November 2005

Federal Circuit in Chicago

Patent

CAFC Goes on Tour to Chicago

Image014The Court of Appeals for the Federal Circuit (CAFC) will be holding court in Chicago the week of November 8, 2005.  This provides a great opportunity for students and practitioners who rarely get to see the CAFC in action. 

Schedule (CAFC patent cases):  

Tuesday, November 8, 2005, 10:00 A.M., University of Chicago Law
       04-1609   GOLDEN BLOUNT V RBT H PETERSON CO
Tuesday, November 8, 2005,  2:00 P.M., DePaul Law
       05-1113   VIAD CORP V STAK DESIGN (SETTLED)
Wednesday, November 9, 2005, 10:00 A.M., U.S. District Court
       05-1122   OMEGA ENGINEERING V RAYTEK CORP
Wednesday, November 9, 2005,  2:00 P.M., Chicago-Kent Law
       05-1126   GRAYZEL V ST. JUDE MEDICAL
Thursday, November 10, 2005, 10:00 A.M., Northwestern Law
       05-1144   HARRAH’S V STATION CASINOS
 
ScreenShot008I plan to attend the Golden Blount v. Peterson hearing that will be held in the Kirkland Courtroom at the University of Chicago Law School. (Less than two blocks from my home). The case involves an assertion of infringement of Golden Blount’s patent on a gas fireplace.

This is the second appeal in Golden Blount. In the first round, the Federal Circuit remanded a finding of infringement because the District Court’s decision was too “sparse” and thus “insufficient under Rule 52(a).”

On remand, the District Court entered a new order against the defendant.  However, that order is being challenged once again.

Golden Blount Inc. v. Robert H. Peterson Co. (2004-1609)

Link: The Chicago Intellectual Property Alliance (CIPA) has more information on the other cases.

New IP Blogs

Patent

There are a few new IP blogs that may pan out as great resources.

  • Cory Hojka, who had several guest posts here at Patently-O has started CopyBites, a blog dedicated to issues of Copyright law.
  • Professor Raymond Nimmer has started a blog on IP Licensing. Link.
  • The Hope firm in Atlanta has started the Patent Prosecution Blog. Link.
  • The Weintraub firm in Sacramento has started the IP Law Blog. Link.

Of course, these will not replace the old standby sites anytime soon.  Here are some of the IP Blogs that I visit regularly (in random order):

Hollywood Proposes That USPTO Regulate Technological Copyright Management

Patent, Patent Legislation

The recording industry is moving quickly toward technological ways to prevent digital copying and thus promote digital rights management (DRM).  One recognized vulnerability is the “analog hole” or more blandly, the analog reconversion issue. 

Analog Hole: When the information is converted to a perceptible analog form, there are no restrictions on the resulting analog signal, and the content can be captured back into digital form with no restrictions. (from Wikipedia).

Oddly, the Hollywood endorsed Analog Content Security Preservation Act Of 2005 would transform the Patent Office (USPTO) into a regulatory agency by giving the agency the job of enforcing a Copy Generation Management System for Analog (CGMS-A).

Read the proposed changes to 35 U.S.C. 101.

 

Chief Judge Michel Calls Meeting of the CAFC Bar

Conference or CLE, Patent

Chief Judge Michel of the Court of Appeals for the Federal Circuit has invited members of the bar to attend a discussion at the court on Tuesday, November 15, 2005 at 2:00 pm in Courtroom 201.

Judge Michel will discuss several topics as part of his effort to continue to build a better relationship between the bar, academics, and the Court.  Planned topics include: effective appellate advocacy, the attorney’s role as an officer of the court, and the court’s internal process.

The event will be held in the Howard T. Markey National Courts Building, 717 Madison Place, NW, Washington, D.C. There is no charge and all are welcome. Those interested in attending are requested, however, to RSVP by sending an e-mail to webmaster@cafc.uscourts.gov.

CAFC: Indefiniteness Requires “Severe” Defects in the Claims

Patent, Patent Cases 2005

InfringingProducts010Fisher-Price v. Graco (Fed. Cir. 2005) (NOT PRECEDENT).

Fisher-Price holds a patent on a collapsible infant swing and sued Graco for infringement. The primary asserted claim reads as follows:

6. An infant swing comprising:
   an upward extending frame support post;
   a swing arm pivotally coupled to an upper end of said frame support post and extending in a downward direction from said upper end of said frame support post;
   a seat coupled to said swing arm and having an upper seating surface;
   said swing arm and said frame support post defining a reconfigurable swing area there between;
   a shield coupled to said seat and extending upwardly from said seat and disposed between said reconfigurable swing area and said seating area.

After a Markman hearing, the district court found several limitations of the claim indefinite (italicized) and thus invalid.

On appeal, the CAFC explained that a defect in a claim must be “severe” before it will be invalidated as indefinite. Here, the CAFC reversed because the “patent is not complex; it is readily understood by both the expert and layperson [and] the words used in the limitation are simple, with well-known ordinary meanings [that] can be construed without great difficulty, even if, as Graco points out, it is not mentioned in the specification.”

Finally, regarding “said seating area,” Graco argued that the term was indefinite because it had no antecedent basis in the claim.  Although not rejecting the legal basis of this argument, the CAFC found an implied antecedent basis in the term “upper seating surface.” 

Practical Tips For Prosecuting Trans-Border Inventions

Articles and Publications, Patent

A new paper in the AIPLA Quarterly Journal provides a number of practical tips for dealing with inventions or infringing acts that naturally cross international borders.  The authors (Mark Lemley, David O’Brien, Ryan Kent, Ashok Ramani & Robert Van Nest) call these “divided infringement claims” and focus on the recent Federal Circuit decisions in Research-In-Motion v. NTP, Eolas v. Microsoft, AT&T v. Microsoft, and Pellegrini v. Analog Devices.

Prosecution Strategies:

  1. Attempt to draft unitary claims — i.e., claims that are not susceptible to international distribution.
  2. Claim devices and systems, not just methods — in RIM, the CAFC taught that system claims are much stronger on an international level.
  3. Draft claims that would infringed under the importation or domestic sale provisions of 271(g).
  4. Keep continuations alive.
  5. File foreign.

The paper also delves into a number of ex post litigation strategies such as filing suit at the ITC and advocating for a claim construction that avoids international division. 

Great work!

CAFC reverses jury finding of invalidity and noninfringement.

Patent, Patent Cases 2005, , , ,

InfringingProducts009Callicrate v. Wadsworth (Fed. Cir. 2005).

Callicrate sued Wadsworth for infringement of its patented bull castration tools. After a trial, a jury found all of the claims anticipated, obvious, and not infringed.  On appeal, the CAFC disregarded the jury verdict and reversed.

Infringement:  The defendant admitted that its devices include all of the claim elements. Based on that admission, the CAFC determined that the jury had “no basis” for finding no infringement and that there is “no reason for a new trial.”  (Although each element was included, the defendant argued that the components were “not connected in the particular manner recited in the claims.  The CAFC does not seem to have addressed that point specifically since the jury instructions asked simply whether “each and every element” of the claim was included).

Enabling Disclosure: Callicarate’s patent claim priority to an earlier patent, but could be invalidated if they were shown to be not fully enabled by the earlier patent.  The district court found that the earlier patent did not contain adequate disclosure to support the claimed mechanism because (1) the only disclosure of the claimed mechanism is in the background section of the earlier patent; (2) the background section contains disparaging remarks about this mechanism; and (3) the patentee distinguished his assembly mechanism from the claimed mechanism during prosecution.

However, the CAFC held that these reasons were insufficient for a finding of a lack of enablement.  First, the background section can be used to enable a claim. Second, disparaging remarks do not make it any less likely that one of ordinary skill in the art would, after reading the background, know how to make and use the invention.

Defendant Challenging Claim Construction: In a cross-appeal, the defendant challenged certain claim construction terms.  However, the CAFC refused to hear that appeal because the defendant had not objected to the district court’s construction and had conceded infringement of the newly challenged element. (note: the CAFC has finally drawn a line for when it will not review claim construction).

Conclusion: Reversed and remanded because jury verdict was against the weight of the evidence.

Supreme Court Shows More Interest In Pharmaceutical-Patent Antitrust Case

Patent, Patent Cases 2005,

FTC v. Schering-Plough (on Petition for Certiorari).

Odds are good that the Supreme Court will hear this high profile case involving antitrust issues surrounding the settlement of generic-pioneer patent cases.  On October 31, the Court asked the USDOJ to provide its stance on the case — a request that is often followed with a grant of certiorari.

It is a bit odd that the High Court asked for the Government’s amicus view on a case where the Government is a party.  Although the FTC is not directly under the control of the Administration, this has the appearance of giving antitrust regulators two bites at the apple. On the other hand, this may expose an interesting split between the FTC and DOJ.

In its petition for certiorari, the FTC presents two questions to the Court:

1. Whether an agreement between a pharmaceutical patent holder and a would-be generic competitor, in which the patent holder makes a substantial payment to the challenger for the purpose of delaying the challenger’s entry into the market, is an unreasonable restraint of trade.

2. Whether the court of appeals grossly misapplied the pertinent “substantial evidence” standard of review, by summarily rejecting the extensive factual findings of an expert federal agency regarding matters within its purview.

In its supporting brief, the FTC argues that agreements between competitors should not be per se lawful simply because they are within the “potential” reach of a patent claim.

Links:

  • FTC petition for Rehearing at the 11th Circuit
  • Schering 11th Circuit Decision.pdf
  • Patent at issue, No. 4,863,743
  • PubPat Amicus Brief to the 11th Circuit [pdf]

    • ITC Claim Construction Vacated — Court Unnecessariliy Limited Claim Scope

    Patent, Patent Cases 2005

    Sorensen v. ITC (Fed. Cir. 2005)

    Sorensen alleged that Mercedes-Benz imports violated its patented injection molded tail lights. and requested that the ITC institute an investigation under 19 USC 1337.  However, after the investigation, the ITC found no infringement based on its interpretation of the claims.

    The patent is directed to a multi-layer injection molding with at least two materials having “different characteristics.”  The only difference between the accused layers was that they were different colors, and the ITC found that “different characteristics” must refer to different molecular properties and not to color.  Under this claim construction, it was easy for the ITC to find no infringement.

    On appeal, the CAFC reversed because the claim did not exclude color as a basis for differing characteristics, the specification did not so limit the term, and there was no disavowal of scope in the prosecution history.

    Summary judgment vacated.