Tag Archives: Claim Construction

Microsoft v. i4i: Briefing the Appeal

Patent,

Microsoft v. i4i (On appeal at the Federal Circuit)

In the past several years, courts have somewhat weakened patent rights. Three cases have been particularly important: (1) KSR v. Teleflex (making it easier to find an invention unpatentably obvious); (2) In re Seagate (making it more difficult to obtain enhanced damages for willful infringement); and (3) eBay v. MercExchange (making it more difficult to obtain permanent injunctive relief to stop ongoing adjudged infringement). In its appellate brief, Microsoft pushes hard on these buttons – explaining their view that the district court misapplied the law.

This post discusses Microsoft’s appellant’s brief on the merits as well as the amicus briefs filed by Dell and HP. In a prior post, I discussed Microsoft’s separate motion for an emergency stay of permanent relief. The court has granted an expedited schedule and will hear oral arguments on September 23, 2009.

Microsoft’s frustrations with the court in the Eastern District of Texas are clear based on the company’s preliminary statements in its brief:

In patent cases, even more than most, the trial judge’s role as a gatekeeper is crucial. As gatekeeper, the judge must define the metes and bounds of a patent through claim construction and then ensure that the evidence presented by the parties’ numerous experts is both reliable and rooted in the facts of the case at hand. And after the jury has rendered its verdict, it is the judge who, before allowing that verdict to become an enforceable judgment, must ensure that the verdict is adequately supported by the evidence and supportable under the law. This gatekeeping function is especially important in patent cases because of the delicate balance struck by patent law to achieve its objective of promoting, rather than stifling, innovation. That balance can be lost if the district court does not protect the process, and patent litigation then becomes a tax on innovation rather than its guardian.

This case stands as a stark example of what can happen in a patent case when a judge abdicates those gatekeeping functions.

Microsoft’s best argument on appeal deals with claim construction. i4i’s asserted claim (see claim 14) covers a method of producing a map of metacodes where mapped content is stored in “distinct map storage means.” Microsoft argues that the “distinct” language requires that the mapped content be stored “separately and distinctly.” The district court rejected that argument and instead that the “distinct” limitation only required distinct addresses in memory. Because Microsoft Word stores the map and the metacodes in the same file, the company argues that it cannot infringe under a proper construction.

Moving from there, Microsoft argues that (1) the claims are invalid under KSR; (2) the injunction cannot be sustained under eBay; and (3) that the enhanced damage award conflicts with Seagate.

Amicus briefs by HP and Dell focus on the permanent injunction. Those two companies argue that the injunction against Microsoft would severely interrupt their business and harm consumers.

Documents:

Notes: Asserted Claim 14 reads as follows: A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising: providing the mapped content to mapped content storage means; providing a menu of metacodes; compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and providing the document as the content of the document and the metacode map of the document.

Microsoft v. i4i: Relevance of the Pending Reexamination

Patent, , , ,

[This post continues the discussion of emergency stays pending appeal that was begun here]

i4i Ltd. v. Microsoft Corp. (Fed. Cir. 2009)

Pending Reexamination: Microsoft has submitted its motion for a stay of injunctive relief pending the outcome of its appeal to the Federal Circuit.  Oddly, the first sentence of Microsoft's introduction begins with a statement that the PTO "already had provisionally rejected upon reexamination as anticipated and obvious." By 'provisionally rejected' Microsoft means that a non-final office action has been mailed out in the ex parte reexamination that it requested in November 2008 (the litigation was filed in March 2007).

The opening is odd because of its irrelevance. The vast majority of third party requests for ex parte reexaminations are granted (over 95%) and then 'provisionally' rejected (83% of those). That usual course is simply the beginning of a typically long reexamination process. Even amongst reexaminations that received a non-final rejection – most resulted in a reexamination certificate that confirmed the patentability of at least one original claim. Of course, the final resolution of the reexamination is likely years away. (The figures are based on my own study of 5,000 ex parte reexamination file histories).

The opening is also odd because, to my knowledge, the Federal Circuit has never placed any weight on the fact that a co-pending reexamination has been provisionally rejected.

Finally, the opening is odd because it does not relate to Microsoft's arguments for a stay. In particular, the company does not argue for a stay pending outcome of the reexamination. Microsoft does argue anticipation and obviousness, but those arguments are based on the district court claim construction. As discussed on Patently-O extensively last month, claim construction in court has no direct legal link with the claim construction used at the patent office during reexamination. [Link]

The reexamination request by Microsoft focuses on two prior art references: U.S. Patent No. 6,101,512 ("DeRose") is apparently 102(e) prior art because it was filed prior to i4i's application, and i4i is unable to antedate the reference and a published description of the "Rita" SGML editor. Both of these references were considered by the jury in its analysis. In addition, Judge Davis reviewed the jury determination and found no cause for a JNOV. Interestingly, Microsoft never moved for summary judgment on any of its invalidity arguments based on these references.

To be clear, Microsoft's brief is still well written and presents compelling arguments. The only problem is that its first argument may lead the court astray. A ruling is expected prior to the October 10. 

Documents:

  • Microsoft Motion for Emergency Stay: Download 2009-1504 [Note – A complete brief was due August 25, for that brief, Microsoft was granted permission to file an 18,000 word brief instead of the normal 14,000 word brief]
  • Judge Davis Memorandum: Download 20090817i4imemo 
  • Documents from the Reexamination Download 90010347 

Notes:

  • An important aspect of this case from a policy perspective is that it the patent covers XML software whose function is to facilitate interoperability.  The patent enforcement is looking largely block (or at least control) that function.
  • As the role of reexaminations continue to rise as a litigation strategy, understanding the interplay and conflict between Federal Court decisions and USPTO decisions will become critical.  Important questions involve: waiver; preclusion; and deference.

t minus 50: Microsoft Requests Emergency Stay of Injunctive Relief

Injunctions, Patent, Patent Cases 2009, Software

i4i Ltd. v. Microsoft Corp. (Fed. Cir. 2009)

On August 11, 2009, Judge Davis (E.D.Tex.) issued his final order in the i4i v. Microsoft patent litigation. That final order gives Microsoft 60 days to stop selling, using, or supporting infringing versions of MS Word. By my calendar, the injunction becomes effective October 10, 2009. I4i’s patent covers xml capabilities of the MS Word that were implemented in Office ’03 and ’07. At this point, it is unclear how difficult it would be for Microsoft to eliminate the adjudged infringing capability from its products.

Microsoft has already filed a motion with the Court of Appeals for the Federal Circuit demanding an emergency stay pending appeal. The Federal Circuit clerk immediately denied Microsoft’s motion for an “administrative stay.” Instead, a merits panel will consider the emergency motion at oral arguments calendared for a special session September 23, 2009. Microsoft’s brief-on-point is due August 25; i4i’s opposition is due September 8; and any reply is due September 14. If the Federal Circuit makes a decision quickly, Microsoft may have time to appeal directly to the Supreme Court for a midnight stay of execution.

The jurisprudence on stays pending appeal is somewhat lacking – largely because these cases are – by definition – decided in a rush and courts often do not have time to fully explain their decisions. Based on the lower court decision, Microsoft’s best arguments for a stay will be based on a combination of (1) its argument on claim construction; (2) the irreparable harm to Microsoft and its customers that would flow from the injunction; and (3) the relatively small amount of irreparable harm that i4i will feel during the few months while the appeal is pending.

Stay of Injunctive Relief Pending Appeal: Unless otherwise ordered by the court, a permanent injunction is not stayed during an appeal. In Hilton v. Braunskill, 481 U.S. 770 (1987), the Supreme Court outlined a four factor test used when determining whether to stay enforcement. The factors are essentially the converse of those used in determining whether to grant a preliminary injunction. These factors include: “(1) whether the stay applicant has made a strong showing that he is likely to succeed on the merits [of the appeal]; (2) whether the applicant will be irreparably injured absent a stay; (3) whether issuance of the stay will substantially injure the other parties interested in the proceeding; and (4) where the public interest lies.”

Patent Reform on this Issue: In 2006, patent reform legislation introduced in Congress would have added an automatic stay of permanent injunctions after a showing that “the stay would not result in irreparable harm to the owner of the patent and that the balance of hardships from the stay does not favor the owner of the patent.” Patents Depend on Quality Act of 2006, H.R. 5096, 109th Cong. §8 (2006) (proposing to amend 35 U.S.C. 283).

Notes:

  • Don Dunner (Finnegan) is representing i4i on appeal; Matthew Powers (Weil) appears to continue to lead the team for Microsoft.
  • The ABA Journal has an interesting discussion of the trial that focuses primarily on Microsoft’s attempts to paint i4i as a troll seeking a ‘bailout.’ [Link] [Seattle PI]
  • Prior Patently-O post on District Court Order.

Federal Circuit Affirms High Standard for Attorney Fees under 35 U.S.C. 285

Patent,

09-1045.jpgWedgeTail v. Huddleston Deluxe (Fed. Cir. 2009) 09-1045.pdf

After claim construction, WedgeTail – the patentee – filed a motion to dismiss its claims and granted Huddleston a covenant not to sue. Judge Folsom (E.D.Tex.) agreed and dismissed the case. Huddleston challenged the dismissal because it also wanted to collect attorney fees. Judge Folsom denied Huddleston’s request for a hearing on attorney fees without providing any reasoning.

The Patent Act provides for recovery of “reasonable attorney fees,” but only in “exceptional cases.” Ordinarily, such exceptional cases are only found in situations involving “inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and otherwise bad faith litigation; a frivolous suit or willful infringement.”

District courts are also given a “high level of deference” on this issue — especially when a request for fees is denied.

On appeal, the Federal Circuit affirmed – holding that the district court was not required to explain its denial (and that Huddleston had not shown sufficient evidence of an exceptional case).

Simply put, Huddleston has failed to demonstrate either that the district court clearly erred in failing to find this case exceptional or that Huddleston was harmed by the district court’s failure to entertain a motion for attorney fees. A remand is, therefore, unwarranted. . . .

Though findings on ‘exceptional case’ and reasons underlying the discretionary action on fees are helpful to an appellate court, remand should not be a matter of rote in every case in which findings and reason are not expressly set forth. (quoting Consol. Aluminum v. Foseco, 910 F.2d 804 (Fed. Cir. 1990)).

Affirmed

Notes: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. 285.

Federal Circuit Affirms High Standard for Attorney Fees under 35 U.S.C. 285

Patent,

09-1045.jpgWedgeTail v. Huddleston Deluxe (Fed. Cir. 2009) 09-1045.pdf

After claim construction, WedgeTail – the patentee – filed a motion to dismiss its claims and granted Huddleston a covenant not to sue. Judge Folsom (E.D.Tex.) agreed and dismissed the case. Huddleston challenged the dismissal because it also wanted to collect attorney fees. Judge Folsom denied Huddleston’s request for a hearing on attorney fees without providing any reasoning.

The Patent Act provides for recovery of “reasonable attorney fees,” but only in “exceptional cases.” Ordinarily, such exceptional cases are only found in situations involving “inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and otherwise bad faith litigation; a frivolous suit or willful infringement.”

District courts are also given a “high level of deference” on this issue — especially when a request for fees is denied.

On appeal, the Federal Circuit affirmed – holding that the district court was not required to explain its denial (and that Huddleston had not shown sufficient evidence of an exceptional case).

Simply put, Huddleston has failed to demonstrate either that the district court clearly erred in failing to find this case exceptional or that Huddleston was harmed by the district court’s failure to entertain a motion for attorney fees. A remand is, therefore, unwarranted. . . .

Though findings on ‘exceptional case’ and reasons underlying the discretionary action on fees are helpful to an appellate court, remand should not be a matter of rote in every case in which findings and reason are not expressly set forth. (quoting Consol. Aluminum v. Foseco, 910 F.2d 804 (Fed. Cir. 1990)).

Affirmed

Notes: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. 285.

Federal Circuit Affirms High Standard for Attorney Fees under 35 U.S.C. 285

Patent,

09-1045.jpgWedgeTail v. Huddleston Deluxe (Fed. Cir. 2009) 09-1045.pdf

After claim construction, WedgeTail – the patentee – filed a motion to dismiss its claims and granted Huddleston a covenant not to sue. Judge Folsom (E.D.Tex.) agreed and dismissed the case. Huddleston challenged the dismissal because it also wanted to collect attorney fees. Judge Folsom denied Huddleston’s request for a hearing on attorney fees without providing any reasoning.

The Patent Act provides for recovery of “reasonable attorney fees,” but only in “exceptional cases.” Ordinarily, such exceptional cases are only found in situations involving “inequitable conduct before the PTO; litigation misconduct; vexatious, unjustified, and otherwise bad faith litigation; a frivolous suit or willful infringement.”

District courts are also given a “high level of deference” on this issue — especially when a request for fees is denied.

On appeal, the Federal Circuit affirmed – holding that the district court was not required to explain its denial (and that Huddleston had not shown sufficient evidence of an exceptional case).

Simply put, Huddleston has failed to demonstrate either that the district court clearly erred in failing to find this case exceptional or that Huddleston was harmed by the district court’s failure to entertain a motion for attorney fees. A remand is, therefore, unwarranted. . . .

Though findings on ‘exceptional case’ and reasons underlying the discretionary action on fees are helpful to an appellate court, remand should not be a matter of rote in every case in which findings and reason are not expressly set forth. (quoting Consol. Aluminum v. Foseco, 910 F.2d 804 (Fed. Cir. 1990)).

Affirmed

Notes: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. 285.

Article: Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009

Patent

By Ed Reines and Nathan Greenblatt*

The Patent Reform Act of 2009 includes a provision allowing interlocutory appeals of claim construction orders.[1] As drafted, the provision gives the authority for approval of such an appeal to the district courts, without giving the Federal Circuit discretion to decline the appeal.[2] This approach is misguided. Failure to give the court of appeals a voice in the interlocutory appeals process flouts cautions inherent in the final judgment rule since its enactment in 1789, ignores the different institutional concerns of district and appellate courts, and will create problems of piecemeal appeals, undue delay, and crowded dockets that will impair the effectiveness of the Federal Circuit and contravene the purpose for enacting the provision in the first place.

In addition, the perceived problem of excess reversals of claim construction rulings that has motivated the current provision is a function, if anything, of the de novo review standard applicable to claim construction, not the final judgment rule.[3] Thus the proposed solution does not address the true issue in any event – it masks it.

Continue reading the article Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009.pdf

* The views expressed in this article are those of the authors and do not necessarily reflect the views of Weil, Gotshal & Manges LLP or any of its clients.

[1] See S. 515 sec. 8(b).

[2] Id. (amending 28 U.S.C. § 1292(c)(2) by giving the Federal Circuit exclusive jurisdiction):

(3) of an appeal from an interlocutory order or decree determining construction of claims in a civil action for patent infringement under section 271 of title 35. Application for an appeal under paragraph (3) shall be made to the court within 10 days after entry of the order or decree. The district court shall have discretion whether to approve the application and, if so, whether to stay proceedings in the district court during the pendency of such appeal.

[3] See, e.g., 6/6/2007 Testimony of Mary E. Doyle before the Senate Committee on the Judiciary regarding “Patent Reform: The Future of American Innovation” at 9-10 (arguing that interlocutory appeal is needed because “claim construction rulings are so frequently reversed by the Federal Circuit”).  

New Proposed Patent Rules Significantly Change Claim Construction Briefing

Patent

by David Donoghue (of Chicago IP Litigation and Holland & Knight)

The Northern District of Illinois judges are currently considering public comments on a new set of proposed Local Patent Rules – click here to download a copy of the proposed rules. The Court expects to enact a finalized version of the proposed Patent Rules later this year. As currently written, the rules likely will have a significant impact on the way that patent cases are litigated in the Northern District, and may result in an influx of patent cases to the Northern District, which is already among the top five for patent cases. As a result, patent litigators throughout the country should keep an eye on the proposed Patent Rules as they progress through the Court’s committee. While the proposed Patent Rules resemble those of the other major patent districts such as the N.D. California and the E.D. Texas, they differ in two rather significant respects:

1.     The proposed Patent Rules promote uniformity, not speed.

The proposed Patent Rules contemplate a trial approximately two years after a complaint is filed. During a public comment session, several Northern District judges pointedly stated that, in seeking to promulgate local patent rules, the Court does not want to become a “rocket docket” for patent cases. And the Court does not seek to become the busiest patent docket in the country. Instead, the aim of the local patent rules is simply to promote uniformity and best practices among the judges of the Northern District. The Northern District of Illinois is one of the largest districts in the country, and uniformity among the District’s would promote case management predictability for both the Court and the litigants. Each Northern District judge currently schedules patent cases based upon her own experience, with little uniformity among the judges. The proposed Patent Rules attempt to remedy that.

That said, the rules are optional, not mandatory—individual judges will be able to deviate from the proposed Patent Rules. But the proposed Patent Rules at least will provide a starting point for uniformity and a suggested framework for the judges who choose to adhere to them.

2.     Defendant opens and closes Markman briefing late in fact discovery.

The biggest deviation from the Northern District of California and Eastern District of Texas patent rules occurs in the claim construction phase. Significantly, the proposed Patent Rules do not contemplate two rounds of simultaneous briefing, as has become commonplace in patent cases. Instead, the proposed Patent Rules provide for a single set of briefs: the accused infringer files the opening brief, the patent holder responds, and the accused infringer replies. Notably, the accused infringer—not the patent holder—submits the initial and final briefs. The accused infringer necessarily will not have the benefit of the patentee’s claim construction position at the outset of the briefing. The practical impact of having the accused infringer file the opening claim construction brief remains to be seen, although some practitioners view this provision as having the potential to greatly increase the number of patent cases filed in the Northern District.

At the public comment session held on March 23, the judges on the rules committee explained the rationale behind this provision. Concurrent briefing, they noted, wasted a lot of time. The parties’ opening briefs tend to be ships passing in the night—the parties often argue past each other, rendering the opening briefs incomprehensible, or they agree with each other, rendering those points moot. As a result, neither the disputed claims nor the parties’ positions are fully understood until the concurrent responsive briefs. The proposed Patent Rules contemplate streamlining the process by eliminating simultaneous briefs.

The judges also addressed their decision to have the accused infringer, rather than the patent holder, begin the briefing. The judges explained that the patent holder’s opening argument is often for the “ordinary” meaning of claim terms. As a result, when the patent holder opens the briefing, the accused infringer has no chance to address many of the patent holder’s arguments because the patent holder often does not make those arguments until the reply brief. So, the judges explained, the Court and the parties are better served by having the accused infringer open the briefing with the patent holder responding to the accused infringer’s claim construction arguments.

Interestingly, a comment was made at the session pointing out that the Court has not decided how to schedule briefing when both parties assert patents against each other, that is, when each party is a patent holder and each party is an accused infringer. A possible resolution would be to allow two sets of parallel briefs with the accused infringer for each set of patents opening the briefing for those patents.

Conclusion

The proposed Patent Rules notably differ from the rules of other courts in two significant respects: the new briefing schedule, and for the fact that they are not aimed at decreasing the time to trial or at significantly growing the Northern District of Illinois’s patent docket. Assuming that the Court institutes the proposed Patent Rules with the current claim construction briefing schedule, it will be very interesting to see whether and how the claim construction procedures impact both case outcomes and the number of patent filings in the Northern District of Illinois.

For those interested in the specifics of the proposed Patent Rules, here is a general outline of the timeline and procedure that the Rules outline:

  • A standard protective order in place from the beginning of the case, unless and until it is modified, to avoid discovery delays being blamed upon entry of a protective order;
  • Automatic document production requirements of plaintiff when initial disclosures are served and of defendant when initial noninfringement and invalidity contentions are served;
  • Plaintiff serves initial infringement contentions two weeks after initial disclosures and defendant respond with initial noninfringement and invalidity contentions two weeks after that, followed two weeks later by plaintiff’s response to the invalidity contentions;
  • Plaintiff files final infringement contentions twenty one weeks after its initial contentions and defendant responds four weeks later with final noninfringement, invalidity and unenforceability contentions (after the final contentions, leave of Court is required for any amendments);
  • No party can seek a stay pending reexam after serving its final contentions;
  • The claim construction process begins two weeks after defendant’s final invalidity contentions are served;
  • Defendant files an opening claim construction brief along with a joint appendix including the patents in suit and their prosecution histories consecutively paginated, plaintiff then files a responsive brief within four weeks, and defendant has two weeks to file a reply;
  • Fact discovery closes forty two days after the claim construction rulings, which triggers expert discovery followed by a dispositive motion deadline; and
  • A trial is contemplated approximately two years after the filing of the complaint.

Claim Construction

Claim Construction, Patent, Patent Cases 2009

PatentLawPic745Wavetronix v. EIS Electronic Integrated Systems (Fed. Cir. 2009)

Wavetronix’s patent covers a big brother sensor to monitor vehicle trafic and to ensure that drivers are properly using the carpool (high-occupancy vehicle) lane. EIS was accused of infringement but convinced the Utah-based district court to grant summary judgment of non-infringement.

On appeal, the Federal Circuit has affirmed – largely based on claim construction of the claim term “probability density function estimate” or PDFE used to define the traffic lanes.

The excerpted claim reads as follows: 1. … a method for defining traffic lanes, comprising … b. generating a probability density function estimation … of said selectable plurality of vehicles; and c. defining said traffic lanes … from said probability density function estimation.

Writing for the court, Judge Patel (sitting by designation from the N.D. of Cal.) construed PDFE to as “a finite data set large enough to approximate a function of a continuous variable whose integral over a region gives the probability that a random variable falls within the region.”

[Updated] That definition – requiring an approximation of a continuous variable – helps EIS. The EIS system can also automatically define the traffic lanes based on traffic data, but the company claims that its device does not do so with “probability analysis” but rather uses large binary bins. Based on this distinction Judge Patel held that the EIS system data is “too coarse” to be a PDFE.

Even in a close case such as this, the court held that the DOE cannot rescue the patentee because of the tight requirements of element-by-element application of the DOE and the doctrine of vitiation.

Blackboard: Federal Circuit Again Find Software-Related Means-Plus-Function Claims Invalid for Failing to Disclose Sufficient Structure

CAFC, Claim Construction, Means Plus Function, Patent, Patent Cases 2009, , ,

Blackboard v. Desire2Learn (Fed. Cir. 2009) 08-1368.pdf

Blackboard’s patent covers an internet-based educational support system and method. (U.S. Pat. No. 6,988,138). On summary judgment, the district court (Judge Clark, E.D. Tex.) found claims 1-35 invalid as indefinite, but a jury found found that Desire2Learn liable for infringement of claims 36-38. On appeal, the Federal Circuit agreed that Claims 1-35 are indefinite, and – after altering the claim construction – held that the remaining claims were also invalid as anticipated. pic-54.jpg

Means-Plus-Function: Blackboard’s seemingly broadest claim (claim 1) includes several means-plus-function clauses, including a “means for assigning a level of access and control.” The specification briefly discusses an “access control manager” (ACM) with an “access control list.” On appeal, however, the court found that brief description to be an insufficient “disclosure of the structure that corresponds to the claimed function” and consequently indefinite under 35 U.S.C. §112 ¶2. See In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994)(en banc).

“[W]hat the patent calls the ‘access control manager’ is simply an abstraction that describes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed.”

Important for patent drafter, means-plus-function claims require disclosure in the specification even if the means are already well known in the art.

The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users’ predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the “corresponding structure” to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.

Because claims 2-35 all depend upon claim 1, they are all invalid as indefinite

Claim construction: At the trial, Blackboard’s expert could only identify one difference between claims 36-38 and the prior art. Namely, that the Blackboard patent identified a “single login” feature that allowed one user to have various roles within the system. “For example, Blackboard asserted that its claimed method would allow a graduate student who was a student in one course and a teacher in another to use a single login to obtain access to both courses and to obtain access to the materials for each course according to the graduate student’s role in each.” However, on appeal, the Federal Circuit determined that the claims do not actually require that feature — leading them to hold the claims invalid based primarily on the admissions of Blackboard’s own expert.

[O]nce the claims are properly construed, the conclusion of anticipation is dictated by the testimony of Blackboard’s own witnesses and the documentary evidence that was presented to the jury. Based on that evidence, and in the absence of a “single login” requirement in claims 36-38, it is clear that the prior art contains every limitation of those claims.

Defendant Desire2Learn wins a complete victory (after a few million in attorney fees).

Diverging Claim Constructions

Articles and Publications, Claim Construction, Patent, ,

Yesterdaypic-53.jpg raised a valuable discussion on claim construction with many excellent comments on the Cotropia-Bey article. The issue is obviously important since claim construction disputes arise in virtually every attempt to enforce a patent. One problem with claim construction in litigation is that the district court follows a completely different process of claim construction than do PTO examiners. The rules suggest that the two claim construction scopes should form concentric circles with the PTO’s broad construction and the Court’s narrower construction. The reality is that it is hard to form these concentric circles — especially with complex claims. And, it is virtually impossible to form concentric circles of construction using such distinct construction processes. Instead of nested constructions, in many cases the outcome of the district court tends to diverge from that suggested during prosecution.   

It seems odd that the patent prosecution process does not focus on determining the correct meaning of the claims. The better approach may well be to allow the original examination to determine the correct meaning of claims in a way that can be followed by courts down the line. I suspect that this approach would actually lead to more valid patents — especially if examiners applied a stronger hand on issues of indefiniteness.

Notes:

  • Joel Miller’s 2006 JPTOS article in the Broadest Reasonable Interpretation standard is available here.
  • Mark Lemley and Dan Burke recently wrote a paper arguing that we should admit defeat and move to a central claiming system. Their analogy is that claims might be better used as sign-posts rather than fence-posts. [Link]
  • Lemley’s 2005 article on The Changing Meaning of Patent Claim Terms is also a good read. [Link]

The Unreasonableness of the Patent Office’s ‘Broadest Reasonable Interpretation’ Standard

Academic Studies, Articles and Publications, Claim Construction, Patent,

Chris Cotropia (Richmond Law) and Dawn-Marie Bey (King & Spalding) have an interesting draft article out on the PTO’s “broadest reasonable interpretation” standard for interpreting claims during patent prosecution. The article notes that the increase in post-grant reviews (reexaminations) running concurrently with infringement litigation raises the stakes of the PTO’s standard.

From the abstract:

Although there has been much commentary on patent claim interpretation methodology in general, very little has been written about the unique interpretation approach the Patent Office employs. The courts, starting with the Court of Customs and Patent Appeals and continuing with the Federal Circuit, instruct the Patent Office to give every applied-for claim its ‘broadest reasonable interpretation’ (BRI) during patent examination. This Article explores this special standard and concludes that not only are the previously articulated rationales behind the BRI standard severely lacking, the standard is also contrary to both the patent statutes and the concept of a unitary patent system. The BRI standard additionally allows patent examiners to avoid difficult claim interpretation issues, leads to improper and uncorrectable denials of patent protection, and is incurably ambiguous.

Notes:

When The Infringing Device only Temporarily Meets the Claim Limitations

Claim Construction, Injunctions, Patent, Patent Cases 2009,

PatentLawPic742Gemtron v. Saint-Gobain (Fed. Cir. 2009)

The Michigan-based district court found that Saint-Gobain’s refrigerator shelves infringe Gemtron’s patent No. 6,679,573 and awarded a permanent injunction against further infringement. The shelves were unique – primarily because the glass panel shelf securly snaps into its plastic frame rather than being held by adhesives. The claims required the plastic fram to be “relatively resiliant” so that the glass could snap into place.

The claim construction issue was interesting because it focused on timing. Saint-Gobain’s plastic frame was resiliant while still warm immediately after forming. However, it quickly hardened and became brittle afterward. The accused infringer argued that the limitation “‘relatively resilient’ should not mean ‘temporarily resilient immediately after cooking in an oven and before any opportunity to cool.’”

On appeal, the Federal Circuit affirmed – finding that the purpose of the resiliance (to install the glass panel) “suggests that the claimed resilience of the frame need only be exhibited during assembly.”

There is no discussion in the specification of any purpose for or value of the “relatively resilient” structural characteristic …, other than to facilitate assembly of the shelf. This indicates that the end edge portions of the frame have the claimed structural characteristic—“relatively resilient”—if they are able to deflect at the time the shelf is assembled, to “snap-secure” the glass panel within the frame.

Affirmed.

  • Note: The permanent injunction was affirmed without comment.

More False Marking: Forest Group v. Bon Tool

Patent, Patent Cases 2009,

The Forest Group v. Bon Toolpic-49.jpg

A company that falsely marks or advertises a product as patented “for the purpose of deceiving the public” can be held liable to the government for “not more than $500” for each offense. 35 USC 292. The statute gives standing to “any person” to sue and collect one-half of the award.

Forest Group originally sued Bon Tool for infringement of its patent on stilts used primarily in construction work such as hanging drywall.   Forest’s claims were dismissed on summary judgment for lack of infringement.

Based on the court’s claims construction, It turns out that Forest Group’s stilts are not covered by its own patent either. You see, the asserted patent requires “a resiliently lined yoke” but Forest Group’s products (marked as patented) do not include that element.

The court found a false marking elements were met, but refused to find false advertising under Section 43(a) of the Lanham Act because Bon Tool did not prove that the deceptive marking was “likely to influence the purchasing decision” of consumers.

On damages, the court awarded only $500 (with $250 going to the government) because Bon Tool could point to only one factory-order of marked products after Forest Group had “knowledge” that its stilts were not covered by the listed patent.

“That single decision constitutes a single offense for purposes of calculating damages under § 292. The Court assesses a penalty in the amount of $500.00 against Forest pursuant to § 292(b).”

The case is on appeal at the Federal Circuit. Patent Attorney Paul Hletko filed an amicus brief in that appeal arguing that damages should be applied on a per-article basis. Hletko’s company Heathcote Holdings sued Church & Dwight for false marking of its Mentadent products.

OVERVIEW OF USPTO PROCEEDINGS FOR THE REEXAMINATION OF A U.S. PATENT

Patent, Reexamination, , ,

Effect of a Pending Reexamination — Each claim of a patent is presumed valid under 35 U.S.C. 282 and may be enforced notwithstanding the presence of a pending reexamination proceeding. See Ethicon v. Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988); See also Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d 1316, 1328, 59 USPQ2d 1823, 1831 (Fed. Cir. 2001); In re Etter, 756 F.2d 852, 857, 225 USPQ 1, 4 (Fed. Cir. 1985)(en banc). Although litigation may move forward in parallel with a reexamination proceeding, at the district court’s discretion, the results of the reexamination proceeding may have an effect on the litigation. See e.g., In re Translogic, 504 F.3d 1249 (Fed. Cir. 2007). Under 35 U.S.C. 307, a patent is not revised by any amendment or cancellation of a claim made during a reexamination proceeding until a reexamination certificate is issued.

Ex Parte Reexamination – A proceeding in which any person may request reexamination of a U.S. Patent based on one or more prior patents or printed publications. A requester who is not the patent owner (i.e., a “third party requester”) has only limited participation rights in the proceeding. [MPEP 2209]

Inter Partes Reexamination – A proceeding in which any person who is not the patent owner and is not otherwise estopped may request reexamination of a U.S. Patent issued from an original application filed on or after November 29, 1999 based on one or more prior patents or printed publications. Both patent owner and third party requester have participation rights throughout the proceeding, including appeal rights. [MPEP 2609]

Reexamination Granted – An Order Granting Reexamination is not a determination of claim patentability. An Order that one or more claims of a U.S. Patent will be reexamined because the request has established the existence of at least one SNQ based upon prior patents and/or printed publications. [MPEP 2247.01]

In ex parte reexamination, the Order, whether granting or denying reexamination, must be mailed within three months of the filing date of the request for reexamination. [MPEP 2241]

In inter partes reexamination, the Order must be mailed not later than three months after the request is filed.   [MPEP 2641]

Reexamination Denied – An Order Denying Reexamination is also not a determination of claim patentability. An order denying reexamination of any of the claims of a U.S. Patent because the Office has determined that no SNQ has been established in the request for reexamination. [MPEP 2247.01]

Substantial New Question of Patentability (SNQ) – A request for reexamination must establish the existence of at least one new technological teaching affecting any claim of the patent for which reexamination has been requested that was not considered by the Office in a prior Office proceeding involving the patent. The SNQ is established based on prior patents and/or printed publications. [MPEP 2242]

Notice of Filing of Request for Reexamination – Notice that a request for reexamination has been filed and accorded a filing date is published in the Official Gazette. [MPEP 2215]

Rejection (Non-Final) – The initial Office action on patentability.

In ex parte reexamination, the initial action is not mailed with the Order Granting Reexamination; the patent owner may file optional comments, to which the third party requester may respond, prior to the initial Office action. Therefore the Office must await the expiration of the periods for such comments and responses thereto before mailing the initial action. [MPEP 2262]

In inter partes reexamination, the initial action may optionally be mailed together with the Order Granting Reexamination, but even if not, no party comments are permitted prior the mailing of the initial action. Patent owner files a response to a non-final action that includes argument and/or an evidentiary showing and/or amendments, and the response will be entered as a matter of right. Third party requester may thereafter respond with written comments directed to the Office action and to the patent owner’s response. [MPEP 2260]

Rejection (Final) – A second or subsequent action on patentability in an ex parte reexamination may be made “final.” While responsive arguments may be considered, entry of an amendment or consideration of additional evidence is not a matter of right in a final rejection. Patent owner may appeal to the USPTO Board of Patent Appeals and Interferences (BPAI). [MPEP 2271]

Action Closing Prosecution (ACP) – The second or subsequent action on patentability in an inter partes reexamination proceeding. Patent owner may respond with argument and/or an evidentiary showing and/or amendments. Alternatively, patent owner may choose not to respond. If patent owner does file a response,
then third party requester may thereafter file written comments directed only to the patent owner’s submission. Entry of the patent owner response is not a matter of right. Neither party may appeal at this point in the proceeding. [MPEP 2671.02]

Right of Appeal Notice (RAN) – After (1) considering any patent owner response to an ACP, and any third party requester written comments thereto, or (2) the expiration of the time for patent owner to file a response and no response has been filed, the examiner will either re-open prosecution if necessary, or issue a RAN. The RAN sets time periods in which the parties may appeal to the BPAI. The RAN also closes prosecution. Any amendment filed after a RAN will not be entered. [2673.02]

It is possible for the Office to issue a RAN after a patent owner response to the initial Office action on patentability if both parties stipulate that the issues are appropriate for a final rejection and or a final patentability determination.

Appeal to the BPAI – Ex Parte Reexamination – A notice of appeal is a proper response to a final rejection in an ex parte reexamination. Only patent owner may appeal. The appeal process is similar to that in a non-provisional patent application. [MPEP 2273]

Appeal to the BPAI – Inter Partes Reexamination – Either party may file a notice of appeal as a proper response to a RAN in an inter partes reexamination. If some clams are rejected and some claims are allowed or confirmed as patentable, both parties may appeal those determinations, file appeal briefs, respondent’s briefs directed to the other party’s appeal brief, and, after the examiner files the examiner’s answer to those briefs, file a rebuttal brief directed to the examiner’s answer. [MPEP 2674]

Subsequent (Court) Appeals – Ex Parte Reexamination – If the request for reexamination was filed prior to November 29, 1999, patent owner may appeal the decision of the BPAI to either the U.S. District Court for the District of Columbia, or to the Court of Appeals for the Federal Circuit. If the request for reexamination was filed on or after November 29, 1999, patent owner may appeal only to the Federal Circuit. [MPEP 2279]

Subsequent (Court) Appeals – Inter Partes Reexamination – Either party who was a party to an appeal to the BPAI and is dissatisfied with the result may appeal only to the Court of Appeals for the Federal Circuit. [MPEP 2683]

Concurrent Reexamination and Litigation – If there is concurrent litigation and reexamination on a patent, and the request for reexamination was filed as a result of court order, or the litigation has been stayed for the purpose of reexamination, the Office will expedite the proceedings by taking the case up for action at the earliest possible time, setting shorter response times, and permitting extensions of time only upon a strong showing of sufficient cause. [MPEP 2286]

Effect of Concluded Litigation on Reexamination

A court decision holding that a patent claim is valid will not preclude the Office from continuing to reexamine such claim in an ex parte reexamination proceeding, even if the court decision is final and non-appealable. The Office applies the “broadest reasonable interpretation” for claim language in a reexamination proceeding, because claims may be amended during the proceeding. Courts apply a less liberal standard of claim interpretation, and therefore, the Office may conclude that a claim held valid in a court proceeding is unpatentable or invalid in an ex parte reexamination proceeding. [MPEP 2286]

A final, non-appealable court decision holding that a patent claim is invalid will preclude the Office from ordering any reexamination proceeding for such claim, or, will result in termination of any reexamination proceeding previously ordered as to such claim. [MPEP 2286]

It should be noted that with respect to inter partes reexamination, a final, nonappealable holding in litigation that a patent claim is valid may operate to estop a party from even requesting inter partes reexamination of that claim, or from maintaining a previously ordered inter partes reexamination of that claim. Estoppel may also operate to preclude a party who has obtained an Order Granting Inter Partes Reexamination of a patent claim from asserting invalidity of that claim in litigation under Section 1338 of Title 28 on grounds that such party raised, or could have raised, during that inter partes reexamination, if that claim has been finally determined to be patentable in the inter partes reexamination proceeding. [MPEP 2686.04(V)]

Notice of Intent to Issue Reexamination Certificate (NIRC) – Reexamination proceedings do not become “abandoned.” Rather, an NIRC is mailed to inform the parties that a reexamination proceeding has been terminated, whether by the failure of a party to timely file a required response, or by the natural resolution of all outstanding issues of claim patentability. The NIRC lists the status of all claims that were subject to reexamination, including any patent claims that have been canceled and any claims added during the proceeding that were not part of the patent that were reexamined and determined to be patentable. The NIRC also indicates which patent claims, if any, were not reexamined. An NIRC may include an examiner’s amendment, and must include reasons for confirmation of any patent claims that were determined to be patentable without amendment, and reasons for allowance of any amended patent claims or any newly added claims. [MPEP 2287]

Reexamination Certificate – A reexamination proceeding is concluded by publication of a reexamination certificate. The certificate amends the text of the patent that was reexamined, in a manner analogous to a certificate of correction. The Reexamination Certificate will contain the text of all changes to the text of the patent that was the subject of the reexamination proceeding. [MPEP 2288 and 2290]

Notice to the Public of Reexamination Certificate – Publication of a reexamination certificate is announced in the Official Gazette. [MPEP 2691]

Assistant Examiners and Patent Term Adjustment

Patent

Newly minted patent examiners play the role of "assistant examiners" at the US patent office. The work of assistant examiners is reviewed by primary examiners, and both are reviewed by supervisory patent examiners as well as quality control specialists.

Of the roughly 160,000 utility patents issued in the past year (June 29,2008 – June 29, 2009), about 37% were examined by an assistant examiner with the remaining 63% handled by primary examiners working alone. This proportion varies according to Technology Center.

Technology Center

Patents Issued
6/29/2008 – 6/29/2009

Percent Handled by
Assistant Examiners

1600

Biotechnology and Organic Chemistry

11,667

38%

1700

Chemical and Materials Engineering

16,857

28%

2100

Computer Architecture, Software, and Information Security

16,217

47%

2400

Networking, Mulitplexing, Cable, and Security

3,370

55%

2600

Communications

23,758

42%

2800

Semiconductors, Electrical and Optical Systems and Components

50,812

36%

3600

Transportation, Construction, Electronic Commerce, Agriculture,

18,098

34%

3700

Mechanical Engineering, Manufacturing, Products

18,018

30%

4100

Training Academy

372

98%

 

For applicants who appreciate delay, patents that were handled by assistant examiners are more likely to be eligible for patent term adjustment due to patent office delay. (This results hold true for each technology center). 80% of patents handled by assistant examiners were awarded some PTA while only 72% of those handled solely by a primary examiner. This translates to an expected PTA of 12 months versus 9 months respectively.

Only applications filed after May 29, 2000 are eligible for a patent term adjustment. More than 99.5% of patents issued thus far in 2009 have a PTA qualifying filing date. Over the past four years, the percent of patents with some patent term adjustment has been steadily rising over time.

Notes:

"The patent term adjustment (PTA) provisions of the American Inventors Protection Act of 1999 (AIPA) allow for term adjustment: (1) if the USPTO fails to initially act on an application within fourteen months of its filing date; (2) if the USPTO fails to respond to a reply or appeal by applicant within four months of the reply or appeal; (3) if the USPTO fails to act on an application within four months of a Board of Patent Appeals and Interferences (BPAI) or court decision in an application containing allowable claims; (4) if the USPTO fails to issue a patent within four months of the date the issue fee was paid; (5) if the USPTO fails to issue a patent within three years of its filing date; (6) if issue of a patent was delayed due to imposition of a secrecy order; (7) if issue of a patent was delayed due to an interference proceeding; or (8) if the issue of a patent was delayed due to successful appellate review. This PTA smorgasbord requires the USPTO and applicants to monitor numerous events during the prosecution of the application to determine the appropriate term adjustment, and often results in applicants obtaining patent term adjustment despite the fact that the patent has an unadjusted term of longer than seventeen years from grant.

The purpose of the patent term adjustment provision in the AIPA was to guarantee that diligent applicants would still have a patent term of at least seventeen years from grant under the twenty-year patent term system. If the USPTO issues the application within three years from its filing date, any patent term adjustment operates to overcompensate the patentee. PTA should be limited to the situations in which the USPTO delayed processing or examination of the patent and this delay resulted in the application pending before the USPTO for more than three years." Via USPTO

Understanding the Role of the Board of Patent Appeals: Ex Parte Rejection Rates on Appeal

BPAI, Patent, , , , , ,

Every proposed patent reform measure includes an expanded role for the US Patent & Trademark Office’s administrative patent court – known today as the Board of Patent Appeals and Interferences, the BPAI, or simply the Board. Even without legislation, the role of the BPAI has expanded greatly in the past few years. The number of ex parte appeals in FY2009 is expected to at least double the record-filing of 6,400 appeals in FY2008. I suggest that two factors have led to this short term dramatic rise in appeals: (1) an increase in rejection-rate by patent examiners; and (2) attempts by the PTO to limit non-appeal avenues for achieving full claim scope. These limits include the PTO’s proposed rules that would curtail the applicant’s ability to file multiple requests for continued examination (RCEs), continuation applications, and a multitude of claims. Although these rules have only been threatened, they impact appeal practice because they may apply to already-pending applications. Although more gradual, two additional influences on the rise in appeals include: (1) the continued perceived value of patent rights and (2) the continued rise in the number of patent application filed each year.

During patent prosecution, an applicant has a right to appeal to the Board after its application is twice rejected. 35 U.S.C. 134. In this short article, I look at how the Board responds to those rejections on appeal. Many appeals involve multiple rejections each of which may be affirmed or reversed. In addition, the Board occasionally introduces a new ground for rejection even after reversing an examiner decision. This analysis opens-up these decisions and provides data issue-by-issue.

My data comes from two primary sources. First, using Westlaw, I downloaded copies of the approximately 6,000 ex parte BPAI decisions issued between January 2008 and May 2009. Using an automated script, I extracted data from each of those appeals, including the holding and the extent of discussion of various issues. (i.e., how often “obviousness” or “enablement” is discussed in the opinion.) In addition, just under 200 ex parte decisions from 2009 were randomly selected and scored by hand to determine how the BPAI decided individual issues within the appeals. Board decisions typically identify a series of issues and then decide each issue. In Ex Parte Cypher, 2009 WL 1162435, 2008-4722, (Bd. Pat. App. Inter. 2009), for instance, the Board identified two issues: “(1) Claims 1-4 … are rejected under 35 U.S.C. § 103(a) as being unpatentable over Loh in view of McFarling. (2) Claims 9-11 … are rejected under 35 U.S.C. § 103(a) as being unpatentable over Loh and McFarling in view of Yeh.” In Cypher, both issues were affirmed. As a consequence, the data for this case reflects that two obviousness issues were raised, both of which were affirmed.

Results:

In the hand-scored sample, the average Board decision considered 2.1 issues (median of two issues). Approximately 61% of decided issues are affirmed on appeal and 39% are reversed. (In this study, fewer than 1% of issues were expressly not decided.) The issue-by-issue analysis fits with the overall holdings for cases on appeal. In the hand-scored sample, 59% of the cases were affirmed as a whole, 12% were affirmed-in-part, and 29% were reversed. (This sample parallels the Board’s own statistics for FY2009 which indicate that 60% of its decisions on the merits are affirmances, 15% affirmance in part, and 25% reversals). Table 1 shows the issue-by-issue results alongside the overall case-holding for the hand-scored sample.

  

Issue-by-Issue Results

Case-by-Case results

Affirmed

61% of issues affirmed

59% of cases affirmed

Affirmed-in-Part

N/A

12% of cases affirmed-in-part

Reversed

39% of issues reversed

29% of cases reversed

Table 1

    

As you might expect, when there is a strong correlation between the overall case holding of an appeal and the holdings on individual issues at issue in the appeal. When the overall case-holding is affirmed, the vast majority of issues are also affirmed. However, in the hand-scored sample, about 10% of cases that were affirmed included some individual issues that were reversed. Often, the reversed issues were rejections argued by the examiner in the alternative. In Ex Parte Mcquiston, 2009 WL 598537, 2008-3224 (Bd. Pat. App. Inter. 2009), for instance, applicant’s claim 1 had been rejected as (1) anticipated by Golds; (2) obvious over Golds; (3) anticipated by Simso; and (4) obvious over Simso. The Board rejected the first three of these rejections, but the claim remained unpatentable as obvious over Simso and the examiner’s decision affirmed as a whole.

Table 2 compares the case-holding with the issue-by-issue analysis based on our hand-scored sample of 200 BPAI decisions. As seen in Table 2, when a case is affirmed-in-part, roughly half (on average) of the issues are affirmed and half are reversed. In cases that were reversed, every issue was also reversed. (?2 P<.01).

Case Holding

Percent of Issued Affirmed

Percent of Issues Reversed

Affirmed

92%

8%

Affirmed-in-Part

51%

49%

Reversed

0%

100%

Table 2

    

Number of Issues on Appeal: In Mcquiston, the applicant needed to address each alternate reason for rejection in order to win on appeal. In most cases, however, each claim is rejected for only a single reason – usually obviousness. See infra. The applicant can then choose how to group issues on appeal. If, for instance, claims 1-10 are each rejected as obvious, the applicant could choose to argue each claim separately or cluster the claims into one or more groups that are then argued as a unit. Chart 1 uses the hand-scored data to presents the likelihood of a particular case-holding as a function of the number of issues on appeal.

When only one issue is presented, the result in the case tracks the result of that issue. As more issues are presented, the likelihood of a split affirmed-in-part decision rises dramatically while the likelihood of either complete affirmance or complete reversal drops. Chart 2 is a cumulative frequency for the number of issues presented on appeal. In our sample, the number of claims ranged from 1 to 8. The median was 2 claims and the mode 1 claim. About 94% of decisions discussed four or fewer issues.

The Board is authorized to offer new grounds for rejection, and did-so in about 4% of the cases in the hand-scored study. The most common new ground was for obviousness.

Obviousness: Obviousness is the bread and butter of patent examinations. In this study, I also show that it is the mainstay of BPAI ex parte appeals. 90% of appeals in my hand-scored study included at least one obviousness issue that was decided on appeal. More than half of the appeals (54%) focused only on obviousness. The closest runner-up issue – anticipation – was an issue in 37% of the appeals. Other issues on appeal (each with a frequency of < 5%) included in descending frequency: written description requirement; indefiniteness, patentable subject matter, obviousness-type double patenting, and enablement.

For applicants, the fact that the majority of issues involve obviousness spells trouble for applicants. In the hand-scored data, the Board affirmed obviousness findings much more often it did for other grounds of rejection. Specifically, the Board affirmed 65% of the appealed obviousness issues, but affirmed only 52% of the appeal issues made on grounds other than obviousness. Table 3 compares these results for the hand-scored sample of 200 cases. (?2 P<.05).

Issue Holding

Obviousness Rejection

Other Grounds of Rejection

Affirmed

65%

52%

Reversed

35%

48%

Table 3

    

The pervasiveness of obviousness issues is further confirmed by the larger sample of 6,000 ex parte decisions issued between January 2008 and May 2009. Using a parsing script, I looked for discussions of obviousness issues by counting the number of times that the terms such as “obvious” and “35 U.S.C. § 103(a)” appeared in each opinion. In that sample, 87% of the decisions discussion obviousness while only 13% do not discuss obviousness. Table 4 shows the roughly parallel results.

  

Hand-Scored Sample

Automatically Parsed Sample

  

(n ˜ 200)

(n ˜ 6,000)

Obviousness at Issue

90% of cases decide an obviousness issue

87% of cases discuss either obviousness or Section 103(a)

No Obviousness Issue

10% of cases do not decide any obviousness issue

13% of cases do not discuss obviousness or Section 103(a)

Table 4

    

In order to ensure that I was picking up an actual obviousness issue, I created a script that looked for cases where obviousness was more intensely discussed, i.e., where obviousness terms were mentioned at least three times. In those cases where obviousness was intensely discussed, the Board affirmed the examiner’s rejections decisions 59% of the time. In cases where obviousness was not discussed at all, the examiner was affirmed in only 37% of cases. Table 5 compares these results for the automatically-parsed sample of 6000 cases. (?2 P<.01).

Case Holding

Obviousness Intensely Discussed

No Discussion of Obviousness

No Discussion of Obviousness or Novelty

Affirmed

59%

37%

22%

Affirmed-in-Part

15%

10%

4%

Reversed

26%

47%

74%

Table 5

      

The far right column of Table 5 provides a compelling statistic. 358 cases in the sample had no discussion of either obviousness or novelty. Of those cases, 74% were reversed on appeal.

Technology Center Specific Results: Patent examination is divided amongst various technology centers. Although the substantive patent laws do not vary across technology lines, patent practice can vary greatly. The BPAI regularly updates a statistical breakdown of its opinions by tech center. [Link]. Table 6 is derived directly from the BPAI statistics for FY2009 through May 2009 and shows the percentage of decisions on the merits from each tech center that arrive affirm, affirm-in-part, or reverse, respectively.

Technology Center

Affirmed

Affirmed-In-Part

Reversed

1600 Biotechnology and Organic Chemistry

59%

15%

27%

1700 Chemical and Materials Engineering

69%

11%

20%

2100 Computer Architecture, Software, and Information Security

63%

13%

24%

2600 Communications

64%

14%

21%

2800 Semiconductors, Electrical and Optical Systems and Components

65%

11%

24%

3600 Transportation, Construction, Electronic Commerce, Agriculture,

47%

22%

31%

3700 Mechanical Engineering, Manufacturing, Products

53%

17%

30%

Table 6

      

Focusing in on obviousness again, it is interesting to see that appeals from Tech Center 1600 (Biotechnology and Organic Chemistry) are the least likely to discuss obviousness. The most appeal decisions emerge from Tech Center 1700 (Chemical and Materials Engineering), and those appeals are the most likely to include a discussion of obviousness. In particular, a discussion of obviousness is found in 92% of TC 1700 appeals but only 76% of TC 1600 appeals. (?2 P<.01). The difference is partially explained by TC 1600’s more rigorous application of the Section 112 issues of written description, enablement and indefiniteness. Table 6 is again derived from the automatically-parsed sample of 6,000 Board decisions. For each tech center, Table 7 indicates the percent of cases that discuss obviousness; both obviousness and novelty; novelty; and neither obviousness nor novelty. This table again highlights (1) the focus of the PTO on obviousness issues (and to a lesser extent novelty issues) and (2) the differences of TC 1600 from the rest of patent practice.

 

Percent of Cases Issue on Appeal

Technology Center

Obviousness+

Obviousness and Novelty

Novelty+

Neither Obviousness Nor Novelty

All

87%

31%

40%

4%

1600 Biotechnology and Organic Chemistry

76%

20%

26%

18%

1700 Chemical and Materials Engineering

92%

29%

34%

3%

2100 Computer Architecture, Software, and Information Security

82%

29%

43%

3%

2600 Communications

89%

31%

39%

3%

2800 Semiconductors, Electrical and Optical Systems and Components

88%

35%

45%

3%

3600 Transportation, Construction, Electronic Commerce, Agriculture,

87%

30%

40%

2%

3700 Mechanical Engineering, Manufacturing, Products

87%

37%

47%

2%

Table 7

        

 

Notes:

  • Thanks to two of my research assistants – Patrick Barnacle and Jaron Brunner – for helping me to score the individual decisions by hand.
  • The BPAI only publishes opinions once the underlying application is either published or issued as a patent. Consequently, this article misses those

Fractured Claim Construction

Claim Construction, Interference, Patent, Patent Cases 2009, , , ,

Agilent Tech., Inc. v. Affymetrix, Inc. (Fed. Cir. 2009)

Agilent’s microarray hybridization genetic analysis patent issued in 2003. After seeing those issued claims, Affymetrix amended a pending application by adding identical claims in order to provoke an interference. The Agilent patent has a priority date of 1998 while the Affymetrix application claims priority back to 1995. The Board of Patent Appeals and Interferences (BPAI) awarded priority to Affymetrix in 2006. That holding was upheld by a N.D. California district court in 2008.

Here, the Federal Circuit reverses – holding that Affymetrix cannot claim priority back to its 1995 filing because that original application “does not satisfy the written description requirement for the claims at issue.” Written description is particularly relevant in interference cases where one party typically copies claims from another patent document.

Claim Construction in an Interference: Several articles have been written on the complicated and ever-changing scope of a patent claim. At the PTO, claims are usually given their broadest reasonable meaning while in litigation, courts look for how a PHOSITA would interpret the scope, etc.. Phillips teaches that proper claim construction looks at the literal language of the claims as well as supporting information from the specification and prosecution history. In an interference, however, the copied claims originally came from another application.

Faced with a split of precedent, the Federal Circuit here decided to continue with multiple interpretations of an individual claim. Following Spina, the court holds that – for the purposes of the written description requirement – the newly added claims should be interpreted based on the specification and history of the opposing source application. However, following Rowe, the Federal Circuit held that for the purposes of novelty and nonobviousness, the newly added claims should be construed based on the specification and history of the amended application.

To be clear, as this court explained in Rowe, when a party challenges written description support for an interference count or the copied claim in an interference, the originating disclosure provides the meaning of the pertinent claim language. When a party challenges a claim’s validity under § 102 or § 103, however, this court and the Board must interpret the claim in light of the specification in which it appears.

This change in primary interpretative materials allowed the Federal Circuit to also change the claim construction and consequently hold that Affymetrix’s application “does not satisfy the written description requirement for the claims at issue.”

Notes:

  • As a pending application, Affymetrix’s claims had no presumption of validity. “Thus, Agilent’s burden of proving a lack of written description in Affymetrix’s Besemer application is a simple preponderance of the evidence. Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352, 1365 (Fed. Cir. 2004).”   

Discovery Misconduct

Patent, Patent Cases 2009,

Boss v. Yamaha (Fed. Cir. 2009)

Boss sued Yamaha for infringement of its patents covering a snowmobile seat. After an unfavorable claim construction, Boss admitted that it could not prove infringement. On appeal, the Federal Circuit affirmed the construction and the verdict of noninfringement.

The interesting portion of the opinion focused on the alleged discovery abuses by Yamaha’s counsel. Although a moot point (because Boss did not appeal its motion for sanctions that had been denied), the Federal Circuit felt compelled to at least verbally admonish the attorneys “unacceptable” conduct.

[I]t appears from the record presented to us that Yamaha’s discovery practices were less than commendable. For example, on several occasions Yamaha date-stamped documents to be filed with the district court using the court’s time stamp, but did not actually place the document in the court’s drop-box at that time. Rather, Yamaha actually filed the documents, by placing them in the drop-box, several days after the “filed” stamp was placed on the documents. After the district court realized that this was not an isolated incident, but happened several times, it admonished Yamaha, stating that “[t]his deceitful conduct will not be tolerated” and that this inappropriate practice “is particularly egregious when . . . the court is liberal in granting extensions of time.” The court further noted that “counsel in this case have been admonished before about the gamesmanship that has been taking place in this lawsuit.” In addition, regarding Yamaha’s interpretation of communications with the district court, the court further characterized Yamaha’s actions as “unreasonabl[e]” and “disingenuous.” This type of conduct during litigation is unacceptable and reflects a lack of respect for both the opposing party and the court.

Despite the ruling on misconduct, Yamaha walks away without any sanctions.

Paragon v. Timex: Claims with Contextual Limitations

Claim Construction, Patent, Patent Cases 2009

Paragon Solutions v. Timex (Fed. Cir. 2009) pic-37.jpg

Paragon’s patent covers a GPS/physiologic exercise monitoring system that displays realtime calculated values such as heartrate, altitude, velocity. The components of the invention are divided between a data acquisition unit and a display unit. After an unfavorable claim construction, Paragon stipulated to a non-infringement judgment. On appeal, the Federal Circuit vacated judgment – finding that the district court had improperly construed the terms.

Disavowal of Claim Scope : The district court concluded that the claimed “data acquisition unit” must be a single structure encompassing both GPS and physiologic sensors. That ruling was critical because the accused device (Timex Biolink) physically separates the GPS and physiologic monitors. Although the claim language did not limit the acquisition unit to a single physical device, the district court found that Paragon had disavowed that scope

pic-38.jpg

when it amended the claims to require that the acquisition unit be separate from the display unit.

On appeal, the Federal Circuit agreed that the patentee had clearly disavowed a single structure. However the court could not find a reason that the amendment would limit the acquisition unit to a single device.

We conclude that, read in light of the specification, the claim term “data

acquisition unit” is not limited to a single structure but may comprise multiple physically separate str

uctures, and that the applicants did not make a clear and unmistakable disavowal of multiple physically separate structures during prosecution.

Parallel Construction: In construing claims, courts presume that a term in one claim will hold its meaning throughout the claims. That presumption is overcome when “it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims.” Here, because the claimed “acquisition unit” can be multiple structures, the Federal Circuit found that the claimed “display unit” may also include multiple structures.

Real Time Data: The district court interpreted the claimed “real time” display of data as contextual. For some activities – such as mountain climbing – a thirty second delay may well be “real time.” However, for ot

her activities, a thirty second delay would not be considered real time.

On appeal, the Federal Circuit held that this context-dependent definition is not proper in an apparatus claim. “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard v. Bausch & Lomb, 909 F.2d 1464, 1468 (Fed. Cir. 1990).

Absent an express limitation to the contrary, any use of a device that meets all of the limitations of an apparatus claim written in structural terms infringes that apparatus claim. … Construing a non-functional term in an apparatus claim in a way that makes direct infringement turn on the use to which an accused apparatus is later put confuses rather than clarifies, frustrates the ability of both the patentee and potential infringers to ascertain the propriety of particular activities, and is inconsistent with the notice function central to the patent system.

Consequently, the Federal Circuit modified the construction of “displaying real-time data,” to be “displaying data without intentional delay, given the processing limitations of the system and the time required to accurately measure the data.”

Based on these modifications to the claim construction, the Federal Circuit vacated the finding of non-infringement and remanded for further proceedings. I wonder — if the specification had clearly indicated that the definition of “real-time” could shift depending on the type of use, would the claim then be held invalid as indefinite under 35 USC 112.

Notes:

  • This case could potentially have an impact on pharmaceutical composition claims that include limitations such as “a physiologically sufficient amount.” Of course, whether a drug is “physiological sufficient” will often depend upon the individual patient and that patient’s particular situation at that time.
  • There are two major difference between the Paragon situation and my hypothetical compound claim. First, the real-time display capability in Paragon was seen as a structural limitation while the “physiologically sufficient” amount could be seen as a functional limitation. This difference is important because the Federal Circuit expressly limited its holding to the construction of “non-functional term[s].” However, that distinction is slight because it is unclear what the court meant by “non-functional.” (I.e., “a non-functional term” could be a purely aesthetic limitation; it could be a means-plus-function term; it could be a term that defines the purpose of a particular structure; etc.) A second distinction is that Paragon’s claim is an apparatus claim not a compound claim. Neither of these distinctions appear compelling.