Huang v. California Institute of Technology (C.D. Cal. 2004)
Dr. Huang sued, alleging that he should be a named inventor of CIT’s automatic DNA sequencing patents. As evidence, Dr. Huang submitted his own testimony and his laboratory notebooks. The Court found that the lab notebooks were insufficient because they were not witnessed or reliably dated.
Only in those instances where Dr. Huang’s lab notebooks were corroborated by independent evidence were they considered at all persuasive.
50 years ago, Buckminster Fuller patented the geodesic dome (or spherical icosahedron). Now, the post office has issued a stamp in his honor.
Shimano has requested two more inter partes reexaminations of patents owned by competitors:
1) Campagnolo SLR’s U.S. Patent 6,490,737 Titled ELECTRIC CONTROL DEVICE FOR A MOTOR-DRIVEN DERAILLEUR FOR BICYCLES; and
2) SRAM’s U.S. Patent 6,681,652 Titled GEAR SELECTION DEVICE FOR A VARIABLE GEAR MECHANISM, ESPECIALLY FOR A BICYCLE DRIVE.
See Shimano’s prior request here.
Read more about inter partes reexaminations here.
AFG Indus. v. Cardinal IG CO. (Fed. Cir. July 13, 2004)
In an infringement suit involving AFG and ASAHI’s patented window treatment, the District Court (E.D. Tenn) held that Cardinal did not infringe. (U.S. Patent 4,859,532). On appeal, the Federal Circuit (RADER) vacated and remanded.
A structure that falls within the meaning of “layer” due to its structure and optical properties remains a single layer whether it was deposited in a single sputtering operation or multiple operations. By the same token, that unitary structure of the same material that constitutes a “layer” does not become multiple layers because the manufacturer decided to deposit it in multiple passes rather than in a single pass. The method of making is not determinative of the structure and properties of a “layer.” Because the trial court considered the method of creating the layer dispositive of its structure and character in the accused LoE2 products, this court vacates the grant of summary judgment.
Because genuine issues of material fact preclude summary judgment of noninfringement of the ’532 patent, this court vacates and remands.In dissent, J. NEWMAN argued that the case should not be remanded again, but rather, should be decided by the appellate panel.
I respectfully dissent from the panel’s decision to remand this case for the third time on the issue of claim construction with respect to the claim term “layer.” Claim construction is a matter of law, and as such it receives de novo review. The purpose is objective correctness; the record is complete, the question is ripe. It is time for decision, not for remand.
There have been three Markman hearings and now three appeals, all directed to the meaning of the term “layer.” For the first two hearings the definition was applied to the titanium dioxide deposits, and in the second appeal this court held that a layer is a material of optically significant uniform chemical composition. In the third Markman hearing the district court held that Cardinal’s multiple deposits of its center zinc oxide component produced multiple layers. This court now appears to hold that its definition in the previous appeal, wherein “layer” was defined in the context of the “interlayers” of titanium dioxide, bars the district court from considering the additional aspect of whether multiple sputtering deposits can produce multiple “layers,” unless they affect the structure and optical properties. However, when the later claim construction is made in a different technical context from that which was earlier considered, in the interest of correctness the court must consider the new context.
This case was filed in 1996. Before the district court the parties produced extensive evidence, in the form of expert and other witness testimony, and physical exhibits and demonstrations. The district court has three times held, on summary judgment upon deciding the legal question of claim construction, that there is no infringement. It is a relatively simple technical question, for which the record is fully developed. After eight years this question of law requires finality, not a fourth cycle of Markman hearing and appeal. From my colleagues’ remand for this purpose, I respectfully dissent.
UPDATE: On September 13, the Federal Circuit issued its opinion, read the full case review here: Knorr-Bremse v. Dana .
Original: The Federal Circuit recently heard en banc oral arguments in the willful patent infringement appeal Knorr-Bremse v. Dana Corporation. John Marshall Professor Janice Mueller’s new article discusses this case and the dilemmas faced by litigants hoping to defend against willfulness charges by disclosing privileged advice of counsel.
Subject to virtually unanimous condemnation is the Federal Circuit’s “adverse inference” rule, which forces a party accused of willful infringement to choose between two unpalatable options: (i) disclosing privileged advice of counsel to mount a willfulness defense, or (ii) not disclosing such information and being subjected to an adverse inference that an exculpatory opinion was not or could not be obtained.
The appellate decision is expected this quarter.
“Willful Infringement and the Federal Circuit’s Pending En Banc Decision in Knorr-Bremse v. Dana Corp.,” 3 J. Marshall Rev. Intellectual Prop. L. 218 (Spring 2004), available at http://www.jmls.edu/ripl/vol3/issue2/mueller.pdf.
UNITHERM FOOD SYSTEMS, INC. and JENNIE-O FOODS, INC. v. SWIFT-ECKRICH, INC. (doing business as Conagra Refrigerated Foods) (Fed. Cir. July 11, 2004).
In a declaratory action over a method of browning precooked meats, an Oklahoma district court granted summary judgment of invalidity and unenforceability based on both prior use and prior sale of ConAgra’s patented method. (United States Patent 5,952,027). In addition, the Jury determined that ConAgra’s pre-litigation actions constituted tortious interference and created antitrust violations.
On appeal, the Federal Circuit (GAJARSA) affirmed all appealed actions except for the antitrust holdings.
Because the district court erred, however, in allowing the jury to decide Unitherm’s antitrust claims despite the total absence of economic evidence capable of sustaining those claims, we vacate the judgment finding ConAgra liable for violating § 2 of the Sherman Act. We also vacate all damages awarded consequent to antitrust liability. We remand the matter to the district court for further proceedings consistent with this opinion.
Prior to litigation, ConAgra wrote to several companies who sell equipment for preparing and browning pre-cooked meats. ConAgra attached a copy of the ‘027 Patent to that letter, which included the explicit warning:
“Others in the industry may approach your company regarding this patent, and we would appreciate it if you would inform them that we intend to aggressively protect all of our rights under this patent.”
These letters formed the basis of Unitherm and Jennie-O’s claims of tortious interference. Surprisingly, the court did not mention the “objectively baseless” standard that it recently outlined in Globetrotter Software.
Jon Dudas, Acting Director of the USPTO, recently returned from a trip to China with Commerce Secretary Don Evans. Their mission was to “urge China to ratify and implement the World Intellectual Property Organization (WIPO) treaties in the near terms, provide draft criminal judicial interpretations to the United States for review and facilitate enforcement against end user software piracy by declaring that it harms the public interest.”
Dudas commented:
[The] message to the Chinese about the importance of IP protection provided a strong impetus for the productive discussions we had. Thanks to the leadership of Secretary Evans, I believe we made solid progress and have forged new cooperatives ties with China in the area of intellectual property protection and enforcement.
Later this year, former Patent Office Director Q. Todd Dickinson will lead a delegation of professionals specializing in intellectual property law and public policy to china to participate in bilateral exchanges with their professional counterparts in China, under the auspices of People to People Ambassador Programs. I was honored to be nominated for the delegation; unfortunately I have a previously scheduled commitment.
In October 2003, the FTC released a patent law report that continues to generate activity. Most recently, the Intellectual Property Owners Association (IPO) released its response.
IPO agrees with many of the FTC recommendations directed to improving the quality of patents. IPO strongly believes that improving the quality and timeliness of patents is critical to achieving the proper balance of rights between patent owners and the public.… IPO does not, however believe that the courts or USPTO should actively attempt to balance patent law with economic policy through strategies such as limiting the scope of patentable subject matter or denying the grant or limiting enforcement of a patent. [S]uch an attempt would profoundly undercut the foundation of the patent system. Further, efforts to balance patent and antitrust policy based on today’s technologies will likely cause unintended and adverse economic consequences today and in the future.
Specifically, the IPO takes the following positions:
1. IPO supports enacting legislation to create a new administrative procedure to allow post-grant review, and opposition to, patents.
2. IPO does not support lowering the evidentiary standards for evaluating the validity of patents.
3. IPO does not support changing the statutory standard of non-obviousness.
4. IPO agrees with FTC that we must improve the quality of patents by providing USPTO with adequate funding and no fee diversion.
5. IPO agrees with FTC that Congress should adopt USPTO’s 21st Century Strategic Plan, including expanding the “second pair of eyes” review, but does not support the proposed change to Rule 105.
6. IPO does not support the FTC recommendation concerning considering potential harm to competition in deciding upon the scope of patentable subject matter.
7. IPO endorses the 18 month publication of all patent applications recommendation.
8. IPO supports expansion of prior user rights.
9. IPO supports changes to the notice requirement as a predicate for willfulness determinations.
10. IPO does not support expanding economic considerations in patent law decision making.
Earlier this year, the AIPLA gave its corresponding response (link).
Nipper had the scoop.
In 1966 J.M. Boulanger patented the rolling-ball game shown above. (U.S. Patent 3,231,278). Boulanger’s game is very similar to Bocce. According to the rules:
Bocce originated in Italy and is one of the oldest of all lawn bowling games. It is now gaining popularity in the United States since it can be played by people of all ages and on a great variety of surfaces. Bocce is played between two players or two teams of up to four players on a team. Bocce is played with 8 large balls, 4 of one color, 4 of another color and one small target ball called the “Jack,” or “Pallino.” Players seek to place their Bocce Balls nearer to the target jack than their opponent or displace the opponent’s Bocce Ball and so improve the position of their Bocce Ball in relation to the Jack, (Pallino). Bocce can be played in a variety of ways using various rules. LINK.
McNulty v. Taser (Fed. Cir. July 7, 2004) (NONPRECEDENTIAL)
Plaintiff McNulty is the exclusive licensee of a patent entitled “Stun Gun with Low Battery Indicator and Shutoff Timer.” (U.S. Patent 5,193,048). The district court granted summary judgment of non-infringement to Taser and the other co-defendants (Cities of Los Angeles, Ontario, and Buena Park California).
On appeal, the Federal Circuit affirmed,
Accepting all of McNulty’s evidence as true and drawing all inferences in his favor, we agree with the district court that there is no genuine issue of material fact and that Taser’s U3400 and M-series products do not infringe the “trigger means” limitation…. Accordingly, the decision of the district court is affirmed.
Update from TASER’s Press Release:
“We were confident that the District Court’s ruling would be upheld,” said Doug Klint, Vice President and General Counsel for TASER International, Inc. “Our intellectual property portfolio is very strong, and there was never any evidence that TASER International infringed on Mr. McNulty’s patent. We feel vindicated that both the District Court and the Court of Appeals have ruled in our favor,” concluded Mr. Klint.
Diversified Dynamics v. Wagner Spray Tech (Fed. Cir. 2004) (NONPRECEDENTIAL)
In a patent infringement suit involving Diversified’s patented “duckbill check valve” for controlling paint flow to a paint-roller, the Federal Circuit reversed the district court’s dismissal of claims. The appellate panel found that a prior settlement agreement between the parties did not bar the present suit.
We conclude that the plain language of the release requires a narrow construction. The plain language releases Wagner from “any and all actions … arising out of or in any way related to the ‘176 Patent” (emphasis added). We agree with both of the parties that the release is unambiguous; however, we agree with Diversified as to its proper construction. The phrases “arising out of” and “in any way related to” refer back to the ‘176 patent and require a relationship between the action and the patent itself. We similarly note the order of the language in the release. Under the language of the release, the issue is whether an action is related to the ‘176 patent, not whether the ‘176 patent is related to the action.
Based on our reading of the release, we conclude that the district court improperly construed it to preclude Diversified’s suit on the ‘123 patent. As discussed, we focus on the nature of the action and its relation to the ‘176 patent. Here, the action arises out of and is related to the ‘123 patent.
Reversed and remanded.
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PELLEGRINI v. ANALOG DEVICES (Fed. Cir. July 8, 2004)
Plaintiff Pellegrini appealed to the Federal Circuit after the district court granted partial summary judgment in favor of Analog. In the patent infringement suit, Pellegrini alleged that Analog was infringing its patented brushless motor drive circuits. (U.S. Patent 4,651,069). Because of Analog’s international manufacturing process, the case provided a novel question for the Federal Circuit.
This case presents the question whether components that are manufactured outside the United States and never physically shipped to or from the United States may nonetheless be “supplie[d] or cause[d] to be supplied in or from the United States” within the meaning of 35 U.S.C. § 271(f)(1) if those components are designed within the United States and the instructions for their manufacture and disposition are transmitted from within the United States. This is a matter of first impression for this court. According to § 271(f)(1),
Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such a manner as to actively induce the combination of such components outside the United States in a manner that would infringe the patent if such combination occurred within the United States shall be liable as an infringer.
35 U.S.C. § 271(f)(1) (2000). Section 271(f) was enacted in the wake of the United States Supreme Court’s decision in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972), in which the Court acknowledged that unauthorized manufacturers of patented products could avoid liability for infringement under the then-existing law by manufacturing the unassembled components of those products in the United States and then shipping them outside the United States for assembly. Congress enacted § 271(f) in order to close that loophole.
In its opinion, the appellate panel determined that Section 271 requires “physical supply of components, not simply to the supply of instructions or corporate oversight.” Because the U.S. division of Analog only provided designs and corporate oversight, no infringing activity took place. Affirmed.
NOVARTIS PHARMACEUTICALS CORPORATION v. ABBOTT LABORATORIES (Fed. Cir. July 8, 2004).
Novartis brought a patent infringement suit against Abbott based on its patented cyclosporin compositions. (U.S. Patent 6,007,840). A jury determined that Abbott infringed claim 81 of the ‘840 patent. However, the district court issued a judgment as a matter of law (JMOL) of noninfringement in Abbott’s favor.
On appeal, the appellate panel found that the district court’s claim construction was erroneous, but that those errors were harmless to the JMOL decision. Affirmed.
In dissent, J. BRYSON argued that the court unduly applied the the specific exclusion principle to narrowly construe the term “lipophilic component.”
The statement on which the court relies refers to the role performed by excess amounts of the substance that serves the role of the surfactant in the claimed composition. The quoted language indicates that the composition of the invention must have at least three components in addition to the cyclosporin, as required by claim 81. In addition, it contemplates that the substance that serves as the surfactant may also serve as part of either the hydrophilic or the lipophilic component. The quoted language therefore makes clear that the composition may not consist of only two components in addition to the cyclosporin, as would be the case if one ingredient served as both the surfactant and the lipophilic component in the composition. However, the quoted language does not address the case presented by Abbott’s composition, which contains three components in addition to the cyclosporin, and in which a hydrophilic surfactant serves as the surfactant, while Span 80 serves the function of the lipophilic component (dissolving and carrying the cyclosporin). Thus, because in Abbott’s composition Span 80 does not serve as the surfactant referred to in claim 81, the quoted language from the specification does not apply to Abbott’s composition. For that reason, I agree with Novartis that, where another substance serves as the hydrophilic surfactant, the specification does not disclaim the use of a lipophilic surfactant such as Span 80 as the sole component of the lipophilic component of the claimed invention. I therefore do not find a disclaimer of subject matter in the specification. A fortiori, I do not find a specific exclusion of subject matter for purposes of the doctrine of equivalents.
Michael Kirk, Executive Director of the American Intellectual Property Law Association, recently testified before congress and called for the creation of an effective post-grant opposition procedure in the Patent Office.
Appearing at a congressional oversight hearing, Kirk pointed out that issued patents of questionable validity undermine the confidence of business and consumers. While the validity of such patents may be tested through litigation, reexamination, reissue, and interference proceedings, he observed that these options all suffer significant deficiencies. What is needed is a procedure that satisfies a competitor’s need for an adequate opportunity to challenge, the patent owner’s need for a prompt resolution of that challenge, and both parties’ need for an inexpensive proceeding.
Calendar of AIPLA Events:
Aug. 11-13: Practical Patent Prosecution Training for New Lawyers
Hyatt Regency Crystal City, Arlington, VA
Oct. 14-16:2004 Annual Meeting
Grand Hyatt Washington, Washington, DC
Today marks the end of the first quarter-year of this ‘Patently-O’ website. What began as a simple toy project has quickly evolved into a modestly successful site. During this time, I have written a brief summary of each patent law appellate opinion. In addition, many interesting unpublished appellate and published district court decisions have been reviewed. The result is about one case brief every two days.
Many times individuals involved in patent litigation are more interested in case law while those on the patent prosecution side may be more interested in patent office procedure. We monitor changes to patent office procedure and post them soon after they are announced. Changes can range from the minutia of mail stop address changes to commentary on changes in the rules for publishing patent applications.
Other types of information available on the site include articles and publications, patent legislation, patent drafting tips, and interesting inventions.
I believe that the beauty of this site is its spotlight on patent law issues. The narrow focus makes my job easier by reducing the amount of potential material, and it gives stability to the content of the site.
STATS:
A stat-counter was not installed until about day 10, but it shows a total of 25,517 hits over the past 80 days. The (incomplete) visitor list includes over 475 corporations, 125 universities, 50 government agencies, and 190 law firms. This total does not include visitors who reach the site through a “feed reader” such as bloglines or Kinja.
Major Referrers (past 1000 visitors):
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SEARFOSS v. PIONEER CONSOLIDATED CORPORATION (Fed. Cir. June 6, 2004)
Searfoss appealed the district court’s claim construction and resulting summary judgment of non-infringement of its patented truck bed covers. (U.S. Patent 5,031,955).
Because a finding of infringement under the doctrine of equivalents would vitiate the requirement of a direct connection through an actuation means, no reasonable jury could find that the accused device is insubstantially different than the claimed invention. Summary judgment of non-infringement is thus appropriate.
Because the district court correctly construed the disputed claim terms of the ’955 patent and thus Pioneer did not infringe claim 3 under the doctrine of equivalents, the district court’s entry of summary judgment on non-infringement is AFFIRMED
TYPERIGHT KEYBOARD CORPORATION v. MICROSOFT CORPORATION (Fed. Cir. June 6, 2004).
Plaintiff TypeRight appealed the district court’s summary judgment based on invalidity of its patented ergonomic keyboards. (U.S. Patent 5,372,441 and 5,503,484). Additionally, Microsoft cross-appealed the district court’s dismissal (without prejudice) of its claims for non-infringement.
First, the court dismissed the cross-appeal for lack of jurisdiction.
A party that is not adversely affected by a judgment lacks standing to appeal. . . . Because Microsoft’s rights under the judgment of invalidity are actually broader than its rights would be under a judgment of non-infringement, Microsoft has not been adversely affected by the district court’s judgment. Because there is no jurisdiction for the cross-appeal, we dismiss the cross-appeal
Next, the appellate panel reversed the finding of invalidity and remanded the case.
Summary judgment should not be denied simply because the opposing party asserts that the movant’s witnesses are not to be believed. However, summary judgment is not appropriate where the opposing party offers specific facts that call into question the credibility of the movant’s witnesses.
Here, TypeRight pointed to specific facts that tend to discredit the testimony of [Microsoft’s witnesses]. These facts create a genuine issue as to the credibility of Microsoft’s witnesses. Thus, while the evidence is sufficient to support a jury finding that the [] document is prior art, a reasonable jury could ultimately conclude otherwise. In such circumstances, “[t]he court may not assess the credibility of testimony when granting summary judgment.”
TI Group Automotive Systems v. VDO (Fed. Cir. June 30, 2004) [PDF].
TI Group is an automotive supplier that makes fuel tanks, fuel pump assemblies, and complete fuel tank systems. (U.S. Patent 4,860,714). TI Group has sold over thirty million fuel pump assemblies that embody the ’714 patent. VDO began selling an assembly that “were essentially drop-in replacements.”
After a jury verdict of willful infringement, the district court granted a JMOL in VDO’s favor based on non-infringement but denied VDO’s JMOL motion for invalidity.
Because we affirm some of the district court’s claim constructions, and because as to those limitations TI Group points to no evidence supporting the jury’s finding of infringement, we affirm the district court’s grant of VDO’s JMOL motion with respect to infringement. However, because we have broadened a number of the district court’s claim constructions, thus affecting the invalidity analysis, we vacate the district court’s denial of VDO’s JMOL motion with respect to invalidity and remand that issue for further proceedings consistent with this opinion.
COMPETITIVE TECHNOLOGIES, INC., and UNIVERSITY OF ILLINOIS v. FUJITSU LIMITED and FUJITSU HITACHI PLASMA DISPLAY LIMITED (Fed. Cir. June 30, 2004).
In a patent infringement suit against Fujitsu over plasma screen technologies, the University of Illinois sought to have some of Fujitsu’s counterclaims dismissed on Eleventh Amendment sovereign immunity grounds. (U.S. Patent 4,866,349 and 5,081,400). The Northern District of California court denied the University’s motion to dismiss the claims. U of I appealed.
Without reaching a decision on the merits, the Federal Circuit (DYK, MAYER, GAJARSA) dismissed the University’s appeal for lack of appellate jurisdiction.
The judgment of the district court is not final under 28 U.S.C. § 1291, and the district court has not issued the certificate required by either Federal Rule of Civil Procedure 54(b) or 28 U.S.C. § 1292(b).
The appellate panel found that the district court’s decision on the issue of sovereign immunity did not “conclusively determine” that question. Thus, the case did not fall under the limited Cohen exception that could have created a jurisdictional basis.