Phillips v. AWH: The Amicus Briefs

Patent, Patent Cases 2004, ,

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Phillips v. AWH Corp. (Fed. Cir. 2005) (en banc).

As you may know, the Phillips case, which is presently awaiting decision en banc, is expected to be the next major decision impacting the issues of claim construction.  For those who are interested, here is a rundown of some of the Amicus Briefs that were filed in the appeal:

1. United States Patent and Trademark Office (USPTO): The Patent Office took the position that dictionaries should not be a primary reference for claim construction, in part because they are not used by examiners during prosecution. The PTO brief was filed jointly with the DOJ and FTC.

2. Intellectual Property Owners (IPO): The IPO brief, argues that the primary evidence of claim meaning should be found in the patent specification and prosecution history.  If a court must resort to extrinsic evidence to determine claim meaning, there should be no pre-determined hierarchy of importance.  The Court should only consider claim construction evidence in the record on appeal. The IPO brief was written by Paul Berghoff and Josh Rich of MBHB LLP.

3. Electronic Frontier Foundation (EFF): Judges should invalidate and Patent Office Examiners should reject ambiguous claims.  Claims should be given their broadest possible construction during prosecution and narrowest reasonable meaning thereafter.  Professor Joshua Sarnoff is the Counsel of Record on the EFF brief.

4. American Bar Association: Neither the specification nor dictionary should have primacy. Invalidity should play no role in claim construction, as that approach is contrary to the public notice function. The Appellate Court should defer to findings of fact made during claim construction.

5. American Intellectual Property Law Association (AIPLA): The fundamental standard that should govern claim construction is that a claim term must be construed from the perspective of a person of ordinary skill in the relevant art at the time the patent issued seeking to understand the term’s meaning from a study of the entire intrinsic record.

6. Intel, IBM, Google, Micron, and Microsoft: Where those construing patent claims focus on dictionary meanings of claim terms without an appropriate grounding in the specification and prosecution history, there is a danger the interpretation of patent claims will differ markedly from the true scope of the invention they seek to define. Indeed, there are so many different dictionary definitions for any given word that it is impossible to predict with any confidence what meaning a court will choose. The Intel brief was written by Stanford professor Mark Lemley.

7. Federal Circuit Bar Association (FCBA): Dictionaries should not be the primary focus of claim construction. Claim construction may require findings of fact, which should be reviewed for clear error.

8. International Trade Commission Trial Lawyers Association (ITCTLA): The specification and prosecution history should control. When dictionaries are used, technical dictionaries should have a rebuttable preference over general dictionaries. Claim language should not be narrowly construed for the sole purpose of avoiding invalidity. The claim interpretation should not be limited to only the embodiment described in the specification. Expert testimony should be allowed and evaluated as would any other piece of evidence. Deference to the trial court’s claim construction may be appropriate in some cases.

9. Biotechnology Industry Organization (BIO): Specification first.  Dictionaries second, when specification does not establish meaning of claim terms. Claims should never be narrowly construed for the sole purpose of avoiding invalidity.

10. Bar Association of District of Columbia (BADC) Patent Trademark Copyright (PTC) Section: The specification always provides context for the claims. The court should not determine the question of deference because it would be an advisory opinion.

11. Professors Wagner & Miller: The professors argue that the patent document should be the primary and preferred source of claim meaning — as long as it is clear, specific, and objective. Where the term is not clearly defined in the patent document, there should be a heavy presumption in favor of the ordinary meaning of the term. Dictionaries are not a panacea, but they offer the best opportunity to provide a term’s ordinary meaning with clarity, certainty, and predictability.

12. Public Patent Foundation (PUBPAT): Dan Ravicher of PUBPAT argued that "claim construction should never be impacted by considerations of validity." Consistent with Markman, subsidiary factual determinations by the trial court during claim construction should be reviewed for clear error.

13. Intellectual Property Law Association of Chicago (IPLAC): Courts may look to the plain meaning of claim terms but asserts that dictionaries should in general be subordinate to the patent specification and other intrinsic evidence when determining what is meant objectively by challenged claim terms. Dictionaries may be considered, but the guiding light must be what the hypothetical ordinarily skilled artisan would have understood by the claim terms – not in a vacuum, and not armed with only a technical or general purpose dictionary, but also with the full panoply of intrinsic evidence. Courts may receive expert witness testimony on this determination. Edward Manzo wrote the brief for IPLAC, and was given assistance by Brad Lyerla, Dean Monco, Pat Burns and Tim Vezeau.

14. Association of Corporate Counsel: Public notice is best served by first looking at claims, specification and prosecution history. Dictionaries should not be the primary source for claim construction. Because the guiding inquiry is the meaning of terms to those of ordinary skill in the relevant art, relevant technical dictionaries should usually be consulted before general dictionaries.

15. Infineon: The public notice function of patent claims is best served by looking first and foremost to the intrinsic specification, not an extrinsic dictionary definition, to interpret claim terms.

16. Boston Patent Law Association: Dictionaries should not be the primary source of claim construction because they do not stay current, are not necessarily authoritative, and because meaning is not always found in books. Validity and claim construction should be kept separate.

17. Connecticut Intellectual Property Law Association: Inflexible rules of construction are ineffective in interpreting the widely varying universe of language found in patent claims.

18. Medrad, Inc: Claim construction should be based upon the intrinsic evidence (spec, drawings, cited prior art, and prosecution history).

19. NYC Association of the Bar: Dictionary definitions should not provide the primary source of meaning or a separate restriction on claim coverage. Validity should be considered during claim construction. Expert testimony can provide important information. Deference to the trial court’s claim construction findings is blocked by procedural and practical obstacles.

20. New York IP Law Association, et. al.:

21. Norvatis:

22. Oregon Patent Law Association:

23. Parus Holdings:

24. Pharmaceutical Patent Attorneys:

25. San Diego IP Law Association:

26. Sughrue Mion: Claims should be interpreted as of the time of filing or earlier. The patent document provides the best notice of the claim’s meaning. Deference should be accorded to a trial court’s factual findings underlying claim construction.

27. VISA USA and Mentat:

28 Wisconsin Alumni Research Foundation (WARF), UVA, Yale, etc.:

Party Briefs:

1. Edward H. Phillips

2. AWH Corporation

3. Phillips reply brief

Links:

  • Link: My review of the case published in Patent World magazine.

ASIDE:

Interestingly, Mr. AWH Phillips was a famous economist who discovered a consistent inverse relationship between the rate of wage inflation the rate of unemployment.

Kangaroo Court

Patent, Patent Cases 2004

This trademark opinion is so good, I wanted to quote the entire thing:

Klein-Becker v. Bodyworx.com (Western District of Texas, July 21, 2004)

BE IT REMEMBERED on the 21st day of July 2004 and the Court took time to make its daily review of the above-captioned case, and thereafter, enters the following:

When the undersigned accepted the appointment from the President of the United States of the position now held, he was ready to face the daily practice of law in federal courts with presumably competent lawyers. No one warned the undersigned that in many instances his responsibility would be the same as a person who supervised kindergarten. Frankly, the undersigned would guess the lawyers in this case did not attend kindergarten as they never learned how to get along well with others. Notwithstanding the history of filings and antagonistic motions full of personal insults and requiring multiple discovery hearings, earning the disgust of this Court, the lawyers continue ad infinitum. On July 20, 2004, the Court’s schedule was interrupted by an emergency motion so the parties’ deposition, which began on July 20, would and could proceed until 6:30 in the evening. No intelligent discussion of the issue was accomplished prior to the filing and service of the motion, even though the lawyers were in the same room. Over a telephone conference the lawyers, of course, had inconsistent statements as to the support of their positions. On July 20, 2004, the Court entered an order allowing the plaintiffs/counter-defendants until July 23, 2004 (two days from today) to answer a counterclaim. Yet, on July 21, 2004, Bodyworx.com, Inc.’s lawyers filed a motion for reconsideration of that Court order arguing the pleadings should have been filed by July 19, 2004.

The Court simply wants to scream to these lawyers, “Get a life” or “Do you have any other cases?” or “When is the last time you registered for anger management classes?”

Neither the world’s problems nor this case will be determined by an answer to a counterclaim which is four days late, even with the approval of the presiding judge.

If the lawyers in this case do not change, immediately, their manner of practice and start conducting themselves as competent to practice in the federal court, the court will contemplate and may enter an order requiring the parties to obtain new counsel. In the event it is not clear from the above discussion, the Motion for Reconsideration is DENIED. SIGNED this 21st day of July 2004.

In more refreshing news, Phil Mann reports that “Sanity Returns to Court of Appeals.” (Federal Circuit).

I can’t believe it. Maybe I’m wrong (I’ll re-read the case Tuesday). But it sure seems the Court of Appeals has finally let common sense influence one of its decisions.

Yahoo & Inktomi chip away at Teknowledge patent

Patent, Patent Cases 2004

Teknowledge_patent

District court has no power to redraft claim language to change its ordinary meaning.

Teknowledge v. Akamai (N.D. Cal. 2004) (C 02-05741 SI).

In the Summer of 2002, Teknowledge sued Akami, Inktomi, Yahoo, Microsoft, and Netscape for infringement of its patent involving “automatic retrieval of changed files by a network software agent”. (US6029175). As part of the litigation, Yahoo and Inktomi filed for summary judgment of invalidity of some claims.

In order to avoid summary judgment of invalidity for claim 29, Teknowledge argued that a typographical error existed in the patent, and that the court should redraft the claim based on the intended meaning. Judge Illston disagreed, citing the “clear line of Federal Circuit authority” that bars district courts from re-drafting claims to change their ordinary meaning, “even if the ordinary meaning produces a nonsensical result. (citing Chef America). Because the ordinary meaning produced a nonsensical result, the Court found the claim invalid.

Summary Judgment Granted to Yahoo & Inktomi.

Citing the ongoing litigation, Yahoo’s attorney had no comment.

Patent’s transition language limits its use as an anticipatory reference

Patent, Patent Cases 2004

Weight_loss_drug
In re Morrison (BPAI 2004) (unpublished opinion).

Acarbose is an oral alpha-glucosidase inhibitor approved for use in the management of non-insulin-dependent diabetes mellitus (NIDDM). In 2001, James Morrison applied for a patent for using acarbose in a sustained release matrix as a weight loss stimulant. The PTO examiner assigned to the case rejected the claims as anticipated by prior art.

One reference cited by the examiner suggested the use of acarbose as a weight loss stimulant to be used alongside a lipase inhibitor. However, the Board overruled the Examiner’s rejection because the reference included the language “consisting essentially of” when describing the acarbose-lipase-inhibitor combo.

The basic and novel characteristics of the claimed composition do not include inhibition of lipase enzymes. Thus, the addition of a lipase inhibitor would materially affect the basic and novel characteristics of the claimed composition. The claims do not read on the compositions disclosed by Bremer, which all contain a lipase inhibitor. The rejection under 35 U.S.C. § 102(b) is reversed.

REVERSED, 37 CFR § 1.196(b)

Echostar wins appeal: DISH Network found to not infringe patent

Patent, Patent Cases 2004

Irdeto Access v. Echostar (Fed. Cir. 2004).

Irdeto’s patent is directed to a system for controlling the broadcast of digital information signals by using three types of complementary encryption and decryption keys — “service keys,” “group keys,” and “box keys.”  (U.S. Patent No. 4,531,020).  Irdeto sued Echostar, arguing that Echostar’s DISH Network infringed the patent.  On summary judgment, the district court granted summary judgment to Echostar, finding that Echostar’s product did not infringe.  The Appeal revolved around the definition of the term “group.”

Irdeto, in effect, argues is that even after telling the PTO and the public that given the absence of ordinary meaning in the art for the term “group,” the specification sets forth the full intended scope of that term, a patentee can nonetheless later lay claim to a broader, general-usage dictionary meaning of “group” absent explicit narrowing statements in the specification.  This cannot be.  … [W]hile the specification does not contain any statements of explicit disavowal or words of manifest exclusion, it repeatedly, consistently, and exclusively uses “group” to denote fewer than all subscribers, manifesting the patentee’s clear intent to so limit the term.  The specification also contains no affirmative indication that group can consist of all subscribers within the system.  A reasonable competitor reading the patent could only understand “group” to refer to a subset of all subscribers.  The claims must be limited accordingly.

Summary Judgment of Noninfringement Affirmed.

Patent Case: Landmark Decision Strengthens Attorney-Client Privilege

Patent, Patent Cases 2004

In a landmark decision, a panel of eleven Federal Circuit judges has overruled their prior precedent, relieving accused patent infringers of the feared "Quantum Dilemma."

Willful patent infringement brings with it the potential for treble damages (3x), usually resulting in multi-million dollar awards. (35 USC § 284). Prior cases have held that an important factor for determining willfulness is whether the accused infringer obtained an opinion of counsel that presents a strong case for invalidation or noninfringement.

During litigation, presentation of the exculpatory opinion as evidence triggers broad waiver of attorney-client privilege. Under prior precedent, failing to present the opinion conversely leads the court to an inference that either the opinion was not exculpatory or that there was no opinion of counsel.

The modified Hobson’s choice is known as the Quantum Dilemma, based on the case of Quantum v. Tandon.

In their en banc decision written by Judge Newman, the appellate court held that no adverse inference should flow from a party’s refusal to present an exculpatory opinion of counsel.

We now hold that no adverse inference that an opinion of counsel was or would have been unfavorable flows from an alleged infringer’s failure to obtain or produce an exculpatory opinion of counsel. Precedent to the contrary is overruled.

The Case: KNORR-BREMSE v. DANA CORP. (Fed. Cir. 2004) (01-1357) (en banc).

Knorr-Bremse is a German company, but is the owner of a U.S. patent on Disk Brake technology. (U.S. Patent No. 5,927,445). Dana Corporation and other defendants were found liable for infringement. And, based on an inference of an unfavorable counsel, the defendants were found liable for willful infringement. Although no actual damages were awarded, because of the finding of willful infringement the court awarded partial attorney fees under 35 U.S.C. § 285.

During litigation, the defendants told the court that they had consulted European and United States counsel concerning Knorr-Bremse’s patents, but declined to produce any legal opinion or to disclose the advice received, asserting the attorney-client privilege. The district court found that "It is reasonable to conclude that such opinions were unfavorable."

The Decision:

In its decision, the Court answered four questions revolving around willfulness:

In the first question, the Court based its response on the strong historical significance of attorney-client and work-product privileges.

1. When the attorney-client privilege and/or work-product privilege is invoked by a defendant in an infringement suit, is it appropriate for the trier of fact to draw an adverse inference with respect to willful infringement?

The answer is "no." Although the duty to respect the law is undiminished, no adverse inference shall arise from invocation of the attorney-client and/or work product privilege.

In the second question, the Court found that there is no legal duty of a potential infringer to consult with counsel.

2. When the defendant had not obtained legal advice, is it appropriate to draw an adverse inference with respect to willful infringement?

The answer, again, is "no."

Question three revolved around the case at hand.

3. If the court concludes that the law should be changed, and the adverse inference withdrawn as applied to this case, what are the consequences for this case?

As an answer, the Court vacated the willfulness finding and remanded for a redetermination of willfulness in the absence of the inference of a nonexculpatory opinion.

The final question, number four, offered the Court the opportunity to create a clear rule that mounting a substantial defense to infringement should defeat a willfulness finding.

4. Should the existence of a substantial defense to infringement be sufficient to defeat liability for willful infringement even if no legal advice has been secured?

The answer is "no."

The Court concluded that willfulness involves a "totality of the circumstances" and should not be limited to a per se rule.

The Dissent:

Dissenting in part, Judge Dyk argued that enhanced damages for willfulness are punitive damages. Punitive damages are awarded to "punish reprehensible behavior." As such, there is a "substantial question as to whether the due care requirement is consistent with the Supreme Court cases holding that punitive damages can only be awarded in situations where the conduct is reprehensible. … I would recognize that the due care requirement is a relic of the past and eliminate it as a factor in the willfulness and enhancement analysis."

Note: Paul Berghoff and Joshua Rich of McDonnell Boehnen Hulbert & Berghoff took part in an amicus curiae brief submitted by the Intellectual Property Owners Association.

According to Dan Boehnen, also of McDonnell Boehnen, "clients often spend thousands of dollars to obtain window-dressing opinions that are designed solely to defend against a charge of willful infringement. Also, clients sometimes feel compelled to have different law firms handle opinion work versus litigation work. All that artificial conduct is likely to be swept away by the Court’s recent decision."

Cite as Dennis Crouch, Landmark Decision Strengthens Attorney-Client Privilege, Patently-O, September 14, 2004 available at https://patentlyo.com.

Federal Circuit: Injunction to “not infringe the patent” is overly broad.

Patent, Patent Cases 2004

International Rectifier (IR) v. IXYS (Fed. Cir. 2004) (04-1014).

On the day that its patent issued, IR filed a patent infringement suit against IXYS.  IR’s patent relates to semiconductor device (MOSFET) packages having a higher current capacity without increased size. (U.S. Patent No. 6,476,481).  The issue for appeal is “whether the [permanent] injunction granted the patentee is overly broad, and, if so, what is the proper remedy.”

The Federal Circuit rejected the injunction because it was overly broad under Rule 65(d) of the Federal Rules of Civil Procedure. 

In the patent infringement context, this court has rejected as overly broad a permanent injunction that simply prohibits future infringement of a patent. … [T]he trial court’s injunction in this case does not meet the specificity requirements of Rule 65(d).  The injunctive language set forth in the trial court’s judgment prohibits infringement by “any device covered by one or more of Claims 1 through 5” of the ‘481 patent. 

Thus, the Appellate Panel vacated the injunction entered by the trial court and remanded the case with instructions to issue an injunction that meets the specificity requirements of Rule 65(d).

Comment: One interesting dichotomy is that the International Trade Commission (ITC) commonly issues broad injunctions or import restrictions that prohibit unlicensed entry of products that infringe certain patents.  For example, in the recent plastic bag case, the ITC issued a general exclusion order prohibiting the unlicensed entry of plastic grocery bags that infringe patent 5,188,235.

 

Patent Law: Disclosure-Dedication Rule Takes Shape

Patent, Patent Cases 2004

Leaf Blower

Toro v. White Consolidated (WCI) (Fed. Cir. 2004).

The Toro Company sued White for infringement of its patent on a leaf blower. (U.S. Patent No. 4,694,528).  The Minnesota district court granted summary judgment of non-infringement under the doctrine of equivalents — finding that White’s two-piece cover/ring was dedicated to the public in Toro’s patent because it was disclosed, but not claimed. (Citing Johnson & Johnson v. R.E. Service). The Federal Circuit (LINN) agreed, finding that the disclosure of unclaimed subject matter “triggers the disclosure-dedication rule.”

Because J&J had been decided after claim construction in this case, Toro also argued that the issues should be re-examined in light of the new law.  The Appellate Panel Disagreed.

While Toro argues that Johnson & Johnston represents a change of law, its argument is misplaced.  Johnson & Johnston did not alter our precedent as to claim construction, the issue at the crux of this case…. The doctrine of the law of the case is intended to prevent just the kind of speculation and second-guessing invited by the appellant here, in the broader interests of certainty, finality, and legal efficiency. The law is well-settled; decisions once made are not to be disregarded except for exceptional circumstances. Such circumstances are not evident here.

 

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Football Invention Tests Quarterback Timing

Patent, Patent Cases 2004

Football timer

In re Oister (BPAI 2004).

On appeal to the Board of Patent Appeals and Interferences, the patent applicants argued that their “ball having integrated timers for measuring or counting at least one time period” was novel over the asserted prior art. The Board agreed that the device was patentable because the prior art did not use a predetermined countdown time period.

Sample Claim from the Patent Application:

21. An apparatus comprising:

a ball having a surface and at least one internal cavity;
at least one timer for measuring at least one predetermined time period; and
the timer integrated with the ball.

According to USPTO records, the patent application (10/014,297) is assigned to the Classic Sports Company of Denver.

Out of Left Field: MLB Sued for Patent Infringement

Patent, Patent Cases 2004

Major League Baseball (MLB) is the subject of a new patent infringement lawsuit.  A Texas based patent holding company has sued MLB Advanced Media for infringement of its patents covering “computer simulation” of live events, such as baseball games. (e.g., Patent No. 6,204,862).  The case, filed in Austin, revolves around MLB’s Internet-based products.

The following specific MLBAM products and services are implicated in the lawsuit: (1) Gameday, (2) Condensed Games, (3) Searchable Video (formerly called Custom Cuts), (4) Highlight Reels and (5) Fantasy Player Tracker. (DDB Press Release).

The four asserted patents are members of a single “patent family” and date back to a patent application filed in 1990.  David Barstow, Plaintiff DDB Technologies’ head honcho, is listed as an inventor.

Last year CBS’s SportsLine settled with DDB — licensing its patent portfolio on a non-exclusive basis. (Link).

Tables Turned: RIAA Accused of Patent Infringement

Patent, Patent Cases 2004

RIAA Patent Infringement Lawsuit

Invent Blog: An online music distributor has reportedly sued the Recording Industry Association of America (RIAA) for patent infringement.  The asserted patent claims a method for generating a unique identifier based on content of a datafile, then later using the identifier to track files containing identical content.  (U.S. Patent No. 5,978,791).  The RIAA is accused of using the patented technology to track down peer-to-peer (P2P) copyright violators.

In a suit filed with the Los Angeles District Court, Altnet maintains that the RIAA, Loudeye subsidiary Overpeer and a fellow anti-piracy operation, MediaDefender, have all violated a patent it holds covering the identification of files on a P2P network using digital fingerprint technology. (The Register).

Altnet is a partner with Kazaa, and according to cNet news, “has been trying for several years to persuade record labels and music studios to allow Altnet to sell authorized versions of their products through the Kazaa file-swapping network.” 

The lawsuit was filed in the Southern District of California.

 

Federal Circuit: National Instruments v. MathWorks

Patent, Patent Cases 2004

National Instruments v. MathWorks (Fed. Cir. 2004) (03-1540) (unpublished opinion).

National Instruments (NI) sued MathWorks overs for infringement of its patented method of creating data flow diagrams.  The jury sided with NI and the district court denied Mathworks’ subsequent motion for JMOL.

On appeal, MathWorks raised several issues and argued that the permanent injunction issued by the district court went impermissibly beyond the jury’s findings.  Specifically, MathWorks argued that its Simulink software had many non-infringing use and that a product based injunction was unduly broad.  However, the Appellate Panel, reviewing for an abuse of discretion, affirmed — holding that the trial court was sufficiently cognizant of MathWorks arguments in its decision.

MathWorks VP Richard Rovner outlined their position going forward:

First, The MathWorks will abide by the decision of the court and will make modifications to the Simulink product.

Second, the decision affirms that customers can continue to use previously purchased Simulink products and that The MathWorks can continue to provide technical support for these products.

Third, The MathWorks remains fully committed to the Simulink product family and, consistent with the court’s decision, will continue to support and enhance it.

National Instruments Press Release
MathWorks Press Release

Monsanto wins patent infringement appeal over Tennessee farmer

Patent, Patent Cases 2004

 Monsanto v. Ralph (Fed. Cir. 2004) (03-1243).

Mr. Ralph appealed from a Missouri court judgment imposing sanctions for discovery abuses, violation of court orders, repeated attempts to conceal misconduct and a three million dollar damage award for patent infringement and an alternative award of liquidated damages for breach of contract.

This case falls in line with the recent McFarling opinion involving Monsanto’s Roundup-Ready seeds.  Mr. Ralph owns a Tennessee farm.  He purchased Roundup-Ready seeds and then reportedly saved seeds from the F1 generation — a violation of the patent and the licensing agreement.  During discover, Ralph burned some seed stockpiles — apparently to avoid discovery.

The Federal Circuit agreed with Monsanto that the district court properly applied sanctions for discovery abuses and properly calculated a reasonable royalty. However, the Appellate Panel did find that Monsanto’s “one-size-fits-all” 120 multiplier for breach of contract failed to distinguish between various modes of breach — and thus was not enforceable.

Conclusion

Although we have determined that the contract-based damages are excessive in light of our recent decision in McFarling, the trial court did not abuse its discretion in its choice of sanction or its denial of Ralph’s post-judgment motion, and Ralph has not shown that the jury award for patent infringement is “grossly excessive or monstrous,” clearly not supported by the evidence, or based only on speculation or guesswork.  Accordingly, the decision of the district court is

CAFC refuses to examine Request for Comments (RFCs) when defining ordinary meaning of claim terms

Patent, Patent Cases 2004

ACTV

Many Internet standards are initially developed in papers known as Requests for Comments (RFCs). A purpose of an RFC is to collect propose a common language for facilitating development and to collect commentary. Often, however, the RFCs become the authoratitive document describing a particular function. For example, RFC-1738 was created by Berners-Lee in 1994 and is thought of as an authoritative, unbiased source relating to the meaning of the term “URL.” The Federal Circuit, however, has refused to allow RFCs to take an authoritative position in claim construction. ACTV v. Disney, 346 F.3d 1082 (Fed. Cir. 2003). In ACTV, the Appellate Court differentiated RFC documents that attempt to shape meaning of terms from dictionaries that reflect established usage.

Juicy Whips up on Orange Bang: CAFC Affirms Entire Market Value Rule

Patent, Patent Cases 2004

Juicy Whip v. Orange Bang (Fed Cir. 2004)

 

by Joseph Herndon

 

This is the latest appeal in the lengthy litigation between Juicy Whip and Orange Bang.  (U.S. Patent No. 5,575,405). On remand to determine damages, the district court rejected Juicy Whip’s argument that it would have sold more syrup “but for” Orange Bang’s infringement.  Juicy Whip appealed. 

 

Juicy Whip claimed that there exists a functional relationship between its patented dispenser and the unpatented syrup, a link adequate to justify recovery of lost profits.  The CAFC agreed and vacated the jury’s award and remanded this case back to the district court for a third time to allow Juicy Whip to prove lost profits on its syrup sales.

 

The CAFC followed the “functional unit” test set forth in Rite-Hite, e.g., that the entire market value rule is a principle of patent damages that defines a patentee’s ability to recover lost profits on unpatented components typically sold with a patented item, if both constitute a functional unit. 

 

The CAFC found that Juicy Whip’s dispenser and the syrup were analogous “to parts of a single assembly … as the syrup functions together with the dispenser to produce the visual appearance that is central to Juicy Whip’s ’405 patent.”  The Court explained that “a functional relationship between a patented device and an unpatented material used with it is not precluded [from profit determination] by the fact that the device can be used with other materials or that the unpatented material can be used with other devices.” 

Note: Joseph Herndon is a law clerk and at the intellectual property firm McDonnell Boehnen Hulbert & Berghoff and is a registered patent agent.  Joe has a stellar background in electrical engineering and plans to graduate from law school in 2005. herndon@mbhb.com.

Means-Plus-Function Limitation Rarely Found When Claim Lacks “Means” Language

Patent, Patent Cases 2004

Lighting World v. Birchwood Lighting (Fed. Cir. 2004).  

In its complaint, Lighting World asserted that Birchwood’s fluorescent lamp fixtures infringed Lighting World’s patents. At the close of Lighting World’s case-in-chief, the court granted Birchwood’s motion for JMOL on the ground that Lighting World had not shown equivalence under the doctrine of equivalents.

Lighting World appealed the District Court’s claim construction determination that the term “connector assembly” was a means-plus-function limitation.  The unanimous Appellate Panel vacated, finding that Birchwood did not demonstrate that section 112 ¶ 6 should apply.

[W]e have seldom held that a limitation not using the term “means” must be considered to be in means-plus-function form.  In fact, we have identified only one published opinion since Greenberg (Fed. Cir. 1996) in which we have done so, and that case provides a useful illustration of how unusual the circumstances must be to overcome the presumption that a limitation lacking the word “means” is not in means-plus-function form. 

 

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Patent Infringement: Recognition of a problem does not render the solution obvious

Patent, Patent Cases 2004,

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Cardiac Pacemakers (CPI) v. St. Jude Medical

(Fed. Cir. 2004).

CPI (Guidant) controls several patents relating to implantable cardiac defibrillators (ICDs) that are permanently installed under the skin, and that determine abnormal cardiac activity and treat that activity by delivering electrical shocks to the heart muscle in appropriate strengths. CPI charged St. Jude with infringement of two of these patents.

A jury found both patents valid and enforceable, but only one infringed.  After trial, the district court granted St. Jude’s motions for JMOL — holding both patents invalid and not infringed. The court also granted a new trial (in the event of reversal) and awarded sanctions for witness misconduct. CPI appealed the judgment of invalidity and non-infringement.

The Appellate Panel agreed with CPI and reversed, finding that the district court improperly granted JMOL. With respect to obviousness, the Federal Circuit found a nonobvious difference between the prior art’s recognition of a problem and the patented solution.

We think that the district court, in granting JMOL, applied an incorrect standard to the ultimate question. Recognition of the problem of treating complex heart arrhythmias does not render obvious the eventual solution. Recognition of a need does not render obvious the achievement that meets that need. There is an important distinction between the general motivation to cure an uncured disease (for example, the disease of multiple forms of heart irregularity), and the motivation to create a particular cure.

The lower court had also invalidated the patent based on a failure to state a best mode for supplying batteries. However, the Appellate panel found that there was “evidence before the jury that persons knowledgeable in the field of the invention would know the sources of batteries for pacemakers and related devices. There was no evidence of concealment, and the jury had evidence that the Honeywell battery was published in a publication for battery specialists. There was substantial evidence whereby a reasonable jury could have found that the best mode requirement had not been violated. The grant of JMOL on this issue is reversed, and the jury verdict is reinstated.”

The Appellate Panel continued: “The jury verdicts on the issues of obviousness and best mode were not against the manifest weight of the evidence.” Thus, no new trial may be held on the issues of obviousness or best mode. However, a new trial was warranted with respect to infringement because the district court erred in its claim construction.

AFFIRMED IN PART, REVERSED IN PART, AND REMANDED.

Update:
Peter Zura at the 271 Patent Blog has more information on the case.
Reuters story.

Xechem v. University of Texas

Patent, Patent Cases 2004

Xechem v. University of Texas (Fed. Cir. 2004) (03-1406).

Xechem brought several claims against the University of Texas that were dismissed after the University asserted Eleventh Amendment and state immunity from suit. The issue on appeal is whether the University is subject to suit in federal court to obtain correction of inventorship in the patents flowing from a collaboration between Xechem and the University. (US-5877205-A). The Federal Circuit affirmed the lower court’s dismissal based on Supreme Court precedent.

Comment: In this case, the court (Newman, J.) seemed to almost go out of its way to emphasize the strong points of Xechem’s argument — giving an indication that it would, but for Supreme Court precedent, refuse to grant immunity to the university.  I would predict that this case will be granted a Writ of Certiorari.

— Dennis Crouch

Federal Circuit: DMCA does not create a new property right for copyright owners

Patent, Patent Cases 2004,

garage_door
Chamberlain Group v. Skylink Technologies (Fed. Cir. 2004).

In a well reasoned opinion, the Federal Circuit (GAJARSA) affirmed a district court’s dismissal of a suit arising under anti-trafficking provisions of the Digital Millennium Copyright Act (DMCA).

The DMCA does not create a new property right for copyright owners.  Nor, for that matter, does it divest the public of the property rights that the Copyright Act has long granted to the public.  The anticircumvention and anti-trafficking provisions of the DMCA create new grounds of liability.  A copyright owner seeking to impose liability on an accused circumventor must demonstrate a reasonable relationship between the circumvention at issue and a use relating to a property right for which the Copyright Act permits the copyright owner to withhold authorization-as well as notice that authorization was withheld.  A copyright owner seeking to impose liability on an accused trafficker must demonstrate that the trafficker’s device enables either copyright infringement or a prohibited circumvention.  Here, the District Court correctly ruled that Chamberlain pled no connection between unauthorized use of its copyrighted software and Skylink’s accused transmitter.  This connection is critical to sustaining a cause of action under the DMCA.  We therefore affirm the District Court’s summary judgment in favor of Skylink.

This case involved electronic garage door technology with a “rolling code” to encrypt signals transmitted signals.  Skylink distributes a universal remote that can decode the encrypted rolling code.  In an attempt to control the aftermarket in remote control units, Chamberlain sued.

The court’s basic premise is that an element of a DMCA cause of action is an underlying copyright violation — without such a violation, there can be no remedy.

Updates: According to Ernest Miller, the court rescued the DMCA from “one of its most absurd aspects.” He is still concerned, however, that the Act, even as narrowly interpreted, will continue “stifling creativity and innovation.” More on the story from copyfight.

Federal Circuit: Disclosure of only a single embodiment does not result in disavowel of claim scope

Patent, Patent Cases 2004

Home Diagnostics v. LifeScan (Fed. Cir. 2004) (03-1370).

After construing the claims in this patent infringement lawsuit, the Northern District of California Court held that Home Diagnostics’ (HDI) blood glucose meters do not infringe LifeScan’s patent on the use of reflectance to determine blood glucose concentration.  (U.S. Patent No. 6,268,162).

On appeal, LifeScan argued that the lower court’s claim construction should be overturned.  Specifically, LifeScan argued that the district court overlooked “the accepted contextual meaning” of the method of stopping a measurement period and unduly limited terms to those disclosed in a preferred embodiment.  HDI argued that any broader interpretation was disavowed by LifeScan when they disclosed only a single embodiment.

The Federal Circuit agreed with LifeScan, following their own precedent that disclosure of a single embodiment “does not mean that the patent clearly and unambiguously disavowed other embodiments.” 

Reversed-in-part, Vacated-in-part, and Remanded