Before arriving at Duke as a professor, Dr. Madey obtained several patents for microwave electric guns for use in free electron studies. (E.g., Patent 4,641,103). After Duke & Madey had a falling out, and the professor left the university.
Dr. Madley now asserts in a patent infringement suit that Duke continued to use his patented technology without license.
Duke requested summary judgment based on the experimental use defense. Duke contended that its use of the plaintiff’s patents was done “for the sole purpose of gratifying a philosophical taste, or curiosity, or for mere amusement,” and thus, that the use was experimental.
The court held that 1) the burden of proof for experimental use lies with the accused infringer, in this case Duke; and 2) the defense of experimental use cannot be applied to this case simply because the invention is used in a lab. “Duke [failed to establish] that its alleged use of Plaintiff’s patented inventions was not in keeping with its legitimate business as an educational institution but was instead solely for amusement, . . .”
Eugene Quinn, the “IPWatchdog,” made an interesting comment recently in his newsgroup. Quinn sees a “double standard” in the Patent Office’s examination procedure.
[T]he Patent Office just doesn’t apply the law any more. There seems to be a double standard in the office. Things that are silly/stupid get patented without much time or consideration, perhaps because the Patent Office doesn’t believe anyone will ever use the patent. Things that are what we would consider “science related” actually get stricter scrutiny. This may make some sense, but the patent laws do not make such a distinction. I also think that the craziness that the Patent Office is allowing significantly contributes to the existence of scam invention submission companies. These scam companies can say with a straight face that any invention can and will receive a patent. Therefore, I think the Patent Office is to blame for many of the scams. Perhaps if Congress would let the Patent Office keep its own revenue better examinations could be had. That looked like it would be the casee earlier in the year, but last week the Senate seems to have stripped that measure in the appropriations bill.
As you may know, the Phillips case, which is presently awaiting decision en banc, is expected to be the next major decision impacting the issues of claim construction.For those who are interested, here is a rundown of some of the Amicus Briefs that were filed in the appeal:
1. United States Patent and Trademark Office (USPTO): The Patent Office took the position that dictionaries should not be a primary reference for claim construction, in part because they are not used by examiners during prosecution. The PTO brief was filed jointly with the DOJ and FTC.
2. Intellectual Property Owners (IPO): The IPO brief, argues that the primary evidence of claim meaning should be found in the patent specification and prosecution history. If a court must resort to extrinsic evidence to determine claim meaning, there should be no pre-determined hierarchy of importance. The Court should only consider claim construction evidence in the record on appeal. The IPO brief was written by Paul Berghoff and Josh Rich of MBHB LLP.
3. Electronic Frontier Foundation (EFF): Judges should invalidate and Patent Office Examiners should reject ambiguous claims. Claims should be given their broadest possible construction during prosecution and narrowest reasonable meaning thereafter.Professor Joshua Sarnoff is the Counsel of Record on the EFF brief.
4. American Bar Association: Neither the specification nor dictionary should have primacy. Invalidity should play no role in claim construction, as that approach is contrary to the public notice function. The Appellate Court should defer to findings of fact made during claim construction.
5. American Intellectual Property Law Association (AIPLA): The fundamental standard that should govern claim construction is that a claim term must be construed from the perspective of a person of ordinary skill in the relevant art at the time the patent issued seeking to understand the term’s meaning from a study of the entire intrinsic record.
6. Intel, IBM, Google, Micron, and Microsoft: Where those construing patent claims focus on dictionary meanings of claim terms without an appropriate grounding in the specification and prosecution history, there is a danger the interpretation of patent claims will differ markedly from the true scope of the invention they seek to define. Indeed, there are so many different dictionary definitions for any given word that it is impossible to predict with any confidence what meaning a court will choose. The Intel brief was written by Stanford professor Mark Lemley.
7. Federal Circuit Bar Association (FCBA): Dictionaries should not be the primary focus of claim construction. Claim construction may require findings of fact, which should be reviewed for clear error.
8. International Trade Commission Trial Lawyers Association (ITCTLA): The specification and prosecution history should control. When dictionaries are used, technical dictionaries should have a rebuttable preference over general dictionaries. Claim language should not be narrowly construed for the sole purpose of avoiding invalidity. The claim interpretation should not be limited to only the embodiment described in the specification. Expert testimony should be allowed and evaluated as would any other piece of evidence. Deference to the trial court’s claim construction may be appropriate in some cases.
9. Biotechnology Industry Organization (BIO): Specification first. Dictionaries second, when specification does not establish meaning of claim terms. Claims should never be narrowly construed for the sole purpose of avoiding invalidity.
11. Professors Wagner & Miller: The professors argue that the patent document should be the primary and preferred source of claim meaning — as long as it is clear, specific, and objective. Where the term is not clearly defined in the patent document, there should be a heavy presumption in favor of the ordinary meaning of the term. Dictionaries are not a panacea, but they offer the best opportunity to provide a term’s ordinary meaning with clarity, certainty, and predictability.
12. Public Patent Foundation (PUBPAT): Dan Ravicher of PUBPAT argued that "claim construction should never be impacted by considerations of validity." Consistent with Markman, subsidiary factual determinations by the trial court during claim construction should be reviewed for clear error.
13. Intellectual Property Law Association of Chicago (IPLAC): Courts may look to the plain meaning of claim terms but asserts that dictionaries should in general be subordinate to the patent specification and other intrinsic evidence when determining what is meant objectively by challenged claim terms. Dictionaries may be considered, but the guiding light must be what the hypothetical ordinarily skilled artisan would have understood by the claim terms – not in a vacuum, and not armed with only a technical or general purpose dictionary, but also with the full panoply of intrinsic evidence. Courts may receive expert witness testimony on this determination. Edward Manzo wrote the brief for IPLAC, and was given assistance by Brad Lyerla, Dean Monco, Pat Burns and Tim Vezeau.
14. Association of Corporate Counsel: Public notice is best served by first looking at claims, specification and prosecution history. Dictionaries should not be the primary source for claim construction. Because the guiding inquiry is the meaning of terms to those of ordinary skill in the relevant art, relevant technical dictionaries should usually be consulted before general dictionaries.
15. Infineon: The public notice function of patent claims is best served by looking first and foremost to the intrinsic specification, not an extrinsic dictionary definition, to interpret claim terms.
16. Boston Patent Law Association: Dictionaries should not be the primary source of claim construction because they do not stay current, are not necessarily authoritative, and because meaning is not always found in books. Validity and claim construction should be kept separate.
18. Medrad, Inc: Claim construction should be based upon the intrinsic evidence (spec, drawings, cited prior art, and prosecution history).
19. NYC Association of the Bar: Dictionary definitions should not provide the primary source of meaning or a separate restriction on claim coverage. Validity should be considered during claim construction. Expert testimony can provide important information. Deference to the trial court’s claim construction findings is blocked by procedural and practical obstacles.
26. Sughrue Mion: Claims should be interpreted as of the time of filing or earlier. The patent document provides the best notice of the claim’s meaning. Deference should be accorded to a trial court’s factual findings underlying claim construction.
Link: My review of the case published in Patent World magazine.
ASIDE:
Interestingly, Mr. AWH Phillips was a famous economist who discovered a consistent inverse relationship between the rate of wage inflation the rate of unemployment.
In 2002, Immersion filed suit against both Microsoft and Sony for patent infringement in the Northern District of California. Immersion claimed that the game systems manufactured by the two companies violated Immersion’s patents on “tactiley responsive” technology. Microsoft and Immersion settled before trial, and on Tuesday, Immersion was awarded $82 million based on Sony’s infringement. Sony plans to appeal.
Douglas Bourgeois, the Patent Office’s former Chief Information Officer (CIO) recently left to become a director at the Interior Department. The PTO has announced a job search to replace Bourgeois. (Peter Zura posted the announcement as did the PTO.) With the PTO’s move to a paperless office and electronic filing, it is critical that the Office finds a highly qualified canditate for the position.
This trademark opinion is so good, I wanted to quote the entire thing:
Klein-Becker v. Bodyworx.com (Western District of Texas, July 21, 2004)
BE IT REMEMBERED on the 21st day of July 2004 and the Court took time to make its daily review of the above-captioned case, and thereafter, enters the following:
When the undersigned accepted the appointment from the President of the United States of the position now held, he was ready to face the daily practice of law in federal courts with presumably competent lawyers. No one warned the undersigned that in many instances his responsibility would be the same as a person who supervised kindergarten. Frankly, the undersigned would guess the lawyers in this case did not attend kindergarten as they never learned how to get along well with others. Notwithstanding the history of filings and antagonistic motions full of personal insults and requiring multiple discovery hearings, earning the disgust of this Court, the lawyers continue ad infinitum. On July 20, 2004, the Court’s schedule was interrupted by an emergency motion so the parties’ deposition, which began on July 20, would and could proceed until 6:30 in the evening. No intelligent discussion of the issue was accomplished prior to the filing and service of the motion, even though the lawyers were in the same room. Over a telephone conference the lawyers, of course, had inconsistent statements as to the support of their positions. On July 20, 2004, the Court entered an order allowing the plaintiffs/counter-defendants until July 23, 2004 (two days from today) to answer a counterclaim. Yet, on July 21, 2004, Bodyworx.com, Inc.’s lawyers filed a motion for reconsideration of that Court order arguing the pleadings should have been filed by July 19, 2004.
The Court simply wants to scream to these lawyers, “Get a life” or “Do you have any other cases?” or “When is the last time you registered for anger management classes?”
Neither the world’s problems nor this case will be determined by an answer to a counterclaim which is four days late, even with the approval of the presiding judge.
If the lawyers in this case do not change, immediately, their manner of practice and start conducting themselves as competent to practice in the federal court, the court will contemplate and may enter an order requiring the parties to obtain new counsel. In the event it is not clear from the above discussion, the Motion for Reconsideration is DENIED. SIGNED this 21st day of July 2004.
I can’t believe it. Maybe I’m wrong (I’ll re-read the case Tuesday). But it sure seems the Court of Appeals has finally let common sense influence one of its decisions.
Professor Douglas Lichtman at the University of Chicago writes with a question about patent prosecution:
Why haven’t patent prosecutors begun to aggressively document the purpose behind their claim language changes, for example by writing letters to the file making clear a precise and narrow construction of the change. The argument to do so is that such documents would rebut the broad Festo presumptions that right now threaten to construe every change broadly. And it would be cheap to do.
I am not advocating anything misleading. But often changes are made for a very specific reason, and claim language changes (like claim language itself) can be imprecise. So why not clearly document the precise change the examiner requested, making clear what you meant to sacrifice and protecting the rest from Festo?
UPDATE: The real question is why patent attorneys do not precisely define in their office action response what you intend to give up in an amendment. For example, why not say “of course, my purpose here is only to exclude red wheels, leaving fully intact everything else that might have been included in the original claim language.”
For a short time, websites offering free online downloading went out of vogue. Recently, however, Pat2PDF.org was started by a generous patent attorney as “a free search tool.” Pat2PDF allows you to download U.S. patents in PDF format.
Now, a Canadian attorney, Peter Eliopoulos, has taken the code from Pat2PDF given us an installation guide so that the script that can run locally on our WindowsXP systems. There is one problem with Peter’s installation guide. The Guide is only slightly longer than an AA 12-step program. Installation appears to take about an hour, and the result will be easy downloading of patents from your PC.
Update: Peter asked me to also give credit to the script’s authors Oren Tirosh and Thomas Boege. According to Peter he “only wrote the installation instructions for those of us still using Windows.”
Suggestion: At some point, the PTO should make PDF versions of the patents freely available from their website.
Blanke Corporation of Atlanta has requested an inter-partes reexamination of a patent owned by Schluter-Systems, a German company. The patent (6,434,901), claims a support plate maid of a foil-like plastic material for a plate-lined floor.
An inter partes reexamination may be requested by any third party, but, unlike ex parte proceedings, the real “party in interest” must be disclosed. During an inter partes reexamination, the third party requester is permitted to submit comments on official actions and the patentee’s responses thereto as long as such comments are filed within 30 days of the patentee’s response to the action.
District court has no power to redraft claim language to change its ordinary meaning.
Teknowledge v. Akamai (N.D. Cal. 2004) (C 02-05741 SI).
In the Summer of 2002, Teknowledge sued Akami, Inktomi, Yahoo, Microsoft, and Netscape for infringement of its patent involving “automatic retrieval of changed files by a network software agent”. (US6029175). As part of the litigation, Yahoo and Inktomi filed for summary judgment of invalidity of some claims.
In order to avoid summary judgment of invalidity for claim 29, Teknowledge argued that a typographical error existed in the patent, and that the court should redraft the claim based on the intended meaning. Judge Illston disagreed, citing the “clear line of Federal Circuit authority” that bars district courts from re-drafting claims to change their ordinary meaning, “even if the ordinary meaning produces a nonsensical result. (citing Chef America). Because the ordinary meaning produced a nonsensical result, the Court found the claim invalid.
Summary Judgment Granted to Yahoo & Inktomi.
Citing the ongoing litigation, Yahoo’s attorney had no comment.
Acarbose is an oral alpha-glucosidase inhibitor approved for use in the management of non-insulin-dependent diabetes mellitus (NIDDM). In 2001, James Morrison applied for a patent for using acarbose in a sustained release matrix as a weight loss stimulant. The PTO examiner assigned to the case rejected the claims as anticipated by prior art.
One reference cited by the examiner suggested the use of acarbose as a weight loss stimulant to be used alongside a lipase inhibitor. However, the Board overruled the Examiner’s rejection because the reference included the language “consisting essentially of” when describing the acarbose-lipase-inhibitor combo.
The basic and novel characteristics of the claimed composition do not include inhibition of lipase enzymes. Thus, the addition of a lipase inhibitor would materially affect the basic and novel characteristics of the claimed composition. The claims do not read on the compositions disclosed by Bremer, which all contain a lipase inhibitor. The rejection under 35 U.S.C. § 102(b) is reversed.
Kojo Nnamdi at American University’s radio station (WAMU) recently interviewed Nick Godici, the USPTO’s Commissioner for Patents. You can listen online with RealAudio:
The plow, the fire extinguisher, the rocking chair, all are inventions that at one point came thru the patent office. A look at the innerworkings of the patent office and how to get that patent for your next big idea. http://www.wamu.org/ram/2004/k1040913.ram
Thanks to Gary Price for this great link. Gary is a law librarian in DC and runs the ResourceShelf.
TV Guide owns several patents relating to interactive program guides in digital cable television set-top boxes that enable viewers to search through TV schedules and pre-select programs for viewing and recording. In a case before the ITC, the commission concluded that Scientific-Atlanta did not infringe the patents and that one of the patents was unenforceable because an inventor was improperly excluded from the patent.
TV Guide Appealed: In an opinion released September 16, the Federal Circuit (CAFC) found that the ITC erred in claim construction and erred in determining that Mr. Neil was an unnamed co-inventor.
Inventorship is presumed correct without clear and convincing evidence otherwise:
Because Neil failed to present facts supported by clear and convincing evidence of his co-inventorship, the ITC erred in holding Neil to be an unnamed co-inventor…. Neil principally relies on his own testimony and the content of two product disclosure documents, an original disclosure document and a “second version” of the disclosure document.
The ITC found that Neil’s testimony was “credible and straightforward,” while Young’s testimony “lacked those characteristics.” Under our precedent, more than just the alleged co-inventor’s testimony is required to establish co-inventorship by facts supported by clear and convincing evidence. Trovan, 299 F.3d at 1302. The mere fact that the ITC found the alleged inventor’s testimony to be more credible than the named inventor does not itself rise to the level of clear and convincing evidence.
Affirmed-in-part, vacated-in-part, reversed-in-part, and remanded for further proceedings.
Now, the case is returned to the ITC to for another determination of whether the devices imported by Pioneer, EchoStar, and Scientific-Atlanta infringe the patents in suit in violation of 19 U.S.C. 1337.
The venture involving Zero Gravity Corporation and Amerijet International is the first to win approval from the FAA for zero-gravity airplane flights in the United States. For $2,950, regular folks can get a tamed-down taste of what astronauts feel.Zero Gravity’s price tag for the daylong tour includes preflight training and a postflight party.
Passengers aboard a modified Boeing 727-200 jet will experience weightlessness for about 25 seconds at a time, courtesy of the plane’s special parabolic flight path. A typical parabolic flight lasts about 90 minutes, with 15 up-and-down parabolas at an altitude of 24,000 to 34,000 feet. Two “Martian” arcs simulate one-third Earth gravity, three “lunar” arcs feel like one-sixth Earth gravity, and the final 10 provide the full zero-gravity experience.
Zero Gravity aims to keep capital expenses down by using Amerijet’s cargo planes only when needed — a scheme that Peter Diamandis (co-founder and CEO of Zero Gravity) and his partners patented five years ago (U.S. Patent No. 5,971,319).The arrangement calls for a cargo jet to be converted to zero-gravity service in a matter of hours, then converted back after the flight.
Zero Gravity’s launch caps an 11-year effort for Diamandis, who is also chairman of the foundation behind the $10 million Ansari X Prize for private spaceflight.
Note: Joe Herndon is a law clerk and at the intellectual property firm McDonnell Boehnen Hulbert & Berghoff and is a registered patent agent. Joe is looking out for his chance for a ride in the “vomit comet.” herndon@mbhb.com.
Lin k: Italian cable manufacturer Pirelli has requested an ex parte reexamination of Stanford University’s patent number 4,859,016. The patent, entitled “Fiber Optic Amplifier,” survived a first reexamination four years ago.
The patent reexamination system is intended to provide a less-costly alternative to litigation — and can be especially useful when the validity of an issued patent is questioned. Reexamination allows the patent office to consider newly discovered prior art and printed publications. However, the evidence available to the patent office during a reexamination is limited. In addition an ex parte reexamination does not allow an open forum for a potential defendant to argue its case.
After a reexamination is requested, the PTO has three months to determine whether a substantial new question of patentability exists. Once a reexamination is ordered, the patent holder can respond to the questions of patentability and may propose amendments to the patent claims. The reexamination requester may then file a counter-statement. After filing the counter-statement, the claims are examined without any further input from the requester.
Following a reexamination, the PTO issues a reexamination certificate showing changes made to the patent.
Irdeto’s patent is directed to a system for controlling the broadcast of digital information signals by using three types of complementary encryption and decryption keys — “service keys,” “group keys,” and “box keys.” (U.S. Patent No. 4,531,020). Irdeto sued Echostar, arguing that Echostar’s DISH Network infringed the patent. On summary judgment, the district court granted summary judgment to Echostar, finding that Echostar’s product did not infringe. The Appeal revolved around the definition of the term “group.”
Irdeto, in effect, argues is that even after telling the PTO and the public that given the absence of ordinary meaning in the art for the term “group,” the specification sets forth the full intended scope of that term, a patentee can nonetheless later lay claim to a broader, general-usage dictionary meaning of “group” absent explicit narrowing statements in the specification. This cannot be. … [W]hile the specification does not contain any statements of explicit disavowal or words of manifest exclusion, it repeatedly, consistently, and exclusively uses “group” to denote fewer than all subscribers, manifesting the patentee’s clear intent to so limit the term. The specification also contains no affirmative indication that group can consist of all subscribers within the system. A reasonable competitor reading the patent could only understand “group” to refer to a subset of all subscribers. The claims must be limited accordingly.
In a landmark decision, a panel of eleven Federal Circuit judges has overruled their prior precedent, relieving accused patent infringers of the feared "Quantum Dilemma."
Willful patent infringement brings with it the potential for treble damages (3x), usually resulting in multi-million dollar awards. (35 USC § 284). Prior cases have held that an important factor for determining willfulness is whether the accused infringer obtained an opinion of counsel that presents a strong case for invalidation or noninfringement.
During litigation, presentation of the exculpatory opinion as evidence triggers broad waiver of attorney-client privilege. Under prior precedent, failing to present the opinion conversely leads the court to an inference that either the opinion was not exculpatory or that there was no opinion of counsel.
The modified Hobson’s choice is known as the Quantum Dilemma, based on the case of Quantum v. Tandon.
In their en banc decision written by Judge Newman, the appellate court held that no adverse inference should flow from a party’s refusal to present an exculpatory opinion of counsel.
We now hold that no adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer’s failure to obtain or produce an exculpatory opinion of counsel. Precedent to the contrary is overruled.
Knorr-Bremse is a German company, but is the owner of a U.S. patent on Disk Brake technology. (U.S. Patent No. 5,927,445). Dana Corporation and other defendants were found liable for infringement. And, based on an inference of an unfavorable counsel, the defendants were found liable for willful infringement. Although no actual damages were awarded, because of the finding of willful infringement the court awarded partial attorney fees under 35 U.S.C. § 285.
During litigation, the defendants told the court that they had consulted European and United States counsel concerning Knorr-Bremse’s patents, but declined to produce any legal opinion or to disclose the advice received, asserting the attorney-client privilege. The district court found that "It is reasonable to conclude that such opinions were unfavorable."
The Decision:
In its decision, the Court answered four questions revolving around willfulness:
In the first question, the Court based its response on the strong historical significance of attorney-client and work-product privileges.
1. When the attorney-client privilege and/or work-product privilege is invoked by a defendant in an infringement suit, is it appropriate for the trier of fact to draw an adverse inference with respect to willful infringement?
The answer is "no." Although the duty to respect the law is undiminished, no adverse inference shall arise from invocation of the attorney-client and/or work product privilege.
In the second question, the Court found that there is no legal duty of a potential infringer to consult with counsel.
2. When the defendant had not obtained legal advice, is it appropriate to draw an adverse inference with respect to willful infringement?
The answer, again, is "no."
Question three revolved around the case at hand.
3. If the court concludes that the law should be changed, and the adverse inference withdrawn as applied to this case, what are the consequences for this case?
As an answer, the Court vacated the willfulness finding and remanded for a redetermination of willfulness in the absence of the inference of a nonexculpatory opinion.
The final question, number four, offered the Court the opportunity to create a clear rule that mounting a substantial defense to infringement should defeat a willfulness finding.
4. Should the existence of a substantial defense to infringement be sufficient to defeat liability for willful infringement even if no legal advice has been secured?
The answer is "no."
The Court concluded that willfulness involves a "totality of the circumstances" and should not be limited to a per se rule.
The Dissent:
Dissenting in part, Judge Dyk argued that enhanced damages for willfulness are punitive damages. Punitive damages are awarded to "punish reprehensible behavior." As such, there is a "substantial question as to whether the due care requirement is consistent with the Supreme Court cases holding that punitive damages can only be awarded in situations where the conduct is reprehensible. … I would recognize that the due care requirement is a relic of the past and eliminate it as a factor in the willfulness and enhancement analysis."
Note: Paul Berghoff and Joshua Rich of McDonnell Boehnen Hulbert & Berghoff took part in an amicus curiae brief submitted by the Intellectual Property Owners Association.
According to Dan Boehnen, also of McDonnell Boehnen, "clients often spend thousands of dollars to obtain window-dressing opinions that are designed solely to defend against a charge of willful infringement. Also, clients sometimes feel compelled to have different law firms handle opinion work versus litigation work. All that artificial conduct is likely to be swept away by the Court’s recent decision."
Cite as Dennis Crouch, Landmark Decision Strengthens Attorney-Client Privilege, Patently-O, September 14, 2004 available at https://patentlyo.com.
The U.S. Patent Office is hoping to help China improve its intellectual property laws. Today, PTO Director Jon Dudas announced the appointment of Mark Cohen as intellectual property attaché to the U.S. Embassy in Beijing, China. This is the first time that a PTO official has been placed overseas for the purpose of improving intellectual property protection in a specific country. Cohen begins his two-year assignment this week.
In addition to being an IP Attorney, Mr. Cohen is knowledgeable about Chinese language, culture and law. Cohen, a graduate of Columbia University Law School, accompanied Under Secretary Dudas on his trip to China this past Spring. He is also the principal editor of Chinese Intellectual Property Law and Practice (Kluwer Law International, 1999).
The Commerce Department had previously recommended that the USPTO place an official in China to provide support in the fight against IP crime.
International Rectifier (IR) v. IXYS (Fed. Cir. 2004) (04-1014).
On the day that its patent issued, IR filed a patent infringement suit against IXYS. IR’s patent relates to semiconductor device (MOSFET) packages having a higher current capacity without increased size. (U.S. Patent No. 6,476,481). The issue for appeal is “whether the [permanent] injunction granted the patentee is overly broad, and, if so, what is the proper remedy.”
The Federal Circuit rejected the injunction because it was overly broad under Rule 65(d) of the Federal Rules of Civil Procedure.
In the patent infringement context, this court has rejected as overly broad a permanent injunction that simply prohibits future infringement of a patent. … [T]he trial court’s injunction in this case does not meet the specificity requirements of Rule 65(d). The injunctive language set forth in the trial court’s judgment prohibits infringement by “any device covered by one or more of Claims 1 through 5” of the ‘481 patent.
Thus, the Appellate Panel vacated the injunction entered by the trial court and remanded the case with instructions to issue an injunction that meets the specificity requirements of Rule 65(d).
Comment: One interesting dichotomy is that the International Trade Commission (ITC) commonly issues broad injunctions or import restrictions that prohibit unlicensed entry of products that infringe certain patents. For example, in the recent plastic bag case, the ITC issued a general exclusion order prohibiting the unlicensed entry of plastic grocery bags that infringe patent 5,188,235.
Toro v. White Consolidated (WCI) (Fed. Cir. 2004).
The Toro Company sued White for infringement of its patent on a leaf blower. (U.S. Patent No. 4,694,528). The Minnesota district court granted summary judgment of non-infringement under the doctrine of equivalents — finding that White’s two-piece cover/ring was dedicated to the public in Toro’s patent because it was disclosed, but not claimed. (Citing Johnson & Johnson v. R.E. Service). The Federal Circuit (LINN) agreed, finding that the disclosure of unclaimed subject matter “triggers the disclosure-dedication rule.”
Because J&J had been decided after claim construction in this case, Toro also argued that the issues should be re-examined in light of the new law. The Appellate Panel Disagreed.
While Toro argues that Johnson & Johnston represents a change of law, its argument is misplaced. Johnson & Johnston did not alter our precedent as to claim construction, the issue at the crux of this case…. The doctrine of the law of the case is intended to prevent just the kind of speculation and second-guessing invited by the appellant here, in the broader interests of certainty, finality, and legal efficiency. The law is well-settled; decisions once made are not to be disregarded except for exceptional circumstances. Such circumstances are not evident here.
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