Patently-O TidBits and Reader Poll #1

Patent
  • The USPTO recently released a new revision of the MPEP — 8th Edition, Revision 5. Does anyone have a mark-up of the changes?
  • Dan Ravicher continues to do interesting work at PubPat. There credo is that “wrongly issued patents and unsound patent policy harm the public.” Their new blog is called “Software Patent Watch.”
  • Professors Keith Aoki, James Boyle, and Jennifer Jenkins recently published their comic book “Bound by the Law.” It is available for free online here. Great work!
  • Cory Hojka points out an important distinction between infringement of a patent and infringement of a copyright here.
  • James DeLong remarks on Antitrust and IP here.
  • What lessons can we learn about informal and low budget representations?

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CAFC: Means-Plus-Function Interpretations Absent Trigger Language

Patent,

KilmerMIT v. Abacus Software (Fed. Cir. 2006).

MIT’s patent covers a system for producing color copies.  Prior to expiration of the patent, the educational behemoth sued several hundred accused infringers. Most of the cases settled, but four parties continued to fight the patent.

After claim construction, the parties stipulated to a judgment of non-infringement. The first half of the appeal focused on when non-explicit claim language can be deemed “means-plus-function.”

But first, the 2–1 majority began their opinion with an announcement that the appellate court should only decide claim construction issues that served as the basis of the noninfringement judgment — and not any other claim construction issue.  In addition, the appellate panel had some trouble with the construction because there was no information in the record regarding the accused devices.

Even with respect to the claim construction issues on which the judgment is based we perceive a problem with the mechanism by which this case has been litigated. As in Lava Trading, the record does not disclose the nature of the accused devices, and our rulings on claim construction in this case unfortunately must be made without knowledge of the accused devices. 

On with the construction where the court searched for meaning of the claims as they would have been interpreted when the patent application was filed back in 1982.

Scanner: Based on a 1982 dictionary definitions, the court agreed that a scanner must have a moving element doing the scanning. Thus, although television cameras can do the same job as a scanner, they are not scanners. (The specification also distinguishes from cameras).  Similarly, the court found that a 1982 scanner requires that the scanned specimen must be placed in close proximity to the scanner.

Colorant Selection Mechanism: At MIT’s suggestion, the lower court held the term “colorant selection mechanism” should be interpreted as a means-plus-function claim even though it lacked the keyword “means.”

[A] limitation lacking the term “means” may overcome the presumption against means-plus-function treatment if it is shown that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.

The panel agreed that terms such as “mechanism,” “means,” “element,” and “device” “typically do not connote definite structure.”  A typographical error in dependent claim 3 sealed the deal.  In that claim, the patent refers to “said colorant selection means” even though only the mechanism had been introduced.

Aesthetic Correction Circuitry: Unlike a mechanism, the CAFC found that “circuitry” provided sufficient structure to avoid means-plus-function interpretation.

Chief Judge Michel Dissented and would have found “circuitry” to imply means-plus-function.

Note: There is more to this case that may be discussed in a later post.

Patent Reform

Patent, Patent Legislation,

As we speak, the IPO is holding its annual meeting in Chicago.  From the meeting:

  • PTO Director Jon Dudas announced that he has not yet decided whether to implement changes to limit continuation practice.
  • The IPO has created some information on patent reform.  First, a one-page sheet outlining the various draft bills. Second, a five-page comparison chart. And third, a red-line version of S.3818 that was introduced by Senators Hatch and Leahy. Word on the street — nothing is expected to pass in 2006. . .

Patent Lotteries: A Question for the Crowd

Patent

Long_tailA number of studies have shown that patent valuation is highly skewed.  The majority of patents are barely worth enough to cover prosecution costs, a substantial number have a moderate return, and a few are highly valuable. Chris Anderson just wrote a book on taking advantage of highly-skewed markets — titled The Long Tail.

The effect of this skew in the IP world has been dubbed the “patent lottery” because most of the payout involves a low probability of a high return. 

Lots of people think of the state-run lottery as a total scam because the expected value of a one dollar ticket is only about fifty cents.  The state rakes-in about half of the cost of every ticket and pays the other half out in winnings.  For anyone interested in wealth management and growth — this is not a good investment strategy. But, the state-run lottery is hugely popular with billions of dollars thrown at the system every year by hopeful winners. ($1.8b in Illinois alone in FY2005).  People explain this phenom in many ways — usually some combination of arguments such as: (1) the thrill of playing is worth the fifty-cent loss, (2) we generally don’t do well calculating the return low odds, and (3) we make stupid choices. [Note here that I have purchased a number lottery tickets in the past — especially when the jackpot is very large.]

Unlike the state-run lottery, in the patent system we don’t really know the odds of success very well and we don’t know whether potential innovators are willing to play “bad odds.”  I would like to get some input on this point.  Question for readers:

Would you or your clients be willing to invest time and/or money in developing a new innovation that had only a small chance of reaping huge rewards if you knew that the expected (and most likely) return would less than your original investment?

Comments are open — you can also e-mail me dcrouch@gmail.com.

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Judge Kimberly A. Moore

Patent

Book Cover: Patent LitigationPublic Announcement:

The Honorable Kimberly A. Moore was sworn in as a circuit judge on the U.S. Court of Appeals for the Federal Circuit on September 8, 2006. The oath of office was administered to Judge Moore by Chief Judge Paul Michel in the presence of Judge Moore’s family and judges of the court. A public ceremony will follow, date to be announced later.

Unlike many new judges, Judge Moore has a significant history of interesting and thought provoking scholarship.  A thorough study of her writings would set an interesting marker to be compared with her judicial decisions down the line.

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Upcoming Conferences

Conference or CLE, Patent
  • Patent Litigation Strategies: BNA is hosting a couple of interesting conferences based on their excellent book — Patent Litigation Strategies. The first is September 27–28 in Palo Alto and they will hold the same conference in DC on November 15–16.  More Info.
  • Markman: Here in Boston, Suffolk is hosting an interesting conference on patent claim interpretation on October 20. More Info.
  • Biotech Patents: I’ll be moderating an interesting panel at Biotech Patents conference here in Boston on November 29–30 hosted by American Conference Institute. More Info.

 

Obviousness: Motivation to Combine References Found in Expert Testimony

Patent, ,

OxybutAlza v. Mylan (Fed. Cir. 2006, 06–1019).

Alza holds the patent on a once-daily controlled release oxybutynin formulation used to treat urinary incontinence. (U.S. Patent No. 6,124,355). Alza’s formulation is sold as Ditropan XL®.  Mylan wants to sell a generic version and challenged the patent, and the district court obliged by finding the patent invalid as obvious.

In affirming the obviousness finding, a unanimous decision penned by Judge Gajarsa presents its defense of the much criticized teaching/suggestion/motivation test (TSM Test) for obviousness that is currently on review before the Supreme Court in the Teleflex case.

The meat of the opinion begins with a reminder that the motivation test did not arise with Federal Circuit, but rather that the making of the CCPA.  The 1943 case of Fridolph, for instance, instructs that when “considering more than one reference, the question always is: does such art suggest doing the thing the [inventor] did.”

Next, the opinion explains that the TSM test “has been developed consistent with the Supreme Court’s obviousness jurisprudence as expressed in Graham and the text of [Section 103(a)].”  The court explains that the purpose of the proof portion of the TSM test test is to avoid the problem associated with hindsight.  The theory is that obviousness “should be based on evidence rather than on mere speculation or conjecture.”

Many of the briefs in Teleflex argue that the TSM test is “rigid.”  In Alza, the court disagreed, arguing that the test is flexible “because a motivation may be found implicitly in the prior art.” (emphasis in original).

We do not have a rigid test that requires an actual teaching to combine before concluding that one of ordinary skill in the art would know to combine references. This approach, moreover, does not exist merely in theory but in practice, as well. Our recent decisions in Kahn and in Cross Medical Products amply illustrate the current state of this court’s views.

In Kahn, the court emphasized the availability of implicit proof of a motivation to combine references, and in Cross Medical, the court found that motivation could come from “general knowledge.”

In this case, the patent holder Alza argued that back in 1995, there was no suggestion to try (or likelihood of success of) using controlled release pills because nobody thought that the formulation could be absorbed in the colon.  Defendant Mylan relied on an expert witness who testified that back in 1995 there would have been a reasonable likelihood that a controlled release pill would work – and thus that there was a motivation to try it.  Alza presented some references that suggested that controlled-release pills might not work, but those did not specifically discuss absorption of the type of molecule contained in Ditropan. 

Based on the expert testimony, the lower court agreed that the TSM test had been satisfied and that the patent was invalid as obvious.  The appellate panel affirmed on a clear error standard, finding that:

we cannot perceive clear error in the district court’s factual findings that while colonic absorption was not guaranteed, the evidence, viewed as a whole, is clear and convincing that a person of ordinary skill in the art would nonetheless have perceived a reasonable likelihood of success and that she would have been motivated to combine prior art references to make the claimed invention.

Obviousness affirmed.

 

Professor Kimberly Moore Unanimously Confirmed

Patent

Without controversy, the nomination of Professor Kimberly Moore (George Mason) to become a Federal Circuit judge has been unanimously confirmed by the Senate (92–0).  Congratulations!

The main question now is: What will David Lat say in his new tabloid: Above the Law.

eBay v. MercExchange Unanswered Question

Patent,

Here are a handful of unanswered questions that leave us a bit in limbo post-ebay.

  • What (if any) presumption of irreparable harm is associated with an infringed patent? (in z4 no presumption was found)
  • How should willfulness of the infringement factor into the injunction analysis? If it “should” be factored-in, which of the four factors would it fall under? (In z4, willfulness was not considered a factor).
  • The Supreme Court ruled that a plaintiff’s willingness to license its patents and its lack of commercial activity in practicing the patents could not be sufficient to establish that the patent holder would not suffer irreparable harm if an injunction did not issue — but to what extent can those weigh in favor of an injunction.
  • Those of us having a law & economics background have difficulty with the concept of irreparable harm because the basis of idea that “most patent-related injuries can be fully compensated by some ex post cash payment” (Lichtman).  Couple that with Professor Laycock’s ground-breaking worth on the Death of Irreparable Injury where he shows that irreparable injury jurisprudence is for the most part a sham that does not alter the outcome. Bottom line, when will there be irreparable injury? What we do know is that failure to work and a willingness to license do not preclude a finding of irreparable harm.
  • How will irreparable for permanent injunction differ from the analysis during a preliminary injunction determination?
  • Once an injunction is denied, how will we calculate damages and is ongoing infringement willful?

Enjoy the Weekend

Patent, ,

From the U.S. Patent Code … in verse by Yehuda Berlinger [LINK].

These verses are part
Thirty five of the code
Of the U. S. of A.
Written down as an ode . . .

102

If already known
Or in print, or described,
Or abandoned, a patent
Cannot be applied

103

A process that anyone could
Discover’s superfluous
You can’t patent it, for it’s
Patently obvious

104

You can only claim patent
If you made the invention
In a country with which we
Have no contention

111

To apply for a patent
You fill out in writing
And you swear and you pay
Isn’t that exciting?

112

You fill out your claim
About what the thing does
And how it all works
And wherefore and because

119

If you’re already registered
Outside the states
You are retroactively granted
Within a year of the date

120

A followup patent
Is often permitted
To be dated to when the
First one was submitted

121

Two inventions should not
Be submitted together
So split them, and next time
Don’t try to be clever

122

Patent applications are
Kept in obscurity
Especially ones that
Affect national security

So what I have written
Be it naughty or nice
Is no substitute for real
Legal advice

Copyright 2006, Yehuda Berlinger.

EchoStar v. TiVo Patent Case Stayed Pending Inter Partes Reexamination

Patent, Patent Cases 2006

First, I’m happy to report that one of my favorite patent blogs, the 271 Patent Blog by Peter Zura is back in business. Welcome back Peter.

I’ve been covering the TiVo v. EchoStar case here. Peter has information about the companion case EchoStar v. TiVo here.  In the first case TiVo sued EchoStar for patent infringement, and in the second, EchoStar sued TiVo for patent infringement. This is great fodder for an antitrust article (or blog post). We have what may be a market duopoly with each side holding potentially essential intellectual property rights.

The take-home for patent attorneys involves the second case — the one filed by EchoStar.  That case was recently stayed pending the outcome of an inter partes reexamination filed by TiVo. In its decision to stay, the magistrate judge gave a good amount of weight to the fact that the reexam was inter partes — thus giving both sides an opportunity to continue the litigation in another form — as well as the statutory litigation estoppel effect against TiVo if the validity EchoStar’s patents are reaffirmed in the reexamination process.  In other words, the fact that the reexam is inter partes made the court more likely to stay the litigation.

CAFC and the Nebulous Motivation to Modify

Patent, Patent Cases 2006,

Ormco v. Align Technology (Fed. Cir. 2006).

Align owns a couple of patents covering a system of using a series of sequential orthodontic retainers.  Each retainer in the series is used to shift the teeth a bit.  Claim 1 is typical and, according to the CAFC:

essentially requires (a) three or more appliances with geometries selected to progressively reposition teeth; (b) instructions regarding order of use; and (c) provision of the appliances in a single package to the patient.

On summary judgment, the patent was found not invalid and infringed.  The defendant appealed on obviousness and won.  

The opinion is interesting because the court gives only lip-service to the requirement of proof of motivation to modify the the teaching of prior art to achieve the claimed invention.  The prior art reference taught the progressive retainers, but did not teach the single package provisioning limitation. The only motivation modify provided by the court is as follows:

Under these circumstances, we do not think that the single package limitation makes the device of the ‘611 patent claims patentably distinct. Providing the devices to the patient in one package, as opposed to two packages or three packages is not a novel or patentable feature in the light of the well-known practice of packaging items in the manner most convenient to the purchaser.

The prior art reference actually appeared to teach away from the single package provisioning by stating that each subsequent retainer should be applied by a professional in an office visit.  Here the court dismissed that argument because the supposed teaching away of the prior art (requiring a professional visit for installation) does not necessarily mean that all of the retainers cannot be all packaged together. Although not explicit, this decision appears to diverge from the traditional thought of teaching away as a “suggestion” or implication and moves it to a world where the teaching away is explicitly and definite.

Regarding the instruction limitation — that limitation will never make an invention patentable in the medical field:

statutes and regulations promulgated under the Food, Drug, and Cosmetic Act (“FDCA”) generally require instructions for medical devices. Whether or not these regulations apply to the specific orthodontic devices involved here, they supply ample evidence of a motivation to provide instructions as to how to use the devices.

Note: The timing of this case is exceptional.  As the respondent and oppositional amici in KSR are preparing their briefs, this decision appears showing the flexibility of the modification test and its ability to allow the court to bend over backwards to achieve the right results. . . .

Scherer on Compulsory Licensing

Articles and Publications, Patent,

In 1977, noted economist F.M. Scherer wrote a monograph entitled “The Economic Effects of Compulsory Patent Licensing.”  At that time, there was pending legislation on compulsory licensing of nuclear technology.  In some ways, Scherer’s analysis thirty years ago can serve as the starting-point for determining whether to issue an injunction in our post-eBay environment. Specifically, Scherer argues that compulsory licensing should not be favored when any of the following are true:

  1. The patent holder’s share of the product market averaged less than 20% over the preceding five years; or
  2. The patent holder’s total sales of related products during the past five years as well as the reasonably anticipated sales over the next five years are less than ten-times the patentee’s R&D budget; or
  3. The patent holder exercised extraordinary creative initiative or extraordinary technical and financial risks in its innovative effort.

Scherer was concerned that injunctive relief was most important for small and especially micro-sized firms whose barriers to entry and lack of non-patent competitive advantages increased their relative valuation of patent importance.

Anticipated by the Internet

Patent, ,

Doesn’t anyone think that debates over “combinations of references” are outdated? I usually only use one reference — Google.  Occasionally I combine Google with a directed PTO search — although even that will likely become more rare as Google continues to digest and index the history of written word. We are information rich, and arguments that exclude certain bits of knowledge from “prior art” based on inaccessibility do not make sense when that information was freely available online and indexed by Google. 

On another note, in the current regime, where the Internet is not a single reference, couldn’t a showing that two references would have both been retrieved with a single Google search serve as evidence of a motivation to combine the two?

Of course, these teasers suggest a new business model: Archiving of Google search results for later use during litigation.

CAFC Condones District Court Preliminary Injunction Jurisdiction Despite Ongoing ITC Exclusion Order

Patent, Patent Cases 2006

CameraPatent.jpgFuji Photo Film v. Benun (Fed. Cir. 2006).

Fuji’s disposable camera patent litigation against Jazz Photo and Benun (Jazz’s owner) is ongoing.  (See, e.g.,  here and here).  The lower court granted a preliminary injunction stopping Benun from importing any otherwise infringing disposable cameras that did not originate from camera shells that were first sold in the U.S.  Because the ITC has an ongoing Exclusion Order for these products, the defendants challenged the district court’s jurisdiction to enjoin the activity.

Benun tied its jurisdiction argument to the ITC’s grant of jurisdiction.  Under 28 U.S.C., 1581(a), the ITC has “exclusive jurisdiction of any civil action commenced to contest the denial of a protest, in whole or in part, under section 515 of the Tariff Act of 1930.”  As the CAFC aptly found, however, the statute does not “even vaguely suggest[] that the statutory scheme for protesting a seizure . . . divests a district court of jurisdiction to consider an injunction on goods subject to a general exclusion order.” 

According to the CAFC, this distinction makes sense because of the major differences between a general exclusion order and a preliminary injunction to stop patent infringement. Specifically, a general exclusion order is a government action that merely excludes goods from entry.  The district court infringement case, however, can lead to damages and attorney fees as well as potential contempt proceedings for violation of a preliminary injunction.

Statistical Interlude: First 100 Published Applications

Patent

Interesting sideline results from some empirical work that I’m doing:

In 2001, the PTO began publishing patent applications 18 months after filing unless the applicant filed a nonpublication request.  To date, more than 1.2 million pending applications have been published. Of the first 100 published applications, 73 applications have issued as patents and 27 were abandoned.  None of the originally filed applications are still pending, and only one of the abandoned application still has a pending continuation. 19 of the abandoned applications have at least one family-member that is an issued patent.  Thus, leaving only 8 that are “fully dead” (i.e., with no known issued patents or pending family members).

 

Litigation Misconduct and Enhanced Damages

Patent, Patent Cases 2006,

z4 v. Microsoft (E.D. Tex. 2006).

The Eastern District of Texas has been busy leading the post-eBay anti-injunction craze.  z4’s motion for injunctive relief against Microsoft was denied (see z4), but the small holding company was still awarded $115,000,000 in damages against the software giant.

Now, the court has added another $25,000,000 in enhanced willfulness damages and $2.3 million in costs and attorneys’ fees. z4 and its owner David Colvin successfully played the underdog:

[T]here is ample circumstantial evidence that to Microsoft[,] Colvin and his patent rights were insignificant because Microsoft never thought Colvin would be able to pursue his rights against it. The evidence presented at trial suggests that Microsoft considered z4 a small and irrelevant company that was not worthy of Microsoft’s time and attention, even if Microsoft was potentially infringing its patents.

In economics literature, this potential for “underenforcement” is a classic justification of punitive damages. 

The court then went through a laundry list of examples of Microsoft’s litigation misconduct that formed the basis for the finding of an exceptional case as well as a partial basis for the enhanced willfulness damages.  Some of these are listed below:

The Moncau email. It wasn’t until the Sunday one-day before trial that z4 was finally a able to depose Microsoft’s witness Moncau, and during that deposition Moncau revealed information about an important email that had been sent to two other Microsoft witnesses discussing critical information regarding operation of Microsoft’s product.  That email had never been produced even though Moncau testified that he had provided all his documents to Microsoft’s counsel over one year before the deposition.

Nevertheless, the email had never been produced by Microsoft during discovery despite the fact that it was between three Microsoft employees referenced in the email, all of whom allegedly gave all of their relevant documents to Microsoft’s counsel for production. Making matters even worse, Defendants admit they were aware of the Moncau email several hours before Moncau’s deposition, but still withheld it from z4 until z4 found out about it during questioning during the deposition. This raises a serious question as to whether the email would have ever seen the light of day, had z4 not uncovered it during Moncau’s deposition the day before trial.

At trial, the Court indicated to the Jury that Microsoft had improperly withheld the communication.

The Hughes Database. Microsoft attempted to use a summary chart at trial based on an underlying database.  In his deposition, however, Hughes, the chart’s creator, testified that the database did not exist.  One week after the deposition, Microsoft did, in fact, produce the data stored in file on a CD labeled “Source Code,” but z4 never found the database and, even after z4 asked, Microsoft never corrected Hughes original testimony or informed z4 of the database. 

It also turned out that the summary was an inaccurate representation of the database and that Microsoft had not accurately disclosed the method used to create the summary chart.

The Court determined that Microsoft had attempted to mislead z4, the Court, and the jury and excluded Hughes from testifying with regard to the database and his summary chart.

Voluminous Exhibit Tactic. Microsoft marked over 3,000 exhibits for trial, but only admitted 107 of these.

The Court concludes that Defendants attempted to bury the relevant 107 exhibits admitted at trial in its voluminous 3,449 marked exhibits in the hope that they could conceal their trial evidence in a massive pile of decoys. This type of trial tactic is not only unfair to z4, but creates unnecessary work on the Court staff and is confusing and potentially misleading to the jury.

Etc.

Finally, the Court is greatly disturbed by the repeated instances where Defendants actions go beyond what can be dismissed as a mere appearance of impropriety and collectively appear to represent a pattern which is of disappointment to the Court and a disservice to legitimate advocacy. The repeated examples, some of which are not even mentioned here, of what can be described as nothing less than misleading on the part of Defendants, justify a conclusion that Defendants committed litigation misconduct. This conduct, coupled with the fact that Microsoft was found to have willfully infringed the patents-in-suit results in this case being deemed exceptional. Accordingly, the Court awards z4 reasonable attorneys’ fees and expenses, excluding expenses related to expert witnesses.

Microsoft is expected to appeal this decision.  z4 will likely cross-appeal the denial of injunction.

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Patent Reform Bills: Do Not Forget the Details

Patent, Patent Legislation, , , , ,

< ?xml:namespace prefix ="" o />ED: The following note was submitted for anonymous publication by a practicing patent attorney:

For all the public debate over controversial broad objectives in the various pending patent reform bills, there has been remarkably little published academic or other attention to whether or not the extensive new specific draft language in these bills will accomplish those objectives without drafting errors creating unintended ambiguities in judicial interpretations.  This note will particularly question, an example that seems to be in common to the pending bills, the draft language for the crucial definition of the “effective date” of an application or patent. 

The seriousness of current patent reform legislative efforts has been more than adequately demonstrated over the past two years.  There have been a number of Congressional hearings, other public debates and IPL association activities over the [evolving] versions of H.R. 2795 in 2005, the Berman/Boucher H.R. 5299 in 2004, major FTC and other studies and reports on patent reform, etc.  Now, on < ?xml:namespace prefix ="" st1 />August 4, 2006 Senators Hatch and Leahy have introduced “their own” Bill, S. 3818, the “Patent Reform Act of 2006”( for which there will be a House equivalent).  Although there will be considerable further debate into the next term of Congress, passage of some form of major new patent legislation next year seems quite likely.   Many of these patent reform proposals are not that controversial.  In particular, clarifications of “willful infringement,” §103(c), inter partes reexaminations, assignee filing, restoration of the prior patent venue statute, an “opposition system” of some kind, elimination of most interferences (and other “secret prior art” business investment uncertainties) with some form of “first inventor to file” plus some form of associated changes in §102 and “prior user” defenses,  etc.  Thus, there are highly likely to be a number of major changes in the present patent statute even if the most controversial provisions end up removed or amended in the final legislation.   

This note is not about any controversial issues.  Rather, the intent here is simply to encourage better reviewing, by both the patent bar and academia, of specific drafting language issues that might present serious future ambiguities or unintended legal consequences, which seems to be getting insufficient attention.   Whatever version of any of these draft bills is enacted, it will generate a great deal of new statutory language for which there will be no legal precedents.  This new language will at best only be eventually interpreted in “cases of first impression” by individual panels of the Federal Circuit.   That should give readers pause to consider that some Federal Circuit interpretations of even relatively old patent law language have been quite controversial, and some have even been unanimously overruled by the Supreme Court.  This in turn should strongly suggest that very careful attention be paid to completely new and untested statutory language to insure that it is as completely unambiguous and as completely free of possible unintended interpretations as possible.   All members of the patent bar and their clients will be greatly affected by any of the pending “patent reform” bills. 

No doubt those authoring the specific legislative language consider that it does not have any possible ambiguities or misinterpretations, to them.  However, legal and Congressional history is full of such surprises.   The frequent necessity for subsequent “technical corrections” legislation is evidence enough.  For example, it took several years for passage of technical correction legislation to fix an unintended problem created by the 1999 AIPA legislation’s amendment of 35 USC §102(e).  Patent law is a specialized legal area of uniquely semantically clever lawyers, who unfortunately rarely apply themselves to legislation in advance.   Furthermore Congressional staff members, no matter how brilliant, are highly unlikely to have sufficient patent law practice background to be able to anticipate all of the possible interrelated consequences of major changes in patent statutory language. 

Thus, there should logically be a much broader participation by the patent bar in careful and critical reading of draft legislation and providing thoughtful comments on specific wording in time to fix it.  That is, not just depending on brief summaries of the intentions or alleged effects of this legislation by proponents or opponents.   Especially from lobbyists who have never practiced patent law, “planted” newspaper and magazine articles, and other very incomplete and unreliable sources.  More advance consideration is needed by those who can actually understand this legislation, the legal problems it is addressing, and the full ramifications of the specific legislative language.  In many cases this may be merely to suggest minor wording changes.  Even if the legislation itself is not changed, the legislative history might be improved in some cases.  This would also seem to be a far more meaningful activity for law school professors than non-pending legislative proposals which no one with any influence is supporting.  

To pick just one example in this draft legislation language, consider the critical S. 3818 definition of the term “effective filing date of a claimed invention,” which is identical or similar to that of  other patent reform Bills.   All competent patent attorneys are familiar with this date and its criticality.  It is even more crucial for the proposed “first to file” system.  Under long established current case law it means the filing date of a patent application having full 35 USC §112 support for what is being presently claimed (in its subsequent patent or in any other pending applications claiming priority date benefit therefrom).  It has not ever meant the filing date of an application containing a bare unsupported claim with no §112 enablement of any kind.  

So, let us consider the actual language of S. 3818 “SEC. 3” on p. 2.   It contains in subsections (h)(1) and (2) a new definition of the “effective filing date of a claimed invention.”  It states that the “effective filing date of a claimed invention” is:

“(1) the filing date of the patent or the application for patent containing the claim to the invention;  or 

 (2) if the patent or application for patent is entitled to a right of priority of any other application under  .. or an earlier filing date in the United States under .., the filing date of the earliest such application in which the claimed invention is disclosed in the manner provided by the first paragraph of section 112.” [Emphasis supplied]

First, note that SEC.3 (h) subsections (1) and (2) are defined in the alternative – “or”.  Note that the first alternative, (h)(1), has no §112 requirement at all.  It would literally provide an “effective filing date” for an application or patent merely “containing the claim” irrespective of whether or not it ever had any §112 enablement support as of its filing date, incongruously unlike the alternative (h)(2).  [As all patent attorneys know, a §112 enablement attempted to be added after the filing date is illegal “new matter.”]  Thus a literal reading of Sec. 3 (h)(1), especially as read in contrast to alternative (h)(2) (normal statutory interpretation) would give an “effective filing date” to a patent application filed with a bare claim to an invention even if there was no enablement example or description whatsoever for that claimed invention!   That is, granting a “first inventor to file” date for a bare concept suggestion with no teaching of any way to make or use it.   Yet, if that same application or patent had a foreign or U.S. priority claim it would not get that date benefit, because then (h)(2) would apply instead, appropriately requiring that “the claimed invention is disclosed in the manner provided by the first paragraph of section 112.”  Furthermore, would not applicants filing a continuation or divisional also lose this literally defined (h)(1) original effective filing date by thereby converting the application and its ultimate patent from (h)(1) to (h)(2)?

It someone can clearly explain why a normal judge would not read this proposed statute this way if it is enacted, this reader would gratefully appreciate the enlightenment.

Now, confusing this reader further, please note that on page 5 of this Bill you will find in a new §102(b)((3) another, different, and not cross-referenced definition [why?] of the same critical term for when a patent or application is “effectively filed,” but here only “under subsection (a)(2).” This effective filing date definition is only with respect to “subject matter described in the patent or application -”..”as of the filing date ..” [emphasis supplied]  

There is also a subparagraph Sec. 3 (h)(2)(i) on page 3 stating that:

 “(i) The term “claimed invention” means the subject matter defined by a claim in a patent or an application for a patent.”

Why is this Sec. 3 (h)(2)(i) definition presented only as a subparagraph of (h)(2), thus by normal statutory interpretation only defining the term “claimed invention” just in (h)(2)?  As noted above, the same term “claimed invention” also appears in (h) itself prior to both (h)(1) and (h)(2).  Was this deliberate for some reason?

Further as to the vital question of what would still be prior art, or not, this p. 3 et sec S. 3818 version of a whole new 35 USC §102 definition of prior art seems shorter and simpler than that of  prior bills.  That may be desirable, but it should also trigger patent attorney and client interest in what is being left out of the present statute and all its case law, and how situations will be handled if this Bill becomes law.  For example, the present and very important “on sale” bar defense would be eliminated in this and other pending legislation. However, the prior pending H.R. 2795 §102 had been revised to make it clear that software in one’s own sold products would remain prior art to later attempts of others to patent it.  That was widely considered vital to avoid judicial debates over whether or not that internal software would be considered “publicly known,” since that would be the only other §102 defense left for this now-common situation under this new §102 .   Yet S. 3818 seems to have left out that vital provision. 

Finally, just for a couple of other drafting examples, the S. 3818 amendment of §103 in (c)(1)(A) on page 6 restores an undisputed typographical error previously caught and corrected in the amended version of H.R. 2795.  Namely, “through” instead of “though” in: “A patent for the claimed invention may not be obtained through [sic] the claimed invention;..”   Also, what does the last line of S. 3818 Sec. 5 (b)(2) on p. 20 mean by “..such claim, the infringer.”?  

In conclusion, there are undoubtedly other potential unintended interpretations or drafting errors subject to unpredictable D.C. and Federal Circuit de novo interpretations in all this new language that ought to be under a lot more academic and other public discussion.   Especially those relating to 35 USC §102 and other extremely important statutory sections affecting all aspects of patent law practice.  The introductory remarks for S. 3818 by Senator Hatch have welcomed further useful input on this draft legislation.  Careful and timely review and correction of specific language ought to be provided by all those in a position to do so.

Cite as NOTE, “Patent Reform Bills: Do Not Forget the Details”, Patently-O, available at https://patentlyo.com/patent/2006/08/patent_reform_b.html.

Specific Exclusion Exception to the Doctrine of Equivalence

Patent,

MucosalLayerCook Biotech v. ACell (Fed. Cir. 2006).

Cook’s claims were directed to a urinary bladder submucosa derived tissue graft composition that is entirely delaminated from “the luminal portion of the tunica mucosa.”  The graft can be implanted to support damaged tissues.  A number of claim construction and inventorship issues were raised.  However, an interesting aspect of the case is the court’s further development of the specific exclusion exception to the doctrine of equivalents.

The specific exclusion exception can be considered part of the “all limitations rule” and operates to exclude from the doctrine of equivalents, any elements “specifically excluded by a claim limitation.”

A claim that specifically excludes an element cannot through a theory of equivalence be used to capture a composition that contains that expressly excluded element without violating the “all limitations rule.”

Here, the accused infringing product contains at least a portion of the luminal portion of the tunica mucosa.  ACell argued, and the CAFC agreed, that the DOE cannot be extended to the accused product without rendering the delamination requirement meaningless.

Permitting appellees to assert such a theory of equivalence would effectively remove the requirement that the urinary bladder submucosa be delaminated from “the luminal portion of the tunica mucosa.”

Although the CAFC does not use the term “vitiation” here, the specific exclusion exception is essentially the same concept. As the court held in the 2005 Freedman Seating case,

an element of an accused product or process is not, as a matter of law, equivalent to a limitation of the claimed invention if such a finding would entirely vitiate the limitation.

Documents:

Patently-O: Judge Takes Stand Against Forum Shopping

Patent, Patent Cases 2006, ,

Collaboration Properties v. Tandberg ASA, 2006 U.S. Dist. LEXIS 43930 (N.D.Cal. 2006)

Defendant Tandberg waited for six months before moving to amend its answer to add certain defenses and counterclaims.  At about the same time, Tandberg filed its own patent infringement lawsuit (through a holding company) against Collaboration Props in the Eastern District of Texas. Judge Patel of the Northern District of California was clearly peeved at Tandberg’s litigation strategy and forum shopping. 

The court’s concerns about gamesmanship have not diminished, particularly in light of Tandberg’s ongoing aggressive and arguably frivolous motion practice.

Despite these concerns, Judge Patel granted leave to amend subject to a “reasonable condition” that Tandberg’s holding company submit to personal jurisdiction in California and allow the case to be consolidated there.  Tandberg refused and so the court also refused to allow the amended answer and counterclaims.

Note: A reader e-mailed the decision to me because it is apparently the first federal court decision citing Patently-O. In particular, the court cites a draft version of patent reform legislation that I have stored online. At his blog, Ian Best, has compiled a directory of all 27 cases that thus far cite to legal blogs.  (A total of 8 legal blogs have been cited).  Mr. Best has also compiled a directory of all 489 law review articles that cite to legal blogs.  It turns out that Patently-O is in the top-ten with seventeen citations, thirteen of them coming in the past four months.