Tag Archives: Claim Construction

Northern District of California’s New Patent Rules

Patent

Patent.Law059by Edward Reines

The Northern District Of California posted on Friday substantially revised patent rules that apply to all cases filed on or after March 1, 2008.   ND Cal pioneered the first set of patent rules in 2001, as the vision of Judge Ronald M. Whyte, a leading jurist in the patent field.    Since then, seven other Districts have followed and promulgated patent rules that are modeled to a greater or lesser extent on those original rules. 

ND Cal’s new 2008 patent rules feature two significant changes and a number of other updates.  First, the new rules require the parties to identify together the claim construction disputes that are most significant to the outcome of the case, including an identification of which may be case dispositive.  By default, under the new rules, the number of most significant terms (“MST”) to be identified by the parties is ten, but that number can be scaled by the court to suit the needs of each particular case.   The purpose of this new rule is to address the concern that parties identify too many terms, including many insignificant terms, for construction.   By identifying MSTs, resources can be focused on the most important issues without a court outrightedly capping the number of terms to be construed.  

Second, the new rules eliminate the concept of “preliminary” contentions in favor of a single round of contentions which can be modified only for good cause.    Many had critiqued the old rules as allowing changes “as of right” in circumstances where such changes are not in fact warranted, while also creating undue barriers to their amendment when the circumstances did warrant modification.   For guidance, the new rules set forth recurring circumstances where the good faith standard might be satisfied.  

The efficacy of the new rules will, in the end, be judged by the test of time.  In any event, the ND Cal judges deserve credit for staying at the forefront of case management innovation in the complex world of patent litigation.  The District has published on its website a committee report that provides helpful background on how the new rules were developed and explains the intent behind the changes that have been adopted.  

  • Ed Reines is a partner at the Weil Gotshal firm. He chaired the Northern District’s Local Rules Advisory Committee.
  • Read the Rules:Patent Rules2008.pdfCommittee Report.pdf

 

TiVo Wins on Appeal: Permanent Injunction against EchoStar to be Reinstated

Patent

PatentLawPic184TiVo v. EchoStar (Fed. Cir. 2008)

Around the turn of the century, TiVo’s time shifting DVR television technology took the world by storm and has since become immensely popular.  In 2004, TiVo sued EchoStar and others in the Eastern District of Texas for infringement of its patent claims directed at the DVR hardware and software. EchoStar was found to infringe both the hardware and software claims. The Jury then awarded $73 million in damages and the judge ordered a permanent injunction to stop future infringement.

On appeal, the CAFC used thirty pages of dense claim construction to conclude that the hardware claims were not infringed but that the software claims were infringed.

The jury’s damage calculation did not divide out the portion of damages associated with the hardware invention and the portion associated with the software invention. Consequently, the court found that infringement of the software claims alone is still sufficient to sustain the entire $73 million judgment.

Because the damages calculation at trial was not predicated on the infringement of particular claims, and because we have upheld the jury’s verdict that all of the accused devices infringe the software claims, we affirm the damages award entered by the district court.

As reported, Chief Judge Michel stayed the permanent injunction pending resolution of this appeal. According to the court, that stay “will dissolve when this appeal becomes final.” The lower court will, however, need to add additional damages based on continued infringement during the appeal.

Notes:

  • EchoStar operates the DISH Network brand of satellite television.
  • TiVo has partnered with DIRECTV, DISH Network’s biggest competitor.
  • Part of the claim construction dispute centered on whether the claimed element “an MPEG stream” should be limited to a single MPEG stream.  Here, the CAFC rejected the traditional rule that “a” or “an” mean one or more. Instead, the Court made an unusual ruling here because “the context clearly evidences that the usage is limited to the singular.”
  • EchoStar (DISH) released the following press release, stating that the injunction is meaningless: “We are pleased the Federal Circuit found for us on Tivo’s hardware claims, but are disappointed in the Federal Circuit’s decision on the software claims. The decision, however, will have no effect on our current or future customers because EchoStar’s engineers have developed and deployed ‘next-generation’ DVR software to our customers’ DVRs. This improved software is fully operational, has been automatically downloaded to current customers, and does not infringe the Tivo patent at issue in the Federal Circuit’s ruling. All DISH Network customers can continue to use their DVRs without any interruption or changes to the award-winning DVR features and services provided by DISH Network”
  • Echostar stock (NASDAQ: SATS) fell immediately upon news of the decision, but quickly rose again.

Claim Interpretation Should Include Disclosed Embodiments

Claim Construction, Patent

Oatey v. IPS (Fed. Cir. 2008)

PatentLawPic179Oatey’s asserted claim is directed to a washing machine drain with “first and second juxtaposed drain ports.”  The patentee originally lost on summary judgment of noninfringement because the district court construed that element to require “two separate identifiable physical elements” and not simply a single divided drain port. Thus, the lower court agreed that the claim would cover the design showed in Figure 2 of the patent, but excluded the design shown in Figure 3.

PatentLawPic180On appeal, the CAFC reversed. Writing for a unanimous panel, Judge Newman held that absent disclaimer or estoppel, claims should normally be interpreted to include disclosed embodiments.

We normally do not interpret claim terms in a way that excludes embodiments disclosed in the specification. . . . At leas[t] where claims can reasonably [be] interpreted to include a specific embodiment, it is incorrect to construe the claims to exclude that embodiment, absent probative evidence on the contrary.

Because there was no evidence of disclaimer or prosecution history estoppel, Judge Newman found that the claim must be given a broader construction.

Notes:

Patent Refom: Unsettling Rights

Patent, Patent Legislation,

Patent.Law056By Dennis Crouch

There have been numerous reports calling the US Patent System broken or at least in need of severe repair. From my view, the greatest problems with US patent law arise because of its common lack of clearly drawn property lines.  In academic lingo, we call this a failure of the public notice function.  

Examples of the fuzzy lines of patent law are well known to Patently-O readers and include the secret rights of unpublished patent applications; shifting rights that may be altered via extended prosecution, future continuing applications, and second look examination; and uncertain rights potentially crumbling under the vagaries of claim construction and obviousness jurisprudence.

These problems are exacerbated in certain technology areas – such as electronics – by massively overlapping claims and speculators asserting patents in a seemingly more aggressive fashion.  At the same time, there is a strong consensus that these issues do not arise in the same fashion in the pharmaceutical and bio-technological areas. Pharmaceutical patent law is often heralded as an incredible success — especially in the post Hatch-Waxman days of strong generic competition.

Now comes the Patent Reform Act of 2007. Unfortunately, the proposed patent reforms now being debated by the Senate do virtually noting to address these serious problems and instead potentially cause harm to the current regime.

CAFC Chief Judge Michel has publicly discussed patent reform and its potential impact on the judicial process. Apart from the Chief’s particular quarrels with damage apportionment and expanded interlocutory appeals, he makes a particular point about the destabilizing effect of major Congressional patent reforms.  In the decades following reforms, each amended word will be litigated and eventually construed. Unfortunately, during the wait for new statutory interpretations, patent holders and accused infringers will be left guessing.  Judge Michel’s ultimate point is that changes in the property regime should only be made when we have a genuine reason to believe that the changes will improve the system as a whole.  For the majority of the proposed patent reforms, that case simply has not yet been made.

 

Bt-Corn Patent Unenforceable Due to Failure to Submit Internal Employee Notes

Patent,

PatentLawPic167Monsanto v. Bayer (Fed. Cir. 2008)

Bayer holds several patents relating to genetically modified Bt corn.  This case arose when Monsanto sued Bayer in Missouri for a declaratory judgment stating that the patents were not infringed; invalid; and unenforceable.  The Eastern District of Missouri Court (Judge Webber) held all the patents unenforceable due to inequitable conduct during prosecution. On appeal, the Federal Circuit affirmed the holding of unenforceability.

Bt corn contains a gene that codes for Bt toxin — an insect repellent protein found naturally in Bacillus thuringiensis (Bt) bacteria. Bayer’s patents cover the chimeric Bt-plant-promoter gene; plant cells expressing Bt toxin; plants expressing Bt toxin; and the method of modifying plants to express Bt toxin.

Notes from a Conference: Before Bayer’s patent application, another scientist (Dr. Wayne Barnes) attended a conference and presented a poster on Bt genetic issues.  One Bayer scientist attended the conference and took extensive notes from the poster. Those notes were given to other Bayer Bt scientists including the individual responsible for prosecuting Bayer’s patent applications.

During prosecution, Bayer submitted Dr. Barnes Abstract, but did not submit the notes. According to the court, those notes were material because they provided evidence of Dr. Barnes disclosure. (A reasonable examiner would have considered them “important in deciding whether to allow the … application”). The inference of intent was easily made since Bayer took a position at the PTO that was directly refuted by information contained in the note.

Not Prior Art: One important – but unstated – aspect of this case is that the notes are not prior art. Rather, in this case the prior art was the publicly displayed poster.  Thus, the reminder: Rule 56 requires submission of prior art as well as information about the prior art that is either (1) material to patentabilty or (2) a reasonable examiner would consider important in deciding whether to allow the application. 

Declaratory Judgment Power: Monsanto filed its DJ action against four Bayer patents. In response, Bayer provided a “statement of non-liability” along with a promise not to sue Monsanto on three of the patents. Under CAFC precedent, such a statement normally removes a court’s jurisdiction over those patents — except where, as here, the court retains separate jurisdiction based on a Section 285 request for attorney fees. Thus, because the patents are still before the court, it retains jurisdiction to hold them unenforceable. In addition, the CAFC noted that the recent Nilssen case also allows a court to hold patents unenforceable even after being dropped from the lawsuit.

Design Patents: Claim Construction Rules Lead to Summary Judgment of Non-Infringement

Patent,

ScreenShot001

One question to be answered in the upcoming Egyptian Goddess en banc rehearing is whether Markman style claim construction should apply to design patent cases.  George Raynal, an associate at the Saidman firm, took a look at the practical impact of such claim construction: summary judgment.

by George Raynal

The effect of applying Markman to design patent claim construction prior to determining infringement has resulted in an overwhelming likelihood that an accused infringer will bring a successful motion for summary judgment of non-infringement.  < ?xml:namespace prefix ="" o />

In a survey, 63 design patent infringement cases have been identified since Markman was first applied to a design patent claim in Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995).  Of these, the accused infringer moved for summary judgment of non-infringement in 43 cases.  The movant was successful in 31 (72%)[1] of those 43 cases, whereas the motion for summary judgment of non-infringement was denied only 12[2] times.  Of the successful 31, ten[3] were appealed and only one[4] of those ten was reversed because the court could not agree that no reasonable jury could find infringement based on the record. 

Additionally, summary judgment of infringement has been granted in only four design patent infringement cases since Elmer.[5]  A motion for summary judgment of infringement has been denied once.[6] (more…)

Appealing the Kitchen Sink

Patent, , , ,

Innogenetics v. Abbott Labs (Fed. Cir. 2008).

Innogenetics holds a patent covering a method of detecting Hepatitis C Virus (HCV) using hybridizing probes complementary to the 5’ untranslated region of HCV. The patent was found infringed and not invalid.

On appeal, Abbott follows the currently favored “kitchen sink” approach:

On appeal, Abbott challenges a myriad of issues, including the district court’s claim construction [of the word “as”], summary judgment of literal infringement, evidentiary exclusions as to Abbott’s obviousness and anticipation defenses, judgment as a matter of law that the Resnick patent did not anticipate claim 1 of the ’704 patent, summary judgment of no inequitable conduct, award of attorney’s fees to Innogenetics for Abbott’s counterclaim of inequitable conduct due to its exceptionality, and grant of a permanent injunction.

The appellate panel patiently discussed each issue. Here, we only discuss a few:

Infringement by Later-Invented Technology: Abbott proposed that it could not infringe because its particular “Realtime PCR” method of detecting HCV had not yet been invented at the time of the patent application.  Although the CAFC held that Abbott had procedurally forfeited that argument, the appellate body also noted that the argument is “lacks merit.”

Essentially, Abbott argues that a patent can never be literally infringed by embodiments that did not exist at the time of filing. Our case law allows for after-arising technology to be captured within the literal scope of valid claims that are drafted broadly enough. See SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 878-80 (Fed. Cir. 2004).

Late Disclosure: Abbott disclosed a prior art reference (the Cha patent) the day before discover closed (and after all depositions had been completed). Then, on the day before trial, Abbott requested that the jury instructions be amended to include the Cha patent as an anticipatory reference.  The district court denied Abbott’s motion as unduly late and prejudicial to Innogenetics. On appeal, the CAFC affirmed — taking Abbott to task for its hard litigation tactics.

This case aptly demonstrates the pitfalls of playing fast and loose with rules of discovery. Conclusory expert reports, eleventh hour disclosures, and attempts to proffer expert testimony without compliance with Rule 26 violate both the rules and principles of discovery, and the obligations lawyers have to the court. Exclusion and forfeiture are appropriate consequences to avoid repeated occurrences of such manipulation of the litigation process.

Anticipation: The kitchen sink tactic worked — The CAFC did agree with Abbott that its expert’s testimony on anticipation had been improperly disregarded. The district court had disregard the testimony – finding that the expert had based his conclusions on an incorrect understand of the claim term ‘genotyping.’  On appeal, the CAFC used its own knowledge of biotech law to find that the district court’s findings on this issue were ‘clearly erroneous.’ Consequently, Abbott gets a new trial on the issue of anticipation.

Injunctive Relief: The plaintiff agreed to jury instructions that would allow the jury to award both past and future damages. The award of $7 million appeared to include both past and future damages. In addition, the court issued an injunction to halt future infringement. On appeal, the CAFC held that the plaintiff was improperly double-dipping — a patentee may not collect a lump-sum for future damages and, at the same time, be awarded injunctive relief to stop future infringement.

The reasonable royalties awarded to Innogenetics include an upfront entry fee that contemplates or is based upon future sales by Abbott in a long term market. When a patentee requests and receives such compensation, it cannot be heard to complain that it will be irreparably harmed by future sales. . . . As a result, the district court’s grant of an injunction prohibiting future sales of Abbott’s genotyping assay kits was an abuse of discretion and must be vacated.

Claim Construction: CAFC Cautions Co-Interpretation of System and Method Elements.

Patent

PatentLawPic133Baldwin Graphics v. Siebert (Fed. Cir. 2008). [UPDATED 1/15/08 7:30pm]

Judge Moran of the Northern District of Illinois granted Siebert’s motion for summary judgment of non-infringement — finding that Baldwin’s patented printing press cleaning system and method did not extend to cover Siebert’s products. On appeal, the CAFC reversed the district court’s claim construction and remanded.

“A” Means One or More: In a well tred battle, the CAFC found that the lower court had mistakenly limited the claim element of “a pre-soaked fabric roll” to only allow for a single fabric roll.  This follows the general rule that “a” or “an” are interpreted as “one or more.”  Exceptions do apply, but only when the patentee has shown “clear intent” to limit the meaning of those articles. As a corollary, later use of “the” or “said” when referring to the element either in the patent or in PTO correspondence does nothing to alter the rule.

System versus Method Elements: The parties agreed that the system element “reduced air content cleaning fabric” was substantially similar to the method of “reducing air content of a cleaning fabric.”  Judge Moran interpreted these together and required that the system element also have reduced air content “prior to being wound.” On appeal, the CAFC cautioned district courts about joint interpretation of system and method claims and found that the lower court had improperly imported a limitation into the system.

Wegner’s Top Ten for 2008

Patent, ,

Hal Wegner has released his top ten upcoming cases for 2008:

  1. Quanta v. LG – Patent “Exhaustion”
  2. McFarling – Patent “Exhaustion”
  3. Kubin – Biotech Obviousness; Enzo Disclosure
  4. Classen v. Biogen – “Metabolite déjà vu”
  5. Convolve v. Seagate – Petition from In re Seagate
  6. Bilski – Patent-Eligibility under § 101
  7. Sanofi-Synthelabo – The Plavix Case
  8. Sang Su Lee II – Post-KSR Motivation
  9. Ferguson – Method of Marketing a Product
  10. Barnett – Internet-driven Method

 Hal Wegner’s list focuses on utility patent litigation. I would add three other cases from a slightly different vein:

  • Tafas v. Dudas – Challenging the PTO’s power to implement rules limiting continuations and claims. (summary judgment briefs filed).
  • Egyptian Goddess v. Swisa – Redefining the meaning of infringement and claim construction for design patents. (rehearing en banc pending).
  • Bender v. Dudas – Challenging the PTO’s ability to regulate patent attorney business relationships that go beyond ‘practice before the office.’ (on petition for certiorari).

Continued Vitiation of The Doctrine of Equivalents

BPAI, Doctrine of Equivalents, Patent, Vitiation,

Wleklinski (dba Comfort Strapp) v. Targus (Fed. Cir. 2007) (Non-Precedential).

PatentLawPic128In March, 2007, the Central District of California dismissed Comfort Strapp’s complaint on summary judgment — finding no proof of infringement.  Comfort Strapp’s patent relates to a comfortable shoulder strap for luggage.

The fight was over the construction of an “auxiliary strap means” limitation that requires the strap’s end sections be “made of a relatively non-stretchable material” and the strap’s center section be “made of [stretchable] material.”  Because the Targus auxiliary strap was made of a single material, the CAFC agreed that it could not literally infringe.

Doctrine of Equivalents: Accused products that exhibit only ‘insubstantial differences’ from the claimed patent may also be considered infringing under the doctrine of equivalents. (DOE). However, the DOE cannot apply where it would vitiate a claim limitation.

Here, the Federal Circuit panel agreed that as a matter of law, the doctrine of equivalents does not allow a claimed two-material strap to encompass a strap made of only one material. According to the appellate panel, such a reading would be “the fundamental opposite of the claimed invention.” Citing Freedman Seating.

Notes: Although the court’s trend to limit the doctrine of equivalents began well before the Supreme Court’s KSR ruling. The bulked-up nonobviousness test naturally reduces the scope of the doctrine of equivalents as the DOE cannot extend to cover variations that would have been obvious at the time of patenting.

Design Patent Claim Construction

Patent,

Kellogg v. Nike, 2007 WL 4118898 (D. Neb. 2007)

ScreenShot084Design patent claim construction usually involves a court examining a series of drawings. When submitting his patent application, Kellogg included a statement that his invention covered a “cap with vents formed along the seams extending radially from the center.” During prosecution, the PTO removed that statement under MPEP 1503.1. In particular, the Examiner found that the “since illustration in the drawing views is its own best description, the statement preceding the claim is not necessary and should be removed.”

Soon after Markman, the Federal Circuit determined that claim construction is also a requirement of design patent litigation. Elmer v. ICC Fabricating (Fed. Cir. 1995). The claim construction process usually involves the judge writing a paragraph describing the “visual impression” created by the drawings. Contessa v. Conagra (Fed. Cir. 2002). As construed, design patent claims should only include non-functional aspects of the design. Durling (Fed. Cir. 1996).

ScreenShot085Here, the court described what he saw:

An ornamental design for a vented baseball-styled cap as defined by the overall visual impressions as shown in figures 1 through 4. The cap has a hemispherical cap portion with a brim extending generally from one side of the cap portion. The hemispherical cap portion has four oblong-shaped vents that have sharply narrowing v-shaped ends. The vents are symmetrically shaped and extend along the seams of the panels of the cap in a generally “X”-shaped fashion with the center of the “X” being located at the top center of the cap.

Of course, one problem with this type of claim construction is the difficulty in determining the level of detail. For instance, under this construction, a fitted cap could infringe even though the drawing clearly shows an adjustable cap. On the other side, the required shaping and symmetry is quite detailed. It is also unclear from the claim construction whether the claim is open ended — thus could a cap sporting five vents be infringing?

Notes:

  • These questions will be answered in the upcoming Egyptian Goddess en banc appeal.
     

 

Prosecution Disclaimer: Must be Clear and Unambiguous

Patent,

Elbex Video v. Sensormatic Electronics (Fed. Cir. 2007)

Elbex sued Sensormatic for infringement of its patent covering a remote-controllable CCTV system. The district court (Judge Owen, Southern District of New York) granted summary judgment of non-infringement based on prosecution disclaimer of a portion of the scope of the claimed “receiving means.”

Prosecution Disclaimer: During prosecution, the applicant had described the invention as having a “monitor” that receives a coded signal.  The claims, however, refer to a seemingly broader “receiving means.” Based on the prosecution statements, the district court found a disclaimer of scope:

“[T]he district court found that the inventor limited the “receiving means” that receives the first code signal to a “monitor”… Implicit in its determination is a finding that the inventor clearly and unmistakably surrendered any claim scope between the “receiving means” that receives first code signals as expressly recited in the claims, and a “monitor” that receives first code signals.”

On appeal, Judge Moore (with Judge Dyk) couldn’t find the “clear and unmistakable” disclaimer.

“First, the statement in the prosecution history is unsupported by even a shred of evidence from the specification…. Second, read in isolation, the statement in the prosecution history could be argued to be a disclaimer. When the prosecution history as a whole is considered, the inventor’s response to the PTO is not as clear…. [Third, the] prosecution statement if taken [as a literal disclaimer] would result in an inoperable system.”

This change in claim construction allowed for a reversal-in-part.

District Court Judge Cote sat by designation on the panel found the disclaimer clear and unambiguous and would have affirmed. (Judge Cote is also from the S.D.N.Y.)

Notes:

  • Cybor Corp. v. FAS Techs., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) (“Prosecution history is relevant to the construction of a claim written in means-plus-function form.”).

Egyptian Goddess Questions Presented

Patent,

The parties are requested to file briefs that should address the following questions:

  1. Should “point of novelty” be a test for infringement of design patent? 
  2. If so, (a) should the court adopt the non-trivial advance test adopted by the panel majority in this case; (b) should the point of novelty test be part of the patentee’s burden on infringement or should it be an available defense; (c) should a design patentee, in defining a point of novelty, be permitted to divide closely related or, ornamentally integrated features of the patented design to match features contained in an accused design; (d) should it be permissible to find more than one “point of novelty” in a patented design; and (e) should the overall appearance of a design be permitted to be a point of novelty? See Lawman Armor Corp. v. Winner Int’l, LLC, 449 F.3d 1190 (Fed. Cir. 2006).
  3. Should claim construction apply to design patents, and, if so, what role should that construction play in the infringement analysis? See Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995).

Appellant (Egyptian Goddess) has its opening brief due around January 24, 2008. Amicus briefs must either be granted “leave of the court” or consent of both parties. Fed. R. App. Proc. R. 29(a).

 

An Ugly Stepsister: CAFC Accepts En Banc Design Patent Case

Patent, ,

PatentLawPic118Egyptian Goddess v. Swisa, Inc. (Fed. Cir. en Banc 2007)

Design patents typically play the role of the pre-ball Cinderella – hopeful but meaningless and sitting in a pile of ash.  Already devalued, recent appellate decisions have further decimated design patent values.[1]< ?xml:namespace prefix ="" o />

Infringement of a design patent requires satisfaction of both the ordinary observer test[2] and the points of novelty test[3]. In Egyptian Goddess, the patentee argued that the point of novelty of its ornamental fingernail buffer design[4] is the unique combination of four elements found in the design.[5]

In the appeal, the Federal Circuit (Judge Moore) held that a combination of known elements may serve as a point of novelty – but only if the combination represents a “non-trivial advance over the prior art.”[6]  Here, the court found the combination trivial. The Egyptian Goddess panel opinion helps clarify the recent Lawman Armor opinion. In Lawman Armor, the court held (at least) that the “overall appearance” of a design cannot serve as a “point of novelty.”[7] 

Picking up on some incongruence, Judge Dyk dissented from the Egyptian Goddess majority. Judge Dyk argued instead that the “non-trivial advance” requirement is antithetic to the notion of “points of novelty” in the same way that it would be odd to include a nonobviousness element within the requirements for novelty under 35 USC 102.  

En Banc: Now, the Federal Circuit has agreed to re-hear the case en banc.  In all likelihood, the case will be at least vacated with the point of (non-trivial) novelty test being returned to a straight novelty requirement.[8] 

A Nightmare: The law of design patents has become a nightmare of confusion and formality. Judge Moore recently stated in the oral arguments for In re Bilski that design patent law follows the same statutes as utility patents.[9] The truth is, however, that design patent law is almost wholly judge made law that varies dramatically from the Patent Statute and precedent interpreting the statute.  Thorny issues abound: How do design patents fit within the PTO’s concept of useful patentable subject matter under 35 U.S.C. § 101? Why does the patent office refuse to enter any true written claim of a new design beyond a few drawings while a court must put the claimed ‘ornamental design’ into text form during claim construction?

Hopefully, the en banc court will take this opportunity to return some sanity to design patent law – starting with a complete overhaul of the definition of design patent infringement.  Perhaps Egyptian Goddess will be remembered as the fairy godmother of design patents.


[1] See, for example, Egyptian Goddess, Inc. v. Swisa, Inc., 498 F.3d 1354 (Fed. Cir. 2007) (holding that infringement requires proof that one or more particular elements of the patented design exhibits a ‘non-trivial advance over the prior art.’); Arminak & Assocs. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007) (holding that an “ordinary observer” judging potential confusion is a corporate buyer rather than a retail customer); PHG Techs., LLC v. St. John Cos., 469 F.3d 1361 (Fed. Cir. 2006) (preliminary injunction vacated); Lawman Armor Corp. v. Winner Int’l LLC, 437 F.3d 1383 (Fed. Cir. 2006) clarified in en banc denial at 449 F.3d 1190 (Fed. Cir. 2006) (noting that the “overall appearance” of a design cannot serve as a “point of novelty.”).

[2] Satisfaction of the ordinary observer test requires proof that an “ordinary observer” would think the accused design – examined as a whole – is substantially the same as the patented design.

[3] Satisfaction of the points of novelty test requires proof that the accused device incorporates one or more of the “points of novelty” that distinguish the patented design from the prior art.  The points of novelty test is thus similar to a test of invalidity.

[4] < ?xml:namespace prefix ="" st1 />U.S. Design Patent No. 467,389.

[5] Egyptian Goddess listed the following four points of novelty: (1) an open hollow body; (2) square cross-section; (3) raised rectangular pads; and (4) exposed corners. Each of these elements are found in the prior art and thus do not server as individual points of novelty.

[6] Egyptian Goddess, 498 F.3d 1354 (holding that the combination of elements here is trivial).

[7] Lawman Armor Corp., 449 F.3d 1190 (Fed. Cir. 2006).

[8] Normally, a majority of the twelve Federal Circuit judges must agree to hear a case en banc. 

[9] 35 U.S.C. § 171 provides that “provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.” 

 

 

Documents:

CAFC Reaffirms that Doctrine of Equivalents Applies to Ranges

Patent, Patent Cases 2007, Vitiation, ,

US Philips v. Iwasaki (Fed. Cir. 2007)

Philips sued Iwasaki for infringement of its patents covering mercury-tungsten halogen light. The district court awarded summary judgment of non-infringement to Iwasaki.

Vitiation and the Doctrine of Equivalents: The asserted patent claims a target concentration of 1.6 ± 0.4 × 10-4 µmol/mm3. Based on that claim language, the district court ruled that the claim was “intended to establish the demarcation of boundaries [with] the type of precision that is closely analogous to the metes and bounds of a deed of real property.”  Thus, according to the court, allowing the claim to cover any concentration outside of the clearly claimed limits would vitiate the limitation.

On appeal, the CAFC rejected the notion that an expanded numerical range would vitiate the claim language.

“A reasonable juror could make a finding that a quantity of halogen outside that range is insubstantially different from a quantity within that range without “ignore[ing] a material limitation” of the patent claim.”

This decision conforms to prior decisions that allow equivalents for numerical ranges, but not for other limits (such as a claimed “majority.” Moore).

Notice of Infringement: 35 U.S.C. § 287(a) provides that damages for patent infringement only begin to accrue once the infringer was “notified of the infringement.” (Marking constitutes constructive notice). Notice requires a charge of infringement directed to a specific product, device, or action. The notice must also normally include the patentee’s identity. Here, the infringement letter (sent by “Mr. Rolfes”) did not specifically indicate that Philips was the assignee, but the court found notice sufficient because (1) Philips was correctly listed as the assignee of the patent and (2) Philips had granted the sending party the “responsibility for licensing and enforcing” the patent. Thus, Philips may collect damages from the date of receipt of the letter.

Notes:

  • Rounding in Claim Construction: “‘1.0’ may be said to have more significant digits than ‘1’ with no decimal point. Because [the claimed] ‘10-6’ and ‘10-4’ are simply the numbers 0.000001 and 0.0001 expressed as powers of ten, the claim language provides no basis for inferring any level of precision beyond the single digit ‘1.’ The way that power-of-ten quantities are used in the specification, discussed supra, confirms that the quantities of halogen described by the claims are not intended to be more precise.” — Why does this matter — Less precision means that the accused product may still literally infringe due to rounding.
  • Approximately: “[T]erms like ‘approximately’ serve only to expand the scope of literal infringement, not to enable application of the doctrine of equivalents.”

ITC Section 337 Case Requires Showing That Imports Threaten US Market for Articles Protected by Asserted Patent

Patent

OSRAM v. ITC (Fed. Cir. 2007) (non-precedential) 

Many patent litigators see the International Trade Commission (ITC) as the preferred forum for stopping imports of infringing products. In particular, when compared with district court litigation, Section 337 ITC actions move to conclusion much more quickly; offer a better chance of immediate preliminary relief; and allow for “general exclusion orders” to stop imports industry-wide (i.e., those injunctions cover particular accused infringers as well as other non-parties).  The ITC has no power to award damages — However, injunctive relief does not require that the patentee prove-up the eBay factors.

One limitation of Section 337 ITC actions is that they can only be pursued when the imports threaten a US industry for the protected article. (US industry must either exist or be “in the process of being established.”  19 USC 1337(a)(2). This ‘domestic industry test’ has been interpreted to require that the domestic product also infringe the patent. Alloc v. ITC, 342 F.3d 1361 (Fed. Cir. 2003).

In this case, the ITC’s original claim construction of a term limiting the size of luminous pigment grains resulted in a finding that OSRAM’s US sales were not covered by the patent. On appeal, the CAFC modified the claim construction holding — and consequently found that OSRAM’s products are covered by their own patent.

Judge Dyk dissented on the claim construction issue.

Notes:

  • Prosecution thoughts: This case provides a concrete example of one reason why the most important claims in a patent are usually directed at covering the client’s actual (or expected) product.
  • The claim construction issue here is actually quite interesting. The disputed limitation reads as follows: “a mean grain diameter d50 # 5 μm”. The appeal focused on whether the mean grain diameter should be calculated on a number-based average (average diameter) or a volume basis (diameter of grain with average volume). This analysis is complicated by the fact that the claimed d50 term generally indicates a median – not a mean.  Judge Dyk sided with the ITC holding that the volume based average should be used because that is the “commercial standard.” The majority chose the number based diameter calculation for reasons well-dissected by Judge Dyk.

Supreme Court Study: Conservatives Support IP Rights; Liberals Do Not ?

Patent,

The politics of patent law is somewhat confusing. Those with the most at stake — innovator pharmaceutical companies — lean heavily toward a Republican party affiliation. Along that line, it is Democrats — with the support of California technology companies — who are pushing through Congressional patent reform measures that would weaken the strength of patent rights.  On the other hand, the current US Patent Office Republican administration has taken major steps to tighten the patent prosecution rules of practice.  These rule changes are most vehemently opposed by the innovator pharmaceutical companies and supported by many west coast technology companies.

The judiciary has also been thought to be a mixed bag — without any identifiable liberal-conservative ideologic divide.  In a new paper, DePaul Professor Matthew Sag and his colleagues from Northwestern (Jacobi & Sytch) prove that presumption wrong — at least for Supreme Court decisions. They find that throughout the past several decades, liberal Supreme Court justices tend to rule Against the IP Owner (XIPO) significantly more often than their conservative counterparts.  In other words — conservatives tend to support IP rights while liberals tend to deny those rights. The figure below, excerpted with permission from the paper, shows the trend based on Martin-Quinn scores of judicial ideology. Interestingly, the effect holds across all the various areas of IP law.

PatentLawPic075

Notes:

‘Comprised of’ is an open-ended transition

Patent

CIAS v. Alliance Gaming Corp. (Fed. Cir. 2007)

CIAS asserted its counterfeit protection patent against both Alliance Gaming and Bally’s but lost on summary judgment of non-infringement. On appeal, the CAFC reversed the claim construction, but affirmed the judgment.

‘Comprised of’ is an open-ended transition: Rather than the traditional “comprising” transition, CIAS wrote that its invention was “comprised of” several elements. The district court construed “comprised of” as a “closed-end term that excludes the presence of all [non-presented] elements.” On appeal, the CAFC reversed holding simply that “comprised of” is the same as “comprising” and should be interpreted as open ending.

The appellate panel did, however, give a narrow definition to the claimed “unique authorization information” — holding that it had been narrowed by prosecution arguments.  

Notes:

  • PTO records show 134,000 patents including “comprised of” language.

 

KSR’ s Phosita Creativity Applies to Indefiniteness

Patent

Patent.Law036Allvoice Computing v. Nuance Comm. (Fed. Cir. 2007)

Allvoice appealed after the Texas court found its means-plus-function claim elements indefinite under 35 U.S.C. § 112. The patent relates to voice recognition software.

PHOSITA Creativity: A means plus function element is considered indefinite if a PHOSITA “would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim.”

On appeal, the CAFC took a cue from KSR v. Teleflex — finding that a PHOSITA is creative and “not an automation.” For software cases, this means that the specification “need only disclose adequate defining structure to render the bounds of the claim understandable to one of ordinary skill in the art.  Here, the CAFC found that the algorithm flowchart (see figure) was sufficient structure.

Best Mode: The appellate panel also included the reminder that the best mode requirement only extends to the claimed invention.

Notes:

  • Part of an increasing trend, Professor Paul Janicke performed the claim construction.

CAFC: No Sua Sponte Summary Judgment; No Baseless Suit Without Claim Construction

Patent, Patent Cases 2007, Summary Judgment,

ScreenShot063EON-Net v. Flagstar Bancorp (Fed. Cir. 07-1132) (non-precedential)

In 2006, the Washington State district court granted summary judgment of non-infringement in Flagstar’s favor. The court also applied sanctions against the patentee’s attorneys – a NYC class action boutique — for filing the “baseless” litigation. [link]

Sua Sponte Summary Judgment: A summary judgment motion for non-infringement must at least point to “specific ways in which the accused system [does] not meet the claim limitations.” (Exigent Technology). Without at least that threshold level of information, the court must reject such a motion. 

Here, the court issued its summary judgment decision on sua sponte grounds (i.e., using grounds that had not been particularly raised in the SJ motion). Because EON did not have an opportunity to respond, the CAFC vacated and remanded.

“The district court should have given Eon-Net an opportunity to fully present its arguments on these issues, even if the district court ultimately would have reached the same conclusion. We have previously held that where a district court construes a patent without following the necessary steps, we should remand the matter for further proceedings so that the district court can follow the appropriate steps.”

Sanctions: Normally, an attorney is required to perform a “reasonable pre-filing inquiry” that includes an infringement analysis prior to filing a patent infringement complaint. Here, the district court sanctioned Eon’s counsel for not performing such an inquiry.

In a major exception to the inquiry requirement, however, “an attorney may not be sanctioned solely for failing to conduct a reasonable inquiry as long as the complaint is well-founded.” Of course, in patent cases, a patent claim can rarely be deemed unfounded prior to claim construction.

“[W]ithout a full claim construction analysis it is impossible to assess whether Eon-Net’s claim construction was unrealistic.”

Furthermore, the “mere fact” that EON sent identical complaints to dozens of other companies is insufficient to establish that the complaint was filed for a sanctionable “improper purpose.”