Patent Law Blog (Patently-O)

Patent Trivia

On this date in 1790, the very first U.S. patent was granted to Samuel Hopkins on a process for manufacturing potash. Potash can be any material containing potassium. However, potash is most commonly potassium carbonate derived from wood ashes. The term arises from the process of extracting lye from wood ashes in iron pots. Potash can be used in glass making:

Glass made with potash becomes rigid more quickly and becomes harder and more brilliant than soda glass.

www.guadalupeglass.com/Glossary.html

What is a Trade Secret?

Historically, trade secrets arose under common law. Today, every state provides some form of trade secret protection – although the level of protection varies from state to state. The Uniform Trade Secrets Act (UTSA) has been ratified by many states and has helped to establish a more uniform body of law across the country.

A trade secret can take many forms, such as a device, method, or formula that provides some competitive advantage or has independent economic value. The holder of the trade secret must make reasonable efforts to ensure that the subject maintains its secrecy.

Battle over Pet Food: Mars v. Heinz & Del Monte

Mars v. Heinz & Del Monte (Fed. Cir. July 29, 2004).

Mars filed a patent infringement suit against Heinz, alleging infringement on its patented pet food. (U.S. Patent 6,312,746)(A dual texture animal food product with a soft inner component surrounded by a harder, more rigid shell). After a Markman hearing, the district court issued summary judgment of noninfringement to Heinze.

On appeal, the Federal Circuit breathed new life into Mars' claims by issuing a new construction of claim terms and remanding.

We conclude that: (1) “ingredients” as used in the phrase “a mixture of lipid and solid ingredients” refers to the components of the inner core at any time after they have been mixed together, and (2) the phrase “containing a mixture” is open-ended. Thus, the claim language, “containing a mixture of lipid and solid ingredients,” does not exclude the presence of additional, unnamed ingredients in the inner core mixture that are neither lipids or solids. Since genuine issues remain as to infringement under this construction, we vacate the district court’s grant of summary judgment of non-infringement and non-infringement under the doctrine of equivalents and remand for further consideration.

Vacated and Remanded

Federal Circuit: Best Mode Not Intentionally Concealed

High Concrete Structures v. New Enterprise Stone and Lime (Fed. Cir. July 29, 2004).

On appeal from a district court’s summary judgment based on failure to comply with the best mode requirement, the Federal Circuit (Newman, Mayer, Clevenger) reversed and remanded.

High Concrete sued New Enterprise for infringement of its patent on “double-tees” for adjusting the orientation of bulky cargo. (U.S. Patent No. 5,947,665). On defendants’ motion, the district court held the patent invalid for “failing to disclose that the inventors' preferred mode of practicing the invention was to use the crane to tilt the loaded frame at the time that the crane loaded the cargo onto the frame.”

The appellate panel reversed:

Deliberate concealment is not charged. The best mode requirement of §112 is not violated by unintentional omission of information that would be readily known to persons in the field of the invention … Known ways of performing a known operation cannot be deemed intentionally concealed absent evidence of intent to deliberately withhold that information.

Microsoft's Patent Push

Bill Gates announced today his plans to move Microsoft to the "front of the pack" in terms of patent filings.

Microsoft plans to file more than 3,000 patents in fiscal 2005 compared with "something over" 2,000 patent filings the previous year, Gates said.

According to Patent Office Registration Statistics, Microsoft currently employs 29 patent attorneys and 2 patent agents.

Finding a Patent Attorney.

The Invent Blog

Stephen Nipper's excellent intellectual property blog is getting a makover and a new name. Its new home is www.inventblog.com. Nice work Stephen!

Snippets

Snippets^TM provides a review of timely developments in intellectual property law. Here is a table of contents of the most recent issue (July 2004):

1. Brian Harris, Caveat Sender: Unintentional Disclosure in Electronic Documents.
2. Thomas Fairhall and Paul Churilla, The Intersection of Trade Secrets and Patent Law: The Prior User Rights Statute, 35 U.S.C. 273.
3. Andrew Williams, Electronic Laboratory Notebooks: Improved Data Storage or Increased Burden.
4. Eric Moran, Festo Extended: Honeywell v. Hamilton Sundstrand.

Those interested can request a pdf version of the publication by emailing the editor.

Paper Based Patent Bar Exam

For those of you hoping to become patent attorneys, but fear the computerized exam format -- you may be in luck. The USPTO has indicated that it will continue to administer the registration examination once each fiscal year "at a single location in the Alexandria, Virginia area starting in fiscal year 2005." I spoke with an officer at the Office of Enrollment and Discipline (OED) who confirmed that the annual exam would be on paper rather than on computer.

Link: Patent Office OED.

Finding a Patent Attorney

The US Patent Office keeps track of all registered patent attorneys. (Patent Attorney Listing). Using this data, we compiled a rank based on the number of patent attorneys in various cities. Washington DC remains the patent attorney stronghold, although its number one rank may be fading as proximity to the PTO becomes less and less useful. New York and Chicago have their fair share of patent attorneys. LA, on the other hand, is at number nine in terms of the number of patent attorneys even though it has the second largest population of any city in the U.S.

Rank/City
1. Washington DC
2. New York NY
3. Chicago IL
4. Houston TX
5. Boston MA
6. Minneapolis MN
7. Palo Alto CA
8. San Diego CA
9. Los Angeles CA
10. Dallas TX
11. Philadelphia PA
12. San Francisco CA
13. Austin TX
14. Atlanta GA
15. Alexandria VA

Tim Uy of oncloud8 has developed a simple tool for finding a patent attorney in your area. (Patent Attorney Locator). Tim's tool probably works best for those who want to hire a patent attorney that works right next to where you live.

Comments on hiring a patent attorney: Although there are some times when proximity is helpful, it may not be in your best interest to hire a patent attorney just because he or she is located in your zipcode. Modern technology (telephone, fax, e-mail, internet) allows for easy communication and transfer of documents. Just this past week, for example, I worked with inventors or companies located in India, California, Florida, Connecticut, Indiana, and Illinois!

Katz Technology Licensing Reexamination

Another Ronald A. Katz patent is up for reexam. An ex-parte reexamination has been requested for U.S. Patent No. 5,561,707 (Telephonic-Interface Analysis System). Interestingly, this same patent is undergoing a director ordered reexamination.

More info here.

Does anyone know what is happening in this case?

Segway Inventor to speak at Inventors Conference

The USPTO has announced that

Dean Kamen, one of the world’s best known and most successful inventors, will be the keynote speaker at the opening session of the USPTO’s annual Independent Inventors Conference in Concord, N.H. on Friday, August 20.

Dean Kamen is Chairman of Segway LLC, an inventor and a physicist. "His inventions include a portable dialysis machine and the Segway™ Human Transporter."

Registration is available online.

Patent Office Professionals Balk at Opposition Proposals

POPA: The past several months has seen a gradual buildup of support for stronger post-grant opposition proceedings. Bucking the trend, the Patent Office Professional Association (POPA) has taken the stance that patenting should be done right the first time, rather than relying on the second-chance actions.

If the USPTO were to reallocate its funds significantly to bolster post-grant opposition instead of increasing time for examination, it would be banking on getting patent quality right only the second time around. Absent changes to promote higher quality in the examination system--such as giving more examination time per case and granting credit to examiners for all actual work done, including second actions and final actions--the USPTO would have little motivation and insufficient resources to get the job done right the first time.

POPA's June/July newsletter is online here.

ANDA Filing is not per se willful patent infringement

Glaxo v. Apotex (Fed. Cir. July 27, 2004)

Apotex appealed the district court judgment, which found that Apotex's filing of an Abbreviated New Drug Application (ANDA) for a generic version of the antibiotic Ceftin® willfully infringed Glaxo and SmithKline Beecham's patents. (U.S. Patents 4,562,181 and 4,820,833).

On appeal, the Federal Circuit (GAJARSA) affirmed the infringement holding, but refersed the the district court's finding of willful infringement.

We hold that the mere filing of an ANDA cannot constitute an act of willful infringement compensable by attorney’s fees under the Drug Price Competition and Patent Term Restoration Act of 1984, also known as the Hatch-Waxman Act.

Because, the ANDA filing did not constitute an "exceptional case," the willfulness holding was reversed

In dissent, DYK argued that the case was moot and thus should not be decided.

The questions of infringement and invalidity are moot since, as the parties conceded at oral argument, there are no past damages being sought for infringement, and the patents have expired. I dissent from the majority’s decision to address the issues of infringement and invalidity in the absence of a live case or controversy.

Patent Office Fees

Link: USPTO's FY 2004 Fee Schedule is now in effect.

Toyota with an Attitude

Nipper: Toyota has recently patented an automobile control system that allows for easy expression of emotion. (U.S. Patent 6,757,593). The system can be configured to show irritation, anger, sadness, sleepiness, happiness, surpise, shame, and vigor.

Wasinger v. Levi Strauss: Non-infringement Vacated

(Unpublished Opinion) (Fed. Cir. July 8, 2004)

Wasinger sued Levi for infringement of his patented pre-fading technology. (U.S. Patent No. 5,366,510). At the district court level, the Judge granted Levi summary judgment of non-infringement after holding a Markman hearing to construe the claims. On Appeal, the Federal Circuit vacated, finding that the district court had incorrectly limited Wasinger's claims to a "single-step process limitation" since such a limitation was "unsupported by the claim language and the written description."

In dissent, DYK agreed with the district court's holding "that there was a disclaimer in the prosecution history of multi-step processes involving subsequent oxidation steps."

PTO Deposit Account No Longer Filled By Credit Card Payment

The USPTO has announced a final rule (effective August 23, 2004) that eliminates acceptance of credit cards as payment for replenishing deposit accounts.

Although credit cards are an efficient means for individuals to use in replenishing deposit accounts, they are an expensive option that is not cost-effective. It is much more cost-effective to process high dollar payments by EFT or by check for the Government. This is because the Government is charged a percent fee based on the total dollar amount of the charge.

The Office will continue to accept credit cards as payment for all other products and services for which fees are required.

Link.

Wheelchair Transfer Device

Harry and Kathleen Cerne of Pittburg Kansas have recently been awarded a patent for their wheelchair transfer device. The device is designed to be secured to the wheelchair at more than one location in order to minimize the risk of slippage during use. In addition, the transfer device is operable with many different types of wheelchairs and is fairly inexpensive to construct. (U.S. Patent 6,748,612)

Phillips v. AWH: Chief Judge Mayer's Dissent

The Federal Circuit has created a stir in its recent decision to grant an en banc review of Phillips v. AWH.

Chief Judge Mayer dissented from the court's decision to review. Mayer argued that the real question for review is whether Markman was correctly decided.

Until the court is willing to reconsider its holdings in Markman v. Westview Instruments ... that claim construction is a pure question of law subject to de novo review in this court, any attempt to refine the process is futile. Nearly a decade of confusion has resulted from the fiction that claim construction is a matter of law, when it is obvious that it depends on underlying factual determinations which, like all factual questions if disputed, are the province of the trial court, reviewable on appeal for clear error. To pretend otherwise inspires cynicism. Therefore, and because I am convinced that shuffling our current precedent merely continues a charade, I dissent from the en banc order.

My former boss, Patricia Thayer at Heller Ehrman commented in the Recorder that she thinks Mayer may get his wish.

"I'd love it if the federal district courts got together" to write an amicus brief on the issue, Thayer said. "It's difficult for them that [they are accorded] no deference. I wouldn't be surprised if that gets changed in the process."

This is the fourth article in our coverage of the Phillips en banc appeal. Read Part I, Part II, and Part III.

Phillips v. AWH: Rader Concurring

This is Part III of our coverage of the Phillips - AWH en banc order. Read Part I and Part II.

... In concurrence, Judge Rader argued for en banc ruling on another issue. Rader's concern is whether claim construction is even amenable to "strictly algorithmic rules." As an example, Rader questions whether an approach of first looking at the specification, folowed by examining dictionary definitions would be workable. Alternatively, claim construction may be better achieved by chosing a methodology on a case by case basis -- "thus entrusting trial courts to interpret claims as a contract or statute."

De Novo Claim Construction

The en banc review of Phillips v. AWH will likely change the face of patent litigation. For example, the Federal Circuit gives no deference to trial court claim construction rulings. Thus, claim construction is often overruled on appeal. In Phillips, the appellate body will review this approach and determine whether it would be appropriate to afford some deference to the trial court rulings.

Read more about the appeal here.

Using Dictionaries in Claim Construction

PHILLIPS v. AWH CORPORATION (Fed. Cir. 2004)

The Federal Circuit has agreed to rehear the appeal en banc in order to resolve issues concerning the construction of patent claims and the use of dictionaries. The following questions are to be briefed:

1. Is the public notice function of patent claims better served by referencing primarily to dictionaries to interpret a claim term or by looking primarily to the patentee’s use of the term in the specification?

2. If dictionaries should serve as the primary source for claim interpretation, should the specification limit the full scope of claim language (as defined by the dictionaries) only when the patentee has acted as his own lexicographer or when the specification reflects a clear disclaimer of claim scope? If so, what language will satisfy those conditions?

3. If the primary source for claim construction should be the specification, what use should be made of dictionaries?

4. Instead of viewing the claim construction methodologies in the majority and dissent of the now-vacated panel decision as alternative, conflicting approaches, should the two approaches be treated as complementary methodologies such that there is a dual restriction on claim scope, and a patentee must satisfy both limiting methodologies in order to establish the claim coverage it seeks?

5. When, if ever, should claim language be narrowly construed for the sole purpose of avoiding invalidity.

6. What role should prosecution history and expert testimony play in determining the claim term meaning?

7. Is it appropriate for this court to accord any deference to any aspect of trial court claim construction rulings? If so, on what aspects, in what circumstances, and to what extent?

Amicus curiae briefs may be filed and should be limited to 5,000 words, and be filed within sixty days from the date of this Order.

Alticor v. Ultra-Sun Technologies

Alticor v. Ultra-Sun Technologies (Fed. Cir. 2004) (not citable as precedent)

(NEWMAN, PLAGER, CLEVENGER). In an infringement suit over Alticor’s patented water purification technology, the lower court granted summary judgment of noninfringement in favor of Ultra-Sun. The system uses UV light as a radiant energy source for killing contaminating microorganisms. The appellate panel reversed, finding that a reasonable jury could have found infringement based on the district court's claim construction.

ThermoGenesis v. PharmaStem

The USPTO has announced a reexamination request of PharmaStem Therapeutics patent on technology for the "preservation of fetal and neonatal hematopoeitic stem and progenitor cells of the blood." (U.S. Patent 5,004,681). The reexam was requested by a competitor, ThermoGenesis.

ThermoGenesis commented that it "made the request for re-examination based on our assessment that these patent claims do not distinguish over the “prior art,” including the publication of several medical journal articles describing similar techniques that predated the patents." According to Nicholas Didier, President and CEO of PharmaStem, approximately two thirds of the cord blood banking industry operates under a PharmaStem license.

The patent at suit issued in 1991 and survived a first reexamination in 2000.

Eli Lilly v. Aradigm

In an inventorship dispute, over an insulin delivery system, the federal circuit (LOURIE, CLEVENGER, and GAJARSA) reversed a jury's verdict to add an inventor to the disputed patent.

While circumstantial evidence may in some cases be sufficient to surmount the clear and convincing evidence burden of proof, we conclude that the circumstantial evidence presented here is insufficient and that the jury's verdict cannot stand.

In a concurring opinion, LOURIE argued that the burden of to show joint inventorship should be a preponderance of the evidence rather than clear and convincing.

Federal Circuit Revives Patent Suit Against the State of California

California Department of Transportation v. Tycor Walls, Inc. (Fed. Cir. 2004) (not citable as precedent).

Tycor sued the California DOT for infringement of its patented retaining wall technology. (U.S. Patent 6,036,405). The trial court granted summary judgment to the DOT based on its noninfringement analysis. On appeal, the Federal Circuit vacated, holding that the lower court "erred in its analysis of infringement under the doctrine of equivalents."

The Appellate Panel (LOURIE, FRIEDMAN, CLEVENGER) found that equivalents of a claimed "slot" need not perform a "sliding function" as requred by the lower court.

Assignment Recordation Delay

A recent article in IP Today highlights the fact that recordation of assignments can take around six months at the patent office. Some patentees enjoy the delay because it allows them to "hide the ball" from competitors for a few extra months. Both Faxed and Electronically Submitted assignments are reportedly recorded much more quickly.

Link: Instructions for submitting assignments by fax.

Copyright Cheat Sheet

Peter Hirtle has published an updated version of his copyright expiration table. The table will give you a quick guide to determining the date that any copyright will expire. For example, Peter's table points out that unpublished works are still under copyright unless the author died before this day in 1934.

Patent Examiner Jobs

The USPTO has a new ad on their main page (www.uspto.gov):

We're Hiring Now! PATENT EXAMINERS

For those who don't know, patent examiners work at the patent office in Washington DC and determine whether a patent should be issued for each invention. It can be an exciting job because you get to work with cutting edge technologies every day. Albert Einstein was one of the most famous patent examiners -- although he worked in Europe.

Qualifications include U.S. Citizenship and the equivalent of a bachelor's degree in some area of technology or science. A form is available online for applying for the Job.

I know a number of people who worked at the patent office during the day and attended law school at George Washington University in the evenings. Once they graduated, they had great experience and did not have much problem finding excellent jobs as patent attorneys. (Although past success does not necessarily foretell future success).

Toothbrush Wars

Philips, maker of Sonicare electric toothbrush has reportedly sued Gillette, maker of the Oral-B electric toothbrush.

Gillette, which plans to launch its Oral-B Sonic Complete toothbrush in August -- with a price of $99.99 to $119.99 -- denied the patent infringement charge. Reuters.

Landes and Posner's Newest Law & Economics Book

Two of the great University of Chicago professors have teamed up again. Professor Bill Landes and 7th Circuit Judge Richard Posner's newest work is titled The Political Economy of Intellectual Property Law.

This monograph seeks to explain the expansion of intellectual property law over the last half century, focusing in particular on the rapid growth that began with the 1976 Copyright Act. In so doing, it explores a fundamental, unresolved issue in the theory of regulation: why some kinds of regulation have increased dramatically over this period while others have virtually disappeared.

Read about Posner's recent stint as a patent law judge here.

More Mail Stop Changes

More Revisions have been made to the list of mail stops. The most up-to-date list of USPTO mailing information is available here.

Specific Changes:

These Mail Stops should not be used: Mail Stop Application Number, Mail Stop CPA, Mail Stop Design, Mail Stop Non-Fee Amendment, Mail Stop PGPUB-ABD, Mail Stop Patent Application, and Mail Stop Provisional Patent Application.

Mail Stop Non-Fee Amendment has been changed to Mail Stop Amendment. In addition, Mail Stop PGPUB-ABD has been changed to Mail Stop Express Abandonment. and all requests and petitions for an express abandonment under 37 CFR 1.138 should be directed to Mail Stop Express Abandonment or transmitted by facsimile to 703-305-8568.

Mail Stop L&R and Mail Stop Post Issue have been established.

-- Dennis Crouch

Huang v. CIT (Lab Notebook Must be Witnessed)

Huang v. California Institute of Technology (C.D. Cal. 2004)

Dr. Huang sued, alleging that he should be a named inventor of CIT's automatic DNA sequencing patents. As evidence, Dr. Huang submitted his own testimony and his laboratory notebooks. The Court found that the lab notebooks were insufficient because they were not witnessed or reliably dated.

Only in those instances where Dr. Huang's lab notebooks were corroborated by independent evidence were they considered at all persuasive.

Find more information here and here.

Post Office to honor R. Buckminster Fuller

50 years ago, Buckminster Fuller patented the geodesic dome (or spherical icosahedron). Now, the post office has issued a stamp in his honor.

Shimano's Inter Partes Reexamination

Shimano has requested two more inter partes reexaminations of patents owned by competitors:

1) Campagnolo SLR’s U.S. Patent 6,490,737 Titled ELECTRIC CONTROL DEVICE FOR A MOTOR-DRIVEN DERAILLEUR FOR BICYCLES; and

2) SRAM's U.S. Patent 6,681,652 Titled GEAR SELECTION DEVICE FOR A VARIABLE GEAR MECHANISM, ESPECIALLY FOR A BICYCLE DRIVE.

USPTO Notice.

See Shimano's prior request here.

Read more about inter partes reexaminations here.

AFG INDUSTRIES and ASAHI GLASS v. CARDINAL IG and ANDERSEN WINDOWS

AFG Indus. v. Cardinal IG CO. (Fed. Cir. July 13, 2004)

In an infringement suit involving AFG and ASAHI’s patented window treatment, the District Court (E.D. Tenn) held that Cardinal did not infringe. (U.S. Patent 4,859,532). On appeal, the Federal Circuit (RADER) vacated and remanded.

A structure that falls within the meaning of “layer” due to its structure and optical properties remains a single layer whether it was deposited in a single sputtering operation or multiple operations. By the same token, that unitary structure of the same material that constitutes a “layer” does not become multiple layers because the manufacturer decided to deposit it in multiple passes rather than in a single pass. The method of making is not determinative of the structure and properties of a “layer.” Because the trial court considered the method of creating the layer dispositive of its structure and character in the accused LoE2 products, this court vacates the grant of summary judgment.

Because genuine issues of material fact preclude summary judgment of noninfringement of the ’532 patent, this court vacates and remands.

In dissent, J. NEWMAN argued that the case should not be remanded again, but rather, should be decided by the appellate panel.

I respectfully dissent from the panel's decision to remand this case for the third time on the issue of claim construction with respect to the claim term "layer." Claim construction is a matter of law, and as such it receives de novo review. The purpose is objective correctness; the record is complete, the question is ripe. It is time for decision, not for remand.

There have been three Markman hearings and now three appeals, all directed to the meaning of the term "layer." For the first two hearings the definition was applied to the titanium dioxide deposits, and in the second appeal this court held that a layer is a material of optically significant uniform chemical composition. In the third Markman hearing the district court held that Cardinal's multiple deposits of its center zinc oxide component produced multiple layers. This court now appears to hold that its definition in the previous appeal, wherein "layer" was defined in the context of the "interlayers" of titanium dioxide, bars the district court from considering the additional aspect of whether multiple sputtering deposits can produce multiple "layers," unless they affect the structure and optical properties. However, when the later claim construction is made in a different technical context from that which was earlier considered, in the interest of correctness the court must consider the new context.

This case was filed in 1996. Before the district court the parties produced extensive evidence, in the form of expert and other witness testimony, and physical exhibits and demonstrations. The district court has three times held, on summary judgment upon deciding the legal question of claim construction, that there is no infringement. It is a relatively simple technical question, for which the record is fully developed. After eight years this question of law requires finality, not a fourth cycle of Markman hearing and appeal. From my colleagues' remand for this purpose, I respectfully dissent.

Willful Patent Infringement: en banc appeal

UPDATE: On September 13, the Federal Circuit issued its opinion, read the full case review here: Knorr-Bremse v. Dana .

Original: The Federal Circuit recently heard en banc oral arguments in the willful patent infringement appeal Knorr-Bremse v. Dana Corporation. John Marshall Professor Janice Mueller’s new article discusses this case and the dilemmas faced by litigants hoping to defend against willfulness charges by disclosing privileged advice of counsel.

Subject to virtually unanimous condemnation is the Federal Circuit’s “adverse inference” rule, which forces a party accused of willful infringement to choose between two unpalatable options: (i) disclosing privileged advice of counsel to mount a willfulness defense, or (ii) not disclosing such information and being subjected to an adverse inference that an exculpatory opinion was not or could not be obtained.

The appellate decision is expected this quarter.

"Willful Infringement and the Federal Circuit’s Pending En Banc Decision in Knorr-Bremse v. Dana Corp.," 3 J. Marshall Rev. Intellectual Prop. L. 218 (Spring 2004), available at http://www.jmls.edu/ripl/vol3/issue2/mueller.pdf.

Unitherm Food v. ConAgra: Patent Antitrust Holding Vacated, Tortious Interference Affirmed

UNITHERM FOOD SYSTEMS, INC. and JENNIE-O FOODS, INC. v. SWIFT-ECKRICH, INC. (doing business as Conagra Refrigerated Foods) (Fed. Cir. July 11, 2004).

In a declaratory action over a method of browning precooked meats, an Oklahoma district court granted summary judgment of invalidity and unenforceability based on both prior use and prior sale of ConAgra's patented method. (United States Patent 5,952,027). In addition, the Jury determined that ConAgra's pre-litigation actions constituted tortious interference and created antitrust violations.

On appeal, the Federal Circuit (GAJARSA) affirmed all appealed actions except for the antitrust holdings.

Because the district court erred, however, in allowing the jury to decide Unitherm’s antitrust claims despite the total absence of economic evidence capable of sustaining those claims, we vacate the judgment finding ConAgra liable for violating § 2 of the Sherman Act. We also vacate all damages awarded consequent to antitrust liability. We remand the matter to the district court for further proceedings consistent with this opinion.

Prior to litigation, ConAgra wrote to several companies who sell equipment for preparing and browning pre-cooked meats. ConAgra attached a copy of the ‘027 Patent to that letter, which included the explicit warning:

“Others in the industry may approach your company regarding this patent, and we would appreciate it if you would inform them that we intend to aggressively protect all of our rights under this patent.”

These letters formed the basis of Unitherm and Jennie-O's claims of tortious interference. Surprisingly, the court did not mention the "objectively baseless" standard that it recently outlined in Globetrotter Software.

Evans and Dudas Discuss Patent Protection with Chinese Officials

Jon Dudas, Acting Director of the USPTO, recently returned from a trip to China with Commerce Secretary Don Evans. Their mission was to "urge China to ratify and implement the World Intellectual Property Organization (WIPO) treaties in the near terms, provide draft criminal judicial interpretations to the United States for review and facilitate enforcement against end user software piracy by declaring that it harms the public interest."

Dudas commented:

[The] message to the Chinese about the importance of IP protection provided a strong impetus for the productive discussions we had. Thanks to the leadership of Secretary Evans, I believe we made solid progress and have forged new cooperatives ties with China in the area of intellectual property protection and enforcement.

Later this year, former Patent Office Director Q. Todd Dickinson will lead a delegation of professionals specializing in intellectual property law and public policy to china to participate in bilateral exchanges with their professional counterparts in China, under the auspices of People to People Ambassador Programs. I was honored to be nominated for the delegation; unfortunately I have a previously scheduled commitment.

IPO responds to the FTC Patent Law Report

In October 2003, the FTC released a patent law report that continues to generate activity. Most recently, the Intellectual Property Owners Association (IPO) released its response.

IPO agrees with many of the FTC recommendations directed to improving the quality of patents. IPO strongly believes that improving the quality and timeliness of patents is critical to achieving the proper balance of rights between patent owners and the public.… IPO does not, however believe that the courts or USPTO should actively attempt to balance patent law with economic policy through strategies such as limiting the scope of patentable subject matter or denying the grant or limiting enforcement of a patent. [S]uch an attempt would profoundly undercut the foundation of the patent system. Further, efforts to balance patent and antitrust policy based on today’s technologies will likely cause unintended and adverse economic consequences today and in the future.

Specifically, the IPO takes the following positions:

1. IPO supports enacting legislation to create a new administrative procedure to allow post-grant review, and opposition to, patents.
2. IPO does not support lowering the evidentiary standards for evaluating the validity of patents.
3. IPO does not support changing the statutory standard of non-obviousness.
4. IPO agrees with FTC that we must improve the quality of patents by providing USPTO with adequate funding and no fee diversion.
5. IPO agrees with FTC that Congress should adopt USPTO’s 21st Century Strategic Plan, including expanding the "second pair of eyes" review, but does not support the proposed change to Rule 105.
6. IPO does not support the FTC recommendation concerning considering potential harm to competition in deciding upon the scope of patentable subject matter.
7. IPO endorses the 18 month publication of all patent applications recommendation.
8. IPO supports expansion of prior user rights.
9. IPO supports changes to the notice requirement as a predicate for willfulness determinations.
10. IPO does not support expanding economic considerations in patent law decision making.

Earlier this year, the AIPLA gave its corresponding response (link).

Nipper had the scoop.

Bocce Weekend Update

In 1966 J.M. Boulanger patented the rolling-ball game shown above. (U.S. Patent 3,231,278). Boulanger's game is very similar to Bocce. According to the rules:

Bocce originated in Italy and is one of the oldest of all lawn bowling games. It is now gaining popularity in the United States since it can be played by people of all ages and on a great variety of surfaces. Bocce is played between two players or two teams of up to four players on a team. Bocce is played with 8 large balls, 4 of one color, 4 of another color and one small target ball called the "Jack," or "Pallino." Players seek to place their Bocce Balls nearer to the target jack than their opponent or displace the opponent's Bocce Ball and so improve the position of their Bocce Ball in relation to the Jack, (Pallino). Bocce can be played in a variety of ways using various rules. LINK.

Taser Prevails in Patent Infringement Appeal at Federal Circuit

McNulty v. Taser (Fed. Cir. July 7, 2004) (NONPRECEDENTIAL)

Plaintiff McNulty is the exclusive licensee of a patent entitled "Stun Gun with Low Battery Indicator and Shutoff Timer." (U.S. Patent 5,193,048). The district court granted summary judgment of non-infringement to Taser and the other co-defendants (Cities of Los Angeles, Ontario, and Buena Park California).

On appeal, the Federal Circuit affirmed,

Accepting all of McNulty's evidence as true and drawing all inferences in his favor, we agree with the district court that there is no genuine issue of material fact and that Taser's U3400 and M-series products do not infringe the "trigger means" limitation.... Accordingly, the decision of the district court is affirmed.

Update from TASER's Press Release:

"We were confident that the District Court's ruling would be upheld," said Doug Klint, Vice President and General Counsel for TASER International, Inc. "Our intellectual property portfolio is very strong, and there was never any evidence that TASER International infringed on Mr. McNulty's patent. We feel vindicated that both the District Court and the Court of Appeals have ruled in our favor," concluded Mr. Klint.

Federal Circuit gives Paint-Roller Patentee Chance for a Second Coat

Diversified Dynamics v. Wagner Spray Tech (Fed. Cir. 2004) (NONPRECEDENTIAL)

In a patent infringement suit involving Diversified's patented "duckbill check valve" for controlling paint flow to a paint-roller, the Federal Circuit reversed the district court's dismissal of claims. The appellate panel found that a prior settlement agreement between the parties did not bar the present suit.

We conclude that the plain language of the release requires a narrow construction. The plain language releases Wagner from “any and all actions … arising out of or in any way related to the ‘176 Patent” (emphasis added). We agree with both of the parties that the release is unambiguous; however, we agree with Diversified as to its proper construction. The phrases “arising out of” and “in any way related to” refer back to the ‘176 patent and require a relationship between the action and the patent itself. We similarly note the order of the language in the release. Under the language of the release, the issue is whether an action is related to the ‘176 patent, not whether the ‘176 patent is related to the action.
Based on our reading of the release, we conclude that the district court improperly construed it to preclude Diversified’s suit on the ‘123 patent. As discussed, we focus on the nature of the action and its relation to the ‘176 patent. Here, the action arises out of and is related to the ‘123 patent.

Reversed and remanded.

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Federal Circuit: U.S. Patent Laws Require Physical Supply or Manufacture of Components Within the U.S.

PELLEGRINI v. ANALOG DEVICES (Fed. Cir. July 8, 2004)

Plaintiff Pellegrini appealed to the Federal Circuit after the district court granted partial summary judgment in favor of Analog. In the patent infringement suit, Pellegrini alleged that Analog was infringing its patented brushless motor drive circuits. (U.S. Patent 4,651,069). Because of Analog's international manufacturing process, the case provided a novel question for the Federal Circuit.

This case presents the question whether components that are manufactured outside the United States and never physically shipped to or from the United States may nonetheless be “supplie[d] or cause[d] to be supplied in or from the United States” within the meaning of 35 U.S.C. § 271(f)(1) if those components are designed within the United States and the instructions for their manufacture and disposition are transmitted from within the United States. This is a matter of first impression for this court. According to § 271(f)(1),

Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such a manner as to actively induce the combination of such components outside the United States in a manner that would infringe the patent if such combination occurred within the United States shall be liable as an infringer.

35 U.S.C. § 271(f)(1) (2000). Section 271(f) was enacted in the wake of the United States Supreme Court’s decision in Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972), in which the Court acknowledged that unauthorized manufacturers of patented products could avoid liability for infringement under the then-existing law by manufacturing the unassembled components of those products in the United States and then shipping them outside the United States for assembly. Congress enacted § 271(f) in order to close that loophole.

In its opinion, the appellate panel determined that Section 271 requires "physical supply of components, not simply to the supply of instructions or corporate oversight." Because the U.S. division of Analog only provided designs and corporate oversight, no infringing activity took place. Affirmed.

NOVARTIS v. ABBOTT (JMOL of noninfringement of Novartis patents affirmed)

NOVARTIS PHARMACEUTICALS CORPORATION v. ABBOTT LABORATORIES (Fed. Cir. July 8, 2004).

Novartis brought a patent infringement suit against Abbott based on its patented cyclosporin compositions. (U.S. Patent 6,007,840). A jury determined that Abbott infringed claim 81 of the '840 patent. However, the district court issued a judgment as a matter of law (JMOL) of noninfringement in Abbott's favor.

On appeal, the appellate panel found that the district court's claim construction was erroneous, but that those errors were harmless to the JMOL decision. Affirmed.

In dissent, J. BRYSON argued that the court unduly applied the the specific exclusion principle to narrowly construe the term "lipophilic component."

The statement on which the court relies refers to the role performed by excess amounts of the substance that serves the role of the surfactant in the claimed composition. The quoted language indicates that the composition of the invention must have at least three components in addition to the cyclosporin, as required by claim 81. In addition, it contemplates that the substance that serves as the surfactant may also serve as part of either the hydrophilic or the lipophilic component. The quoted language therefore makes clear that the composition may not consist of only two components in addition to the cyclosporin, as would be the case if one ingredient served as both the surfactant and the lipophilic component in the composition. However, the quoted language does not address the case presented by Abbott’s composition, which contains three components in addition to the cyclosporin, and in which a hydrophilic surfactant serves as the surfactant, while Span 80 serves the function of the lipophilic component (dissolving and carrying the cyclosporin). Thus, because in Abbott’s composition Span 80 does not serve as the surfactant referred to in claim 81, the quoted language from the specification does not apply to Abbott’s composition. For that reason, I agree with Novartis that, where another substance serves as the hydrophilic surfactant, the specification does not disclaim the use of a lipophilic surfactant such as Span 80 as the sole component of the lipophilic component of the claimed invention. I therefore do not find a disclaimer of subject matter in the specification. A fortiori, I do not find a specific exclusion of subject matter for purposes of the doctrine of equivalents.

Intellectual Property Association (AIPLA) calls for the creation of a post-grant opposition procedure

Michael Kirk, Executive Director of the American Intellectual Property Law Association, recently testified before congress and called for the creation of an effective post-grant opposition procedure in the Patent Office.

Appearing at a congressional oversight hearing, Kirk pointed out that issued patents of questionable validity undermine the confidence of business and consumers. While the validity of such patents may be tested through litigation, reexamination, reissue, and interference proceedings, he observed that these options all suffer significant deficiencies. What is needed is a procedure that satisfies a competitor’s need for an adequate opportunity to challenge, the patent owner’s need for a prompt resolution of that challenge, and both parties’ need for an inexpensive proceeding.

Calendar of AIPLA Events:

Aug. 11-13: Practical Patent Prosecution Training for New Lawyers
Hyatt Regency Crystal City, Arlington, VA

Oct. 14-16:2004 Annual Meeting
Grand Hyatt Washington, Washington, DC

Patently-O: The First Three Months of a Patent Resource

Today marks the end of the first quarter-year of this 'Patently-O' website. What began as a simple toy project has quickly evolved into a modestly successful site. During this time, I have written a brief summary of each patent law appellate opinion. In addition, many interesting unpublished appellate and published district court decisions have been reviewed. The result is about one case brief every two days.

Many times individuals involved in patent litigation are more interested in case law while those on the patent prosecution side may be more interested in patent office procedure. We monitor changes to patent office procedure and post them soon after they are announced. Changes can range from the minutia of mail stop address changes to commentary on changes in the rules for publishing patent applications.

Other types of information available on the site include articles and publications, patent legislation, patent drafting tips, and interesting inventions.

I believe that the beauty of this site is its spotlight on patent law issues. The narrow focus makes my job easier by reducing the amount of potential material, and it gives stability to the content of the site.

STATS:

A stat-counter was not installed until about day 10, but it shows a total of 25,517 hits over the past 80 days. The (incomplete) visitor list includes over 475 corporations, 125 universities, 50 government agencies, and 190 law firms. This total does not include visitors who reach the site through a "feed reader" such as bloglines or Kinja.

Major Referrers (past 1000 visitors):
google.com
yahoo.com
IPNewsFlash.com
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promotetheprogress.com

Most Popular Search Terms (past 1000 visitors):
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-- Dennis Crouch

SEARFOSS v. PIONEER

SEARFOSS v. PIONEER CONSOLIDATED CORPORATION (Fed. Cir. June 6, 2004)

Searfoss appealed the district court's claim construction and resulting summary judgment of non-infringement of its patented truck bed covers. (U.S. Patent 5,031,955).

Because a finding of infringement under the doctrine of equivalents would vitiate the requirement of a direct connection through an actuation means, no reasonable jury could find that the accused device is insubstantially different than the claimed invention. Summary judgment of non-infringement is thus appropriate.

Because the district court correctly construed the disputed claim terms of the ’955 patent and thus Pioneer did not infringe claim 3 under the doctrine of equivalents, the district court’s entry of summary judgment on non-infringement is AFFIRMED

TypeRight Keyboard v. Microsoft

TYPERIGHT KEYBOARD CORPORATION v. MICROSOFT CORPORATION (Fed. Cir. June 6, 2004).

Plaintiff TypeRight appealed the district court's summary judgment based on invalidity of its patented ergonomic keyboards. (U.S. Patent 5,372,441 and 5,503,484). Additionally, Microsoft cross-appealed the district court's dismissal (without prejudice) of its claims for non-infringement.

First, the court dismissed the cross-appeal for lack of jurisdiction.

A party that is not adversely affected by a judgment lacks standing to appeal. . . . Because Microsoft’s rights under the judgment of invalidity are actually broader than its rights would be under a judgment of non-infringement, Microsoft has not been adversely affected by the district court’s judgment. Because there is no jurisdiction for the cross-appeal, we dismiss the cross-appeal

Next, the appellate panel reversed the finding of invalidity and remanded the case.

Summary judgment should not be denied simply because the opposing party asserts that the movant’s witnesses are not to be believed. However, summary judgment is not appropriate where the opposing party offers specific facts that call into question the credibility of the movant’s witnesses.

Here, TypeRight pointed to specific facts that tend to discredit the testimony of [Microsoft's witnesses]. These facts create a genuine issue as to the credibility of Microsoft’s witnesses. Thus, while the evidence is sufficient to support a jury finding that the [] document is prior art, a reasonable jury could ultimately conclude otherwise. In such circumstances, “[t]he court may not assess the credibility of testimony when granting summary judgment.”