Joint Patent Infringement Occurs When Infringement Results From Participation and Combined Action Of Multiple Parties

AIPLATalk182On Demand Machine v. Ingram and (Fed. Cir. 2006, 05–1074).

One aspect of this case involves the concept of “joint infringement.”  The district court instructed the jury as follows:

It is not necessary for the acts that constitute infringement to be performed by one person or entity. When infringement results from the participation and combined action(s) of more than one person or entity, they are all joint infringers and jointly liable for patent infringement. Infringement of a patented process or method cannot be avoided by having another perform one step of the process or method. Where the infringement is the result of the participation and combined action(s) of one or more persons or entities, they are joint infringers and are jointly liable for the infringement.

On appeal, the appellate panel found “no flaw in this instruction as a statement of law.”  This raises a number of interesting questions.  Many of these questions will be answered in the Freedom Wireless appeal that is currently being briefed. In that case, the lower court gave the following jury instructions:

if separate companies work together to perform all the steps of a claim of a patent, the companies are jointly responsible, that is, responsible as a group for the infringement of the patent.  Even if no single company performs all the steps of the claim, the companies are jointly responsible.

Based on these instructions, the jury found infringement.  In an unpublished order (Dec 05), the CAFC granted a stay of the injunction because of the questionable theory of joint infringement — noting that the CAFC has not directly addressed addressed the theory of joint infringement and there is relatively no precedent on that issue.



CAFC: Patent Rights are Not Protected by the Fifth Amendment

AIPLATalk181Zoltek v. United States (Fed. Cir. 2006, 04–5100).

The US government contracted with Lockheed Martin to design and build F-22 stealth fighters.  Zoltek has argued that manufacture of carbonized sheets used in the aircraft violates its method patents, even though the sheets were partially manufactured in Japan.  The lower court dismissed Zoltek’s federal claims because they “arose in Japan.”  However, the lower court also ruled that the US government’s alleged infringement could be actionable as a Fifth Amendment taking.

On appeal, the CAFC issued a decision per curiam, and three additional opinions.

Process Claims Abroad: Because a process is not infringed unless “each of the steps is performed within this country,” the US has no liability under Section 1498(a).

Patent Infringement as a Taking: In the 1894 case of Schillinger v. United States, the Supreme Court ruled that a patent holder could not sue the government for patent infringement as a Fifth Amendment taking. This case remains good law.

Judge GAJARSA Concurring:

I agree that we are bound by our panel decision in NTP, Inc. v. Research in Motion, Ltd., in which we held that “direct infringement under section 271(a) is a necessary predicate for government liability under section 1498.” However, the NTP proposition is, in my view, the result of an unchecked propagation of error in our case law, and its viability may eventually be challenged. 

Judge DYK Concurring:

I join the court’s per curiam opinion but write separately to express my view that the court correctly held in NTP, Inc. v. Research in Motion, Ltd., that the government can only be liable for infringement under section 1498(a) if the same conduct would render a private party liable for infringement under section 271(a).

Judge PLAGER Dissenting: Patent rights are property rights protected whose taking should be compensable under the Fifth Amendment. . . .

NOTE: There is lots more more here for a law review article.

Federal Circuit Further Limits Doctrine of Equivalents under “Specific Exclusion” Principle

AIPLATalk170Bicon, Inc. v. The Straumann < ?xml:namespace prefix ="" st1 ns ="" "urn:schemas-microsoft-com:office:smarttags" />Co., (Fed. Cir. 2006, 05–1168)

By Thomas Fairhall

The Federal Circuit’s decision in Bicon appears to mark a further narrowing in the scope and availability of the doctrine of equivalents (DOE), particularly for patents where the claim recites physical structures.  Significantly, the court’s doctrine of equivalents discussion makes no mention of the familiar tests for DOE coverage, i.e., the function/way/result test of the Graver Tank decision, or the “insubstantial differences” test of Hilton Davis Chemical Co. v. Warner-Jenkinson Co., 62 F.3d 1512 (Fed. Cir. 1995), rev’d & remanded, 520 U.S. 17 (1997).   Rather, the Court invoked a new exclusion principle essentially foreclosing coverage under the Doctrine in cases where a claim contains a detailed recitation of structure, stating that such a claim is accorded “limited recourse to the doctrine of equivalents.”   Slip op. at 17.     For support of this rule, the court cites cases purportedly standing for “an exclusion rule” that denies any coverage under the doctrine for subject matter where such subject matter is “inconsistent with the language of the claim.”  Slip op. at 17-18, citing Sci-Med Life Sys. Inc. v. Advanced Cardiovascular Sys., 242 F.3d 1337 (Fed. Cir. 2001); Ethicon Endo-Surgery Inc. v. U.S. Surgical Corp., 149 F.3d 1309 (Fed. Cir. 1998), and other cases. 

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The problem is that, by definition, a claim term that is expanded under the DOE is, in some fashion, “inconsistent” with the literal scope of the claim.   Bicon suggests that such inconsistencies are resolved by barring application of the DOE.  Bicon is difficult to reconcile with prior precedent upholding findings of infringement under the DOE, decisions which by definition accommodate inconsistency between the claims and the accused device.


The particular invention at issue in Bicon pertained to a dental implant.   The court was examining language in the claim preamble, which, in a separate portion of the opinion, was found to be an affirmative limitation of the claim.   The claim at issue, claim 5 of U.S. Patent 5,791,731, recited:


5.         An emergence cuff member for use in preserving the interdermal papilla during the procedure of placing an abutment on a root member implanted in the alveolar bone of a patient in which

            [a] the abutment has a frusto-spherical basal surface portion and

            [b] a conical surface portion having a selected height extending therefrom comprising . . . [body of claim].


The accused device had a trumpet-shaped, concave surface, which was argued to be equivalent to the convex frusto-spherical basal surface of part [a] of the preamble.     In rejecting the patentee’s equivalency argument, the court stated:


The problem that [the patentee] faces in this regard is that limitation [a] and [b] of the claim contain a detailed recitation of the shape of the abutment, including that it has a frusto-spherical basal portion.  A claim that contains a detailed recitation of structure is properly accorded limited recourse under the doctrine of equivalents. See Tanabe Seiyaku Co. v. Int’l Trade Comm’n, 109 F.3d 726 732 (Fed. Cir. 1997)(“The sharply restricted nature of the claims has much to do with the scope we accord to the doctrine of equivalents.”). That principle has special application in a case such as this one, where the claim recites a particular shape for the basal portion of the abutment that clearly excludes distinctly different and even opposite shapes.  In such cases, we have explained, “by defining the claim in a way that clearly excluded certain subject matter, the patent implicitly disclaimed the subject matter that was excluded and thereby barred the patentee from asserting infringement under the doctrine of equivalents.”   Sci-Med Life Sys. Inc. v. Advanced Cardiovascular Sys., 242 F.3d 1337, 1346 (Fed. Cir. 2001) [further citations omitted]; Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317 (Fed. Cir. 1998)(subject matter is “specifically excluded” from coverage under the doctrine of equivalents if its inclusion is “inconsistent with the language of the claim.”)


Both of the structures in the Straumann system that are possible candidates for equivalence to the abutment base recited in the claim fall victim to this principle of specific exclusion.  As we have noted, the basal portion of the Straumann abutment is frusto-conical, not frusto-spherical, and the neck of the Straumann root member is concave, not convex.  These shapes are clearly contrary to, and thus excluded by, the patentee’s characterization of its abutment as having a convex, frusto-spherical shape.


Slip op. at 17-18. 


There are several things of note in this analysis.  Significantly, the Federal Circuit does not engage in any function/way/result analysis under Graver Tank, or any examination of whether the differences in geometry between the accused device and the claimed invention are insubstantial under Hilton-Davis.    Rather, the Federal Circuit seems to be excluding availability of the doctrine of equivalences completely, based solely on a textual analysis of the claim itself and noting that the accused product is not within the literal scope of the patent.


The decision raises the question of whether the bar on availability of the doctrine of equivalents, based on the “specific exclusion principle”, is a question of law that might be amenable to summary judgment.  If so, it would avoid the factual disputes associated with a function/way/result or insubstantial differences analysis.   It is at least arguable that this “specific exclusion principle” is one of law and amenable to summary judgment.


The rule of exclusion based on a textual analysis of a claim brings to the fore the tension in the doctrine between the two opposing principles of 1) allowing some additional claim scope beyond the literal bounds of the claim in an appropriate case under the Doctrine, while (2) preserving the public notice function of claims.  The decision in Bicon lands squarely on the side of the upholding the latter principle at the expense of the former.   It doing so, it is consistent the trend of the Federal Circuit cutting back on the scope of the DOE.  Creative litigants will surely apply the Bicon exclusion principle to other areas besides the mechanical arts.   Virtually any claim is amenable to a “specific exclusion principle” argument. 


If the Federal Circuit’s specific exclusion doctrine is interpreted as meaning that a selection of a particular claim term operates as a matter of law as a disclaimer of coverage under the doctrine for subject matter not within the literal definition of that term, then the death knell for the doctrine has basically been rung.



Reimportation of Grey Market Goods can be Stopped Only When Materially Different from “Substantially All” Authorized US Versions

AIPLATalk175Bourdeau Bros v. ITC and Deere & Co. (Fed. Cir. 2006, 04–1588).

John Deere sells its 5000 and 6000 series harvesters in both the US and Europe.  The 5000 series is manufactured in the US and shipped abroad while the 6000 series is manufactured in the US for the US market but manufactured in Germany for the European market.

Based on Deere’s US Trademarks, the International Trade Commission (ITC) granted a general exclusion stopping third party importation of the harvesters originally sold in the European market.

AIPLATalk176Reimportation: On appeal, the three judge panel agreed that “importation and sale of a trademarked good of domestic manufacture, produced solely for sale abroad and not authorized by the owner of the trademark for sale in the United States, may violate section 1337 if the imported good is materially different from . . . those goods bearing the same trademark that are authorized for sale in the United States.”

Thus reimportation of “grey market” goods can be stopped when they are materially different from “substantially all” of the authorized US versions. Here, the CAFC found that Deere established material difference, but failed to meet its burden of proving that its US sales did not include any of the European versions. 

To win on remand, Deere must:

establish [with a preponderance of the evidence] that the number of sales of European forage harvesters was so small that substantially all of Deere’s sales in the United States were of North American forage harvesters, such that substantially all of the authorized sales were of goods bearing the asserted material differences.

The CAFC also found that the “ITC erred in granting a general exclusion order that did not contain an exception for goods bearing a permanent nonremovable label indicating their origin.”

Vacated and Remanded.


  • Our 1969 John Deere 4020 is pictured above along with three cows from our herd.

EBay v. MercExchange Oral Arguments

Based on oral arguments, pundits see a potential split decision in the eBay v. MercExchange injunction case.  Justice Scalia is likely to support strong property rights (“You’re talking about a property right, and the property right is explicitly the right to exclude others.”) while Justice Breyer may side with eBay. 

Chief Justice Roberts, who would be expected to support strong property rights, appeared to question the validity and definiteness of the MercExchange patent.* Decision in June

More Info:

NOTE: I did not attend the arguments, but am simply reporting second-hand information. DDC

Design Patent Point-of-Novelty Test Questioned in Appeal

AIPLATalk070Over at the Shape Blog, Boston attorney John Welch has been writing about the fallout after the Federal Circuit’s design patent decision in Lawman Armor v. Winner International.  In that case, the appellate panel determined that the “point of novelty” test for design patent infringement is focused entirely on individual points of novelty, gives no weight to the resulting novelty-by-combination, and requires no suggestion or motivation to combine prior art references.

The technology-at-issue here is a steering wheel lock design similar to “The Club

Lawman recently filed a petition for rehearing, and, in addition, Nike and the Industrial Design Society of America  (IDSA) have each filed an amicus brief in support of a rehearing. The AIPLA is reportedly planning to file as well. This CAFC decision takes the wind out of design patents and leaves them quite weak.  The petition for rehearing hopes to change that outlook.  Winner’s responsive brief is due April 3, 2006.



  • Design Patent: Patently-O discussing the CAFC original panel decision
  • Welch: Discussing the CAFC original panel decision I
  • Welch: Discussing the CAFC original panel decision II
  • Welch: Discussing the Nike Brief
  • Welch: Discussing the IDSA brief


271(d)(5) Defines A Patent Misuse Safeharbor, But Does Not Define Misuse Itself

PhilipsPatentU.S. Philips v. Princo (Fed. Cir. 2006) (Non-Precedential).

In a non-precedential opinion, the CAFC noted that the traditional defense to patent misuse was narrowed when Congress enacted 35 U.S.C. 271(d)(5).  Under that statute, it is not misuse to “condition[] the license of any rights to the patent . . . 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.” 

According to the CAFC, section 5 provides “a safe harbor for certain conduct, not a comprehensive definition of patent misuse.” (Citing the recent Supreme Court case of Illinois Tool Works).  Remanded for a new determination of misuse.


CAFC: Failure to submit full translation of prior art reference did not satisfy intent requirement of inequitable conduct

Atofina v. Great Lakes Chemical Corp., (Fed. Cir. 2006)

by Bradley Crawford

Atofina sued Great Lakes for literally infringing its U.S. Patent No. 5,900,514 titled “Synthesis of Difluoromethane.” The district court determined the ‘514 patent was (i) not literally infringed; (2) anticipated (only claims 1, 2, 6, 7, 9, and 10); and (3) unenforceable because of inequitable conduct. Atofina appealed.

Infringement: The CAFC ruled the claims were not literally infringed. The district court’s use of scientific and technical dictionaries to construe the word “catalyst” was acceptable as the dictionary definition comported with the intrinsic evidence.

The intrinsic evidence (1) supported the district court’s claim construction, and (2) evinced a surrender of subject matter. Regarding the second point, the CAFC noted that “it frequently happens that patentees surrender more through amendment than may have been absolutely necessary…” and “we have not allowed them to assert that claims should be interpreted as if they had surrendered only what they had to.” (Note: The take home message here is obvious, so I won’t belabor the point.)

Anticipation: The CAFC also ruled claims 1, 2, 6, 7, 9, and 10 were not anticipated because the district court incorrectly interpreted a broad genus as anticipating a narrower genus, which is inconsistent with the Titanium Metals case. See 778 F.2d 775 (Fed. Cir. 1985).

Unforceability: And finally, the CAFC found the ‘514 patent not unenforceable due to inequitable conduct and it did not remand.

During prosecuting of the application that matured into the ‘514 patent, Atofina submitted a partial translation (a Derwent Abstract, to be precise) of the Japanese language reference JP 51-82206, to the U.S. Patent and Trademark Office, even though it had a full translation in its possession. At trial, the district court ruled Atofina committed inequitable conduct by (1) failing to disclose the full translation of JP 51-82206, which was deemed highly material because it anticipated several claims and (2) Atofina had the requisite intent to deceive the U.S. Patent and Trademark Office because it failed to disclose the translation and it mischaracterized the reference.

On appeal, Atofina argued that materiality was found only because the reference was alleged to anticipate, and since the anticipation was wrong, the determination of materiality was also wrong. Atofina also argued that the district court failed to consider evidence of good faith, i.e., Atofina’s “reference in the prosecution history to page numbers of the full translation of JP 51-82206,” the submission of the Derwent Abstract and the citing of JP 51-82206 in the patent specification.

Great Lakes argued the full translation was highly material because (1) it was anticipatory, (2) JP 51-82206 was cited in the European counterpart to the ‘514 patent and the European patent only issued after Atofina incorporated an additional limitation into the claims. Intent was shown by (1) Atofina’s failure to disclose the full translation of the Japanese language reference, (2) Atofina’s mischaracterizing prior art references, and (3) withholding “poor results.” Great Lakes also argued there was no evidence of good faith by Atofina.

The CAFC did not decided the issue of materiality, but it did focus on intent. The CAFC found that the failure to submit the full translation was not, in and of itself, enough to establish intent; a “factual basis for a finding of deceptive intent” was required. The CAFC also found (1) Atofina’s comments were consistent with the Derwent Abstract and the full abstract, (2) Atofina did not try to hide information or mislead the Patent and Trademark Office.

Judge Dyk filed an opinion, concurring in part and dissenting in part. Judge Dyk agreed with the majority’s decision, but he would remand for further consideration by the district court.

Note to all patent prosecutors out there. This case exemplifies the old maxim, “penny wise, but pound foolish.” Atofina did not submit the full translation, even though the full translation was in its possession. (Why, is an interesting question. If they didn’t think it was a problem, why not just submit it?) Instead, Atofina submitted the Derwent Abstract and made comments about what the reference discloses. By doing so, they saved the cost of preparing a translation, which, admittedly, can be expensive if it is a very large reference. However, they left themselves open to a charge of inequitable conduct. I expect that they paid many tens of thousands of dollars (if not more) defending themselves from this allegation first at trial and then on appeal. If they would have simply paid for the complete translation and then submitted it to the Patent and Trademark Office, they would likely have saved money in the long run and obviated any allegation of mischaracterizing the reference. If you find yourself in a similar situation, I think you have to ask yourself if saving the cost of the translation is worth the risk of (1) having to defend against a charge of inequitable conduct based on misleading the Patent and Trademark Office or mischaracterizing the reference, and (2) having any patent that ultimately issues invalidated for inequitable conduct.

Bradley W. Crawford is a attorney at MBHB LLP focusing his efforts on patent litigation, prosecution, and counseling.  Prior to joining MBHB, Mr. Crawford worked in the areas of synthetic organic chemistry as well as medicinal chemistry.

Japanese Patent Attorney / Client Privilege Extends to U.S. Litigation

Eisai v. Dr. Reddy’s Lab., 77 USPQ2D 1854 (S.D.N.Y. 2005).

Japanese benrishi act essentially as patent agents or patent prosecution attorneys.  The question here was whether the communications between plaintiff Eisai and its benrishi could be withheld as privileged.

When determining privilege in a U.S. case based on a foreign privilege, courts generally apply some level of comity. 

Here, it was undisputed that at least some benrishi communications were privileged.  However, Dr. Reddy argued that privilege should not extend to U.S. cases because the benrishi privilege differs from U.S. privilege in a number of respects.

Despite differences in the laws, the court concluded that privilege should persist.

Since the laws of two different jurisdictions will rarely be in such accord, application of any such rule would be inconsistent with the basic notion of extending comity to foreign law


Construing Claims “Without Reference to the Accused Device” Is Put to the Test

AIPLATalk174Wilson Sporting Goods v. Hillerich & Bradsby (Fed. Cir. 2006, 05–1103).

By Jeff Steck

Following Federal Circuit precedent that “claims may not be construed with reference to the accused device,” it is common for district courts to construe patent claims before they know anything about the products at issue in the case. Through an uncommon procedural twist leading up to Wilson Sporting Goods Co. v. Hillerich & Bradsby Co. (05-1103), the Federal Circuit found itself in the same position as those district courts. 


Wilson owns a patent on a non-traditional softball bat that is best described as being “corked” with, essentially, a beer can. The defendant, H&B, was accused of infringing this patent. Although the Federal Circuit did not have “any information about the accused products,” it is safe to conclude that H&B’s most celebrated product, the solid ash Louisville Slugger, was not at issue.


Before the district court, Wilson essentially lost the case when the court issued a narrow construction of the shape and rigidity of the beer-can insert. Instead of pressing forward with an unfavorable construction, Wilson stipulated that there was no infringement under that construction, and the district court entered a final judgment.


Wilson appealed the claim construction to the Federal Circuit. With no record on the accused products, the Federal Circuit found itself in the position of so many district courts: both sides were fighting over claim construction, and the court had no idea why. With no information about the accused products, the court complained that “this sparse record lacks the complete context for accurate claim construction.” As a result, the court refused to provide its own claim construction, choosing instead to identify just enough errors in the district court’s construction to send the case back on remand.   < ?xml:namespace prefix ="" o />


Although the only issue in the case was claim construction—ostensibly an issue of pure law—the Federal Circuit wanted to understand the accused device. Faced, however, with its own rule that “claims may not be construed with reference to the accused device,” the court had difficulty explaining the contradiction between what it permits in claim construction and what it wants in claim construction. Cf. CVI Beta Ventures Inc. v. Tura LP, 43 U.S.P.Q. 2d 1860, 1861 (Fed. Cir. 1997) (Mayer, J. dissenting) (“[T]he court once again shows that we are solecists…. [W]e are bound to interpret law according to specific rules. By violating these interpretive rules, or by exposing them to exceptions so that our court can amass decisionmaking authority … we inappropriately encumber the process with ambiguity….”).


Hoping, perhaps, that contradiction would prove more enlightening than troublesome, the court restated the relevant law on claim construction in a form more characteristic of a koan than a rule of law 

while a claim is not to be construed in light of the accused device,
in an infringement case,
it must inevitably be construed in context of the accused device.

 (citing SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed. Cir. 1985)) (scansion added, odd grammar in original). 


The panel tried unsuccessfully to show that it was not the first to require evidence of the accused product before conducting claim construction. Citing Bayer AG v. Biovail Corp., 279 F.3d 1340, 1340 (Fed. Cir. 2002), the court noted that it had previously declined to construe claims based on an incomplete record. In Bayer, however, the record was “incomplete” because it was missing “evidence of the meaning of the terms to one of skill in the art at the time of invention”—i.e. the usual evidence in claim construction—not because it was missing evidence on the accused product.


The court then tried to restate the rule against construing claims “with reference to the accused device,” concluding that the rule is simply a prohibition against “biasing the claim construction process to exclude or include specific features of the accused product.” As such, the rule “does not forbid any glimpse of the accused product” before claim construction. The issue, however, is not whether a court is permitted to see the accused product, but whether the court is required to see the accused product.


By remanding this case without a conducting a complete claim construction, the Federal Circuit has sent the message that a district court’s claim construction must include some analysis of the accused products. The district court had given hope to the promise of Markman: an infringement allegation was resolved with no need for a costly trial, or even summary judgment proceedings; the Federal Circuit’s remand showed that promise to be illusory.

Jeffrey Steck is a partner at MBHB and an experienced litigator. He was an editor of the California Law Review at the University of California at Berkeley, where he received his JD.

CAFC: What Evidence Does an Accused Infringer Need for Summary Judgment of Non-Infringement?

AIPLATalk173Exigent Technology, Inc. v. Atrana Solutions, Inc. (Fed. Cir. 2006, 05–1338).

By Marcus Thymian

In its March 22 decision, the Federal Circuit affirmed a district court’s grant of summary judgment of non-infringement of the claims of a patent relating to a “multi-function transaction processing system.” Unlike many appeals involving summary judgments of non-infringement, this opinion did not focus on claim construction or application of the claims to the accused device. Instead, the interesting issue was whether the accused infringer had provided sufficient support in its 12-page summary judgment motion.

At trial, the burden of proving infringement is on the patent holder. Here, the accused infringer moved for summary judgment of non-infringement. In a motion for summary judgment, the burden is initially on the movant (the accused infringer in this case) to show that there is no genuine issue of material fact and that the moving party is entitled to a judgment as a matter of law. Thus, there would appear to be competing burdens, a concept with which courts have sometimes struggled.

In explaining the conflict and finding resolution in this case, the Federal Circuit dedicated much of its opinion to the Supreme Court’s 1986 Celotex v. Catrett decision. Most importantly, on issues in which the nonmovant bears the burden, “the [summary judgment] movant need not ‘produce evidence’ showing the absence of a genuine issue of material fact in order to properly support its summary judgment motion.” Basically, the party moving for summary judgment needs to show that “there is an absence of evidence to support the nonmoving party’s case.” In this case, that showing took the form of a 12-page summary judgment motion (that also addressed invalidity and unenforceability), along with a declaration by the accused company’s CEO stating that none of the accused products contained certain claim limitations. The Federal Circuit stated that “nothing more is required than the filing of a summary judgment motion stating that the patentee had no evidence of infringement and pointing to the specific ways in which accused systems did not meet the claim limitations.”

Marcus Thymian is a partner at McDonnell Boehnen Hulbert & Berghoff LLP in Chicago. Much of his recent practice has involved counseling clients on pretrial litigation strategies, including seeking and defending against motions for summary judgment. [link to bio]

BPAI’s factual findings affirmed when based on more than a mere scintilla of evidence

AIPLATalk172In re Kahn (Fed. Cir. 2006, 04–1616).

Kahn’s voice synthesizer patent application was rejected by patent office as obvious over a group of four references. Kahn appealed:

Motivation to Combine: Most inventions involve “a combination of old elements” where each element is found somewhere in the prior art.  However, the combination can be patentable as a whole if the combination creates something new and nonobvious. When rejecting a patent application as obvious based on multiple prior art references, the PTO must articulate the motivations for selecting references and combining them together.  This has come to be known as the “motivation-suggestion-teaching” test.

[T]he “motivation-suggestion-teaching” test asks not merely what the references disclose, but whether a person of ordinary skill in the art, possessed with the understandings and knowledge reflected in the prior art, and motivated by the general problem facing the inventor, would have been led to make the combination recited in the claims.

Here, the CAFC found that the board had ‘substantial evidence’ to conclude that the asserted references could be combined because they were all directed to some form of word localization for the blind.

Although a reasonable person might reach the opposite conclusion, there is far more than a “mere scintilla” of evidence present from which a reasonable mind could find a motivation to combine.

Long-Felt but Unresolved Need: Kahn requested that the CAFC take ‘official notice’ of a long-felt but unresolved need for his invention as a way to overcome the obviousness rejection.  The court, however, refused because “precedent requires that the applicant submit actual evidence of long-felt need, as opposed to argument.”

Rejection affirmed.  

Trademark: Product Design Trade Dress Need Not Implicate Entire Product

ScreenShot026In re Slokevage (Fed. Cir. 2006, 05–1389).

Slokevage filed to register a trademark for “pants, overalls, shorts, culottes, dresses, skirts” configured with the label “FLASH DARE!”  The TTAB refused to register the mark because it consisted of product design without any showing of secondary meaning.

ScreenShot027Slokevage appealed to the CAFC, arguing that the clothing trade dress was not product design, and thus could be inherently distinctive.

As an initial matter, the CAFC found that the determination of whether a trade dress is “product design” is a factual inquiry and deference is given to lower court determinations.

Here, Slokevage argued that the rear flaps were not “product design” because they did not alter the entire product, but were rather more like labels. The CAFC disagreed:

“The holes and flaps portion are part of the design of the clothing—the cut-out area is not merely a design placed on top of a garment, but is a design incorporated into the garment itself. Moreover, while Slokevage urges that product design trade dress must implicate the entire product, we do not find support for that proposition.”

After finding that the design was product design, the court made quick-work of affirming the refusal to register under Wal-Mart v. Samara (product design cannot be inherently distinctive).  



Claim Preamble Is Limiting When It Recites Essential Structure of the Invention

AIPLATalk170Bicon v. Straumann (Fed. Cir. 2006, 05–1168).

In a dispute over a dental implant, the CAFC today determined that the preamble of the asserted claims should be seen as limiting the claim scope.

While it is true that preamble language is often treated as nonlimiting in nature, it is not unusual for this court to treat preamble language as limiting, as it is in this case.

Here, the claimed preamble was quite extensive, and was written as follows:

An emergence cuff member for use in preserving the interdental papilla during the procedure of placing an abutment on a root member implanted in the alveolar bone of a patient in which [a] the abutment has a frusto-spherical basal surface portion and [b] a conical surface portion having a selected height extending therefrom comprising . . .

Under the rule expounded in RIM v. NTP, the preamble is limiting “if it recites essential structure that is important to the invention or necessary to give meaning to the claim.”  Here, the court found that the preamble “recites structural features . . . [and] it is apparent that the claim drafter chose to use both the preamble and the body of the claim to define the subject matter of the claimed invention.”


Supreme Court on the March

The second half of March, 2006 is a special period for patent law. The Supreme Court will hear oral arguments in two important patent law cases, and may decide petitions for writ of certiorari in a couple others.

On Tuesday, March 21, the Supreme Court will hear arguments in LabCorp v. Metabolite (04–607).  The point at issue hear involves the scope of patentable subject matter.  Specifically, the question briefed is whether a patent can validly include a step of ‘correlating a test result’ that arguably monopolizes a basic scientific relationship used in medical treatment ‘such that any doctor necessarily infringes the patent merely by thinking about the relationship after looking at a test result.’   The Court could also use this case to cut-off patenting of many business-method type inventions. [Review of the LabCorp briefs]. With that in mind, the PTO has pushed-off implementation of any final rules regarding changes to examination of patentability under Section 101.  Respondent and several amici have argued that this case is not properly before the court and should simply be dismissed.  Full disclosure — I was part of the team that drafted the IPO’s brief arguing that the court should not use this case to further limit the scope of patentable subject matter.

The Metabolite case is certainly important.  However, it will only alter our thinking in fringe cases — such as business methods and methods of applying a scientific principle. On the other hand, eBay v. MercExchange (05–130) may have an effect on the value of every patent.

On March 29, the Court will hear the eBay case. It is expected that regulars, Carter Phillips (eBay), Seth Waxman (MercExchange), and Jeffrey Minear (Gov’t) will divide up the sixty-minute argument period.  This case involves the question of whether an injunction should issue once a patent is found valid and infringed.  EBay, the petitioner, has argued that the current standard, overly favors patent holders, and that the court should take a more equitable approach to determining whether to issue an injunction.  Further, when adjudging the equities, a non-practicing entity should have less of a likelihood of obtaining an injunction than would a market competitor. On the other side, MercExchange and the Government both argue for strong patent rights, although neither argue that the right to injunction should be absolute. 

Other pending cases include:

  • MedImmune v. Genentech (Whether a licensee in good standing can challenge a patent’s validity)(cert granted; petitioner briefs due soon);
  • FTC v. Schering Plough (Whether reverse settlement payment from patentee to generic can constitute an antitrust violation)(cert pending; government’s position requested)(DDC predicts cert);
  • KSR v. Teleflex (Whether references can be combined without explicit suggestion)(cert pending; government’s position requested);
  • SmithKline v. Apotex (When appreciation of the invention is required for anticipation)(cert pending; government’s position requested);
  • Microsoft v. AT&T (271(f) issue involving export of software, and whether that constitutes a “component”)(cert in briefing stage);
  • Nystrom v. Trex & Izumi v. Philips (claim construction issues)(cert in briefing stage)(Izumi brief; Philips response; amicus; Izumi reply).

Hal Wegner has been closely following these cases in his popular ‘top ten’ list.

Threats Against Customers Do Not Create Declaratory Judgment Jurisdiction

ScreenShot024Microchip Technology v. Chamberlain Group (Fed. Cir. 2006, 05–1339).

In another garage door case,[1][2] Chamberlain’s patent was found invalid and unenforceable.  On appeal, however, the Federal Circuit took a fresh look at whether declaratory judgment jurisdiction ever existed.

Chamberlain’s patent is related to a method of programming your garage door opener — i.e., automatically teaching it the correct code. Microchip makes integrated circuits and associated software that serve as the brains for garage door openers.

Under the terms of a 1999 settlement, Chamberlain agreed not to sue Microchip on the patents. However, two years later, Microchip brought this declaratory judgment action. 

Microchip’s basis for jurisdiction was not that it was threatened with suit.  Rather

According to the court, although Microchip itself was not threatened with suit.  Rather, Microchip was upset that Chamberlain had initiated lawsuits against Microchip’s customers. The district court agreed that Microchip had justification for filing suit.

Under the CAFC rule, a declaratory judgment plaintiff must establish:

  1. A reasonable apprehension that it will face an infringement suit; and
  2. Present activity by the DJ plaintiff that could constitute infringement or intent to take such steps.

Here, the CAFC found that under the first prong, “it is clear that Microchip did not possess the requisite apprehension.”  Furthermore, threats against customers do not meet the test apprehension test nor does the “practical effect” that Microchip cannot sell its products without subjecting customers (but not itself) to the threat of litigation.



CAFC Endorses Summary Judgment of NonInfringement Without Markman Hearing

AIPLATalk169Schoenhaus v. Gensco (Fed. Cir. 2006, 05–2178).

In a claim construction decision, the Court of Appeals for the Federal Circuit (CAFC) has affirmed the lower court’s exclusion of “semi-rigid” shoe inserts from the claimed “rigid” inserts.  In the process, the court noted that “there is a presumption that the same terms appearing in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.”[1]

Interestingly, it appears that there was no Markman hearing in this case.  (Pacer Report). Yet, the CAFC praised the lower court’s summary judgment decision and its embedded claim construction.[2]

January 10, 2005, the district court granted defendants’ motion for summary judgment of non-infringement. Senior Judge Louis H. Pollak did not issue a separate Markman order; rather, in a carefully-crafted summary judgment opinion, he construed two limitations of claim 1 of the patent and found as a matter of law that neither limitation was present in the accused shoes. . . .


[1] Fin Control v. OAM, 265 F.3d 1311, 1318 (Fed. Cir. 2001) (emphasis in original).
[2] Schoenhaus v. Gensco District Court Decision.

Ebay v. MercExchange: The Law of Patent Injunctions

eBay v. MercExchange (on writ of Certiorari 2006).

Later this month, the Supreme Court will hear this case to determine when a patentee should have a right to stop an infringer from making or selling unlicensed products once the patent has been found valid and infringed.  Because this issue is so fundamentally important to patent law, eBay v. MercExchange will likely be the most important patent case for the past decade.

As it stands, the Federal Circuit has a “usual rule” that once a plaintiff shows that a defendant infringes a valid patent, an injunction should issue.  According to the appellate court, the usual rule should be followed “absent special circumstances.”

In this case, a jury found that eBay infringed MercExchange’s patent, but the court refused to issue an injunction. Stating the “usual rule,” the Federal Circuit reversed, finding that an injunction should issue.  Now, Supreme Court has agreed to hear the case and determine the proper standards for issuing an injunction.

In January, eBay and its supports filed their briefs asking the court to overturn the Federal Circuit’s usual rule.  Respondent’s brief was due Friday, March 10, 2006. The following is a short review of the briefs in-hand.

Respondent MercExchange’s Brief: MercExchange’s brief is one of the best that I have ever read. In a twelve-page fact section, MercExchange tells its story and leaves little doubt that it will likely win its case, regardless of the rule eventually created by the high court. 

On the legal issues, MercExchange argues that the CAFC’s “usual rule” has been mischaracterized by eBay as an “automatic injunction” provision. Rather, the patent holder argues that courts have discretion to deny injunctions. The “usual rule,” they argue, flows naturally because it is only in “rare cases” that “any balance of hardships or the public interest favor the adjudged infringer.”  Rather, “in most cases those factors will strongly favor the patent holder.”

MercExchange also discusses the fundamental nature of a patent. 

The patent right’s fundamental aspect—its sum total—is “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.”

It is this right to exclude and not a ‘right to damages’ that defines the essence of a patentee’s rights.

MercExchange then walked through each of the district court’s stated factors that it used to originally deny the permanent injunction:

  • Willingness to license — According to MercExchange, it is “extraordinarily strange” to think that a patent holder’s willingness to license would be an indication that money damages may be adequate. (Land-owner example: you may allow your friends on your property, but may still want to exclude your enemies.)
  • Business method patents — According to MercExchange, Congress should address this issue.
  • Pending reexamination of MercExchange patents — According to MercExchange, this issue “is not properly before this court.”
  • Non-practice — MercExchange tried for years to practice the invention, and it does license its invention, which is as good as practicing the invention.  
  • Contempt proceedings — The threat of contempt proceedings against eBay for violating an injunction should not stop the court from issuing an injunction.
  • Failure to seek a preliminary injunction — MercExchange argues that this litigation strategy should not be held against it, and that requiring PI requests before granting permanent injunctions would further complicate the patent litigation procedure.

MercExchange’s only vacuous argument comes at the end where it essentially argues that all patentees are trolls to some extent because every patent includes at least some claim-scope that is not being practiced.

Government Brief: In the BlackBerry case, the Government sided with RIM, asking the district court to not issue an injunction.  Here, however, the DOJ has apparently flipped and now supports MercExchange. 

The Government argues that this case really involves a minor slip-up by the CAFC.  That court simply did not “adequately articulate” the principles regarding equitable relief. However, the Government argues that the court of appeals did reach the correct decision.

This position goes along with my own thoughts that the Supreme Court will hold that a court should weigh the pros and cons of an injunction before shutting down an infringer, but that there will still be a strong presumption that an injunction will grant — especially when the infringement is willful. 

* Query whether this brief provides any general indication of the Republican party stance regarding patent injunctions? [WSJ Blog][AuctionBytes][Patent Hawk]

Academics take sides: Two major groups of law professors have taken-sides in the debate.  First, a group of fifty-two patent-law professors, led by Mark Lemley of Stanford, filed a brief in support of eBay.  They argue that court’s should be given discretion to deny injunctive relief – even if such discretion is not used regularly or often.  The patent-law professors also make a distinction between a district court’s refusal to grant an injunction and a compulsory licensing scheme. (Patent-Law Professors Brief).

On March 10, a new brief, filed by nine professors of Law and Economics (L&E) takes the other side.  Professors Richard Epstein, Scott Kieff and Polk Wagner filed the brief in support of respondent, MercExchange.  They argue that the patent-law prof. brief “confuses the issues and muddies the waters in ways that weaken the structure of exclusive patent rights on which today’s elaborate system of licenses and other voluntary agreements rest.”

The L&E Professors take the position that the Federal Circuit’s jurisprudence is correct, and that “injunctions should generally issue except in those unusual cases in which good cause is shown for denying that form of relief.”  Where the L&E brief differs from the patent-law prof. brief is in the proposed route for determining when to refuse an injunction.  Specifically, the L&E brief argues that any exceptions to the general rule must fall within a specific category of exception, while the patent-law professors focus on more discretionary or ad hoc determinations.

PhRMA: PhRMA is an industry group that includes the major U.S. pharmaceutical research companies. The business models of those companies rely heavily on patent rights to protect innovations that may cost hundreds of millions to develop. PhRMA argues that the billions spent on R&D is predicated on assurances that the resulting IP rights will be strongly protectable.  This case threatens that long-held belief.

The industry group also notes that, if a hardship balance is considered, that the infringer’s hardship should not be considered when the hardship results from its obligation to stop infringing.

BIO: Like PhRMA, the members of the Biotechnology Industry Organization (BIO) argue that the right to injunctive relief is “vital in ensuring innovation” in their industry.  BIO quoted the 1824 case of Ex parte Wood for the proposition that our common law history unquestionably supports a strong right to injunctions against infringers.

The securing to inventors of an exclusive right to their inventions, was deemed of so much importance, as a means of promoting the progress of science and the useful arts, that the constitution has expressly delegated to Congress the power to secure such rights to them for a limited period. The inventor has, during this period, a property in his inventions; a property which is often of very great value, and of which the law intended to give him the absolute enjoyment and possession.

Ex parte Wood, 22 U.S. (9 Wheat.) 603, 608 (1824) (Story, J.) (emphasis added). Bio also favorably cites Hal Wegner’s article for the proposition that a compulsory license may well “run afoul” of the U.S. obligations under TRIPS.

GE, 3M, P&G Du Pont, and J&J: The group of industry giants support the presumptive right to an injunction that is “deeply rooted in the Constitution, the Patent Act, and 200 years of judicial precedent.”  This brief directly addresses eBay’s statutory hook of 35 U.S.C. 283, which only allows that courts “may grant injunctions in accordance with principles of equity.”  To quote Justice Marshall: “discretion is a motion, not to its inclination, but to its judgment; and its judgment is to be guided by sound legal principles.” I.e., a lower court’s discretion does not indicate that there should not be a strong presumption.

Rembrandt IP Management: Rembrandt is a “non-practicing entity” or NPE — meaning that it is a company that invests in patents but does not practice them. Rembrandt’s brief outlines the beneficial role that NPE’s can perform in the marketplace and in furtherance of the goals of the patent system. For instance:

  • Patent rights, like other property rights, benefit the community most when they are freely transferable.  Limiting the rights of certain patent holders practically limits the right to transfer.
  • Independent inventors and university researchers often have a niche in developing new ideas and new technology, but do not have the capital or the necessary tools to successfully bring products to market — inventors should not be penalized for not having a marketing wing.

Rembrandt also makes the point that without the threat of injunctions, “a well-funded infringer either would not take a license from an independent inventor at all, or would do so on a playing field that vastly favored the infringer.”

Intellectual Ventures: Intellectual Ventures has not been publicly termed a troll — perhaps because they have thus far been able to obtain licenses without litigation — but the secretive Washington State company does have a very high PPR (patent to product ratio).  Two dozen well known inventors signed-on to Intellectual Venture’s brief to send their message patent exclusivity promotes the progress of science and technology and promotes investment in research.  Perhaps more than any other groups, small entities and individual inventors rely on the potential for exclusivity to protect their work and to provide the incentive to research and develop new products.

Qualcomm: QualComm is an interesting story.  They used-to manufacture products, but now they primarily invent, design, and license.  They have proven that a big company can be competitive even when their only product is intellectual property.

Qualcomm and its co-amicus Tessera argue that eBay’s brief wrongly characterizes the patent marketplace. eBay and its supporters contentions of a “broken patent system” is not supported by the evidence.

This case itself shows that willful infringers are not cowed by the prospect of an injunction after an unsuccessful litigation defense and are not coerced into any settlement. To the contrary, large corporate infringement defendants often pursue a scorched earth defense strategy, particularly when they are sued by smaller entities.

Qualcomm also makes the important point that if eBay’s proposed changes were effectuated, they would result in a patent’s value depending upon the category of the owner — rather than on any intrinsic value of the claimed invention. “That world would be a distortion of the marketplace. The value of property should not depend on legal rules that are different for different owners.” 

ABA: The American Bar Association has sided with the patent holder MercExchange, arguing that the longstanding role of injunctions in patent cases should continue.  Interestingly, the ABA makes the novel argument that if we were to apply any new equitable considerations, those are “properly addressed” by Congress, not by the federal courts.


  • Party Briefs on the Merits
  • Amici Briefs on the Merits

    • Supporting MercExchange (Strong Injunctions)
  • Supporting Ebay (Weaker Injunctions)
  • Supporting Neither Party
  • Briefs for/against Certiorari:

  • Other

  •  * cite as Dennis Crouch, Review: EBay v. MercExchange Amici Briefs, Patently-O, March 13, 2006, available at


    USPTO Claim Language Interpretation: Must be “Reasonable” in Light of All the Evidence

    In Re Michael C. Scroggie (Fed. Cir. March 13, 2006) (NONPRECEDENTIAL)

    by Joseph Herndon

    In a non-precedential opinion, the Fed. Cir. affirmed in part and reversed in part a decision of the USPTO Board of Patent Appeals (the “Board”). Mr. Scroggie appealed the Board’s decision affirming a final rejection of his patent application having claims directed to a method for generating a web page (including the limitations “generating page data” and “personalized web page”).

    The Fed. Cir. stated the general principle that since during prosecution, claims “must” be given their “broadest reasonable interpretation,” this court reviews the Board’s interpretation of disputed claim language to determine whether it is “reasonable” in light of all the evidence before the Board.

    Scroggie argued that a hyper-link is not a web page, but rather a logical address that when selected, directs the user to a known web page. The Fed. Cir. agreed and held that the term “generating page data,” as recited in the claims, requires that page data is “generated,” not merely “selected.” The court stated that the asserted prior art, which teaches “selecting” advertisements that contain hyper-links, does not teach or suggest “generating.” Thus, the Fed. Cir. held that the Board’s construction of “generating page data” was unreasonable and its conclusion that the prior art teaches that limitation was unsupported by substantial evidence.

    On another note, the court further held that a web page may be considered “personalized” because (i) the contents of the page transmitted to the user are themselves specific to the user, or (ii) the page was chosen to be transmitted to a user based on the user’s personal data. In this case, the court noted that because the term “personalized web page” can reasonably be construed to mean either type of “personalized,” and because the prior art discloses the latter type, the claims including this limitation were reasonably interpreted by the Board and its conclusion that the prior art teaches this limitation was validly supported by substantial evidence.

    The Fed. Cir. did not elaborate on any requirements for the Board to meet the “reasonable interpretation” requirement, or the amount of evidence that would be sufficient to do so.

    Note: Joseph Herndon is an assiciate at the intellectual property firm of McDonnell Boehnen Hulbert & Berghoff.  Joe has a stellar background in electrical engineering and handles both patent prosecution and litigation.


    Design Patent: Ordinary Observer Test Must Examine Design as a Whole

    AIPLATalk158Amini Innovation v. Anthony California (Fed. Cir. 2006, 05–1159).

    Furniture is often protected by both copyrights and design patents. Amini sued Anthony for both copyright and design patent infringement. The district court granted summary judgment of non-infringement on both counts, and Amini appealed.

    AIPLATalk159Design patents: Design patents infringement is proving by overcoming two tests: the ordinary observer test and the points of novelty test.  The ordinary observer tests looks at the design as a whole, while the novelty test looks at individual elements of the design.  The CAFC found that the lower court had erred in its use of the ordinary observer test by analyzing “each element separately instead of analyzing the design as a whole from the perspective of an ordinary observer.” Reversed.

    Copyright: Unlike patent infringement, liability under copyright laws require some evidence of copying.  This is often satisfied by showing that the defendant had access to the protected design before creating the accused design. The Ninth Circuit operates under an “inverse-ratio rule” that requires a lesser showing of substantial similarity when there is a strong showing of access.

    To assess similarity, the Ninth Circuit uses a two-part analysis: the extrinsic test and the intrinsic test. The extrinsic test is an objective test that compares specific expressive elements while the intrinsic test focuses on what an ordinary reasonable audience would think.  Here, the district court erred by expanding its application of the extrinsic test to the “total concept and feel of the work.”