New Patent Blogs

Blogroll, Patent,

Book New blogs that I recently found:

  • PatentlyAcademic by an anonymous examiner going through the PTO’s training academy. I have no idea if it is true, but I consider this site something like the spawn of Patently-O.
  • PLI Blog by famed patent bar exam teachers White & Quinn
  • Patent Librarian by Canadian Michael White brings a fresh perspective.
  • Patentability Defined by Mike Kondoudis focuses his theories of patent prosecution.
  • Anticipate This! by Jake Ward of Perrysburg Ohio fame.

I continue to enjoy:

Patent Reform: Changes to Continuation and Claiming Practice

Patent

As all patent prosecutors know, the PTO has proposed a set of rule changes that would limit the number of continuation applications that may be filed based on a given priority document. In addition, the proposed changes would also limit the number of claims to be examined in each application.

The final version of the proposed rules are not yet public, but are being reviewed by the Whitehouse before final implementation.

Three groups have now met with the OMB and complained about the rules [LINK].

  • Former PTO Director Bruce Lehman, now a lobbyist working for Akin Gump, joined forces with BIO to argue that the changes would create significant harm to small biotech companies. Materials Used: Chart Memo.
  • Derek Minihane (in-house at Intermolecular) and Jeffrey Birchak (in-house at Fallbrook Tech) presented on behalf of he innovation alliance — making the argument that “the proposed rules would impose hundreds of millions of dollars of additional costs on inventors and could destroy billions of dollars in property rights and business value.” Materials Used: Memo Presentation.
  • David Boundy (Cantor Fitz) and Mike Strickland (GlaxoSmithKline) also met with OMB officials to present the case against changes on behalf of a few dozen interested companies. Their documentation highlights what they see as illegal PTO actions leading-up to the new rules.  [LINK]

Within the Whitehouse Office of Management and Budget (OMB), the Office of Information and Regulatory Affairs (OIRA) reviews final regulatory changes before implemented. Susan Dudley, OIRA director is expected to release a decision within three weeks.

Notes

  • Stanford Professor Mark Lemley’s article regarding continuations (coauthored with Judge Moore) was used as a justification for the PTO’s rule changes. Interestingly, the objectors cite another Lemley article (coauthored with Allison, Moore, and Trunkey) for the proposition that patents based on continuations are generally more valuable. The second article, titled “Valuable Patents” makes its conclusion by combining the observation that patents based on continuations are litigated more often with the assumption that litigated patents are, on average, more valuable than those that are not litigated.
  • The Lemley/Moore article is not overly concerned with the administrative trouble created by continuations. It does, however, point to four major problems created by extensive continuation practice:

First, at a minimum, continuation practice introduces substantial delay and uncertainty into the lives of a patentee’s competitors, who can never know whether a patent application is pending. Second, the structure of the PTO suggests that continuations may well succeed in “wearing down” the examiner, so that the applicant obtains a broad patent not because he deserves one but because the examiner has neither incentive nor will to hold out any longer. Third, continuation practice can be – and has been – used strategically to gain advantages over competitors by waiting to see what product the competitor will make and then drafting patent claims specifically designed to cover that product. Finally, some patentees have used continuation practice to delay the issuance of their patent precisely in order to surprise a mature industry, a process known as “submarine patenting.”

Procedure: Expert Testimony Deserves Weight on Summary Judgment

Obviousness, Patent, Patent Cases 2007, Summary Judgment

Omegaflex v. Parker-Hannifin Corp (Fed. Cir. 2007) (nonprecedential)

On summary judgment, the Massachusetts District Court found the Omegaflex pipe-fitting patents novel, nonobvious and infringed. Parker appealed.

Respect the Expert: On several points of contention, the district court gave no probative weight to Parker’s expert’s testimony.  On summary judgment, the evidence should be weighed in the “light most favorable” to the non-movant (Parker). Because the expert testimony creates issues of material fact, the CAFC reversed and remanded.

In dicta, the three-member panel (Judges Michel, Dyk, and Garbis) probed the Supreme Court’s recent KSR decision — noting that it will continue to look for some reason to combine prior art references in an obviousness rejection.

Quoting KSR: “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.”

Reversed and remanded.

Means-Plus-Function Element Found Indefinite Without Corresponding Structure

Indefinite, Patent

Biomedino v. Waters Technology (Fed. Cir. 2007).

Biomedino holds a patent for removing psychoactive drugs from a blood sample for toxicology studies. The district court found the patent invalid as indefinite under 35 U.S.C. 112 ¶ 2. In particular, the lower court held that the recited limitation "control means for automatically operating [a] valving" was indefinite because the specification did not include any structure corresponding to the means-plus-function language.  On appeal, the CAFC affirmed.

35 U.S.C. 112 ¶ 6 allows a patent applicant to broadly claim a "means" for performing a specific function. That claim, however, must be backed-up by a patent specification that describes "some structure which performs the specified function."

Here, the patentee had indicated that the invention “may be controlled automatically by known differential pressure, valving and control equipment.” This disclosure was, however, insufficient.

[A] bare statement that known techniques or methods can be used does not disclose structure. To conclude otherwise would vitiate the language of the statute requiring “corresponding structure, material, or acts described in the specification.

In addition, the court held that the structure must be disclosed in the specification even if one of skill in the art could implement a structure without such a disclosure.

Invalidity affirmed.

Biaxin Litigation: Sandoz’ Motion for Stay Pending Appeal Denied by District Court

Patent, ,

Abbott Labs v. Sandoz (N.D. Ill. 2007) (05 C 5373).

Abbott and Sandoz are in a tussle over Abbott’s patented clarithromycin antibiotic (BIAXIN). Abbott sued Sandoz and was granted a preliminary injunction in April 2007. Sandoz immediately requested a stay of the preliminary injunction pending appeal to the Federal Circuit. 

Under FRCP 62(c), a district court “in its discretion” may suspend or modify a preliminary injunction pending resolution of an interlocutory appeal.  In Hilton v. Braunskill (non-patent), the Supreme Court discussed the four-factors used to determine whether to stay pending appeal:

  1. Movant’s strong showing of potential success on appeal;
  2. Movant’s potential irreparable injury if stay is denied;
  3. Potential injury to patentee if stay is granted; and
  4. The public interest.

Here, potential success on appeal must refer to success in appealing the preliminary injunction — a much easier showing than success on the merits of the case as a whole. And the party’s “strong showing” of potential success does not need to reach even a 50% chance of winning on appeal — If the movant’s chances on appeal were greater than 50% then no PI should have issued in the first place.

Based on KSR, Sandoz argued a strong likelihood that the patent would be found obvious.  The district court, however, disagreed, finding that none of the prior art disclosed a claim limitation relating to PK levels.

There was no indication that either prior art disclosed the specific PK limitations of claim 1 and 4, and thus, there was no indication that the prior art would motivate a person of ordinary skill in the art to combine their teachings to arrive at the ‘718 patented invention. After reading the Supreme Court’s KSR opinion, this Court is left with the understanding that the need to demonstrate the presence of all claim limitations in the prior art (when the legal theory is based upon obviousness due to the combination of prior art teachings) has not been obviated.

Motion to stay denied. The PI will thus stay in force unless released by the CAFC on appeal.

  • The CAFC has already adjudged two PI cases regarding the patents-in-suit — affirming a PI against ANDRX and vacating a PI against Teva.
  • Cases Discussing Stay Pending Appeal:
  • Hilton v. Braunskill, 481 U.S. 770 (1987);
  • Hinrichs v. Bosma, 440 F.3d 393 (7th Cir. 2006).

Peer-to-Patent: Live

Patent
The new Peer-to-Patent system is now live with five patent applications ready for review. The applications have been voluntarily offered for review by Peer-to-Patent supporting companies including GE, HP, Intel, IBM, and Red Hat.
 
For those of you who like to participate in the prior-art-search-fest, sign up at peertopatent.org.
Peer-to-Patent opens the patent examination process to public participation for the first time. Become part of this historic pilot program. Help the USPTO find the information relevant to assessing the claims of pending patent applications. Become a community reviewer and improve the quality of patents.
Notes:
  • More info will be provided through a Second Life answer-session on June 18 at 3pm EST (12pm PST). http://tinyurl.com/348nyb.

No Appellate Jurisdiction For Appeal of Preliminary Injunction Contempt Order

Patent, Patent Cases 2007

Photokleen Entegris (Mykrolis) v. Pall Corporation (Fed. Cir. 2007).

Mykrolis sued Pall — accusing its competitor of infringing patents related to high-quality liquid filters used in the semiconductor industry. After claim construction, the district court issued a preliminary injunction, but Pall continued to sell a ‘modified’ design.  During a contempt proceeding, the court held Pall in contempt for its continued sales, but also dissolved the preliminary injunction based on new evidence of invalidity. Both sides appealed.

Jurisdiction for appeal of contempt order: The CAFC has interlocutory jurisdiction over preliminary injunction issues such as the issuance, modification, or dissolution of a preliminary injunction. However, the CAFC here held that there is no interlocutory jurisdiction for an appeal of a contempt finding that does not itself modify the injunction. In addition, even though Pall must pay the contempt fine immediately, under Supreme Court precedent, a contempt decision is not considered an appealable final judgment. Finally, interlocutory appeals do not generally provide supplemental jurisdiction unless issues are inextricably intertwined. The contempt appeal was thus dismissed.

Preliminary Injunction: The burden of proving validity is shifted at the preliminary injunction stage where the patentee must show "a likelihood of success on the merits" with respect to both validity and infringement.  A defendant who raises a "substantial question" of invalidity will defeat a preliminary injunction unless it "lacks substantial merit." 

It is often difficult for a plaintiff to win an appeal after dissolution or denial of a preliminary injunction because the lower court’s decision is based on a loose set of factors that are reviewed only for clear error. Here, Mykrolis failed to show clear error in the lower court’s finding of a substantial question of invalidity.

Affirmed.

Notes:

  • Interlocutory jurisdiction: Power to hear an appeal before the lower court issues a final judgment. Interlocutory jurisdiction is generally quite limited and narrowly granted.
  • Hamilton Brooks cooperated with Ropes & Gray in representing the plaintiff Entegris.
  • Leydig Voit represented the defendant Pall Corp.

Patently-O TidBits

Patent
  • Advisory Office Action: A Patently-O reader queries why 35 U.S.C. 133 does not extend to after-final advisory actions. Under Section 133, "any action" by the PTO must allow at least thirty-days for a response.
  • Chief Judge Michel continues to operate behind-the-scenes to block certain elements of patent reform.  In a letter to Howard Berman’s staff, Judge Michel argues again that the proposed economic apportionment provisions damage would be difficult to implement. The letter also highlights the recent damages analysis by former AIPLA president BIll Rooklidge while taking a dig at the credibility of law professors who have been pushing for reform — "Lawyers employed by particular companies, like most law professors, have little or no experience [in patent litigation]. Mr. Rooklidge, by contrast, has several decades of litigation experience in precisely these types of cases." MICHEL LETTER , ROOKLIDGE ARTICLE.
  • Despite a strong brief, the Supreme Court has denied Zoltek’s petition for certiorari that challenges the CAFC’s determination that Governmental patent infringement is not a 5th amendment takings. LINK.
  • Republicans on Patent Reform: Slow down and get it right. LINK.

MercExchange v. eBay: Injunction Hearing

Patent

MercExchange v. eBay (E.D.Va 2007).

Using a typical defense strategy, eBay has slowed MercExchange’s infringement case to a virtual crawl. Over three years ago, a jury found that eBay willfully infringed MercExchange’s patent. Part of the verdict was eventually picked-up by the Supreme Court who held that injunctive relief in patent cases must be determined through the traditional four-factor test of equity.  After the verdict, eBay also filed for a reexamination of the asserted patent. That reexamination is still pending, although all of the claims have been rejected by the PTO.

On Tuesday, the issue of injunction will once again return to the Virginia district court (Norfolk).  EBay has asked for a stay of relief pending conclusion of the reexamination process to "prevent enforcement of invalid patents." On the other side, MercExchange argues that injunctive relief is proper even under the Supreme Court’s more stringent requirements.

MercExchange provides several reasons for not staying final adjudication pending reexamination, including eBay’s delay in seeking the reexamination and eBay’s unclean hands before the court (for allegedly submitting false authentication).

Tribunal Theory

Patent, ,

Patent.Law007The tri prefix of tribunal may evoke an image of three judges sitting jointly at the bench.  In practice, however, tribunal refers to any sitting judicial body – regardless of the number of judges.

The Court of Appeals for the Federal Circuit (CAFC) normally convenes in three judge tribunals to hear appeals. Motion practice, such as an emergency motion for a stay of an injunction, is often heard by a single judge.  According to statute, en banc panels usually consist of all (twelve) active members of the court. 28 USC 46(c).

A larger panel is thought to provide more stability and predictability, while a smaller panel theoretically provides a greater variance.

To see how panel size might alter litigation practice, lets take an example case where the lower court issues a permanent injunction that will be enforced within ten days. Question: Should the losing defendant hope for (1) a three judge panel to hear its emergency appeal or (2) a lone appellate judge? 

The answer, after several assumptions including independence, is that the appellant’s favored panel size varies with the strength of its argument.  If the appellant has a high (greater than 50%) chance of convincing each expected judge, then it is better off with a larger panel.  On the other hand, if the appellant has a low (less than 50%) chance of convincing each judge then he would likely get better results from a single judge.

This is easy to work out a computational example: For the first case, if we expect that the appellant has a 65% chance of convincing each judge of its case, the probability of convincing at least two judges rises to 72%. Thus, the appellant would be better off with a panel (72% chance of winning) rather than a single judge (65% chance of winning). On the other hand, if the appellant thought that its appeal had only a 35% chance of convincing each judge, the probability of convincing at least two judges drops to 28%.  Thus, the appellant who expected to lose would be worse off with a panel (28% chance of winning) rather than a single judge (35% chance of winning).  The larger panel also helps smooth over variance amongst the judges — tilting the scales further in favor of an expected winner.  A long shot case would hope for the squirrelly judge on a small (solo) panel.

In a May 6, 2007 distribution, Hal Wegner suggested a series of “Mini en banc” panels with seven (or five or nine) members — especially in the area of obviousness.  As the panel size increases, good cases theoretically win more often and should be losers lose more often.

Four Judge Panels: One simple step that could make a tremendous difference regarding stability of appellate determinations would be to shift the normal panel size from three judges to four judges.  The CAFC has power to make this change under 28 USC 46, which states that “the Federal Circuit may sit in panels of more than three judges if its rules so provide”.

On appeals, a split judgment is equivalent to an affirmance of the lower court decision. Thus, an appellant arguing to a four judge tribunal must convince three of the four judges of its case — creating a much larger, super-majority hurdle for the appealing party. The problem with the four judge approach is that it also creates an outcome skewed toward affirmance — something that could be seen as unfair. However, I expect that claim construction decisions reviewed de novo by a four member panel would help us return from our long vacation (or at least reduce the number of claim construction opinions being vacated).

The four judge approach would also violate Federal Circuit Rule 47.2, that requires “a panel consisting of an odd number of at least three judges.”

Testing of System Aboard Commercial Aircraft Not a Barred Public Use

Patent

Honeywell v. Universal Avionics (Fed. Cir. 2007).

GulfstreamHoneywell holds a number of patents covering a virtual terrain warning system for aircraft. The system compares flight-data with a digitized map to ensure a clear path.  Universal and Sandel Avionics have similar functioning systems, and Honeywell sued for infringement. After losing summary judgment, Honeywell appealed on claim construction and the defendants appealed on validity.

On Sale: Section 102(b) of the Patent Act creates a statutory bar to patentability of an invention “in public use or on sale in [the US] more than one year prior to the date of application.”

Under Pfaff, an invention is on sale if (1) subject to a commercial sale or offer for sale and (2) ‘ready for patenting’ at the time of the offer or sale.  Prior to the critical date, Honeywell offered its system for sale to Gulfstream, but required a program to test the system’s in-cockpit results. In its decision, the CAFC agreed that the tests were “part of Honeywell’s program to determine that the invention worked for its intended purpose.”  Thus, even though no system changes were introduced based on the testing, the tests were a “demonstration of the workability or utility of the claimed invention” — thus were sufficient to avoid the ‘ready for patenting’ prong of the on sale bar.

Public Use: The system was tested aboard commercial aircraft. On one flight, a reporter was told of the system — a fact he mentioned in a published article.  This arguably commercial use did not create a public use bar because the use did not employ “a completed invention in public, without confidentiality restrictions, and without permitted experimentation.” 

Claim Construction Jurisdiction: The summary judgment of non-infringement was based on only two-terms. On appeal, the CAFC refused to limit its decision to those terms (as requested by a defendant). Rather, the appellate panel looked at each of the five terms where “the district court discerned factual issues in dispute regarding infringement.”  According to the Court, the two primary terms were correctly construed, but summary judgment vacated on factual issues — giving Honeywell another shot.

Patently-O Comment Wars

Patent

The Patently-O daily full-text e-mailer is a great resource, but it has one major problem — The e-mail readers miss the extensive commentary posted by other Patently-O readers.  Over the past year, Patently-O readers have transformed the site from a primarily one-way resource into a rich community. The growth of reader comments is shown below (Graph).

Patent.Law003

Although only about 1/3 of the comments contain high-level useful commentary, this is still above-average for lawyerspeak. Like most readers, the comments also arrive primarily during business hours. (Graph).

Patent.Law004

As might be expected, the majority of comments are written under pseudonyms. Of the top-ten most frequent commentators, it appears that only one uses his real name: Michael Slonecker — a patent attorney primarily retired from practice.  Malcolm Mooney, an anonymous and acerbic patent attorney is leading the pack with over 600 comments.  [Mooney is likely ascorbic as well]

When comments are posted, I receive an e-mail with your IP address. Based on those addresses, the majority of comments come from law firms, quickly followed by government agencies (US Courts, USPTO, FAA, etc.) and businesses.  There is also a large group of comments associated with more generic ISPs (Verizon, Comcast, AT&T, etc.).

Three comment related projects:

  1. Threading of comments so that you can more easily follow various posts.
  2. Ranking of comments (as on SlashDot) so that you can exclude low-ranking posts.
  3. A comment [RSS] feed. So that you can more easily follow the most recent comments. (Thanks to Adam Kessel for this idea)

Of course, I do all the programming and configuration for Patently-O — Let me know if you have easy solutions for any of these projects! dcrouch@gmail.com.

Steinbeck on Patent Attorneys

Book Review, Patent

From John Steinbeck’s Novel, East of Eden published in 1952:

“Meanwhile Samuel got no richer. He developed a very bad patent habid, a disease many men suffer from. He invented a part of a threshing machine, better, cheaper, and more efficient than any in existence. The patent attorney ate up his little profit for the year. Samuel sent his models to a manufacturer, who promptly rejected the plans and used the method. The next few years were kept lean by the suing, and the drain stopped only when he lost the suit. . . But he had caught the patent fever, and year after year the money made by threshing and by smithing was drained off i npatents. The Hamilton children went barefoot, and their overalls were patched and food was sometimes scarce, to pay or the crisp blueprints with cogs and planes and elevations.”

Book Review: The Book of Air and Shadows

Book Review, Patent

AirAndShadowsIt is not often that an IP lawyer becomes the reluctant hero. Gruber’s Book of Air and Shadows leads Jake Mishkin, a NYC copyright lawyer through a Shakespearean comedy as he attempts to recover a lost Shakespeare play, get the girl, and reconcile with his wife. . .  Mishkin reminds me of Saul Bellow’s hero Eugene Henderson, the Rain King – a large, morose, trustworthy, and lovable fellow. His practice is actually copyright law, but that is probably as close as our profession will get to popular fame.

Note:

  • I picked-up the book in the Chicago Airport on Monday and am about half-way through the book. This means that I’m assuming comedy.
  • Amazon.Com Link: The Book of Air and Shadows

 

Monsanto v. McFarling: CAFC Affirms “Reasonable Royalty” of 140% of Purchase Price

Damages, Patent, Patent Cases 2007

Monsanto v. McFarling (Fed. Cir. 2007).

Soybean.USDAMonsanto is one of the few patentees that sues individuals for patent infringement.  In Monsanto’s case, the infringers are farmers who allegedly save & replant Monsanto’s patented genetically modified seeds violation of their “Technology Agreement”. When McFarling was found liable, the Missouri jury assessed damages of $40 per seed-bag and the court issued an injunction.

Monsanto customarily requires a royalty payment of $6.50 per seed-bag in addition to $22 per bag for the soybean seeds themselves.  On appeal the CAFC focused on the proper royalty measure.  McFarling argued that $6.50 was the “established” royalty while Monsanto argued that the actual royalty rate is much greater.

The Court agreed with Monsanto that the nominal designation of $6.50 as a royalty was not the entire sum of the damages:

Picking $6.50 as the upper limit for the reasonable royalty would create a windfall for infringers like McFarling. Such infringers would have a huge advantage over other farmers who took the standard Monsanto license and were required to comply with the provisions of the license, including the purchase-of-seed and non-replanting provisions. The evidence at trial showed that Monsanto would not agree to an unconditional license in exchange for a payment of $6.50, and the explanation—that Monsanto would lose all the benefits it gets from having the cooperation of seed companies in promoting Monsanto’s product and controlling its distribution—is a reasonable commercial strategy.

In fact, the CAFC found that the royalty rate can easily be calculated as something above the total $28 dollars per bag paid.

[I]t would be improper to hold that Monsanto’s reasonable royalty damages are limited to $25.50 to $28.50 per bag.

The damage amount, instead of being based on the amount usually paid by farmers, legitimately includes (a) the harm being felt by Monsanto because of the infrinement as well as (b) the additional benefits garnered by McFarling. In particular, these include: reputational harm due to rogue planters, potential lapses in monsanto’s database of planting techniques; bargaining power; as well as McFarling’s increased yeald of $31 – $61 per acre.

Based on those advantages alone, it was reasonable for the jury to suppose that, in a hypothetical negotiation, a purchaser would pay a royalty of $40 per bag for the Roundup Ready seed.

Under CAFC law, a jury’s damage award will be affirmed unless “grossly excessive or monsrous, clearly not supported by the evidence o rbased only on speculation or guesswork.” Here the court found sufficient reasons for the verdict and affirmed.

Established Royalty: Typically, an “established royalty” is the best measure of reasonable royalty damages when “the patentee has consistently licensed others to engage in conduct comparable to the defendant’s.” The rule of established royalty rate does not apply here, however, because Monsanto apparently never allows for replanting — Thus, there are no “comparable” replanting licenses.

Blacklist: The court also noted that Monsanto may blacklist Mr. McFarling from buying its seeds. 

Notes:

  • Mark Lemley of Stanford argued on behalf of the Farmer, McFarling.
  • Several other issues are included in the decision.
  • Read the case.

 

Forgent v. EchoStar: Jury Instruction on Obviousness

Patent, , ,

Earlier this week, a Texas jury determined that Forgent’s patent claims against EchoStar were all invalid as anticipated, obvious, and lacking proper written description. Although the one-sided decision probably did not receive a boost from the recent decision of KSR v. Teleflex, it is interesting to note that the jury instructions on obviousness-by-combination closely follow DyStar and other new CAFC obviousness cases.

Jury Instructions:

One way to decide whether one of ordinary skill in the art would combine what is described in various items of prior art, is whether there is some teaching, suggestion, or motivation in the prior art for a skilled person to make the combination covered by the patent claims. Motivation can be implicit. In other words, motivation need not be explicit.

It is common sense that familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle. Multiple references in the prior art can be combined to show that a claim is obvious. Any need or problem known in the field and addressed by the patent can provide a reason for combining the elements in the manner claimed. To determine whether there was an apparent reason to combine the known elements in the way a patent claims, you can look to interrelated teachings of multiple patents, to the effects of demands known to the design community or present in the marketplace, and to the background knowledge possessed by a person of ordinary skill in the art. Neither the particular motivation nor the alleged purpose of the patentee controls. One of ordinary skill in the art is not confined only to prior art that attempts to solve the same problem as the patent claim.

 Notes:

DOE Requires Expert Evidence / NDA Still Good After Expiry

Patent

Motionless Keyboard v. Microsoft (Fed. Cir. 2007).

Patent.Law002Tom Gambaro is two patents related to ergonomic game-controllers.  Like many solo-inventors, Gambaro invented on his own [thin] dime — in particular, he held day jobs as a “graphic artist and dishwasher” and lived “in a friend’s attic.”  After a long process of obtaining seed-money from investors, Gambaro filed for patent protection and assigned the patent to Motionless.  Motionless then sued Microsoft and others for infringement. On summary judgment, however, the district court found the patents invalid for prior public use and not infringed.

Infringement: The Motionless patent claim language requires a “concavity” in the grip housing. Because none of the accused devices included this express limitation, summary judgment of non-infringement was affirmed. Infringement under the Doctrine of Equivalents failed because Motionless did not present “particularized testimony” showing that differences between the claim element and accused device were insubstantial. (I.e., a technical expert is necessary to win on DOE).

Public Use: The CAFC found the Motionless patent not invalid, reversing the lower court’s decision on that issue. Prior to the patent’s critical date, Gambaro disclosed his inventions several persons under a NDA that also expired prior to the critical date.  These disclosures, according to the CAFC were not “public” as required by Section 102(b) because they originally occurred under a NDA. One additional disclosure to a tester was not under a signed NDA.  That disclosure, however, was not considered a public use because the invention was not “connected to be used in the normal course of business to enter data into a system.”  In addition, the tester later signed a NDA.

Terminal Disclaimer: The district court had also found one patent invalid based on a terminal disclaimer filed by Gambaro — holding that the disclaimer was an admission of obviousness. The CAFC quickly reversed that portion of the decision.

A terminal disclaimer simply is not an admission that a later-filed invention is obvious. Thus, the trial court erred on this point and the ‘322 patent is not invalid due to obviousness.

Reversed-in-part

Notes:

  • Like Gambaro, for the next month, I’ll be living in a friend’s attic while teaching Patent Law at Franklin Pierce Law Center in Concord, NH. The friend is patent attorney Steve Finch of Finch & Nguyen.
  • In an earlier decision, the CAFC held that Gambaro could not argue on behalf of Motionless “pro se.”

 

No Trademark Protection for ASPIRINA — Too Close to Generic Aspirin

Patent

In re Bayer (Fed. Cir. 2007)

The Trademark Office Appeal Board (TTAB) found the mark ASPIRINA merely descriptive of analgesics. On appeal to the CAFC, Judge Moore filed a majority opinion agreeing that the TTAB had reached the critical ‘substantial evidence’ threshold and thus affirmed.

The Board concluded that consumers will view ASPIRINA as merely a variation or misspelling of the generic term aspirin and determined that the terms are close in sound, appearance, and meaning. The Board also found that ASPIRINA immediately conveys the impression that Bayer’s analgesics are aspirin-based products. . . .

Under the deferential substantial evidence standard of review, the Board’s decision must be affirmed. Where two different conclusions may be warranted based on the evidence of record, the Board’s decision to favor one conclusion over the other is the type of decision that must be sustained by this court as supported by substantial evidence.

In particular, the CAFC noted that ASPIRINA looks and sounds like aspirin – the same basic product. In addition, a number of online dictionaries show that ASPIRINA is a common spanish-language translation for aspirin.

Judge Newman filed a dissent, arguing that a mark’s closeness to a generic word is not determinative of its trademark status. Rather, according to Newman, the Court should examine whether ASPIRINA serves to associate the goods with their source.

  • Of note — the majority gave no weight to the fact that ASPIRINA has been registered in 34 other countries. Judge Newman would have given weight to that international business information.

Patent Reform 2007: Apportionment of Damages

Patent, Patent Legislation,

Patent are business tools that can help ensure some monetary reward for innovative effort.  Although few patent are litigated through final decision, the threat of litigation casts an ever-present shadow on licensing negotiations and inter-corporate dealings.  Of course, any underlying threat is closely related to the size of potential damages and strength of a potential injunction.  In the past two-years, damages in particular have become more important as the Supreme Court’s decision in EBay v. MercExchange lessens the likelihood of injunctive relief.

There has been little scholarly discussion of how ongoing money damages should be assessed when an injunction is denied.  I take the position that a denial of an injunction should not necessarily result in a compulsory license and that there are many times when continued infringement would be considered willful.

The Patent Reform Acts of 2007 (both House and Senate) propose changes to damage calculations that would require specific economic analysis to ensure that any reasonable royalty damage award captures "only [the] economic value properly attributable to the patent’s specific contribution over the prior art."  These calculations would apparently apply to calculations of both past and future damages. CAFC Chief Judge Michel recently testified before Congress — discussing some practical implementation of the damage modifications:

[T]he provision on apportioning damages would require courts to adjudicate the economic value of the entire prior art, the asserted patent claims, and also all other features of the accused product or process whether or not patented. This is a massive undertaking for which courts are ill-equipped. For one thing, generalist judges tack experience and expertise in making such extensive, complex economic valuations, as do lay jurors. For another, courts would be inundated with massive amounts of data, requiring extra weeks of trial in nearly every case. Resolving the meaning of this novel language could take years, as could the mandating of proper methods. The provision also invites an unseemly battle of "hired-gun" experts opining on the basis of indigestible quantities of economic data. Such an exercise might be successfully executed by an economic institution with massive resources and unlimited time, but hardly seems within the capability of already overburdened district courts. Appellate issue would also proliferate increasing complexity and delays on appeal, not to mention the risk of unsound decisions.

I am unaware of any convincing demonstration of the need for either provision, but even if the Committee ultimately concludes that they would represent an improvement over current patent policies embedded in Title 35 of the United States Code, their practicality seems to me very dubious. That is, the costs in delay and added attorneys fees for the parties and overburden for the courts would seem to outweigh any potential gains. Finally, even if the policy gains were viewed as significant, the courts as presently constituted simply cannot implement the provisions in a careful and timely manner, in my judgment.

(more…)