Inconsistency Between Views of Two PTO Examiners Found Relevant to Obviousness Determination During Litigation

Patent, ,

PatentlyOImage043Syntex v. Apotex (Fed. Cir. 2005).

Apotex filed an ANDA to begin marketing a generic version of ACULAR, an ophthalmic NSAID protected by a patent owned by Syntex.  Based on the Section IV filing, Syntex filed suit against Apotex for patent infringement.

After a bench trial, the district court determined that the proposed generic infringed the claims of the ACULAR patent and that the patent was not invalid.

Regarding invalidity, the district court concluded that Syntex had overcome obviousness issues by showing that the prior art taught away from the use of the drug/surfactant for opthalmic uses and that such a use created “unexpected results.” In its decision, district court noted that because the prior art at issue had been before the examiner during prosecution, the burden of proving the challenged claims obvious “is particularly high” — and that Apotex had failed to meet this heightened burden. 

On appeal, the CAFC reversed — finding “clear error by the district court in several of the grounds that led it to conclude that the invention claimed by the claims in suit would not have been obvious.” 

Of the several grounds for reversal, the issues of examiner discrepancy, expert testimony, and commercial success may be the most interesting:

Examiner Discrepancies:

Two different PTO examiners worked on various portions of the asserted application and its parent applications and had seemingly inconsistent views regarding patentability of the application.  The CAFC found this relevant to the obviousness determination.

This statement contradicted the express finding of the initial PTO examiner that Syntex’s earlier data failed to show unexpected results. Whether the second examiner was aware of the earlier rejection of Syntex’s claims is unknown. But the relevance of the inconsistency between the views of two examiners is not insignificant.

Although we conclude . . . that Syntex did not commit inequitable conduct . . . we think the unvarnished view of the prosecution history shows some weakness in the conclusion that the patentee established unexpected results for the claimed surfactant.

Expert Testimony:

The Appellate Panel found that the district court erred by failing to examine Apotex’s expert testimony on the question of motivation to combine and unexpected results.

Commercial Success:

The district court relied heavily on the commercial success of ACULAR in its nonobviousness decision.  However, the CAFC requested that the lower court revisit this issue in light of the recent case of Merck v. Teva.

In Merck, the court found that commercial success of an FDA restricted product “has minimal probative value on the issue of obviousness. . . . Financial success is not significantly probative . . . because others were legally barred from commercially testing the [] ideas.”

Concurrence:

In a concurring opinion, Judge Prost disagreed with a portion of the majority opinion that made note of “inconsistency between the views of two examiners” who examined the asserted application and a parent application.

In general, I fail to see how the conduct of a patent applicant is relevant to an obviousness determination. Alleged misconduct at the PTO, in terms of either mischaracterizations or omissions, goes to the heart of an inequitable conduct inquiry but is simply irrelevant to an obviousness inquiry.

 Links:

Does the Constitution Provide for a Right to an Injunction in Patent Cases?

Patent, Patent Legislation

Summer is almost here — How would you fare on this final exam question:

The Progress Clause (Article I, Section 8, Clause 8) of the U.S. Constitution provides that:

“Congress shall have the power… To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

Using this clause as a basis for analysis:  

  1. Would it be Constitutional for Congress to eliminate the right to an injunction for patent infringement?
  2. Would it be Constitutional for Congress to modify the right to an injunction so that one is only available if the patentee is “making use” of the invention?

Patent: Allegation of Copying Precluded Without Evidence That Product Embodies Ideas or Design of an Asserted Claim

Patent, Patent Cases 2005

In Leapfrog Enters. v. Fisher-Price, Inc., (D. Del. 2005), a magistrate judge granted defendant Fisher-Price’s motion in limine to preclude plaintiff, Leapfrog, from alleging and introducing evidence of copying by Fisher-Price. In particular, the magistrate judge refused to allow Leapfrog to introduce at trial the fact that Fisher-Price possessed Leapfrog’s LeapPad product during the development of the accused product.

One factor of willful infringement is defendant’s deliberate copying of plaintiff’s ideas or designs, including copying of the commercial embodiment of the claims (and not just the claims themselves). In Leapfrog, the magistrate found that, as a threshold matter, Fisher-Price’s possession of the LeapPad product during development of the accused product was relevant to the issue of willful infringement. The magistrate still granted Fisher-Price’s motion to exclude such evidence, however, because Leapfrog had no expert testimony to prove that the LeapPad product embodied four out of the five claim elements of the asserted claim. Thus, because Leapfrog could not “close the evidentiary loop” and connect its product to the claims, it was irrelevant whether Fisher-Price copied Leapfrog’s product.

The Leapfrog Court held that although it was not necessary for Leapfrog to show that its LeapPad product was an embodiment of “every” limitation of the asserted claim, a plaintiff must adduce “some” evidence amounting to more than “mere attorney argument” that its product is an embodiment of the “ideas or design” of an asserted claim.

Links:

In re Fisher: Oral Arguments

Patent,

Don Zuhn and I have been covering the recent in re Fisher case here and here.  Fisher questions whether the PTO is requiring a heightened standard of utility for biotechnology inventions — specifically the case is directed to the standard of usefulness under 35 U.S.C. Section 101 applied to nucleotide sequences known as expressed sequence tags (EST’s).  We were unable to attend the oral arguments.  However, The American Intellectual Property Law Association (AIPLA) has given permission to reprint its report of the oral arguments on the Patently-O Site.  Jim Crowne is the editor of the AIPLA Reports that are usually only available to AIPLA members:

AIPLA REPORT

Federal Circuit Oral Argument Addresses Utility for EST Patents

In re Fisher, Fed. Cir., No. 04-1465, 5/3/05 oral argument.

 

The patentability of genetic markers, known as “expressed sequence tags” or ESTs, was argued before the Federal Circuit at a May 3, 2005, oral argument lasting more than two hours. Reviewing a conclusion by the Board of Patent Appeals and Interferences that the patent applications failed to satisfy the utility requirement of 35 U.S.C. §101, the court struggled with the argument that the application must disclose the utility of thing marked, as opposed to the utility of the markers themselves.

 

Appellant’s Argument

 

Former Solicitor General Seth Waxman, of Wilmer, Cutler, Pickering, Hale & Dorr, appeared for Monsanto Corp., the real party in interest. He acknowledged that under Brenner v. Manson, 383 U.S. 519, 148 USPQ 689 (1966), proof of utility requires that the claimed subject matter must provide a specific benefit in currently available form. He argued, however, that this standard is met with disclosures of specific and practical uses of the markers, unrelated to the function of the genes to which they correspond. In this case, the claimed ESTs can be used as maize chromosome markers to produce statistical associations between the chromosome map and plant traits developed by traditional cross breeding techniques.

 

Judge Randall Rader observed that the claimed subject matter is simply code and the applicant can’t say what it does. Waxman replied that the tagging results have great importance, independent of knowledge of the genes themselves, for the discoveries that they make possible. But the statute refers to the utility of the claimed invention, not the utility of something the invention makes possible, Judge Rader answered. Why isn’t this matter determined by the PTO’s instruction in its Utility Guidelines as to when an invention is useful enough for patentability, he asked.

 

The PTO’s error is its focus on the function of the gene being marked, which is not relevant to the utility of the invention, i.e., the marker itself, according to Waxman. In addition, the PTO improperly interpreted the Brenner phrase “specific utility” to mean “unique utility.” On that basis, Waxman explained, it held that the asserted useful characteristics of the ESTs failed to satisfy the utility requirement because the claimed marking function is carried out by all other ESTs.

 

Isn’t this the equivalent of claiming a single page of a book in the middle of a library, Judge Rader asked. The library as a whole will be very valuable once it’s complete, but one page out of the library would not seem to be enough for a patentable invention, he observed. Replying to the metaphor, Waxman argued that the ESTs here can be used in ways having nothing to do with the library. The mapping is desired to establish a statistical correlation between identified sequences and plant traits identified by cross breeding, he explained.

 

But that means that every tag is patentable, Judge Paul Michel observed. Waxman agreed, explaining that the utility requirement is satisfied for every tag that is properly disclosed. What about the tags that are identified by computer with randomly generated code combinations, he asked, pointing out that the 32,000 sequences identified in this case is but a small subset of all that could be found in the maize genome.

 

Judge Rader followed up by asking how much weight to give administrative convenience in view of the fact that the PTO could be required to examine an avalanche of claims. Notwithstanding such factual circumstances, Waxman replied, the PTO is required to apply the correct rule of law. But the issue here is whether the claimed invention is useful, Judge Michel pointed out, which is a fact question, not a legal question; shouldn’t the decision on review for that reason be very deferential to the PTO’s determination? The error asserted here is legal error, Waxman replied. The term used by the Supreme Court is “specific utility,” which means “identifiable utility,” not simply “unique utility,” he argued. The PTO committed legal error by making its utility decision based on the fact that all other ESTs have the same use, and on the fact that the application disclosed nothing about the function of the marked gene, he explained. This was the wrong criterion for judging patentability, he concluded.

 

PTO’s Argument

 

Appearing for the PTO, Associate Solicitor Stephen Walsh argued that the EST claims here fail to satisfy the utility requirement because they amount to little more that a starting point for future research rather than disclosing a specific, immediate and “substantial” utility.

 

But what about the argument that the utility requirement for marker inventions requires no knowledge about the marked gene or protein, Judge Michel asked? Walsh answered that Brenner may not require complete knowledge of everything about the gene, but it requires more than no knowledge at all. Why isn’t knowledge of a gene promoter sufficient, Judge Michel persisted. Fisher’s application disclosed no information about a specific promoter, according to Walsh, explaining that the promoter is only discovered upon use of the marker as a starting point.

 

Won’t the PTO’s test in this case discourage the disclosure that comes with patenting and drive inventors to trade secret protection, Judge Rader asked. That would essentially cut off later innovators from using that technology to make other important and valuable discoveries, he observed. Disclosures are important, Walsh responded, but the utility condition of patentability requires that the invention confer an immediate benefit. That may be, Judge Rader replied, but the PTO made its decision without knowing whether or not the invention provides a public benefit. The decision under these circumstances suggests that the driving factor was the administrative convenience related to the difficulty of examining the many marker claims, he observed. The decision was only an attempt to follow the Supreme Court’s utility rule, Walsh insisted.

 

Why can’t there be utility simply in the knowledge that the compound is present without respect to knowing anything about the benefit of the compound itself, Judge Bryson asked. Doesn’t the PTO argument mean that there must be an end product or end use to satisfy the utility requirement, Judge Michel added. Under Brenner, according to Walsh, a mere statement that a compound exists is no substitute for a disclosure of the compound’s benefit. The PTO has issued patents on probes where some things about the tagged microorganism were unknown, Walsh explained. However, those were cases where the probe was derived from the target microorganism, he said, and its features were reflected in the probe itself.

 

But where is the tilting point for showing sufficient utility, Judge Michel followed up. Is this an issue like pornography where you know it when you see it? Is something inherently unpatentable because it can only be used in a laboratory? Why isn’t the production of information useful in itself, Judge Rader added. Why isn’t evidence of a commercial demand for an EST sufficient to satisfy the utility requirement, Judge Bryson asked. Trying to respond to all of these questions, Walsh insisted that, even though they can be sold,

the tagged items are still only objects for study without any identified immediate benefit. Something does not become patentable merely because someone may want to buy it, he said, making a comparison to selling raffle tickets with no information about which ticket will pan out.

 

Does that mean that commercial success is utterly irrelevant to proof of utility, Judge Michel asked. Isn’t there anything about utility that can be inferred from a high selling price, Judge Bryson said. The selling price of a product is not relevant to the required immediacy of its benefit to prove utility, according to Walsh. It may not prove everything about utility, Judge Michel observed, but it may be relevant to show that markers are in demand to establish correlation of the marked gene and traits derived by cross-breeding.

 

Issues Not Addressed

 

Although the parties and the court explored the application of the Brenner utility decision, no one at the oral argument commented on the fact that Brenner reviewed a process claim to produce a known product (steroids), rather than a product claim as in this case. Brenner held that the utility of a claimed process is not proved without a showing of the utility of the produced compound. Justice Abe Fortas wrote as follows:

 

Until the process claim has been reduced to production of a product shown to be useful, the metes and bounds of that monopoly are not capable of precise delineation. It may engross a vast, unknown, and perhaps unknowable area. Such a patent may confer power to block off whole areas of scientific development, without compensating benefit to the public. The basic quid pro quo contemplated by the Constitution and the Congress for granting a patent monopoly is the benefit derived by the public from an invention with substantial utility. Unless and until a process is refined and developed to this point—where specific benefit exists in currently available form—there is insufficient justification for permitting an applicant to engross what may prove to be a broad field.

 

Neither party commented on whether the policy considerations articulated by Justice Fortas for process claims apply equally to product claims. In addition, the Brenner opinion directly addresses Judge Rader’s questions about the non-disclosure risks of disallowing patents and driving inventor’s to trade secret protection. Justice Fortas wrote as follows:

 

It is true, of course, that one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions. And it may be that inability to patent a process to some extent discourages disclosure and leads to greater secrecy than would otherwise be the case. The inventor of the process, or the corporate organization by which he is employed, has some incentive to keep the invention secret while uses for the product are searched out. However, in light of the highly developed art of drafting patent claims so that they disclose as little useful information as possible—while broadening the scope of the claim as widely as possible—the argument based upon the virtue of disclosure must be warily evaluated.  Moreover, the pressure for secrecy is easily exaggerated, for if the inventor of a process cannot himself ascertain a “use” for that which his process yields, he has every incentive to make his invention known to those able to do so. Finally, how likely is disclosure of a patented process to spur research by others into the uses to which the product may be put? To the extent that the patentee has power to enforce his patent, there is little incentive for others to undertake a search for uses.

Reprinted with permission.

CAFC: Court Can Only Correct Prima Facie Patent Errors

Patent, Patent Cases 2005

Ribbon CurlerGroup One Ltd. v. Hallmark Cards, Inc. (Fed. Cir. 2005)

Group One owns patents on a device for curling ribbon. Hallmark manufactures pre-curled ribbon products and in 1997, was sued by Group One for infringement.

A jury found the patent valid and infringed and awarded $8.9 million in damages to Group One.  However, in a post-verdict ruling, the Judge found the patents invalid.

I. Correctable Mistake on the Patent

One of Group One’s patents included a printing error by the PTO that resulted in the omission of important claim language that was added during prosecution of the application.  The district court held that it lacked authority to correct the error and that only the PTO could correct the printing error. 35 U.S.C. 254.

The appellate court affirmed, finding that a district court may only correct a patent document if the error is “apparent from the face of the patent.”

II. Motivation to Combine

The patent claims require a “stripping means” that was found in several prior art references.  None of the references, however, related to ribbon curling. The jury found that the references did not obviate the claims — a verdict that was overturned by the district court in a JMOL.  The CAFC restored the jury verdict, finding that even the examiner’s failure to consider stripping means references could not “provide a basis for overturning the jury’s factfinding.”

Supreme Court: Patent Professors Support Tighter Obviousness Standard

Patent, ,

PatentlyOImage025_smallKSR International v. Teleflex (On Petition for Certiorari)

In January 2005, the CAFC decided Teleflex v. KSR — holding that there must be a suggestion or motivation to combining two or more references in an obviousness finding.  This “teaching-suggestion-motivation test” has been a stalwart of Federal BrauneisCircuit obviousness jurisprudence for twenty years.  During that time, the Supreme Court has not heard a single obviousness case.

KSR has petitioned the Supreme Court for a writ of Strandburgcertiorari — arguing that the Federal Circuit’s obviousness standard is too low.  In its petition, the KSR argues that the CAFC’s jurisprudence is inconsistent with the Supreme Court’s most recent obviousness decisions of Anderson’s-Black Rock (1969) Duffyand Sakraida (1976).  In Sakraida, the High Court held that a combination which only unites old elements with no change in their respective functions is precluded from patentability under 103(a).  Under the Sakraida standard, the Teleflex patent is arguably Kimpictureobvious.  Although patent cases are rarely heard by other circuit appellate courts, a circuit split remains between the CAFC and several other circuits on this issue.

ArchTwo amicus curiae briefs have been filed in support of the petition for certiorari. An element of both briefs is that written proof of obviousness should not be required to prove basic knowledge or common sense.

I. Brief of Twenty-Four Law Professors:

BagleyAn impressive group of law professors have banded together in support of KSR.  The professors argue that the CAFC has essentially ignored the idea of a person having ordinary skill in the Dabnejamart (PHOSITA) and simply consults the scope and content of the prior art references.  At best, the appellate court has relegated the PHOSITA to the role of a “reference librarian, assisting in locating appropriate prior art references but apparently incapable of applying them in light of his or her knowledge or skill.”  Dreyfussr

The brief notes that this case is a good one for cert: simple technologies, procedurally clean, and experienced counsel for both sides.

Farley_christineThe twenty-four professors include Robert Brauneis, Katherine Strandburg, Margo Bagley, James Bessen, Michael A. Carrier, Rochelle Cooper Dreyfuss, Christine Haight Farley, Cynthia M. Ho, Timothy R. Holbrook, Peter Jaszi, Jay P. Kesan, Mark A. GlunneyLemley, Glynn S. Lunney, Jr., Ronald J. Mann, Robert P. Merges, Kimberly A. Moore, Janice M. Mueller, Joseph Scott Miller, Craig A. Nard, Malla Pollack, Arti K. Rai, Pamela Samuelson, Joshua HoSarnoff, and John R. Thomas. Of course, John F. Duffy would be twenty-five, but he already signed on to the original KSR petition.

Holbrook_timothy_135w72dDownload the Professor’s Brief: KSR Amicus 24 Professors.pdf (276 KB).

II. Brief of the Progress & Freedom Foundation:

Jimdelong2004PFF’s brief focuses on the “growing unease about patent quality” as a justification for tightening the standards for obviousness.  According to the brief, a loose obviousness standard undermines the basic justification for the patent Jaszi_petersystem and encourages people to hamstring the system.

Download the PFF Brief: ProgressFreedomFoundation.pdf (206 KB)

MergesIII. FILES:

IV. Links:

  • Patently-O Prior Discussion of the CAFC decision.
  • European Attorney Axel Horns hopes that this case may spark a similar debate in Europe over the could/would approach of the EPO.[Article].
  • Ernest Miller has thrown his hat in support of the petition — although he just wants a nice precedential opinion. [Blink].

Nard_smPatentlyOImage041JoemillerKesanPatentlyOImage042SamuelsonSarnoffSolveigsingleton2004Mcarrier

V. Misc:

One question that I asked Professor Brauneis is whether increasing the obviousness standard would disproportionately affect small businesses and individual inventors who may be more likely to invent through by combining well known items in a novel fashion. In reply, Brauneis noted that while corporate researchers may have more resources to invent from whole-cloth, corporate law departments also have more resources to file dubious patent applications for strategic purposes. For Brauneis and the 24–professors, the bottom line is that “if the claim in the patent application describes something that would be obvious to a person having ordinary skill in the art, it’s bad policy to grant the patent.

For those interested in this issue, there is still time to file with the Court.

Make a Backup Copy in Your Own Home: Allowed Only in France

Patent

PatentlyOImage031A Patently-O reader has graciously (and anonymously) translated the ground-breaking French case of Monsieur Stephane P v. Universal Pictures Video France (Court d’Appeal de Paris 2005). In that case, the French court of appeals ordered Universal to remove "Mulholland Drive" from store shelves because it included anti-piracy software — a violation of the French right to privacy.

Mr. P purchased a DVD of “Mulholland Drive” wanted to play it at his mother’s house. Unfortunately, his mother only owned a VHS player. Because of anti-piracy software on the DVD, Mr. P was unable to transfer the video to the VHS format. He brought his case to the French consumer union (UFC) who then brought suit against Universal Pictures and Studio Canal. UFC’s complaint relied upon the French Intellectual Property Code that guarantees the rights of consumers “to make a private copy” (Article L.122–5) and obligates vendors to inform consumers of essential characteristics of goods (Article L.111–1).

The Appellate Court agreed that Mr. P’s rights had been violated, finding that the anti-privacy locking mechanism was a breach of the exception for private copy and that Universal had failed to provide sufficient information about the mechanism, which is an essential characteristic of the product.

As a remedy, the Parisian court ordered that the companies cease from using technical protection means incompatible with the exception for private copy and to pay damages.

Interestingly, in the U.S., the DC Circuit Court of Appeals recently upheld privacy rights in a somewhat similar case.  In American Library Association v. FCC (D.C. Cir. 2005), the appellate court shot down the "broadcast flag" rules proposed by the FCC that would prevent copying of HDTV broadcasts. In that case, the court found that the FCC had exceeded the scope of its authority.

In this case, all relevant materials concerning the FCC’s jurisdiction – including the words of the Communications Act of 1934, its legislative history, subsequent legislation, relevant case law, and Commission practice – confirm that the FCC has no authority to regulate consumer electronic devices that can be used for receipt of wire or radio communication when those devices are not engaged in the process of radio or wire transmission.

Links:

Study for the Patent Bar for Free

Patent

I just ran across the website for openIPsource and their free patent bar review course.  (via Matthew Goeden). The website for openIPsource provides its content for free and without registration.  This includes the following materials:

  • Annotated MPEP
  • Comprehensive MPEP Summary
  • List of Important Dates
  • Detailed Glossary
  • MPEP Table of Contents and Index
  • Past Exam Questions by MPEP Chapter
  • Past Exams since 1999
  • Study Guide
  • Patent Laws and USPTO Rules

Link:

 

Res Judicata Must be Determined Separately for Each Asserted Patent

Patent, Patent Cases 2005

PatentlyOImage038Abbey v. Mercedes Benz of North America (Fed. Cir. 2005) (NONPRECEDENTIAL)

After a long litigation proceeding involving multiple dismissals and re-filings, a Florida district court granted summary judgment to the defendants on the grounds of Res Judicata for each of Abbey’s three asserted fuel-injection patents.  One of the patents, although related to the others, had issued after Abbey’s claims had been initially dismissed.

On appeal, the CAFC found that the continuation patent could not be the subject of a dismissal for res judicata.

Because each patent asserted raises an independent and distinct cause of action, and because on this record, Mr. Abbey’s claims of infringement of the ’977 patent were never considered by the district court, they are not part of the final judgment that concluded the first lawsuit. Accordingly, a claim of infringement based on the ’977 patent is not precluded by that judgment and can be the subject of a second lawsuit.

Vacated and remanded.

Patent Practitioner Organization Supports Certain Patent Reform Measures, Rejects Others

Patent, Patent Legislation

The National Association of Patent Practitioners (NAPP) has provided its comments on the proposed patent reform legislation.  NAPP is primarily made-up of patent agents, and the organization’s viewpoint is seen as an important representation of the views of individual inventors.

In its introduction, NAPP takes-on the flippant usage of the term patent troll.

Some of the rhetoric by proponents of the Patent Act of 2005 has been highly troubling and obscures the debate. . . . A “patent troll” is apparently a derogatory term used by people or entities to refer to an inventor who has the audacity to assert a patent against them.  Such usage is an attempt to apply colored language, in a mindless way, to attack the entire < ?xml:namespace prefix ="" st1 />U.S. patent system. . . . To the extent that the term is used to derogate inventors who do not develop corporate structures or manufacture products, NAPP believes that inventors who merely invent but do not manufacture products – which, after all, includes most university and government researchers – do not deserve epithets or less patent protection.  Finally, to the extent that the term is used to refer to people who try to enforce invalid patents, NAPP believes that there are sufficient existing disincentives against such practices.

With regards to the individual provisions, NAPP supports post-grant opposition proceedings and the proposed changes to the duty of candor procedures.  However the organization also has stated quarrels with the following provisions:

First-to-File: This is a controversial issue. “Congress should not be fooled into thinking that this proposal has become less controversial or more accepted over time.”  Practically, this change makes things difficult for a patent practitioner who operates with a backlog of cases.  NAPP expects that the provision would decrease patent disclosure quality because practitioners will rush to file the documents. This increases the opportunity for attorney-malpractice.

Limits on Broadening Claim Scope: This “is an ill-conceived, poorly worded, and unworkable proposal. . . . NAPP strongly opposes this provision.” 

Universal 18–Month Publication: NAPP is against universal publication. One problem is that it would prevent “applicants from adopting the strategy of trying to get a patent and relying on trade secret protection as a fall-back if satisfactory patent protection cannot be secured.”

Inter Partes Reexamination Estoppel: NAPP is against removal of the provision that prevents a patent challenger from first bringing (and losing) an inter partes reexamination request challenging validity, then challenging validity of the same patent again in a court proceeding. [UPDATED TO FIX CORRECTION]

Limiting Damages to Components: This would just result in claim drafting mischief.

. . .

Link:

 

In Bifurcated Trial, Pending Antitrust Claim Postpones Permanent Injunction

Patent

PatentlyOImage037

ArthroCare v. Smith & Nephew (Fed. Cir. 2005) (04–1323).

ArthroCare holds a set of patents covering electro-surgical instruments for use in arthroscopic surgery. ArthroCare sued Smith & Nephew for infringement of the patents, and in response, Smith & Nephew alleged that a prior settlement between ArthroCare and Ethicon constituted a conspiracy in restraint of trade.

In a bifurcated case, the jury found that Smith & Nephew infringed and that the patents were valid.  Following the first trial, the Delaware District Court stayed the antitrust trial pending resolution of post verdict motions — However, before the stay was issued, ArthroCare filed its motion to dismiss the antitrust claims.

After post-trial briefings, the court entered a permanent injunction against Smith & Nephew and, on the same day, dismissed the antitrust claims — finding that Smith & Nephew was presumed “not to oppose the motion” because it had not submitted a response to ArthroCare’s motion.

On appeal, Smith & Nephew argued that because of the stay of proceedings, it never had an opportunity to respond to the motion to dismiss. The Appellate Court agreed — finding that the district court had improperly dismissed the claim.  Because the outcome of the antitrust issue may alter the permanent injunction, the CAFC also vacated the injunction.

With regard to Smith & Nephew’s arguments regarding the merits of the patent case — the CAFC affirmed the jury verdict of infringement and validity.

File Attachment: ArthroCare v. Smith & Nephew (79 KB)

Preemption: Copyright Act Does Not Preempt Illinois Right To Publicity

Patent

Ultra Sheen SupremeToney v. L’Oreal USA (7th Cir. 2005) (CV 03–2184).

June Toney consented to allow her photograph to be used, to advertise a hair-relaxer (“Ultra Sheen Supreme”) by Carson Products.  L’Oreal later acquired the Ultra Sheen line and began to use the photo without her permission and beyond the time-period specified in the original contract, Toney sued — alleging a violation of her right of publicity under Illinois law. The district court dismissed the case as preempted under 17 USC 301.

On appeal, the Seventh Circuit panel vacated, finding that the Illinois Statute protecting the right of publicity is not preempted by the copyright act because the rights to publicity protect the identity of a person rather than a particular tangible picture or photograph.

Therefore, the bottom line is that Toney’s claim under the Illinois right of publicity statute is not preempted by federal copyright law.

Vacated and Remanded.

File Attachment: Toney v. Loreal.pdf (26 KB)

 

Patent Reform: Sharp Dispute Over Injunction Provisions

Patent

Brenda Sandburg at The Recorder has an interesting article out today that focuses on the injunction provisions of the proposed patent legislation.  The proposal reduces the likelihood of obtaining an injunction — even after a finding of willfulness.  One of the factors included in the legislation is whether the patentee is commercializing the invention — a move to limit the power of patent holding companies.

The article includes some disagreement regarding the prevalence of lawsuits by patent holding companies:

  • Peter Detkin (Intellectual Ventures): Only 2% of patent cases filed in the past five years were filed by holding companies that don’t sell any products — and 1/2 of those suits were by Acacia Technology Group.
  • David Simon (Intel): Most cases involve Fortune 500 companies being sued by unheard-of companies.

Looks like a great research opportunity for a law review article.

Ron Riley, who’s inventor’s alliance has helped to block patent reform in the past is looking for reform measures going the other way:

  • Measures to stop large entities from influencing the PTO to systematically harass inventors on behalf of those companies;
  • Increase punitive damages for up to ten-fold for willful infringement; and
  • Perhaps add criminal provisions for willful infringement (as have been added for copyright violations).

Link:

Online Inventor’s Forum

Patent, ,

The Patent Office has been hosting a regular on-line chat session between inventors and PTO expert examiners.  These sessions have been a great success, and the most recent session appears to have answered a number of interesting and fundamental questions.  The following are a few excerpts from the forum:

Q:What happens to a Provisional Patent Application after it has been abandoned?

A: The files are disposed of after one year from the filing date.

Q: Are there any restrictions from trademarking a product name that contains Spanish words?

A: The same laws and rules apply to marks in languages other than English. Other than those requirements, a non-English mark would have to be translated for the record.

Q: How long does a patent last?

A: Utility patent protection is approximately 20 years from the filing date of the application. Design patent protection is 14 years from the issue date.

Q: How do I know that my invention isn’t going to be stolen during the application process for a patent? Can I trust an attorney? Can I apply for a patent without an attorney? What are the risks when I do that?

A: All patent applications that have not been published are kept in confidence by USPTO personnel. An attorney in your employ must keep your confidences and secrets. You can apply for an application without an attorney, however, patents are legal documents and the use of a registered patent attorney/agent is strongly encouraged.

Q: Can I apply for a design and utility patent for the same product or is this overkill?

A: Yes, you can apply for both patents. A utility patent protects a new, useful, nonobvious and adequately discussed machine, manufacture, composition of matter, process, or improvement thereof. On the other hand, a design patent protects only the appearance of an article of manufacture, not the way the article functions or the materials of its manufacture. A better mousetrap could function (work) exactly like the mousetrap of old, but have a different appearance; it would then be appropriate for a design application. If, however, it had a new function in a way it trapped mice, it could also be appropriate for a utility application.

Link: Forum Transcript

Texas Patent Attorney Shot and Killed.

Patent

PatentlyOImage036In a bundle of sad news, it appears that late last week, patent attorney Jackie Duke of Houston shot and killed patent agent Michael Hartmann before killing himself.  Hartmann was an in-house counsel at Cooper Cameron and head of the patents department.  Duke also worked as a consultant for the Cameron patent department. The shooting occurred at Cooper Cameron headquarters in Texas.

Our thoughts and prayers go out to their families, friends, and co-workers.

 

PTO Moves Forward with Nanotechnology Classification

Patent

On May 4, 2005, the Patent Office held a Nanotechnology Customer Partnership Meeting as a forum for two-way-feedback on the PTO’s nanotechnology initiatives.  Blaise Moullet attended the meeting and provided background for the following summary:

Searching: A new cross-reference classification (977) will likely include search areas for (i) nanostructures; (ii) computer software for nanostructure modeling; (iii) manufacturing, treatment, or detection of nanostructures; and (iv) specific uses of nanostructures. The new classification system is intended to both ease examination and inform applicants and the public of the ‘state of the art.’

Global: The PTO has provided their proposed schedule to the EPO and JPO and is hoping that it will be adopted by each agency.

Concerns were raised that the PTO does not have specific plans for providing a core group of examiners with expertise in nanotechnology.  There are no definitive plans to form a nanotechnology art unit.

Links:

Rapper Ludacris Provides Ordinary Meaning of Terms

Patent

PatentlyOImage035Insurance litigator John Mejia sent in news of Google’s News patent application that ranks news items based on source quality.  (Patently-O is still ranking fairly well in Google’s news listing.)  In his reporting on the topic, Ron Coleman provided the improvement of basing the quality of the source on its political affiliation. Ron also talked about the inherent boring nature of the great patent law blogs.  A non-boring court opinion was recently released in the Seventh Circuit case of US v. Murphy (04–2032).  Although Murphy is a criminal case, it provides some interesting comments regarding the meaning of terms.  Quoting from Footnote 1:

The trial transcript quotes Ms. Hayden as saying Murphy called her a snitch bitch “hoe.” A “hoe,” of course, is a tool used for weeding and gardening. We think the court reporter, unfamiliar with rap music (perhaps thankfully so), misunderstood Hayden’s response. We have taken the liberty of changing “hoe” to “ho,” a staple of rap music vernacular as, for example, when Ludacris raps “You doin’ ho activities with ho tendencies.”

In the future, if the courts needs definitions of other terms that are yet to arrive in Webster’s, they might turn to the Urban Dictionary.

File Attachment: US v. Murphy.pdf (25 KB)

Another Topic Interior Design: We have a very close family friend who is also a talented designer.  Her problem is that she is located in Manhattan, Kansas — a rising senior in the Kansas State University (KSU) interior design department — and is having some trouble finding a summer opportunity.  Any ideas or opportunities? (Shoot me an e-mail and I’ll send you her resume: crouch@mbhb.com). I’ll vouch for her character and fitness (She wrote a song and sang it in my wedding when she was a middle school student).  

Claim Term of “Conventional Computer” Limited to Computers Available as of Patent’s Effective Filing Date

Patent, Patent Cases 2005, Patent Prosecution

Patentlyoimage034 PC Connector Solutions v. SmartDisk (Fed. Cir. 2005).

PC Connector sued SmartDisk for infringement of its patent directed to the connection of peripherals to a computer via a coupler inserted into the disk drive.  The claims include limitations such as “an input/output port normally connectable to a conventional computer input/output port.”

SmartDisk argued that its flash memory cards could not infringe the patent because, like other terms in the claims, the terms “normally” and “conventional” must be interpreted as referring to technology that existed at the time of the invention.  The district court agreed, finding that there could be no literal infringement because flash memories were not in normally connectable at the time the patent was filed in 1988.

On appeal, the Court of Appeals for the Federal Circuit affirmed, finding that a claim’s “meaning must be interpreted as of its effective filing date.”  As such, the appellate panel held that SmartDisk did not infringe because “even a casual observer, [the flash memories] cannot be connected to a vintage 1988 computer I/O port that uses a multi-pin connector, there can be no literal infringement.”

Prosecution Tip: Do not use the modifiers such as “normally,” “traditional,” or “conventional” in your claims. Such limitations do not allow you to overcome any prior art but do severely limit the scope of the claims.

Patent Marking: Statute Requires Good Faith Belief that Mark is Properly Applied

Patent, Patent Cases 2005

PatentlyOImage033Clontech Laboratories v. Invitrogen Corp. (Fed. Cir. 2005).

Clontech sued Invitrogen for falsely marking its biologic products. Under 35 U.S.C. Section 292, falsely marking a product with a patent number or even the word “patent” or “patent pending” is an offense if done with the intent of (i) counterfeiting the mark of a patentee or (ii) deceiving the public. The fine is capped at $500 per offense. At the district court, Invitrogen was found liable for false marking.

On appeal, the CAFC panel noted that this case raises “virtually an issue of first impression.”  After reviewing the evidence presented at trial, the panel reversed-in-part, finding clear error in the trial court’s finding that certain test results had put Invitrogen on notice of the falsity of its marks relating to reverse transcriptase.

Regarding its cDNA library products, Invitrogen argued that Section 292 “does not require a good faith belief that the marked article falls within the subject matter” of the claims. The CAFC disagreed with that argument, finding that from a policy perspective, marking should be reliable to permit free and fair competition and commerce. Thus, the appellate panel affirmed the district court ruling that the cDNA library products were falsely marked.