March 2006

Book Review: Patents and How to Get One

PatentsAndHowPatents and How to Get One : A Practical Handbook
U.S. Dept. of Commerce

$4.95 from

The U.S. Department of Commerce publishes a small book titled “Patents and How to Get One: A Practical Handbook.” I would recommend this book to anyone who is planing to apply for a patent.

It will give you a fairly solid foundation in the patenting process so that you can spend time discussing real issues with your patent attorney rather than reviewing the legal background.

The best part — the book is $4.95.

Ebay v. MercExchange: EBay’s Reply Brief

eBay v. MercExchange (on writ of certiorari 2006).

EBay has filed its reply brief, and the stage is now set for a March 29, 2006 hearing before the Supreme Court in this important case. In the reply, eBay essentially argues injunctive relief at least requires that the plaintiff suffer “irreparable injury [without] an adequate remedy at law,” and that MercExchange has no such injury.

At its base, eBay’s argument is that by licensing its patent, MercExchange has shown that it is willing to take money in exchange for allowing would-be infringement.  Consequently, MercExchange cannot now argue that monetary damages are “inadequate.”

Threats Against Customers Do Not Create Declaratory Judgment Jurisdiction

ScreenShot024Microchip Technology v. Chamberlain Group (Fed. Cir. 2006, 05–1339).

In another garage door case,[1][2] Chamberlain’s patent was found invalid and unenforceable.  On appeal, however, the Federal Circuit took a fresh look at whether declaratory judgment jurisdiction ever existed.

Chamberlain’s patent is related to a method of programming your garage door opener — i.e., automatically teaching it the correct code. Microchip makes integrated circuits and associated software that serve as the brains for garage door openers.

Under the terms of a 1999 settlement, Chamberlain agreed not to sue Microchip on the patents. However, two years later, Microchip brought this declaratory judgment action. 

Microchip’s basis for jurisdiction was not that it was threatened with suit.  Rather

According to the court, although Microchip itself was not threatened with suit.  Rather, Microchip was upset that Chamberlain had initiated lawsuits against Microchip’s customers. The district court agreed that Microchip had justification for filing suit.

Under the CAFC rule, a declaratory judgment plaintiff must establish:

  1. A reasonable apprehension that it will face an infringement suit; and
  2. Present activity by the DJ plaintiff that could constitute infringement or intent to take such steps.

Here, the CAFC found that under the first prong, “it is clear that Microchip did not possess the requisite apprehension.”  Furthermore, threats against customers do not meet the test apprehension test nor does the “practical effect” that Microchip cannot sell its products without subjecting customers (but not itself) to the threat of litigation.



CAFC Endorses Summary Judgment of NonInfringement Without Markman Hearing

AIPLATalk169Schoenhaus v. Gensco (Fed. Cir. 2006, 05–2178).

In a claim construction decision, the Court of Appeals for the Federal Circuit (CAFC) has affirmed the lower court’s exclusion of “semi-rigid” shoe inserts from the claimed “rigid” inserts.  In the process, the court noted that “there is a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.”[1]

Interestingly, it appears that there was no Markman hearing in this case.  (Pacer Report). Yet, the CAFC praised the lower court’s summary judgment decision and its embedded claim construction.[2]

January 10, 2005, the district court granted defendants’ motion for summary judgment of non-infringement. Senior Judge Louis H. Pollak did not issue a separate Markman order; rather, in a carefully-crafted summary judgment opinion, he construed two limitations of claim 1 of the patent and found as a matter of law that neither limitation was present in the accused shoes. . . .


[1] Fin Control v. OAM, 265 F.3d 1311, 1318 (Fed. Cir. 2001) (emphasis in original).
[2] Schoenhaus v. Gensco District Court Decision.

Ebay v. MercExchange: The Law of Patent Injunctions

eBay v. MercExchange (on writ of Certiorari 2006).

Later this month, the Supreme Court will hear this case to determine when a patentee should have a right to stop an infringer from making or selling unlicensed products once the patent has been found valid and infringed.  Because this issue is so fundamentally important to patent law, eBay v. MercExchange will likely be the most important patent case for the past decade.

As it stands, the Federal Circuit has a “usual rule” that once a plaintiff shows that a defendant infringes a valid patent, an injunction should issue.  According to the appellate court, the usual rule should be followed “absent special circumstances.”

In this case, a jury found that eBay infringed MercExchange’s patent, but the court refused to issue an injunction. Stating the “usual rule,” the Federal Circuit reversed, finding that an injunction should issue.  Now, Supreme Court has agreed to hear the case and determine the proper standards for issuing an injunction.

In January, eBay and its supports filed their briefs asking the court to overturn the Federal Circuit’s usual rule.  Respondent’s brief was due Friday, March 10, 2006. The following is a short review of the briefs in-hand.

Respondent MercExchange’s Brief: MercExchange’s brief is one of the best that I have ever read. In a twelve-page fact section, MercExchange tells its story and leaves little doubt that it will likely win its case, regardless of the rule eventually created by the high court. 

On the legal issues, MercExchange argues that the CAFC’s “usual rule” has been mischaracterized by eBay as an “automatic injunction” provision. Rather, the patent holder argues that courts have discretion to deny injunctions. The “usual rule,” they argue, flows naturally because it is only in “rare cases” that “any balance of hardships or the public interest favor the adjudged infringer.”  Rather, “in most cases those factors will strongly favor the patent holder.”

MercExchange also discusses the fundamental nature of a patent. 

The patent right’s fundamental aspect—its sum total—is “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.”

It is this right to exclude and not a ‘right to damages’ that defines the essence of a patentee’s rights.

MercExchange then walked through each of the district court’s stated factors that it used to originally deny the permanent injunction:

  • Willingness to license — According to MercExchange, it is “extraordinarily strange” to think that a patent holder’s willingness to license would be an indication that money damages may be adequate. (Land-owner example: you may allow your friends on your property, but may still want to exclude your enemies.)
  • Business method patents — According to MercExchange, Congress should address this issue.
  • Pending reexamination of MercExchange patents — According to MercExchange, this issue “is not properly before this court.”
  • Non-practice — MercExchange tried for years to practice the invention, and it does license its invention, which is as good as practicing the invention.  
  • Contempt proceedings — The threat of contempt proceedings against eBay for violating an injunction should not stop the court from issuing an injunction.
  • Failure to seek a preliminary injunction — MercExchange argues that this litigation strategy should not be held against it, and that requiring PI requests before granting permanent injunctions would further complicate the patent litigation procedure.

MercExchange’s only vacuous argument comes at the end where it essentially argues that all patentees are trolls to some extent because every patent includes at least some claim-scope that is not being practiced.

Government Brief: In the BlackBerry case, the Government sided with RIM, asking the district court to not issue an injunction.  Here, however, the DOJ has apparently flipped and now supports MercExchange. 

The Government argues that this case really involves a minor slip-up by the CAFC.  That court simply did not “adequately articulate” the principles regarding equitable relief. However, the Government argues that the court of appeals did reach the correct decision.

This position goes along with my own thoughts that the Supreme Court will hold that a court should weigh the pros and cons of an injunction before shutting down an infringer, but that there will still be a strong presumption that an injunction will grant — especially when the infringement is willful. 

* Query whether this brief provides any general indication of the Republican party stance regarding patent injunctions? [WSJ Blog][AuctionBytes][Patent Hawk]

Academics take sides: Two major groups of law professors have taken-sides in the debate.  First, a group of fifty-two patent-law professors, led by Mark Lemley of Stanford, filed a brief in support of eBay.  They argue that court’s should be given discretion to deny injunctive relief – even if such discretion is not used regularly or often.  The patent-law professors also make a distinction between a district court’s refusal to grant an injunction and a compulsory licensing scheme. (Patent-Law Professors Brief).

On March 10, a new brief, filed by nine professors of Law and Economics (L&E) takes the other side.  Professors Richard Epstein, Scott Kieff and Polk Wagner filed the brief in support of respondent, MercExchange.  They argue that the patent-law prof. brief “confuses the issues and muddies the waters in ways that weaken the structure of exclusive patent rights on which today’s elaborate system of licenses and other voluntary agreements rest.”

The L&E Professors take the position that the Federal Circuit’s jurisprudence is correct, and that “injunctions should generally issue except in those unusual cases in which good cause is shown for denying that form of relief.”  Where the L&E brief differs from the patent-law prof. brief is in the proposed route for determining when to refuse an injunction.  Specifically, the L&E brief argues that any exceptions to the general rule must fall within a specific category of exception, while the patent-law professors focus on more discretionary or ad hoc determinations.

PhRMA: PhRMA is an industry group that includes the major U.S. pharmaceutical research companies. The business models of those companies rely heavily on patent rights to protect innovations that may cost hundreds of millions to develop. PhRMA argues that the billions spent on R&D is predicated on assurances that the resulting IP rights will be strongly protectable.  This case threatens that long-held belief.

The industry group also notes that, if a hardship balance is considered, that the infringer’s hardship should not be considered when the hardship results from its obligation to stop infringing.

BIO: Like PhRMA, the members of the Biotechnology Industry Organization (BIO) argue that the right to injunctive relief is “vital in ensuring innovation” in their industry.  BIO quoted the 1824 case of Ex parte Wood for the proposition that our common law history unquestionably supports a strong right to injunctions against infringers.

The securing to inventors of an exclusive right to their inventions, was deemed of so much importance, as a means of promoting the progress of science and the useful arts, that the constitution has expressly delegated to Congress the power to secure such rights to them for a limited period. The inventor has, during this period, a property in his inventions; a property which is often of very great value, and of which the law intended to give him the absolute enjoyment and possession.

Ex parte Wood, 22 U.S. (9 Wheat.) 603, 608 (1824) (Story, J.) (emphasis added). Bio also favorably cites Hal Wegner’s article for the proposition that a compulsory license may well “run afoul” of the U.S. obligations under TRIPS.

GE, 3M, P&G Du Pont, and J&J: The group of industry giants support the presumptive right to an injunction that is “deeply rooted in the Constitution, the Patent Act, and 200 years of judicial precedent.”  This brief directly addresses eBay’s statutory hook of 35 U.S.C. 283, which only allows that courts “may grant injunctions in accordance with principles of equity.”  To quote Justice Marshall: “discretion is a motion, not to its inclination, but to its judgment; and its judgment is to be guided by sound legal principles.” I.e., a lower court’s discretion does not indicate that there should not be a strong presumption.

Rembrandt IP Management: Rembrandt is a “non-practicing entity” or NPE — meaning that it is a company that invests in patents but does not practice them. Rembrandt’s brief outlines the beneficial role that NPE’s can perform in the marketplace and in furtherance of the goals of the patent system. For instance:

  • Patent rights, like other property rights, benefit the community most when they are freely transferable.  Limiting the rights of certain patent holders practically limits the right to transfer.
  • Independent inventors and university researchers often have a niche in developing new ideas and new technology, but do not have the capital or the necessary tools to successfully bring products to market — inventors should not be penalized for not having a marketing wing.

Rembrandt also makes the point that without the threat of injunctions, “a well-funded infringer either would not take a license from an independent inventor at all, or would do so on a playing field that vastly favored the infringer.”

Intellectual Ventures: Intellectual Ventures has not been publicly termed a troll — perhaps because they have thus far been able to obtain licenses without litigation — but the secretive Washington State company does have a very high PPR (patent to product ratio).  Two dozen well known inventors signed-on to Intellectual Venture’s brief to send their message patent exclusivity promotes the progress of science and technology and promotes investment in research.  Perhaps more than any other groups, small entities and individual inventors rely on the potential for exclusivity to protect their work and to provide the incentive to research and develop new products.

Qualcomm: QualComm is an interesting story.  They used-to manufacture products, but now they primarily invent, design, and license.  They have proven that a big company can be competitive even when their only product is intellectual property.

Qualcomm and its co-amicus Tessera argue that eBay’s brief wrongly characterizes the patent marketplace. eBay and its supporters contentions of a “broken patent system” is not supported by the evidence.

This case itself shows that willful infringers are not cowed by the prospect of an injunction after an unsuccessful litigation defense and are not coerced into any settlement. To the contrary, large corporate infringement defendants often pursue a scorched earth defense strategy, particularly when they are sued by smaller entities.

Qualcomm also makes the important point that if eBay’s proposed changes were effectuated, they would result in a patent’s value depending upon the category of the owner — rather than on any intrinsic value of the claimed invention. “That world would be a distortion of the marketplace. The value of property should not depend on legal rules that are different for different owners.” 

ABA: The American Bar Association has sided with the patent holder MercExchange, arguing that the longstanding role of injunctions in patent cases should continue.  Interestingly, the ABA makes the novel argument that if we were to apply any new equitable considerations, those are “properly addressed” by Congress, not by the federal courts.


  • Party Briefs on the Merits
  • Amici Briefs on the Merits

    • Supporting MercExchange (Strong Injunctions)
  • Supporting Ebay (Weaker Injunctions)
  • Supporting Neither Party
  • Briefs for/against Certiorari:

  • Other

  •  * cite as Dennis Crouch, Review: EBay v. MercExchange Amici Briefs, Patently-O, March 13, 2006, available at


    USPTO Claim Language Interpretation: Must be “Reasonable” in Light of All the Evidence

    In Re Michael C. Scroggie (Fed. Cir. March 13, 2006) (NONPRECEDENTIAL)

    by Joseph Herndon

    In a non-precedential opinion, the Fed. Cir. affirmed in part and reversed in part a decision of the USPTO Board of Patent Appeals (the “Board”). Mr. Scroggie appealed the Board’s decision affirming a final rejection of his patent application having claims directed to a method for generating a web page (including the limitations “generating page data” and “personalized web page”).

    The Fed. Cir. stated the general principle that since during prosecution, claims “must” be given their “broadest reasonable interpretation,” this court reviews the Board’s interpretation of disputed claim language to determine whether it is “reasonable” in light of all the evidence before the Board.

    Scroggie argued that a hyper-link is not a web page, but rather a logical address that when selected, directs the user to a known web page. The Fed. Cir. agreed and held that the term “generating page data,” as recited in the claims, requires that page data is “generated,” not merely “selected.” The court stated that the asserted prior art, which teaches “selecting” advertisements that contain hyper-links, does not teach or suggest “generating.” Thus, the Fed. Cir. held that the Board’s construction of “generating page data” was unreasonable and its conclusion that the prior art teaches that limitation was unsupported by substantial evidence.

    On another note, the court further held that a web page may be considered “personalized” because (i) the contents of the page transmitted to the user are themselves specific to the user, or (ii) the page was chosen to be transmitted to a user based on the user’s personal data. In this case, the court noted that because the term “personalized web page” can reasonably be construed to mean either type of “personalized,” and because the prior art discloses the latter type, the claims including this limitation were reasonably interpreted by the Board and its conclusion that the prior art teaches this limitation was validly supported by substantial evidence.

    The Fed. Cir. did not elaborate on any requirements for the Board to meet the “reasonable interpretation” requirement, or the amount of evidence that would be sufficient to do so.

    Note: Joseph Herndon is an assiciate at the intellectual property firm of McDonnell Boehnen Hulbert & Berghoff.  Joe has a stellar background in electrical engineering and handles both patent prosecution and litigation.


    Comments On the PTO’s Proposed Change in Continuation Practice

    In January 2006, the PTO proposed dramatic changes to patent continuation practice that would essentially allow only one continuation, continuation-in-part, or RCE per application. [Link

    It turns out that patent attorneys are steamed about this proposal.  At a recent town-hall meeting in Berkeley, the audience was reportedly “ready to throw eggs at the [PTO] speaker” who was attempting to explain why the change is necessary.

    An anonymous Patently-O reader has submitted the attached paper with his thoughts on the subject. [DOWNLOAD PAPER].  This paper presents a well reasoned, diplomatic argument for why the changes to continuation practice should not be implemented. 

    A number of commentators were not so diplomatic.  Mark Harrington of Harrington & Smith came right to the point:

    As a patent practitioner with over 20 years of experience, I want to ask: Who was the [BEEP] that proposed this rule change? If you wanted to make patent practitioners angry, you have succeeded. If you attempt to make this proposed rule change final, we will go to Congress to have it changed.

    Although comments on the rule changes are not due until early May, 2006, a number of comments have already been submitted to the PTO. 

    A. Corporations

    B. Law Firms

    C. Individuals

    Patently-O TidBits — King of the Submarine.

    Bill Friedman filed his patent application on October 23, 1936 on a new cryptographic system. The patent finally issued some 64 years later as U.S. Patent No. 6,130,946. Can you find any currently viable patent with an earlier filing date?


    * This tidbit came from the great discussion ongoing at the Patent Information User’s Group about record-holding patents (longest pending, most claims, etc.). 

    UPDATE: A reader found Patent No. 6,097812 by the same inventor.  It is still viable, but the filing date was July 25, 1933!

    USPTO’s Electronic Initiatives

    Electronic Patent Filing: On March 17, the Patent Office (PTO) is scheduled to release its brand-new Electronic Filing System for filing patent applications through an online format.  Beta tests show that the new system works well, is easy to use, and will quickly become the preferred mode of operation for your firm. 

    The new system operates using PDF documents.  Although there are other options available, you will likely want to purchase a full version of Adobe Acrobat so that you can easily create and manipulate PDF documents.

    On March 20, the PTO will hold a training session through an online webcast.  Register here.  A discussion with electronic filing guru Carl Oppedahl is available through Rethink(IP).

    Electronic Access to Patent Files: The PTO has implemented a new version of “Private PAIR” that can be used to easily access the prosecution history of pending patent applications.  Larry Aaronson, a partner at MBHB put together the following notes on starting-up the new system:

    First access the Private Pair page through this link.

    Next, in the “Select Digital Certificate” box, you will need to enter the full path and file name of your .epf file, which you can do easily by clicking on the “Browse…” button, and browsing to the file on your hard drive. Your .epf file is likely located on your hard drive in the “c:\program files\uspto” folder. It is typically named yourname.epf (where “yourname” is your last name). You can feel free to rename that file and/or copy it to a more convenient location on your computer. The important point is that you know where it is, so you can provide its path and filename when prompted.

    Finally, in the “Enter Password” box, you will need to enter your password. That’s the same password you used for accessing private PAIR before the change.

    Other notes:

    If you previously did not have access to private PAIR, you will not have an .epf file. Registered attorneys/agents can contact the PTO Electronic Business Center (866-217-9197 or 571-272-4100) to establish a digital certificate (and thus get an .epf file).

    A registered attorney/agent’s .epf file can be copied to an assistant’s computer, or to a home computer, to allow access in the manner described above as well from the other computer. I.e., more than one computer can use the same .epf file. The PTO might have limitations on how many computers can concurrently use the same .epf file, so don’t copy it to more than one or two other computers.

    The above procedure works on both PCs and Macs.

    Electronic Patent Assignments: In an previous post, Blair Hughes provided easy-to-use directions for electronically filing patent assignments.

    DRM Allowed Once Again in France

    PatentlyOImage031Monsieur Stephane P v. Universal Pictures Video France

    Last April, I reported that in France, the right to privacy includes a right to copy DVDs for personal use. [Link].  That case, involving the movie Mulholland Drive, has been overturned, and now DVD makers can once again use hard-wired Digital Rights Management (DRM) as a form of copy-protection to protect the “legitimate interests of authors.”


    Senate Proposal Would Limit 30-Month Automatic Stay of ANDA Approval

    If a generic manufacturer wants to begin selling a pharmaceutical drug before the innovator company’s patent is expired, the generic can file an Abbreviated New Drug Application (ANDA) with the FDA along with a certification that asserts that either (i) the patents listed in the Orange Book are invalid or (ii) the listed patents do not cover the generic’s product.  This certification is known as a “paragraph IV certification.”

    Once an ANDA is filed, the patent holder has a strong incentive to act quickly to charge the generic with infringement.  If charges are filed within 45 days, an automatic statutory stay is triggered that delays approval of the generic’s ANDA for thirty-months.

    Senators Stabenow (D, MI) and Lott (R, MS) have recently submitted a bill (S.2300) to the Senate that would allow courts to shorten the thirty-month stay based on a “totality of the circumstances, including whether the plaintiff sought to extend the discovery schedule, delayed producing discovery, or otherwise acted in a dilatory manner, and the public interest.  According to the Bill, this is necessary to “prevent[] abuse of the thirty-month stay-of-effectiveness period.”  The Bill would actually require that approval take place at least by the end of thirty-month months, thus preventing any further delay.

    The proposal also limits the extent that patent exclusivity can be extended in return for ensuring pediatric safety and effectiveness.

    Shape Blog — Thinking Outside the Box

    The CAFC has continued to decimate the value of design patents[1], but there are real ways to protect your three-dimensional designs.  How? Read the Shape Blog.

    Practitioners experienced in trademark, trade dress, copyright and patent law will provide news and commentary on the legal treatment of design and any object that incorporates design.

    Design Patent: Ordinary Observer Test Must Examine Design as a Whole

    AIPLATalk158Amini Innovation v. Anthony California (Fed. Cir. 2006, 05–1159).

    Furniture is often protected by both copyrights and design patents. Amini sued Anthony for both copyright and design patent infringement. The district court granted summary judgment of non-infringement on both counts, and Amini appealed.

    AIPLATalk159Design patents: Design patents infringement is proving by overcoming two tests: the ordinary observer test and the points of novelty test.  The ordinary observer tests looks at the design as a whole, while the novelty test looks at individual elements of the design.  The CAFC found that the lower court had erred in its use of the ordinary observer test by analyzing “each element separately instead of analyzing the design as a whole from the perspective of an ordinary observer.” Reversed.

    Copyright: Unlike patent infringement, liability under copyright laws require some evidence of copying.  This is often satisfied by showing that the defendant had access to the protected design before creating the accused design. The Ninth Circuit operates under an “inverse-ratio rule” that requires a lesser showing of substantial similarity when there is a strong showing of access.

    To assess similarity, the Ninth Circuit uses a two-part analysis: the extrinsic test and the intrinsic test. The extrinsic test is an objective test that compares specific expressive elements while the intrinsic test focuses on what an ordinary reasonable audience would think.  Here, the district court erred by expanding its application of the extrinsic test to the “total concept and feel of the work.”

    CAFC Affirms dismissal of German claims

    Dr. Bonzel v. Pfizer (Fed. Cir. 2006).

    Bonzel, a German residing in Germany, originally sued Pfizer and others in Minnesota state court for breach of contract (patent license) — but asserted that patent infringement was not an issue. The Minnesota court dismissed on grounds of forum non conveniens — finding that the case should be decided under German law by German courts.

    Bonzel refiled in Federal Court, and included assertions of patent infringement, but his case was again dismissed.  On appeal, the Court of Appeals for the Federal Circuit affirmed the dismissal.


    Judicial Estoppel: Judicial estoppel applies “when a party takes a later position that is inconsistent with a former position in the same dispute, on which the party had been successful and had prevailed based on the former position.  The CAFC found no judicial estoppel with regards to Bonzel’s earlier assertions of “no patent infringement” because the complaint was “sufficiently changed.”

    Patent Jurisdiction: Bonzel’s charges of breach of contract do not “arise under” the patent laws — even though the breach of contract charges would likely require a determination of whether infringement occurred.

    Diversity: The court did not have diversity jurisdiction because foreigners were on both sides of the v.

    National Treatment: Bonzel also argued that dismissing his case was not allowed under the Paris Convention’s requirement that a nation’s courts give “equal treatment to nationals of other nations.”  Here, Bonzel argues that his case is being dismissed because he is a German. The CAFC disagreed, finding that the treaties do not “establish jurisdiction or require a nation’s court to receive litigation that it reasonably believes would be better conducted in another nation.”

    THE WAR IS OVER: NTP and RIM Settle.

    PatentlyOImage009After years of high-profile legal battles, NTP and Research-in-Motion (RIM) have reportedly settled their patent dispute over RIM’s BlackBerry system. According to the press release:

    RIM has paid NTP $612.5 million in full and final settlement of all claims against RIM, as well as for a perpetual, fully-paid up license going forward. This amount includes money already escrowed by RIM to date.

    The settlement, widely expected for the past year, will likely bring to a close the wild ride at NASDAQ. (RIMM).

    An appropriate reader comment:

    Actually, I’m rather sorry to see this settlement. All the media hype and nonsense, plus the fears of politicians of losing their service, seemed to be greatly contributing to patent reform momentum and to the Supreme Court taking more patent cases.

    But at least the belated but initially effective RIM reexaminations of the patents in suit served to publicly demonstrate reexamination effectiveness in lowering settlement expectations. And without all the lawsuit publicity the reportedly cited obscure prior art Norwegian university publications would probably never have surfaced.

    On the Reexaminations: A settlement could include a provision that NTP must return RIM’s money if the patents were eventually invalidated. However, considering NTP’s stance thus far, such a provision would be exceedingly unlikely. Consequently, I expect that the continuing reexamination of NTP’s patents at the PTO will become more of a curiosity than a business concern. The only way that NTP can stop the reexamination process would be to capitulate to the PTO and thus abandon the patents.


    How do Your Arguments Look in the Mirror?

    Maytag v. Electrolux (N.D. Iowa 2006, 04-4067).

    Maytag sued Electrolux for infringement of its patents relating to the design of a washing machine basket.  After a Markman hearing, Chief Judge Bennet began his claim construction decision with an “excerpt from a remarkably wise children’s story:”

      “When I use a word,” Humpty Dumpty said, in rather a scornful tone, “it means just what I choose it to mean—neither more nor less.”
      “The question is,” said Alice, “whether you can make words mean so many different things.”
      “The question is,” said Humpty Dumpty, “which is to be master—that’s all.”

    Lewis Carroll, Alice’s Adventures in Wonderland and Through the Looking Glass 219 (George Stade ed., 2004) (1871). According to Judge Bennet, “[t]he irony in this case is that it is not altogether clear to the court just who is being Humpty Dumpty.” 

    One innovative approach taken by the judge was to present a draft claim construction decision to the attorneys well before the Markman hearing as a way to help focus the hearing.  According to the Court, the experiment was a great success.


    Patently-O E-mail Distribution Notice

    Along with the 35,000 weekly Patently-O website readers, there are also about 3,500 readers who subscribe to the blog through a daily e-mailer.  Up to now, I have been using a service known as Bloglet.  Unfortunately, Bloglet has been unreliable and because it is a free service, Bloglet offers absolutely no customer service.

    In light of those problems, I have switched the e-mail service from Bloglet to FeedBlitz. I will leave Bloglet running for the next couple of days (so that you get this message) and then turn it off.  You should automatically begin receiving the FeedBlitz e-mails from the e-mail address (put that in your white-list).  If there is a hitch, you can sign-up for the mailing list using the form in the upper-right corner of the blog.

    Of course, if you were signed up anonymously with Bloglet, I could not transfer your account (because I don’t know who you are).  You will need to re-up using the form in the upper-right corner of the blog.

    About the mailing list: Rather than sending entire posts (that are occasionally long), the e-mail only contains a snippet from each post. Html links will be provided for users to click-through to the full text articles. If you decide that you do not like getting the e-mail, it is quite easy to unsubscribe. Each daily e-mail includes an unsubscribe link, all you have to do is click on the link and your subscription will be cancelled.

    I’m not going to distribute your e-mail address to anyone except for my secretary. However, I may e-mail you personally to see whether you have any suggestions for or comments on the patent blog.

    Supreme Court Eliminates Presumption of Market Power in Patent Antitrust Cases

    IllinoisToolIllinois Tool Works v. Independent Ink (2006, 04-1329)

    By Israel Encinosa

    In an 8-0 decision (Justice Alito took no part), the United States Supreme Court has reversed the Federal Circuit’s decision in Illinois Tool Works, Inc. et al. v. Independent Ink, Inc., and expressly overruled some of its own prior rulings, holding that the mere fact that a tying product is patented does not support a presumption of market power.

    The Court characterized the question before it as “whether the presumption of market power in a patented product should survive as a matter of antitrust law despite its demise in patent law.” The Court noted that the presumption that a patent confers market power originally arose outside the antitrust context as part of the patent misuse doctrine, and migrated to antitrust law in International Salt Co. v. United States, 332 U.S. 392, and its progeny. The Court further noted that while Congress continually chipped away at the presumption, ultimately amending the Patent Code to eliminate the presumption in the patent misuse context, the Court’s antitrust jurisprudence, in contrast, continued to rely on it.

    Today’s decision marks a decisive shift in the Court’s antitrust jurisprudence as the Court clearly rejected the presumption of per se illegality of tying arrangements involving patented products. The Court ruled that "any conclusion that an arrangement is unlawful must be supported by proof of power in the relevant market rather than by a mere presumption thereof," and moreover, that "because a patent does not necessarily confer market power upon the patentee, in all cases involving a tying arrangement, the plaintiff must prove that the defendant has market power in the tying product."

    In addition to rejecting the per se rule, the Court also declined respondent’s invitation to "endorse a rebuttable presumption that patentees possess market power when they condition the purchase of the patented product on an agreement to buy unpatented goods exclusively from the patentee."

    NOTE: Israel Encinosa is an attorney at Kirkland & Ellis where he focuses his energy on antitrust law and commercial litigation. He graduated from the University of Chicago Law School.