Meyer Intellectual Properties Limited v. Bodum, Inc. (Fed. Cir. 2012) Panel: Dyk (concurring), Moore, O'Malley (author) Download 11-1329
At its heart, Meyer v. Bodum is essentially an obviousness case, although for reasons having to do with the procedural posture, the court never gets to the merits of that issue, instead remanding the case for further proceedings based on numerous errors committed by the district court, which the opinion portrays as misguided and lacking an understanding of the basics of patent law.
Judge Dyk's concurrence, reproduced in its entirety at the end of the post, goes even further, concluding that "this case is an example of what is wrong with our patent system…Such wasteful litigation does not serve the interests of the inventorship community, nor does it fulfill the purposes of the patent system." Slip Op. at 46-47.
Background: Frank Brady was an independent sales representative for Bodum from 1986-1996, during which time he marketed and sold products including Bodum's French press coffee makers. In the mid-1990's, Brady came up with the idea of a milk frother that used aeration instead of steam, and in 1996, he filed a patent application directed to a "Method for Frothing Liquids" that led to two issued patents, Nos. 5,780,087 and 5,939,122. The claims essentially involve four steps: "(1) providing a container that has a height to diameter aspect ratio of 2:1; (2) pouring liquid (e.g., milk) into the container; (3) introducing a plunger that includes at least a rod and plunger body with a screen; and (4) pumping the plunger to aerate the liquid." Slip Op. at 5. Brady also sold milk frothers through his company, BonJour, which was subsequently sold to Meyer.
In 1999, Bodum began selling the first generation of its accused milk frothers. The figures accompanying this post are the opinion's comparisons of Bodum's Version 1 frother with the '087 patent. Shortly after Meyer filed an infringement suit in 2006, Bodum changed its designs, removing the spring element holding the screen against the inside wall of the container and replacing it with an O-ring. The O-ring was later removed to create the Version 3 frother.
Following a jury trial in which the jury held the patents to be valid and willfully infringed, awarding $50,000 in damages, the district court trebled the damages, declared the case exceptional, and awarded Meyer its attorney fees of $756,487,56. Bodum appealed, alleging a panopoly of errors by the district court. The Federal Circuit agreed.
Infringement: The CAFC vacated the district court's grant of summary judgment of infringement due to a lack of any evidence of direct infringement in the record. Rather, the district court relied only on assumptions of direct infringement. "We find it troubling that the district court based its direct infringement analysis on what it assumed happened, rather than on actual evidence of record. This assumption contradicts our well-established law that a patentee must prove infringement by a preponderance of the evidence." Slip Op. at 26.
Evidentiary Rulings: Prior to and during trial, the district court made a number of evidentiary rulings that sharply limited Bodum's ability to present its case. In an uncommon move, the Federal Circuit concluded that the district court had abused its discretion in these rulings, holding that (1) the district court erroneously limited the scope of prior art to only two references (one of which was subsequently excluded), despite sufficient disclosure of several additional references; (2) the district court erroneously excluded Bodum's expert from testifying despite a report containing a sufficiently detailed statement of his opinions and the bases for his conclusions, especially given the non-complex nature of the technology; and (3) the district court erroneously precluded lay witnesses from testifying to authenticate one of the two allowed prior art references. The CAFC thus remanded for a new trial on obviousness.
Inequitable Conduct: The CAFC also held that the district court erred by dismissing Bodum's inequitable conduct claims on a motion in limine. Under Seventh Circuit law, "a motion in limine is not the appropriate vehicle for weighing the sufficiency of the evidence." Slip Op. at 41-42. The district court thus "erred in addressing the sufficiency of Bodum's inequitbale conduct defense on an evidentiary motion." Id. at 42.
Willful Infringement and Enhanced Damages: Because the CAFC remanded the case for a new trial on infringement and invalidity, it vacated the wilfulness verdict and enhanced damages award. In doing so, it suggested that the district court use Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., 682 F.3d 1003 (Fed. Cir. 2012) (in which the Federal Circuit held that threshold "objective prong" of the willfulness inquiry is a question of law) as a starting point.
Judge Dyk's Concurrence: Writing in concurrence, Judge Dyk questioned why this patent issued in the first place and why it was not found obvious on summary judgment:
While I agree with and join the thorough majority opinion, in looking at this case from a broader perspective, one cannot help but conclude that this case is an example of what is wrong with our patent system. The patents essentially claim the use of a prior art French press coffee maker to froth milk. Instead of making coffee by using the plunger to separate coffee from coffee grounds, the plunger is depressed to froth milk. The idea of frothing cold milk by the use of aeration rather than steam is not new as reflected in the prior art Ghidini patent. Under the Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007), and its predecessors, it would be reasonable to expect that the claims would have been rejected as obvious by the examiner, and, if not, that they would have been found obvious on summary judgment by the district court. But no such thing. The parties have spent hundreds of thousand of dollars and several years litigating this issue, and are invited by us to have another go of it in a second trial. Such wasteful litigation does not serve the interests of the inventorship community, nor does it fulfill the purposes of the patent system.
Judge Dyk specifically refers to the private costs of this litigation – the hundreds of thousands (at least a million, if both parties' costs are taken into account) of dollars spent by the parties on legal fees. The public, too, has spent a substantial amount of resources on this case: the district court's time and resources, the jury's time (and perhaps a future second jury), and the Federal Circuit's own time spent correcting the errors – as evidenced by its thorough 44-page opinion. Beyond these monetary costs, Judge Dyk's concurrence hints at an even greater public cost: the undermining of public confidence in the ability of the patent office and the courts to get patentability decisions on even relatively technologically simple inventions right.
C’mon, now. The dude’s got a brilliant sense of humor that indicates a razor sharp mind: he threw out the IC charge via motion in limne, didn’t he?
The ol’ boy’s a barrel of laughs — or, rather, it’s tenure for life that’s a barrel of laughs. How has America survived its own stupidity for so long?
Boys Boys Boys…. I have 2 words for you….
Butter Churn…
I think whether or not (without hindsight) it would have been obvious to use a french press to aerate or froth liquids is debatable.
On the other hand, the advertised purpose of a butter churn includes aerating…
link to en.wikipedia.org
The agitation of the cream, caused by the mechanical motion of the device, disrupts the milk fat. The membranes that surround the fats are broken down, subsequently forming clumps known as butter grains. These butter grains, during the process of churning, fuse with each other and form larger fat globules. Air bubbles are introduced into these fat globules via the continued mechanical action of the churn. The butter grains become more dense as fat globules attach to them while the air is forced out of the mixture. This process creates a liquid known as buttermilk. With constant churning, the fat globules eventually form solid butter and separate from the buttermilk. The buttermilk is then drained off and the butter is squeezed to eliminate excess liquid and to form it into a solid mass.
Types of butter churns
The most historically prominent types of butter churns are the plunge churn, which is a container, usually made out of wood, where the butter-making action is created by moving in a vertical motion a staff that is inserted into the top. This type of churn is also known as an ‘up and down’ churn, churning tub, plunger churn, plumping churn, knocker churn, plump-kirn, or plowt-kirn (where “kirn is a Scots/Northern English word for churn). The staff used in the churn is known as the dash, dasher-staff, churn-staff, churning-stick, plunger, plumper, or kirn-staff.[6]
Another prominent type of churn was the paddle churn, which was a container that contained a paddle, which was operated by a handle. The paddle churned the butter inside the container when the handle was turned.
Technically, yes, that is the part of Marek v. Chesney that is bizarre. Some statutes define attorneys fees as part of costs (Civil Rights Act, Copyright Act)some say you get fees in addition to costs. Since Rule 68 talks only about costs, depending on what kind of statute you have, you may or may not be entitled to fees as part of the “costs.” The dissent was partially right, IMO, to point out that there is no rhyme or reason to this, and to make a whole rule dependent on that random fact makes no sense.
(The issue in the case was not about the defendant recovering fees. It was about cutting off the other side’s right to collect fees if it prevails. That is what Rule 68 deals with. IOW, even if the plaintiff prevails, if it does not do better than the offer of judgment, it cannot collect post-offer costs. The offer in effect raises the floor on what constitutes prevailing for the purpose of fees and costs.
Some courts have applied the Marek rule to other statutes even if, strictly speaking, fees are not defined by the pertinent statute as part of costs. Don’t know if anyone has done it in a patent case. It can be a very effective litigation tool for a defendant facing a plaintiff that does not want to settle reasonably.)
With patent cases, doesn’t a Rule 68 only allow you recover “costs” and not “attorney fees” though?
Quick! File a patent application on the French fry!
That might actually be patentable, but no-one would buy it.
The atorneys represent the public, or even ARE the public, from a judges PoV.
He said after one billy awarded for researching.
THe course I would recommend, as I would to any client, is to think long and hard about the costs vs. the potential benefits of litigation. As you said, recouping attorney’s fees is an uncertain prospect.
As for the public policy, yes there is an element of injustice that justice in this country is so expensive. That’s life. It effects many people in many situations. I still don’t think it is sound policy to encourage a party to spend many more times on fees than what the case is worth on the hope of recouping fees.
(I am curious, in “loser pays” systems as in Britain, can you get huge fees that are disproportionate to the win? If a prevailing plaintiff in Britain gets a judgment of, say, 100 pounds, can he he then claim a million pounds in fees?)
No it doesn’t. The plaintiff can always concede, even if the defendant is stubborn.
Yes, the one is typically the plaintiff.
What course do you recommend for a patentee who has a valid and infringed patent to a marketable invention that happens to be worth less than a couple million dollars? Why should it be his responsibility to concede?
“It takes two to settle, but only one to litigate”
No it doesn’t. The plaintiff can always concede, even if the defendant is stubborn. Not saying it is fair, but OTOH, running up huge costs to achieve a small return is not something that should be encouraged.
“Well then, measure winning or losing against the settlement offers received and rejected during settlement negotiations. If you do worse than you could have settled for, you owe costs.”
There is case law like this in connection with Offers of Judgment under Rule 68, so we are not far behind. Unfortunately, it is still a matter of discretion in most cases, and not all judges take the point seriously. (In a few cases, notably civil rights cases, an offer of judgment can cut off the other side’s right to fees if they fail to do better than the offer. The leading case on this is Marek v. Chesney, 473 U.S. 1 (1985). However, that only applies as a strict rule in a few types of cases, usually, as I said, it is only a discretionary factor.)
I always thought that beefing up Rule 68 would be s a smart move, for all types of cases
A $50k patent suit should not be litigated, it should be settled.
It takes two to settle, but only one to litigate.
Who says it was the loser who “forced the winner through the process?” Maybe the loser was willing to settle for a reasonable sum, and it was the winner who held out for the sun and the moon?
Well then, measure winning or losing against the settlement offers received and rejected during settlement negotiations. If you do worse than you could have settled for, you owe costs. Other civilized jurisdictions have already figured all this stuff out.
I don’t agree that the victor should get the full costs of suit regardless of what was achieved. A $50k patent suit should not be litigated, it should be settled. A system that encourages both sides to spend far in excess of fees than what is at stake in the case is wasteful.
“Make the loser pay for forcing the winner through the process, especially if the merits are relatively one-sided”
Who says it was the loser who “forced the winner through the process?” Maybe the loser was willing to settle for a reasonable sum, and it was the winner who held out for the sun and the moon?
First of all, I don’t see anywhere in the opinion that injunctive relief was granted.
Second, injunctive relief in a case like this has a finite value. An injunction is a means to force a competitor to either stop using the technology or take a license. How much is that worth? A rough estimate is to take the value of past damages and project them forward until the patents expire, adjusting for the number of years in each. Here it seems that the damages period was 1999 to 2008, about nine years. The filing dates for the patents were 1996, so they expire in 2016. That means another 8 years to go. So the rough value of enjoining this competitor going forward was the same as the damages going backwards — about $50k. Still pretty measly to serve as a basis for a $750k attorney’s fee award.
Point is, attorney’s fees are supposed to be reasonable, and have some relationship to the results achieved.
Suppose you were a GC of a company reviewing outside counsel’s work. They gave you a $750k bill for litigating this case. “What did we get for that $750k” you might ask? The answer is:
1. $50k in damages
2. $100k in extra damages due to trebling
3. Hypothetically (not in this case, but let’s just say) an injunction against this defendant that runs out in 2016. On my calculation above, that is worth roughly another $50k to the plaintiff.
Has outside counsel given good value or bad value to the company in this situation? Was it worth it to spend $750k to get $200k in results?
(I recognize that the answer to these questions is not always simple. If there are 20 other competitors in the market, and the win in this case persuades them to take licenses to the patents and pay hefty royalties, then the attorney’s fee may well be a good deal. If, as I suspect the case is in this case, there is only a limited market for these gadgets and no other benefits are gained, the expenditure of fees is a bad deal.)
Invented? IANAE have you yet looked at the Ghidini art, the milk frother, the upright circular cylindrical jug with an up and down pumpable mesh plunger in it? US 5580169. Brady limited to height more than twice diameter…..and the claim was allowed. Reminds me of all those US clients who at one time used to say to me “We have got it allowed in the USPTO. So why won’t the EPO Examiner allow the claim”.
IANAE, that depends what you mean by “pumping”.
Indeed it does. How many strokes of a manual air pump does it take to constitute “pumping”? How many strokes of a piston in a car engine? The claim doesn’t even offer a “repeatedly” or a “rapidly” or an “up and down”. Do we need to ascertain whether prior art French press coffee is “aerated” when the plunger is depressed?
I expect more of a patentee who is claiming the new use of an old mechanical device by moving its only moving part in the old way. Had he simply claimed “pouring a dairy liquid into a container having an aspect ratio…” as the first step (and not recited “providing”), he might have won me over. And he’d have been claiming what he actually invented.
IANAE, that depends what you mean by “pumping”. When we greet each other, how effusive do I need to get to be seen as having reached the point of “pumping” your hand. After that, when we make coffee, and I slowly depress the plunger once, to drive the grounds to the bottom of the jug, would the observant bystander have seen me “pumping” anything? The handle? The grounds? The coffee? I must say, I thought none of these.
That’s insane. The succesful plaintiff won $50k, which was trebled for willfullness. Is that worth over $750k in attorney’s fees?
It is insane. No reason any plaintiff should have to pay $750k in attorney fees – with no assurance of ever seeing the money again – to assert a $50k patent.
Granted, this patent never should have been asserted at all, but that only changes the question to “why should the defendant have to pay as much to defend against such a simple patent?”
Either way, give the victor his costs. Make the loser pay for forcing the winner through the process, especially if the merits are relatively one-sided.
I take it that you won’t get milk frothy by anything less than rapid repeated passes of the plunger, up and down, through the milk.
That’s probably so, but that type of motion isn’t explicitly recited in the claims. Even using milk isn’t claimed. No reason it couldn’t read on the prior art process of depressing the plunger once, unless there’s a very specific construction of the term “pumping”.
The only qualification of the pumping step is “to achieve the desired result”. That’s a Morse problem, unless it’s meant to read on the user’s intention, in which case it’s a Prometheus problem.
At least give us a “repeatedly pumping”, or limit it to milk or frothing. As long as the claim reads on making coffee, the defendant has grounds to challenge it.
“Patent damages is the wild west of law.”
Yet again, the scope of your legal knowledge is exposed. If you think patent damages are the “wild west of the law,” you need to wake up and smell the coffee.
“Says the suckpuppet who habitually insults everyone else who posts here twenty-fifty times a day.”
Who posts 25 times a day? Let’s see, that would be MM, 6, Ned, and Max Drei. It seems me that they all deserve to be insulted — frequently and without remorse.
I’ll bite IANAE: the “pumping” step.
I take it that you won’t get milk frothy by anything less than rapid repeated passes of the plunger, up and down, through the milk. I can well understand the actual deviser of the invention of abusing a specialist single purpose BODUM coffee brewer as a milk frother (yuk!) thinking that he had made a non-obvious contribution in the milk frothing field.
So, if his claim had begun with the words “Method of using a BODUM coffee brewer jug…..” he might have had 103-resistant subject matter.
Is this another case of claiming more widely than the real invention justifies?
Perhaps the major value in the suit was the injunctive relief. In many patent cases, the cost of proving damages to date outweighs the damages themselves, but the case still makes sense given the prospect of injunctive relief (or, cynically, the prospect that your opponent might bill himself to death or cave and take a license). So, the fact that the damages are low compared to the cheap $750K for a patent trial is no reason for the judge to discount the fee award.
There is none bro. Welcome to patents, where people get 1 billy for infringers using their invention to research a product to launch after the patent expires and other people get attorney’s fees far and away more than they actually win.
Patent damages is the wild west of law.
Using my name here
Dear Grandpa Slonecker,
Tell Uncle Milton that I’m deeply sorry if I hurt his fee-fees but he might want to think about retiring before taking another patent case.
last phrase should read “and five times the total damages (including punitive damages) awarded by the Court.”
While other parts of the district judge’s opinion may have been more flawed, I am surprised that the following did not pass without comment:
“Following a jury trial in which the jury held the patents to be valid and willfully infringed, awarding $50,000 in damages, the district court trebled the damages, declared the case exceptional, and awarded Meyer its attorney fees of $756,487,56.”
That’s insane. The succesful plaintiff won $50k, which was trebled for willfullness. Is that worth over $750k in attorney’s fees?
In many areas of the law, a major factor in awarding attorney’s fees (assuming such are available under the relevant statute) is the success achieved. Patent litigation is a commercial endeavor — patents are meant to give one party a commercial advantage for a limited time, in exchange for disclosing its invention. What in the world is the commercial justification for awarding a succesful plaintiff attorney’s fees 15 TIMES the actual damages awarded by the jury, and five times the total damages (including damages) awarded by the Court.
If that were SOP, we wouldn’t have any examiner’s left.
Instead, how about giving examiners decent tools for searching, and giving them symmetrical examining incentives (e.g., demerits for when they allow inappropriately, and for when they reject inappropriately)?
Cripes King Ned, why not just summarily shoot ’em all?
people who care = costs?
Using my name here instead of Pro Se, in contrast to Mr. Mooney.
Not new here, and certainly aware of Mr. Mooney’s predisposition to engage in inappropriate commentary.
No tool bars, just handlebars and crow bars!!!! (grin)
There will be three settings: mild froth, medium froth, and lubricious froth.
suckie: Because You Don’t Need Brains to Post Insults
Says the suckpuppet who habitually insults everyone else who posts here twenty-fifty times a day.
Man, this blog has the d—–est trolls.
Perhaps your personality is such that you find this amusing, but I for one do not.
Thanks for your comment, Judge Shadur. I think it’s time for your nap now.
nah bro, there will be “throw up” menus.
It is one thing to criticize a judicial opinion by pointing out legal and/or factual errors, but it is quite another to gratuitously insult and mock the judge. Perhaps your personality is such that you find this amusing, but I for one do not.
Milton Shadur was born in 1924, a few years prior to the successful commercialization of “talking pictures.”
He’s 88 years old and apparently has no options in life except to sit around and listen to relatively low-rent attorneys fling b—-t around concerning discovery rules and such.
Think about what that does to your mind.
Re: “The only people who care about this are the attorneys.”
Nonsense, the costs all fall on the clients, and the unjustified harrassment AND costs falls on the innocent defendant, and the public gets deprived of competitive products.
“An unmanned aircraft designed to fly six times the speed of sound crashed after being dropped from a bomber over the Pacific Ocean, the Air Force announced.”
Ouch! Please please please will someone release the real-time radio communications between the bomber and command central????
This case is indicated to be an “Appeal from the United States District Court for the Northern District of Illinois in case no. 06-CV-6329, Judge Milton I. Shadur.” Lets hope that part of the problem here is that he is brand new to patent law, and lets also hope that on remand he takes revenge on any attorneys for the patent owner that helped lead him into so many gross legal errors.
————————-
P.S. I wonder if we could improve D.C. patent trials by sponsoring an annual contest and award for the worst D.C. patent trial of the year?
due to a flaw in one of the craft’s control fins.
Wasn’t all the literature relating to French presses purged from government offices in the run-up to the War on Iraq?
here is another one for the woodshed — “An unmanned aircraft designed to fly six times the speed of sound crashed after being dropped from a bomber over the Pacific Ocean, the Air Force announced.”
maybe district court judge should go too?
drop down menu too?
a good case for reexamination on the 103 issue
And the result will be a claim that is virtually identical except it recites the addition of a POWERFUL COMPUTER BRAIN to inform the user when frothing is complete.
Yum!
IANAE, the real question in my mind is whether the inventor knew of it or not. Given that he regular dealt with such coffee makers, I think we can assume that he did.
This is more than a failure to disclose relevant art, IMHO. This is willful and egregious fraud on the PTO that needs to be looked into by all. The patent attorney on the case may or may not be innocent as well.
Just, you make very good points about the relevant prior art not being before the office. But, since it is now, the Direct owes the public a duty to invoke a reexamination of his own accord if he can find a published reference to the French coffee press.
Even so, on remand, if I were the judge I would call the inventor in and ask him directly whether he knew about the prior art French coffee press. If he did, I would summarily hold the patent unenforceable for fraud on the PTO as well.
if the correct prior art isn’t before it, then they should allow the application to grant as a patent.
Which step in claim 1 is not anticipated by the ordinary prior art use of a French press to make coffee?
This would be good case to take the examiner who issued this patent to the proverbial woodshed and fire his a…
Was this a good case for reexamination on the 103 issue
“Beyond these monetary costs, Judge Dyk’s concurrence hints at an even greater public cost: the undermining of public confidence in the ability of the patent office and the courts to get patentability decisions on even relatively technologically simple inventions right.”
Hardly, the public cares little about the efficiency of the patent office or the courts. The only people who care about this are the attorneys. Don’t make a mountain out of an ant hill.
FYI — good examination is driven by the prior art. I’m not one to give the USPTO a pass on much. However, if the correct prior art isn’t before it, then they should allow the application to grant as a patent.
Whose fault it is that the prior art wasn’t before the USPTO … we’ll, that is a different story.
Frankly, I don’t know why this ever went to court. The parties couldn’t agree on a reasonable license? It isn’t like the stakes were particularly huge. You are talking about a low-cost product without much market — not a lot of $$ to be bickering over. Patent issues that go to trial reflect a failure of at least one party to reasonably negotiate (fyi — the same can be said about any issue that goes to trial).
Finally, Judge Dyk was just bemoaning that fact that he didn’t have a chance to invalidate another patent. The man needs his invalidity fix and he needs it NOW!!!!
You’ll never get there if you manage to exhibit uspto incompetence.
“Don’t worry, there is no such confidence in existence to be undermined.”
When we get there, we’ll use you as the first exhibit of USPTO incompetence.
Now we know who MM is likely to be: Judge Dyk.
Use a known apparatus for a new purpose where it is known that it will work for that intended purpose…..
Hmm….
This is a hard case?
Dyk seems right.
“the undermining of public confidence in the ability of the patent office and the courts to get patentability decisions on even relatively technologically simple inventions right.”
Don’t worry, there is no such confidence in existence to be undermined.
But, if such confidence were ever to be instilled then this undermining would indeed be srs.
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