Patent – Patently-O https://patentlyo.com America's leading patent law blog Mon, 19 Aug 2019 03:23:06 +0000 en-US hourly 1 https://wordpress.org/?v=4.9.10 McDonnell Boehnen Hulbert & Berghoff LLP https://patentlyo.com/media/2014/01/mbhb-3b.gif https://www.mbhb.com/ 480 150 Intellectual Property Law Relating back to the Original Complaint https://patentlyo.com/patent/2019/08/relating-original-complaint.html https://patentlyo.com/patent/2019/08/relating-original-complaint.html#comments Fri, 16 Aug 2019 20:28:38 +0000 https://patentlyo.com/?p=27591 by Dennis Crouch

Anza Tech., Inc. v. Mushkin, Inc. (Fed. Cir. 2019).

The district court dismissed Anza’s infringement lawsuit — finding it barred by the six-year statute of limitations on collecting back-damages.  The statute:

Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

35 U.S.C. § 286.

The original complaint filed March 2017 was within six-years of the alleged infringement.  However, once the patentee got around to filing its second amended complaint in June 2018, the six year deadline was passed.  The district court dismissed the case holding that the second complaint did not sufficiently “relate back” to the original complaint and therefore was given its actual (later) filing date.  On appeal the Federal Circuit has reversed – finding the “district court’s application of the relation back doctrine … overly restrictive.”

Relation Back: Fed. R. Civ. Proc. R. 15(c) provides the rules for when an amendment “relates back” to the original. This issue almost always arises in the situation seen here — the original filing was timely, but the amendment was made after expiration of some statute of limitations.

Continue reading Relating back to the Original Complaint at Patently-O.

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by Dennis Crouch

Anza Tech., Inc. v. Mushkin, Inc. (Fed. Cir. 2019).

The district court dismissed Anza’s infringement lawsuit — finding it barred by the six-year statute of limitations on collecting back-damages.  The statute:

Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action.

35 U.S.C. § 286.

The original complaint filed March 2017 was within six-years of the alleged infringement.  However, once the patentee got around to filing its second amended complaint in June 2018, the six year deadline was passed.  The district court dismissed the case holding that the second complaint did not sufficiently “relate back” to the original complaint and therefore was given its actual (later) filing date.  On appeal the Federal Circuit has reversed – finding the “district court’s application of the relation back doctrine … overly restrictive.”

Relation Back: Fed. R. Civ. Proc. R. 15(c) provides the rules for when an amendment “relates back” to the original. This issue almost always arises in the situation seen here — the original filing was timely, but the amendment was made after expiration of some statute of limitations. Under the Rule, an amended pleading relates back to the original pleading if its claims “arise out of upon the conduct, transaction, or occurrence set out—or attempted to be set out—in the original pleading.” (Note the Rule provides three mechanisms for relating back, and this is the most relevant for this case).

In its appeal, the Federal Circuit ruled that its own law applies (rather than the regional circuit court) because the relation-back question can depend upon an “analysis of the accused acts of infringement.”  Here, the court treated the relation-back issue as a question of law (reviewed de novo on appeal) except as to factual conclusions made by the district court, which are reviewed for clear error.

The relevant complaint timeline:

  • Original complaint – March 2017 – alleging Mushkin infringed U.S. Patent 7,124,927 associated with 16 products.
  • First amended complaint – September 2017 – joining Avant Tech as co-defendant (that case was then severed and the Mushkin case transferred from California to Colorado)
  • Second amended complaint – June 2018 – dropping the ‘927 patent and instead added two different patents U.S. Patents 6,354,479 and 6,651,864; dropping ten of the accused products and adding two additional products.

By the third filing, the original patent is no longer asserted but rather two family member patents; and two new products had been added as infringing (along with ten being deleted).

On appeal, the Federal Circuit held that the claims directed to the six originally accused products properly relate back to the original complaint. For the allegations again the two new products, the court remanded for a new analysis on whether those allegations should also relate back.

In its opinion, the appellate panel primarily focused on the question of notice — finding that the “technological overlap [between the patents] suggests that the aggregate of operative facts underlying infringement under the ’927 patent in the original complaint gave notice of the substance of the claims of infringement under the ’479 and ’864 patents in the second amended complaint.”

= = = = =

What is a Statute of Limitations: One element of interest in this case is the the statement by the court that Section 286 is a “statute of limitations.” I have always called it such, but others have regularly called-me-out on that point — arguing that patent law does not have a statute of limitations or statute of repose.  This opposing argument is that Section 286 limits back-damage recovery but does not prevent the lawsuit itself.  Of course, that argument is bunk.  The Supreme Court explained as much in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 137 S. Ct. 954, 961–62 (2017):

First Quality contends that … § 286 of the Patent Act is not a true statute of limitations. A true statute of limitations, we are told, “runs forward from the date a cause of action accrues,” but § 286 “runs backward from the time of suit.”  . . .  This argument misunderstands the way in which statutes of limitations generally work. First Quality says that the accrual of a claim, the event that triggers the running of a statute of limitations, occurs when “a plaintiff knows of a cause of action,” ibid., but that is not ordinarily true. As we wrote in Petrella, “[a] claim ordinarily accrues ‘when [a] plaintiff has a complete and present cause of action.’ ” 572 U.S., at ––––, 134 S.Ct., at 1969; see Graham County Soil & Water Conservation Dist. v. United States ex rel. Wilson, 545 U.S. 409, 418–419, 125 S.Ct. 2444, 162 L.Ed.2d 390 (2005). While some claims are subject to a “discovery rule” under which the limitations period begins when the plaintiff discovers or should have discovered the injury giving rise to the claim, that is not a universal feature of statutes of limitations.

So, it is nice to see that the Federal Circuit has at least accepted this instruction from the Supreme Court by specifically identifying Section 286 as a “statute of limitations.”

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Construe Claims First; Then Rule on Eligibility https://patentlyo.com/patent/2019/08/construe-claims-eligibility.html https://patentlyo.com/patent/2019/08/construe-claims-eligibility.html#comments Fri, 16 Aug 2019 15:43:15 +0000 https://patentlyo.com/?p=27588 Construe Claims First; Then Rule on Eligibility

MyMail, Ltd. v. ooVoo, LLC (Fed. Cir. 2019)

In a split decision, the Federal Circuit has remanded this case — holding that the district court needs to construe the claims before adjuding patent eligibility.

MyMail’s patents cover the method method of modifying toolbars on a (PC) computer display from the server-side without user interaction.  N.D. Cal. Judge Koh dismissed the case on the pleadings — finding the claims directed to the abstract idea of “updating toolbar software over a network without user intervention.”  The court noted that the claims basically gather, analyze and process information and generate a response to transmitted data — all of which are generally abstract functions. In addition the court noted that the claims “relate to [the abstract idea of] using communications networks to update software stored on computers.” Under Alice Step 2, the court found no inventive concepts in the claim — but rather generic, conventional components such as “Internet-connected computers and servers.”  While a “toolbar” might be interesting, they were already in widespread use as of the invention and so not an inventive concept.

In an earlier proceeding, the E.D. Tex. construed the term “toolbar” with some particularity as a “button bar that can be dynamically changed or updated via a Pinger process or a MOT script.” MyMail, Ltd.

Continue reading Construe Claims First; Then Rule on Eligibility at Patently-O.

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Construe Claims First; Then Rule on Eligibility

MyMail, Ltd. v. ooVoo, LLC (Fed. Cir. 2019)

In a split decision, the Federal Circuit has remanded this case — holding that the district court needs to construe the claims before adjuding patent eligibility.

MyMail’s patents cover the method method of modifying toolbars on a (PC) computer display from the server-side without user interaction.  N.D. Cal. Judge Koh dismissed the case on the pleadings — finding the claims directed to the abstract idea of “updating toolbar software over a network without user intervention.”  The court noted that the claims basically gather, analyze and process information and generate a response to transmitted data — all of which are generally abstract functions. In addition the court noted that the claims “relate to [the abstract idea of] using communications networks to update software stored on computers.” Under Alice Step 2, the court found no inventive concepts in the claim — but rather generic, conventional components such as “Internet-connected computers and servers.”  While a “toolbar” might be interesting, they were already in widespread use as of the invention and so not an inventive concept.

In an earlier proceeding, the E.D. Tex. construed the term “toolbar” with some particularity as a “button bar that can be dynamically changed or updated via a Pinger process or a MOT script.” MyMail, Ltd. v. Yahoo! Inc., 16-CV-1000 (E.D. Tex. Sept. 9, 2017). MyMail requested the same construction in this case — hoping that the added complexity would either (1) take the concept out of the abstract idea realm or (2) be considered an inventive concept.  ooVoo argued that the prior claim construction was “wrong.”

Judge Koh did not address claim construction in her R. 12(c) dismissal on the pleadings and, on appeal, the Federal Circuit has vacated that holding:

[T]he district court’s failure to address the parties’ claim construction dispute is error under Aatrix.

Although claim construction is a question of law, the Federal Circuit deferred on the idea of construing the term itself — noting its role of providing “de novo review” is quite different from and more limited than a district court’s initial determination of the merits. So, on remand, the district court will need to construe the claims and then consider whether they are still ineligible.

The majority opinion was authored by Judge Reyna and joined by Judge O’Malley.  Judge Lourie wrote in dissent and argued that the claim construction issue is a “mirage” because the claims are “clearly abstract, regardless of claim construction.”

The claims’ breadth illustrates their abstract nature. They cover any toolbar modification, on any of the multitudes of Internet-connected devices, using generic servers and Internet functionality. . . .  [A]ny invention in using known devices in a new way to transmit data must lie in using the devices themselves differently to accomplish a new process, not simply transmitting a different type of data according to the same process.

According to Judge Lourie, this is not a case of “inventive programming.”

= = = =

The patent here stems from a broad provisional application filed in 1997 by Netsafe. Netsafe owned Robert Derry $70,000. He obtained judgment and was awarded the patent rights as payment back in 2000. Derry is the head of MyMail and lead inventor Thomas Selgas is a co-founder.

Mymail obtained $6.8 million settlement on the patents from various companies back in 2005 and Selgas reportedly received a distribution of $1.1 million. According to IRS court filings, Selgas bought gold coins rather than paying taxes on the income. [US v. Selgas][DOJ Press Release]. That case is ongoing.

= = = =

In a separate IPR, the PTAB found the patent not proven invalid as obvious. Unified Patents Inc. v. MyMail, Ltd., IPR2017-00967.

= = = =

Eric Buether from Buether Joe & Carpenter (Dallas) argued for the patentee MyMail; Robert Hails from Baker Hostetler (DC) argued for the defendants.

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“Substantially Equivalent” Disclosure Satisfies Written Description https://patentlyo.com/patent/2019/08/substantially-equivalent-description.html https://patentlyo.com/patent/2019/08/substantially-equivalent-description.html#comments Thu, 15 Aug 2019 18:16:06 +0000 https://patentlyo.com/?p=27582 by Dennis Crouch

Nalpropion Pharmaceuticals, Inc. v. Actavis Laboratories FL, Inc. (Fed. Cir. 2019)

It is always surprising to see the Federal Circuit reverse a non-obviousness holding; However, the most important aspect of this decision is likely the written description discussion. 

This Hatch-Waxman litigation was triggered by the Abbreviated New Drug Application (ANDA) filed by Actavis — seeking permission from the FDA to begin marketing weight loss drugs naltrexone hydrochloride and bupropion hydrochloride extended-release tablets. Nalpropion is the branded distributor of the Contrave and owner of the Orange Book listed patents U.S. Patents 7,375,111, 7,462,626, and 8,916,195.  The lawsuit was started by Orexigen who held rights at the time. Nalproprion bought rights from Orexigen out of Bankruptcy in a $75 million asset purchase. (The problem is that the pills are not overly effective — ~10% weight loss, but only when combined with diet changes and exercise.)

The patentee won the district court litigation and obtained an injunction against generic entry by Actavis until expiration of the patents in suit. On appeal, the Federal Circuit has partially reversed — finding some of the asserted claims obvious.

Continue reading “Substantially Equivalent” Disclosure Satisfies Written Description at Patently-O.

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by Dennis Crouch

Nalpropion Pharmaceuticals, Inc. v. Actavis Laboratories FL, Inc. (Fed. Cir. 2019)

It is always surprising to see the Federal Circuit reverse a non-obviousness holding; However, the most important aspect of this decision is likely the written description discussion. 

This Hatch-Waxman litigation was triggered by the Abbreviated New Drug Application (ANDA) filed by Actavis — seeking permission from the FDA to begin marketing weight loss drugs naltrexone hydrochloride and bupropion hydrochloride extended-release tablets. Nalpropion is the branded distributor of the Contrave and owner of the Orange Book listed patents U.S. Patents 7,375,111, 7,462,626, and 8,916,195.  The lawsuit was started by Orexigen who held rights at the time. Nalproprion bought rights from Orexigen out of Bankruptcy in a $75 million asset purchase. (The problem is that the pills are not overly effective — ~10% weight loss, but only when combined with diet changes and exercise.)

The patentee won the district court litigation and obtained an injunction against generic entry by Actavis until expiration of the patents in suit. On appeal, the Federal Circuit has partially reversed — finding some of the asserted claims obvious.

The active ingredients were already known in the art, and so the claims at issue are directed toward (1) a method of treating obesity with naltrexone and bupropion and (2) a sustained release formulation of the two drugs in a single pill.

The key prior art taught use of the two drugs (in sustained release form) to avoid weight gain associated with smoking cessation (rather than losing weight for obese/overweight patients).  A second reference taught using bupropion for weight loss. Another reference taught the use of the two drugs as a treatment of depression and included case studies showing weight loss. The district court considered these references but found the weight loss effect were not clear enough and that there were too many potential side-effects to encourage experimentation.

On appeal, the Federal Circuit reversed — finding the claims obvious as a matter of law.

The prior art here discloses the claimed components of the composition claims and the steps of the method claims including the use claimed by the method. . . .

Given that both drugs had shown weight loss effects, we conclude that a person of ordinary skill would have been motivated to combine them. In fact, such persons did so [in the prior art]. O’Malley [the first reference] teaches a combination of effective amounts of sustained-release bupropion and naltrexone for minimizing weight gain. Likewise, Dante teaches use of an opioid antagonist, preferably naltrexone, and an antidepressant, including bupropion, for decreasing sugar cravings, noting that naltrexone administration alone led reduced sugar cravings and weight loss in two examples. A person of skill would have understood that a combination for reducing weight gain and decreasing carbohydrate  cravings may affect weight loss as well. . . .

The inescapable, real-world fact here is that people of skill in the art did combine bupropion and naltrexone for reductions in weight gain and reduced cravings—goals closely relevant to weight loss. Contrary to Nalpropion’s view, persons of skill did combine the two drugs even without understanding bupropion’s mechanism of action but with an understanding that bupropion was well-tolerated and safe as an antidepressant.

As a result here, the court held these claims obvious.

Power of a Portfolio: Important note here is that the the obviousness decision invalidated claims from only two of the three patents.  The claims in the third patent include more specific dosing and and extended release elements that were not found in the prior art. (E.g., 32 mg of naltrexone; 360 mg bupropion; release of 39-70% within one hour; …).  U.S. Patent No. 8,916,195.  End result appears likely the same — injunction to prevent generic entry.

Dissent on Written Description:  Chief Judge Prost wrote in dissent — arguing that the claims of the third ‘195 patent should also be found invalid as lacking written description.  The particular issue is that the patent claimed use of a particular standard (“USP 2”) for measuring the extended-release profile of the pills; but the specification apparently discloses a different standard (“USP 1”).   In the case the patentee’s expert testified that the two methods are “substantially equivalent,” and that was enough to satisfy both the district court and the majority here (Judges Lourie and Wallach). Chief Judge Prost disagreed — arguing that disclosure of a “substantial equivalent” of the claimed invention is not sufficient.

A substantially equivalent disclosure, even if it would render the claim limitation obvious, cannot satisfy the written description requirement. See Ariad (“[A] description that merely renders the invention obvious does not satisfy the requirement.”); Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification.”).

Chief Judge Prost went on to argue (1) that the claim element is certainly “limiting”; and (2) no evidence of record shows that the two methods produce the same results. For its part, the majority explains that “[i]t is not necessary that the exact terms of a claim be used in haec verba in the specification, and equivalent language may be sufficient.

I pulled up the prosecution history on this case using PAIR. Originally the claims did not mention any dissolution test at all for measuring the sustained release. Later, the patentee added that the test was a “standard” test.  The examiner rejected that amendment as failing the written description requirement and the patentee then changed the test to USP 2 (“a dissolution test of USP Apparatus 2 Paddle Method at 100 rpm in a dissolution medium of water at 37 deg C”). The office action response states that “there is sufficient disclosure in the specification to demonstrate possession of the claimed release profile” as amended. The examiner then allowed the case — mentioning the USP 2 profile in the reasons for allowance. All of this tends to favor Judge Prost’s analysis. On the other hand – when I read the patent document it actually discloses the use of USP 2 in the specification or “other test conditions substantially equivalent thereto.” However, the example given of actual dissolution measurements uses USP 1.

= = = =

Dominick Conde of Venable (NY) argued the case for Nalpropion; Jonathan Ball of Greenberg Traurig (NY) argued for Actavis assisted by Justin MacLean, et al.

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Preclusion at the USITC https://patentlyo.com/patent/2019/08/preclusion-the-usitc.html https://patentlyo.com/patent/2019/08/preclusion-the-usitc.html#comments Wed, 14 Aug 2019 15:43:08 +0000 https://patentlyo.com/?p=27573 by Dennis Crouch

Swagway v. ITC and Segway (Fed. Cir. 2019) (Swagway II Revised Opinion)

The Federal Circuit previously released its opinion in this appeal that I discussed in an essay titled Who Needs Proof of Actual Confusion? Not a TM Plaintiff, Patentlyo-O (May 9, 2019) (Swagway I).  Now, the court has released a new opinion focusing on the preclusive impact of ITC orders.

Background: Although Swagway is clearly playing on the Segway brand to create some initial interest, Swagway argued that there was no proof of actual confusion despite years of both brands being on the market.  In this case, however, the court found insufficient evidence of “long-term, concurrent use in the same channels of trade.”  As such, proof of a likelihood of confusion was enough for an infringement verdict.

Consent Order vs Exclusion Order:  At the ITC, Swagway had proposed a consent order that it “would not sell for importation, import, or sell after importation into the United States products sold under the SWAGWAY mark.”  Rather than entering the consent order, however, the ITC entered an enforcement and cease-and-desist order prohibiting importation of “SWAGWAY-branded personal transporters …”

On appeal, Swagway wanted the consent order granted and the exclusion order removed. 

Continue reading Preclusion at the USITC at Patently-O.

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by Dennis Crouch

Swagway v. ITC and Segway (Fed. Cir. 2019) (Swagway II Revised Opinion)

The Federal Circuit previously released its opinion in this appeal that I discussed in an essay titled Who Needs Proof of Actual Confusion? Not a TM Plaintiff, Patentlyo-O (May 9, 2019) (Swagway I).  Now, the court has released a new opinion focusing on the preclusive impact of ITC orders.

Background: Although Swagway is clearly playing on the Segway brand to create some initial interest, Swagway argued that there was no proof of actual confusion despite years of both brands being on the market.  In this case, however, the court found insufficient evidence of “long-term, concurrent use in the same channels of trade.”  As such, proof of a likelihood of confusion was enough for an infringement verdict.

Consent Order vs Exclusion Order:  At the ITC, Swagway had proposed a consent order that it “would not sell for importation, import, or sell after importation into the United States products sold under the SWAGWAY mark.”  Rather than entering the consent order, however, the ITC entered an enforcement and cease-and-desist order prohibiting importation of “SWAGWAY-branded personal transporters …”

On appeal, Swagway wanted the consent order granted and the exclusion order removed.  Although this was not expressly argued in the briefs, Swagway felt that the consent order (as a settlement) would not have the same preclusive impact the ongoing parallel district court litigation  as would the exclusion order (as a judgment on the merits).

Swagway contended at oral argument that the difference between its proposed consent order and the orders issued by the Commission was the preclusive effect it believed would be afforded to the Commission’s final decision and its resulting orders.

Swagway I.  In its original decision, the Federal Circuit found no basis bringing the appeal since ITC trademark decisions “do not have preclusive effect.”

Rehearing: Segway has now successfully petitioned for rehearing — arguing that the court had gone too far with the “no preclusion” statement. In particular, the Federal Circuit had cited decades old precedent for its no-preclusion holding while recent Supreme Court cases point in the other direction.  In its brief, Segway explains:

In reaching this [no-preclusion] conclusion, the panel makes no mention of the Supreme Court decision that a trademark adjudication by an administrative agency should be given preclusive effect. B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (2015). Nor does the panel mention the fact that the First, Second, and Fourth Circuits have all reached the opposite conclusion: that the Commission’s decisions in Section 337 cases regarding non-patent rights do have preclusive effect. . . .

These precedents show that while there is evidence that Congress did not intend decisions of the Commission on patent issues to have preclusive effect, there is no such evidence regarding the Commission’s decisions on non-patent cases. These precedents also show that there is a strong policy in favor of giving preclusive effect to administrative adjudications unless there is clear Congressional intent to the contrary. The panel did not “see” those reasons because it did not have the benefit of any briefing on the issue, which was not raised by Swagway until oral argument.

Based upon this briefing, the panel has withdrawn its original opinion and issued a new one.  The new opinion has the same result, but removes the declaration that the ITC order would have no preclusive effect.

In particular, the court found that the error alleged in Swagway’s appeal was that the ITC denied the consent order motion using the wrong paper — in the Final Initial Determination [ID] rather than in an Order.  Since on remand the ITC could simply reissue the denial in an “Order” — the court found no actual harm.

Biggest bottom line: Non-patent ITC orders are likely to begin having preclusive effect in parallel district court litigation.  This improves the attractiveness of the ITC for enforing trademarks, copyrights, and trade secrets against companies importing products into the US.  The result then – get a quick win on the merits at the ITC and obtain an exclusion order; then take decision to the district court to collect damages.

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Our Product is Lossy and Slow — Therefore we Don’t Infringe https://patentlyo.com/patent/2019/08/product-therefore-infringe.html https://patentlyo.com/patent/2019/08/product-therefore-infringe.html#comments Wed, 14 Aug 2019 02:48:28 +0000 https://patentlyo.com/?p=27569 Our Product is Lossy and Slow — Therefore we Don’t Infringe

Iridescent Networks, Inc. v. AT&T Mobility, LLC  (Fed. Cir. 2019)

AT&T’s legal arguments get a win — by proving that its products a loss.

Iridescent’s patent covers a method of providing “high quality” bandwith “on demand” using custom routes (rather than ad hoc packet-by-packet routing) to maximize the availability of bandwidth, minimize packet loss, and reduce latency.

On appeal, the main issue was the meaning of “high quality” network service as used in the claims.  AT&T argued particularly that the term should be defined as having a connection speed of >= 1 mbps; packet loss <= 0.0001%; and latency of < 1 second. Under that definition, everyone agreed that AT&T’s service was not “high quality.”

On appeal, the Federal Circuit agreed.  Although the patent does not define “high quality,” it did provide a chart that appeared to delineate between some services that are high quality and those that are not.

When looking at the prosecution history, this appears to be an easy case. In response to an enablement rejection over the “high quality” term, the patentee explained the term’s meaning has being tied to particular numbers:

High QoS (quality of service) may be viewed in the present application as having speeds varying from approximately 1–300 megabits per second, packet loss requirements that are typically about 10-5, and latency requirements that are typically less than one second.

Continue reading Our Product is Lossy and Slow — Therefore we Don’t Infringe at Patently-O.

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Our Product is Lossy and Slow — Therefore we Don’t Infringe

Iridescent Networks, Inc. v. AT&T Mobility, LLC  (Fed. Cir. 2019)

AT&T’s legal arguments get a win — by proving that its products a loss.

Iridescent’s patent covers a method of providing “high quality” bandwith “on demand” using custom routes (rather than ad hoc packet-by-packet routing) to maximize the availability of bandwidth, minimize packet loss, and reduce latency.

On appeal, the main issue was the meaning of “high quality” network service as used in the claims.  AT&T argued particularly that the term should be defined as having a connection speed of >= 1 mbps; packet loss <= 0.0001%; and latency of < 1 second. Under that definition, everyone agreed that AT&T’s service was not “high quality.”

On appeal, the Federal Circuit agreed.  Although the patent does not define “high quality,” it did provide a chart that appeared to delineate between some services that are high quality and those that are not.

When looking at the prosecution history, this appears to be an easy case. In response to an enablement rejection over the “high quality” term, the patentee explained the term’s meaning has being tied to particular numbers:

High QoS (quality of service) may be viewed in the present application as having speeds varying from approximately 1–300 megabits per second, packet loss requirements that are typically about 10-5, and latency requirements that are typically less than one second. These are commonly used parameters . . . .

Ordinarily, the Federal Circuit looks to the prosecution history when there is some disavowal of scope.  Here, the statement might not have risen to disavowal, but were still considered important because the term “high quality” service did not have a clear ordinary and custom meaning in the field.

In these circumstances, where there is no clear ordinary and customary meaning of a coined term of degree, we may look to the prosecution history for guidance without having to first find a clear and unmistakable disavowal.

Thus, the decision here provides some caution and guidance to patent prosecutors using “coined terms:” (1) even if your term uses “ordinary words” it can be considered coined if it lacks an “ordinary and customary meaning” in the art; (2) the court is more willing to look to prosecution history to understand the meaning of a coined term.

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Patently-O Bits and Bytes by Juvan Bonni https://patentlyo.com/patent/2019/08/patently-bits-and-bytes-by-juvan-bonni-28.html https://patentlyo.com/patent/2019/08/patently-bits-and-bytes-by-juvan-bonni-28.html#comments Mon, 12 Aug 2019 15:28:03 +0000 https://patentlyo.com/?p=27558 Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

  • William Foxley: IBM Files Patent for a Blockchain-Based Web Browser (Source: Coin Desk)
  • Amina Zafar: Cancer Doctors are Calling for a Permanent Fix to Drug Shortages in Canada (Source: CBC)
  • Jerome Santos: Apple Patent Reveals Upgraded Macs With Presence Sensing, Facial Recognition Technologies (Source: International Business Times)
  • Ashley Carter: Universal Files Patents for Tower Rides (Source: Spectrum News)

Commentary and Journal Articles:

  • Natalie Raffoul: How Patents Really Work in the Innovation Economy (Source: The Globe and Mail)
  • Dean Jon Garon: Ownership of University Intellectual Property (Source: SSRN)
  • Prof. Michael Heller: Gridlock Economy: How Too Much Ownership Wrecks Markets, Stops Innovation, and Costs Lives (Introduction) (Source: SSRN)

New Job Postings on Patently-O:

  • Sheridan Ross P.C.–Trademark Associate Attorney
  • Sheridan Ross P.C.–Associate Attorney or Patent Agent
  • Sheridan Ross P.C.–Legal Assistant
  • Lee & Hayes
  • Blank Rome
  • Klintworth & Rozenblat IP
  • Knobbe Martens
  • Arent Fox LLP
  • Nixon & Vanderhye P.C.
  • Guntin & Gust
  • Invoke IP PC

Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

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Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

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Doctrine of Equivalents is on Revival https://patentlyo.com/patent/2019/08/doctrine-equivalents-revival.html https://patentlyo.com/patent/2019/08/doctrine-equivalents-revival.html#comments Fri, 09 Aug 2019 15:54:00 +0000 https://patentlyo.com/?p=27539 by Dennis Crouch

Eli Lilly and Co. v. Hospira, Inc. (Fed. Cir. 2019)

On summary judgment, the district court found for the patentee Eli Lilly — holding that the ANDA filings by Hospira & Dr. Reddy infringed Lilly’s U.S. Patent 7,772,209.

On appeal, the Federal Circuit found error’s in claim construction and consequently reversed the judgment of literal infringement.  However, the court affirmed the alternative judgment of infringement under the doctrine of equivalents (DOE).

The drug at issue is pemetrexed (Lilly brand “Alimta”) approved for treatment of inoperable malignant pleural mesothelioma.  The drug operates as an anti-folate (blocking folic acid from binding and being harnessed for cancer cell growth).

The ‘209 patent does not cover the drug itself, but instead covers an “improved method for administering pemetrexed disodium to a patient in need of chemotherapeutic treatment.” I previously wrote about the patent being challenged in separate IPRs and explained that “the claimed invention calls for a pre-treatment of a patient with folic acid and vitamin B12 in order to reduce the risk skin rashes, fatigue, etc.”

Eligibility Cannot be Raised in IPR Appeal

 

In the litigation here, Hospira argues that its proposal does not infringe because it calls for intravenous administration of pemetrexed ditromethamine dissolved in saline and other compounds — that solution makes it different than the “pemetrexed disodium” as claimed. 

Continue reading Doctrine of Equivalents is on Revival at Patently-O.

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by Dennis Crouch

Eli Lilly and Co. v. Hospira, Inc. (Fed. Cir. 2019)

On summary judgment, the district court found for the patentee Eli Lilly — holding that the ANDA filings by Hospira & Dr. Reddy infringed Lilly’s U.S. Patent 7,772,209.

On appeal, the Federal Circuit found error’s in claim construction and consequently reversed the judgment of literal infringement.  However, the court affirmed the alternative judgment of infringement under the doctrine of equivalents (DOE).

The drug at issue is pemetrexed (Lilly brand “Alimta”) approved for treatment of inoperable malignant pleural mesothelioma.  The drug operates as an anti-folate (blocking folic acid from binding and being harnessed for cancer cell growth).

The ‘209 patent does not cover the drug itself, but instead covers an “improved method for administering pemetrexed disodium to a patient in need of chemotherapeutic treatment.” I previously wrote about the patent being challenged in separate IPRs and explained that “the claimed invention calls for a pre-treatment of a patient with folic acid and vitamin B12 in order to reduce the risk skin rashes, fatigue, etc.”

Eligibility Cannot be Raised in IPR Appeal

 

In the litigation here, Hospira argues that its proposal does not infringe because it calls for intravenous administration of pemetrexed ditromethamine dissolved in saline and other compounds — that solution makes it different than the “pemetrexed disodium” as claimed.  Basically, a dissolved salt is not a salt.

The district court sided with the patentee writing that

Administration of pemetrexed disodium . . . refer[s] to a liquid administration of pemetrexed disodium. . . ., accomplished by dissolving the solid compound pemetrexed disodium into solution.

District Court Summary Judgment Decision. On appeal, the Federal Circuit reversed that decision — finding no literal infringement:

A solution of pemetrexed and chloride anions and tromethamine and sodium cations cannot be deemed pemetrexed disodium simply because some assortment of the ions in the solution consists of pemetrexed and two sodium cations. . . . Once diluted, the salt’s crystalline structure dissolves, and the individual ions dissociate. In other words, pemetrexed disodium no longer exists once dissolved in solution, and, as a corollary, a different salt of pemetrexed dissolved in saline is not pemetrexed disodium.

Thus, the appeallate panel found no literal infringement.

Doctrine of Equivalents. In yet another strong doctrine of equivalents decision, the Federal Circuit has held that the proposed generic solution of dissolved salts is the equivalent of the salt itself — and therefore infringes.

Few propositions of patent law have been so consistently sustained by the Supreme Court as the doctrine of equivalents. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushki Co., 535 U.S. 722, 733 (2002) (“Festo VIII”) (“[E]quivalents remain a firmly entrenched part of the settled rights protected by the patent.”); Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997) (“[W]e adhere to the doctrine of equivalents.”); Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950) (“Originating almost a century ago in the case of Winans v. Denmead, [56 U.S. 330 (1853)] . . . [the doctrine of equivalents] has been consistently applied by this Court and the lower federal courts, and continues today ready and available for utilization when the proper circumstances for its application arise.”). It is settled that a patentee is entitled “in all cases to invoke to some extent the doctrine of equivalents,” Seymour v. Osborne, 78 U.S. 516, 555 (1870), without a “judicial exploration of the equities of a case” beforehand.

Here, Lilly had narrowed its claims during prosecution, but the court found that the amendment was “tangential” to the equivalent in question — “touching lightly or in the most tenuous way.” Webster’s Third New International Dictionary (2002).

The reason for Lilly’s amendment, as the district court concluded, was to narrow original claim 2 to avoid Arsenyan, which only discloses treatments using methotrexate, a different antifolate.

The amendment was not intended to avoid dissolved pemetrexed disodium.

In summary, these cases are eminently suitable for application of the doctrine of equivalents, and we conclude that neither prosecution history estoppel nor the disclosure-dedication rule bars Lilly from asserting infringement through equivalence.

Thus, ultimately the judgment of infringement is affirmed despite the lack of literal infringement.

= = = = =

Prosecutors: It makes sense to consider the prosecution history of this case to consider how to limit prosecution history estoppel.

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DoEPHETAN: Applying the “merely tangential” exception to the “prosecution history estoppel” limitation of the “doctrine of equivalents” expansion of the definition of infringement https://patentlyo.com/patent/2019/08/prosecution-equivalents-infringement.html https://patentlyo.com/patent/2019/08/prosecution-equivalents-infringement.html#comments Thu, 08 Aug 2019 17:39:37 +0000 https://patentlyo.com/?p=27505 by Dennis Crouch

Ajinomoto Co., Inc. v. ITC; CJ CheilJedang Corp. v. ITC (Fed. Cir. 2019)

Some aspects of patent law are unduly complicated.  Here is one: Prosecution History Estoppel (PHE) as applied to the Doctrine of Equivalents (DOE).

The DOE finds infringement when someone is practicing something very similar (albeit different) than what is literally claimed.  Although the doctrine is court-created, courts are also wary of the potentially unmoored doctrine and thus have created a number of major limitations on the doctrine that have severely limited its scope.  Prosecution History Estoppel is one such limitation and arises when patent claims are narrowed during patent prosecution (something that happens in the vast majority of cases).

Under PHE, a narrowing limitation during prosecution is “presumed to be a general disclaimer of the territory between the original claim and the amended claim.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002).  In Festo though, the Supreme Court identified the disclaimer as rebuttable upon proof that “the amendment cannot reasonably be viewed as surrendering a particular equivalent.”  The high court particularly identified three mechanisms of such proof:

  1. The equivalent was unforeseeable at the time;
  2. The reasons for the amendment bear only a “tangential relation to the equivalent”; or
  3. “some other reason.”

The Federal Circuit has noted in the past that these exceptions are “very narrow”  Cross Med. 

Continue reading DoEPHETAN: Applying the “merely tangential” exception to the “prosecution history estoppel” limitation of the “doctrine of equivalents” expansion of the definition of infringement at Patently-O.

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by Dennis Crouch

Ajinomoto Co., Inc. v. ITC; CJ CheilJedang Corp. v. ITC (Fed. Cir. 2019)

Some aspects of patent law are unduly complicated.  Here is one: Prosecution History Estoppel (PHE) as applied to the Doctrine of Equivalents (DOE).

The DOE finds infringement when someone is practicing something very similar (albeit different) than what is literally claimed.  Although the doctrine is court-created, courts are also wary of the potentially unmoored doctrine and thus have created a number of major limitations on the doctrine that have severely limited its scope.  Prosecution History Estoppel is one such limitation and arises when patent claims are narrowed during patent prosecution (something that happens in the vast majority of cases).

Under PHE, a narrowing limitation during prosecution is “presumed to be a general disclaimer of the territory between the original claim and the amended claim.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002).  In Festo though, the Supreme Court identified the disclaimer as rebuttable upon proof that “the amendment cannot reasonably be viewed as surrendering a particular equivalent.”  The high court particularly identified three mechanisms of such proof:

  1. The equivalent was unforeseeable at the time;
  2. The reasons for the amendment bear only a “tangential relation to the equivalent”; or
  3. “some other reason.”

The Federal Circuit has noted in the past that these exceptions are “very narrow”  Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 480 F.3d
1335, 1342 (Fed. Cir. 2007)). Further, proof of the exceptions and the patent applicant’s intent must be “objectively apparent” and “discernible from the prosecution history record.”

Like I said, unduly complicated.  The easiest way to state this (recklessly ignoring the various burdens) is that PHE applies to cut-of DOE when there is a narrowing amendment reasonably related to the equivalent at issue.

I also have to say that this is a really poorly written opinion by Judge Taranto in that it muddles together various facts over many pages — often without spelling out which facts are relevant for what purposes.  The dissent by Judge Dyk is much more clear-headed as written.

= = = =

Ajinomoto’s patent claims E. coli bacteria genetically engineered with the yddG gene to increase L-amino acid production (including tryptophan) and also claims the method of making the amino acids by cultivating the aforementioned bacteria.  Ajinomoto filed a complaint against CJ CheilJedang in the USITC, and the Commission eventually sided with the patentee — finding infringement under the doctrine of equivalents.

The claim structure here is odd.   Claim 20 is the claim at issue and is couched as a multiple dependent method claim — the method of producing the L-amino acid by cultivating bacteria “according to any one of claims 9-12, 13, 14, 15-18, or 19.”  The appeal here focuses only on claim 20’s L-amino acid production according to claim 9.

The dissent explains why CJ does not literally infringe:

Claim 9 covers a recombinant bacteria having [sic] a “protein consist[ing] of the amino acid sequence of SEQ ID NO: 2.” Id. col. 22, ll. 56–57. This corresponds to the amino acid sequence of E. coli YddG protein (a membrane-bound protein involved in the cellular export of aromatic amino acids). [CJ’s] Strain B does not
literally infringe claim 9 because it produces a protein with an amino acid sequence that differs from SEQ ID NO: 2. Instead, Ajinomoto asserts infringement under the doctrine of equivalents, arguing that Strain B’s non-E. coli YddG protein is equivalent to the E. coli YddG protein (SEQ ID NO: 2) in claim 9.

Although not literally the same as what was claimed, the ITC found that it was the equivalent and therefore infringing.  On appeal, the Federal Circuit agreed — that DOE applies generally, but then focused on whether it was limited by PHE.

The original claim language covered SEQ ID NO: 2 along with modification such as “deletion, substitution, insertion or addition of one or several amino acids” of SEQ ID NO: 2. That claim was narrowed after an anticipation rejection to get around a different naturally occurring protein (YfiK).  By narrowing the claim, it also now excludes the particular YddG protein variation used by CJ.

On appeal, the Federal Circuit held that the purpose of the appeal was to get around the YfiK prior art, not the YddG prior art.  As such, the reasons for the amendment were merely tangential to the equivalent in question.

Judge Dyk writing in dissent argued the other side:

Originally, the claim covered proteins with amino acid sequence variations from SEQ ID NO: 2, which would have included the non-E. coli YddG protein at issue here. The examiner rejected the original claim based on anticipating prior art, and the patentee responded with a narrowing amendment. Instead of continuing to define the covered proteins in terms of amino acid sequence variations from SEQ ID NO: 2, the patentee deliberately chose to redefine the claimed proteins in terms of the ability of their encoding nucleotide sequences to hybridize with SEQ ID NO: 1 under the claimed conditions. The amended claim language excluded the prior art protein (Livshits) because it was made based on a nucleotide sequence that did not meet the newly added hybridization requirement. The accused equivalent is similarly not covered by the amended claims because it is produced based on an encoding nucleotide sequence that does not hybridize with SEQ ID NO: 1 under the claimed conditions. Thus, I do not see how the reason  for the narrowing amendment is tangential to the accused equivalent. . . .

In my view the tangential exception cannot apply. The equivalent is directly related to the reason for the amendment—to exclude those proteins made by an encoding nucleotide sequence that does not hybridize with SEQ ID NO: 1 under the specified conditions.

The majority disagreed with this analysis and affirmed the infringement holding.

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Patently-O Bits and Bytes by Juvan Bonni https://patentlyo.com/patent/2019/08/patently-o-bits-and-bytes-by-juvan-bonni-27.html https://patentlyo.com/patent/2019/08/patently-o-bits-and-bytes-by-juvan-bonni-27.html#comments Wed, 07 Aug 2019 01:34:18 +0000 https://patentlyo.com/?p=27508 Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

  • Corey M. Horowitz: Network-1 Receives New Patent from U.S. Patent Office Expanding Its Cox Portfolio To Include 33 Issued Patents (Source: Yahoo Finance)
  • Leo Kelion: HTC Smartphones Pulled From Sale in UK During Patent Row (Source: BBC)
  • Adrian Zmudzinski: tZERO Announces Patent for Traditional Exchange Blockchain Integration (Source: Cointelegraph)
  • Mario Ritter Jr.: Index Shows US, China Make Gains in Technology Development (Source: Voice of America)
  • Hamza Jawad: Microsoft Patent Application is a Advanced, Multi-Dimensional Sensor Device for Wearables (Source: Neowin)

Commentary and Journal Articles:

  • Dr. Richard G. Frank, Prof. Andrew Hicks, Prof. Ernst R. Berndt: The Price to Consumers of Generic Pharmaceuticals: Beyond the Headlines (Source: SSRN)
  • Melissa Locker: Can a Robot be an Inventor? A New Patent Filing Aims to Find Out (Source: Fast Company)
  • Prof. Omer Unsal and Dr. Blake Rayfield: Trends in Financial Innovation: Evidence from Fintech Firms (Source: SSRN)

New Job Postings on Patently-O:

  • Hawley Troxell
  • Nexsen Pruet
  • KPPB LLP–Electrical Engineer/Computer Science Associate
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  • DiBerardino McGovern IP Group
  • Hamilton Brook Smith & Reynolds
  • Notre Dame Law School
  • Intoxalock

Continue reading Patently-O Bits and Bytes by Juvan Bonni at Patently-O.

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Patently-O Bits and Bytes by Juvan Bonni

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

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Which Area is Wider? https://patentlyo.com/patent/2019/08/which-area-is-wider.html https://patentlyo.com/patent/2019/08/which-area-is-wider.html#comments Mon, 05 Aug 2019 15:03:41 +0000 https://patentlyo.com/?p=27501 Which Area is Wider?

Collabo Innovations, Inc. v. Sony Corp. (Fed. Cir. 2019)

The priority filing of Collabo’s U.S. Patent No. 5,952,714 reaches back to  1995.  Although the patent is now expired, Sony filed this inter partes review (IPR) to avoid back damages.  The pending infringement litigation was stayed pending outcome of the IPR.  For its part, Collabo is a subsidiary of the licensing company Wi-Lan, who bought several hundred patents from Panasonic.

The patent covers an improved solid state image sensor used in cameras. Here, the improvement is a reduction in manufacturing costs by increasing the size of the housing inlet (26) — allowing the chip (27) to be inserted more easily (from below in the drawing).

The odd part of the patent comes in how this “wider” inlet was claimed. In particular, the claims state that the inlet “has a wider area.”  Of course, “wider” is typically a modifier of single-dimension measurements and “area” mathematically requires two-dimensions.  That said, an “area” might be thought of more generally as a planar space that might be either wider or narrower, taller or shorter.

Which of my two figures above have the “Wider Area?”

In its claim construction, the Federal Circuit agreed with the Board, that “wider area” might be a smaller area, so long as one dimension is wider. 

Continue reading Which Area is Wider? at Patently-O.

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Which Area is Wider?

Collabo Innovations, Inc. v. Sony Corp. (Fed. Cir. 2019)

The priority filing of Collabo’s U.S. Patent No. 5,952,714 reaches back to  1995.  Although the patent is now expired, Sony filed this inter partes review (IPR) to avoid back damages.  The pending infringement litigation was stayed pending outcome of the IPR.  For its part, Collabo is a subsidiary of the licensing company Wi-Lan, who bought several hundred patents from Panasonic.

The patent covers an improved solid state image sensor used in cameras. Here, the improvement is a reduction in manufacturing costs by increasing the size of the housing inlet (26) — allowing the chip (27) to be inserted more easily (from below in the drawing).

The odd part of the patent comes in how this “wider” inlet was claimed. In particular, the claims state that the inlet “has a wider area.”  Of course, “wider” is typically a modifier of single-dimension measurements and “area” mathematically requires two-dimensions.  That said, an “area” might be thought of more generally as a planar space that might be either wider or narrower, taller or shorter.

Which of my two figures above have the “Wider Area?”

In its claim construction, the Federal Circuit agreed with the Board, that “wider area” might be a smaller area, so long as one dimension is wider.  The Court particularly notes that the specification uses “larger area” when considering the actual area, but “wider” when looking at one dimension of the space.   That construction meant that the prior art was easier to link to the claims and support the Board’s invalidity finding.

Claim Coverage Argument ==> Claim Construction Demand: Neither party asked the Board to construe the “wider” term.  However, the Board went ahead and construed the term after finding that it was in issue. On appeal, the Federal Circuit affirmed this approach, explaining:

Collabo itself placed the meaning of ‘wider area’ at issue. It argued that the asserted prior art references did not disclose the “wider area” limitation because they failed to show or describe the relative areas—both length and width—of their openings.

Id.

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