Bolstered by a recent district court win in Sony v. Dudas, the PTO has declared that it will no longer reexamine all claims of a patent as a matter of course. Rather, the PTO will only reexamine claims for which “a) reexamination was requested, and b) a substantial new question of patentability (SNQ) was raised.”
Documents
Last month, TiVo won its patent case against EchoStar. The district court judge issued a permanent injunction and refused to stay the injunction pending appeal. In an emergency action, the CAFC immediately issued a temporary stay. Now, the CAFC has reportedly determined that the stay will remain in force until the appeal is concluded. [Can someone forward the order to dcrouch@gmail.com]. [Background]
Aero v. Intex and Wal-Mart (Fed. Cir. 2006)
Aero has patented an air mattress inflation control system that it advertises using the registered mark “ONE TOUCH.” A jury found that Intex (and Wal-Mart) were infringing both the patent and the trademark. The judge awarded $5.80 million for willful patent infringement ($2.95 in compensation, doubled for willfulness) and $1 million for the trademark infringement.
On appeal, the CAFC looked at the damage award and found some double-counting.
This case presents the question of whether Aero’s recovery of both patent and trademark infringement damages represents an impermissible double recovery.
Under Federal Circuit, double recovery for the “same injury” is inappropriate.
At trial, Aero had used similar evidence of Intex sales to show damages for both the patent and trademark claims. Because Aero did not show any other harm to its trademark apart from the sales of the patented product, the CAFC found that the injury was identical, and thus cancelled the trademark recovery.
The case is remanded to the district court for entry of judgment in Aero’s favor in the principal amount of $5.9 million. [Still enough for a good night’s sleep]
Software Patents: A better calendar — If you are interested in Academic Intellectual Property Conferences, Mike Madison hosts the master calendar here: http://madisonian.net/conferences/
DyStar v. Patrick Co. (Fed. Cir. 2006).
DyStar’s patent discloses a process for dyeing textiles with catalytically hydrogenated leuco indigo. After a trial, the jury found that Patrick infringed claims 1–4, that the patent was not invalid, and that $90,000 of damages should be awarded.
Patrick appealed the lower court’s denial of a new trial on obviousness grounds. A new trial should not awarded when “a jury, viewing the evidence in the light most favorable to [DyStar], could have properly reached [its validity] conclusion.” The CAFC reviewed the denial for abuse of discretion. (Level of review based on Fourth Circuit law).
As is often the case, all the elements of DyStar’s invention were already known in the art — the question was whether there was some obvious motivation to combine the prior art together.
Suggestion to Combine: In recent weeks, we have seen a common thread in CAFC jurisprudence indicating that “the suggestion test is not a rigid categorical rule.” Rather, the suggestion to combine references can be found from “any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”
It is difficult to see how our suggestion test could be seen as rigid and categorical given the myriad cases over several decades in which panels of this court have applied the suggestion test flexibly. Obviousness is a complicated subject requiring sophisticated analysis, and no single case lays out all facets of the legal test. DyStar’s argument and the above-cited commentary highlight the danger inherent in focusing on isolated dicta rather than gleaning the law of a particular area from careful reading of the full text of a group of related precedents for all they say that is dispositive and for what they hold. When parties like Dystar do not engage in such careful, candid, and complete legal analysis, much confusion about the law arises and, through time, can be compounded.
Holding: Claims are obvious
In a footnote, the Court defends its KSR decision — a decision currently being briefed at the Supreme Court.
In KSR, we vacated a district court’s grant of summary judgment of invalidity for obviousness. The district court found a motivation to combine not in the references but “largely on the nature of the problem to be solved”, which we did not deem erroneous. Teleflex, Inc. v. KSR Int’l Co., 119 Fed. App’x 282, 287 (Fed. Cir. 2005) (unpublished). Rather, we vacated because the court did not explain sufficiently its rationale, and failed to make “findings as to the specific understanding or principle within the knowledge of a skilled artisan that would have motivated one with no knowledge of [the] invention to make the combination in the manner claimed.” Id. at 288 (citation omitted).
In an impressive history (that is begging for a full analysis), the CAFC sets out the full scope of the flexibility of the suggestion test and notes how the test is well grounded in Supreme Court jurisprudence and has always been flexible. This is one for the casebooks.
Three patent attorneys, Steve Nipper, Doug Sorocco, and Matt Buchanan have teamed up again — this time with some legal recruiting specialists to form the new job board LegalMojo.
The site will likely have a heavy emphasis on IP needs, although the board is open for all types of legal jobs. Even before coming on-line, the “rethinkers” lined up an impressive group of potential offerings.
The price for listing jobs is quite low, so I would expect that many small firms and in-house jobs will be listed in the future. Check it out.
Notes
SRAM v. AD-II (Fed. Cir. 2006).
SRAM cases are always great because they involve interesting mechanical technology. This one involves a shift actuator for a bicycle derailleur. After claim construction, the district court granted summary judgment for SRAM and issued a permanent injunction against AD-II.
On appeal, AD-II argued that the lower court was too narrow in its construction, and that a proper broad construction of the claims would render them invalid. The CAFC agreed. Of note, during prosecution (and three reexamination proceedings) the PTO examiner construed the disputed term in the same fashion followed by the district court. (Not always explicitly). On appeal, the CAFC gave those interpretations no consideration.
[P]aradoxically in this case, the PTO construed the claim narrowly, rather than broadly, by reading in the same limitation as did the district court. In doing so, the PTO erred for the same reasons as did the district court. The Patent Examiner’s actions thus provide no support for SRAM’s argument. Furthermore, this court is not bound by the PTO’s claim interpretation because we review claim construction de novo.
Vacated and remanded.
Notes:
In 2001, the PTO began publishing patent applications that had been filed eighteen months prior. Prior to that change, essentially all U.S. applications had been kept secret throughout prosecution.
Under the new rule an application will publish after eighteen months unless the applicant explicitly requests nonpublication and promises that it does not intend to file any corresponding foreign applications.
To take a look at how applicants are responding to to the change, I pulled up a random sample* of 1% of all published applications (12,000+ sample size) then created a histograph based on serial number. The graph below shows the results.
The applications around the beginning of Series 10 (10/000,000) were filed around the end of 2001 while those at the end of Series 10 were filed in the later half of 2004. It appears that the major dip at 10/600,000 is a data anomaly, although I have not yet figured out why it is there. This graph cannot be seen as a real timeline because some serial number blocks are reserved for certain application types.
There are several reasons for publishing your application:
Notes