Patently-O Bits & Bytes by Lawrence Higgins

Patent

Pro Bono Patents!

  • Members of the Twin Cities legal community are launching a pilot program to provide pro bono legal services to low-income, independent inventors. One of the programs goals is to put a dent in the USPTO’s backlog of patent applications, by increasing the efficiency of the applications submitted by independent inventors. This Pro Bono program is encouraged by the USPTO and the program’s success may help spark innovation across the nation. [Link]

Should Disney be allowed to trademark "SEAL TEAM 6"?

  • The Navy is challenging Disney’s attempt to trademark the name of the elite squad that took out Bin Laden. On May 3rd Disney filed the mark "SEAL TEAM 6" for various goods and services. [Link] [Link] [Link] However, it looks like the Navy did not like Disney trying to profit off of their work, so the Navy filed for the mark "SEAL TEAM" on May 13th. [Link] It looks like the Navy is trying to create a likelihood of confusion with the mark "SEAL TEAM", so that the USPTO will not issue the mark to Disney under 15 USC 1052(d). [Link]

Groklaw new editor will be Mark Webbink

  • Pamela Jones (PJ) the editor of Groklaw announced in early April that she was not going to write any more articles for Groklaw. However, PJ was bombarded with messages asking to keep the website going, so she asked Mark Webbink to become the new editor. Mark Webbink accepted the proposal and is officially the new writer of Groklaw. Mark is a visiting professor at New York Law School where he runs the Center for Patent Innovations, oversees the Peer To Patent project, and is a senior lecturing fellow at Duke University School of Law where he teaches intellectual property courses. [Link]

Inventor of the Year Award

  • IPO Education Foundation is seeking nominations for its 38th National Inventor of the Year Award. The award presents an opportunity for nominators to obtain major recognition for a deserving employee, client, or colleague as one of America's most outstanding inventors. Nominators could get recognition for themselves and their firm. The deadline for nominations is June 1. [Link]

Patent Jobs:

  • O’Shea Getz is seeking a patent attorney with at least 4 years of experience to work in their Springfield, MA office. [Link]
  • Klarquist Sparkman is looking for an IP litigation associate with 1-2 years of experience to work in their Portland office. [Link]
  • Laird Technologies is searching for an IP manager with 3 years of patent prosecution experience to work at their Chesterfield, MO location. [Link]
  • Ballard Spahr is seeking an IP litigation associate with 3-5 years of experience to work in their Philadelphia office. [Link]

Upcoming Events:

  • The Berkeley Center for Law & Technology (BCLT) and the USPTO are co-hosting a conference on the interface between the PTO and the District Courts on June 7th in Berkeley, California. The keynote address will be delivered by Teresa Stanek Rae. Guest speakers include Robert Bahr, Elaine Gin, and Stuart Graham. [Link]
  • AIPLA’s Chemical Patent Practice Road Show: Prosecution and Litigation Strategies will be held in Chicago on June 23rd. This seminar will cover advanced issues relating to chemical patent prosecution and litigation. Guest Speakers include Sharon Barner, Bradley Crawford (from MBHB), Whitney Remily, Michael Tierney, and Alexander Wilson. [Link]
  • The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Pro Bono Patents!

  • Members of the Twin Cities legal community are launching a pilot program to provide pro bono legal services to low-income, independent inventors. One of the programs goals is to put a dent in the USPTO’s backlog of patent applications, by increasing the efficiency of the applications submitted by independent inventors. This Pro Bono program is encouraged by the USPTO and the program’s success may help spark innovation across the nation. [Link]

Should Disney be allowed to trademark "SEAL TEAM 6"?

  • The Navy is challenging Disney’s attempt to trademark the name of the elite squad that took out Bin Laden. On May 3rd Disney filed the mark "SEAL TEAM 6" for various goods and services. [Link] [Link] [Link] However, it looks like the Navy did not like Disney trying to profit off of their work, so the Navy filed for the mark "SEAL TEAM" on May 13th. [Link] It looks like the Navy is trying to create a likelihood of confusion with the mark "SEAL TEAM", so that the USPTO will not issue the mark to Disney under 15 USC 1052(d). [Link]

Groklaw new editor will be Mark Webbink

  • Pamela Jones (PJ) the editor of Groklaw announced in early April that she was not going to write any more articles for Groklaw. However, PJ was bombarded with messages asking to keep the website going, so she asked Mark Webbink to become the new editor. Mark Webbink accepted the proposal and is officially the new writer of Groklaw. Mark is a visiting professor at New York Law School where he runs the Center for Patent Innovations, oversees the Peer To Patent project, and is a senior lecturing fellow at Duke University School of Law where he teaches intellectual property courses. [Link]

Inventor of the Year Award

  • IPO Education Foundation is seeking nominations for its 38th National Inventor of the Year Award. The award presents an opportunity for nominators to obtain major recognition for a deserving employee, client, or colleague as one of America's most outstanding inventors. Nominators could get recognition for themselves and their firm. The deadline for nominations is June 1. [Link]

Patent Jobs:

  • O’Shea Getz is seeking a patent attorney with at least 4 years of experience to work in their Springfield, MA office. [Link]
  • Klarquist Sparkman is looking for an IP litigation associate with 1-2 years of experience to work in their Portland office. [Link]
  • Laird Technologies is searching for an IP manager with 3 years of patent prosecution experience to work at their Chesterfield, MO location. [Link]
  • Ballard Spahr is seeking an IP litigation associate with 3-5 years of experience to work in their Philadelphia office. [Link]

Upcoming Events:

  • The Berkeley Center for Law & Technology (BCLT) and the USPTO are co-hosting a conference on the interface between the PTO and the District Courts on June 7th in Berkeley, California. The keynote address will be delivered by Teresa Stanek Rae. Guest speakers include Robert Bahr, Elaine Gin, and Stuart Graham. [Link]
  • AIPLA’s Chemical Patent Practice Road Show: Prosecution and Litigation Strategies will be held in Chicago on June 23rd. This seminar will cover advanced issues relating to chemical patent prosecution and litigation. Guest Speakers include Sharon Barner, Bradley Crawford (from MBHB), Whitney Remily, Michael Tierney, and Alexander Wilson. [Link]
  • The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Patently-O Bits & Bytes by Lawrence Higgins

Patent

Pro Bono Patents!

  • Members of the Twin Cities legal community are launching a pilot program to provide pro bono legal services to low-income, independent inventors. One of the programs goals is to put a dent in the USPTO’s backlog of patent applications, by increasing the efficiency of the applications submitted by independent inventors. This Pro Bono program is encouraged by the USPTO and the program’s success may help spark innovation across the nation. [Link]

Should Disney be allowed to trademark "SEAL TEAM 6"?

  • The Navy is challenging Disney’s attempt to trademark the name of the elite squad that took out Bin Laden. On May 3rd Disney filed the mark "SEAL TEAM 6" for various goods and services. [Link] [Link] [Link] However, it looks like the Navy did not like Disney trying to profit off of their work, so the Navy filed for the mark "SEAL TEAM" on May 13th. [Link] It looks like the Navy is trying to create a likelihood of confusion with the mark "SEAL TEAM", so that the USPTO will not issue the mark to Disney under 15 USC 1052(d). [Link]

Groklaw new editor will be Mark Webbink

  • Pamela Jones (PJ) the editor of Groklaw announced in early April that she was not going to write any more articles for Groklaw. However, PJ was bombarded with messages asking to keep the website going, so she asked Mark Webbink to become the new editor. Mark Webbink accepted the proposal and is officially the new writer of Groklaw. Mark is a visiting professor at New York Law School where he runs the Center for Patent Innovations, oversees the Peer To Patent project, and is a senior lecturing fellow at Duke University School of Law where he teaches intellectual property courses. [Link]

Inventor of the Year Award

  • IPO Education Foundation is seeking nominations for its 38th National Inventor of the Year Award. The award presents an opportunity for nominators to obtain major recognition for a deserving employee, client, or colleague as one of America's most outstanding inventors. Nominators could get recognition for themselves and their firm. The deadline for nominations is June 1. [Link]

Patent Jobs:

  • O’Shea Getz is seeking a patent attorney with at least 4 years of experience to work in their Springfield, MA office. [Link]
  • Klarquist Sparkman is looking for an IP litigation associate with 1-2 years of experience to work in their Portland office. [Link]
  • Laird Technologies is searching for an IP manager with 3 years of patent prosecution experience to work at their Chesterfield, MO location. [Link]
  • Ballard Spahr is seeking an IP litigation associate with 3-5 years of experience to work in their Philadelphia office. [Link]

Upcoming Events:

  • The Berkeley Center for Law & Technology (BCLT) and the USPTO are co-hosting a conference on the interface between the PTO and the District Courts on June 7th in Berkeley, California. The keynote address will be delivered by Teresa Stanek Rae. Guest speakers include Robert Bahr, Elaine Gin, and Stuart Graham. [Link]
  • AIPLA’s Chemical Patent Practice Road Show: Prosecution and Litigation Strategies will be held in Chicago on June 23rd. This seminar will cover advanced issues relating to chemical patent prosecution and litigation. Guest Speakers include Sharon Barner, Bradley Crawford (from MBHB), Whitney Remily, Michael Tierney, and Alexander Wilson. [Link]
  • The National Association of Patent Practitioners (NAPP) will hold their 2011 Annual Meeting and Nuts & Bolts Short Course at the Venetian Palazzo Hotel in Las Vegas, Nevada on July 16-19, 2011. [Link]

Contact Lawrence.Higgins@patentlyo.com with leads for future Bits and Bytes.

Arris Group v. BT: Vendors and DJ Standing

Patent

By Jason Rantanen

Arris Group, Inc. v. British Telecommunications PLC (Fed. Cir. 2011) Download 10-1292
Panel: Rader, Newman, Dyk (author)

Arris Group manufactures cable telephony and data products for cable system operators, such as its customer Cable One, to use in Voice over Internet Protecol (VoIP) telephone services.  In 2007, British Telecommunications (BT) sent a letter to Cable One accusing it of infringing various system and method patents held by BT and requesting that the parties begin licensing negotiations.  During those negotiations, BT provided Cable One with a 118-page presentation showing how selected claim elements were met by Cable One's services.  That presentation identified Arris's products as embodying numerous elements and performing numerous method steps of the asserted claims; however, the presentation did not assert that Arris directly or indirectly infringed BT's patents.  Nearly two years of negotiations (which were expanded to include Arris) followed, but no license agreement was consummated. 

In 2009, Arris filed a declaratory judgment action seeking a declaration that it does not infringe the BT patents and that the patents are invalid, as well as an injunction preventing BT from instituting infringement proceedings against Arris or its customers.  The district court dismissed the action for lack of subject matter jurisdiction, finding that there was no case or controversy between the parties.  Arris appealed.

An Economic Injury is Insufficient to Establish a Case or Controversy
The CAFC first rejected Arris's contention that there is an Article III case or controversy simply because Arris has suffered an economic injury as a result of BT's infringement threats.  "[I]n patent cases before the Supreme Court's decision in MedImmune, the regional circuits and our court held that economic injury is not alone sufficient to confer standing.  MedImmune did not abandon this rule."  Slip Op. at 8-9.  Rather, there must be an "adverse legal interest," which "requires a dispute as to a legal right – for example, an underlying legal cause of action that the declaratory defendant could have brought or threatened to bring."  Slip Op. at 9 (emphasis added). 

But an Implicit Contributory Infringement Threat is Sufficient
The CAFC did conclude, however, that a case or controversy existed based on BT's implicit assertion that Arris was contributing to the infringement of BT's patents.  "When the holder of a patent with system claims accuses a customer of direct infringement based on the customer's making, using, or selling of an allegedly infringing system in which a supplier's product functions as a material component, there may be an implicit assertion that the supplier has indirectly infringed the patent."  Slip Op. at 11.  Here, the court found that BT's assertion of direct infringement against Cable One, which "made it clear that Cable One's use of Arris's CMTSs and E-MTAs was central to BT's infringement contentions," Slip Op. at 14, established an Article III case or controversy regarding whether Arris was contributorily infringing BT's patent.

The "central" nature of Arris's products, itself not an element of contributory infringement, nevertheless drove the court's conclusion.  Although the court did step through the various elements of contributory infringement, it did so in only a single paragraph, and even that analysis relied heavily on the significant degree to which BT's infringement presentation to Cable One focused on Arris's products.  See Slip Op. at 16-17.  The court also found the inclusion of Arris in BT's licensing and infringement negotiations to be a relevant factor.  Thus, while a discussion of the actual elements of contributory infringement will doubtless be important to future declaratory plaintiffs relying on an indirect infringement theory, the actual outcome may be driven more by the underlying relationship between the patent holder and its infringement allegations to the declaratory plaintiff than by a formal analysis of contributory infringement.

En Banc: Federal Circuit to further Address Joint Infringement

Patent

McKesson Technologies Inc. v. Epic Systems Corp., (Fed. Cir. 2011) (en banc order)

The Court of Appeals for the Federal Circuit has ordered an en banc rehearing to further address questions of when multi-party actions can lead to a finding of patent infringement.  In McKesson, no single party had performed each and every step of the claimed method. However, one party (the health care provider) had completed a portion and had allegedly induced separate parties (users) to complete the remaining steps.  Of importance to the decision, the encouragement offered by health care provider did not amount to “control” over the users.  Taking these facts, the original Federal Circuit panel held the patent not infringed because (1) no party could be considered a direct infringer of the patent and (2) liability for inducing infringement is not actionable because there is no underlying direct infringement.

In the en banc order, the court identified two questions to be addressed by the parties in their briefs:

  1. If separate entities each perform separate steps of a method claim, under what circumstances, if any, would either entity or any third party be liable for inducing infringement or for contributory infringement?  See Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983).
  2. Does the nature of the relationship between the relevant actors—e.g., service provider/user; doc-tor/patient—affect the question of direct or indirect infringement liability?

A second en banc rehearing on the topic of joint infringement is already pending.  In April 2011, the Federal Circuit ordered en banc rehearing of Akamai Technologies, Inc. v. Limelight Networks, Inc. In that case, the court asked the following question

If separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?

Although not explicitly announced, it is likely that the Federal Circuit will hold oral arguments for these two cases on the same day.  To account for the timing difference, the court had shortened the briefing deadlines in McKesson

Therasense v. BD: En Banc Federal Circuit Raises Bar for Proving Inequitable Conduct and Unenforceability

Patent, ,

Therasense, Inc. v. Becton, Dickinson and Company (Fed. Cir. 2011) (en banc)

File Attachment: TherasenseFromPatentlyo.pdf (285 KB)

In a 6–1–4 decision, an en banc Federal Circuit has attempted to cure the “plague” of inequitable conduct pleadings by raising the standards for proving that the alleged bad act was material to patentability and that the patentee undertook the alleged bad act with intent to deceive the USPTO.  The court has also rejected the sliding scale approach that previously allowed strong evidence of materiality to compensate for weak evidence of intent to deceive (and vice-versa).  Finally, the the court held that a finding of inequitable conduct should not immediately render a patent unenforceable. Rather, the court must also “weigh the equities” to determine whether the inequitable conduct warrants the unenforceability remedy.

To prevail on the defense of inequitable conduct, the accused infringer must prove that the applicant misrepresented or omitted material information with the specific intent to deceive the PTO. The accused infringer must prove both elements—intent and materiality—by clear and convincing evidence. If the accused infringer meets its burden, then the district court must weigh the equities to determine whether the applicant’s conduct before the PTO warrants rendering the entire patent unenforceable.

Intent: For the element of intent to deceive the USPTO, the Federal Circuit now demands evidence of a “deliberate decision” to deceive.  Focusing on the failure to submit material prior art, the court held that the intent element requires “clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it. . . . Proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” When circumstantial evidence is used, intent to deceive must be the “most reasonable inference.”

Materiality: For the element of materiality, the Federal Circuit now demands evidence of “but-for materiality.”  In other words, the court must find that, but for the deception, the PTO would not [should not] have allowed the claim.  “In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction.” 

Exceptions: As a major exception, the court here held that in cases involving affirmative egregious misconduct, but-for material need not be proven. 

Unenforceable: [UPDATED] Even when material and intent are proven, the court held that a patent should only be rendered unenforceable due to inequitable conduct “where the patentee’s misconduct resulted in the unfair benefit of receiving an unwarranted claim.”  As in eBay v. MercExchange, this equitable analysis is intended to serve as a substantial requirement that limits the discretion of district courts.

Top Ten Most Cited Patent Cases 2007-2010

Patent

In the common law tradition, virtually every written opinion from the Federal Circuit cites to prior precedent. I looked at the past few years of Federal Circuit decision to discover the most cited patent cases.

The following list is ranked based on citations found in Federal Circuit patent decisions that were decided January 1, 2007 – May 26, 2010. The ranking is a combined score of both (1) the number of times a case was cited and (2) the depth-of-analysis associated with the citation. I excluded non-patent cases from the list.

  1. Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir. 2005).
  2. Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed.Cir. 1998).
  3. KSR Intern. Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007).
  4. Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir. 1995).
  5. Graham v. John Deere Co. of Kansas City, 86 S.Ct. 684 (1966).
  6. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed.Cir. 1996).
  7. In re Calmar, Inc., 854 F.2d 461 (Fed.Cir. 1988).
  8. Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 117 S.Ct. 1040 (1997).
  9. MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007).
  10. Christianson v. Colt Industries Operating Corp., 108 S.Ct. 2166 (1988).
  11. Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (Fed.Cir. 1988).
  12. Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538 (Fed.Cir. 1995).
  13. In re Seagate Technology, LLC, 497 F.3d 1360 (Fed.Cir. 2007).

Transition: Chief Judge Michel –> Chief Judge Rader

Patent, ,

Transition: May 31 is Chief Judge Paul Michel’s last day on the bench.  Judge Randall Rader will become the next Chief Judge of the Court of Appeals for the Federal Circuit. 

The Court today released two interesting patent opinions authored by the Chief: Dow Jones v. Ablaise (finding patent invalid as obvious) and Leviton v. Universal Security Instruments (vacating summary judgment of inequitable conduct). 

There are several pending en banc cases, including Princo v. ITC (patent pools and antitrust), Hyatt v. Kappos (Admissibility of new evidence in a Section 145 action), Therasense v. BD (standards of inequitable conduct), and TiVo v. EchoStar (contempt proceedings against adjuged infringer who introduced new infringing products). 

Combinatorics: With Chief Judge Michel gone, it may be more difficult for en banc panels to overturn prior precedent.  With Chief Judge Michel, the court has 11 members and needs a 6–judge majority to overturn prior precedent. Without the Chief, the court will have only 10 members but will still need 6–judges for such a “majority.” With the 11–judge panel, half of the potential outcomes result in majority panel sufficient to overturn prior precedent. With a 10–judge panel, only 38% of the potential outcomes have the same result. (This assumes a binary yes/no on the potential majority position).  Chief Judge Michel is particularly important because of his tendancy to side with the majority. In the past decade, Judge Michel has filed fewer dissinting opinions than any other Judge on the Circuit except for Judge Moore (who has only been on the bench for three years).  (Judge Newman has filed the most dissenting opinions.)

Next Vacancies: Several other Federal Circuit judges are currently eligible to take senior status. These include Judges Newman, Mayer, Lourie, Gajarsa, and Dyk. Judge Byrson will be eligible in August 2010.

Next Chief Judge After Judge Rader: Judge Kimberly Moore sits as the heir apparent following Judge Rader — assuming that he remains Chief Judge for a full seven years. If Judge Rader vacates the Chief position within six-years, Judge Prost would become Chief.

JOTWELL: Journal of Things we Like (LOTS)

Patent

[JOTWELL] Many of us enjoy legal theory of all sorts (even that outside of patent law) but we do not have time to sift through the several thoursand law review articles published each year. 

A new project headed by Professor Michael Froomkin (Miami) focuses attention on legal scholarship that is new and noteworthy — and does so in digestable 1,000 word essays.

[Patent Utility Redux] In a recent JOTWELL essay, Professor John Duffy (GWU) discusses a new article by Professer Michael Risch (soon to be Villanova). Risch’s article is titled Reinvinting Usefulness and is forthcoming in the BYU Law Review (SSRN Draft). Duffy writes:

Michael Risch reexamines patent utility doctrine and advances creative and insightful arguments for requiring that all inventions demonstrate “commercial utility” prior to patenting.  The highest compliment I can pay this article is not that I agree with it—I’m still somewhat doubtful—but that the article has forced me to think hard about an area I foolishly thought to be largely barren.  The article is memorable precisely because its thesis is unsettling; it demands rethinking of utility doctrine and other aspects of the patent law.

The JOTWELL IP section can be followed here: http://ip.jotwell.com/.

Notes:

 

 

 

Judge Plager: “The Walls Surrounding the Claimed Invention [Should] be Made of Something Other than Quicksand”

Patent, , ,

Enzo Biochem and Yale University v. Applera Corp. (Fed. Cir. 2010)

The district court initially held Enzo’s patent claims invalid as indefinite because of the ill-defined term “not interfering substantially.” On appeal, the Federal Circuit reversed — finding that the someone of skill in the art “would understand what is claimed.”

Applera requested a panel rehearing and rehearing en banc which the Federal Circuit recently denied. However, as part of that denial, Judge Plager penned an important dissent — arguing that indefiniteness law should be given more teeth and that claim construction commands too large of a role in the litigation process.

“In my view, this court’s definiteness doctrine could go considerably further in promoting that objective than it currently does, with the not inconsequential benefit of shifting the focus from litigation over claim construction to clarity in claim drafting. . . . The court now spends a substantial amount of judicial resources trying to make sense of unclear, over-broad, and sometimes incoherent claim terms. It is time for us to move beyond sticking our fingers in the never-ending leaks in the dike that supposedly defines and figuratively surrounds a claimed invention. Instead, we might spend some time figuring out how to support the PTO in requiring that the walls surrounding the claimed invention be made of something other than quicksand.”

PatentLawPic990Read the full dissent here:

Judge Plager: I respectfully dissent from the denial of the petition for panel rehearing on the question of indefiniteness.

Despite the varying formulations that this court has used over the years in describing its “indefiniteness” jurisprudence . . . , the general conclusion from our law seems to be this: if a person of ordinary skill in the art can come up with a plausible meaning for a disputed claim term in a patent, that term, and therefore the claim, is not indefinite. At least not so indefinite as to run afoul of the statutory requirement that claims shall “particularly point[ ] out and distinctly claim[ ] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, second paragraph.

The corollary derived from this understanding is that if several persons of ordinary skill come up with competing but plausible interpretations of a disputed terms is typically the case with competing “expert witnesses” in patent infringement litigation—the problem is not one of an inherently ambiguous and potentially indefinite claim term, but rather the problem becomes simply one of picking the “right” interpretation for that term. Since picking the “right” interpretation—claim construction—is a matter of law over which this court rules, and since the view of the trial judge hearing the case is given little weight, so that the trial judge’s view on appeal becomes just a part of the cacophony before this court, it is not until three court of appeals judges randomly selected for that purpose pick the “right” interpretation that the public, not to mention the patentee and its competitors, know what the patent actually claims. The inefficiencies of this system, and its potential inequities, are well known in the trade.

The United States Patent and Trademark Office (“PTO”), by contrast, appears to be taking steps to give the statutory requirement real meaning. In 2008, the patent examining corps was given a five-page instruction on “Indefiniteness rejections under 35 U.S.C. 112, second paragraph.” The memo initially observes that “[t]he primary purpose of the definiteness requirement for claim language is to ensure that the scope of the claims is clear so that the public is informed of the boundaries of what constitutes infringement of the patent.” The memo reviews in detail a recent opinion of this court, following which the memo states the position of the PTO: “If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpre-tation then a rejection of the claim under 35 U.S.C. 112, second paragraph, is appropriate.”

This memo was followed later in the year by a rare precedential opinion issued by the Board of Patent Appeals and Interferences (“Board”) in Ex parte Miyazaki. The Board noted that this court has in post-issuance patent infringement cases held “that the definiteness requirement ‘does not compel absolute clarity’ and ‘[o]nly claims “not amenable to construction” or “insolubly am-biguous” are indefinite.’” Recognizing that this court has never set forth a different standard of review for indefiniteness under 35 U.S.C. § 112, second paragraph, for pre-issuance pending claims as compared with post-issuance patent claims, the Board concluded that the Federal Circuit’s reading of the indefiniteness requirement was counter to the PTO’s broader standard for claim construction during prosecution. Accordingly, the Board announced that, “rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”

The Board is clearly right in recognizing that the circumstances are different between pre-issuance and post-issuance application of the definiteness standard with regard to claim terms. At the same time, the PTO and the Board are clearly right in insisting that, if the public notice function of the patent law is to be honored, claim terms must particularly point out and distinctly claim the subject matter of the invention. In my view, this court’s definiteness doctrine could go considerably further in promoting that objective than it currently does, with the not inconsequential benefit of shifting the focus from litigation over claim construction to clarity in claim drafting.

To begin the discussion of how this court could move in that direction, I would grant the petition for panel rehearing. The court now spends a substantial amount of judicial resources trying to make sense of unclear, over-broad, and sometimes incoherent claim terms. It is time for us to move beyond sticking our fingers in the never-ending leaks in the dike that supposedly defines and figuratively surrounds a claimed invention. Instead, we might spend some time figuring out how to support the PTO in requiring that the walls surrounding the claimed invention be made of something other than quicksand.

I respectfully dissent from the loss of that opportunity through the panel’s denial of rehearing.

Substantially: As a claim limitation, “substantially” is being used less frequently than ever before. The chart below shows the percentage of issued patents that include “substantially” as a claim limitation. The data is grouped accourding to the patent issue year. (For the 1980’s and 1990’s, I grouped the data by decade.)

PatentLawPic991

PatentLawPic992

 

 

 

Patent Grants 2010

Patent

Over the past few weeks, I have been reporting on the dramatic rise in the number of patents being issued by the USPTO each week. That trend continues. In the past three weeks, the USPTO has granted more utility patents than in any three week period in history — at a rate more than 40% greater than in 2009.

Kyle Jensen of PriorSMart reports on an interesting phenom: For the first-time, the number of issued patents exceeds the number of published applications.

Orion v Hyundai on Novelty: Expanding the Scope of a Printed Publication with Oral Testimony

Patent,

Orion IP v. Hyundai Motor America (Fed. Cir. 2010)

Orion sued Hyundai and twenty other automobile manufacturers for infringement of its patent covering a “computer-assisted parts sales method.” The invention took computer and database technology available in 1988 and applied that technology to a specific solution. All of the defendants settled except Hyundai who was stuck with a $34+ million verdict jury. On appeal, the Federal Circuit reversed — holding that the asserted patent is invalid as anticipated by a promotional publication for an electronics parts catalog.  Note, this post deals with the anticipation issues. I will discuss inequitable conduct in a separate post.

The asserted prior art is a brochure for the IDB2000 system that was distributed by Bell & Howell at least one year prior to the Orion priority date.* [DTX133.pdf (5979 KB)] The brochure does not specifically state that the system generates a customer proposal as required by claim 1 of Orion’s patent.  However, at trial, Hyundai presented evidence that the IDB2000 system was “designed to, and did” generate customer proposals.  The Federal Circuit latched-onto this testimony regarding the prior art system and used it to expand the coverage of the prior art brochure — holding that the “testimonial and documentary evidence regarding the Electronic Parts Catalog reference establish that the Electronic Parts Catalog reference anticipates claim 1 of the ’627 patent.”

I have genuine problems with the analysis in this opinion.  The appellate panel expanded the scope of the asserted anticipatory prior art reference by relying on testimonial evidence of how the associated system was used at the time. There are two separate problems. First, the scope of a “printed publication” should be examined for what it disclosed to one of skill in the art rather rather than to how underlying prior art systems were used at the time. Contemporaneous use would be important for an analysis of whether the invention was “in public use” more than one year before the filing date. However, this decision’s doctrinal focus is solely on anticipation by the prior art brochure as a printed publication. If the IDB2000 system itself anticipated the patent then the defendants should have presented evidence under the public use prong of 102(b).  The second problem with the court’s decision is that the oral testimony relied on here opens the door to potentially self-serving testimony that is not ordinarily allowed in invalidity/priority proceedings because it does not satisfy the clear and convincing standard. 

  • * The asserted prior art reference was apparently printed after the Orion filing date. However, Hyundai presented oral testimony that a very similar brochure had been distributed earlier.

Chief Judge Michel: State of the Court

Patent,

Chief Judge Paul Michel will be retiring from the bench later this month after more than twenty-two years on the bench and five as the chief judge.  He recently offered his annual “state of the court” address at the court’s annual judicial conference. [Read Judge Michel’s remarks].

As Chief, Judge Michel has taken a specific interest in ensuring that the court runs efficiently and quickly. His remarks:

By every measure our decisions continue to be issued more rapidly. As a result, our inventory of pending appeals has dropped from over 1,400 just a few years ago to only 819 as of April 30. Indeed, as of October 1, 2009 it was 897, so the reductions continue.

One benefit is that we hear cases more quickly. In Fiscal year 2006, for example, only 49% of ready cases could be scheduled for argument without delay. By last year, the number was 84%. This year it will likely rise even further.

Another metric we watch is the percentage of appeals decided within 90 days of argument. This number has ranged recently from 75 to 83%. Likely it will reach 85% this year.

Judge Michel also briefly discussed the pending en banc cases:

  • Last October we agreed to rehear en banc Princo v. ITC, involving a patent misuse defense based on a patent pool licensing agreement. Argument was held in March. [This case was argued by Edward DuMont. DuMont has been nominated to fill Judge Michel’s place on the bench]
  • In February, we granted rehearing en banc in Hyatt v. Kappos, asking the parties to brief any limitations on admissibility of evidence in § 145 patenting actions in district court. Argument is scheduled for July 8.
  • In March, we agreed to rehear Slattery v. United States, a Winstar case, asking whether the FDIC is a non-appropriated funds instrumentality and how the answer to that affects the jurisdiction of the Court of Federal Claims.
  • In April we granted rehearing en banc in Therasense v. Becton, Dickinson, in which we will reconsider the standards for determining inequitable conduct. 
  • This month, we granted rehearing in TiVo v. Echostar, concerning when contempt proceedings are appropriate as opposed to a new infringement trial on a product that has been altered after the original was found to infringe.
  • And of course all eyes are on the impending decision in In Re Bilski, concerning the test for patent eligibility.

Although stepping-down from the bench, Chief Judge Michel is “not retiring, but merely changing mission.” He reports that he expects to play a greater role for campaigning for stronger support the courts and USPTO and may also spend some time as a mediator.

PatentLawPic989

Patently-O Bits and Bytes

Patent, , ,
  • Trademark / Antitrust: The Supreme Court has ruled against the National Football League (NFL) in an antitrust suit involving the NFL’s exclusive apparel licensing deal with Reebok/Adidas. The court held that the NFL was not a single business entity, but rather 32 separate business entities. Any antitrust violation involves an underlying market. Here, the supreme court identified that as the market for intellectual property: “Directly relevant here, the teams are potentially competing suppliers in the market for intellectual property. When teams license such property, they are not pursuing the common interests of the whole league, but, instead, the interests of each corporation itself.” In Princo, the Federal Circuit is now considering antitrust issues in the scope of patents and standard-setting organizations. [Read NFL v. American Needle] [Read about Princo v. ITC]
  • The Chisum Patent Academy is offering its second annual Intensive Patent Law Training Workshop in Seattle on July 29-31, 2010. See http://www.chisum-patent-academy.com. The workshop will focus on substantive patent law (patentability and enforcement) through analysis of critical Federal Circuit and Supreme Court decisions. [Syllabus for 2009 workshop]. New material for 2010 likely include business method patentability post-Bilski, written description requirement compliance post-Ariad, and the evolving landscape of inequitable conduct as reflected by the Federal Circuit’s recent grant of rehearing en banc in Therasense. The workshop is team-taught in seminar style (maximum of 10 students) by Donald Chisum, author of the treatise Chisum on Patents, and Professor Janice Mueller, author of Patent Law, 3d Edition (Aspen 2009). Chisum and Mueller have a combined total of over 40 years experience teaching patent law. The workshop’s coverage is geared for junior patent attorneys, summer associates, engineers, scientists, paralegals, information specialists, and attorneys experienced in non-patent fields who desire an intensive introduction to patent law. Eighteen hours of CLE credit have been applied for.
  • USPTO News:
    • The USPTO is further developing its patent prosecution highway and has eliminated the associated fee. [Link]
    • USPTO is on Facebook [Link][Me on Facebook]
    • Green Technology: The USPTO has expanded the number of technology classes that count as “green technology” and that are therefore eligible for expedited processing. [Link]

Kathy Bates on NBC as a former patent attorney. Best quote of the clip is 30–seconds-in.

 

 

Patently-O Bits and Bytes

Patent, , ,
  • Trademark / Antitrust: The Supreme Court has ruled against the National Football League (NFL) in an antitrust suit involving the NFL’s exclusive apparel licensing deal with Reebok/Adidas. The court held that the NFL was not a single business entity, but rather 32 separate business entities. Any antitrust violation involves an underlying market. Here, the supreme court identified that as the market for intellectual property: “Directly relevant here, the teams are potentially competing suppliers in the market for intellectual property. When teams license such property, they are not pursuing the common interests of the whole league, but, instead, the interests of each corporation itself.” In Princo, the Federal Circuit is now considering antitrust issues in the scope of patents and standard-setting organizations. [Read NFL v. American Needle] [Read about Princo v. ITC]
  • The Chisum Patent Academy is offering its second annual Intensive Patent Law Training Workshop in Seattle on July 29-31, 2010. See http://www.chisum-patent-academy.com. The workshop will focus on substantive patent law (patentability and enforcement) through analysis of critical Federal Circuit and Supreme Court decisions. [Syllabus for 2009 workshop]. New material for 2010 likely include business method patentability post-Bilski, written description requirement compliance post-Ariad, and the evolving landscape of inequitable conduct as reflected by the Federal Circuit’s recent grant of rehearing en banc in Therasense. The workshop is team-taught in seminar style (maximum of 10 students) by Donald Chisum, author of the treatise Chisum on Patents, and Professor Janice Mueller, author of Patent Law, 3d Edition (Aspen 2009). Chisum and Mueller have a combined total of over 40 years experience teaching patent law. The workshop’s coverage is geared for junior patent attorneys, summer associates, engineers, scientists, paralegals, information specialists, and attorneys experienced in non-patent fields who desire an intensive introduction to patent law. Eighteen hours of CLE credit have been applied for.
  • USPTO News:
    • The USPTO is further developing its patent prosecution highway and has eliminated the associated fee. [Link]
    • USPTO is on Facebook [Link][Me on Facebook]
    • Green Technology: The USPTO has expanded the number of technology classes that count as “green technology” and that are therefore eligible for expedited processing. [Link]

Kathy Bates on NBC as a former patent attorney. Best quote of the clip is 30–seconds-in.

 

 

Patent Licenses Include Inherent Rights Allowing Third-Party Manufacture

License, Patent, Patent Cases 2009

Corebrace, LLC. v. Star Seismic LLC pic-35.jpg (Fed. Cir. 2009) 08-1502.pdf

Corebrace’s patent covers an earthquake-resistant brace for steel framed buildings. The original rights-holder (the inventor, Benne Murthy Sridhara from Bangalore) first licensed patent rights to Star. Later, the patent rights were assigned to Corebrace.

Star’s nonexclusive license from the inventor grants a right to “make, use, and sell” licensed products. The license also includes a restriction that Star may not “assign, sublicense, or otherwise transfer” its rights – except to an affiliated company. The inventor did already have a relationship with CoreBrace and reserved for that company “all rights not expressly granted” including any improvements created “by a third party whose services have been contracted.”

The question on appeal is whether the license grants Star the right to use third-party contractors to manufacture licensed products for its own use. The Federal Circuit answered in the affirmative – holding that absent a clear disclaimer, a patent license includes a right to use a third party manufacturer.

The right to “make, use, and sell” a product inherently includes the right to have it made by a third party, absent a clear indication of intent to the contrary. (Following Utah law)

Patent licensing is complicated because the contracts are interpreted under state law. Here, the contract indicates that Utah law should be followed. There is not Utah decision on point. However, the Federal Circuit noted its own precedent as well as California Supreme Court cases that “have both persuasively held that a ‘have made’ right is implicit in a right to make, use, and sell, absent an express contrary intent. We consider that the Utah Supreme Court would therefore likely arrive at the same conclusion were it to consider the issue.”

Often, exclusive licensees are implicitly granted greater rights than their non-exclusive counterparts. In the non-exclusive setting – allowing the licensee to subcontract undercuts the patent-holder’s rights; while in an exclusive licensee scenario, the patentee is presumed to have fully exploited its patent rights in that one contract. In this case, however, the Federal Circuit ruled that the implicit right to sub-contract manufacturing does not depend on any exclusive license status.

Zuhn: A Model Patent Office for the Future

Bits and Bytes, Patent, Patent Legislation

Dr. Zuhn has been covering patent happenings at the BIO Conference. His article discussing a panel on suggestions for fixing the USPTO is a great read. The theme presented by Sherry Knowles (from GSK) is one that many Patently-O readers understand – stakeholders cannot count on someone else to address problems at at the PTO.

John Duffy, who participated followed-up with a note about GSK’s role in the case of Tafas v. Dudas.

GSK has been very well served by its attorneys, which includes an excellent team of lawyers from Kirkland & Ellis headed by John M. Desmarais. They’ve been successful in winning 99% of what GSK wanted. The rules still aren’t in effect, and they are unlikely ever to go into effect without substantial revision. Moreover, as for the last 1% percent that GSK attorneys weren’t able to win, I don’t think any attorneys could have won. The administrative law issues in the case were always very difficult for GSK’s position. I don’t think any set of attorneys could have produced a better result, and I don’t doub t that GSK’s lawyers recognize that Supreme Court review would have its risks.

Duffy also discussed the potential risks of a Supreme Court decision in Tafas v. Dudas.

Judge Prost did a masterful job on the administrative law issues in the Tafas case. If the case were appealed to the Supreme Court, I think the Court would largely affirm her opinion. The most difficult issue in the case has always been whether, giving the agency’s rules an appropriate amount of Chevron deference, a court should nonetheless hold Final Rule 78 inconsistent with the clear meaning of section 120 of the Patent Act. Judge Prost ruled against the agency on that issue, and her result seems to me to be one reasonable resolution of a difficult issue. But the issue is a close one, as even Judge Bryson’s concurrence suggests. If Tafas were to be heard by the Supreme Court, it is entirely possible that the Justices (a majority of whom either have taught ad law or have served on the ad law-heavy D.C. Circuit) might give the agency a bit more deference than the Federal Circuit panel did. Thus, if the case went to the Supreme Co urt, I think likely outcomes would be either a complete affirmance or a reversal limited to the one issue that GSK won at the Federal Circuit.

Other News:

  • The White House has again recognized Peer-to-Patent as an example of “approachable government.” http://www.whitehouse.gov/newmedia/. (“Improves the quality of issued patents”).

Dickson Industries: Inequitable Conduct Holding Vacated

Attorney Fees, Inequitable Conduct, Patent, Patent Cases 2009,

Dickson Industries, Inc. v. Patent Enforcement Team, L.L.Cpic-34.jpg . (Fed. Cir. 2009) (nonprecedential) 08-1372.pdf

Application of inequitable conduct jurisprudence continues to divide the Federal Circuit. Judge Rader has perhaps been the most outspoken critic of the current over-use of inequitable conduct allegations. In this case, Judge Rader was joined by Judges Mayer and Posner (by designation) in vacating a lower court finding of inequitable conduct.

The PET patent covers an apparatus for making drainage grooves at the edge of a roadway. Prior to litigation, PET had argued that the machines for making rumble strips at the side of the road also violate the patent rights. Subsequently, Dickson sued for declaratory relief.

The jury found the patent invalid and found the patent holder liable for $1.5 million for tortiously interfering with with Dickson’s business relationships. The court then also (1) found the patent unenforceable due to inequitable conduct during reexamination for failure to disclose material information and (2) awarded attorney fees to Dickson.

On appeal, the Federal Circuit affirmed the anticipation decision, but vacated the decision on inequitable conduct.

The case largely centered around one prior art reference – “Spangler” – which discloses an apparatus to make rumble strips. PET knew about Spangler during reexamination of its patent, but did not disclose that reference to the PTO.

Agreeing with the Jury, the Federal Circuit found substantial evidence indicating that Spangler discloses all the elements of PET’s patent – rendering the patent invalid.

Ordinarily, after finding the patent invalid, the court would not need to decide issues of inequitable conduct. Here, however, the appellate panel addressed inequitable conduct because that conduct served as the basis for the lower court’s award of exceptional case attorney fees.

Amending Pleadings to Add Inequitable Conduct Charges: Allegations of inequitable conduct are parallel to charges of fraud and ordinarily must be pled with specificity. Thus, in most cases the accused infringer does not have sufficient evidence to allege inequitable conduct in the initial filing of defenses. Here, the court initially denied Dickson’s motion to amend its complaint to add IC charges. However, at trial the court changed its mind and allowed the issue to be presented.

On appeal, the Federal Circuit found that PET was “prejudiced” by the inconsistent orders and was thus denied “the opportunity to adequately defend against the allegation of inequitable conduct at trial. For instance, PET was denied the opportunity to introduce evidence of good faith, which militates against a finding of deceptive intent.”

The district court’s contradicting positions undermine the legitimacy of its ruling on inequitable conduct. This court cannot say with confidence that the record regarding inequitable conduct is not incomplete. Thus, this court vacates the district’s decision on the issue of inequitable conduct and remands to provide an opportunity to fully develop the record regarding inequitable conduct. Further, this Court vacates the award of attorney fees premised on inequitable conduct as premature.

In a warning to the lower court, Judge Rader again raised the notion that inequitable conduct litigation “has become an absolute plague.”

Given the severe consequences of unenforceability when it is imposed on a patent, it is paramount that the district court exercise necessary caution to ensure that the patent owner met its burden of proof with respect to both the materiality and deceptive intent.

Vacated-in-part.

Notes:

  • Judges Mayer and Posner (sitting by designation) participated in the panel.
  • Update: I have fixed an important typographical error. Judge Rader indicated that inequitable conduct litigation is the problem (not inequitable conduct itself).

Deference to ITC Claim Construction Decisions?

Claim Construction, ITC, Patent, Patent Cases 2009

Erbe Elektromedizin v. ITC and Canady Techpic-33.jpg (Fed. Cir. 2009) 08-1358.pdf

Erbe’s patent appears to cover aspects of a surgical flesh-welding technique known as argon plasma coagulation (APC). After narrowly construing the claimed plurality of endoscopic “working channel,” the ITC found no evidence of direct infringement. On appeal, the Federal Circuit affirmed.

I’ll avoid the claim construction particulars, but focus here on whether the Federal Circuit can properly review ITC Claim Construction decisions de novo.

Claim construction is a matter of law, and under the Administrative Procedures Act, the Federal Circuit reviews ITC decisions of law for “correctness.” However, in the usual course, agency decisions interpreting a matter of law are ordinarily given at least Skidmore level deference. See Christensen v. Harris County.