- [PDQ Redline.doc (63 KB)] Redline showing how the proposed changes would integrate into the Statute. (Created by Aaron Homer, a law student in Texas)
- Patents Depend on Quality Act of 2006 [LINK] introduced April 5, 2006;
- News reports;
- Nipper on Patent Reform;
- Buchanan on Patent Reform.
April 2006
Agreed-upon Claim Construction from Settlement Agreement Goes Unchallenged by CAFC
Semitool v. Dynamic Micro (Fed. Cir. 2006).
This case settled originally, but Semitool revived the litigation after Dynamic began selling a new product. Interestingly, the settlement agreement included a provision for how the patent claims should be construed in any future enforcement proceeding — according to the district court’s claim construction order.
In the revived proceeding, the district court applied its old construction and found the new product noninfringing. On appeal, the CAFC also applied the agreed upon claim construction — rather than questioning it de novo.
Because it resides inside the processing chamber, the condenser in the Tornado cannot supply a drying gas as construed by the Final Claim Construction order issued by the district court. DMS is entitled to judgment as a matter of law that it does not infringe Semitool’s patents
New Blog: Jim Hawes’ IP Thoughts
My mentor Jim Hawes has been a patent attorney for almost fifty years. Now, he has started his own blog: IPthoughts (IPthoughts.blogspot.com). A couple of his recent posts caught my attention.
- The Risks of Being a Patent Attorney: Jim takes a serious long term look at the risks associated with patent prosecution. His advice — go into litigation.
- U.S. Design Patent Application Disclosures: Are you ever afraid that your design patent applications fail the written description requirement of 35 U.S.C. 112. . . Perhaps you should be.
Another recent project of Jim’s is garnering some attention: IP Law Book Reviews. I have also been working with Jim to co-author the bi-annual updates of Patent Application Practice 2d.
Joint Patent Infringement Occurs When Infringement Results From Participation and Combined Action Of Multiple Parties
On Demand Machine v. Ingram and Amazon.com (Fed. Cir. 2006, 05–1074).
One aspect of this case involves the concept of “joint infringement.” The district court instructed the jury as follows:
It is not necessary for the acts that constitute infringement to be performed by one person or entity. When infringement results from the participation and combined action(s) of more than one person or entity, they are all joint infringers and jointly liable for patent infringement. Infringement of a patented process or method cannot be avoided by having another perform one step of the process or method. Where the infringement is the result of the participation and combined action(s) of one or more persons or entities, they are joint infringers and are jointly liable for the infringement.
On appeal, the appellate panel found “no flaw in this instruction as a statement of law.” This raises a number of interesting questions. Many of these questions will be answered in the Freedom Wireless appeal that is currently being briefed. In that case, the lower court gave the following jury instructions:
if separate companies work together to perform all the steps of a claim of a patent, the companies are jointly responsible, that is, responsible as a group for the infringement of the patent. Even if no single company performs all the steps of the claim, the companies are jointly responsible.
Based on these instructions, the jury found infringement. In an unpublished order (Dec 05), the CAFC granted a stay of the injunction because of the questionable theory of joint infringement — noting that the CAFC has not directly addressed addressed the theory of joint infringement and there is relatively no precedent on that issue.
Notes:
- CAFC’s Stay of the Freedom Wireless Injunction [PDF]
- Patently-O discussion of this opinion’s preamble interpretation.
Upcoming CLE’s
This Week:
- Patent Preparation and Prosecution, through Dunes CLE. April 6–7 in Las Vegas. Patently-O is a media sponsor of the event, and I will be presenting on Friday afternoon.
- ABA’s IP Law Conference, April 6–8 in Arlington, VA (DC). This conference is worth it for the opening panel — Mark Banner, Chief Judge Michel, Judges Ellis (E.D.Va) and Illston (N.D.Ca), Professor Kimberly Moore, Joe Re (KMOB), Bob Krupka (K&E), Dale Cendali (OMelveny), William Lee (Wilmer). Best practices in IP Trials.
Coming Soon:
- Blog Law and Blogging for Lawyers, through LSI. April 21–22 in San Francisco. I am co-chairing this conference and am very excited about the excellent panel that we’ve pulled together. More info here.
- PTO Business Method Partnership Meeting, May 3 at the USPTO. Meet the examiners and supervisors behind your indefiniteness and unpatentable subject matter rejections. . . . Actually these folks are very cool and hold this meeting to answer questions and get input on how things are going.
CAFC: Patent Rights are Not Protected by the Fifth Amendment
Zoltek v. United States (Fed. Cir. 2006, 04–5100).
The US government contracted with Lockheed Martin to design and build F-22 stealth fighters. Zoltek has argued that manufacture of carbonized sheets used in the aircraft violates its method patents, even though the sheets were partially manufactured in Japan. The lower court dismissed Zoltek’s federal claims because they “arose in Japan.” However, the lower court also ruled that the US government’s alleged infringement could be actionable as a Fifth Amendment taking.
On appeal, the CAFC issued a decision per curiam, and three additional opinions.
Process Claims Abroad: Because a process is not infringed unless “each of the steps is performed within this country,” the US has no liability under Section 1498(a).
Patent Infringement as a Taking: In the 1894 case of Schillinger v. United States, the Supreme Court ruled that a patent holder could not sue the government for patent infringement as a Fifth Amendment taking. This case remains good law.
Judge GAJARSA Concurring:
I agree that we are bound by our panel decision in NTP, Inc. v. Research in Motion, Ltd., in which we held that “direct infringement under section 271(a) is a necessary predicate for government liability under section 1498.” However, the NTP proposition is, in my view, the result of an unchecked propagation of error in our case law, and its viability may eventually be challenged.
Judge DYK Concurring:
I join the court’s per curiam opinion but write separately to express my view that the court correctly held in NTP, Inc. v. Research in Motion, Ltd., that the government can only be liable for infringement under section 1498(a) if the same conduct would render a private party liable for infringement under section 271(a).
Judge PLAGER Dissenting: Patent rights are property rights protected whose taking should be compensable under the Fifth Amendment. . . .
NOTE: There is lots more more here for a law review article.
Amazon avoids infringement of on-demand book printing patent
On Demand Machine v. Ingram and Amazon.com (Fed. Cir. 2006, 05–1074).
The district court found Ingram and Amazon.com liable for infringement of On Demand’s patented on-demand book printing system. The defendants appealed on claim construction.
The CAFC disagreed with the lower court on many points of claim construction. Interestingly, for the second time in as many weeks, an appellate panel found that the preamble of a claim was limiting. Here the preamble was written as follows:
8. A method of high speed manufacture of a single copy of a book comprising . . .
According to the court, high speed manufacture of a single copy is “fundamental” to the invention because “the specification highlights that the customer may have a printed and bound copy within “three to five minutes.” Here, the defendants can avoid infringement because the customer must wait a week to get their copy of the book.
Notes:
. . . From a Reader:
This CAFC decision should be of considerable interest to the book publishing, printing and distributing industries for several reasons.
First, this is a decision against a “print on demand” book printing patent of general industry interest, as evidenced by a pending SECOND adverse reexamination against it. This second reexamination is not even mentioned in this decision, only the first one is. Yet some of this Court’s comments about prior art, etc. may become relevant in this pending second reexamination?
On another matter, of general patent litigation interest, the Court says: “The court’s award of a royalty-bearing license during appeal and refusal to issue an immediate injunction are reviewed on the standard of abuse of discretion.” [emphasis added]
Later on, in its Conclusion, the Court merely adds: “The cross-appeal relates to the district court’s denial of an immediate injunction upon entry of the district court’s judgment, and the court’s setting of a royalty for continuing operations during appeal. That remedy is within the district court’s discretion. However, in view of our holding of non-infringement, the cross-appeal is moot, and is dismissed.”
There is no mention of the Sup. Ct. taking of eBay v. MercExchange for decision, in which even the Solicitor’s brief criticizes the CAFC for not spelling out the statutory test for granting injunctions. Yet they did it again! – the above is ALL this Panel said on this subject. I.e., even in this latest case, the Court does not cite or discuss the statute, or even the standards for stays of injunction during an appeal. Note that this panel did not approve a stay of an injunction pendant lite here, it merely held this issue to be MOOT, hence the above is mere DICTA.
Finally, this Court’s specific non-infringement distinctions should be cautionary for specification and claim drafters to avoid inadvertent or unintended claim scope limitations.
Federal Circuit Further Limits Doctrine of Equivalents under “Specific Exclusion” Principle
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The Federal Circuit’s decision in Bicon appears to mark a further narrowing in the scope and availability of the doctrine of equivalents (DOE), particularly for patents where the claim recites physical structures. Significantly, the court’s doctrine of equivalents discussion makes no mention of the familiar tests for DOE coverage, i.e., the function/way/result test of the Graver Tank decision, or the “insubstantial differences” test of Hilton Davis Chemical Co. v. Warner-Jenkinson Co., 62 F.3d 1512 (Fed. Cir. 1995), rev’d & remanded, 520 U.S. 17 (1997). Rather, the Court invoked a new exclusion principle essentially foreclosing coverage under the Doctrine in cases where a claim contains a detailed recitation of structure, stating that such a claim is accorded “limited recourse to the doctrine of equivalents.” Slip op. at 17. For support of this rule, the court cites cases purportedly standing for “an exclusion rule” that denies any coverage under the doctrine for subject matter where such subject matter is “inconsistent with the language of the claim.” Slip op. at 17-18, citing Sci-Med Life Sys. Inc. v. Advanced Cardiovascular Sys., 242 F.3d 1337 (Fed. Cir. 2001); Ethicon Endo-Surgery Inc. v.
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The problem is that, by definition, a claim term that is expanded under the DOE is, in some fashion, “inconsistent” with the literal scope of the claim. Bicon suggests that such inconsistencies are resolved by barring application of the DOE. Bicon is difficult to reconcile with prior precedent upholding findings of infringement under the DOE, decisions which by definition accommodate inconsistency between the claims and the accused device.
The particular invention at issue in Bicon pertained to a dental implant. The court was examining language in the claim preamble, which, in a separate portion of the opinion, was found to be an affirmative limitation of the claim. The claim at issue, claim 5 of U.S. Patent 5,791,731, recited:
5. An emergence cuff member for use in preserving the interdermal papilla during the procedure of placing an abutment on a root member implanted in the alveolar bone of a patient in which
[a] the abutment has a frusto-spherical basal surface portion and
[b] a conical surface portion having a selected height extending therefrom comprising . . . [body of claim].
The accused device had a trumpet-shaped, concave surface, which was argued to be equivalent to the convex frusto-spherical basal surface of part [a] of the preamble. In rejecting the patentee’s equivalency argument, the court stated:
The problem that [the patentee] faces in this regard is that limitation [a] and [b] of the claim contain a detailed recitation of the shape of the abutment, including that it has a frusto-spherical basal portion. A claim that contains a detailed recitation of structure is properly accorded limited recourse under the doctrine of equivalents. See Tanabe Seiyaku Co. v. Int’l Trade Comm’n, 109 F.3d 726 732 (Fed. Cir. 1997)(“The sharply restricted nature of the claims has much to do with the scope we accord to the doctrine of equivalents.”). That principle has special application in a case such as this one, where the claim recites a particular shape for the basal portion of the abutment that clearly excludes distinctly different and even opposite shapes. In such cases, we have explained, “by defining the claim in a way that clearly excluded certain subject matter, the patent implicitly disclaimed the subject matter that was excluded and thereby barred the patentee from asserting infringement under the doctrine of equivalents.” Sci-Med Life Sys. Inc. v. Advanced Cardiovascular Sys., 242 F.3d 1337, 1346 (Fed. Cir. 2001) [further citations omitted]; Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317 (Fed. Cir. 1998)(subject matter is “specifically excluded” from coverage under the doctrine of equivalents if its inclusion is “inconsistent with the language of the claim.”)
Both of the structures in the Straumann system that are possible candidates for equivalence to the abutment base recited in the claim fall victim to this principle of specific exclusion. As we have noted, the basal portion of the Straumann abutment is frusto-conical, not frusto-spherical, and the neck of the Straumann root member is concave, not convex. These shapes are clearly contrary to, and thus excluded by, the patentee’s characterization of its abutment as having a convex, frusto-spherical shape.
Slip op. at 17-18.
There are several things of note in this analysis. Significantly, the Federal Circuit does not engage in any function/way/result analysis under Graver Tank, or any examination of whether the differences in geometry between the accused device and the claimed invention are insubstantial under Hilton-Davis. Rather, the Federal Circuit seems to be excluding availability of the doctrine of equivalences completely, based solely on a textual analysis of the claim itself and noting that the accused product is not within the literal scope of the patent.
The decision raises the question of whether the bar on availability of the doctrine of equivalents, based on the “specific exclusion principle”, is a question of law that might be amenable to summary judgment. If so, it would avoid the factual disputes associated with a function/way/result or insubstantial differences analysis. It is at least arguable that this “specific exclusion principle” is one of law and amenable to summary judgment.
The rule of exclusion based on a textual analysis of a claim brings to the fore the tension in the doctrine between the two opposing principles of 1) allowing some additional claim scope beyond the literal bounds of the claim in an appropriate case under the Doctrine, while (2) preserving the public notice function of claims. The decision in Bicon lands squarely on the side of the upholding the latter principle at the expense of the former. It doing so, it is consistent the trend of the Federal Circuit cutting back on the scope of the DOE. Creative litigants will surely apply the Bicon exclusion principle to other areas besides the mechanical arts. Virtually any claim is amenable to a “specific exclusion principle” argument.
If the Federal Circuit’s specific exclusion doctrine is interpreted as meaning that a selection of a particular claim term operates as a matter of law as a disclaimer of coverage under the doctrine for subject matter not within the literal definition of that term, then the death knell for the doctrine has basically been rung.
Links: