Nystrom v. Trex: Take Two

Nystrom v. Trex Co. (Fed. Cir. 2005). This summer’s Phillips v. AWH decision shifted the focus of claim construction from extrinsic evidence (e.g. dictionaries) to the patent specification. After agreeing to rehear the Nystrom v. Trex appeal to address the effects of Phillips, a Federal Circuit panel (Mayer, Gajarsa, and Linn) has withdrawn its June 28, 2004 opinion (in which Gajarsa had dissented) and has substituted a new unanimous opinion that reaches a different claim construction, resulting in a different case outcome.

Nystrom’s patent related to a design for deck boards that are shaped to shed water. The main claim construction issue related to whether the claim term “board” was limited to boards made of “wood cut from a log” or whether a broader dictionary definition (e.g. “a flat piece of wood or similarly rigid material adapted for special use”) would apply.  In its pre-Phillips opinion, the panel relied on the dictionary definition and claim differentiation (a dependent claim specifically called for “wood cut from a log,” while broader claims did not) to determine that “board” was to be construed broadly.

In its post-Phillips opinion, the same panel noted that Nystrom’s specification and the prosecution history consistently described boards made of wood cut from a log.  The panel dismissed claim differentiation as a basis for its previous broad construction: “[d]ifferent terms or phrases in separate claims may be construed to cover the same subject matter where the written description and prosecution history indicate that such a reading of the terms or phrases is proper.” Regarding the broad dictionary definition previously relied on, the panel noted:

What Phillips now counsels is that in the absence of something in the written description and/or prosecution history to provide explicit or implicit notice to the public – i.e., those of ordinary skill in the art – that the inventor intended a disputed term to cover more than the ordinary and customary meaning revealed by the context of the intrinsic record, it is improper to read the term to encompass a broader definition simply because it may be found in a dictionary, treatise, or other extrinsic source.

Importantly, there was no clear disavowal of claim scope in this case – Phillips doesn’t require as much – but nothing in the intrinsic record supported a construction broader than “wood cut from a log.”

Marcus Thymian is still a Minnesota Vikings fan and has been involved with several recent litigations in which claim construction turned on intrinsic extrinsic.  He is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in < ?xml:namespace prefix = st1 />Chicago.  [Marcus Thymian’s Bio]

Microsoft Asks Supreme Court to Hear $500 Million Eolas Appeal


Microsoft v. Eolas (on petition for certiorari).

At trial, Eolas won a half-billion dollar judgment against Microsoft after the jury found that Microsoft’s Internet Explorer violated an Eolas patent.  On appeal at the Federal Circuit, Microsoft won a new trial on several issues, but lost a major legal contention that allows Eolas to obtain extraterritorial damages under Section 271(f) of the Patent Act. 

Now, Microsoft has asked the Supreme Court to determine whether the Federal Circuit erred in determining that software code can qualify as a “component” of a patented invention under 271(f).

Question Presented: Whether 35 U.S.C. 271(f) — which imposes infringement liability on one who “supplies” “components” of a patented invention from the United States for “combination” abroad — is satisfied if no physical parts are suppled from the U.S. and all that is supplied is software code that foreign computer manufacturers use to program computers that are made and sold outside the U.S.?

Microsoft’s brief in support of the petition outlines jumbled nature of CAFC precedent on this point — Specifically noting cases such as:

  • Deepsouth (“these acts of Congress do not, and were not intended to, operate beyond the limits of the United States”);
  • Pellegrini (shipment of design instructions do not qualify under 271(f));
  • Bayer v. Housey (271(g) limited “component” to physical products);
  • NTP v. RIM (“it is difficult to conceive of how one might supply or cause to be supplied all or a substantial portion of the steps of a patented method in the sense contemplated by the phrase ‘components of a patented invention’ in section 271(f)”).


Biagro v. Grow More (Fed. Cir. 2005).

Biagro v. Grow More (Fed. Cir. 2005).

Claim Construction: In a step-back from recent claim construction holdings, the Court of Appeals for the Federal Circuit held that an “attorney’s statements” made during prosecution “do not alter the ordinary meaning of the claim language.”

Biagro’s patents relate to a phosphorus-based fertilizer for plants.  Representative claim 1 requires a “phosphorous-containing acid or salt . . . in an amount of about 30 to about 40 weight percent.”

Grow More’s product contains phosphorous, but the final product does not contain any phosphorous acid (although it is created using phosphorous acids).  Biagro argued that the claims should be interpreted as requiring the “chemical equivalent” rather than actually requiring an acid in the final product.  Biagro also pointed to the prosecution history where the attorney had pointed to the phosphorous acid in two examples — when in fact those examples only included chemical equivalent amounts of phosphorous acid. The CAFC found Biagro’s arguments unappealing and affirmed the district court’s construction and dismissal.

Doctrine of Equivalents: Biagro had amended the claims during prosecution to include the “phosphorous acid,” but contended that Festo should not apply.  The CAFC disagreed:

Burden: Even at summary judgment, the patentee has the burden of showing that it can overcome the Festo presumption associated with a narrowing amendment.

Reason for the Amendment Merely Tangential: A narrowing amendment made when were claims were rejected but done without any discernible reason is presumed to be made for a patentable reason, and not for a reason merely tangential to the equivalent.

The prosecution history revealed no reason for the amendment, and therefore Festo could not show that the rationale underlying the amendment was only tangential to the accused nonmagnetizable equivalent. Similarly, in this case, since the prosecution history shows no reason for adding an upper limit to the concentration range, Biagro cannot claim that the rationale for the amendment is merely tangential.

Other Reason: The court rejected the Biagro’s reasoning that the patentee had believed the claims meant “chemical equivalent” when, in fact, they did not.

Summary judgment of noninfringement affirmed.



Appeals Court Affirms Unenforceability of Lemelson’s Patents Due to Prosecution Laches

PatSeminar053Symbol v. Lemelson (Fed. Cir. 2005).

Lemelson’s patents have priority dates of 1954 and 1956, but through skillful use of the patent rules, several patents have still not expired. 

In an infringement suit against Symbol, the district court found that the patents were unenforceable under the doctrine of prosecution laches — holding that the “18 to 39 year delay in filing and prosecuting the asserted claims . . . was unreasonable and unjustified.”

On appeal, the Court of Appeals for the Federal Circuit affirmed, finding that the lower court did not abuse its discretion in holding the patents unenforceable.

The court listed several “legitimate grounds” for filing a continuation in a patent:

  • Filing a divisional application in response to a restriction requirement (even if you defer filing the divisional until just before the parent issues);
  • Refiling rejected claims in order to present newly found evidence of unexpected advantage;
  • Filing a continuation to support broader claims; and
  • Refiling for other reasons that are “not unduly successive or repetitive.”

However, the panel found that refiling an application solely containing previously-allowed claims for the business purpose of delaying their issuance can be considered an abuse of the patent system — and can constitute laches.

The court was careful to note that a single delay in one particular application would not merit the extraordinary relief of unenforceability. However, a history of a series of delay may trigger laches. “Patent applications should normally be permitted to issue when they have been allowed and the statutory requirements complied with.”


  • Important inventions generally involve at least one continuation application — when filing a continuation, the attorney should consider whether it is justified under one of the listed legitimate grounds.
  • Because of the 1995 change in the law, this issue is becoming largely moot. Now patents have a 20–year term from the filing date rather than the old 17–years from issuance. 


Doctrine of Equivalents: Expert Testimony Must Include Limitation-by-Limitation Analysis

PatSeminar030Network Commerce v. Microsoft (Fed. Cir. 2005).

Network Commerce sued Microsoft for infringement of its e-commerce patent relating to the purchase of downloadable electronic content.  The district court awarded summary judgment to Microsoft, finding that the company did not infringe either literally or under the doctrine of equivalents (DOE).

Specifically, the lower court found that Network Commerce’s extension of the patent to include Microsoft’s metafile downloads would vitiate the claim requirement that the download an executable file or program.

On appeal, the CAFC did not reach the vitiation requirement.  Rather, the appellate panel found that even the basic requirements of element-by-element equivalents had not been sufficiently shown by the plaintiff because the expert declaration did not provide sufficiently specific testimony to prove a limitation-by-limitation analysis.

The expert declaration and other evidence relied on by Network Commerce supporting infringement by equivalents are generalized and do not provide particularized testimony and linking argument on a limitation-by-limitation basis. For this reason the evidence did not raise a genuine issue of material fact. Summary judgment of non-infringement under the doctrine of equivalents regarding metafiles was therefore proper.

Summary Judgment Affirmed


Government Secrecy Request Stalls IP Case.

PatSeminar029Crater Corp v. Lucent (Fed. Cir. 2005).

Crater holds a patent on a coupling device that operates underwater.  In a suit involving trade secret violations, the district court determined that the Government’s assertion of “Military and State Secret privilege” made it impossible for Crater to engage in discovery or to make out a prima facie case.  The court therefore dismissed the claims.

On appeal, the CAFC found that the lower court correctly sustained the government’s assertion of the state secret privilege, but erred in dismissing the case.

For the state secret privilege to be properly asserted, “the head of the pertinent government department must formally invoke the privilege on behalf of the government. Then, after reviewing the declarations of government officials and the circumstances surrounding invocation of the privilege, the court must determine whether assertion of the privilege is appropriate.”

After reviewing confidential documents submitted by the Government, the CAFC concluded that the Government had claimed a legitimate state secret.  Although the appellate panel recognized that proper resolution of the issues would be difficult in light of the state secret restriction on discovery, the court ordered that the facts of Crater’s claims must be further developed before making a determination of whether those claims should be dismissed.

In dissent, Judge Newman argued Crater should be given access to the Government documents and that the case should proceed in camera.

This case does not raise the constitutional debate about public trials; this is a commercial dispute, of interest only to the parties. It seems clear that the court’s requested remand cannot be implemented without risk of violating the secrecy order, with possible penalty. This is the third judicial cycle of this simple dispute. We should remand this case for in camera proceedings that would protect the information from public disclosure, and allow this dispute to come to closure. Trials in camera of issues subject to secrecy restraints are not new, and such trial would be the appropriate procedure in this case.


IP Issues in the Supreme Court Calendar

Noted attorney and author Hal Wegner has released his first review of IP cases for the October 2005 term of the Supreme Court.  Of the seven cases reviewed, two are awaiting oral argument (Unitherm and Illinois Tool); four are awaiting a certiorari decision (Schering-Plough, KSR, Lab. Corp. and eBay); and one is still before the CAFC (RIM v. NTP).

1) Unitherm v. Swift Eckrich: Appellate procedure question of when a court of appeals may overturn a civil jury verdict. Argument scheduled for November 2, 2005.

2) Illinois Tool Works v. Independent Ink: Question of whether a patent creates a rebuttable presumption of market power in a Sherman Act tying case. Argument scheduled for November 29, 2005.

3) FTC v. Schering-Plough: Whether pioneer-generic settlement duopoly settlement agreements are permissible when agreement falls within the scope of the patent. On petition for cert. Odds of being heard are good.

4) KSR v. Teleflex: Whether teaching-suggestion-motivation test for obviousness should be changed.  On petition for cert.  Odds of being heard are OK.

5) Lab. Corp. v. Metabolite: Whether a medical diagnosis method patent is invalid as non-patentable subject matter under Diamond v. Diehr, 450 U.S. 175, 185 (1981). On petition for cert. Odds of being heard are low.

6) eBay v. MercExchange: Whether the current de facto rule of an injunction always resulting from a finding of infringement and validity should be changed.  On petition for cert. Odds of being heard are low — although this is a volatile issue.

7) NTP v. Research in Motion: Extraterritorial reach of U.S. patent law.  Last fall, the court denied Pellegrini’s petition for certiorari in a somewhat similar case.  These issues will be heard by the Court in some case within the next two years.


Lexmark: Patentee May Include Conditions on Aftermarket Activities

ScreenShot025Arizona Cartridge Remanufacturers Assn. v. Lexmark Int’l. (9th Cir. 2005).

ACRA sued Lexmark for unfair business practices based on Lexmark’s “prebate” program that allows customers to receive $30 off the price of a printer cartridge if they agree to return the empty cartridge to Lexmark — rather than allowing a third-party remanufacturer to refill the cartridge. ACRA argued that this practice was a restriction on alienability that should be barred.

The district court granted summary judgment in Lexmark’s favor, finding that the restriction on further use was a valid agreement and that Lexmark’s statements about the pricing were accurate.

On appeal, the 9th Circuit found that the post-sale restriction was allowable because the product was patented. (citing Monsanto v. McFarling).  Post sale conditions are generally allowed if the good is “reasonably within the patent grant.”  The EFF filed a brief in the case that was largely ignored. 

DDC Commentary:

  1. For me, the interesting part of this opinion is that restrictions on alienation (resale/repair) of consumer goods are generally not enforceable unless the good in question is patented.
  2. In the wake of this and other cases, pundits are predicting that we will be seeing more “shrink-wrap” licenses restricting repair and modification attached to products that might need repair or modification.
  3. If you plan to take such an action, be sure that your product is patented. (Query — will a design patent be sufficient?)

Links to Further Commentary:



11th Circuit Allows Case Asserting Anticompetitive Pioneer/Generic Patent Settlement

Andrx Pharma v. Elan (11th Cir. 2005)

Andrx sued Elan for antitrust violations based on Elan’s enforcement of its patent and settlement agreement. The district court dismissed the case on the pleadings, finding that (i) Noerr-Pennington immunized Elan for its patent infringement litigation and (ii) Elan’s settlement agreements did not support an antitrust action.

On appeal, the Eleventh Circuit affirmed in part and reversed in part.

Noerr-Pennington: The appellate panel agreed that Noerr-Pennington “shields a defendant from antitrust liability for resorting to litigation to obtain from a court an anticompetitive outcome.” The primary exception to the doctrine arises when the litigation is a “sham.”  In this case, it was clear that the litigation was “objectively baseless” and thus did not fall within the exception. (Elan had won a CAFC appeal).

Settlement Agreements: Andrx asserted that settlement agreements signed by Elan to terminate patent litigation were anticompetitive.  Under the recent case of Schering-Plough v. FTC, the three elements are required to prevail on a Section 1 Sherman Act action: “(1) the scope of the exclusionary potential of the patent; (2) the extent to which the agreements exceed that scope; and (3) the resulting anticompetitive effects” in the relevant market.

The appellate panel found that Andrx should at least pass the pleading stage because the complaint demonstrated that (1) the patent was necessary for the sale of controlled release naproxen; (2) the license agreement was structured to “effectively bar any generic competitors from entering the market;” and (3) if true, this dynamic would have an anticompetitive effect on the market.

Under Section 2 of the Sherman Act, the Panel found that Andrx had properly alleged specific intent to monopolize and preserve a monopoly in the controlled release naproxen market.  That pleading, according to the court, was sufficient to overcome a 12(b)(6) motion.

Link: The Supreme Court has been petitioned to hear the Schering-Plough case. If that hearing comes about, Andrx v. Elan may see a new appeal.

File Attachment: Andrx v. Elan.pdf (96 KB)

Interference only declared once examination is complete

Elevator033Westbrook v. Gray, 75 U.S.P.Q.2d 1607 (BPAI) (UNPUBLISHED).

In a short decision, the Patent Board confirmed that “examination must be complete in an application before an interference involving that application is initiated.”

Applicant Gray filed a petition with the Board asking for guidance as to whether it should file a motion suggesting the declaration of an interference. Finding that examination of the application had not been completed, the Board held that an interference would be premature.

Under MPEP 2301.01, before a claim should be “considered as the basis for the count of an interference, the claim should be allowable and in good form.”

Federal Circuit Broadly Interprets Copyright Safe Harbor for Computer Repair

Storagetek v. Custom Hardware Engineering (Fed. Cir. 2005)

Normally, the unauthorized duplication of computer software violates the exclusive right of the copyright holder.  Section 117(c) of the Copyright Act, however, authorizes the copying of a computer program for purposes of maintaining or repairing a machine if the “copy is made solely by the virtue of activation of [that] machine”. 

In a case of first impression, the Federal Circuit addresses the extent of this protection offered by 17 U.S.C. § 117(c). The Court of Appeals, relying on definitions in 17 U.S.C. § 117(d), held that § 117(c) protects maintenance and repair as two different activities. “Repair,” according to the Federal Circuit, is restoring a broken machine to its original specifications. “Maintenance,” on the other hand, has “a much broader temporal connotation” that “encompass[es] monitoring systems for problems [and] not simply fixing a single, isolated malfunction.” Thus, the Federal Circuit found erroneous the district court’s conclusion that only repair activities are protected under Sec. 117(c).

Furthermore, the Court of Appeals also found DMCA provisions likely not applicable. Circumvention of a technological measure providing access to a copyrighted work is not a violation of DMCA, according to the Federal Circuit, unless it “infringes or facilitates infringing a right protected by the Copyright Act.” Finally, the Court of Appeals did not agree, based on material factors, that the copyrighted work in question should receive trade secret protection.

The Federal Circuit thus vacated the district court’s grant of a preliminary injunction to Storage Technology and remanded for further proceedings. Judge Rader, in dissent, decried the majority’s decision as “destroy[ing] copyright protection for software that continually monitors computing machine behavior.”

NOTE: This post was written by Cory Hojka. Mr. Hojka is a law clerk at MBHB and a student at the University of Chicago Law School.

Prosecution History Gets Little Weight In Claim Construction


AquaTex v. Techniche (Fed. Cir. 2005).

AquaTex appealed a summary judgment of noninfringement arguing that the district court had improperly applied prosecution history estoppel to limit use of the doctrine of equivalents.

On appeal, the CAFC “decline[d] to give the prosecution history much weight.”  In its decision the Court quoted Phillips for the conclusion that the prosecution history is an ongoing negotiation that “often lacks the clarity of the specification and thus is less useful for claim construction.”  Although the CAFC disagreed with the lower court’s basis of decision, ultimately, the panel affirmed the claim construction.

Regarding the doctrine of equivalents, the CAFC could not find the requisite “clear and unmistakable surrender of subject matter required to invoke argument-based prosecution history estoppel.”

Affirmed-in-part, Reversed-in-part. 

CAFC Refuses To Find Estoppel Based On Arguments Before The EPO

Elevator031Tap Pharmaceutical v. OWL Pharmaceuticals (Fed. Cir. 2005).

In an action for infringement of several pharmaceutical patents, the Federal Circuit upheld the district court’s findings that the generic drug-maker (OWL) had infringed two of the plaintiffs’ (Tap et al) patents.

Broad Scope Derived from Specification: Claims which described the patented compound as “comprising a copolymer … of lactic acid and … of glycolic acid” were interpreted by the appellate panel to also encompass copolymers “produced by any method.”  Although the specification only provided examples of copolymers made from lactic and glycolic acid, it did note that the polymer “may be produced by any method.” 

Disclaimer Based On Foreign Prosecution: Regarding foreign prosecution history, the CAFC gave little weight to statements made by the patentee to an Examiner in the European Patent Office that the invention did not include compounds made from lactide or glycolide.  The European Examiner had rejected the claims after this argument was made, finding that the compounds which the patentee had attempted to disclaim were not different from those made from lactic and glycolic acid.  Therefore, because the European claims were later allowed on other grounds, and because the patentee had not made this argument before the USPTO, the patentee must have “receded from that characterization of the claims,” and thus these statements should be given little weight in the process of claim construction.

Even Common Words Construed According To Specification: A second claim directed to “particles containing a water-soluble drug” was interpreted to encompass only particles which included both 1) the drug substance, and 2) a drug-retaining substance, because the drug-retaining substance was included in all the examples in the specification and was listed as a benefit of the invention.  The court held that the term “containing,” while not a technical term, helped to describe the patented technology and therefore “cannot be defined by some ordinary meaning isolated from the proper context.”  Thus, the district court was correct to look to both intrinsic and extrinsic evidence to properly interpret the claim.

The Federal Circuit thus affirmed the district court’s claim construction as to both patents.

NOTE: This post was written by Rebecca Brown.  Ms. Brown is a law clerk at MBHB and a student at Northwestern University School of Law.

  • As Attorney Jason Rantanen pointed out in a recent e-mail, there is a clear distinction between the prosecution history disclaimer and prosecution history estoppel.  The disclaimer doctrine is related to “claim construction for the purposes of literal infringement” while the estoppel doctrine bars the assertion of DOE under Festo.

CAFC: Continuation Application Need Not Claim Priority to PCT Application

Elevator030Broadcast Innovation v. Charter Communications (Fed. Cir. 2005).

The district court found Broadcast’s patent to be anticipated because its priority date was more than one year after the publication of an Australia PCT application on the same subject matter filed by the same parties.  The asserted patent failed to claim a specific reference to the PCT application, but did claim priority to a U.S. application that, in turn, claimed priority to an earlier PCT filing.

On appeal, the CAFC determined that the district court had applied the wrong priority date to the asserted patent — finding that the chain of priority was sufficient to fall within the requirements of 35 U.S.C. 120.

[T]he applicant filed the [US priority application] on July 18, 1995, as the U.S. national stage application of the original PCT application. However, July 18, 1995 is not the “U.S. filing date” of the [US priority application]. Specifically, under 35 U.S.C. § 363, the international filing date of a PCT application is also the U.S. filing date for the corresponding national stage application.

Thus, the court clarified that Section 120’s reference to a later filed application having “the same effect . . . as though filed on the date of the prior application” means that the later application will be treated as having the effective filing date of the prior application.

CAFC takes a new look at “rear end” definition

Elevator029Research Plastics v. Federal Packaging (Fed. Cir. 2005).

In a dispute over caulking tubes, Research appealed a district court judgment of non-infringement — arguing that the lower court had erred in its claim construction.

Claim construction centered on the claim term “rear end.” Referencing only intrinsic evidence, the CAFC determined that the lower court had erred slightly in its definition of the term — finding that the prosecution history provided substantial support for defining the rear end as the “point defined by the rear edge of the tube.”  On remand, the district court must reconsider literal infringement in light of the new construction.

Regarding the Doctrine of Equivalents, the Court found that Research had disclaimed equivalents to a ribbed nozzle by amending the claims to overcome a cited reference. Thus, under Festo, that scope cannot be recaptured as an equivalent to the claimed invention.

File Attachment: Decision.pdf (78 KB)

TiVo Wins Patent Case On Appeal

Elevator026TiVo v. Pause (Fed. Cir. 2005).

In a patent infringement action, the district court had granted summary judgment to the defendant TiVo — finding that certain TiVo products did not infringe Pause’s reissued patent.  On appeal, Pause challenged the district court’s claim construction rulings as erroneously defining the limitations “circular storage buffer” and “time interval of predetermined duration”.  In support of its position, Pause argued, inter alia, that (i) the lower court’s interpretation of a “circular storage buffer” limitation should not depend on other language appearing later in the claim and (ii) the language employed by the district court in construing the limitations was not present within the claim and, thereby, led to impermissible narrowing of the claim’s scope.

The Federal Circuit, relying in part on Phillips v. AWH, rejected the first argument as “[p]roper claim construction . . . demands interpretation of the entire claim in context, not a single element in isolation.” Additionally, the Federal Circuit further found that Pause’s second argument was inconsistent with the prosecution history and the language present elsewhere in the claim and in the specification. 

The Federal Circuit affirmed — finding no error in either claim construction or infringement analysis.

NOTE: This post was written by Cory Hojka. Mr. Hojka is a law clerk at MBHB and a student at the University of Chicago Law School.

< ?xml:namespace prefix ="" o />File Attachment: CAFC Decision.pdf (77 KB)

On Remand, Federal Circuit to Rehear Integra Appeal

Integra Lifesciences v. Merck KGaA (Fed. Cir. 2005) (Order).

On remand from the Supreme Court, the CAFC has reinstated the Integra’s appeal and ordered the parties to re-brief the case based on the Supreme Court’s recent decision.

In a nutshell, the Supreme Court found that Section 271(e)(1) of the Patent Act provides a safe harbor that protects would-be infringers from liability for “all uses of patented inventions that are reasonably related to the development and submission of any information under the FDCA.”



Claim Construction: Specification is Always Highly Relevant

Elevator023Terlep v. Brinkman Corp (Fed. Cir. 2005).

Stephen Terlep sued Brinkman, Wal-Mart, and Home Depot for infringement of his patent directed to an omni-directional LED.  After construing the claims, the Arkansas federal court granted summary judgment of noninfringement based on the accused products failure to have a “clear plastic tubular holder” as claimed.

On appeal, the Federal Circuit affirmed, finding that the court’s claim construction methods were appropriate under Phillips v. AWH.

In Phillips, the CAFC determined that the specification of a patent is “always highly relevant to the claim construction analysis. Usually, it is dispositive.”  

To apply Phillips, the court analyzed each use of the term “clear” in the claims, specification, and prosecution and came to the conclusion that the district court had appropriately excluded “translucent” from the term’s definition.

Dictionaries: The CAFC went on to find that the district court’s use of dictionary definitions to support its finding from the written description was an appropriate use of the extrinsic evidence.

File Attachment: 04-1337.pdf (57 KB)

Illinois Tool Works: Patents and Unlawful Tying

IllinoisToolIllinois Tool Works v. Independent Ink (Supreme Court 2005). 

On appeal to the Supreme Court is the question of whether market power must be proven in a Section 1 Sherman Act case that alleges the tying of a non-patented product to the sale of a patented product.  In its opinion in the case, Court of Appeals for the Federal Circuit determined that a rebuttable presumption of market power sufficient to restrain trade under antitrust law arises from the patentee’s possession of a patent used in an explicit tying agreement.  Oral arguments are scheduled for Tuesday, November 29, 2005.

Briefing is ongoing, but a number of parties have filed as amici. 

  • In Support of Petitioner
  • In Support of Respondent
    • (Not yet due).


    Amicus Brief of the U.S Government:

    The government makes the powerful argument that there is “no economic basis” for inferring market power from the “mere fact” that the defendant holds a patent.  The relevant market would rarely have the same boundaries as the legal scope of the patent — as such, the per se approach is not warranted.  Both the DOJ and FTC have a policy against applying a presumption of market power based on the existence of a patent. Download the U.S. Government Brief.

    Brief of the IPO:

    The Intellectual Property Owners Association agreed with the Government Brief that there was a lack of economic rational for a per se presumption of market power.  In addition, the IPO argued that the presumption makes it too easy for defendants in patent infringement suits to file baseless antitrust counterclaims.  Notably, the IPO questions the basic premise that tying is competitive by citing a number of academic articles (Bakos) that provide evidence of the pro-consumer effects of tying agreements. File Attachment: IPOTyingBrief.pdf (1099 KB).

    Amicus Brief of the MPAA

    The Motion Picture Association of America and several other organizations filed a joint brief in support of the petitioner.  The MPAA makes the argument that Loew’s does not set a rule of “presuming antitrust market power from intellectual property ownership.”  The MPAA is a heavy copyright holder, but certainly realizes that the Supreme Court often generalizes across traditional IP categories with its analysis. File Attachment: Illinois Tool MPAA Amicus Brief.pdf (345 KB).

    Brief of the NYIPLA:

    In its support of the petitioner, the NY IP Law Association (David Ryan, et al.) took the novel position that Section 271(d)(5) of the Patent Act exempts tying. Section 271–(d)(5) provides that:

    No patent owner . . . shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having . . . (5) conditioned the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.

    The NYIPLA thus argues that the plain language of the statute encompasses tying and requires a specific showing of market power — thus eliminating the per se approach.  File Attachment: NYIPLABrf.pdf (318 KB).

    Amicus Brief of the IPLAC:

    The Intellectual Property Law Association of Chicago analyzed the parallels between this case and Jefferson Parish — making the argument that the only notable difference between the two cases being the fact that a portion of the tying product is patented. File Attachment: IPLACbrf.pdf (132 KB).

    Federal Circuit: Nucleotide Sequence of Claimed DNA not Required to Satisfy Written Description Requirement

    Capon v. Eshhar v. Dudas (Fed. Cir. 2005).

    In an interference proceeding regarding a chimeric genes for cell-surface antibody production, the BPAI the claims of both applications after finding that they both failed to provide an adequate written descriptions as required by 35 U.S.C. 112. Particularly the Board found that the written description must include a listing of the specific nucleotide sequence of claimed DNA.

    On appeal, the CAFC reversed, finding that the per se rule requiring recitation in the specification of the nucleotide sequence of the claimed DNA to be incorrect when the sequence is already known in the field.

    The Board’s rule that the nucleotide sequences of the chimeric genes must be fully presented, although the nucleotide sequences of the component DNA are known, is an inappropriate generalization. When the prior art includes the nucleotide information, precedent does not set a per se rule that the information must be determined afresh.

    On remand, the CAFC asked the Board to further explore whether the applications include appropriate descriptions in light of what is known in the field.