The casting producer at “Wife Swap” thought some of our readers may know some great inventors:
WIFE SWAP, ABC’S HIT PRIMETIME SHOW, SEEKS A SUPERSTAR FAMILY OF INVENTORS!
The premise of Wife Swap is that one parent from each household swaps places for a week to experience how another family lives. It is an incredible family experience and opportunity to both learn and teach different family values.
Wife Swap is a fascinating story of what happens when two couples see themselves and their partners in a whole new light. The New York Post says, “It should be called ‘Life Swap’ because it’s not just the wives who learn something here. It’s the families.”
Potential families can live anywhere in the United States, but we ask that families applying for the show consist of two parents and have at least one child, age 7 or older, living at home. Specifically, I’m looking for families who are always looking for the next big invention! To submit for the show please email a family photo and description to: gaby.wifeswap@gmail.com.
Families featured on the show will receive a $20,000 honorarium. If you refer a family that is selected you receive $1,000.
If you are a family unit (two parents and children between the ages of 7 and 17) who love an adventure, I would love to hear from you today! Also, please feel free to send this casting along to any families you feel would be appropriate!
More information is available at: http://abc.go.com/primetime/wifeswap.
1st Technology v. Rational Ent. and Bodog (Fed. Cir. 2008)
1st Technology won a default patent infringement judgment against the online gambling company Bodog and the Nevada district court awarded $46 million in damages plus interest. The patentee has been enforcing the judgment by attaching Bodog’s US assets – including its domain names and trademark registrations. Without opinion, the Federal Circuit has affirmed that judgment.
On appeal, Bodog argued that it was not properly served notice of the litigation and that the Nevada court lacked personal jurisdiction over the company. 1st argues that the service (to a Bodog’s Costa Rica office) was proper and that by not arriving in court Bodog had waived its personal jurisdiction argument. In addition, plaintiffs cite to a 2005 Forbes article noting how “in 2005, the Bodog entities handled $7.3 billion in online wagers, 95% of which came from the United States, with sales increasing every year. [Bodog’s founder] Mr. Ayre pays no United States income tax, and prides himself on the fact that he and the Bodog entities routinely evade United States law.”
In 2001, Troxler filed a patent infringement action against Pine – alleging infringement of its patent covering equipment for testing the quality of asphalt. In 2002, Pine counterclaimed with its own infringement allegations against Troxler. The two companies were direct competitors in this market and together held most of the market share.
The dates are important here:
1996: In a letter, Pine accused Troxler of infringement (pre-issuance).
1997: Pine’s patent Issues; In a letter, Troxler opined that Pine’s patent was invalid.
2001: Troxler sues Pine on another patent
2002: Pine counterclaims alleging infringement
In the 1996-2002 interim, it was clear that “Pine had first-hand knowledge that Troxler continued to sell its gyratory compactors. . . Despite this knowledge of Troxler’s allegedly infringing activities, Pine did not takeany action against Troxler to defend its patent until February 19, 2002, when it asserted its counterclaim. Nearly five years of allegedly infringing activity occurred before Pine took any legal action to defend its patent.” According to deposition testimony, Pine’s president explained the delay because he “didn’t feel motivated to pursue [the claim].”
Laches & Equitable Estoppel: Looking at these facts, Magistrate Judge Webb found that Pine may well be barred from pursuing its infringement allegations under the doctrines of equitable estoppels and laches.
Under the defense of equitable estoppel, the accused must have relied on the patentee’s assurances or non-enforcement activity in choosing to continue infringing. On summary judgment, the Magistrate recommended that the case go to trial to determine reliance:
[T]here is a material issue of fact as to whether Troxler was in fact lulled by Pine into a sense of security. Because of this material issue of fact, neither party is entitled to summary judgment on this prong Troxler’s equitable estoppel defense.
Enforcement Laches does not require detrimental reliance. However, the patentee must be shown to have “unreasonably and inexcusably” delayed bringing suit and that the alleged infringer subsequently suffered material prejudice. A six year delay creates a presumption of laches. Here, the delay was only five years – calculated from the 1997 patent issuance to the 2002 counterclaims. Although no presumption exists in this case, the magistrate judge noted that Pine’s excuse – lack of motivation – is insufficient.
[A] laches defense exists precisely to prevent patentees from delaying in filing suit simply because they do not feel “motivated to do so.” Accordingly, the undersigned hereby finds that Pine’s unjustified five year delay was unreasonable and that Troxler is entitled to summary judgment on the unreasonable delay prong of its laches defense
The harm of the delay can be shown in a variety of ways. Here, the magistrate judge focused on evidentiary harms and economic harms.
Evidence Lost: Troxler founder and CEO died during the interim. He had directed the development of the accused product.
Evidence Lost: Time delay has probably faded the memory of the Pine inventors.
Evidence Lost: Many documents have been destroyed. (Troxler is a family business – “When the drawer gets full, you toss something.”)
Economic: In the interim, Troxler has invested millions of dollars in manufacturing facilities and producing the alleged product.
Based on the potential validity of some of these arguments, the magistrate judge recommended they be explored at trial.
Unclean Hands: Because laches and equitable estoppel are both judged in equity, Pine argued that Troxler’s “unclean hands” should bar the company from relying upon those defenses. Particularly, Pine noted discovery shenanigans and filing suit without a good faith basis. The magistrate judge agreed that allegations of “egregious behavior” must be included in any equitable decision.
The district court will now decide whether to convert the magistrate judge’s recommendations into an order.
Over the past 33 years, the sheer number of prior art citations have steadily risen. In the mid 1970’s less than one percent of issued patents cited more than twenty prior art references. Today, more than thirty percent of recently issued patents reach that benchmark. Although the examiner is considering more prior art, the average amount of time an examiner spends reviewing an application is about the same as it was back then.
Article 35 of the Japanese Patent laws provide for “reasonable remuneration” from the employer when the employer takes assignment of patent rights. In my first reading, the Japanese law does not appear to include a limit to only Japanese employers. In fact, such a limitation could arguably be a violation of the country’s obligation of national treatment. Is there a definitive answer to whether the Japanese law applies to all patents filed in Japan or only those originating in Japan? Do other country inventor remuneration laws apply to US companies filing US initiated inventions in that country?
Aristocrat v. IGT (Fed Cir. 2008 – on rehearing) ITG PETITION
IGT has petitioned the Federal Circuit for a rehearing en banc. IGT asks the court to consider which violations of the Patent Act would be sufficient to render a patent invalid during litigation.
In this case, Aristocrat filed its US national-stage application one day late. The PTO allowed the applicant to revive the application as unintentionally abandoned. In litigation, IGT argued that the patent should be held invalid as improperly revived because the statute only allows for revival of unavoidably abandoned applications in this situation.
Without reaching the merits of IGTs validity argument, the Federal Circuit summarily dismissed IGT’s claim – finding that ‘improper revival’ is not a ‘cognizable defense’ because it does not fit within any of the four defenses listed in 35 U.S.C. §282 and it is not otherwise justified in equity.
This unanimous decision – signed by Judges Newman, Bryson, and Linn – has broader implications. It calls into question whether traditional invalidity defenses such as nonstatutory double patenting and improper inventorship remain. IGT provides its own list of challenges that will be barred even after PTO error. Notably the gaming company argues that under the new rule, improper revivals of any type could not be challenged nor could failure to pay the maintenance fees.
In its brief, IGT seeks to overturn the panel’s narrow interpretation of a “condition for patentability.” Section 282(2) allows for an invalidity defense based on failure to meet a condition for patentability. However, the appellate panel limited that section only to issues of novelty, utility, and nonobviousness.
‘Section 131 supports [a] common sense reading of the statute. It states that the PTO “shall issue a patent” only if “the applicant is entitled to a patent under the law.” 35 U.S.C. § 131. The plain meaning of that provision is that lawful entitlement to a patent is a condition of patentability. An applicant who abandoned its application without reviving it under the statutory mandated standard is not lawfully entitled to a patent and should have no right to enforce it. The panel’s decision overthrows these common-sense principles as set forth in the Patent Act.’ IGT rehearing motion.
IGT also argues that improper revival was “made a defense” by Congress when it created the law of abandonment that allows only revival for unavoidable delay in cases like these. IGT argue essentially that failure to comply with any patent statute is sufficient to render the patent invalid in litigation.
Notes:
DDC Comment: The Case Should be Heard. The Patent Office serves as a threshold check to establish presumptive property rights. However, both the technology and the law are complicated enough to warrant a ‘second look’ to ensure that each legal requirement is met. It is clear that a significant number of issued patents would be found invalid if challenged. The second look could be through litigation challenges, reexamination proceedings, or some other ex post proceeding. This opinion, however, concludes that no challenge is available in a variety of potential cases. That result is wrong from a policy perspective and It appears that IGT has a strong statutory construction argument as well.
Hat Tip: Thanks to Chico Gholz and Mark Lemley for suggesting specific implications of the panel holding.
< ?xml:namespace prefix ="" w />By Ronald A. Krasnow.
Do you fully use an inventorship determination for the benefit of your company or client? Do you decide on claim scope in view of inventorship?
Consider the Federal Circuit’s decision in Lucent v. Gateway, Dell & Microsoft (decided Sept. 25, 2008 – Fed. Cir. 2007-1546, -1580). While this case undoubtedly demonstrates that patent legislation should not be outcome driven, it contained an interesting proposed use of inventorship determinations. In Lucent, the Court decided that claims 1 and 3 were solely owned by Lucent (because they were invented by Lucent’s employees), but that claims 2 and 4 was jointly owned by Lucent and a joint development partner under a joint development agreement. The Court reasoned that Lucent, who was in control of prosecution, could have split up the claims into separate patents so that it solely owned the invention claimed in claims 1 and 3. (The Court unfortunately did not deal with the reality facing an attorney trying to balance patentable subject matter with inventorship and obviousness under 35 UCS 103(c).)
The Court’s reasoning, created in hindsight, raises a number of practical issues.
The first is, really, how do you make an inventorship decision in view of a joint development agreement? For example, do you draft the patent application as broadly as the prior art will allow? Or do you draft the claims only as broad as your company’s inventors contributions? Can you realistically split up the claims along inventorship lines and still get past Section 103 on parallel applications?
Once the inventorship decision has been made, have you made full use of that decision to the benefit of your company or client. Most patent attorneys focus on making sure that the patent application names the correct inventors or complying with the laws of the countries where the inventors reside. But, the Lucent decision suggests that enforcement should also be considered at the time inventorship and claim scope decisions are made.
One other consideration is drafting the joint development agreement. The Lucent decision suggests that large companies with negotiating power might require joint development partners to not license others inside the field of joint research and development program.
On the policy side, the Federal Circuit’s reasoning logically leads to other considerations:
If you draft broader claims, should there be an equitable remedy available so that the added inventor (read as joint development partner) does not gain a windfall by access to the broader claims, when it is only the narrow and more subservient claims to which it contributed?
Should reissue be afforded to allow case to be divided, to shelter the contribution of the dominant technology owner?
Does the party prosecuting the patent applications have any “duty” to an omitted inventor? For example, if claims to which the omitted inventor contributed are cancelled, or are disclaimed during post-issuance proceedings, does the omitted inventor have any claim for “waste”?
Note: Mr. Krasnow’s new book Intellectual Property Culture (Oxford University Press) was just released [Link]
Attorneys have always learned by following the example of their elders and peers. With that in-mind, I would like to post several exemplary responses to patent office rejections and objections. Please forward to dcrouch@patentlyo.com with a very brief explanation of the topic/technology. If you like, you may scrub the response for anonymity. Likewise, feel free to submit good ones you have found that were written by others. Potential topics:
Arguing that combination is nonobvious (under KSR);
Arguing secondary factors of nonobviousness;
Swearing behind prior art;
Arguing that prior art is not enabled;
Disputing date of prior art;
Arguing that prior art is not inherently anticipatory;
This appeal focuses on the question of when a prior art disclosure is sufficiently enabled.
An Aventis patent covers the use of RILUTEK (riluzole) to treat ALS. Impax filed an ANDA with the FDA (seeking to market a generic version of the drug). In subsequent litigation, Impax also alleged, inter alia, that the listed patent should be held invalid. In particular, Impax argued that an earlier Aventis patent (the ‘940 patent) anticipates the asserted Aventis patent (the ‘814 patent) by suggesting a class of compounds may be used to treat ALS. The district court, however found that the ‘940 patent “does not enable a person of ordinary skill in the art to treat ALS with riluzole and therefore does not anticipate claims 1-5 of the ‘814 patent.”
Burden particularly heavy: A defendant who hopes to use previously considered art to invalidate a patent has a “particularly heavy” burden.
Thus, a party challenging patent validity has the burden to prove its case with clear and convincing evidence. When the examiner considered the asserted prior art and basis for the validity challenge during patent prosecution, that burden becomes particularly heavy. See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1467 (Fed. Cir. 1990).
In this case, the ‘940 patent had been considered by the examiner during prosecution of the asserted patent.
Enabled Prior Art: To anticipate, the prior art must be enabling – i.e., it must “enable one of ordinary skill in the art to make the invention without undue experimentation.” This enablement standard is different from the applicant’s 112 enablement requirement which requires enablement of both making and using the invention. That distinction becomes lost in cases like this, however, where the patent covers a method of treatment. Here, the Federal Circuit appears to require anticipatory prior art to enable practicing the claimed method.
Enablement of prior art is a question of law, but is based on underlying factual findings. In close cases, the important factual finding is the amount of experimentation that would have been necessary. Applying Wands factors, the Federal Circuit agreed that the prior reference was not enabling.
As shown by the trial court, the [prior art] ‘940 patent’s dosage guidelines are broad and general without sufficient direction or guidance to prescribe a treatment regimen. The alleged prior art also contains no working examples. Finally, nothing in the ‘940 patent would have led one of skill in the art to identify riluzole as a treatment for ALS. In sum, each component of the claimed invention—identifying riluzole as a treatment for ALS and devising dosage parameters—would require undue experimentation based on the teachings of the ‘940 patent.
Burden of Proving Enabled Prior Art: In judging anticipation, courts generally presume that prior art is enabled. That presumption may be overcome by a patentee by providing “persuasive evidence” of nonenablement. At that point, the ultimate burden of proof (with clear and convincing evidence) lies with the accused infringer. In this case, the district court did not explicitly follow this burden shifting framework. On appeal, the Federal Circuit held that articulation of the rule was not necessary. The burden was properly shifted because Aventis presented “sufficient evidence to overcome the presumption of enablement.”
Holding: Affirmed. Validity challenge defeated because prior art was not enabled.
Notes:
The opinion did not focus on timing: As technology develops more and more prior art references become enabled. Thus, it is important to consider at what point in time the reference must be enabling.
Disclosure: My former colleagues at MBHB represent Aventis in this case. The district court case was ongoing while I was there.
Federal Circuit Judge Lourie recently discussed the state of the court. Here are some points [LINK]:
11.3 Months: Time from docketing to disposition of district court [patent] appeals in the past year.
2.1 Months: Time from calendaring to disposition of the same cases.
Note: It is unclear from Judge Lourie’s speech if the times are averages or medians. The court has made great strides in keeping the average and median pendency quite low. There are however, a group of outliers with much longer pendency. The outliers are, for the most part, associated with a couple of particular Federal Circuit judges.
50-mile rule: “On this issue of district court judges sitting with us, some recent patent bills have proposed to eliminate the current statutory requirement that judges on our court live within a 50-mile radius of the district. In my view, no persuasive reason has been given for that change. I believe it would be contrary to the best interest of the court and its functioning, and hence the law”
PTO Discussion: “No doubt an overcrowded examination system that places quotas on examiners plays a role in our less-than-perfect examination system.”
Pro Patent Court: “Since I have been on the court, over 18 years, not once have we [as a court] had a discussion as to what direction the law should take, whether we should be pro-patent or not. That is because we are not a policy-making body. We have just applied the law and precedent as best we could determine it to the cases that have come before us. In fact, we have been criticized for, in the view of some people, narrowing the doctrine of equivalents, emphasizing the need for a written description commensurate with the claims, and affirming summary judgments of non-infringement that in effect preclude juries from deciding these cases.”
Appellate Advice:
Make sure your case is final before filing the appeal
Cross appeals are only for the purpose of challenging the decision (not for arguing that the decision is correct)
Don’t allege that “every business fact is super-confidential. It makes it difficult for us to ask questions from the bench and write an opinion.”
Limit the issues: “Having more than three issues in a brief suggests to us that you don’t have a strong appeal.”
Datascape sued Sprint Nextel for infringement of its patents covering a system for linking non-standard devices to an open network.
In an interesting holding, the Federal district court in Georgia held it lacks personal jurisdiction over Sprint Nextel. It turns out that – despite indications from its website – Sprint Nextel is simply a holding company that holds stock in operating companies.
Based on the evidence presented in this case, the Court is unable to find that Sprint Nextel has contacts with the State of Georgia sufficient to confer either general or specific jurisdiction over Sprint Nextel. Moreover, as to the analysis for specific jurisdiction, in particular, the Court is unable to find, as required by Supreme Court and Federal Circuit law, that Sprint Nextel purposefully directed its activities at the State of Georgia or that the assertion of personal jurisdiction would be reasonable and fair. operating activity of Sprint Nextel, according to Mr. Andreasen, is a telephone refurbishing business in Kansas. Sprint Nextel denies manufacturing, using, selling, importing, and/or offering for sale products or services related to wireless products
IP Law Hall of Fame New Inductees (Sponsored by IAM) [LINK]:
Jane Ginsburg – Columbia Law Professor; written extensively on the intereconnection between copyright and trademark law.
Francis Gurry – New Director-General of the World Intellectual Property Organisation (WIPO)
Dolores Hanna – Retired partner from Bell Boyd & Lloyd. Former head of INTA, IPLAC, WBA of Illinois, etc.
Michael Kirk — Recently retired Executive Director of the American Intellectual Property Association.
Niels Reimers – Former director of Stanford University’s Office of Technology Licensing. Founder of AUTM.
New IPO Board Members:
Wayne Sobon (Accenture)
Roger Gobrogge (Dow Corning)
Michelle Lee (Google)
George Johnston (Hoffman-La Roche)
Washington University:
Tonight WashU will host the VP debate
On Friday, October 10, I will be speaking at WashU law school to a much smaller crowd. (3:00 – 4:00pm) The topic trademak law and the protection of designs. I believe that CLE credit is being arranged for the free event. [LINK]
The graph below shows the average number of claims filed with each patent application. I used as my sample 400,000+ original published patent applications. “Original” means that these applications do not claim priority back to an earlier filing. The trend leading up to late 2004 was a very slight (but statistically significant) rise in the total number of claims being filed. Then, in late 2004, we see a sudden drop. Over a one-month time period, the average number of claims dropped from about twenty six claims per application to about twenty two claims per application.
The simple explanation for that change is that the Patent Office dramatically increased its prosecution fees. Instead of charging $18 for each additional claim (over 20), applicants who filed on or after December 8, 2004 were required to pay $50 per additional claim. At the same time, independent claim fees were also more than doubled from $86 per additional independent claim to $200. The PTO also began charging a hefty fee for patent applications that were exceedingly long. All these forces came together to give applicants a clear incentive to forgo potential claim scope in favor of reducing the up-front fees. Since January 2004, the number of claims has continued to fall slightly (but significantly).
This change is good. Applicants will tend to drop red-herring and worthless claims. That in-turn will hopefully lead to tighter prosecution times and more clarity of claim scope.
Like everyone else, patent attorneys like to clean their desks for the weekend and are less productive on Mondays. The chart to the right shows the percentage of patent of patent applications filed on each day of the week. (My data is from a sample of 1.4 million published patent applications filed 1999 to 2007). With the advent of electronic filing, patent attorneys are now able to file on Sunday. For published applications filed in 2007 about 1 out of every 250 was filed on a Sunday. (0.41%).
Patent Reform Act: Senator Kyl has introduced S.3600.
Hal Wegner Reports:
No pay raise for judges this year
PTO Budget: $2.1 billion
Six supreme court petitions may be decided within a week:
Nuijten (patentability of a signal)
Translogic (constitutionality of BPAI appointments)
Echostar (expert issues)
Monsanto (patentability of seeds)
IR v. IXYS (timing of appeals)
Samsung v. Rambus (sanctions)
Biomedical Patent Management Corp. v. California Dept. of Health Services (state immunity) is still awaiting the views of the Administration.
Can someone explain the various curves and bumps from the graph below?
On appeal, the Federal Circuit affirmed the permanent injunction against Qualcomm – finding that the district court acted within its equitable discretion and properly followed the injunctive relief guidelines set forth by the Supreme Court in eBay v. MercExchange (2006).
Although recognizing the importance of its eventual decision, the Federal Circuit again refrained from determining whether a finding that a patent has been infringed should serve as presumptive evidence of irreparable harm.
“It remains an open question ‘whether there remains a rebuttable presumption of irreparable harm following eBay.'” Quoting Amado (Fed. Cir. 2008)
Irreparable Harm: The patentee Broadcom is a non-practicing entity in the sense that it does not make or sell the invention claimed in the asserted patents. The patentee does, however, compete indirectly with Qualcomm by making an alternative chipset. Here, the Federal Circuit agreed that eBay does not allow a general rule that would prevent a non-practicing from obtaining injunctive relief and that in this Broadcom had been able to show the potential for irreparable harm.
“Broadcom provided evidence of irreparable harm, despite the fact that it does not currently practice the claimed inventions. This result is consistent with eBay, in which the Supreme Court cautioned that ‘traditional equitable principles do not permit such broad classifications’ as presuming that a patentee cannot establish irreparable harm based on a patentee’s ‘willingness to license its patents’ or ‘its commercial activity in practicing the patents.'”
Adequate Remedy at Law: Broadcom had licensed its patents Verizon. A license can theoretically show that monetary damages are adequate. However, the particular market situation is important for that determination. In this case the Verizon license is a vertical license while a license to Qualcomm would be a horizontal license. Thus, the court agreed that “the Verizon license has little bearing on the effect of a compulsory license to a direct competitor.”
Hardships and Public Interest: The district court created the injunction order with a “sunset provision.” Under the plan, Qualcomm may continue infringing for twenty-months while paying a compulsory license rate. At the end of those twenty months, the company will be enjoined from further infringement. The delayed nature of the injunction consequently removed any notion that the a balance of hardships or the public interest would favor the adjudged infringer because it gives plenty of time to redesign and redeploy to customers without any interruption of service.
This decision is insightful in how it moves the proper focus from whether an injunction should issue to the more nuanced issues of how to shape the injunction in a way that best serves the public interest while still protecting property rights. One problem with complex injunctions and ongoing compulsory licenses is that the district court must continue to monitor and make judgments on the situation. In this case the district court recently found Qualcomm in contempt for failing to pay its ongoing royalties of more than $93 million. As a sanction, the court ordered Qualcomm to pay gross profits – noting that “[w]hile an award of gross profit may overcompensate … it will do so in an amount which bears a direct relationship to the degree of infringement. The more that were sold, the greater the award.”
Praxair’s patents cover pressurized storage containers for potentially hazardous gasses. The patents teach safety mechanisms to help prevent accidental rapid discharge. Of the three patents asserted against ATMI, the Delaware district court found two unenforceable due to inequitable conduct during prosecution. The asserted claims of the third patent were held invalid as indefinite under 35 U.S.C. §112¶2. On appeal, the Federal Circuit reversed-in-part.
Inequitable Conduct: Each patent applicant has a duty to act with “candor, good faith, and honesty” when prosecuting patent applications. Material breach of this duty can result in any resulting patents being held unenforceable due to inequitable conduct. Proof of inequitable conduct has been divided into two parts – requiring “clear and convincing evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the [PTO].” Quoting Cargill v. Canbra Foods, Ltd., 476 F.3d 1359 (Fed. Cir. 2007).
Direct evidence is rarely available to prove intent to deceive the PTO when the patent applicant is accused of withholding material information. Rather, the intent element is typically inferred by the proof that the material withheld was highly material; that the applicant knew (or should have known) of the materiality; and that the applicant has no credible excuse for withholding information.
Highly Material Based on Statements in Prosecution: Looking at Praxair’s ‘115 patent, the court did not see the withheld prior art as highly material on its own. However, the reference became highly material based on Praxair’s statements during prosecution. Specifically, the reference became highly material when Praxair told the PTO that the prior art does not teach the elements found in the withheld art. Testimony of the inventors proved that they knew that those elements were, in fact, in the prior art.
Because those same prosecution statements were not submitted during prosecution of Praxair’s ‘609 patent, the Federal Circuit held that the withheld references could not be considered highly materiality.
“At the time the four statements discussed were made during the prosecution of the ‘115 patent, there had already been a notice of allowability indicating that all claims of the ‘609 patent would be issued. ATMI has not established, or even asserted, that the statements in the prosecution of the ‘115 patent somehow infected the prosecution of the ‘609 patent. Absent the four statements, the district court did not make any finding of intent with respect to the withholding of RFO art during the prosecution of the ‘609 patent.”
Thus, the Federal Circuit affirmed the unenforceability holding as to the ‘115 patent, but reversed as to the ‘609 patent. On remand, the lower court will reconsider infringement of the ‘609 patent based on a claim construction error.
Indefinite Claims:
“Indefiniteness is a matter of claim construction, and the same principles that generally govern claim construction are applicable to determining whether allegedly indefinite claim language is subject to construction. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348 (Fed. Cir. 2005). Indefiniteness, like claim construction, is a question of law, and we review a district court’s entry of summary judgment on the issue of indefiniteness de novo.”
Claims are generally only found indefinite if they are “insolubly ambiguous, and no narrowing construction can properly be adopted.” Here, the district court found the claim term “port body” of the third patent to be indefinite because it was “not described, labeled, or coherently discussed in the patent.” On appeal, however, the Federal Circuit reversed that finding – holding instead that the patent’s specification was adequate although not eloquent.
“Although the discussion of the port body in the ‘895 patent’s specification may not be a model of clarity, the specification adequately explains that the port body is a housing that sealingly engages the outlet of the cylinder and defines the fluid discharge path.”
Extrinsic evidence: As with claim construction, the use of extrinsic evidence in determining definiteness is only secondary if applicable at all. In this case, the patentee’s expert was unable to point to any specific portion of the structure that could be considered the “port body.” On appeal, the Federal Circuit rejected that factual element as lacking impact on the legal question of indefiniteness.
“Even if we were to agree that Dr. Fronczak was unable to reach a single consistent construction of the port body, such extrinsic evidence would not prove the ‘895 patent invalid, since indefiniteness is a legal rather than a factual question.”
Indefiniteness holding reversed.
Dissenting in part, Judge Lourie saw no inequitable conduct with either patent. In particular, Judge Lourie noted that the evidence of intent to deceive the PTO was quite weak.
“While a smoking gun may not be needed to show an intent to deceive, more is needed than materiality of a reference. The district court did not find anything further here. In addition, the court did not engage in any balancing of materiality and intent as is required by our precedent.”
CSIRO is a nonpractising patent holder. It is also an arm of the Australian government. After winning an infringement suit against Buffalo Tech, CSIRO was awarded permanent injunctive relief to protect its spread spectrum WLAN technology.
On appeal, more than a half-dozen amici filed briefs arguing for and against injunctive relief in this situation. On appeal, however, the Federal Circuit vacated the infringement holding – leaving the discussion of injunctive relief for another day. The vacatur came from the district court’s pre-KSR strict requirement for a motivation to combine references.
Combining References For Novelty: On novelty, Buffalo asked the court to combine two references in its analysis because one of the reference cites the other in a footnote. The Federal Circuit rejected that argument — finding that the footnote discussion was insufficient to concatenate the two references. “In particular, the reference to Bingham does not ‘identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.’ Advanced Display Systems, (Fed. Cir. 2000).”
New Matter: 35 USC 132 bars an applicant from presenting new matter once a patent application has been filed. In litigation, the written description requirement of Section 112 serves as the basis for invalidating patents with added new matter. The new matter limitation is not strict. Rather, when the claims are amended, the patent will only be invalidated if the original specification is not “sufficient to allow persons of ordinary skill in the art to recognize that the inventor invented the subject matter that is claimed in the asserted claims.” Further, the PTO’s decision to allow an amendment provides a patent with “an especially weighty presumption of correctness.”
Here, CSIRO changed its claim limitation from “frequencies in excess of 10 GHz” to simply “radio frequencies.” On appeal, the Federal Circuit affirmed the lower court’s factual finding that the amendment did not impermissibly add new matter. (No clear error). In particular, neither party suggested a technical distinction between handling lower frequencies. Further, the court found that the original specification was not limited to frequencies in excess of 10 GHz.
On remand, the lower court will reevaluate obviousness.
Lucent’s two patents cover a compression method for MP3 digital audio files. The case originally resulted in a $1.5 billion jury award for Lucent. The district court, however set aside the jury verdict. That decision is affirmed here on appeal. Lucent’s problems stem from (1) joint ownership of its ‘080 patent and (2) failure to provide even one specific instance when the Microsoft’s encoder actually infringed the ‘457 patent.
“Lucent has failed to provide sufficient evidence to establish that the High Quality encoder actually runs on Windows Media Player and thus it would be too speculative to conclude that Windows Media Player necessarily infringes the ‘457 patent.”
This case provides important lessons for both inventorship and proving infringement. More to come.
A California jury found Qualcomm liable for infringing or inducing infringement of three Broadcom patents covering 3G mobile phone technology. (US Pat. Nos. 6,847,686, 5,657,317, and 6,389,010). On appeal, the Federal Circuit has invalidated one of the patents, but left the judgment and injunction standing.
Seagate and Inducement: Like willfulness, inducing infringement requires proof of culpability. In Seagate, the Federal Circuit altered the standard for willful infringement – making it more difficult for a patentee to obtain treble damages. Consequently, in the willfulness context, there is no longer an “affirmative duty of due care” to avoid infringement. Here, Qualcomm argued (unsuccessfully) that the evidence available to prove inducement should be changed as well.
More generally, the defendant argued that it could not be liable for inducement if it was not liable for willfulness because the specific intent standard for inducement is greater than the recklessness associated with willful infringement. On appeal, the Federal Circuit rejected these arguments – finding the inducement standards unchanged and finding that inducement may be found even when willfulness is absent. The crux of the holding may be that the “specific intent” requirement of inducement is not so specific. Under the leading inducement case DSU v. JMS, proof of inducing infringement requires evidence that the accused “intended to cause the acts that constitute the direct infringement,” and that the accused “kn[ew] or should have known [that] its action would cause the direct infringement.”
The evidentiary argument was whether – for its inducement decision – the jury could consider Qualcomm’s decision to seek advice of counsel as circumstantial evidence of intent. The appellate panel saw such evidence as fair game.
“Because opinion-of-counsel evidence, along with other factors, may reflect whether the accused infringer “knew or should have known” that its actions would cause another to directly infringe, we hold that such evidence remains relevant to the second prong of the intent analysis. Moreover, we disagree with Qualcomm’s argument and further hold that the failure to procure such an opinion may be probative of intent in this context. It would be manifestly unfair to allow opinion-of-counsel evidence to serve an exculpatory function, as was the case in DSU itself, see 471 F.3d at 1307, and yet not permit patentees to identify failures to procure such advice as circumstantial evidence of intent to infringe. Accordingly, we find no legal error in the district court’s jury instructions as they relate to inducement.”
Too Broad: Prosecutors are typically careful to ensure that claims will be given a broad interpretation during litigation. If the claim is too broad, however, it will likely be found invalid. Here, Broadcom’s ‘686 patent digital video signal processor. The district court found that a ‘global controller’ was required for operation of the processor, but the Federal Circuit could not find that limitation in the claims or any justification from the specification. Without that limitation, the claim was invalid as anticipated.
Broadcom’s argument for a narrow interpretation was based on its discussion of prior art admissions in the specification – arguing that its admitted prior art would invalidate a broad claim. The Federal Circuit did not reject that contention per se. Rather, the court rejected Broadcom’s version because the company had failed to show that its admitted prior art would actually anticipate the broad claim. “Because Broadcom has not demonstrated that “every limitation” of claim 1 is found in this reference, its self-invalidating argument must fail.”
Late Claim Construction: Claim construction can happen at any stage of a case. Here, however, Qualcomm did not request a construction of the “network” term found in the ‘317 patent until after the jury had returned its verdict. On appeal, the Federal Circuit agreed with the lower court that Qualcomm had waived its right to demand construction of that term. “We agree that Qualcomm cannot be allowed to create a new claim construction dispute following the close of the jury trial.”
‘Qualcomm’s eleventh-hour attempt to litigate a newly minted claim construction controversy falls squarely within our holding in Eli Lilly & Company v. Aradigm Corporation, where a party “never requested that the district court construe any terms in [the relevant claim] and never offered a construction of [that claim],” but rather “[o]nly after the presentation of all of the evidence to the jury . . . even suggest[ed] that claim construction might be helpful to determine the proper scope of the claimed invention.” 376 F.3d 1352, 1360 (Fed. Cir. 2004).’
Injunctions: District courts issue injunctions while sitting ‘in equity.’ This typically gives the court discretionary power to shape and craft relief in a way that best achieves the right result. Here, the district court pushed enforcement of the injunction back to January 31, 2009. In the meantime, Qualcomm pays mandatory damages and Broadcom has now power to stop continued infringement in this period.
In the appeal, Broadcom argued that, under eBay, no permanent injunction should be awarded. In particular, Qualcomm had licensed its patents to Verizon for money – indicating that monetary relief is adequate and because the injunction will disrupt (non-Verizon) CDMA carriers (hardship) and will also be tough on the public. On appeal, the appellate panel rejected those arguments and instead found that the district court acted within its proper discretion by issuing the injunction order. (more to come on injunction order)
Notes:
In the parallel Broadcom v. ITC, last week the Federal Circuit vacated the ITC’s non-infringement finding of another Broadcom patent. The ITC will reconsider that issue.
A third parallel case, Kyocera v. ITC, is pending appeal at the Federal Circuit. In that case, the cell phone companies are appealing the ITC’s exclusion order regarding yet another Broadcom patent.
Article 35 of the 
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Please excuse the mess on the site, we are trying out some new formats. 
Like everyone else, patent attorneys like to clean their desks for the weekend and are less productive on Mondays. The chart to the right shows the percentage of patent of patent applications filed on each day of the week. (My data is from a sample of 1.4 million published patent applications filed 1999 to 2007). With the advent of electronic filing, patent attorneys are now able to file on Sunday. For published applications filed in 2007 about 1 out of every 250 was filed on a Sunday. (0.41%). 
Broadcom v. Qualcomm (