UK High Court Rejects Doctrine of Equivalents

Kirin-Amgen v. Hoechst Marion

Hal Wegner recently reviewed the House of Lords case of Kirin-Amgen v. Hoechst Marion.  This case presented the first opportunity for the British high court to interpret the “new” patent law (introduced a quarter-century ago).

According to Hal, the court “held that the ‘purposive construction’ test for determination of patent scope should be maintained and is consistent with the European Patent Convention. The doctrine of equivalents as an alternative test is expressly repudiated.”

There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.

In rejecting the American style doctrine of equivalents, the Lord Hoffman noted that:

I cannot say that I am sorry [that our precedent is antithetical to a doctrine of equivalents] because the Festo litigation suggests, with all respect to the courts of the United States, that American patent litigants pay dearly for results which are no more just or predictable than could be achieved by simply reading the claims.

Invention Submission Corporation versus Jon Dudas, USPTO Director

In January 2002, the PTO initiated an advertising campaign to warn the public of invention promotion scams. In a press release describing the campaign, the PTO noted that the agency’s advertisements would feature “an actual inventor, Edward Lewis, who lost several thousand dollars.” In the advertisements, Lewis described how he had spent $13,000 dollars on the services of an invention promotion company but “ha[d]n’t seen a penny.” The advertisements did not accuse any particular promotion company of engaging in scams, nor did they identify the company to which Lewis referred.

A news organization then published a story on the Invention Submission Corporation, noting that Lewis had filed a complaint against ISC and how the FTC had investigated the ISC for “misrepresentation in patent marking schemes.”

The Invention Submission Corporation then sued the PTO under the Administrative Procedure Act (APA) alleging that the PTO’s advertisements exceeded its statutory authority and were done in order to penalize ISC.

Both the district court and 4th Circuit Court of Appeals dismissed ISC’s claims, noting that the PTO’s ad campaign was not a “final decision” as required for jurisdiction under the APA.

 Now, ISC has petitioned the Supreme Court of the United States for a hearing on the case.  ISC argues that the the PTO’s actions constitute a sanction against the company, and is therefore reviewable under the APA.

The government brief in opposition to the petition is available here. The briefs have been distributed for conference scheduled for October 29.


Courts Rely on Internet Articles to Deny Trademark Application

In re DSS Environmental (Fed. Cir. 2004) (unpublished).

The USPTO refused to register DSS’s trademark DUALSAND on the grounds that the term is merely descriptive.

Under 15 USC 1052(e)(1), the PTO may refuse to register a mark if the mark, “when used on or in connection with the goods of the applicant,” is “merely descriptive” of the applicant’s goods. 

The Federal Circuit agreed with the PTO, concluding that the PTO’s decision was supported by substantial evidence.

Interestingly, the Appellate Panel supported the PTO’s reliance on articles from the Internet. 

DSS argues that the articles in the record lack credibility because their source was the Internet. However, the examining attorney was not relying on the articles for their accuracy, but merely to ascertain how the term “dual sand” is used in the context of water wastewater filtration. In making such a determination, the examining attorney may obtain evidence from “any competent source, such as dictionaries, newspapers, or surveys.” . . . The Internet articles in this case, including on-line copies of newspaper articles, fully satisfy that requirement.

Refusal to register mark affirmed.


Design patents: Bernhardt v. Collezione Europa

Bernhardt Bed

Bernhardt v. Collezione Europa (Fed. Cir. 2004) (04-1024).

Bernhardt sued low cost furniture dealer Collezione for infringement of six design patents. The district court, however, held that several of patents were invalid under 102(b) for prior public use.  Specifically, the court found that Bernhardt’s disclosure of the designs at a Pre-Market exhibition rendered the patents invalid.  In addition, the court found that Collezione’s products did not infringe the patents.

On appeal, the Federal Circuit vacated and remanded:

I. Public use analysis for a design patent requires substantially similar appearance in the eyes of ordinary user as compared to the claimed designs or their points of novelty.

While the court concluded that each of Bernhardt’s furniture pieces … were “similar to” the furniture design “shown in” each of Bernhard’s design patents, the analysis does not discuss or explain whether the furniture designs actually displayed at Pre-Market were substantially similar in appearance in the eyes of an ordinary observer to the claimed designs or appropriated the points of novelty of the patented designs. Only after making these determinations could the district court properly assess whether an invalidating public use within the scope of § 102(b) had occurred.

II. Witness testimony is not required to establish infringement of design patent.

The court apparently did not consider the evidence actually introduced—the design patents, their prosecution histories, and the cited prior art—from which Bernhardt’s proposed points of novelty and contentions regarding how Collezione’s accused designs appropriated Bernhardt’s proposed points of novelty might have been discerned. Because the district court incorrectly required Bernhardt to explain its points of novelty through the testimony of a witness, and concluded, based on the absence of such testimony, that Bernhardt failed to prove that Collezione had appropriated the novel ornamental features of the patents-in-suit, we vacate the district court’s judgement of non-infringement, and remand the infringement issue to the district court for further proceedings consistent with this opinion.

States May Face Patent Liability For Importing Drugs

In a recent paper, Penn State Professor Daniel Cahoy analyzed the importation of inexpensive drugs from Canada and other countries. His research looked at potential liability for patent infringement by various levels of government. Cahoy arrived at several conclusions:

  • Both private organizations and municipalities share the same, crushing liability under the Patent Act;
  • Despite Eleventh Amendment immunity, state governments face nearly equivalent liability for takings claims based on the Fourteenth Amendment;
  • The federal government confronts liability under the Fifth Amendment that broadens its exposure under the recognized just compensation statute; and
  • Attempts by Congress to modify the Patent Act to permit importation would likely constitute an unconstitutional taking.

Cahoy, Daniel R., “Patent Fences and Constitutional Fence Posts: Property Barriers to Pharmaceutical Importation” . Fordham Intellectual Property, Media & Entertainment Law Journal, Vol. 15, Winter 2005.

Note: Under U.S. Law, the first sale (AKA “Exhaustion”) doctrine does not apply to products sold in a foreign country.

United States patent rights are not exhausted by products of foreign provenance. To invoke the protection of the first sale doctrine, the authorized first sale must have occurred under the United States patent.

Jazz Photo v. ITC, 264 F.3d 1094 (Fed. Cir. 2001), cert. denied, 536 U.S. 950 (2002).

Eolas, Microsoft and Pellegrini

The recently filed petition in Pellegrini may ultimately decide the damage award in Eolas v. Microsoft.  Both cases discuss the international application of U.S. Patent Law, and the requirements of 35 U.S.C. 271(f)(1).

271(f)(1) provides for liability for causing components of a patented invention to be supplied for assembly abroad:

Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. 35 U.S.C. 271(f)(1).

At the district court level, Eolas won a $500 million verdict for Microsoft’s alleged patent infringement.  A portion of the award fell under 271(f).  In Eolas, 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 Eolas case is now on appeal.

Similarly in Pellegrini, no physical components were shipped from the U.S.  However, the evidence indicates that the accused infringer made sales and controlled manufacture of components from the U.S.  Unlike in Microsoft, the Federal Circuit found no infringement because no physical components of the patented invention were shipped from the U.S. 

Now, Pellegrini has asked the Supreme Court to review its case.  In addition to solidifying the meaning of the infringement statute, the outcome may also help determine the utimate damages in Eolas.

UPDATE: Professor Joe Miller reminded me of another related case that is pending appeal: AT&T v. Microsoft, (S.D.N.Y. 2004).  That case involved another “Golden Master” disk shipped by Microsoft.  In AT&T, the court held that object code contained on the disk constituted a component under 271(f) even though the object code on the disk was replicated abroad before being incorporated into the final product.

Contingent Patent Cases

Link: The American Jobs Creation Act of 2004 is ready for President Bush’s signature.   The act may be a boon for patent litigators who work on contingency. 

The IRS has previously forced victorious plaintiffs to pay taxes on the entire award, then taxed the attorneys for their contingent fee.  In essence, a large chunk of the earnings are double taxed.  The Jobs Creation Act of 2004 reportedly eliminates this double taxation — thus increasing the size of the pot to be split between the plaintiff and its attorneys.

Patent Case: On-Line Technologies v. Perkin-Elmer

On-Line Technologies v. Perkin-Elmer (Fed. Cir. 2004).

On-Line sued Perkin-Elmer for infringement of its patent that provides a method of increasing the light-path in a spectrometer with corrected astigmatism and reduced diffusion. (U.S. Patent No. 5,440,143).  After construing the claims, the district court granted summary judgment of noninfringement. 

On appeal, On-Line argued that the claims were too narrowly construed, and that the allegedly infringing mirrors having a toroidal surface fall within the claim limitation of a substantially spherical surface. Perkins-Elmer disagreed, noting that On-Line specifically omitted toroidal surfaced mirrors from its claims, and thus “that On-Line had dedicated surfaces of that shape to the public.”

The Federal Circuit agreed with On-Line that toroidal surfaces are covered by the claims.

We reach that conclusion because the specification makes clear that the claim language referring to spherical surfaces with cylindrical components includes toroidal surfaces. 

The court vacated and remanded this portion of the district court decision, but affirmed the rest.


Can Dependant Claims Define Structure of Means-Plus-Function Term?

Ghaly v. Hasbro – Re-mix

Ghaly has asked the Court of Appeals for the Federal Circuit for a rehearing based on perceived errors in its prior ruling on the case.  Rehearings are rarely granted.  However, in this case, Ghaly may have a point.

Ghaly’s patent claims an “entry control means” limitation.  A major bone of contention is whether the control means is limited to bi-stable switches (Hasbro’s position) or include momentary switches (Ghaly’s position).  In its initial decision, the CAFC sided with Hasbro, finding that the disclosure limited the claim to bi-stable switches. 

However, Ghaly raises two interesting points in his petition to rehear: 1) In its opinion, the CAFC defined momentary switches to be “like keys on a keyboard [that] revert to their original status the moment a user stops pressing on them.”  2) In the dependent claims, Ghaly disclosed that the “entry control means” could be a “key pad switch.”  Ergo, argues Ghaly, a key pad switch is a momentary switch.

Ghaly does not cite any cases directly on point, and thus raises the following legal question:

Should means-plus-function language be interpreted in light of the claims as well as the body of the specification?

Hasbro’s counsel, Tony Sitko disagrees with Ghaly’s interpretation of the case. He noted that “Hasbro thinks that the Court’s opinion speaks for itself, and quite frankly, that the Court got it right.”

Honeywell Enforces LCD Patent

This week, Honeywell sued some of the biggest names in the consumer technology industry for infringement of its patents related to liquid crystal display (LCD) technology. (Patent No. 5,280,371).  The patent claims a backlight diffuser consisting of two sheets of cylindrical lenses between the backlight and the screen. 

Included on the list of defendants are Apple, Casio, Dell, Kodak, Fuji, Fujitsu, Nikon, Nokia, Pentax, Sony, Toshiba, and more. The two largest producers of flat panel monitors, LG Philips and Samsung, have already taken licenses under the patent. 

Supreme Court: Patent Law Treds Into Political World of Outsourcing

Pellegrini Patent Figure

Gerald Pellegrini is an inventor in Worcester, Massachusetts.  For the past few years, he has been engaged in a patent dispute with Analog Devices, headquartered in Norwood, Massachusetts.  Now, the case has reached the United States Supreme Court.


Outsourcing of manufacturing and other jobs continues at an unprecedented pace, resulting in the loss of a great many jobs in the United States. American companies often retain their nerve center in the U.S., but delegate the physical labor to employees and contractors located abroad. Foreign outsourcing allows American companies to reduce their payroll and tax burden, and to avoid the more stringent U.S. environmental requirements. Now, the Court of Appeals for the Federal Circuit (CAFC) has offered an interpretation of the patent statute that provides American companies another incentive to outsource — avoidance of U.S. patent laws. Under the CAFC’s interpretation of the patent act, companies that would ordinarily be guilty of patent infringement can now copy patented products with impunity by simply shifting the manual labor of manufacturing outside the U.S.

Gerald Pellegrini, inventor of a specialized motor drive circuit, has taken steps to challenge the CAFC’s opinion as legally wrong and also bad public policy. Last week, Pellegrini filed a petition asking the U.S. Supreme Court to hear an appeal of the Analog Devices case. This patent infringement lawsuit, originally filed by Pellegrini in 2002, was partially dismissed because Analog’s accused products were manufactured by subcontractors outside the United States and were never physically present in the United States. Pellegrini is asking the Supreme Court to rule that a company who manufactures and sells components of a patented product from the U.S. cannot avoid liability for infringement simply by using outside foundries to fabricate their products.

The statute at issue is 35 U.S.C. Section 271(f)(1). This statute was enacted twenty years ago to prevent U.S. companies from avoiding patents by supplying components for foreign assembly.

Patent: ITC’s Enforcement Authority Upheld

Vastfame Camera v. International Trade Commission, et al. (Fed. Cir. 2004)

In the ITC, Fuji was granted a general exclusion order based in its patented disposable camera technology. Fuji then sought to enforce the order through the ITC against specific violators.

On appeal to the Federal Circuit, one alleged violator, VastFrame, questioned the ITC’s statutory authority to conduct enforcement proceedings against specific companies based on a general exclusion order. In its decision, the Appellate Panel found that there was no explicit statutory authority for enforcement proceedings, but that such authority was implied in Section 1337(b).

VastFrame next argued that Commission violated § 1337 in not allowing VastFame to present any invalidity defense. Based on statutory language, this time the Court agreed with VastFrame.

Because we hold that the Commission erred by not allowing VastFame to present its invalidity defense based on the clear language of § 1337(c), we do not reach the issue of whether VastFame’s due process rights were violated in this case.

Vacated and Remanded

Supreme Court: Merck v. Integra


Last week, the U.S. Supreme Court took a step toward accepting Merck’s petition of writ of certiorari by inviting the Solicitor General to file a brief expressing the views of the U.S. Government.

The appeal questions the limits of the safe harbor statute (35 USC 271(e)(1)) that permits drug manufactures to perform the experiments needed to obtain FDA approval of their drugs without incurring liability for patent infringement, even if their activities infringe other’s patent rights.

Some district courts had interpreted the act broadly to protect many types of infringing activities. However, the Federal Circuit, in Integra v. Merck, decided that safe harbor does not apply to early drug development activities. The case is now on appeal to the Supreme Court.

Background: Integra brought this patent infringement suit based on several patents relating to a short tri-peptide segment of fibronectin having the sequence Arg-Gly-Asp. The peptide sequence promotes cell adhesion to substrates in culture and in vivo.

Fuji Film v. ITC


Fuji Film v. ITC (Fed. Cir. 2004).

After an enforcement proceeding at the ITC, Fuji appealed.

The Appellate Panel made several rulings on claim construction. Additionally, the CAFC found that the Commission did not abuse its discretion in refusing to issue cease and desist orders against foreign respondents with no inventory in the United States and foreign respondents that did not directly import products into the United States.

Finally, Fuji argued that enforcement of the general exclusion order would be ineffective in light of the Customs Service’s new responsibilities in combating terrorism. The Federal Circuit rejected this arguments out of hand.

With respect to the first point, Fuji’s argument is similar to the argument advanced in the Hyundai case, which we rejected as “a thinly veiled and vaguely expressed dissatisfaction with the certification procedure it expects the Customs Service to devise when it implements the Commission’s order.” 899 F.2d at 1210. As we did in Hyundai, we reject Fuji’s suggestion that the Customs Service is incapable of enforcing the Commission’s general exclusion order effectively because of a lack of expertise and other priorities. To the extent that Fuji’s argument is directed at a perceived lack of resources or competence on the part of the Customs Service, we cannot address that problem through a judicial directive that would, in effect, require the Commission to alter its practices based on our unsupported suspicion that the Customs Service is incapable of performing the duties Congress has assigned to it.

Note: This is a companion case to VastFrame v. ITC (Fed. Cir. 2004).

Disclosure of species can support genus claims

Bilstad v. Wakalopulos (Fed. Cir. 2004) (03-1528).

Both Bilstad and Wakalopulos claim to have invented a device for sterilizing objects using ionizing radiation. Bilstad provoked an interference proceeding to determine which party was deserving of the patent.  The Patent Board (BPAI) rejected Bilstad’s claims for failure to meet the written description requirement because Bilstad had broad claims (genus) based on a more narrow disclosure (species).

On appeal, the Court of Appeals for the Federal Circuit (CAFC) vacated-in-part because the Board “failed to apply the appropriate standard in its analysis of whether Bilstad’s application included sufficient written description to support the count under 35 U.S.C. § 112.”

This court has continued to apply the rule that disclosure of a species may be sufficient written description support for a later claimed genus including that species. . . . If the difference between members of the group is such that the person skilled in the art would not readily discern that other members of the genus would perform similarly to the disclosed members, i.e., if the art is unpredictable, then disclosure of more species is necessary to adequately show possession of the entire genus.

Note: According to USPTO assignment data, the real parties in interest in this case appear to be Baxter International (Bilstad) and USHIO Technologies (Wakalopulos).

The Combover

Be careful of your hair design.  Frank & Donald Smith of Orlando, Florida own the patent on a method for styling hair to cover bald areas using only the individual’s own hair — AKA, the combover. (U.S. Patent No. 4,022,227). Actually, the patent issued in 1977 and appears to be expired.

Some potential infringers:

The Smiths were awarded the 2004 Ig Nobel Award from Harvard University for their contribution to the engineering field.

Other winners included the authors of a published report “The Effect of Country Music on Suicide” as well as Jillian Clarke, a Chicago high school student who investigated the scientific validity of the Five-Second Rule.


Laboratory Corporation of America v. Chiron

Laboratory Corporation of America v. Chiron (Fed. Cir. 2004) (03-1572).

Chiron developed a method of nucleic acid testing for Hepatitis-C virus in the human blood.  (U.S. Patent 5,712,088).  LabCorp supplies nucleic acid testing products for testing the presence and quantity of Hep-C virus and performs tests at its North Carolina facility. 

Chiron sued LabCorp in California for infringement only hours after LabCorp filed a declaratory judgment suit against Chiron in Delaware.  During the course of litigation, the Delaware District Court granted LabCorp’s motion to enjoin Chiron from prosecuting parallel litigation that was co-pending in the Northern District of California.  Chiron appealed the decision. At issue was whether to apply Federal Circuit or Third Circuit law:

In this case, the decision whether to follow Federal Circuit or Third Circuit law is critical: as we have previously observed, the Third Circuit has held that injunctions against litigation in other forums are not appealable, while under Federal Circuit law such injunctions are appealable under 28 U.S.C. § 1292(a)(1). Thus, we must decide which law applies.

Citing the importance of national uniformity in patent cases, the appellate panel held that injunctions arbitrating between co-pending patent declaratory judgment and infringement cases in different district courts are reviewed under the law of the Federal Circuit.

On review of the actual order to enjoin, the panel determined that the district court had not abused its discretion in enjoining the parallel California action. 


Payless Shoesource v. Genfoot


Payless Shoesource v. Genfoot (D. Kans. 2004) (03-4227-JAR).

After receiving a threatening letter from Genfoot, Payless filed for a declaratory judgment in Kansas, requesting a judgment of patent invalidity, unenforceability, and noninfringement of Genfoot’s patent on a boot. Genfoot, a Canadian company, moved to dismiss based on a lack of personal jurisdiction.


Sending an infringement letter, without more, is insufficient to satisfy the requirements of due process when exercising jurisdiction over an out-of-state patentee.

A web site may form the basis of personal jurisdiction. Genfoot’s website, however, does not allow for on-line sales. “Although a customer is interacting with the web sites, this interaction alone likely is not sufficient for minimum contacts without a more substantial exchange of commercial information.”

Genfoot sells to a national distributor. However, “doing business with a company that does business in the state is not the same as doing business in the state.”

The combination of all these elements may be sufficient to create minimum contacts with the state. … Therefore, Genfoot is subject to specific personal jurisdiction in Kansas.

Constitutionality of PTO Fee Diversion

Figueroa v. United States.

Figueroa is a class action suit filed on behalf of inventors in the Court of Federal Claims. The cases challenges the constitutionality of congressional diversion of USPTO fee revenue to other non-IP government programs.

The suit alleges three grounds of unconstitutionality: 1) an unconstitutional violation of the Patent Clause that directs congress “to promote the progress of science and the useful arts;” (2) an unconstitutional direct tax on private property, and (3) an unconstitutional taking of private property. However, the Court has trimmed the suit to solely examine whether the Patent Clause restricts the fee diversion.

Recently, the AIPLA filed an Amicus brief in the case.

While taking no position on the request for relief, AIPLA pointed out that fee diversion increases the burdens on examiners and decreases patent quality, thereby adversely impacting the Office’s ability to carry out the Constitutional command of promoting the progress of the useful arts.

Heath Hoglund, a patent attorney in Puerto Rico appears to be heading the charge for the class.

Experimental Use must be Non-Educational

Madey v. Duke University (M.D.N.C. Sept 20, 2004) (97CV01170).

Before arriving at Duke as a professor, Dr. Madey obtained several patents for microwave electric guns for use in free electron studies. (E.g., Patent 4,641,103). After Duke & Madey had a falling out, and the professor left the university.

Dr. Madley now asserts in a patent infringement suit that Duke continued to use his patented technology without license.

Duke requested summary judgment based on the experimental use defense. Duke contended that its use of the plaintiff’s patents was done “for the sole purpose of gratifying a philosophical taste, or curiosity, or for mere amusement,” and thus, that the use was experimental.

The court held that 1) the burden of proof for experimental use lies with the accused infringer, in this case Duke; and 2) the defense of experimental use cannot be applied to this case simply because the invention is used in a lab. “Duke [failed to establish] that its alleged use of Plaintiff’s patented inventions was not in keeping with its legitimate business as an educational institution but was instead solely for amusement, . . .”