The Patent Reform Act of 2005 is changing as it moves through congress. In the latest amendment, Representative Smith has eliminated some of the most controversial aspects of the bill, including the injunction provision and the provision that would limit the scope of claims in continuing applications.
The reform measures still include a move to first-to-file; changes to the duty of candor; limitations on infringement and willfulness damages; post grant opposition procedures; and a revised venue statue.
Research Plastics v. Federal Packaging (Fed. Cir. 2005).
In a dispute over caulking tubes, Research appealed a district court judgment of non-infringement — arguing that the lower court had erred in its claim construction.
Claim construction centered on the claim term “rear end.” Referencing only intrinsic evidence, the CAFC determined that the lower court had erred slightly in its definition of the term — finding that the prosecution history provided substantial support for defining the rear end as the “point defined by the rear edge of the tube.” On remand, the district court must reconsider literal infringement in light of the new construction.
Regarding the Doctrine of Equivalents, the Court found that Research had disclaimed equivalents to a ribbed nozzle by amending the claims to overcome a cited reference. Thus, under Festo, that scope cannot be recaptured as an equivalent to the claimed invention.
Figueroa v. < ?xml:namespace prefix ="" st1 />United States (Ct. Fed. Clms. 2005).
< ?xml:namespace prefix ="" o />
In Figueroa, the plaintiff challenged Congress’ diversion of USPTO fee revenue to non IP government programs as an illegal exaction and unconstitutional.Specifically, the plaintiff argued that because the diversion interfered with the USPTO’s performance and burdened inventors with costs unrelated to securing patent rights, it was “not rationally related to promoting the progress of the useful arts, as required by the Constitution.”
The Court disagreed, and held that the diversion was not unconstitutional.It applied a rational basis test, which required the plaintiff to prove that the diversion of fees was not “rationally related to legitimate governmental objectives.”
Relying on Eldred v. Ashcroft, the Court noted that IP policy judgments “are vested in Congress, and courts must be deferential to Congress’ exercise of its power in that sphere.”It pointed out that under current USPTO appropriations legislation, the USPTO has continued to grow and its appropriations have increased.Therefore, it concluded that “Congress’ determination of federal spending priorities and how the patent system fits into national economic development goals is an eminently rational exercise of that power.”
NOTE: This post was written by Paul Kafadar. Paul is a law clerk at MBHB and a law student at Northwestern University in Chicago.
In a patent infringement action, the district court had granted summary judgment to the defendant TiVo — finding that certain TiVo products did not infringe Pause’s reissued patent. On appeal, Pause challenged the district court’s claim construction rulings as erroneously defining the limitations “circular storage buffer” and “time interval of predetermined duration”. In support of its position, Pause argued, inter alia, that (i) the lower court’s interpretation of a “circular storage buffer” limitation should not depend on other language appearing later in the claim and (ii) the language employed by the district court in construing the limitations was not present within the claim and, thereby, led to impermissible narrowing of the claim’s scope.
The Federal Circuit, relying in part on Phillips v. AWH, rejected the first argument as “[p]roper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.” Additionally, the Federal Circuit further found that Pause’s second argument was inconsistent with the prosecution history and the language present elsewhere in the claim and in the specification.
The Federal Circuit affirmed — finding no error in either claim construction or infringement analysis.
NOTE: This post was written by Cory Hojka. Mr. Hojka is a law clerk at MBHB and a student at the University of Chicago Law School.
Integra Lifesciences v. Merck KGaA (Fed. Cir. 2005) (Order).
On remand from the Supreme Court, the CAFC has reinstated the Integra’s appeal and ordered the parties to re-brief the case based on the Supreme Court’s recent decision.
In a nutshell, the Supreme Court found that Section 271(e)(1) of the Patent Act provides a safe harbor that protects would-be infringers from liability for “all uses of patented inventions that are reasonably related to the development and submission of any information under the FDCA.”
Stephen Terlep sued Brinkman, Wal-Mart, and Home Depot for infringement of his patent directed to an omni-directional LED. After construing the claims, the Arkansas federal court granted summary judgment of noninfringement based on the accused products failure to have a “clear plastic tubular holder” as claimed.
On appeal, the Federal Circuit affirmed, finding that the court’s claim construction methods were appropriate under Phillips v. AWH.
In Phillips, the CAFC determined that the specification of a patent is “always highly relevant to the claim construction analysis. Usually, it is dispositive.”
To apply Phillips, the court analyzed each use of the term “clear” in the claims, specification, and prosecution and came to the conclusion that the district court had appropriately excluded “translucent” from the term’s definition.
Dictionaries: The CAFC went on to find that the district court’s use of dictionary definitions to support its finding from the written description was an appropriate use of the extrinsic evidence.
Illinois Tool Works v. Independent Ink (Supreme Court 2005).
On appeal to the Supreme Court is the question of whether market power must be proven in a Section 1 Sherman Act case that alleges the tying of a non-patented product to the sale of a patented product. In its opinion in the case, Court of Appeals for the Federal Circuit determined that a rebuttable presumption of market power sufficient to restrain trade under antitrust law arises from the patentee’s possession of a patent used in an explicit tying agreement. Oral arguments are scheduled for Tuesday, November 29, 2005.
Briefing is ongoing, but a number of parties have filed as amici.
The government makes the powerful argument that there is “no economic basis” for inferring market power from the “mere fact” that the defendant holds a patent. The relevant market would rarely have the same boundaries as the legal scope of the patent — as such, the per se approach is not warranted. Both the DOJ and FTC have a policy against applying a presumption of market power based on the existence of a patent. Download the U.S. Government Brief.
Brief of the IPO:
The Intellectual Property Owners Association agreed with the Government Brief that there was a lack of economic rational for a per se presumption of market power. In addition, the IPO argued that the presumption makes it too easy for defendants in patent infringement suits to file baseless antitrust counterclaims. Notably, the IPO questions the basic premise that tying is competitive by citing a number of academic articles (Bakos) that provide evidence of the pro-consumer effects of tying agreements. File Attachment: IPOTyingBrief.pdf (1099 KB).
Amicus Brief of the MPAA
The Motion Picture Association of America and several other organizations filed a joint brief in support of the petitioner. The MPAA makes the argument that Loew’s does not set a rule of “presuming antitrust market power from intellectual property ownership.” The MPAA is a heavy copyright holder, but certainly realizes that the Supreme Court often generalizes across traditional IP categories with its analysis. File Attachment: Illinois Tool MPAA Amicus Brief.pdf (345 KB).
Brief of the NYIPLA:
In its support of the petitioner, the NY IP Law Association (David Ryan, et al.) took the novel position that Section 271(d)(5) of the Patent Act exempts tying. Section 271–(d)(5) provides that:
No patent owner . . . shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having . . . (5) conditioned the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.
The NYIPLA thus argues that the plain language of the statute encompasses tying and requires a specific showing of market power — thus eliminating the per se approach. File Attachment: NYIPLABrf.pdf (318 KB).
Amicus Brief of the IPLAC:
The Intellectual Property Law Association of Chicago analyzed the parallels between this case and Jefferson Parish — making the argument that the only notable difference between the two cases being the fact that a portion of the tying product is patented. File Attachment: IPLACbrf.pdf (132 KB).
Kumar et al. appealed the PTO Board of Patent Appeals and Interferences decision rejecting Kumar’s patent application claims on aluminum oxide particles as obvious under 35 U.S.C. Sec. 103.
The Board held the claims unpatentable based on calculations derived from U.S. Patent No. 5,389,194 (the Rostoker patent). These calculations were not performed by the examiner nor were they presented during the argument of the appeal to the Board. The Federal Circuit therefore concluded that these calculations represented new grounds for rejection by the Board. Since the Board had provided Kumar no opportunity to respond to these new grounds for rejection, the Federal Circuit also reversed and remanded the Board’s holding.
NOTE: This post was written by Cory Hojka. Mr. Hojka is a law clerk at McDonnell Boehnen Hulbert & Berghoff LLP and a law student at the University of Chicago Law School in Hyde Park.
In an interference proceeding regarding a chimeric genes for cell-surface antibody production, the BPAI the claims of both applications after finding that they both failed to provide an adequate written descriptions as required by 35 U.S.C. 112. Particularly the Board found that the written description must include a listing of the specific nucleotide sequence of claimed DNA.
On appeal, the CAFC reversed, finding that the per se rule requiring recitation in the specification of the nucleotide sequence of the claimed DNA to be incorrect when the sequence is already known in the field.
The Board’s rule that the nucleotide sequences of the chimeric genes must be fully presented, although the nucleotide sequences of the component DNA are known, is an inappropriate generalization. When the prior art includes the nucleotide information, precedent does not set a per se rule that the information must be determined afresh.
On remand, the CAFC asked the Board to further explore whether the applications include appropriate descriptions in light of what is known in the field.
Warner-Lambert v. Teva Pharmaceuticals (Fed. Cir. 2005).
In a dispute over Warner-Lambert’s control over its ACE inhibitor quinapril, the district court granted summary judgment of validity in Warner-Lambert’s favor. Teva appealed, arguing that the patent was not enabled.
On appeal, the CAFC reversed and remanded. Specifically, the appellate panel questioned the district court’s summary judgment opinion that lacked any analysis of the enablement issue:
At the outset, we find the issue of enablement difficult to review because the district court did not address it in its decision granting Warner-Lambert’s summary judgment motion. We have no way of knowing what the district court thought of Teva’s enablement defense or why the court did not address the issue in its decision. In short, we are being asked to review an incomplete record.
Based on the evidence presented by Teva and a lack of written justification for the district court judgment, the CAFC held that Teva should be given another opportunity to present its case.
Freedman Seating v. American Seating (Fed. Cir. 2005).
Freedman was awarded summary judgment of infringement based on an analysis under the doctrine of equivalents.
Freedman’s patent covers technology for stowable bus seats that allow room for a wheelchair. The claims include a limitation of a seat-base having a slidably mounted movable end. On appeal, American Seating argued that its rotatably mounted elements were not equivalent.
Agreeing with American, the CAFC reversed, holding that allowing DOE coverage of a rotatably mounted element would vitiate the claim language that required the element be slidably mounted.
[A]n 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.
According to the panel, determining vitiation is done by considering “the totality of the circumstances in each case.” Specifically, the court must determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless.
In this case, the court determined that the “slidably mounted” limitation excluded the possibility of DOE coverage of a “rotatably mounted” element.
Reversed.
Comment:
DOE jurisprudence is becoming more confusing. Every defendant now has an arguable vitiation position — since, by definition, the DOE is only applied against products that do something different than what is required by the claims.
September 18–20, 2005: 42nd Annual Corporate Patent Seminar is being held in Chicago this year. The Seminar is intended as a forum for discussion between senior in-house patent professionals. I will be at the Seminar leading a session on controlling patent law information overload. File Attachment: CorpPatSeminar.pdf (26 KB)
Pharmacia v. Par Pharmaceuticals (Fed. Cir. 2005).
Inequitable conduct includes an intent to deceive coupled with either:
Affirmative misrepresentation of a material fact
Failure to disclose material information, or
Submission of false material information.
In this case, the CAFC affirmed a district court’s finding of inequitable conduct based on the patentee’s failure to submit certain prior art articles to the PTO along with the filing of a declaration that contradicted the articles. Intent was inferred by the materiality of the references and because one of the unsubmitted articles was co-authored by the declarant himself.
Regarding a second patent in suit that was joined to the first by a terminal disclaimer, the CAFC found that the inequitable conduct during prosecution of in the first patent did not extend to the second. Specifically, the appellate panel affirmed the conclusion that a terminal disclaimer alone does not bind two patents together for purposes of unenforceability due to inequitable conduct.
Antitrust: The U.S. Government has filed a brief in support of petitioner in the Illinois Tool Works case. The Government argues that the court “should not presume that a patent confers the market power necessary to establish that is unlawful per se.” File Attachment: Gov’t Brief (178 KB).
Patent Reform: An amendment has been proposed to the Patent Act of 2005 that would alter the law on venue for patent infringement. File Attachment: New Patent Act.doc (27 KB).
Trademark: Link – Professor Goldman (Marquette) discusses the recent follow-up opinion in Geico v. Googleholding that the use of a trademarked term in sidebar ads may create customer confusion in violation of the Lanham Act.
In-House: Todd Mayover has a new blog discussing patent law from the perspective of an in-house counsel. http://ipcounsel.blogspot.com/.
Hatch-Waxman: Philip Brooks points us to the Jeremy Burlow’s interesting paper on The Gaming of Pharmaceutical Patents [pdf].
Harris owns the patent on a signal decoder that uses an estimator to compensate for transmission interference. A jury found that Ericsson infringed the Harris patent. Ericsson appealed — arguing for JMOL based on faulty claim construction.
On appeal, Ericsson asked the CAFC to take a fresh look at claim construction — arguing that the Means-Plus-Function term “time domain processing means” had been improperly interpreted in light of a case (WMS Gaming) that was decided at the Federal Circuit after the claim construction. Harris, on the other hand, argued that Ericsson waived the WMS Gaming argument by failing to advance it at trial or object to the jury instructions.
Choice of law: The CAFC determined that waiver of a claim construction argument to be intimately associated with patent rights, and thus, that Federal Circuit law should apply to such questions.
Waiver Analysis: The CAFC found that it has “case-by-case discretion over whether to apply waiver” but that if Ericsson’s arguments on appeal was “the same concept” as that argued before the district court then there would be no waiver. Following Gaus v. Conair. Because the appellate panel found Ericsson’s claim construction argument on appeal to be only a “slight change” from that argued at the district court and thus that there was no waiver.
Dissent: In a dissenting opinion, Judge Gajarsa argued that Ericsson’s argument on appeal was a complete “paradigm shift” from what it argued at trial and that Ericsson had at least “ten opportunities . . . to make its [new] claim construction arguments.”
Now, on appeal, Ericsson awakens to the benefit of WMS Gaming and argues for the first time that it controls. . . . The verdict of a jury will not ordinarily be set aside for error not brought to the attention of the trial court.”
Concluding with a policy analysis, Judge Gajarsa finds that the majority holding “improperly encourages parties to take their chances on a high stakes, potentially cost saving argument at trial, while proliferating new arguments on appeal. For various reasons this court already has a high reversal rate on claim construction issues, which tends to encourage appeals and, perhaps, discourage trial courts from heavily investing in claim constructions below. The court’s holding will only intensify this problem, and further distort the proper trial-appellate relationship regarding claim construction.”
Ex parte Eggleston (B.P.A.I. 2005) (NOT PRECEDENT).
In an application involving a method of mobile communication, the examiner rejected the claims because the subject matter was not “described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time of the application was filed, had possession of the claimed invention.” Specifically, the examiner contended that an explicit limitation in the claims was not present in the written description.
The BPAI reversed the rejection, finding that the original disclosure provided adequate support.
We find that the original description, albeit in different language than is now claimed, would have conveyed to the artisan that the inventors had possession of the subject matter which they now claim at the time of filing the application.
In its decision, the Board affirmed the principle that an “explicit” disclosure of claim terms is not required under 35 U.S.C. § 112, first paragraph. “An invention claimed need not be described ipsis verbis in the specification in order to satisfy the disclosure requirements.
Marley Mouldings v. Mikron Industries (Fed. Cir. 2005).
At summary judgment, the district court (N.D.Ill.) found Marley’s patent invalid for indefiniteness. On appeal, the Court of Appeals for the Federal Circuit (CAFC) reversed, holding that the claims were not “insolubly ambiguous” and thus not indefinite under 35 U.S.C. 112.
Marley’s patent is directed to a method of forming a foam composite as a wood replacement. The claims specify the volume of various materials use to create the composite. The district court found the volume requirements to be indefinite because the specification did not include any means to calculate the percent volume — “a critical determination to discerning” infringement.
Mikron also argued that “measurement of components by weight, not by volume, is the standard practice in the field of polymer processing, and [thus,]that the patentee’s failure to conform to this practice is further support for the indefiniteness of the claims.”
The CAFC disagreed, finding that “non-conformity is not of itself indefiniteness.”
We conclude that the district court erred in law, in requiring that the specification describe the relationship between volume and weight of the wood filler used or usable in the process. When a claim “is not insolubly ambiguous, it is not invalid for indefiniteness.” (quoting Bancorp Servs, 359 F.3d 1367).
Remanded.
NOTES:
This case attempts to distinguish Honeywell v. ITC, 341 F.3d 1332, 1339-40 (Fed. Cir. 2003) (claim indefinite because yarn melting parameter included without stating which of four known methods of preparing and testing the yarn should be used).
The CAFC has affirmed a district court’s summary judgment of invalidity — finding that the claim term "aesthetically pleasing" to be indefinite under the second paragraph of 35 U.S.C. § 112.
Section 112 provides that the "specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."
Generally, the court warns against applying the indefiniteness provision to invalidate a patent.
If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.
However, the Appellate Panel found that Datamize’s arguments "fail to persuade [the Court] that ‘aesthetically pleasing’ can be given any reasonable meaning.
Affirmed — “Aesthetically pleasing,” as used in the independent claim, fails to “particularly point out and distinctly claim the subject matter which the patentee regards as his invention.
In one of the first claim construction cases following the landmark Phillips v. AWH case, the CAFC has reversed a district court’s construction of the phrase "a format specified by the institution." In its decision, the panel cited Phillips for the proposition that the lower court had improperly given the term an overly broad customary meaning. Id. ("‘customary meaning’ refers to the ‘customary meaning in [the] art field’").
NOTE: This week I have been on vacation at our family ranch in Kansas and blogging through my TREO. Sorry for the typos.
Ericsson v. InterDigital v. Nokia (Fed. Cir. 2005).
Ericsson sued InterDigital for a declaratory judgment that InterDigital’s group of digital wireless telephone patents are invalid and/or unenforceable. After a decade of litigation, the parties settled in 2003 and agreed to maintain the litigation record under seal. In the meantime, Nokia entered into a license agreement with InterDigital as a "most favored licensee." Thus, Nokia’s payments are based on settlement amounts from the Ericsson case.
To protect its interests, but only after the Ericsson settlement, Nokia moved to intervene in the Ericsson case. The district court granted Nokia’s motion — holding that "the Court’s rulings potentially affects Nokia’s obligations under its agreement with InterDigital." InterDigital appealed.
Finding that intervention is not a matter unique to patent law, the CAFC applied Fifth Circuit law to determine whether the intervention was proper. Under Fifth Circuit precedent, the appellate panel found that since Nokia filed its motion after the case was already dismissed, "Nokia’s motion to intervene failed to satisfy the Fifth Circuit requirement that there be an existing suit in which to intervene."
Research Plastics v. Federal Packaging (Fed. Cir. 2005). 
Figueroa v. < ?xml:namespace prefix ="" st1 />
TiVo v. Pause (Fed. Cir. 2005). 
Terlep v. Brinkman Corp (Fed. Cir. 2005). 
Illinois Tool Works v. Independent Ink (Supreme Court 2005). 
In re Kumar (Fed. Cir. 2005)
Warner-Lambert v. Teva Pharmaceuticals (Fed. Cir. 2005). 
Freedman Seating v. American Seating (Fed. Cir. 2005). 
Pharmacia v. Par Pharmaceuticals (Fed. Cir. 2005). 
Antitrust: The U.S. Government has filed a brief in support of petitioner in the 
Harris Corp. v. Ericsson (Fed. Cir. 2005). 
Ex parte Eggleston (B.P.A.I. 2005) (NOT PRECEDENT). 
Marley Mouldings v. Mikron Industries (Fed. Cir. 2005). 