PLI is hosting a free audio webcast titled “How to Get a Job in IP Law," March 28, 2005 from 1:00 – 2:00 p.m. (EST) (also available as a teleconference). Katharine Patterson a consultant in the area of recruitment & training of IP profesionals will share her knowledge on the talents, training, and backgrounds that firms and corporations are seeking in the IP field. This presentation will be geared toward law students and young professionals — although it will be useful for anyone considering a job change. Topics include:
A survey of the types of IP jobs available.
Jobs for scientists and non-scientists.
How to demonstrate interest in experience to potential employers.
What are the best networking opportunities.
And more. . .
There will also be some time for questions at the end of the presentation.
The Chicago Tribune (Jim Mateja) is reporting that Ford has settled a patent infringement action initiated by individual inventor, Frank Weyer. In the suit, Weyer accused Ford of infringing his patent that covers a "user selectable multi-color automobile instrument panel illumination." (Patent No. 5,975,728).
Ford’s new 2005 Mustang had planned to include a MyColor feature that reportedly infringes. According to the Tribune, “Ford had been barred from offering its My Color option or delivering cars with it because of the suit, but now can start sales and shipments.”
In addition to being an inventor, Weyer is a patent attorney with an office in Beverly Hills, California. In an earlier lawsuit, Weyer sued Network Solutions and Register.com for violating their patent on the selection of an e-mail address based on a domain name. www.whois.sc/news/2004-01/registrars-sued.html. He also spent time coordinating the rural technology unit of the Peace Corps.
The director and managers of of the Business Methods workgroup will be there for an informal partnership meeting to discuss topics such as public pair, quality initiatives, the determination of statutory subject matter, and other topics specific to business methods.
DATES AND LOCATION: The partnership meeting will be held on Wednesday May 4, 2005, from 1:00 P.M.-5:00 P.M. at the USPTO MADISON AUDITORIUM, Concourse Level, Madison Building, 600 Dulany Street, Alexandria, VA 22313.
Attendance reservations are taken on a first-come first-served bases. However, the USPTO may limit the number of attendees from any single organization or law firm. Therefore, organizations and law firms should designate an official representatives. No one will be permitted to attend without an accepted attendance request.
To attend, contact Joe Thomas via FAX: (703) 746-5897, or e-mail: joseph.thomas@uspto.gov by April 20, 2005.
Patent attorneys often complain about the fractured relationship in the judicial system (i) within the Federal Circuit Court of Appeals and (ii) between the Federal Circuit and the trial courts. The high rate of reversal on issues such as claim construction is often cited as an example of the disconnect.
Keeping these complaints in mind, yesterday’s testimony in the House of Representatives Intellectual Property Subcommittee was remarkable because of the clear affirmation from all four witnesses that the Federal Circuit should be the court that hears patent appeals.
The witness list included a representative from the Federal Circuit Bar Association, a law school professor, an in-house counsel, and a practicing patent attorney. These witnesses all supported legislative changes to overrule Holmes Group v. Vornado (holding that the Federal Circuit does not have jurisdiction over cases where patent issues are raised only in a counterclaim).
In support of their call for a change, the witnesses cited both (i) the legal consistency of the Federal Circuit and (ii) the technical knowledge of the Federal Circuit. Congressman Lamar Smith (R Tex) chairs the subcommittee.
MBHB’s snippetsTM newsletter provides a timely review of developments in intellectual property law. Here is a table of contents of the most recent issue (March 2005: Volume 3, Issue 1):
Daniel Boehnen and Deana Larkin, Trends in E-Discovery: New Local Rules and Recent Judicial Opinions.
Michael Greenfield, Jennifer Pope, Dennis Crouch, and Elaine Chang, The Primary Source for Claim Construction: Dictionary or Specification.
Kevin Noonan, The Continued Confusion Over Written Description.
Dennis Crouch and Baltazar Gomez, Legislative Update: Joint Research Agreements May Protect Patent Rights.
You can e-mail the editor (snippets@mbhb.com) to receive a PDF copy of the newsletter. Include your mailing address if you would like a hard-copy. In the e-mail, please indicate your technology and legal interest: (Biotech, Electrical, Software, Chemical, Mechanical, Litigation, and/or Prosecution).
The AIPLA is supporting a measure to legislatively overrule the 2002 Supreme Court case of Holmes Group v. Vornado. The House Subcommittee on Courts, the Internet, and Intellectual Property is holding a hearing today to discuss the matter.
Specifically, the AIPLA argues that the holding will allow regional circuits and even state courts to begin to hear patent counterclaims. This scenario was suggested by the Indiana Supreme Court ruling in Green v. Hendrickson Publishers, Inc., 770 NE2d 784, 63 USPQ2d 1852 (< ?xml:namespace prefix ="" st1 />Ind. 2002). In moderation, the AIPLA believes that if patent claims are raised in a compulsory counterclaim then the Federal Circuit should have jurisdiction. On the other hand, if the patent claims are raised in a permissive counterclaim then the regional circuit or state court should have jurisdiction.
The Subcommittee hearing is scheduled for 3:30 p.m. Eastern and will be broadcast over the Internet here. Those testifying include Edward Reines on behalf of the Federal Circuit Bar Association; Professor Arthur Hellman from the University of Pittsburgh School of Law and expert on the structure of the Courts; Sanjay Prasad, Chief Patent Counsel for Oracle Corporation, and Meredith Martin Addy from Brinks Hofer.
Although the cameras would normally be focused tightly on the patent hearing, as Matthew Buchanan points out, MLB is also testifying today on the Hill.
Medrad filed suit against MRI Devices for allegedly infringing Medrad’s patented radio frequency (RF) coils used in magnetic resonance imaging (MRI). The district court granted a partial summary judgment of invalidity after construing the claims of the patent.
On appeal, the CAFC struggled to give meaning to a claim that “itself provides little guidance.”
Interpreting the term “substantially uniform,” the court rejected Medrad’s argument that the “court may not look to how an invention functions in determining the meaning of claim terms” — finding that proposition “as unsound as it is sweeping.”
We cannot look at the ordinary meaning of the term . . . in a vacuum. Rather, we must look at the ordinary meaning in the context of the written description and the prosecution history. Quoting DeMarini Sport (Fed. Cir. 2001).
Basing its decision on (1) claim language, (2) the specification, and (3) expert testimony, the appellate court found that “substantially uniform” in reference to a magnetic field meant that the magnetic field is sufficiently uniform to obtain useful MRI images.
Podcasting is catching on as an extension of the blog. According to the Wikipedia, a podcast is like an audio magazine subscription: a subscriber receives regular audio programs delivered via the Internet, and can listen to them at their leisure.
Podcasts differ from traditional Internet audio in two important ways. In the past, listeners have had to either tune in to web radio on a schedule, or they have had to search for and download individual files from web pages. Podcasts are much easier to get. They can be listened to at any time because a copy is on the listener’s computer or portable music player (hence the "pod" in "podcasting"), and they are automatically delivered to subscribers, so no active downloading is required.
Using podcast technology, for instance, a podcasting program can automatically download new .mp3 files from your favorite blog. Of course, you can always just click on the .mp3 broadcast from your browser and listen to the podcast through your computer’s speakers.
So far, I know of three podcasting groups in the IP world so far:
Evan Brown, author of InternetCases.com describes cases involving the law of the Internet in his podcasts.
Denise Howell has been podcasting for the longest in the group — you can listen to her interview with Wallace Wang, author of Steal This File Sharing Book here.
Look for the inaugural Patently-O Podcast coming next month.
Aside: Since I am discussing blogging, I would recommend purchasing the newest version of Blogjet. It is great and integrates very nicely with Typepad.
In a dispute over a method of sequential atomic layer deposition (ALD), ASM sued Genus for infringement of its patents. After construing the claims, the magistrate granted summary judgment of non-infringement in favor of Genus. ASM appealed the construction.
On appeal, the CAFC affirmed, finding that the district court was "on firm ground."
The disputed construction involved the term "evacuate." ASM argued that evacuate should encompass use of an inert gas to push gases out. However, the Appellate Panel found that, "when the specification and the prosecution history are read as a whole, it becomes clear that the insertion of inert gas may help render the process of evacuation more efficient, but is not part of the evacuation itself."
At the district court level, Thomas Woolston, creator of the MercExchange and Patently-O Reader, won a $35 million patent infringement suit against eBay for infringement of his patents covering live internet auctions. On March 16, 2005, the Federal Circuit released its decision on appeal, reversing the decision in-part, but setting the stage for a permanent injunction against eBay.
On appeal, the Federal Circuit partially overturned the district court’s decision, finding that at least one of the MercExchange patents invalid but vacating the lower court’s ruling that another patent was invalid.
Perhaps most importantly, MercExchange challenged the district court’s refusal to issue a permanent injunction against eBay’s use of the invention. The CAFC agreed with MercExchange, that the district court “did not provide any persuasive reason that this case is sufficiently exceptional to justify the denial of a permanent injunction.” Specifically, the CAFC found that the fact that MercExchange expressed a willingness to license was not a valid reason for depriving it of the right to an injunction to which it would otherwise be entitled.
If the injunction gives the patentee additional leverage in licensing, that is a natural consequence of the right to exclude and not an inappropriate reward to a party that does not intend to compete in the marketplace with potential infringers. . . . We therefore see no reason to depart from the general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.
Of course, there is only a very small likelihood that eBay would allow its servers to be shut-down rather than settle the case. In addition, it is unclear how an injunction would operate in this case, although it would most likely only alter e-bay’s ‘buy it now’ feature.
Finally, the appellate panel affirmed the portion of the judgment denying an award of enhanced damages or attorney fees for MercExchange.
AFFIRMED IN PART, REVERSED IN PART, VACATED IN PART, and REMANDED.
The MercExchange patents are also under reexamination at the Patent Office. However, if the litigation concludes before the reexam is complete, there is some question as to whether the reexam can be used by eBay to re-open the case. One issue stems from the 1803 case of Marbury v. Madison where the Supreme Court held that the Judiciary, not the Executive Branch that determined the law. In this case, the PTO (Executive Branch) would be telling the Judiciary to change its mind.
March 16, 2005 04:02 PM US Eastern Timezone eBay Statement on U.S. Court of Appeals Ruling in MercExchange Case
SAN JOSE, Calif.–(BUSINESS WIRE)–March 16, 2005–eBay (Nasdaq:EBAY) is pleased with today’s decision by the U.S. Court of Appeals that invalidates one of MercExchange’s patents, and as a result, throws out all the related damages. Looking forward, we believe that any injunction that might be issued by the District Court with respect to the other patent will not have an impact on our business because of changes we have made following the District Court’s original verdict. The U.S. Patent and Trademark Office is actively reexamining all of MercExchange’s patents, having found that substantial questions exist regarding the validity of MercExchange’s claims. The Patent and Trademark office has already initially rejected all of the claims of one of MercExchange’s patents. We are confident in our position against MercExchange and do not believe that these matters will have any impact on our business.
The legal saga involving NTP’s patents covering Research-In-Motion’s BlackBerry (R) technology appears to be over. According to news reports, RIM has settled the BlackBerry Lawsuit for $450M (US).
The lawsuit did produce what appears to be an expansion of U.S. patent laws to cover infringing activity that partially occurs on foreign soil. However, the settlement leaves a number of open questions regarding application of the newly expanded theory of liability.
NOTE: The drawing above was used in RIM’s brief at the U.S. Federal Circuit Court of Appeals to graphically show how a substantial portion of the ‘infringing’ activity occurred on foreign soil. The Court rejected RIM’s argument that activity across the border could not create liability under the U.S. patent laws.
V-Formation v. Benetton Group & Rollerblade, Inc. (Fed. Cir. 2005).
By Marcus Thymian
In its March 15 decision, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement of the claims of three patents relating to in-line skate technology. The patents were directed to a particular frame design for attaching the wheels to the boot. To provide flexibility in frame and wheel adjustment of a skate, the frame included two sidewalls “releasably attached” by a plurality of fasteners to toe and heel plates of the skate. (For example, see U.S. Patent No. 5,873,584).
The dispute centered on whether rivets could serve as fasteners that “releasably attach.” The embodiments set forth in the patents-in-suit utilized screws as the releasably attaching fasteners. The district court had construed the term “releasably attaching” to mean that the fasteners “must permit the sidewalls to be easily removed and replaced” and determined that one skilled in the art would not consider rivets to fall under that definition. In reaching that conclusion, the district court looked to the specification of the patents-in-suit, as well as the specification of a patent (the “Meibock patent”) cited on the face of one of the patents-in-suit. Finally, the district court supported its construction by referring to an uncontrolling decision of the Federal Circuit that interestingly addressed the unremovable nature of rivets in in-line skates: “Screws, unlike rivets and laminates, are meant to be unscrewed, that is, to be removed. A rivet or a laminate, to the contrary, is meant to remain permanent, unremovable unless one is bent on breaking the permanent structure apart.”
The Federal Circuit first agreed that the intrinsic evidence called for “releasably attaching” to be construed per the district court’s definition. It agreed that the intrinsic evidence included not only the patent specification, but also the cited Meibock patent:
The district court properly considered other intrinsic evidence to aid its construction. For instance, the district court considered [the Meibock patent]. The Meibock patent is prior art that was listed as a reference on the face of the ‘466 patent and in an Information Disclosure Statement. This prior art reference to Meibock is not extrinsic evidence. This court has established that “prior art cited in a patent or cited in the prosecution history of the patent constitutes intrinsic evidence. … The Meibock patent explains that the toe and heel plates are “permanently attached … through the use of rivets or releasably attached through the use of fasteners such as screws or bolts.” … Thus, the district court correctly concluded: “[The] Meibock patent provides evidence that rivets are considered by persons of ordinary skill to be permanent fasteners.”
Finally, the Federal Circuit approved of the district court’s reference to its earlier uncontrolling decision addressing the removability of rivets, since the district court had merely used it to supports its independent conclusion in this case.
Marcus Thymian is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Mr. Thymian is experienced in planning, creating, enforcing, and defending against patent portfolios, and has logged many miles on in-line skates over the past 20 years. [link to bio]
Israel Bio-Engineering Project v. Amgen et al. (Fed. Cir. 2005).
In a dispute over a patented tumor necrosis factor inhibitory protein, the Federal Circuit remanded to determine which party can claim ownership of an employee’s work under Israeli law.
In addition, the Appellate Panel determined that the lower court had improperly denied one party leave to intervene as a defendant. Under Federal Rule of Civil Procedure 24(a)(2) parties must be permitted to intervene in an action:
when the applicant claims an interest relating to the property or transaction which is the subject of the action and the applicant is so situated that the disposition of the action may as a practical matter impair or impede the applicant’s ability to protect that interest, unless the applicant’s interest is adequately represented by existing parties.
In this case, the District Court found that the intervenor’s interests were properly represented by Yeda. The Federal Circuit disagreed, finding two instances where the interests of the two parties diverge: (1) Because laches is a personal defense, it cannot be raised by Yeda on behalf of another party and (2) the intervenor claimed to have a right to purchase the rights to project discoveries at no cost — Yeda did not have such a right. As such, the CAFC reversed — allowing Serono to intervene.
The IPO is reporting that on Thursday March 17, 2005 at 3:30 p.m., the House IP subcommittee will hold a hearing on “Holmes Group, the Federal Circuit and the State of Patent Appeals.” In Holmes Group v. Vornado, the Supreme Court held that the Federal Circuit does not have jurisdiction over cases where patent issues are only raised in a counterclaim. In its 9-0 opinion (Scalia, J.), the Court reasoned that “arising under” language of the statute so limits the jurisdiction of the Federal Circuit’s.
The IP Subcommittee is chaired by Congressman Lamar Smith of Texas. The ranking Democrat is Howard Berman of California.
My sense is that Congress intended the Federal Circuit to handle all patent cases, and just made a technical error in drafting the statute (hence the Scalia opinion). If the various circuits do hear patent cases, I would be greatly in favor of applying Federal Circuit law as precedential.
At the district court, TiVo was awarded summary judgment of non-infringement — The court found that TiVo’s digital video recorder (DVR) 2.0 did not infringe Pause Tech’s patent. (Reissue Patent No. 36,801).
The Federal Circuit, however, refused to hear the case for lack of subject matter jurisdiction. Specifically, because the district court had not ruled on TiVo’s invalidity counterclaim, the appeal was “not from a final decision within the meaning of 28 U.S.C. § 1295(a)(1).” Citing the Supreme Court case of Catlin v. United States, the CAFC defined a final judgment as a decision by the district court that “ends the litigation on the merits and leaves nothing for the court to do but execute the judgment.” From a policy standpoint, this rule ensures that appeals are not taken piecemeal.
In the present case, the district court did not expressly dispose of the invalidity counterclaim and no finding that the counterclaim was moot. Thus, according to the CAFC, “the invalidity counterclaim remains pending.” As such, the summary judgment at the district court was not final.
Accordingly, this appeal is dismissed for lack of jurisdiction, subject to reinstatement under the same docket number without the payment of an additional filing fee if, within 30 days of the date of this opinion, a party appeals from the entry of a final judgment on the entire case or obtains a certification for appeal pursuant to Rule 54(b). If the appeal is reinstated, it will be decided by the present panel, based on the briefs already filed and the oral argument heard on January 13, 2005.
On March 10, the Federal Circuit heard oral arguments in Apotex v. Pfizer. The New York district court had dismissed Apotex’s declaratory judgment action due to a lack of case and controversy. At the district court level, this case fell in line with the recent CAFC decision Pfizer v. Tevaholding that an ANDA filing does not, by itself, create a reasonable apprehension of suit. In dissent in Teva, Judge Mayer argued that the statute does provide that an ANDA filing constitutes an act of infringement sufficient to trigger a justiciable controversy. As it turns out, Judge Mayer was also a panel member for the Apotex v. Pfizer appeal, along with Judges Plager and Gajarsa.
Keith Scala, who attended the Apotex v. Pfizer oral hearing noted that, according to counsel’s arguments, Pfizer had executed a covenant not to sue Apotex a few days before the appellate arguments — but only after learning that Judge Mayer would be a member of the appellate panel. The covenant not to sue is seen to greatly strengthen Pfizer’s argument that Apotex lacked jurisdiction to bring the DJ action. However, executing the covenant may have been unnecessary had the appellate panel comprised a group more like that in Pfizer v. Teva.
According to Scala, at one point, Judge Mayer leaned over, looked squarely at Pfizer’s counsel and said,
“maybe posting paneling is a very, very bad thing.”
Judge Mayer was, of course, referring to the the CAFC procedure of identifying the composition of panels several days in advance of the hearing.
A decision will be expected in this case within the next few months.
Sentry Protection v. Eagle Manufacturing (Fed. Cir. 2005)
In a case involving patented technology for protecting structural columns from motor vehicle accidents, the Federal Circuit affirmed-in-part and remanded.
One question on appeal involved whether the patentee could obtain damages for pre-suit infringement under a theory of constructive notice via marking. The CAFC held:
Pleadings/Waiver: Although there is a requirement that "constructive notice" must be pled, pleading that the "infringement have been willful and with full knowledge of the . . . patents" was sufficient to avoid waiver.
Summary Judgment: Plaintiff had produced evidence of marking and an affidavit stating that its products had been marked — this evidence is sufficient to reverse the district court’s summary judgment of noninfringement for lack of constructive notice.
In a March 8 decision, the 11th Circuit Court of Appeals set aside an FTC order that barred Schering-Plough from settling an infringement suit with generic makers over the patented blood pressure drug K-Dur. FTC had concluded that the settlement was an "unreasonable restraint of trade."
The Appellate Court determined that because the suit involved patented products, neither a per se nor a rule of reason analysis would be appropriate.
We think that neither the rule of reason nor the per se analysis is appropriate in this context. We are bound by our decision in Valley Drug where we held both approaches to be ill-suited for an antitrust analysis of patent cases because they seek to determine whether the challenged conduct had an anticompetitive effect on the market. 344 F.3d 1294. By their nature, patents create an environment of exclusion, and consequently, cripple competition. The anticompetitive effect is already present. “What is required here is an analysis of the extent to which antitrust liability might undermine the encouragement of innovation and disclosure, or the
Applying their rule to the facts, the Court concluded that payment from a patent holder to a generic competitor cannot be the sole basis of a violation of antitrust law.
Simply because a brand-name pharmaceutical company holding a patent paid its generic competitor money cannot be the sole basis for a violation of antitrust law.
Accordingly, the court SET ASIDE the decision of the Federal Trade Commission and VACATED its cease and desist order.
Sony Electronics v. Soundview Technologies (D. Conn. 2005) [pdf]
The district court granted summary judgment of non-infringement to the alleged infringers, and that decision was affirmed at the Federal Circuit. Now Soundview, the patentee, has moved to dismiss all pending counterclaims because the patent has expired and, in light of the summary judgment, the remaining counterclaims are moot.
One defendant, however, argued that its declaratory judgment counterclaim seeking a finding of inequitable conduct during reexamination is not moot because it is a basis for an award of attorneys fees under 35 U.S.C. § 285.
Connecticut District Court Judge Janet Bond Arterson determined that the counterclaim should be dismissed because there was no actual controversy remaining that would be sufficient to create subject matter jurisdiction:
Section 285 . . . is not an independent basis for jurisdiction, providing only that "the court in exceptional cases may award reasonable attorney fees to the prevailing party." Thus, Sharp is entitled to seek attorneys fees on the underlying litigation on which Sharp has prevailed, but cannot create more litigation that is otherwise moot merely to create an alternative basis for attorneys fees.
The Patent Caucus is building steam as it crosses the United States — Headed for Washington DC and patent reform legislation.
If you have an interest in patent legislation, make sure your voice is heard now.
In a rare cooperative effort, the Federal Trade Commission (FTC), National Academies STEP Board, and the American Intellectual Property Law Association (AIPLA) are jointly hosting a series of town-hall conferences on patent reform and are discussing specific legislative proposals. These agencies are working hard to get input from individuals and organizations interested in the patent process. Conferences have already been held in San Jose and Chicago, with the final two stops in Boston (March 18) and Washington DC (June 9). These town-hall meetings provide a rare opportunity to transparently assess proposed legislation and have your voice heard. Transcripts of the meetings are being compiled and summaries will be provided to members of Congress during hearings on patent reform that are expected this year.
Legislation is being proposed in a number of areas including: (i) a statutory fair use exemption from infringement liability for experimental use of a patented invention, (ii) a change to a first-to-file system and elimination of interference proceedings and other elements of , (iii) post grant opposition proceedings, (iv) changes to the wilfulness standard, and (v) expansion of prior-user rights.
These legislative proposals are still flexible and will be altered based on feedback from the town-hall meetings.
I would like to invite you to take part in the remaining meetings. If you cannot attend, feel free to contact me (crouch@mbhb.com) or William Rooklidge to present your proposal or other thoughts.
Medrad v. MRI Devices (Fed. Cir. 2005). 
