not have been whether a party is “certain” that its legal position and defense theories are sound, because litigation is rarely “certain,” even if one is confident of one’s position. When a party is threatened … there are other uncertainties, including whether there will be legal proceedings at all, not just whether one will prevail. There is the uncertainty whether one will have to incur the expense and inconvenience of litigation, and how it will affect the threatened party’s customers, suppliers, and shareholders. Reservation of funds for potential damages may be necessary. … “Uncertainty” in the context of the [Declaratory Judgment] Act refers to the reasonable apprehension created by a patentee’s threats and the looming specter of litigation that results from those threats.

Next step in open source: Book Editing

[Link] Professor Larry Lessig’s popular book Code and Other Laws of Cyberspace has been out for a few years now.  With this book, Lessig essentially created a new language for discussing the interrelation between law and cyberspace. 

Professor Lessig has now decided to update the book and republish as a second edition.  However, rather than simply using his own knowledge, Lessig has decided to edit the book on-line as a Wiki.  He is recruiting Chapter Captains to take charge of each chapter.  The book will be published in the fall — Lessig intends on donating the proceeds to the Creative Commons.

CAFC: Design Patent Infringement Opinion Need Not Mention Every Detail of a Patented Design

Brooks Furniture v. Dutailier Int’l. (Fed. Cir. 2005) (03-1379) [pdf].

By Jennifer Swartz

Brooks Furniture brought a declaratory judgment action in Tennessee District Court after receiving a cease and desist letter from Dutailier International, the assignee of the design patent for “Rocking Chair Trim.”  Although the cease and desist letter sent to Brooks Furniture was based upon opinions of counsel, officers, and outside experts, the district court found that the letter had been sent in bad faith by Dutailier because the opinions Dutailier relied upon did not discuss the chair back’s specific feature of a “trailing edge descending in a gentle ‘s’ curve.” Accordingly, the lower court deemed the case exceptional and awarded attorney fees. 

The Federal Circuit vacated the award, rejecting the lower court’s narrow view of the opinion’s reasonableness:

The fact that an infringement opinion may not have mentioned every detail of the patented or the accused design does not necessarily render the opinion wrong or unreliable.

As the test for a design patent’s infringement is “substantial identity,” not every aspect of the design need be identical, and thus an opinion need not consider every aspect of a design to be reasonable. 

Jennifer Swartz is an associate at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago.  Ms. Swartz has experience in various aspects of intellectual property litigation including patent and trademark infringement, and trade secret violations.  [Brief Bio]

Patent Tips for a Small Business with Grand Ideas

Many small business owners have thought of becoming more aggressive in protecting their intellectual property rights.  Although attorney’s fees are always expensive, patent rights have become more important with each passing year. For many companies, a patent portfolio serves as a type of insurance that has small chance of having a great potential upside. 

Here are a few tips for those getting their feet wet.

1. If someone at your company has an idea that may be patentable, act quickly. You can lose rights by disclosing the idea publicly or by offering it for sale before filing for a patent application.  This type of disclosure can even occur before you make any engineering drawings or working models.

2. Try to keep records that help establish the novelty of the invention and the date of conception.  This evidence may be important at a later date — especially if there is any delay in filing for patent protection.

3. Before you hire a patent attorney, bone up on the subject — Read the book “Patents and How to Get One.” It is very short and is a great book to read on your next business trip.

4. Retain a patent attorney to discuss your issues, to help you decide whether to file any patent applications, and then to help with the preparation and prosecution of the patent applications.  Even if you are only filing a single patent application, the relationship with your patent attorney will likely last many years.  Thus, it is important to find a patent attorney and law firm that you can trust and that are comfortable with.  Get references.

5. When thinking about your potential inventions, remember that you can obtain patents on devices as well as methods.  Methods, for example, may include methods of manufacturing an item, methods of doing business, methods of using a device, and process flow methods that describe the flow of data in a piece of software.  (Merely a few examples.)

These tips are valid for almost any company that is starting down the road of patenting.  However, every case is different.  You should raise any concerns with your attorney. 

Once you have applied for several patents, you will then begin to think about patent portfolio management, licensing and other forms of patent enforcement. However, that discussion is for another day.

Federal Circuit Gives PTO Free Rein To Demand Information Beyond That Defined By Section 1.56 As Material to Patentability

Star Fruits S.N.C. and Institute of Experimental Botany v. United States and Department of Commerce (Fed. Cir. 2005)

By Alison Baldwin

What appears on its face to be a strictly procedural case actually raises a few interesting policy issues.

Procedurally, Star Fruits filed a U.S. Patent Application directed to a variety of peach tree.  In a subsequent office action, the examiner included a "Requirement For Information Under 37 C.F.R. 1.105" that included a request for "any information available regarding the sale or other public distribution of the claimed plant variety anywhere in the world" and "copies of the application, published proposed denomination and published Breeder’s Right grant."  Star Fruits declined to provide the information requested under 37 C.F.R. 1.105 on the grounds that the material requested was "not material to patentability of the new variety."  Because Star Fruits did not comply with the Examiner’s request, the Office issued a Notice of Abandonment.  Star Fruits petitioned the Director pursuant to 37 C.F.R. 1.181 and the petition was denied.  Subsequently, Star Fruits appealed to the district court under the Administrative Procedure Act.

In addressing 37 C.F.R. 1.105, the Federal Circuit has interpreted the rule to include "a zone of information beyond that defined by section 1.56 as material to patentability, and beyond that which is directly useful to support a rejection or conclusively decide the issue of patentability."  The court held that, so long as the request from the examiner for information is not "arbitrary or capricious," the applicant must comply with the request.

Furthermore, the Federal Circuit noted that if Star Fruits believed that the requested information was going to be used to support a wrongful rejection under 35 U.S.C. 102, it should have provided the information and then subsequently argued against the wrongful use.  The court held that Star Fruits had no right to object to the potential use of the information. 

Interestingly, in her dissenting opinion, Judge Newman argued that Star Fruits did exactly what it was supposed to do, when faced with an agency’s change in law and practice.  Star Fruits was challenging the PTO’s 2001 change in practice holding that a foreign sale or use of a plant that has foreign Breeder’s Rights registration may bar United States patentability of that plant.  This information requested by the examiner was for support for a rejection based upon this policy change.  This internal change in practice is arguably an attempt by the PTO to broaden 35 U.S.C. 102 without the required notice-and-comment rulemaking procedures.  Judge Newman criticized the panel for ignoring the real issue of law underlying this dispute. 

NOTE: Alison Baldwin is a partner at McDonnell Boehnen Hulbert & Berghoff.  Her patent litigation experience has covered a diverse range of topics, from recombinant DNA technology to digital television. In addition to her law degree, Ms. Baldwin holds degrees in biochemistry and plant pathology and has conducted research on the molecular mechanisms involved in plant disease resistance. [Brief Biography].

Pew Trust Concludes that Blogs are Now Mainstream

The Pew Internet & American Life Project Has released a memo on "The state of blogging."  Some findings from their November survey of internet users:

  • By the end of 2004 blogs had established themselves as a key part of online culture.
  • More than 8 million Americans have created a blog.
  • 27% of internet users read blogs — a 58% jump from February 2004.
  • 12% of internet users have posted comments on someone else’s blog.
  • Over half of all bloggers are over 30 years old.

Claim Construction Showdown set for February 8, 2005.

[Link] The en banc rehearing of Phillips v. AWH is scheduled for Tuesday, February 8, 2005 at 10:00 a.m. in Washington DC.  It is expected that the outcome of this case will help define the mechanics and legal basis for patent claim construction.

[Link] More information on the case, and a review of the briefs filed can be found here.  I reviewed the major arguments common to the various briefs in the December 2004/January 2005 edition of PatentWORLD magazine (Issue 168).

 

 

hINV Researchers Invalidated Patent Application Based on their Own Publications

In re Crish (Fed. Cir. 2004).

Identification of nucleotide sequence for known plasmid does not render nucleotide sequence novel.

by Donald Zuhn

In an appeal from a decision of the PTO Board, the Federal Circuit affirmed the rejection of claims directed to purified DNA molecules having promoter activity for the human involucrin gene (hINV) as unpatentable under 35 U.S.C. § 102(b).

After isolating and sequencing the promoter sequence for hINV in the plasmid pSP64lI-3 H6B, Appellants pursued claims directed to specific portions of the promoter sequence having promoter activity. The claims were rejected under § 102(b) as being anticipated by one of Appellants’ own publications, disclosing the approximate size and structure – but not the sequence – of the hINV promoter, and by a second publication, disclosing protein-binding sites on the hINV promoter. In Appellants’ own publication the plasmid pSP64lI-3 H6B was used to determine the structure of the hINV promoter, while in the second publication the plasmid pSP64lI-3 H/Hc was used to identify protein-binding sites on the hINV promoter. Appellants appealed the Examiner’s final rejection to the Board.

Appellants first asserted that even if the publications cited against their application used plasmids containing the same hINV promoter region, other workers had sequenced the hINV promoter region in the plasmid pSP64lI-3 H6B, and had obtained a sequence that differed significantly from the promoter sequence described in Appellants’ application. In addition, Appellants asserted that because neither prior art publication specifically disclosed the nucleotide sequence recited in their application, neither publication could anticipate their application. The Board affirmed the Examiner’s final rejection, concluding that Appellants had failed to demonstrate that the plasmids used in the prior art publications possessed hINV promoter sequences that differed from the sequence described in Appellants’ application. The Board also determined that although neither prior art publication disclosed the hINV promoter sequence, the plasmids described in each publication necessarily possessed an hINV promoter sequence that was identical to the sequence described in Appellants’ application.

In affirming the Board’s decision, the Court determined that the Board had reasonably concluded that the plasmids used in Appellants’ prior publication and in Appellants’ application were identical. The Court next concluded, in addressing Appellants’ first assertion, that it was irrelevant whether other workers had obtained a different sequence for the promoter region of hINV since Appellants could not rely upon the inability of another worker to correctly sequence the promoter region of the hINV gene from plasmid pSP64lI-3 H6B when they had accurately sequenced the promoter region themselves. Finally, with regard to Appellants’ second assertion, the Court determined that “[Appellants’] characterization that the pending claims cover a novel DNA sequence having promoter activity, whereas the references disclose only the starting material plasmid, is unsound,” since “[t]he starting material plasmid necessarily contains the gene of interest, including the promoter region.”

NOTE: This post was written by patent attorney Donald Zuhn, PhD. Don is a true expert in cutting edge biotech patent law and practices both prosecution and litigation at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. [Brief Biography].

University of Illinois fails to secure soverign immunity in plasma screen patent dispute

Competitive Technologies and the University of Illinois v. Fujitsu (Fed. Cir. 2005).

In June 2004, the Federal Circuit dismissed the University of Illinois appeal for sovereign immunity under the Eleventh Amendment.  In that opinion, the Court found that the appeal lacked proper jurisdiction because the district court’s decision to not allow sovereign immunity was not a "final decision."

Now, the Federal Circuit has denied the University’s request for a rehearing. Specifically, the University argued that the cases relied by the Federal Circuit had been undermined by later case law.  The Federal Circuit disagreed:

As we have held, the decisions of the Supreme Court . . . make clear that a non-final resolution does not satisfy the Cohen test. Thus, the application of the first prong of Cohen in Agent Orange has not been undermined by subsequent decisions of the Supreme Court or other courts of appeals.

Petition for Rehearing Denied.

Honorable Paul R. Michel becomes Chief Judge

As expected, the Honorable Paul R. Michel has become Chief Judge of the United States Court of Appeals for the Federal Circuit.

The United States Court of Appeals for the Federal Circuit announces that Circuit Judge Paul R. Michel assumed the duties of Chief Judge of the court on December 25, 2004. Judge Michel was appointed to the court by President Ronald Reagan in December 1987. Complete biographical information about Chief Judge Michel may be found on the biographies page of the Federal Circuit’s Web site. Circuit Judge Haldane Robert Mayer relinquished the duties of Chief Judge on December 24, 2004, after having held the position for seven years.

Notably, the Federal Circuit handles all appeals in cases that arise under the U.S. Patent Act.

India Greatly Increases Patent Coverage

Chandra Joshi, an Indian associate of mine filled me in on the recent amendments to Indian patent law. The amendments not only make Indian law TRIPs compliant, but also rationalize the procedures for patent prosecution.  These changes now allow patents on products and remove provisions relating to EMRs (Exclusive Marketing Rights).

India, as you know, had so far permitted Patents only for processes and not products. With the new amendment to the Patent Act, it would now be possible to obtain Patents for product patents in Pharmaceuticals and Agro Chemicals. Under the Product Patent regime no new–use Patents would be granted.

The ordinance seeks to strengthen opposition proceedings by allowing for both pre-grant and post-grant opposition. The ordinance also seeks to simplify and rationalize the time-frame for process of patents. The time limit for giving requests for examination has been reduced to 36 months from 48 months earlier. Security provisions will also be tightened particularly for dual-use patent applications. Such patents will now be scrutinized by the patent office.

Further, software would continue to be copyright protected, embedded software that has technical applications can now be patented.

DDC Comment: I expect the change to have its greatest impact in the pharmaceutical area — up to now, India has been a pharma maverick — producing generics almost at-will.