Federal Circuit Gives PTO Free Rein To Demand Information Beyond That Defined By Section 1.56 As Material to Patentability

Star Fruits S.N.C. and Institute of Experimental Botany v. United States and Department of Commerce (Fed. Cir. 2005)

By Alison Baldwin

What appears on its face to be a strictly procedural case actually raises a few interesting policy issues.

Procedurally, Star Fruits filed a U.S. Patent Application directed to a variety of peach tree.  In a subsequent office action, the examiner included a "Requirement For Information Under 37 C.F.R. 1.105" that included a request for "any information available regarding the sale or other public distribution of the claimed plant variety anywhere in the world" and "copies of the application, published proposed denomination and published Breeder’s Right grant."  Star Fruits declined to provide the information requested under 37 C.F.R. 1.105 on the grounds that the material requested was "not material to patentability of the new variety."  Because Star Fruits did not comply with the Examiner’s request, the Office issued a Notice of Abandonment.  Star Fruits petitioned the Director pursuant to 37 C.F.R. 1.181 and the petition was denied.  Subsequently, Star Fruits appealed to the district court under the Administrative Procedure Act.

In addressing 37 C.F.R. 1.105, the Federal Circuit has interpreted the rule to include "a zone of information beyond that defined by section 1.56 as material to patentability, and beyond that which is directly useful to support a rejection or conclusively decide the issue of patentability."  The court held that, so long as the request from the examiner for information is not "arbitrary or capricious," the applicant must comply with the request.

Furthermore, the Federal Circuit noted that if Star Fruits believed that the requested information was going to be used to support a wrongful rejection under 35 U.S.C. 102, it should have provided the information and then subsequently argued against the wrongful use.  The court held that Star Fruits had no right to object to the potential use of the information. 

Interestingly, in her dissenting opinion, Judge Newman argued that Star Fruits did exactly what it was supposed to do, when faced with an agency’s change in law and practice.  Star Fruits was challenging the PTO’s 2001 change in practice holding that a foreign sale or use of a plant that has foreign Breeder’s Rights registration may bar United States patentability of that plant.  This information requested by the examiner was for support for a rejection based upon this policy change.  This internal change in practice is arguably an attempt by the PTO to broaden 35 U.S.C. 102 without the required notice-and-comment rulemaking procedures.  Judge Newman criticized the panel for ignoring the real issue of law underlying this dispute. 

NOTE: Alison Baldwin is a partner at McDonnell Boehnen Hulbert & Berghoff.  Her patent litigation experience has covered a diverse range of topics, from recombinant DNA technology to digital television. In addition to her law degree, Ms. Baldwin holds degrees in biochemistry and plant pathology and has conducted research on the molecular mechanisms involved in plant disease resistance. [Brief Biography].

Federal Circuit: Court Erred in Finding Case “Exceptional”

Spectrum Labs v. Tech International (Fed. Cir. December 29, 2004).

Spectrum sued Tech Int’l for infringement for its patent related to a method of removing unwanted substances from human urine samples.  The purification method allows urine to be tested without interference from the unwanted substances.  The Nevada District Court granted summary judgment of non-infringement to Tech and granted Tech’s motion for attorney’s fees — noting that the suit was frivolous and in bad faith. 

Tech appealed the award of attorney’s fees.

On appeal, the Federal Circuit reversed — finding that the case was not "exceptional" under the statute (35 USC 285).

The CAFC listed types of cases that may create an "exceptional" circumstance: inequitable conduct before the PTO, litigation misconduct, vexatious and otherwise bad faith litigation, frivolous suit or willful infringement.  However, the Appeals Court found "none of those circumstances present" in this case.

A district court must provide reasoning for its determination that a case is exceptional for us to provide meaningful review. Further, an exceptional case finding is not to be based on speculation or conjecture but upon clear and convincing evidence.  The facts cited in the section 285 order do not provide clear and convincing evidence that Spectrum’s investigation and credit check constituted vexatious behavior. The section 285 order merely highlighted the fact that the credit check and background investigation occurred after issuance of the summary judgment order. Section 285 Order, slip op. at 3. The district court’s open speculation about the purpose of Spectrum’s investigations adds no support to its finding.

The Law: The determination whether to award attorney’s fees under section 285 involves a two-step process. First, the district court must determine whether Tech proved by clear and convincing evidence that this case is "exceptional." . . . Second, if the court finds the case to be exceptional, it must then determine whether an award of attorney’s fees is appropriate.

Comment: This case is really a commentary on claim construction jurisprudence.  In my view, the court could not call this an exceptional case because of the uncertainty associated with claim construction.

Anheuser-Busch loses patent infringement appeal: case remanded to district court


Anheuser-Busch v. Crown Cork & Seal (Fed. Cir. Dec. 23, 2004) (unpublished)

In an unpublished decision, the Court of Appeals for the Federal Circuit (CAFC) has revived Crown’s case against Anheuser-Busch — sending the patent dispute back to the Wisconsin district court to determine whether A-B’s aluminum cans violate Crown’s patent No. 6,065,634.

Specifically, the Appellate Court disagreed with the lower court’s claim construction — finding that the district court erred by importing a limitation into the claims that was not required by the specification. 

The patent does not indicate that the shape of the chuck wall is necessary to accomplish the [strength] goal.  THus, no basis exists for the court to import the "flat" limitation from the preferred embodiment into the claims.

The district court must now re-construe the claims and determine whether the new construction alters its prior conclusion that Anheuser-Busch did not infringe Crown’s patent.

The CAFC also affirmed the dismissal of Anheuser-Busch’s claim that Crown violated A-B’s design patent No. D387,987.

The Scoop on Geico v. Google

Geico v. Google

(E.D. Va. Dec. 15 2004) (On Oral Arguments).


Google’s use of a trademarked term for advertising keywords does not create customer confusion — and thus does not violate the Lanham Act.  However, the use of the trademarked term itself in sidebar ads does create customer confusion and may violate the Lanham Act.

More Details:

Geico has sued Google for trademark infringement.  Geico is upset that Google users may find a competitor’s ads after searching for "Geico."  Essentially, the issue is whether the use of trademarks as keywords for paid advertising violates the Lanham Act.  A bench trial began last week in U.S. District Court in Alexandria Virginia.

As plaintiff, Geico first presented case-in-chief (excluding damages).  At the close of Geico’s case, Google asked the court to grant judgment as a matter of law under Rule 52(c).

Federal Rules of Civil Procedure Rule 52(c) Judgment on Partial Findings. If during a trial without a jury a party has been fully heard on an issue and the court finds against the party on that issue, the court may enter judgment as a matter of law against that party with respect to a claim or defense that cannot under the controlling law be maintained or defeated without a favorable finding on that issue . . . Such a judgment shall be supported by findings of fact and conclusions of law.

In its oral decision on the motion, the court sided with Google in-part.  First, the court noted that Geico had not established that the "mere use of its trademark" as an advertising keyword violates the Lanham Act. 

Having heard the plaintiff’s case, the Court is satisfied that the plaintiff has not established that the mere use of its trademark by Google as a search word or keyword or even using it in their AdWord program standing alone violates the Lanham Act because that activity in and of itself, there’s no evidence that that activity standing alone causes confusion.

However, on the issue of whether Google’s sponsored ads that actually use GEICO’s name in the title or text of the ad, the court found that the plaintiff had presented sufficient evidence of confusion to allow the case to continue.

However, as to the narrow issue of whether the plaintiff has presented sufficient evidence at this point to let the case continue on the issue of whether Google is liable for violating the Lanham Act for those sponsored ads using GEICO’s name in either the title or the text that appear next to a — and a GEICO organic listing as a result of the AdWord program, at this point, there has been enough evidence of confusion as a result of Dr. Ford’s report to deny the motion and to allow the case to continue so the Court can consider the defendant’s evidence as to whether or not this situation creates a likelihood of confusion in the marketplace and, if so, what damages might be appropriate.

When presenting its case Google will continue to argue that it has a policy in place to prevent the use of the GEICO trademark in competitor’s ads — and that Google should not be held liable when those competitors violate the policy.

The case has been stayed until early January — awaiting the judge’s written decision.


Is Google a stand-up company or what!  Most defendants who are being sued over their core technology would take any available legal self-help measures.  Is anyone surprised that a Google search for Geico still turns up Geico?  [Link]


  • Transcript of the oral decision. [txt];
  • Google’s Memo in Support of their Motion [pdf];
  • Geico’s Answer [Unavailable — filed under seal];
  • Google’s Reply [pdf];
  • Who Represents Google & Geico.

Federal Circuit: Pieczenik v. Dyax

Pieczenik v. Dyax (Fed. Cir. December 16, 2004) (Unpublished Opinion).

George Pieczenik owns several patents relating to a method of inserting DNA sequences into DNA vectors.  (For Example, U.S. Patent No. 4,528,266-A).

In an infringement lawsuit against Dyax, the district court granted summary judgment in favor of Dyax — ruling that Dyax did not infringe the asserted patents. 

After the close of the case, Pieczenik filed a motion for reconsideration under Rule 60(b).

Rule 60(b): “On motion and upon such terms as are just, the court may relieve a party or a party’s legal representative from a final judgment, order, or proceeding” under specified circumstances, including: “(2) newly discovered evidence which by due diligence could not have been discovered in time to move for a new trial under Rule 59(b).”

Pieczenik alleged that he had uncovered new information that established the falsity of an affidavit of Dyax’s Senior VP that had been submitted in support of its motion for summary judgment.  The district court denied the motion to reopen the case. 

On appeal, the Federal Circuit affirmed — finding that (i) the evidence presented was not “newly-discovered” because it would have been available to Pieczenik if he had followed through with discovery; and (ii) Pieczenik did not show how the new evidence would alter the district court’s claim construction.

Will the PTO soon be issuing Search Reports?

Back in the day, when you filed a patent application, you would send in a filing fee that covered filing expenses, searching, and examination — all for one low price of around $700 (less for small entities).  In the recent rash of Fee Changes, the filing fee has been reduced to $300!  "Hold-on now," you’re saying, "patent office (and attorney) fees are never reduced."  The trick is that the PTO added a search fee $500 and an examination fee $200.  Bringing the total due on filing to $1,000.

This break-down of the fees suggests that the PTO may also change its practice.

Is there some chance that the PTO will adapt to the PCT practice of providing a search report?  What a grand idea.

Iron Grip v. USA Sports: Three-Hole Weight Plate Obvious

Iron Grip Barbell v. USA Sports (Fed. Cir. 2004).

Iron Grip is the assignee to U.S. Patent No. 6,436,015, which covers a weight plate with a triad of dispersed grip locations.  USA makes allegedly infringing plates.  The district court granted USA’s motion for summary judgment that the patent was obvious, finding that “it would have been obvious to a layman to combine the prior art.”  On appeal, the Federal Circuit affirmed:

Because the claimed invention falls within a range disclosed in the prior art, and the patentee has not shown that the prior art taught away from the invention or new and unexpected results from a three elongated grip weight plate as compared to those in the prior art, we conclude that the claims are obvious absent substantial evidence of pertinent secondary factors supporting patentability.

Finding of obviousness affirmed

Barbell companies have been getting rejected at the trademark side of the PTO as well.  John Welch filled me in on the recent case of in re Ivanko Barbell Company (not precedent).

In Ivanko, the TTAB refused to register the weight plate design (shown above) for two reasons: (i) functionality and, in the alternative, (ii) failure to establish distinctiveness.  The applicant had essentially admitted functionality — that is a bad move at the TTAB or when applying for a design patent.

As required by the statute, we must consider whether applicant’s design as a whole is functional. 15 U.S.C. § 1052(2)(5). Here, the evidence supports the examining attorney’s position that the design is de jure functional. Applicant touts the utilitarian advantages of safety and ease of handling of its design.

The Board noted that, because the designs are functional, any evidence of distinctiveness is moot.  However, for the sake of completeness, the board discussed the applicant’s contention that its designs had acquired secondary meaning.  The applicant had presented survey information in an attempt to show secondary meaning associated with the 7-hole weight plate:

Applicant has the burden of proving that its mark has acquired distinctiveness. . . . Of the survey respondents who were familiar with the Ivanko barbell weigh weight [sic] plate in question with all indicia removed (Picture A-1), 58.65% associated the appearance of the barbell weight plate shown with Ivanko and an additional 8.65% associate it [with] one company.”

However, the majority of survey participants were upper level employees in the barbell business, and thus, the court could not tell whether potential consumers have assigned any secondary meaning to the designs.

BlackBerry Maker RIM wins Partial Victory in Patent Appeal


NTP v. Research in Motion (Fed. Cir. 2004).

In this highly anticipated patent case, the Federal Circuit has vacated the district court’s judgment and injunction.

Accordingly, the judgment and the injunction are vacated, and the case is remanded to the district court for further proceedings consistent with this opinion. We affirm the district court’s judgment in all other respects. We thus affirm-in-part, vacate-in-part, and remand.

HOWEVER, RIM’s win is marginal at best — NTP remains in a strong position as the case returns to the district courtThe decision is remanded for the district court to determine what portion, if any, of the jury verdict should be set aside, based on the prejudicial effect of the court’s misconstruction of a single claim term.

Specifically, the Appeals Court only questioned the infringement decision on five of NTP’s patent claims.  Presumably, the verdict of infringement on the other eleven claims is upheld.


NTP’s patents are directed toward an "electronic mail system with RF communications to mobile processors." (e.g., U.S. Patent No. 5,436,960). NTP sued RIM, maker of the BlackBerry for patent infringement.

The district court “construed the disputed terms according to their plain and ordinary meaning, as supported by the specification and prosecution history.”  Based on the claim construction, the district court granted summary judgment to NTP on several patent claims — finding that the BlackBerry infringed some of the claims.  The remaining claims were decided by the jury.

On every issue presented, the jury found in favor of the plaintiff, NTP. The jury found direct, induced, and contributory infringement by RIM on all asserted claims of the patents-in-suit. The jury also found that the infringement was willful. It rejected every defense proposed by RIM. Adopting a reasonable royalty rate of 5.7%, the jury awarded damages to NTP in the amount of approximately $23 million.

The court awarded monetary damages totalling more than $53 million, with the following approximate division: (1) compensatory damages of $33 million; (2) attorneys’ fees of $4 million; (3) pre-judgment interest of $2 million; and (4) enhanced damages of $14 million. The court also entered a permanent injunction against RIM, enjoining it from further manufacture, use, importation, and/or sale of all accused BlackBerry systems, software, and handhelds.

Claim Construction:

The Court of Appeals for the Federal Circuit reviewed the claims construction de novo, taking an ordinary meaning approach: "In the absence of an express intent to impart a novel meaning to the claim terms, the words take on the full breadth of the ordinary and customary meanings attributed to them by those of ordinary skill in the art," using the written description as examined through the viewing glass of a person skilled in the art to give context to the claim language.

The CAFC agreed with the RIM on only one point:

that the district court misconstrued the term "originating processor."  The Appeals Court found that the originating processor as claimed by NTP refers to only one processor – and not three separate processors.

On all other points, the CAFC affirmed the district court ruling, these include (i) construction of all other terms; (ii) a decision that RIM’s Canadian server location does not prevent application of U.S. Patent Laws to the e-mail system; (iii) Denial of RIM’s motion for JMOL; and (iv) exclusion of RIM’s expert and demonstrative testimony.


RIMM won the appeal on a sliver of an argument, but is still in a position to lose the case.


by Dennis Crouch



  • The decision was a rare unanimous claim construction decision written by Judge LINN and signed by MICHEL & SCHALL.
  • The opinion is 60 pages in length [pdf].
  • Comment from a Reader
The CAFC reversal of the claim construction of the District Court does not affect all of the asserted and infringed claims. According to the opinion ‘some’ of the claims are definitely infringed on. However, it was remanded because the jury did not outline how much royalties apply to each infringed claim. The CAFC only reversed the claim construction of "originating processor" found in some claims and not of the comparable "originating device" found in the other claims. The District Court had construed these terms them separately and RIM only appealed "originating processor" and not "originating device". So I guess it can be said the NTP won a "Judgement-in-Part."
  • You should also note that the re-examination of NTP’s patents continues at the USPTO.
  • If the BlackBerry’s infringe, why did the the Appeals Court reinstate the injunction against RIM?

A Tom Kirby, a Patently-O Reader, answers my question:

Vacating an judgment often does not imply disapproval, but merely clears the deck for further action by a lower court.  The U.S. Supreme Court has an established practice known as GVR.  When it decides a case there may be several other arguably similar cases in the pipeline from the Court of Appeals.  The Supreme Court will (i) Grant review of the case, (ii) Vacate the decision below, and (iii) Remand for reconsideration in light of the recent decision.  Very often the Courts of Appeals conclude that little or nothing needs to be changed and simply reinstate their previous ruling.

Foreign Infringement:

Today, this case is important because of the millions of BlackBerry users in the U.S.  However, the doctrinal significance of this case will be the Federal Circuit’s stance on the inclusion of foreign components in the infringement analysis. 

Under the Patent Act [35 U.S.C. 271(a)], patent rights are limited by the territory of the United States.  However, in this case, the court found that plain language of section 271(a) does not preclude infringement where a system such as RIM’s, alleged to infringe a system or method claim, is used within the United States even though a component of that system is physically located outside the United States."

According to the Court, the test is not whether the infringement took place within the United States, but whether "control and beneficial use" of the infringing system was within the United States.

This liberal interpretation of the territoriality restrictions of the Patent Act bodes well for Eolas in the recently heard Microsoft v. Eolas appeal.

Federal Circuit Court of Appeals Gives Broad Construction to Means Claim

Versa v. Ag-Bag (Fed. Cir. 2004).

Versa owns a patent on an apparatus for creating air channels in bagged compost materials. The air channels allow for decomposition of the material.

Versa filed suit against Ag-Bag for patent infringement.  However, in the wake of an adverse Markman hearing, Versa admitted that it could not prove infringement based on the district court’s claim construction. After filing the appeals, the parties entered into a settlement agreement that resolved all issues on appeal other than the proper construction of the “means . . . for creating air channels” limitation. The parties have also agreed that, if we conclude the flutes are required, Ag-Bag will pay Versa an agreed royalty. Thus, the sole question before us is whether under a proper claim construction the claimed bagging machines must include flutes.

The Federal Circuit found that the means-plus-function claim language did not require flutes.

Accordingly, since we hold that flutes are not required structure, the judgment of non-infringement based on the district court’s incorrect claim construction is REVERSED.

In Dissent, Newman:

This case does not present a new question, and it should not have a new answer. The question is, can a patent claim clause written in means-plus-function form be construed, as a matter of law, literally to cover a device that is not the invention described in the specification, that is not shown in any of the drawings, that was not examined for patentability, that was excluded by prosecution arguments, and that is not an asserted equivalent. Statute and precedent require that the question be answered in the negative. Until today.

Eolas v. Microsoft: On the briefs

Eolas Microsoft

Eolas v. Microsoft (04-1234)(On appeal at the Federal Circuit)

The parties in this case include Eolas and the University of California as plaintiffs and Microsoft as the defendant. In addition to the parties, a number of amicus briefs were filed at the Federal Circuit by interested parties.  These parties include: AOL; Association for Competitive Technology; Autodesk; Bentley Systems; Intel; Macromedia; Netscape; Oracle; Professor Joe Miller; Sun Microsystems; and Wacom Technology.

Amicus Briefs:

All of the Amicus briefs support Microsoft’s position — looks like nobody supports the little guy anymore.

  • Association for Competitive Technology amicus brief [PDF]. ACT argues that the District Court made a major mistake by failing to undertake "reasonable efforts to find out" what was known or obvious to those skilled in the art at the time of the patent application.
  • Autodesk, Bentley, Macromedia, WACOM, Professor Miller amicus brief [PDF].  This group argues that section 271(f) was incorrectly expanded by the district court.
  • Netscape, AOL, Intel, Sun Microsystems amicus brief [PDF].  Netscape & friends argue that the Court should find "that section 271(f) does not apply to components manufactured outside of the U.S., even if they are manufactured using code, prototypes, molds, or templates designed and developed domestically."

Party Briefs:

  • Microsoft opening brief [PDF].
  • EOLAS answer [PDF].
  • Microsoft reply [PDF].

Thanks to Gerry Stegmaier (ACT’s attorney of record) and John Vandenberg (attorney of record for Autodesk, et al.) for providing copies of the briefs.

Robins Kaplan represents Eolas — they have a unique trial preparation technique: Hung Jury.

Supreme Court Closer to Reviewing Hatch-Waxman Safe Harbor Patent Case


Merck v. Integra LifeSciences (On petition for writ of cert. at the Supreme Court).

The Drug Price Competition and Patent Term Extension Act (Hatch-Waxman) created a safe harbor that permits drug manufacturers to perform the experiments needed to obtain FDA approval of their drugs without incurring liability for patent infringement, even if their activities infringe others patent rights.

However, the statute, codified at 35 USC § 271(e)(1), was limited by a 2003 decision by the Court of Appeals for the Federal Circuit.  The Federal Circuit affirmed a lower court’s finding that the safe harbor against patent infringement does not apply to pre-clinical activities to identify and develop new drugs that will eventually be subject to FDA approval — and thus, that Merck was liable to Integra for patent infringement.

The Case: Integra alleged that Merck and Scripps infringed patents owned by Integra relating to peptides involved in interactions between cell surfaces and the extracellular matrix.  Under contract from Merck, Scripps identified several potential anti-tumor peptide candidates and selected the most promising peptide by conducting in vivo and in vitro experiments to evaluate the specificity, efficacy, and toxicity of the peptide candidates for various diseases. Scripps also performed tests to assess the histopathology, toxicology, circulation, diffusion, plasma half-life, and proper mode of administering of the peptides candidates.

The Appeals Court held that these activities did not fall under the safe harbor (§ 271(e)(1)) because they were not done "solely for purposes reasonably related to the development and submission of information" to the FDA.

"the focus of the entire exemption is the provision of information to the FDA . . . [a]ctivities that do not directly produce information for the FDA are already straining the relationship to the central purpose of the safe harbor." (CAFC Opinion).

"Expansion of § 271(e)(1) to include the Scripps-Merck activities would effectively vitiate the exclusive rights of patentees owning biotechnology tool patents."

Supreme Court:

Merck has now appealed the case to the Supreme Court of the United States, petitioning the High Court to hear the question:

Under 35 U.S.C. 271(e)(1), it is generally not an act of infringement to use a patented invention “solely for uses reasonably related to the development and submission of information under a Federal law” regulating the manufacture, use, or sale of drugs. The question presented is whether the court of appeals erred in limiting that exemption to clinical studies designed to provide information for Food and Drug Administration approval of a new drug.

Only a small percentage of cases appealed to the Supreme Court are accepted for hearing.  However, the Merck case took a major step closer to being heard last week.  On request from the Court, the Solicitor General of the U.S. submitted the Government’s view that the case should be heard.  The Government brief makes two major points, one legal and the other social:

Gov’t Brief: The decision of the court of appeals reflects an incorrect view of the law, and is likely to restrict significantly the development of new drugs. Fairly read, the decision below holds that “pre-clinical” research regarding a potential new drug is not protected by the FDA exemption because that exemption is limited to “clinical” research necessary to obtain ultimate FDA approval of a new drug. That holding is inconsistent with the text of the FDA exemption, reflects a mistaken and unduly narrow view of the types of information relevant to the FDA’s two-step process for evaluating potential new drugs, and is in tension with this Court’s decision in Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661 (1990). Moreover, the court of appeals’ decision poses a direct and substantial threat to new drug research by dramatically narrowing the scope of protections enacted by Congress in Section 271(e)(1). Although this case is not an ideal vehicle for considering the issue, see p. 18, infra, the potential impact of the court of appeals’ legal conclusion is sufficiently important that the petition for a writ of certiorari should be granted.

The Court is expected to decide whether to hear the case within the next two months. Wyeth, the AARP, and Eli Lilly are each expected to file Amicus Briefs in support of the petition to rehear the case.

Judge Richard Posner (In Lessig Blog) has advocated the creation of a fair-use exception for patents on research tools:

Link: For example, a generic drug manufacturer is permitted to use the patented drug to demonstrate that its generic equivalent is indeed therapeutically equivalent (the “testing” exception created by the Hatch-Waxman Act). More broadly, an inventor can use the information in the patent to try to invent around the patent. And Landes and I advocate an expansion of the patent fair-use principle to allow scientists to use patented research tools (such as the oncomouse) without license–provided the scientists aren’t allowed to use the tools to produce their own patented products!

In response, Lichtman has noted that Judge Posner’s proposal “is problematic for the simple reason that, often, the key market for research tools is to sell those tools to other researchers. If a researcher’s use of patented research tool is fair use, that would significantly degrade the incentive to create those research tools inthe first place. Moreover, even if your approach works, it is in sharp conflict with the Bayh-Dole instinct that society might very well be better off in a world where academic researchers patent their work. As you know, that legislation was passed in response to evidence that university breakthroughts were sitting on the shelves both because (a) they could not be owned exclusively under old NIH rules; and (b) universities had too little incentive to bring their work to the attention of industry.”

Owners of Duragesic (R) win patent appeal


Alza v. Mylan Labs., (Fed. Cir. 2004) (04-1344).

Alza sued Mylan for infringement of its patents relating to administration of fentanyl through the skin.  Because fentanyl, a narcotic, is prone to abuse, the inventors developed a patch that minimized the amount of drug that would be used in the system.  The patch is sold by Janssen as Duragesic (R).

Alza won at the district court level.  On appeal, Mylan argued that (i) the claims were not correctly construed and (ii) one of the patents was unenforceable due to inequitable conduct.

Claim construction: The appeals court looked only to the specification and prosecution history to determine that "fentanyl citrate" was not a "skin permeable form" of fentanyl — thus avoiding prior art.

In determining the meaning of a disputed claim term, a court looks first to the intrinsic evidence of record, examining, in order, the claim language itself, the specification, and the prosecution history.

Inequitable Conduct: The district court found that a statement made by the applicants during prosecution was literally true, but "had the potential to mislead the examiner."  However, on the question of intent, the district court could not find the requisite deceitful intent associated with inequitable conduct. 

The Federal Circuit affirmed: "We discern no clear error or abuse of discretion."

Dissent (in part) by Dyk: Judge Dyk would have found inequitable conduct.

Here, the patentee made an untrue assertion and simultaneously submitted accurate facts not in accord with that assertion.  Such a submission of accurate facts does not cure a false statement.

NOTE: The patent expires January 23, 2005 — Mylan must wait until then to begin selling a generic version of the patch.

Federal Circuit Rejects Professor’s Attempt to Patent Cold Fusion Technique

In re Dash and Keefe (Fed. Cir. 2004) (Unpublished).

In 1990 professor John Dash filed a patent application for producing heat energy using nuclear fusion at a low temperature.  Experimental results suggesting that nuclear fusion occurred in their apparatus were submitted to the Patent Office in support of Dash’s attempts to overcome utility rejections mounted by the PTO. 

Dash appealed the Board’s rejection of his application for lack of enablement and utility.

On appeal, the CAFC relied on the "scientific community’s considerable doubt" regarding the utility of "cold fusion" in sustaining a prima facie case for lack of utility and enablement — even though the articles relied upon by the PTO were anectodal and not peer-reviewed.

We are aware of no rule that forbids the examiner from relying on related technology, anecdotal information or sources that are not peer-reviewed to establish a case of inoperability. . . .

The Examiner must only establish that a person of ordinary skill in the art would reasonably doubt the asserted utility.

The court then rejected Dash’s Rebuttal Evidence:

For each type of evidence Dash produced, the examiner found at least one sound reason to disbelieve the evidence.

Rejection Affirmed.

Comment: (i) All this comes in the wake of the DOE’s report that they are accepting quality research proposals on cold fusion. (ii) If this were a published opinion, it would be quite a precedent — giving some real teeth to the utility requirement. 

Here is the conflict: Applicants use statements from experts saying "a certain result cannot be accomplished" to prove that the result is nonobvious.  Now, the court brings a double-edged sword — finding that those statements can now be used to show a lack of utility.

Eolas v. Microsoft On Appeal

Eolas Microsoft

Eolas v. Microsoft (04-1234)(On appeal at the Federal Circuit)

At the district court level, Eolas won a $500 million+ verdict for Microsoft’s alleged patent infringement.  The technology at issue involves a method of using a web browser to open third-party applications using plug-ins.  Now, the case is on appeal at the Federal Circuit, with oral arguments being held today, December 9, 2004. Microsoft is expected to argue both improper claim construction and error in including Microsoft’s foreign sales in damage calculations.

The foreign sales portion of the case falls under 35 U.S.C. 271(f).  271(f)(1) provides for liability for causing components of a patented invention to be supplied for assembly abroad.  In Eolas, however, no physical component of the patented invention had shipped from the U.S.  However, the District Court ruled that Microsoft’s shipment of information on a "golden master" disk created a sufficient nexus with the U.S. 

The foreign damages are expected to be overturned by the Federal Circuit appeals court based on its holding in the recent case of Pellegrini v. Analog.  In Pellegrini, the Federal Circuit essentially held that there is no liability for patent infringement unless components of a patented invention are physically shipped from the United States.  Two weeks ago, the Supreme Court denied Pellegrini’s petition for writ of certiorari.

The asserted patents are also undergoing a reexamination at the United States Patent Office.

Parties Involved:

The asserted patents are owned by the University of California but exclusively licensed to Eolas.  The two reportedly have an agreement that Eolas will pay the University 25% off the top of any award.  Microsoft is the defendant.  In addition to the parties, a number of amicus briefs were filed by interested parties.  These parties include: AOL; Association for Competitive Technology; Autodesk; Bentley Systems; Intel; Macromedia; Netscape; Oracle; Professor Joe Miller; Sun Microsystems; and Wacom Technology. 


Although I have not reviewed these amicus briefs, I expect that they generally support Microsoft’s contention that the Eolas patents are invalid and that the reach of the patents should not extend beyond the borders of the U.S.  Paul Festa at cNet has written a brief article on the appeal.

Supreme Court Upholds Fair Use Defense in Trademark Case: Finds that some consumer confusion is compatible with fair use

KP Permanent Make-Up v. Lasting Impressions I, 543 U.S. ___ (2004).

FACTS: Both KP Permanent Make-Up and Lasting use the term “micro color” in marketing permanent cosmetic makeup.  KP has used a single-word version of the term since 1990 or 1991.  In 1992, Lasting registered a trademark that included the words “Micro Colors” under 15 U. S. C. §1051, and, in 1999, the registration became incontestable, §1065. When Lasting demanded that KP stop using the word “microcolor,” KP sued for declaratory relief, asserting the statutory affirmative defense of fair use, §1115(b)(4). The Ninth Circuit ruled consumer confusion is an element of fair use and appeared to place the burden of proof (to show an absence of confusion) on KP.

ISSUE: Does a party raising the defense of fair use to a claim of trademark infringement have a burden to negate any likelihood that the practice complained of will confuse customers about the origin of goods or services affected?

HOLDING: (Souter) A party raising the statutory affirmative defense of fair use to a claim of trademark infringement does not have a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of the goods or services affected.

(a) Even if a mark is incontestable (under §1115(b)), a trademark holder has the burden of showing that the defendant’s actual practice is “likely to cause confusion, or to cause mistake, or to deceive” consumers about the origin of the goods or services in question, see, e.g., Two Pesos, Inc. v. Taco Cabana, Inc., 505 U. S. 763, 780.  While cases such as Baglin v. Cusenier Co., 221 U. S. 580, are consistent with taking account of the likelihood of consumer confusion as one consideration in deciding whether a use is fair, they cannot be read to make an assessment of confusion alone dispositive or provide that the defense has a burden to negate it entirely.

(b) Since the burden of proving likelihood of confusion rests with the plaintiff, and the fair use defendant has no free-standing need to show confusion unlikely, the Court recognizes (contrary to the Ninth Circuit’s view) that some possibility of consumer confusion is compatible with fair use. . . . The Court does not rule out the pertinence of the degree of consumer confusion under the fair use defense.


Supreme Court Opinion
9th Circuit Opinion


Conclusory Statements by Patent Examiner are Inadequate to Support Motivation to Combine References

In re Bruce Beasley (Fed. Cir. December 7, 2004) (04-1225 Unpublished Opinion).

In 1991, Beasley filed a patent application directed to the generation of images on a video screen using a light pen that operates by mapping the screen into a memory on a point-by-point basis. 

The patent appeals board (BPAI) found that the invention was obvious based on prior art patents cited by the patent examiner during prosecution.  Beasley then appealed to the Court of Appeals for the Federal Circuit (CAFC).

On appeal, Beasley argued that the examiner never established a prima facie case of obviousness.  Specifically, Beasley urged reversal because there was no motivation or suggestion to combine the references cited by the Examiner and BPAI.

The Court agreed with Beasley and reversed the BPAI’s rejection — finding that:

The record reflects that the examiner and the Board have managed to find motivation for substituting one type of memory for another without providing a citation of any relevant, identifiable source of information justifying such substitution. The statements made by the Examiner, upon which the Board relied, amount to no more than conclusory statements of generalized advantages and convenient assumptions about skilled artisans. At least under the MPEP then in effect, such [conclusory] statements and assumptions are inadequate to support a finding of motivation, which is a factual question that cannot be resolved on subjective belief and unknown authority.

Vacated and Remanded.

In Dissent, Judge Dyk would have affirmed the obviousness rejection.

I see no error in the Board’s reliance on the PTO’s own specialized knowledge [for a motivation to combine]. The effect is merely to create a prima facie case, and to shift the burden to the patent applicant. Here the applicant did not refute the factual findings of the Board and the patent examiner, but merely offered lawyer argument to contradict the Board’s findings. Under these circumstances the application was properly rejected.

With this said, I agree that the MPEP provision in effect at the time is not a model of clarity and can be read as recognizing only a very limited scope for the use of the PTO’s expertise. MPEP § 2144.03 (7th ed. 1998). However, the current version appears to allow greater latitude. MPEP § 2144.03 (8th ed., rev. 2, 2004). In future cases, where the PTO has provided us with an interpretation of the new MPEP provisions, we will need to address the extent to which the new version of the MPEP gives the PTO greater scope to rely on its own expert knowledge.


Amazon wins patent suit . . . for now: Pinpoint’s case dismissed without prejudice

Pinpoint v. Amazon (N.D. Ill. December 6, 2004) (No. 03 C 4954, Richard A. Posner, sitting by designation).

After an evidentiary hearing on the eve of trial, Judge Posner has determined that Pinpoint was not the owner of the asserted patents at the time the complaint was filed — and thus, that Pinpoint does not have standing to sue.

The case was dismissed without prejudice.  After ensuring that the patents are properly assigned, Pinpoint may re-file the suit.

Read the opinion here: Download Pinpoint.pdf.
Read more about the lawsuit here, here, and here

CAFC: Expert Testimony Essential for Finding of Infringement

Centricut v. ESAB (Fed. Cir. 2004) (03-1574).

At the district court, Esab Group won a multi-million dollar judgment against Centricut for infringement of Esab’s patent relating to plasma welding products.  Centricut appealed the judgment and the measurement of damages.  Esab cross-appealed, asking for a modification of the judgment on damages.

On appeal, Centricut argued that ESAB had not satisfied its burden of proof on infringement because it failed to present expert testimony comparing the claims as construed with the accused device.  The Appeals Court agreed that expert testimony was essential in this case:

[E]ach of Esab’s three theories [of infringement] suffers from the same deficiency: none is supported by expert testimony. The first theory, adopted by the district court, rests on the district court’s own interpretation of the evidence. The latter two theories rest on the testimony of witnesses who were admittedly not experts on [the specific technology].

… This case stands as an apt example of what may befall a patent law plaintiff who presents complex subject matter without inputs from experts qualified on the relevant points in issue when the accused infringer has negated infringement with its own expert.

Infringement Reversed

The Court went on to say that experts are not necessary for cases where the technology is “easily understandable.” And, that there is no “per se rule that expert testimony is required to prove infringement when the art is complex.”  However, “where the accused infringer offers expert testimony negating infringement, the patentee cannot satisfy its burden of proof by relying only on testimony from those who are admittedly not expert in the field.” 

35 U.S.C. 103(a): Disclosure of alternative embodiments does not constitute teaching away.

In a case involving the design of shoe tred, the Federal Circuit provided further insight into the motivation to combine references under 103(a).

In re Fulton (Fed. Cir. 2004) (04-1267).

After receiving an obviousness rejection at the Board of Patent Appeals and Interferences (BPAI), inventors Fulton and Huang appealed to the Federal Circuit.  Their utility patent application is directed to a shoe sole with increased traction.  The BPAI found that the prior art as a whole suggested a combination of the orientation of hexagonal surfaces found in the application. 

Motivation to Combine Need Not Come from Preferred Alternatives: On appeal, the inventors argued that there was no motivation to combine because the characteristics disclosed in the references were not the preferred alternative.  The CAFC rejected this argument — finding that “our case law does not require that a particular combination must be the preferred or the most desirable, combination described in the prior art in order to provide motivation for the current invention.”  The appeals court went on to clarify that the “prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives” unless the disclosure criticizes, discredits, or otherwise discourages the solution.

Rejection for obviousness affirmed.

Carlos Gutierrez nominated as Secretary of Commerce

Kellogg Executive Carlos Gutierrez has been nominated by President Bush to replace Don Evans as Secretary of Commerce.  The Commerce Department manages the Patent & Trademark Office as well as other utilitarian functions of the government such as the census, weather forecasting, and standard setting.

Gutierrez fled Castro’s Cuba in the 1960’s and worked his way up the corporate ladder — eventually taking the helm at Kellogg in 1999.  He is credited with revitalising the company that had been knocked from its perch at the top of the cereals business.

Bush called Gutierrez a "great American success story" and a visionary executive, who understands the world of business from the "first rung on the ladder to the very top."

Kellogg is no stranger to the PTO, more than sixty years ago Kellogg brought a case to the Supreme Court over whether the pillow shape of Nabisco’s shredded wheat was trademarked.  In Kellogg v. National Biscuit, the Court ruled that a "product shape that is the subject of a [utility] patent goes into the ‘public domain’ when the patent expires." 306 U.S. 111 (1938).