PATracer

Prometheus And Natural Phenomena

2009-08-04T10:54:48-04:00

2008-1403 Prometheus Lab v Mayo Collaborative
SD/CA 04-CV-1200
Judge John A. Houston

A fairly-well publicized case involving medical testing, Bilski, and "natural phenomena." Our earlier write-up is here. A representative claim from one of the patents covers:

1. A method of optimizing therapeutic efficacy for treatment of an immune mediated gastrointestinal disorder, comprising:

(a) administering a drug providing 6-thioguanine to a subject having said immune-mediated gastrointestinal disorder;

(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder wherein the levels of 6-thioguanine less than about 230 pmol per 8x108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and wherein the levels of 6-thioguanine greater than about 400 pmol per 8x108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

The district court invalidated the claim as merely reciting data gathering plus correlating a natural phenomena--whether the levels of 6-thioguanine in the patent are above or below a threshold amount thereby indicating a need to increase or decrease dosage. The court noted that the claim did not actually require further treatment or an actual change in dosage.

Several amici have weighed in, and the case has been covered by Joe Mullen at The Prior Art and also over at Patently-O.

Oral argument is scheduled for Wednesday, August 5, 2009 at 10:00 A.M., Courtroom 201.

Summary of Argument for Prometheus. Richard P. Bress, J. Scott Ballenger, and Alexander Maltas of Latham & Watkins LLP, Washington, D.C., on brief.

The broad language of § 101 of the Patent Act extends to “‘anything under the sun that is made by man” and excludes only laws of nature, natural phenomena, and abstract ideas. Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (citation omitted). The patents-in-suit are not abstract, and there is nothing “natural” about them-except in the sense that everything under the sun is, ultimately, a product of nature. These patents describe specific, concrete processes for adjusting and optimizing the treatment of patients with particular man-made drugs, which metabolize into particular pharmacologically active compounds (e.g., 6-TG and 6-MMP) to achieve life-saving therapeutic efficacy while avoiding toxic side-effects. Such method of treatment claims accompany almost all patents on artificial drugs, and have routinely been enforced by this Court. To our knowledge no one, until this case, has ever suggested that such methods constitute unpatentable “natural phenomena” merely because the human body's reaction to an artificial substance is governed by natural laws. The same could be said of the foundational patents of the industrial age, like the Goodyear process for vulcanizing natural rubber or the Bessemer process for transforming molten iron into steel.

This Court and the Supreme Court have articulated a variety of approaches to the “natural phenomenon” question under § 101, including most recently the “machine-or-transformation” test adopted by this Court en banc in Bilski. The patents-in-suit pass that test with flying colors. The whole point of these processes is to transform the patient's body from a life-threatening physical condition into a healthier one. Along the way, the patient's body is transformed by administration of a synthetic thiopurine drug, producing metabolites never seen in nature. A sample of bodily fluid or tissue is transformed, with the help of sophisticated laboratory machines, to permit measurement of the levels of those metabolites. And the resulting data is transformed into a warning to the physician about the possible need to increase or decrease the patient's dosage.

The district court disregarded all of that because it believed, pre- Bilski, that a transformation of matter or data establishes patentability only for “industrial” processes. Rather than examining the purposes and effects of these processes as a whole, the district court dissected the patents into distinct steps and found reasons to disregard most of them until nothing was left but a “correlation” that it could describe (wrongly) as a natural phenomenon. The district court drew that approach to § 101 from the Supreme Court's decision in Flook. But as this Court has recognized several times, including in Bilski, the Supreme Court squarely rejected Flook's analysis in Diehr.⁵ Many patentable processes can be dissected into steps that, standing alone, would not be patentable.

⁵ See Bilski, 545 F.3d at 958-59; AT&T Corp. v. Excel Commc'ns, 172 F.3d 1352, 1359 (Fed. Cir. 1999); Arrhythmia, 958 F.2d at 1057 n.4 (noting that the Court's reasoning in Diehr “not only elaborated upon, but in part superseded, that of Benson and Flook”).

In any event, the district court's analysis must be rejected even on its own terms. The metabolic consequences of administering a man-made drug are not a “natural” phenomenon but an artificial one. Of course those effects are mediated by natural laws, but so is combustion inside an automobile engine. Nonetheless, an improved method for tuning a car is patentable. The district court's suggestion that the “administering” and “determining” steps of the patents-in-suit can be disregarded as “merely necessary data-gathering steps for any use of the correlations, A00029, also betrays its complete failure to appreciate the purpose of these processes. Thiopurine drugs are not administered, and tissue samples are not obtained and transformed, merely to gather data for an abstract calculation. These steps are part of the ongoing treatment of desperately ill these processes. Thiopurine drugs are not administered, and tissue samples are not obtained and transformed, merely to gather data for an abstract calculation. These steps are part of the ongoing treatment of desperately ill patients. Presumably the district court would have dissected the patent in Diehr into data gathering steps (monitoring the temperature and pressure inside a rubber mold), a “natural” correlation (the prior art Arrhenius equation), and the “mental step” or “insubstantial post-solution activity” of sending a warning that it was time to open the mold. But the Supreme Court recognized the patent in Diehr for what it was: an improved method for curing rubber.

The district court's analysis would, if endorsed by this Court, threaten to invalidate the entire field of medical treatment and diagnostic patents on which the innovative and lifesaving biotechnology industry is largely built. It would also crush in its infancy the promise of personalized and genomic medicine, which of course will depend largely on insights into how man-made therapies interact with a particular patient's “natural” genes and body chemistry. There is absolutely no evidence that Congress intended to disincentivize such concrete, life-saving innovations in medicine and the life sciences. And there is no justification for reaching such a misguided policy result by needlessly expanding the narrow, judicially-created exclusion that denies patentability to abstract ideas and phenomena of nature.

The district court's summary judgment order should be reversed, and this case should be remanded with instructions to enter summary judgment under § 101 to Prometheus.

Summary of Argument for Mayo Collaborative. Jonathan E. Singer, and Deanna J. Reichel of Fish & Richardson P.C., Minneapolis, MN, on brief.

Prometheus fails to defend the claims under Section 101 as they were drafted and construed at its request. It repeatedly bends the claims, ignoring its own requested and gained construction, and instead suggests that the district court's requirement that someone “be warned” by the metabolite levels requires some real action. This so-called “warning,” however, requires nothing more than that a physician or other person recognize the correlation, i.e., that person is “warned” by the metabolite levels themselves of a possible needed change in dosage. And Prometheus repeatedly asserts that the claims involve patient treatment, when they in fact require a physician to do nothing. When Prometheus' wishful rewriting of the claims is stripped of these artifices, the claims are, like the claims in Labcorp, not even close to the dividing line drawn by Section 101.

On the merits, the claims do not satisfy Section 101 under any standard applied by this Court or the Supreme Court. The claims do not recite or depend on any particular machine or apparatus - the best Prometheus can do is suggest that measuring metabolite levels would involve a machine having certain generic components like pumps, detectors, and injectors. [Prometheus Br. at 31-32.] Nor do the claimed inventions physically transform subject matter - nothing happens in the claimed methods after the physician makes the correlation, and the transformations to which Prometheus points are merely preparatory data-gathering. Finally, the claims fail the ultimate test of patentability by wholly preempting any practical use of the claimed correlation, because they are not limited in any way by what happens after the measurement is made - just like the claims in Flook and Labcorp. This Court should affirm.

Trading Tech Patents Put To The Test

2009-07-29T15:57:51-04:00

2008-1392 Trading Tech Int'l v. eSpeed
ND/IL 04-cv-5312 
Judge James B. Moran

Trading Tech ("TT") brought several suits, including this one against eSpeed and Ecco, alleging infringement of 6,766,304 and 6,772,132, both similarly directed at software used in electronic trading in the futures market. Events below were well covered, as usual, by David Donoghue at Chicago IP Litigation.

TT is appealing the district court's rulings that eSpeed's redesigned products, Dual Dynamic and eSpeedometer, do not infringe, and from the court's granting of eSpeed's JMOL that the infringement of its original products was not willful. eSpeed cross-appeals the court's rulings that TT's patents are not invalid and not unenforceable based on alleged secret prior use.

Oral argument is scheduled for Tuesday, August 4, 2009 at 10:00 P.M., Courtroom 201.

Summary of Argument from plaintiff Trading Technologies International, Inc. Paul H. Berghoff, Leif R. Sigmond, Jr., Matthew J. Sampson, Michael D. Gannon, S. Richard Carden, Jennifer M. Kurcz and Paul A. Kafadar of McDonnell Boehnen, Hulbert & Berghoff LLP, Chicago; and Steven F. Borsand of Trading Technologies International, Inc., on brief.

The heart of the dispute is the meaning of the claim term “static.” This term is explicitly and unambiguously defined in the patent specification as:

The values in the price column are static; that is, they do not normally change positions unless a re-centering command is received ...

Instead of simply adopting this clear definition, the court erred by construing “static” much more narrowly by requiring that the values in the price column:

never change positions [which the court interpreted as precluding “any movement”] unless by manual re-centering or repositioning.

There is no support in any of the intrinsic evidence (or extrinsic evidence for that matter) for such a narrow reading of static. As such, this Court should vacate the district court's construction and adopt the definition set forth in the patent.

The court also erred in ruling that Dual Dynamic and eSpeedometer do not literally infringe. This ruling was based solely on the court's improper construction of “static.” Under its construction, any product that has a risk of automatic re-centering (which cannot be turned off) does not literally infringe the patents-in-suit. However, the proper construction of static is not limited to any particular type of re-centering and thus encompasses both manual and automatic re-centering. Therefore, these products literally infringe the patents-in-suit.

Furthermore, the court improperly barred TT from asserting DOE against eSpeedometer¹⁷ by ruling that “static” was narrowed by amendment during prosecution.¹⁸ However, to reach this conclusion the court did not apply its narrow construction of “static” that it used to find no literal infringement. Rather, the court construed “static” broadly for purposes of its estoppel analysis - in conflict with its Markman ruling. This was error because once a claim term is construed, that same construction must be applied uniformly. Under the court's unduly narrow construction, there can be no narrowing amendment and thus no estoppel.

¹⁷ The court found that eSpeedometer infringed the “static” claim term under DOE, even under its unduly narrow construction of that term. 
¹⁸ All of TT's DOE arguments are moot if this Court adopts TT's construction and finds literal infringement.

Moreover, the court improperly barred TT from asserting DOE against Dual Dynamic, ruling that doing so would vitiate the “static” claim term. Vitiation is not applicable because there is only a subtle difference of degree between the “static” claim element, as narrowly construed by the district court, and the operation of the price axis in Dual Dynamic. Thus, TT should not be barred from asserting DOE against Dual Dynamic.  

Finally, the court erred by entering JMOL overturning the jury's verdict of willful infringement. The court did not and could not challenge the jury's finding that eSpeed knew or should have known that its product was infringing a valid patent. The court's ruling was based solely on its mistaken belief that there was no evidence that eSpeed sold its infringing products after the patents-in-suit issued. In fact, there is substantial undisputed evidence in the record that eSpeed continued selling its infringing product after the patents issued and that it had the ability to pull off the market existing infringing product. Accordingly, the JMOL ruling should be reversed.

Summary of Argument from defendant eSpeed, Inc. Gary A. Rosen of the Law Offices of Gary A. Rosen, Philadelphia; and George C. Lombardi, Raymond C. Perkins, and James M. Hilmert of Winston & Strawn, LLP, Chicago, on brief.

TT states that it “commercialized the invention in a product called MD Trader, and began selling it around Labor Day of 2000 as part of TT's X_Trader software suite.” (TT-Br.8) In fact, however, TT first commercialized the invention of the Patents-in-Suit much earlier, selling custom software embodying it to Brumfield, then one of the world's busiest futures traders, who used it in his proprietary trading and kept it as the “toppest of toppest of secrets that you can imagine,” until, after investing millions of dollars in TT, he concluded that there might be bigger rewards in going the “patent route.”  

Brumfield and TT's decision to exploit the invention as a trade secret until it became more financially advantageous to enter the patent system has critical implications for the validity and enforceability of the Patents-in-Suit.  

First, more than one year passed between TT's commercial sale of the custom software embodying the invention to Brumfield and its filing of the Provisional on March 2, 2000, and the sale is therefore a §102(b) bar.  

Second, TT has stipulated that the Patents-in-Suit are invalid due to Brumfield's intervening public use if they are not afforded the benefit of the Provisional filing date. Every Asserted Claim includes the limitation “single action of a user input device,” a term that does not appear and is not defined in the Provisional. The court construed it broadly, paraphrasing an ad hoc definition that was first set forth in the Non-Provisional expressly “for the purposes of the present invention.” This broad construction -“an action by a user within a short period of time that may comprise one or more clicks of a mouse button or other input device” is not supported by the narrow disclosure of single mouse click order entry in the Provisional and therefore, as TT stipulated, Brumfield's pre-June 9, 1999 commercial use is also a §102(b) bar.  

And just as TT makes no mention of the existence, sale and use of Brumfield's custom software in its brief, so too did TT fail to disclose this information to the PTO during prosecution of the Patents-in-Suit. This information would have been highly material, as it would have prompted the PTO to consider in the first instance the on-sale and priority date issues now on appeal. The district court, however, found that this information was not material at all, and it did not go on to consider abundant evidence that its nondisclosure was deliberately deceptive.  

The “single action of a user input device” limitation is also, as construed, indefinite, as it has no clear meaning to a person of ordinary skill in the art, but rather depends upon the subjective “perception” of each individual user.  

Accordingly, this Court should reverse, mandate the entry of judgment declaring the Asserted Claims invalid, and remand for further proceedings on inequitable conduct.

Late Terminal Disclaimer Was Too Late?

2009-05-29T03:23:00-04:00

2009-1032 Boehringer Ingelheim v. Barr Labs
D/NJ 05-Cv-700 and 05-Cv-854
Judge Joseph J. Farnan, Jr.

An interesting appeal concerning the interplay of terminal disclaimers, restrictions, and patent extensions. The case involves efforts to market a generic version of pramipexole dihydrochloride, FDA approved for the treatment of idiopathic Parkinson's disease and Restless Leg Syndrome (RLS). Defendants alleged that the asserted '812 patent was invalid for non-statutory double-patenting based on Boehringer's related '086 patent, which expired in 2006.

During trial and just before closing arguments, Boehringer filed a terminal disclaimer for the '812 patent, disclaiming the statutory term after expiration of the '086 patent. It then argued that this not only avoided the double-patenting defense but also that the '812 was still in force due to an extension to that patent's term under § 156. The Court disagreed, finding the terminal disclaimer ineffective and that the asserted claims of the '812 were invalid. Aaron Barkoff at the Orange Book Blog previously wrote about the district court's decision here.

Oral argument is scheduled for Monday, June 1, 2009 at 1:00 P.M., Courtroom 402.

Summary of Argument from plaintiff Boehringer. Bruce M. Wexler, Joseph M. O'malley Jr., Eric W. Dittmann, Angela C. Ni and Stephen B. Kinnaird of Paul, Hastings, Janofsky, & Walker LLP, on brief.

The district court erred in refusing to recognize Boehringer's terminal disclaimer as obviating the double-patenting issue.

First, the court erred in refusing to give effect to the terminal disclaimer because of the timing of its filing. No timing limitation appears in the plain language of 35 U.S.C. § 253. The statute allows terminal disclaimers to be filed as to a “patent,” necessarily recognizing that terminal disclaimers may be filed post-issuance. Further, Congress twice rejected a timing limitation - once when it enacted § 253 and deliberately removed a no “unreasonable delay” requirement that had appeared in predecessor statutes, and again 20 years later when it rejected a proposed revision of § 253 that would have reimported a similar requirement. Consistent with the plain language of § 253 and its legislative history, this Court and others have recognized the ability of a patentee to file a terminal disclaimer during litigation, including after a finding of patent invalidity for double patenting. And here, Boehringer filed a terminal disclaimer before any ruling on the issue of patent validity.

The district court erred in refusing to recognize Boehringer's terminal disclaimer on the ground that it was filed at a time “after the expiration of the earlier '086 patent.” Again, the statute imposes no timing limitation. And the district court failed to recognize that resetting the original ‘812 patent expiration to coincide with the expiration date of ‘086 patent should not prevent the uncontested patent term extension (granted for reasons relating only to FDA delay) from also applying. Consistent with this Court's reasoning in Merck & Co., Inc. v. Hi-Tech Pharmacal Co., Inc., 482 F.3d 1317 (Fed. Cir. 2007), a term ex-tension of a patent subject to a terminal disclaimer does not conflict with the policies underlying double patenting or terminal disclaimers.

Since Boehringer's terminal disclaimer obviated Mylan's double-patenting assertion, the district court's invalidation of the‘812 patent should be reversed. In that event, the Court need not address whether § 121 shields the ‘812 patent from double patenting. To the extent the Court does so, however, the district court's analysis also contains legal error.

Section 121 protects the ‘812 patent from an obviousness-type double-patenting assertion over the ‘086 patent. The plain language of that provision makes clear that it applies if the application that led to the double-patenting “reference” patent - here, the ‘086 divisional application -was filed “as a result of a restriction requirement. Here, the ‘086 application was unquestionably filed as a result of a restriction requirement, and the claims of its divisional, the ‘812 patent, are consonant with that restriction requirement. The district court erred in concluding that there was “tension” between the plain language of the statute and this Court's precedent. As demonstrated below, there is no such tension, and both sources of law result in the same out-come protecting the ‘812 patent.

Even under the district court's erroneous interpretation of § 121, the outcome should be the same. Boehringer originally included the subject matter of the ‘812 patent claims in the ‘374 parent application, but received a restriction requirement man-dating that distinct subject matter be separated out. The ‘812 patent claims invention groups expressly set forth in the ‘374 restriction requirement. But for the restriction requirement, the ‘812 patent would not exist, and the ‘812 divisional application was therefore filed as a result of a restriction requirement. This does not change because one subjective reason for filing that application was to expedite and simplify prosecution in the face of a potential interference. Because § 121 would be satisfied under both the plain language of the statute and the district court's erroneous interpretation of this Court's precedent, the judgment of invalidity should be reversed.

Summary of Argument from defendant Mylan. David J. Harth and Shannon M. Bloodworth of Perkins Coie, on brief.

Boehringer no longer disputes that the asserted claims of the '812 patent are invalid for double patenting. Instead, Boehringer argues that it can avoid the effect of that finding by filing a last minute terminal disclaimer to a patent that expired almost two years earlier. Alternatively, Boehringer argues that it should be able to avail itself of the “safe harbor” provisions of § 121. Neither argument has merit.

Terminal disclaimers permit a patent holder to avoid double patenting objections by surrendering all rights obtained under the second patent from the date the first patent expires. Section 253, covering terminal disclaimers, allows the patent holder to maintain a patent on an obvious variation of an earlier patent while ensuring that the public will have full access to both the earlier patented discovery and all such variations at the expiration of the first patent. In order to prevent the unlawful extension of the patent monopoly, this Court requires that a patentee file a terminal disclaimer before the expiration of the first patent. Any other rule would allow the patentee to maintain the benefits of a patent that otherwise would be invalid for double patenting.

A patent extension under § 156 cannot supplant these fundamental principles. Section 156 grants pharmaceutical patent holders a limited extension in order to compensate for the delay in obtaining regulatory approval. But Congress strictly limited the scope of extensions under § 156 to the patented product and its approved uses. Boehringer's § 156 extension was limited to the use of pramipexole for the treatment of Parkinsonism. Boehringer's '812 patent, however, covers considerably more than this. Boehringer cannot retroactively swap six months of the '812 patent rights it already enjoyed for six months of future § 156 rights when those future rights are narrower. Indeed, even without the disclaimer, Boehringer has already benefited from an unlawful extension of its monopoly.

Nothing permits Boehringer to unilaterally change the terms and dates of its § 156 extension. When applying for the extension, Boehringer told the PTO that there had been no terminal disclaimer on the '812 patent and that no other patents were relevant to the extension. The PTO relied on those assertions and included them in the public disclosure on the requested extension. Boehringer cannot now alter those terms without approval or a new application for ex-tension.

Nor can Boehringer avail itself of the safe harbor provision of § 121, which protects a divisional application filed as a result of a restriction requirement from a finding of double patenting based on the original application, so long as the divisional application maintains the terms of the restriction. Here, as Boehringer's own patent attorney admitted, the application for the '812 patent was not filed “as the result of” any restriction requirement. While a restriction requirement was imposed on the '812 patent's “grandparent” application, the '812 patent's claims were divided from the “parent” application for tactical reasons, not as a result of the original restriction imposed on the grandparent, nor for any restriction imposed on the parent. Section 121, by its terms, cannot apply here.

Even if § 121 did apply, the '812 patent violated the restriction requirement imposed on the grandparent application. Under this Court's jurisprudence, this lack of “consonance” precludes the application of § 121. The original restric-tion required Boehringer to separate five different groups of benzthiazole compound claims from each other and to keep any claims on methods of using a particular benzthiazole compound together with claims on the compound itself. Boehringer's '812 patent violates both of these requirements because it contains compounds from several different benzthiazole groups and does not contain the related method of use claims. As a result, even if the restriction requirement on the original application somehow applied to the double patenting claims in this case, the lack of con-sonance between the '812 patent and the original restriction would bar the application of § 121.

PATracer: Copies of the appeal brief are available from Kyle.

Cartner Takes Issue With Invalidating Claim Construction

2009-05-28T14:50:33-04:00

2009-1097 Cartner v. Alamo Group
ND/OH 1:07-CV-1589
Judge Lesley Wells

A relatively straight-forward appeal of claim construction related to 5,197,284, claiming a system and method for decelerating a hydraulic motor. Following construction in defendant's favor, plaintiff Cartner stipulated to invalidity and appealed.

Oral argument is scheduled for Monday, June 1, 2009 at 10:00 A.M., Courtroom 201.

Summary of Argument for plaintiff Cartner. Philip J. Moy Jr. and Alexander P. Tsarouhas of Fay Sharpe LLP (Cleveland, OH) on brief.

The district court erred in its construction of the term “said flow control orifice being constantly operative” in claims 5 and 12 of the '284 patent.

The district court's construction improperly discounted the prosecution history in rejecting Appellants' proposed construction. The court's error was particularly egregious since the prosecution history is especially pertinent in construing the term, which was added by amendment and appears nowhere in the '284 patent except in claims 5 and 12. A review of the amendment that added the term shows that the patentee clearly meant to distinguish the claimed constantly operative flow control orifice from the prior art, because the claimed orifice was always positioned in its associated hydraulic fluid line rather than being switchable in and out of the circuit as in the cited prior art reference.

The district court also ignored the disclosure of the '284 patent as a whole, instead seizing upon a single word in the specification and claims to justify construing the claim term in terms of dynamic flow conditions and requiring the flow control orifice to continuously slow fluid flow irrespective of whether there was any fluid flow present.

The district court justified its construction as preventing the word “even” in claims 5 and 12 from becoming superfluous. The result of its construction, however, is to render several aspects of the claims redundant or superfluous.

This Court should vacate the district court's construction of the term “said flow control orifice being constantly operative” and provide the district court with the correct construction or instructions to construe the term in a manner consistent with the specification and prosecution history of the '284 patent, preferably a construction that is based on structure and not dependent on dynamic flow conditions. Finally, the district court's Final Judgment Order invalidating claims 5 and 12 for failing to meet the written-description requirement of 35 U.S.C. § 112 should be vacated.

Summary of Argument for defendant Alamo Group. Steven M. Auvil, Bryan A. Schwartz and Benjamen E. Kern of Benesch Friedlander, Coplan & Aronoff (Cleveland, OH) on brief.

The district court correctly construed the claim phrase “said flow control orifice being constantly operative” to mean “[t]he flow control orifice continuously slows fluid flow when the first control valve is in the open or closed posi-tion.”

First, the district court's construction is supported by the plain language of the claims, the written description, and the drawings of the 284 patent. Indeed, the plain language of claim 5 unambiguously imposes the requirement that the flow control orifice be constantly operative, whether the first control valve is in the open or closed position. Spe-cifically, claim 5 requires that the “third fluid line allow[] a flow of hydraulic fluid from said second fluid line to said first fluid line even when said control valve is in a closed position.” (emphasis added). That requirement is ech-oed in the specification. See A47; col. 2, 1. 16-19 (“The third fluid line allows a flow of hydraulic fluid between the first and second fluid lines even when the control valve is in a closed position.”) (emphasis added); A50, col. 7, 1. 27-29 (“Hydraulic fluid is thus able to circulate between [first and second] fluid lines 114' and 124' ... by way of the third fluid line even when the [control] valve 200 is in the closed position.”) (emphasis added).

Second, the district court's construction gives meaning to all of the words in claims 5 and 12. Again, claim 5 re-quires that the “third fluid line allow a flow of hydraulic fluid from said second fluid line to said first fluid line even when said control valve is in a closed position.” (emphasis added). As Alamo argued and the district court con-cluded, the only logical explanation for the use of the word “even” in claim 5 is that the third fluid line allows a flow of hydraulic fluid from the second fluid line to the first fluid line when the control valve is in an open or closed posi-tion. Otherwise, the word “even” would be rendered superfluous. Remarkably, Cartner has never offered an alterna-tive explanation for the term “even” in claim 5 or explained how any one of its panoply of alternative constructions gives meaning to that term.

Finally, the district court's construction is in accord with this Court's en banc decision in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), in that it affords the appropriate weight to the claims, the specification, and the prosecu-tion history of the 284 patent. Contrary to Cartner's argument, the referenced dictionary played no role, let alone the significant role that Cartner attributes to it, in any substantive dispute over the meaning of the disputed phrase. Rather, the resolution of the parties' substantive dispute in Alamo's favor turned on the plain language of the claims, as supported by the patent's written description and drawings. Further, the district court properly gave less weight to the prosecution history of the 284 patent, which it found was “not explanatory” (A33), a decision that appears even more unassailable now in view of Cartner's efforts to cast that history in a supporting role for each of the “alterna-tive” constructions (including one that is new on this appeal) that Cartner has offered since the district court issued its Markman ruling.

For all of these reasons, as detailed more fully below, the district court's judgment should be affirmed in its entirety.

PATracer note: Copies of briefs are available from Kyle upon request.

En Banc: 271(f) and Cardiac Pacemaker

2009-05-27T06:36:43-04:00

2007-1296 Cardiac Pacemaker v. St Jude
SD/IN 96-CV-1718
Judge David F. Hamilton

The Federal Circuit is hearing the case, en banc, directed to a single question:

Does 35 U.S.C. § 271(f) apply to method claims, as well as product claims?

The panel relied on Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005) to answer in the affirmative, but some (St Jude, amici) argue that the Supreme Court's decision in Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007)--finding that software instructions were not "components"--mandates a different result.

Oral argument is scheduled for Friday, May 29, 2009 at 2:00 P.M., Courtroom 201.

§ 271(f) provides:

(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 manner as to ac-tively induce the combination of such components outside of 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.

(2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of com-merce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a man-ner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

Summary of Argument from St Jude. Jeffrey M. Olson from Sidley Austin LLP (Los Angeles, CA); Denis R. Salmon and H. Mark Lyon from Gibson, Dunn & Crutcher LLP (Palo Alto, CA); Mark A. Perry from Gibson, Dunn & Crutcher LLP Washington, D.C.) on brief.

Title 35 U.S.C. § 271(f) does not apply to method claims.

I. The text of Section 271(f) is limited to product claims. Section 271(f) prohibits the supply of components that are combined overseas to form a patented invention. The things that St. Jude supplied from the United States are not “components” of CPI's claimed method; conversely, the components of that method-the acts of “determining,” “se-lecting,” and “executing” (A134)-- were not supplied by St. Jude from the United States. Thus, no liability attaches under Section 271(f). Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007).

A. CPI maintains that the ICD devices that St. Jude ships to foreign countries are “components” of the claimed method, but that is wrong. The only conceivable components of a method are steps or acts themselves. A device or other physical thing cannot be combined with an act. CPI effectively concedes this point by arguing that the devices are used for practicing the claimed method; but be that as it may, the devices are not components of the invention as required by Section 271(f). The Supreme Court in Microsoft squarely held that Section 271(f) does not reach either things or conduct that merely facilitate the making or practicing of an invention overseas.

B. St. Jude also supplies from the United States instructions for programming the ICD devices, but those are not “components” either. Pellegrini v. Analog Devices, Inc., 375 F.3d 1113 (Fed. Cir. 2004). Even assuming, arguendo, that some intangibles are capable of combination, and thus could be “components,” the steps comprising CPI's method were not supplied by St. Jude from the United States, but carried out by foreign doctors abroad. In fact, no intangibles can be supplied from the United States because there is, literally, nothing to supply. Thus, Section 271(f) cannot apply to method claims.

II. Two complementary provisions of the Patent Act confirm that Section 271(f) is limited to product claims.

A. Section 271 (c) distinguishes between a “component” of a product, on the one hand, and “material or apparatus for use in practicing a patented process,” on the other. Congress thus understood that method claims do not have “components,” and is presumed to have adhered to that understanding in enacting Section 271(f). Indeed, Congress copied large parts of Section 271(c) into Section 271(f), but chose to omit the reference to things “for use in practic-ing” method claims. CPI is thus asking this Court to do something that Congress decided not to do.

B. Section 271(g) imposes liability for importing products made overseas using a patented process. The statutory history shows that Congress intended this provision to apply to method claims, and intended Section 271(f) to apply only to product claims. Indeed, Section 271(g) is the only provision of the Patent Act that imposes liability in con-nection with the overseas practice of a patented method, further foreclosing CPI's argument that Section 271(f) ex-tends to method claims.

III. The objectives of Section 271(f) confirm that it is limited to product claims. Section 271(f) was a congressional response to a Supreme Court ruling that it was not an act of infringement to assemble outside the United States a patented product out of components supplied from the United States. That case was about products; the congres-sional response was also about products. The Supreme Court held in Microsoft that further adjustment of Section 271(f) is a legislative decision, not a judicial one. This is due in part to the longstanding presumption against extra-territoriality, which applies with particular force in the patent context. Extending Section 271(f) to method claims would interfere with the policy decisions made by foreign sovereigns, such as the Europeans' decision not to allow most medical treatment methods to be patented. Absent clear congressional direction, liability for facilitating the foreign practice of method claims may not be imposed under the U.S. patent laws.

Summary of Argument from Cardiac Pacemaker. Arthur I. Neustadt and Barry J. Herman from Oblon, Spivak, McClelland, Maier & Neustadt, P.C. (Alexandria, VA); J. Michael Jakes, Kara F. Stoll and Michael V. O'Shaughnessy from Finnegan, Henderson, Farabow, Garrett & Dunner, (Washington, DC) on brief.

This Court's March 6 order states - “The parties are requested to file new briefs addressing only the following question: 1) Does 35 U.S.C. § 271(f) apply to method claims, as well as product claims?” Emphasis added.[FN1]

FN1. St. Jude (at 7, n. 1 and 33) ignores this prohibition and requests that the en banc Court reverse those portions of the panel's decision that reversed the district court. This request should be denied as plainly violative of this Court's March 6 order.

The Court's question is best answered by considering (1) what Congress intended to do in enacting § 271(f) and (2) the lan-guage selected by Congress to do so. St. Jude ignores what Congress intended to do and, instead, bases its argument upon the “component” language while ignoring the effect of the “patented invention” language of § 271(f). The answer to the Court's question is best resolved by considering both Congressional intent and the “component” and “patented invention” language.

As to this intent, Congress wanted to reverse the result in Deepsouth, which involved a “machine” patent. If this was all that Congress wanted to do, it would have used the term “machine.” However, Congress used the catch-all term “patented inven-tion” which § 101 (“Inventions patentable”) defines as four classes of patentable invention (“process, machine, manufacture or composition of matter”).

Accordingly, the issue with respect to the Court's question is whether Congress, by use of the term “patented invention,” in-tended to cover all or only some of the four statutory classes of invention.

Since Congress intended to overrule the result in Deepsouth, it certainly intended to cover the “machine” class of invention. There is nothing to indicate that Congress was not also of the view that the problem that arose with respect to the result in Deepsouth could also arise with respect to other classes of invention. St. Jude does not suggest otherwise.

Congress' use of the term “patented invention” would seemingly apply to each of the four classes of invention, especially since the purpose of § 271(f) was to overrule the result in Deepsouth and not to leave a class of invention unprotected against a Deepsouth defense to a claim of infringement. St. Jude, however, suggests otherwise, arguing that the language used by Congress in § 271(f) specifically excludes the “process” class of invention, i.e., the language “components of a patented in-vention” does not fit with a process (since a process has steps and not components). The fundamental defect in St. Jude's ar-gument is that it inexorably leads to the conclusion that Congress, in enacting § 271(f) to overrule Deepsouth, intended to exclude one of the four classes of invention. There is no basis for any such conclusion and, indeed, such a conclusion will not withstand analysis.

A far more reasonable conclusion considering both Congressional intent and the § 271(f) language is that Congress wanted to leave no class of invention unprotected from a Deepsouth defense but that the catch-all phrase “patented invention” which it selected, although a good fit with some classes of invention, is not as good a fit with other classes of invention. More particu-larly, the term “components” fits well with “machine” and “[article of] manufacture” but less well with a “composition of matter” and even less well with a “process.” However, the fact that the term “components” does not fit as well with a “com-position of matter” or even less well with a “process” does not lead to the conclusion that Congress intended to exclude the “process” class of invention from the ambit of § 271(f).[FN2]

FN2. It should come as no surprise that § 271(f) may suffer from “legislative imprecision” since § 271(e)(1) suffers from this condition. As held by the Supreme Court in Eli Lilly, supra - “No interpretation we have been able to imagine can transform § 271(e)(1) into an elegant piece of statutory draftsmanship. To construe it as the Court of Appeals decided, one must posit a good deal of legislative imprecision; but to construe it as petitioner would, one must posit that and an implausible substantive intent as well.” Id. at 679.

St. Jude tries to overcome the fundamental defect in its argument (that it inexorably leads to the conclusion that Congress intended to exclude the “process” class) by asserting that process claims by their very nature (they refer to steps) are mark-edly different from product claims. However, such an argument is directly contrary to the Supreme Court's recent decision in Quanta Computer Inc. v. LG Electronics, Inc., 128 S. Ct. 2109 (2008), holding that method claims are subject to patent ex-haustion since “[a]pparatus and method claims ‘may approach each other so nearly that it will be difficult to distinguish the process from the function of the apparatus' ” and “methods nonetheless may be ‘embodied’ in a product.” Id. at 2117-18.

PATracer Note: Let Kyle know if you would like the briefs for this case.

In Brief: Purechoice v. Honeywell

2009-03-31T10:01:17-04:00

2008-1482 Purechoice v. Honeywell
ED/TX 06-cv-00244
Judge T. John Ward

Purechoice appeals from the judgment of Judge Ward construing certain claim terms of RE38,985 as ambiguous and the claims invalid for indefiniteness. The patent relates to a remote environmental monitoring system that collects air quality data about a site. We previously covered the case here, as did Michael Smith from EDTexweblog.

Oral argument is scheduled for Tuesday, March 31, 2009 at 10:00 A.M., Courtroom 203. When it becomes available, an mp3 of the oral argument should be here.

Unless otherwise stated, these summaries are copied from the "Summary of the Argument" sections of the parties' main briefs (blue and red), respectively.

Summary of the Argument from Purechoice. Bradford P. Lyerla, Donald W. Rupert, Thomas L. Duston, Margaret L. Begalle, Marshall, Gerstein & Borun LLP (Chicago) on brief.

The court erred in its construction of the term “air quality” by limiting the term to the “concentration of pollutants or contaminants in the air. The ‘985 Patent describes that the claimed monitoring system is for use in indoor environments. Consistent with the understanding in the prior art at the time the original application was filed in 1997, the person of ordinary skill would have known that air quality in such environments includes not only levels of pollutants or contaminants, but also temperature and humidity values. Indeed, during the prosecution of the reissue application, the Examiner confirmed that air quality attributes include at least temperature and humidity.

The plain meaning of “air quality” is exactly what the words connote: a quality of the air. That term should not have been limited as was done by the district court, particularly in light of the understanding in the art and the intrinsic evidence in the reissue proceedings that “air quality” is a broad term that includes numerous attributes. Thus, the court's “air quality” construction is inconsistent with the prior art, the specification, and the prosecution history. The court's erroneous construction of “air quality” should be reversed and the construction proposed by PureChoice should be adopted.

The court further erred when it concluded that two other limitations were incapable of being construed and, hence, indefinite. Those limitations, “sensor for measuring environmental air quality data” and “air quality sensor adapted to measure non-weather data,” are not insolubly ambiguous and can be given a reasonable meaning consistent with the prior art, the patent's specification, and the prosecution history.

For example, in relation to the term “sensor for measuring environmental air quality data,” the court held that limitation indefinite without considering that the limitation incorporates the previously construed (albeit incorrectly) “air quality” term. The district court compounded this error when it did not even attempt to construe the term. Finally, the court erred when it failed to consider what the person of ordinary skill would have known in 1997 when the application was filed. This knowledge was represented in the prior art considered by the Examiner during prosecution and other undisputed prior art. Much of this prior art, discussed above, was part of the patent's prosecution history and the Examiner's and PureChoice's comments on that art establish that the court's “incapable of being construed” conclusion is wrong as a matter of law.

As to the final limitation of “air quality sensor adapted to measure non-weather data,” the court committed the same errors discussed above. The court appears to have relied on its incorrect construction of “air quality, did not attempt to construe the term, and failed to consider what the person of ordinary skill would have understood from the prior art, the specification, and the prosecution history of the patent.

In light of the district court's errors and its erroneous conclusion that these claim limitations are incapable of construction, this Court should reverse the district court and conclude that these claim terms are definite. PureChoice's constructions of these terms should be adopted.

Summary of the Argument from Honeywell: David Stein, McDermott Will & Emery LLP (Irvine, CA); M. Miller Baker, McDermott Will & Emery (Washington, D.C.) on brief.

1. The district court's construction of “air quality” is consistent with the intrinsic evidence. PureChoice attempts to distance itself from this evidence and instead asks the Court to construe the term in the same manner as a few selected pieces of prior art, thereby ignoring the intrinsic evidence. This is in direct contradiction to this Court's plain instructions in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), cert. denied, 546 U.S. 1170 (2006). The Court must look to the specification and prosecution history and not rely primarily on “potential extrinsic evidence of some marginal relevance.” Phillips, 415 F.3d at 1318. The district court properly analyzed the claim language in light of the intrinsic evidence, and its construction of “air quality” as “a concentration of pollutants and contaminants in the air” should not be reversed.
The specification and prosecution history clearly demonstrate that the term “air quality” means “a concentration of pollutants or contaminants in the air.” The specification consistently discloses a system that monitors for pollutants and contaminants, and it does not reference temperature or humidity, or imply in any way that either of those is an attribute of air quality. In fact, PureChoice cannot point to a single section in the patent indicating that either temperature or humidity is included in the definition of “air quality.” The specification's unambiguous definition of “air quality” as “a concentration of pollutants or contaminants in the air” is dispositive.
The other intrinsic evidence supports this construction. In prosecuting its patent, PureChoice twice disavowed the inclusion of temperature and humidity as part of “air quality.” It unambiguously differentiated its patent from the prior art Gilbert and Shelton patents by arguing that sensors that monitor for temperature and humidity do not monitor for “air quality.”
Under these facts, extrinsic evidence is irrelevant. However, if the Court finds it necessary to turn to the extrinsic evidence to determine the meaning of the word “air quality,” it will observe that the technical dictionaries, the relevant rules and regulations, and expert testimony all provide evidence that one of ordinary skill would interpret the term to mean “a concentration of pollutants or contaminants.”
2. The Court need not rule on the definition of “air quality” if it determines that the district court was correct in ruling that “sensor for measuring environmental air quality data” and “air quality sensor adapted to measure non-weather data” are indefinite.^[FN3] The phrases “sensor for measuring environmental air quality data” and “air quality sensor adapted to measure non-weather data” are incapable of construction. Neither is a term of art. The specification is completely silent as to the meanings of these terms. They were added during prosecution to avoid cited prior art, and the prosecution history makes clear that the elements mean different things, yet those different meanings are not explained. And, to the extent the Court considers extrinsic evidence, this evidence confirms that one of ordinary skill in the art would not know how to distinguish between the two elements or otherwise interpret them.
FN3. Honeywell is addressing the definition of “air quality” first as this definition provides useful background for addressing the sensor terms.
Even PureChoice is unable to propose a workable definition of these terms. Instead, its definitions create more confusion. The definitions do not reveal which attributes would fall into which category. PureChoice also contends certain air quality attributes can be both “non-weather data” and “environmental air quality data.” This contention contradicts the one thing that is clear about these terms from the intrinsic evidence - the sensors must monitor for different air quality attributes.
A person of ordinary skill in the art, reading the claim terms in light of all the intrinsic and even extrinsic evidence, would not be able to determine what the terms mean. Accordingly, the terms are indefinite.

The pdfs are too large to upload. If you want a copy of the briefs, send me an email and I will try and send them to you.

In Brief: Blackboard v. Desire2Learn

2009-03-30T16:44:25-04:00

2008-1368 Blackboard v. Desire2Learn
ED/TX 9:06-CV-155
Judge Ron Clark

Cross-appeals involving Blackboard's 6,988,138 patent. The jury found Desire2Learn infringed claims 36-38, also finding those claims valid. The court found claims 1-35 invalid for indefiniteness. The '138 is also currently in reexams, with the PTO having preliminarily rejected claims 1-44.

Oral argument is scheduled for Tuesday, March 31, 2009 at 10:00 A.M., Courtroom 201. When it becomes available, an mp3 of the oral argument should be here.

Summary of the Argument from Desire2Learn. George E. Quillin, Foley & Lardner (Washington, DC); Gregory S. Norrod, Jonathan R. Spivey, Jason J. Keener, Foley & Lardner (Chicago) on brief.

The asserted claims, properly construed, are invalid as anticipated by the prior art. The district court erred in construing the term “user” by importing unnecessary limitations into its construction and narrowing the scope of claim 36. As used in the '138 Patent, “user” refers to a physical person that interacts with the system. The district court's construction includes super-fluous language that adds a “single login” limitation, albeit ambiguously. The flaw in the construction was highlighted when the jury asked the court whether the construction meant a “single-login.” After trial, the court reversed its interpretation of its own construction and concluded that under its construction a user accesses all roles using a “single-login.”

Properly construed, the asserted claims are anticipated by the prior art references. In fact, the testimony of named inventors establish that CourseInfo discloses every limitation of the claims. Blackboard's only argument asserted at trial against antici-pation by both the CourseInfo and Serf references was that they fail to teach the “single-login” feature.

Even under the district court's claim construction the asserted claims are invalid as obvious in view of the prior art. As con-ceded by Blackboard, each and every limitation of the asserted claims, other than a “single-login,” is disclosed by the prior art CMS references. However, accessing multiple roles using a single-login, known as role based access control “RBAC,” was well-known in the art. Moreover, the notion of combining a CMS with RBAC was also known.

This Court should reverse the judgment on invalidity and direct the district court to enter a judgment invalidating the asserted claims. At a minimum, a new trial should be ordered on the issue of invalidity.

There was no infringement of the asserted claims. Blackboard failed to present evidence of even a single instance of the claimed method being performed in the United States by a single entity. Desire2Learn, a company located in Canada, per-forms step (a) of claim 36 when it installs its clients' systems from its facilities in Canada, precluding infringement. Further, for clients that are hosted by Desire2Leam, the entire system used to perform the method is located on Desire2Learn's equip-ment located in Canada. Moreover, the claim language itself demonstrates that no single entity can perform all the steps of any claim. There cannot be indirect infringement in the absence of a direct infringer.

This Court should reverse the judgment on infringement and direct the district court to enter judgment on noninfringement.

Summary of the Argument from Blackboard. : Christopher D. Bright, McDermott Will & Emery LLP (Irvine, CA); Joel M. Freed, Michael S. Nadel, McDermott Will & Emery (Washington, D.C.) on brief.

Response to Desire2Learn's Appeal
The district court's construction of “user”- “a person who interacts with the system, and who accesses the system by logging on with a username and password, and then keys in information” (A006575)-properly reflects the context of the other claim language. Claim 36 is directed to the use of a system in which “each user” is “capable” of being “multiply assigned” roles in the system, as construed by the district court without challenge by Desire2Learn. Id. Each person using the system is thus able to access all his courses and all his roles at once, such that he can be a student in one course and a teacher in another course by logging in with one user name and password.
The district court's construction is in accord with the position that Desire2Learn initially took during claim construc-tion. Desire2Learn unambiguously told the district court that independent claim 36 requires the use of a system in which, for example, a user “can be assigned a teacher role for Biology 101 and a student role for English 405 all under one user account.” (A016279). Desire2Learn has now reversed itself, but its earlier position was correct. Use of a system in which multiple logins were necessary to access different roles would not satisfy the claim's require-ment that “each user” is “capable” of being “multiply assigned” roles in one interaction with the system. (A006575).
The district courts construction of “user” is supported by the claim language, the specification, and the prosecution history. Desire2Learn's misplaced effort to employ claim differentiation doctrine-contrasting the language of claim 36 with claims that are neither redundant nor superfluous and which depend on a different independent claim-cannot overcome the intrinsic evidence that supports the district court's construction.
Ultimately, however, it does not matter whether the correct construction of “user” is the district court's construction or Desire2Learn's proposal, namely “a physical person that interacts with the system.” Even under Desire2Learn's proposal, there is no anticipation. Pursuant to the district court's unchallenged construction of step (a) of claim 36 (A006575), the claim still requires the use of what Desire2Learn dubbed during claim construction a “Multiple Role” system-a system in which a person, during an interaction with the system, can have multiply assigned roles across courses at once. (A016279-81). The inventors' own prior art, CourseInfo 1.5, did not allow that, and neither did Serf. Rather, CourseInfo 1.5 and Serf embodied the problem that the inventors set out to solve, which was that someone interacting with the systems could only have one role during that interaction.
The district court properly denied Desire2Learn's JMOL motion on obviousness. (A007224-26, reprinted in the Ad-dendum). Desire2Learn failed to carry its burden. Its witnesses simply were not credible. The district court con-cluded: “Not to put too fine a point on it, a jury would have been fully justified in discounting Desire2Learn's expert testimony on invalidity. Desire2Learn's factual witnesses did not fare much better.” (A007226). Given this credibil-ity determination, which this Court will not disturb, the district court could not have granted JMOL to Desire2Learn.
The district court's decision on obviousness is further supported by the failure of the record to establish that, either alone or in combination, the prior art at issue disclosed all of the elements of claims 36, 37, and 38, as construed by the district court. Desire2Learn's contrary assertions are based on supposed testimony that was never given, a self-serving analysis of documentary material that it never presented to the jury, and a combination of prior art that it never mentioned in its Rule 50(b) JMOL motion and relies on for the first time on appeal.
Additionally, Blackboard presented substantial evidence of objective indicia of non-obviousness. As the district court found, “Desire2Learn did little to rebut Blackboard's evidence of secondary considerations, partly because its expert did not know what those were.” (A007226).
In any event, Desire2Learn has waived its argument regarding obviousness, because its Rule 50(a) motion for JMOL on obviousness consisted solely of: “We would make a motion for judgment as a matter of law on... obviousness, as well, Your Honor.” (A006328). Desire2Learn did not identify any factual or legal arguments in support of its mo-tion, as required by Rule 50(a). It did not even identify the prior art or combinations of prior art on which its motion was predicated. This failure to properly move under Rule 50(a) waived the obviousness issue for purposes of a Rule 50(b) motion and, therefore, for appeal.
The district court also properly denied Desire2Learn's motion for JMOL on non-infringement. (A007223-24). Blackboard presented substantial evidence that Desire2Learn directly infringed claims 36, 37, and 38 by performing all the steps in the United States. In some instances, Desire2Learn employees traveled to the United States to per-form the steps of the claims. Blackboard also presented substantial evidence that Desire2Learn indirectly infringed claims 36, 37, and 38 by actively inducing and contributing to its U.S. customers' performance of all the steps in the United States.
Desire2Learn argues that the evidence at trial showed that step (a) of claim 36 is performed only by Desire2Learn and only in Canada. But the evidence at trial showed otherwise on both points. Desire2Learn's non-infringement position on appeal, as below, relies on Desire2Learn's own “self-serving testimony.” (A007224). But Desire2Learn is not entitled to ignore the substantial contrary evidence presented by Blackboard, which was sufficient to support the jury's findings of direct and indirect infringement. Indeed, the law requires that such evidence be credited and that all inferences be drawn in favor of the jury's verdict JMOL was particularly inappropriate given the district court's recognition that Desire2Learn's witnesses on non-infringement lacked credibility. Blackboard's witnesses were “more trustworthy” that those of Desire2Learn. Id.
Blackboard's Cross Appeal
The district court erred in holding that claims 1-35 are invalid as indefinite. The patent discloses corresponding structure for the term “means for assigning a level of access to and control of each data file based on a user of the system's predetermined role in a course” in claim 1, as required by 35 U.S.C. § 112 ¶ 6. The corresponding structure is “an access control manager (e.g., 152 in Fig. 1) and equivalents thereof.”
The district court misread the specification, which does, in fact, disclose such structure to an artisan of ordinary skill. The specification explicitly discloses that, in response to a request to protect system resources such as course data files, an access control manager creates an access control list which associates a user's role with the access and control level for the data file. Patent 8:6-20, 9:3745.

The pdfs are too large to upload. If you want a copy of the briefs, send me an email and I will try and send them to you.

Court Maintains License Pending Coverage Dispute

2009-03-24T13:42:13-04:00

2009-1168 Fairchild Semiconductor v. Third Dimension (3D)
D/ME 08-158
Judge D. Brock Hornby

Patentee/declaratory-judgment defendant 3D appeals from the grant by Judge D. Brock Hornby of a preliminary injunction prohibiting it from terminating a patent license to Fairchild. The license relates to patent 5,216,275 and a related Chinese patent directed to superMOSFET technology for silicon semiconductors.

The parties dispute whether Fairchild's SuperFET™ products are covered by either patent, and thus whether royalties are owed under the license agreement. 3D threatened or attempted to terminate the license for failure to pay/agree.

The court employed the usual factors for a preliminary injunction (likelihood of success, etc.), and a prior claim construction from Power Mosfet Techs., LLC v. Siemans AG, 378 F.3d 1396 (Fed. Cir. 2004) and collateral estoppel factored heavily into claim construction and the infringement analysis.

For licensees there is some nice language from the court regarding irreparable harm and balance of hardships regarding terminated licenses, as well relating to the public interest prong. Fairchild did have to post a bond of $330,000 (in place from the TRO).

More reading:

Order of PI

Counsel:

Fairchild: Pierce Atwood (Portland, Maine)
Third Dimension: Shore Cahn Bragalone (Dallas); Richardson Whitman Large & Badger (Portland, Maine)

Court Rejects Collateral Attack On Patent Ownership

2009-03-11T18:16:25-04:00

2009-1167 Enovsys v. Nextel
CD/CA 06-cv-5306
Judge Ronald Lew

Defendant Nextel appeals from the order and judgment of Judge Ronald Lew affirming the jury's verdict of infringement and $2.78 million in damages. Enovsys asserted 6,560,461 against Nextel's iDEN system, relating to a system to protect and manage the disclosure of the precise location of a user's cell phone (e.g., the phone's GPS position).

Most of the court's order is fairly typical for a post-trial motion--the court denying defendant's request for remittitur, new trial, and judgment as a matter of law. The court found sufficient evidence to support the jury's verdict.

One interesting wrinkle is apparently a dispute over the ownership of the '461 patent, with Nextel claiming that plaintiff lacked standing to sue (i.e., was not the "owner") and also that Nextel was at least an equitable owner of the '461.

Without much explanation the court rejected these arguments as a collateral attack on a Judgment of Dissolution issued from the state family court. Enovsys is an IP holding company controlled by Mundi Fomukong, one of the inventors.

More reading:

Opinion

Counsel:

Enovsys: Dovel & Luner (Santa Monica)
Nextel: Finnegan Henderson (DC); DLA Piper (Los Angeles, San Diego, Austin)

Foreign Invention Sneaks In Under § 102(g)(2)

2009-03-10T19:33:50-04:00

2009-1161 Solvay v. Honeywell
D/DE 06-557
Judge Sue Robinson

Plaintiff Solvay appeals from the grant of summary judgment of Judge Sue Robinson finding Solvay's 6,730,817 invalid under § 102(g)(2). The court found that Honeywell--working with Russian scientists--had invented the process for manufacturing 1,1,1,3,3-pentaflouropropane (HFC-245fa, a blowing agent for rigid insulating foams) before Solvay. The court concurrently found that Honeywell infringed claim 1 of the '817, although that summary judgment ruling has no immediate impact due to the invalidity.

Honeywell hired Russian engineers (referred to as RSCAC) to work on flourine product technologies research, and RSCAC developed a way to manufacture HFC-245fa from another product in a continuous process. Per the terms of the research contract, they reported the results and method to Honeywell in July 1994 and, by August 1995, Honeywell had reduced the Russian instructions to practice. This all occurred prior to Solvay's priority date in the '817 patent. Honeywell then filed for a US patent (5,763,706), a date nearly a year after Solvay's priority date.

Section 102(g)(2) provides that a person is entitled to a patent unless:

(2) before such person's invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it.

Solvay essentially argued that Honeywell's patent and activities cannot qualify under 102(g)(2) because Honeywell did not "invent" anything in the United States--rather, the Russians invented it in Russia.

The court found that Honeywell "conceived" of the invention in the US when it received the instructions from RSCAC and that originality was not a requirement of 102(g). For purposes of 102(g) Honeywell was an "inventor"--although the court went on to say that this did not mean that Honeywell was entitled to a patent (the Russians are apparently not listed as the inventors).

The court also considered but rejected Solvay's argument that Honeywell concealed the invention because there was some delay between the completion of an internal invention disclosure form and the filing of the patent. Honeywell allegedly had a policy to suppress inventions and delay patent filing where the commercial value was unknown or the market not yet ripe.

More reading:

Order on 102(g)

Counsel:

Solvay: Potter Anerson Corroon (Wilmington, DE); Oblan Spivak McClelland Maier Neustadt (Alexandria, VA)
Honeywell: Morris Nichols Arsht & Tunnell (Wilmington, DE); Kirkland & Ellis (Los Angeles)

Court Grants Injunction, Then Stays Case Pending Re-Exam

2009-03-02T15:30:01-05:00

2009-1158 Automated Merchandising v. Crane
ND/WV 08-cv-97
Judge John Preston Bailey

Defendants appeal from the grant of a preliminary injunction by Judge John Bailey against the sale of their new vending machines. The 4 patents in suit relate to "optical vend detection systems" in vending machines, devices that are supposed to determine whether or not the selected item has actually dispensed and, if not, refund the money. No more rocking the machine to free stuck Frito's.

There are several facts that make this case interesting, including:

a 7 year delay by plaintiff between believing defendants were infringing and seeking the PI;
the patents are currently in re-exam; and
after granting the PI the court stayed the case pending the re-exam.

The court first addressed defendants' invalidity contentions, based on KSR. The court does not actually discuss the specifics of the obviousness contentions (or of the claims), but notes that the cited prior art was before the PTO and therefore, apparently, it cannot constitute a sufficient defense against a PI:

As such, the prior art references raised by defendants were examined by the Patent and Trademark Office prior to issuing the ‘220 and the ‘915 patents. See American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1359 (Fed. Cir. 1984). Thus, the defendant bears this additional burden:

When no prior art other than that which was considered by the PTO examiner is relied on by the attacker, he has the added burden of overcoming the deference that is due to a qualified government agency presumed to have properly done its job, which includes one or more examiners who are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art and whose duty it is to issue only valid patents. Ultra-Tex Surfaces, Inc. v. Hill Bros. Chem. Co., 204 F.3d 1360, 1367 (Fed. Cir. 2000) (quoting American Hoist, 725 F.2d at 1359). Based on the presumption accorded a valid patent under 35 U.S.C. § 103, and the added burden discussed in American Hoist, defendant has failed to overcome the presumption of validity of the ‘915 and ‘220 patents.

Arguably because KSR ‘altered’ the TSM test to include ‘obvious to try’ in the definition of obviousness, the prior art cited by the defendant, although, reviewed by the Patent and Trademark Office when examining the ‘915 and ‘220 patents, could lead the Patent and Trademark Office to a new conclusion as to obviousness after KSR (i.e. in reexamination). This possibility, however, does not rise to the level of a “substantial question” as to the validity of the patent.

[The court follows Judge Newman's opinion in Abbott v. Sandoz, 2008 WL 4636167 (Sept. 21, 2008) that evidence of vulnerability to invalidity should be considered in conjunction with all other evidence to assess "likelihood of success on the merits.']

After rejecting defendants' obviousness defense, the court then engages in claim construction and concludes that the accused vending machine likely infringes claim 28 of 7,343,220.

The court runs through the remaining PI factors, finding that the delay in this case did not preclude the issuance of PI. Defendants had apparently been selling vending machines with allegedly infringing optical systems since 2001, but had only recently introduced such a vending machine with refrigeration--a much sought after feature in the market--that appears to have hurt plaintiff's sales. The court was not troubled by the delay because the accused machine was just introduced, thus providing a newly arisen irreparable harm.

Motion to Stay

The court then granted defendants' motion to stay the case pending the re-examination...a motion apparently filed well before the PI was granted. The court noted it had control over its docket, the case was in its early stages, and waiting for the PTO to decide matters would conserve judicial resources. The court did not mention the potential unfairness to defendants by issuing the injunction and then staying the case.

More reading: PI Order

Counsel:

Automated: Bowles Rice McDavid (Martinsburg, WV); Davidson Berquist Jackson (Arlington, VA)
Crane/Seaga: Munck Carter (Dallas); Reinhart Boerner (Milwaukee); Spilman Thomas (Morgantown, WV).

Post Infringement Reasonable Royalty

2009-02-27T14:57:23-05:00

2009-1154 Amado v. Microsoft
CD/CA 03-242
Judge David Carter

Plaintiff Amado appeals from the order of Judge David Carter setting the reasonable royalty for Microsoft's post-verdict sale of infringing products and reducing the number of units for which the royalty is owed.

The case is on remand from the Federal Circuit decision [517 F.3d 1353 (2008)] generally affirming infringement by Microsoft but remanding for for determination of the post-verdict royalty for infringing sales following the grant of the (stayed) permanent injunction. The key language employed by Judge Carter from the CAFC's Amado decision is:

When a district court concludes that an injunction is warranted, but is persuaded to stay the injunction pending an appeal, the assessment of damages for infringements taking place after the injunction should take into account the change in the parties' bargaining positions, and the resulting change in economic circumstances, resulting from the determination of liability-for example, the infringer's likelihood of success on appeal, the infringer's ability to immediately comply with the injunction, the parties' reasonable expectations if the stay was entered by consent or stipulation, etc.-as well as the evidence and arguments found material to the granting of the injunction and the stay.

Microsoft argued for a $0.04 royalty, which is what the jury awarded for pre-verdict infringement, noting that it has since (during the stayed injunction period) easily removed the infringing functionality. Amado argued for $2.00/unit, which is amount Microsoft agreed to escrow during the stay pending appeal.

The court settled on $0.12/unit, or treble the jury award. The court's reasoning is fairly well detailed. The court expressly rejects use of the Georgia-Pacific factors in post-verdict reasonable royalty calculations, finding that the CAFC implicitly rejected these factors by not mentioning them in the first Amado decision.

The court also reduced by 75% the number of units subject to the royalty in light of Microsoft v AT&T, 127 S.Ct. 1746 (2007) [discussed here by Patently-O], related to overseas copies of the software for which there is no liability pursuant to 35 U.S.C. § 271(f). An interesting aside, the court several times references Microsoft's refusal to provide detailed sales or financial information to Amado as if there was nothing that could be done to compel such production.

More reading: Order

Counsel:

Amado: Morrison & Foerster (LA)
Microsoft: Arnold & Porter (DC, LA)

Court Sticks Needle Patent With Invalidity

2009-02-26T20:53:15-05:00

2009-1152 MBO Labs v. Becton
D/MA 03-cv-10038
Judge Joseph Tauro

Plaintiff MBO appeals from Judge Joseph Tauro's grant of summary judgment finding that RE 36,885 invalid for violating the recapture rule, 35 U.S.C. § 251.

This decision came after remand by the Federal Circuit, 474 F.3d 1323 (2007). Judge Tauro, applying the CAFC's tripartite test from Pannu v. Storz Instruments, 258 F.3d 1366, 1370-1 (Fed. Cir. 2001), found that the reissue claims recaptured matter surrendered during the original prosecution to overcome prior art and are therefore invalid.

Peter Zura's 271 Blog has a nice post on the earlier Fed. Cir. decision in this case.

More reading: Order

Counsel:

MBO: K & L Gates (Boston); Fish & Richardson (Boston)
Becton: Wilmer Hale (Boston, DC); Brown Law (Raleigh, NC)

Technical Difficulties

2009-02-26T16:04:44-05:00

Which is a term of art meaning "our IT people don't know what's wrong with the document server." The server where we store the pdfs of court orders, briefs, etc. isn't responding, so most of the "More reading" links will not work. I have set up a temporary (hopefully) Google Site on which to store new documents until IT gets things fixed.

UPDATE: The server is back up for now. Send me an email if you have problems or find any broken links.

And now for something completely different.

KSR Breaks Bundle Splitting Patent

2009-02-26T15:54:49-05:00

2009-1151 Geo Martin v. Alliance Machine
ND/CA 07-cv-692
Judge William Alsup

Plaintiff Martin appeals the grant by Judge William Alsup of defendant's Rule 50 motion finding 6,655,566 invalid as obvious. The ruling comes after a 2 week jury trial resulted in a hung jury. The court employed KSR and found the patent, directed to a bundle breaker for breaking corrugated cardboard, roofing shingles, etc., merely an obvious combination of known elements performing known functions. Although there was some evidence of nonobviousness in the secondary considerations, the court dismissed these as minor or inconsequential.

More reading: Order

Counsel:

Geo Martin Co: Krieg Keller Sloan Reilley & Roman (San Francisco)
Alliance Machine: Dorsey & Whitney (Minneapolis)

Catching Up-Week of January 3, part 2

2009-02-01T20:59:04-05:00

If part 1 was the ED/Michigan post, part 2 is SD/New York as 2 of the 3 cases come from there. 2009-1146 (SD/NY) is summary judgment of non-infringement; 2009-1147 (SD/NY) is summary judgment of equitable estoppel; and 2009-1149 (D/DE) is an "exceptional" finding and award of attorney's fee.

2009-1146 Schindler Elevator v. Otis Elevator
SD/NY 06-5377
Judge Colleen McMahon

Plaintiff Schindler appeals from Judge Colleen McMahon's grant of summary judgment of non-infringement to Otis. Schindler's patent, 5,689,094, relates to a destination dispatching elevator (such as one where the passengers do not press any buttons on-board the elevator) and was asserted against Otis's elevators at 7 World Trade Center. The claims generally require an information transmitter carried by the passenger and a recognition device, terms the court construed to operate "without requiring any sort of personal action by the passenger" (other than merely walking in proximity to the elevator). The 7WTC elevator system assigns floor destinations based on (i) tenant's building IDs, an RFID card; (ii) passenger input to a keypad or (iii) building security. Because each requires action by the passenger--(i) requires the passenger to remove the ID card and place it close to the reader--there is no literal infringement. The court found that Schindler did not make any doctrine of equivalents argument.

More reading: SJ Opinion

2009-1147 Aspex Eyewear v. Clariti Eyewear
SD/NY 07-2373
Judge Denny Chin

Aspex appeals from Judge Denny Chin's grant of summary judgment on the defense of estoppel related to allegations of infringement of 6,109,747, a patent directed to clip-on eyewear that attaches to frames via magnets. Applying A.C. Aukerman Co v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc), the court found plaintiff equitably estopped from asserting the '747. The elements are:

a. The patentee, through misleading conduct, leads the alleged infringer to reasonably infer that the patentee does not intend to enforce its patent against the alleged infringer. "Conduct" may include specific statements, action, inaction, or silence where there was an obligation to speak.

b. The alleged infringer relies on that conduct.

c. Due to its reliance, the alleged infringer will be materially prejudiced if the patentee is allowed to proceed with its claim.

In 2003 Aspex counsel sent cease and desist letters alleging infringement of several patents, including the '747. When Clariti's counsel requested more information including identification of the claims asserted, Aspex counsel responded as to some patents, but not the '747. Aspex did write in late 2006 to again raise the '747, and then filed suit in 2007. The court found undisputed that Aspex mislead (through silence), Clariti's reliance and prejudice.

More reading: SJ Order

2009-1149 Microstrategy v. Crystal Decisions
D/DE 03-1124
Mag. J. Mary Pat Thynge

Microstrategy appeals from the Order of Judge Mary Pat Thynge granting in part defendant's motion for attorney's fees and expenses under § 285. The court previously found that the asserted claims were either not infringed or were invalid, a decision affirmed by the CAFC. The fees decision is mixed and based on a claim-by-claim analysis, but the court did find that Microstrategy continued to press its case despite overwhelming evidence of invalidity. The court used March 2005 as the time at which plaintiff should have stopped--this is the date at which rebuttal expert reports were exchanged.

More reading: Order

Catching Up-Week of January 3, part 1

2009-01-29T23:19:00-05:00

Judge Avern Cohn and his clerks must have been busy last fall as a couple appeals from the first week of 2009 are from his court. FYI, later this year Judge Cohn will hit 30 years on the bench in the Eastern District of Michigan.

The four cases in Part 1 consist of 3 claim construction cases and one case on damages.

2009-1135 Lydall v. Federal Mogul
07-12473 ED/MI
Judge Avern Cohn

Plaintiff appeal from the claim construction ruling of Judge Avern Cohn, which prompted plaintiff to take a stipulated judgment of non-infringement in order to bring the matter to appeal. The patent, 6,092,622 (RE39,260), relates to thermal and acoustical shielding via a flexible and fibrous batt. There is nothing esoteric or unusual about the claim construction issues, and the court gives a detailed analysis including the intrinsic evidence and prior art.

More reading: Claim Construction Order

2009-1141 Interactive Health v. King Kong USA
CD/CA 06-1902
Judge Valerie Baker Fairbank

Defendants appeal the judgment and denied JMOL entered by Judge Valerie Fairbank on the jury verdict of infringement and damages of approximately $1.7 million. The sufficiency of plaintiff's damages expert seems to be the key issue (although the JMOL also covers invalidity too), with focus on the "entire market rule," which can be implicated when the accused device includes both patented and non-patented features. The inquiry is whether damages can be predicated on the value of the entire product or only on the patented portion.

More reading: JMOL Order

2009-1142 to 44 Intellectual Science v. Sony
ED/MI 06-10406
Judge Avern Cohn

Plaintiff Intellectual Science appeals Judge Avern Cohn's grant of summary judgment of non-infringement to defendants Sony et al., related to CD players/recorders. The representative patents are 5,748,575 and 6,222,799. The issues boil down to two items of claim construction, one of which relates to whether the preamble should or should not be given any limiting effect. According to the court, the case boils down to a patent related to computer CD drives while the accused products are all audio CD devices.

Judge Cohn does a mea culpa and laments his decision to do combined claim construction and summary judgment rather than dividing it into two stages.

More reading: SJ Order

2009-1145 M Ship v. Ice Marine
SD/FL 06-21866
Judge Alan Gold

Plaintiff M Ship appeals Judge Alan Gold's grant of summary judgment of non-infringement. The case involves an M-shaped hull design for a watercraft, and the claims include language that the outer surface of the sponson (or outer skirt structure) must be "substantially perpendicular with respect to the static water line." The court interpreted this to mean the angle at the point that the skirt entered the water--because the accused Bladerunner boats have an angle of 60-65 degrees at the point of entry to the water line, there could be no literal infringement. Equivalents was limited by Festo-type prosecution history estoppel.

More reading: Order (Too large to upload. Email me if you want a copy).

Catching Up-December 2008

2009-01-28T21:29:09-05:00

December cases...

2009-1091    Smith & Nephew v. Arthrex     12/2/2008
2009-1092    Fraser v. High Liner Foods    12/2/2008
2009-1094    Asymmetrx v. Biocare Medical    12/3/2008
2009-1095    Joyal Products v. Johnson Electric    12/3/2008
2009-1096    Amgen v. F Hoffmann-La Roche    12/4/2008
2009-1097    Cartner v. Alamo Group    12/4/2008
2009-1098    Verizon Services v. Cox Fibernet    12/4/2008
2009-1099    SEB v. Montgomery Ward    12/4/2008
2009-1101    Advanced Magnetic v. Rome Fastener    12/4/2008
2009-1102    Advanced Magnetic v. Rome Fastener    12/4/2008
2009-1105    Perfect Web v. Infousa    12/10/2008
2009-1107    Alloc v. Pergo    12/11/2008
2009-1108    SEB v. Montgomery Ward    12/11/2008
2009-1109    Collegenet v. Xap Corporation    12/12/2008
2009-1110    IGT v. Alliance Gaming    12/12/2008
2009-1111    Becton Dickinson v. Tyco Healthcare    12/12/2008
2009-1116    Broadcom v. Qualcomm    12/23/2008
2009-1117    Broadcom v. Qualcomm    12/23/2008
2009-1118    Advanced Magnetic v. Rome Fastener    12/23/2008
2009-1119    SEB v. Montgomery Ward    12/24/2008
2009-1121    Catch Curve v. Venali    12/24/2008
2009-1122    Alloc v. Pergo    12/24/2008
2009-1128    Matlink v. Home Depot    12/30/2008
2009-1130    Orion IP v. Hyundai Motor    12/31/2008
2009-1131    Digital Spectrum v. Eastman Kodak    12/31/2008
2009-1132    Geo M Martin v. Alliance Machine    12/31/2008

Catching Up-November 2008

2009-01-27T22:10:42-05:00

Okay, so my efforts to catch up have fallen behind schedule, and now I resort to merely listing the appeals filed in November and December--then I can actually start covering the January cases. Here are November's cases:

2009-1047    Garber v. Chicago Mercantile Exch         11/4/2008
2009-1048    Hildebrand v. Steck Manufacturing         11/5/2008
2009-1049    Bengis v. Moss         11/4/2008
2009-1050    Therasense v. Becton         11/4/2008
2009-1051    Aspex Eyewear v. Elite Optik         11/3/2008
2009-1052    St. Clair Property v. Canon Inc         11/4/2008
2009-1053    Becton Dickinson v. Tyco Healthcare         11/4/2008
2009-1054    Conforti v. The Ocean Group         11/5/2008
2009-1057    Singhal v. Mentor Graphics         11/5/2008
2009-1058    Medtronic Navigation v. Brainlab         11/6/2008
2009-1059    Medtronic Navigation v. Brainlab         11/6/2008
2009-1061    Prism Tech v. Verisign         11/7/2008
2009-1063    Boston Scientific v. Johnson         11/10/2008
2009-1065    Highmark v. Allcare Health         11/13/2008
2009-1068    Bid For Position v. AOL         11/14/2008
2009-1069    Peer Communications v. Skype Tech         11/14/2008
2009-1070    Janssen Pharma v. Teva Pharma         11/17/2008
2009-1071    Eli Lilly v. Teva Pharma         11/17/2008
2009-1072    Bally Gaming v. IGT         11/18/2008
2009-1073    Fraser v. High Liner Foods         11/18/2008
2009-1074    Fraser v. High Liner Foods         11/18/2008
2009-1076    Callaway Golf v. Acushnet Company         11/19/2008
2009-1078    Monsanto Company v. Dav.id         11/25/2008
2009-1085    Innovative Therapies v. Kinetic         11/26/2008
2009-1086    Verizon Services v. Cox Fibernet         11/26/2008
2009-1087    Encyclopaedia v. Alpine Electronics         11/26/2008
2009-1088    Janssen Pharma v. Barr Laboratories         11/26/2008
2009-1090    Liquid Dynamics v. Vaughan Company         11/26/2008

Catching Up-Week of October 27th

2009-01-23T11:28:17-05:00

Another is the series of posts attempting to catch up. A couple marking cases: one sufficiency and one false, and inventorship.

2009-1039 Bowling v. Hasbro
D/RI 05-cv-229
Judge William Smith

Hasbro appeals from the judgment of Judge William Smith confirming damages (almost $500k) from a jury trial on infringement, enforceability and no inequitable conduct, and marking. There did not appear to be a JMOL on infringement. The case involves 5,938,197 related to certain types of polyhedral dice (attention AD&D players!), including a six-sided die used in some of Hasbro's Monopoly editions. The marking issue focused on whether marking the die packaging was sufficient, while damages was based on a reasonable royalty theory supported by the parties' testimony but no expert for Bowling.

Memorandum and Order (sorry, WAY too big to post. 20 pages shouldn't be 14mb. Memo to Rhode Island: don't scan, use "Print to PDF.") Email me and I can send it too you if you want.

2009-1041 Technical Furniture Group v. CBT Supply
D/MD 06-3424
Judge Marvin Garbis

Plaintiff appeals from the judgment following a bench trial before Judge Garbis that its declaratory claims to alter the inventorship of 7,047,890 and D541,084 were not proved by clear and convincing evidence. Plaintiff Stengel is a named co-inventor with others on these patents, and the suit attempted to drop these "others" and to add other others who are aligned with plaintiff. Some additional counts related to the validity of an assignment of those patents' rights, but those claims were severed into a new action.

Decision (also scanned and too large. Attention Maryland: see my note above to Rhode Island.) Email me and I can send it too you if you want.

2009-1044 The Forrest Group v. Bon Tool
SD/TX 05-4127
Judge Nancy Atlas

Bon Tool appeals from the decision of Judge Nancy Atlas finding that plaintiff Forrest had improperly marked certain of its platform stilt products but awarding only $500 (with 1/2 going to the U.S.) finding it a result of a "single decision" to mark (as opposed to $500 for each stilt wrongly marked). The court did also find the patent not invalid but not infringed.

35 USC 292 deals with false marking, and provides that violators "Shall be fined not more than $500 for every such offense." Judge Atlas found a single decision to falsely mark is a single offense, even if the mark appears falsely on hundreds or more products. The court reviewed either old pre-Federal Circuit law or district court decisions to conclude that the penalty does not apply to each good sold. While perhaps not a large case, an interesting topic.

Order

2009-1045 Wedgetail Ltd v. Huddleston Deluxe
ED/TX 07-cv-202
Judge David Folsom

Defendant Huddleston appeals from Judge Folsom's decision to dismiss with prejudice its counterclaims based on a lack of subject matter jurisdiction. After claim construction, which was adverse to plaintiff, plaintiff moved to dismiss its infringement claims with prejudice, and also gave a covenant that it would not sue defendant Huddleston on any current product. The court agreed that the dismissal and covenant divested it of jurisdiction, and dismissed the counterclaims.

Motion (granted)

2009-1046 Abbott v. Yeda Research
D/DC 00-1720
Judge Ricardo Urbina

Not an infringement case but an appeal from a district court review of a BPAI decision that found Abbott's 5,334,915 unpatentable over certain prior art. Judge Urbina reversed the BPAI. The issue relates to inherency of disclosure, a topic of current interest to many so I include it here.

Decision

Third Parties And Protective Orders-Can You Handle The Truth?

2009-01-14T15:50:52-05:00

In patent cases non-parties are regularly called upon to produce documents or give deposition testimony--material or information that is often confidential to some degree. Most of the time this discovery goes off without too much trouble: a subpoena is issued, lawyers negotiate, and the discovery had. Typically the producing party takes advantage of the Protective Order in the action, designating the documents or deposition testimony as "Confidential" or "Attorneys Eyes Only" or with some similar language.

But what happens when there is a problem later in the case, especially when another party challenges the designation or violates the protective order? I am involved in a case right now in the District of Colorado which highlights a lurking danger for these non-parties.

In my case, the non-party witness is located in near Cleveland and has no contacts whatsoever with Colorado, the forum state. I served a subpoena and duces tecum for documents and a deposition, the subpoena issuing from the Northern District of Ohio. The materials sought included schematics, design files, software code, etc. for an electronic product.

The parties are competitors, with each other and also with the witness. The witness initially objected because the materials sought were confidential trade secrets, business plans, etc., but withdrew the objection and produced the material (and was deposed) as "Attorneys Eyes Only" by taking advantage of the Protective Order entered by the Colorado court. Like many Protective Orders, it specifically invited and allowed non-party witnesses to take advantage of its terms.

Fast forward 9 months and my opponent files a motion with the Colorado court to strip confidentiality from one of the documents produced by the non-party witness. Although the witness objected to the de-designation, it could not (or would not) appear in the Colorado court to fight it. I raised a jurisdictional question with the Colorado court, wondering whether the matter should be heard in Ohio (where the subpoena issued) rather than in Colorado, particularly where it was clear that the Colorado court did not have personal jurisdiction over the witness.

The magistrate judge was untroubled by my question and easily decided that he had jurisdiction, granting the motion to de-designate the document as unopposed. He might be right on jurisdiction--the relevant jurisdiction could be in rem over the document rather in personum over the witness. I admittedly didn't do any research on this issue because it wasn't really important to my clients.

But the result did trigger a mental practice alert for me. When representing the non-party witness I shouldn't rely on the forum court's Protective Order even if the terms are otherwise pretty good. Unless my client is prepared to settle later disputes over designations (or misuse of the document by the parties) in the forum state, it seems like:

I should insist that the forum's Protective Order provide that disputes concerning non-parties be heard by the court issuing the subpoena rather than the forum state; or

I should refuse to rely on the forum Protective Order and have a separate Protective Order entered by the court issuing the subpoena.

The issue could be even more significant to non-U.S. witnesses, but certainly to anyone who doesn't want to have to appear and fight in a distant court.

When You Need A Friend At Court

2009-01-12T23:29:42-05:00

Everyone needs friends. And what better time to have a friend with you is there than when arguing at the Federal Circuit, especially if your friend is also a "friend of the court," or amicus curiae?

I have worked on quite a few amicus briefs, both in private practice and during law school while working at the Washington Legal Foundation. They are (usually) fun to write and are (usually) great to have on your side because they can make arguments or points that you can't or won't (or don't have room to include).

However, I never gave much thought to finding an amicus to join my side in an appeal until my opponents in a pending Federal Circuit case started trolling around looking for one (or two, or three....) to help them. More on that in a later post, but that process got me thinking about who is filing these briefs and how to go about getting them to help you.

According to Wikipedia, amicus curiae (pl. amici curiae), or friend of the court, is a practice from ancient Roman law where non-parties to a case could voluntarily offer the court additional information, insight, or explanation on the case, or on the policy or wider implications of a particular ruling.

Rule 29 of the Federal Rules of Appellate Procedure generally allow participation of an amicus by leave of court, and the Federal Circuit regularly allows them. Indeed, a review of the decisions in Seagate, Bilski, and Egyptian Goddess shows quite a few in each.

I went through the last couple years of CAFC patent decisions and looked at the amicus participants, whom I could break down into some groups.

One group of amicus filers are trade organizations and groups, such as the Generic Pharmaceutical Association, National Association of Chain Drug Stores, and Pharmaceutical Research & Manufacturing Alliance, just to name a few. Most are obviously industry specific, but they are a good place to start, especially if your opponent is not in the same industry;

Some companies also like to file amicus briefs, so we have seen Apple, Sprint, Electrolux, Nike, etc. Think about companies that might want to same result as you--or fall into "the enemy of my enemy is my amicus" category;

The PTO, ITC and some government groups, as well as individuals filing pro se.

One final group, which probably includes the entities who participate the most, are bar organizations and IP groups. If you are looking for an amicus help, don't forget to check out local or state bar associations or property law associations. Many probably don't regularly do amicus briefs, so it might take some calling around, convincing...and maybe a donation.

For CAFC cases I identified a few repeat filers, which I have listed below. For each I looked to see if they posted online some information or procedures for requesting amicus help.

American Intellectual Property Law Association (AIPLA): information and procedures for requesting amicus participation by AIPLA can be found here.

Federation Internationale des Conseils en Propriete Industrielle (FICPI): I couldn't find anything online, but the contact information can be found here.

United Inventors Association: I couldn't find anything online, but the contact information can be found here.

Washington Legal Foundation: I couldn't find anything online, but the general website address is here.

Federal Circuit Bar Association: information and procedures for requesting amicus participation by FCBA can be found online here.

Intellectual Property Owners Association: information about the IPO's amicus committee, including a list of member, can be found here.

Electronic Frontier Foundation: Contact information for EFF can be found at the Staff page of the Contact us page here.

Catching Up-Week of October 20th

2009-01-08T11:13:48-05:00

As part of our recently announced plan to "catch-up" on coverage of cases, here are brief summaries of the appeals filed during the week of 20 October 2008 that we didn't already cover.

I expect a series of these Catching Up posts over the next few weeks until we get through December's filings, and then we will resume our regular coverage. Josh has also promised some On The Radar posts soon, so the pressure is on.

2009-1032 Boehringer Ingelheim v. Barr Labs
D/DE 05-cv-700
Judge Joseph Farran

Plaintiff Boehringer appeals from the judgment of Judge Farran that the claims of 4,886,812 directed to pramipexole dihydrochloride, the active ingredient in Mirapex®, are invalid for nonstatutory double patenting. The case was based on an ANDA filed by defendants and the matter tried to the court.

More reading:

Findings and Conclusions

2009-1033 Cordis v. Medtronic
D/DE 97-cv-550
Judge Sue Robinson

Defendants appeal from the opinion of Judge Sue Robinson confirming infringement, validity and damages regarding 4,739,762 concerning coronary stents. The case was filed in 1997 and resulting in 4 liability trials, 2 damages trials and at least one appeal, 511 F.3d 1157 (Fed. Cir. 2008). On remand, the court considered the effect of the Federal Circuit's changes to certain claim construction. The court concluded that:

a new trial on obviousness of claim 23 is not needed and the claim is valid;

defendant Boston Scientific has waived any defense of obviousness with respect to claim 44; and

no new trial on damages is needed.

More reading:

Opinion

Coming Soon To PATracer

2009-01-06T11:06:31-05:00

Happy New Year, and thanks to everyone with reads, subscribes, comments, and otherwise uses PATracer. When we started the site nearly a year ago we wanted to report on pending Federal Circuit patent cases--providing information on newly filed cases, the briefs, and oral argument.

With 2008 in the books, Josh and I have reviewed PATracer and feel a few changes are needed to better meet our goals.

First, a couple observations by us:

When we get busy at work (like we did in December with a big preliminary injunction hearing and the holidays) the frequency of our posts suffer, and it is easy to fall behind.

Many cases are, for lack of a better description, not that interesting from a legal, procedural or factual standpoint.

Many cases are also difficult to decipher from the ECF materials--sometimes all the good stuff in under seal, sometimes the court's opinions or explanations of rulings are downright Hobbesian: "solitary, poor, nasty, brutish, and short."

We didn't cover brief filings or oral arguments as often as we want.

In an effort to address these points we have decided on the following:

1. Nicholas Gingo, a newly minted attorney here at Renner Otto, has volunteered agreed to join us, and will be posting soon.

2. The "basic" post for most newly filed appeals will probably get a little shorter--although we will still provide links to documents and some information on each. This should make it easier to stay current and free up time so that the more interesting cases can get more detailed write-ups.

3. New logo. Many refer to us as PAT-racer, so we went with a racing motif.

Robert Cohn Was Once Middleweight Boxing Champion Of Princeton

2008-12-28T23:54:50-05:00

2009-1031 Marrin v. Griffin
CD/CA 07-239
Judge George Wu

Patentees' Jeff and Claudia Griffin appeal from Judge George Wu's grant of summary judgment finding claims 1-4 of their 5,154,448 patent invalid under 102 and 103. The patent relates to a label that allows users to write without using a pen or the like--Marrin is the founder of Etch-It, a company that makes cups and other products with a label on which you can write using your finger.

In this case involving the Griffins I almost went with a photo from Family Guy--e.g., Brian scratching something--but I could use a Family Guy shot every day (hmm, now there is a theme for next week). But how often can you use John Waters, a fellow film maker whose early 1980's Polyester had scratch-and-sniff cards and Divine?

Claim 1, the only independent claim, states:

1. A scratch-off label for permitting a user to write thereon without the use of a marking implement, comprising:

a permanent base having a colored near side which is normally visible to the user and having a far side; and

a coating of scratch-off non-transparent material having a color which contrasts with the color of the near side of the permanent base, which coating is applied directly onto the near side of the permanent base with sufficient thickness so as to obscure the color of the permanent base, and which when scratched off reveals the color of the near side of the permanent base.

The court found the claims invalid as obvious and anticipated using several prior art references. In doing so, however, the court didn't (at least not in its decision) actually read the prior art on the claims--instead, it merely rejects all of the Griffin's arguments and then finds summary judgment essentially uncontested.

The Griffin's tried to use the claim's preamble (about not needing a "marking implement") to differentiate over the prior art. However, the court found the language not limiting because it was not relied upon for patentability and thus could not now be relied upon to distinguish over the prior art.

Having lost that argument, the Griffin's then lost their expert, whose opinions all required the preamble language to be limiting. Accordingly, the court found the expert's opinion immaterial.

The court then concludes:

7. Since the Marrins' and Etch-It, Inc.'s evidence on the issues of anticipation and inherency is, in essence, unopposed by either the Griffins' arguments or the Griffins' expert opinion, there is no genuine issue as to any material fact, and the Marrins and Etch-It, Inc. are thus entitled to judgment as a matter of law based upon their evidence on these issues.

I would have thought that the court should have at least gone through the prior art and identified where in each the claim limitations could be found.

More reading:

Opinion

Robert Cohn was once middleweight boxing champion of Princeton. Do not think that I am very much impressed by that as a boxing title, but it meant a lot to Cohn.

The Sun Also Rises, Ernest Hemingway

Christmas Won't Be Christmas Without Any Presents

2008-12-24T10:40:06-05:00

2009-1027 Kara Technology v. Stamps.com
CD/CA 05-cv-1890
Judge Consuelo Marshall

Plaintiff Kara appeals from the orders of Judge Consuelo Marshall denying its post-trial motions and from the jury verdict of non-infringement in favor of Stamps.com. The asserted patents were 6,505,179 and 6,735,575.

Stamps.com is an online postage stamp business, essentially an alternative to a stamp metering machine. The accused product is Netstamps pre version 5.

Opening line from Little Women, Louisa May Alcott. Nothing to do with the case, but I am writing this on Christmas Eve . . . . and I still have some shopping to do.

The JMOL boiled down to whether there was sufficient evidence that Netstamps did not have a "security indicia" with the "preestablished data." Claim 1 of the '575 provides:

1. A method for establishing the validity of a display created by a general purpose creation device, said method comprising the steps of:

placing in said device media upon which information may be created, said media having preestablished thereon data which is unique to said media; and

communicating at least a portion of said preestablished data to a location independent from said device, said independent location operable to create on said media a security indicia, said security indicia created in part by information contained in said preestablished media data and whereby said security indicia is validatable at a subsequent time partially under control of data contained in said preestablished media data;

wherein said media is paper, and wherein said device is a general purpose printer;

wherein said paper is divided into sections, each section adapted for printing thereon information pertaining to a different function, each such function having associated therewith a security indicia.

The court, without much explanation, found that the case could reasonably have gone either way---and thus the jury's verdict of non-infringement was supported by the evidence.

The court did rule in Kara's favor on Stamps.com's counterclaim of unenforceability due to inequitable conduct. Because of the split ruling, the court also found that neither side was the "prevailing party."

More reading:

JMOL Order Infringement

JMOL Order Inequitable Conduct

"Now What I Want Is, Facts." On The Radar: October 2008

2008-12-22T11:08:34-05:00

Hard Times by Charles Dickens.

Which brings us to the cold, hard facts of October 2008 new filings of patent cases (aka NOS 830 in PACER-speak).

An interesting item is Sanofi-Aventis v. Genentech, filed in the Eastern District of Texas. I have not seen too many pharma cases down in Marshall et al.--probably because a reputation for a fast docket and big damages is not meaningful to pharma patentees already enjoying an automatic 30 month stay (and not having much in the way of money damages). This case is a little different as it is not the typical ANDA action with pioneer versus generic, but rather a patentee against a former licensee who apparently did not or will not stop selling.

I wonder if more pharma cases would go down to ED Texas if it slowed down . . . or offered a slow, pharma track? Venue could be a problem in ANDA cases though.

October 2008

Total patent cases filed: 237 (200 in September, 218 in August)

Total districts receiving new patent filings: 53 (Top 8 districts have ~ 50% of cases)

OK, I know it only adds up to 236....I seemed to have lost a district or a case somewhere.

All This Happened, More Or Less.

2008-12-04T21:46:03-05:00

2009-1024 Responsible Me v. Evenflo
SD/FL 06-61736
Judge Daniel Hurley

Plaintiff Responsible Me appeals from the summary judgment decision of Judge Daniel Hurley finding that Evenflo did not infringe 7,134,714, generally directed to a detachable sub-tray for use with trays from car seats, highchairs, strollers and similar seats.

Despite the post's title, not much happened in this case, especially when compared to many other patent cases such as the Taurus. Still, I had to use it because it is a great line, opening Kurt Vonnegut's Slaughterhouse-Five.

I also like the opening line from Feed by M.T. Anderson, courtesy of my nephew's collection. Its a "dystopian novel of the postcyberpunk genre" where cerebral Internet implants pipe pop-up ads directly to your brain:

We went to the moon to have fun, but the moon turned out to completely suck.

Anderson's line might apply to plaintiff's trip to the West Palm court house.

The case boils down to classic prosecution history (amendment and argument-based) estoppel argument, with the accused infringers winning the day. In order to overcome prior art rejections during prosecution, plaintiff added claim language and argued that the newly drafted claims were distinguishable over the prior art:

In adding these limitations, the patent attorney for Responsible Me argued to the patent examiner that the claims of the '714 Patent were patentable over the teachings of Semon et al. on the basis that Semon et al. did not teach a drawer subtray that was "only" or "solely" capable of supporting food/beverage items when the drawer subtray was in the extended position. Put another way, the attorney demonstrated that while the prior art drawer-sub-trays could be used to store food and beverage items when in the storage position, the claimed drawer sub-trays could not be used in this manner.

Does removing this feature really make a patentable distinction over the prior art? Anyway, Evenflo apparently designed around the claims by . . . making a sub tray that would store items when in the closed position. Brilliant!

The Court quickly found that the accused product didn't literally infringe the claims:

To hold otherwise would do violence to the "all elements" doctrine and effectively require a rewriting of the claims to eliminate the "solely" and "only" limitations from claims 1, 3 and 4. Because the accused products include a feature that is expressly excluded from the scope or the claim in the '714 patent, defendants are entitled to summary judgment on the issue of literal infringement as a matter of law.

Having found non-infringement, the Court declined to consider Evenflo's invalidity arguments.

More reading:

Order

This Is A Blog Post About A Patent Case

2008-12-02T04:16:00-05:00

2009-1023 Amgen v. ARIAD
D/DE 06-259
Judge Mary Pat Thynge

ARIAD appeals from the Orders of Judge Mary Pay Thynge granting Amgen summary judgment of non-infringement on ARIAD's US Patent No. 6,410,516. This is the same patent, directed to inhibiting or reducing NF-κB activity in cells, that ARIAD successfully used against Lilly, reported here.

The Court's opinions begin, "This is a patent case." While not as compact as "Call me Ishmael," it is still a classic opening line, although it probably should be limited to use in patent cases.

Here are a few other great opening lines of literature with the potential for judicial use:

In our family, there was no clear line between religion and fly fishing. Norman Maclean, A River Runs Through It. Maybe a separation of church and state case.

The village of Holcomb stands on the high wheat plains of western Kansas, a lonesome area that other Kansans call "out there." Truman Capote, In Cold Blood. I guess pretty much any case from that tiny plot of Finney County.

It was a pleasure to burn. Ray Bradbury, Fahrenheit 451. Arson.

A screaming comes across the sky. Thomas Pynchon, Gravity's Rainbow. Struck by falling satellite or a catapult accident . . . hey, it happens.

Marley was dead, to begin with.
Charles Dickens, A Christmas Carol. A murder. Of Marley preferably, just to have the sentence make sense.

Stately, plump Buck Mulligan came from the stairhead, bearing a bowl of lather on which a mirror and a razor lay crossed. James Joyce, Ulysses. Um, a shaving mishap . . . on 16 June?

Of course, the best (or worst) may be from Paul Clifford by Edward George Bulwer-Lytton:

It was a dark and stormy night; the rain fell in torrents, except at occasional intervals, when it was checked by a violent gust of wind which swept up the streets (for it is in London that our scene lies), rattling along the house-tops, and fiercely agitating the scanty flame of the lamps that struggled against the darkness.

Unlike the others, this has already been immortalized (parodied?) at least once in West's:

It was a dark and stormy night. A patchy, low-lying fog covered the murky waters of the river and obscured the banks. Ships, passing in the night, were but phantoms, vague outlines disappearing into the mist. Ships' whistles, echoing across the dark expanse, seemed like mournful cries from another world. Then suddenly, looming out of the darkness, another ship appeared. The distance was too small; time too short; before anyone could do more than cry out, the unthinkable occurred. The ships collided. The tug, helpless, drifted downriver. Floundering like some giant behemoth wounded in battle, the tanker came to ground and impaled itself on some voracious underwater obstruction. And still the whistles, echoing, seemed like cries from another world.

Judge John Brown in Allied Chemical Corp. v. Hess Tankship Co. of Delaware, 661 F.2d 1044 (5th Cir. 1981).

Where was I? Oh yes, ARIAD.

Claim 6 of the '516 is representative:

A method for diminishing induced NF-κB-mediated intracellular signaling comprising reducing NF-κB activity in cells such that NF-κB-mediated intracellular signaling is diminished (emphasis by Court).

The court construed the claim to mean "taking action inside cells to directly inhibit (interfere or block) an NF-κB activity." [Emphasis added]. It was undisputed that the accused product, Enbrel, acts only extracellularly by binding with TNF-α (tumor necrosis factor-alpha) to prevent it from interacting with receptors on the surface of the target cell.

Having found non-infringement, the Court declined to consider Amgen's invalidity and unenforceability defenses and claims, dismissing them without prejudice.

More reading:

SJ Order

54(b) Order on Amgen's defenses

I am going to use some favorite opening lines from literature in the next few posts, regardless of whether they relate to the topics. Just letting you know.

Amgen Scores TKO On EPO

2008-12-01T08:45:33-05:00

2009-1020 Amgen v. Hoffman-La Roche
D/MA 05-12237
Judge Willam Young

Roche appeals from the judgment of Judge William Young finding that it infringes U.S. Patent Nos. 5,441,868, 5,547,933, 5,618,698, 5,621,080, 5,756,349, and 5,955,422 relating to Amgen’s recombinant erythropoietin (“EPO”). The Court also entered a permanent injunction.

The Court's Order checks in at 150 pages so, rather than summarizing it myself, I thought I would let the Court do its own summary.

Amgen Inc. (“Amgen”) sought declaratory relief to prevent F. Hoffmann-LaRoche Limited, Roche Diagnostics GmbH, and Hoffmann-La Roche Inc. (collectively, “Roche”) from marketing a drug that infringes U.S. Patent Nos. 5,441,868, 5,547,933, 5,618,698, 5,621,080, 5,756,349, and 5,955,422. These patents relate to Amgen’s recombinant erythropoietin (“EPO”), a naturally occurring protein that stimulates the production of red blood cells. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 3 F. Supp. 2d 104, 106 (D. Mass. 1998). The jury found for Amgen across the board, upholding the validity of the claims-in-suit for the ‘422, ‘933, ‘868, ‘698, and ‘349 patents and finding that Roche literally infringed all of the claims-in-suit except for claim 12 of the ‘933 patent, which it found infringed by the doctrine of equivalents. Jury Verdict [Doc. No. 1542] at 2-3. The Court writes to explain its rulings on various pre-trial motions for summary judgment, specifically its findings and rulings that the Amgen patents survive Roche’s obviousness-double patenting contentions, to resolve various post-trial motions, and to explain the decision to grant Amgen’s request for a permanent injunction.

Due to the sheer number, the Court will not be able to address every motion.¹ Therefore, all motions not already granted and not resolved herein are denied. After explaining the grant of summary judgment on the issue of obviousness-type double patenting, the Court will address post-trial motions in three groups: validity, infringement, and injunctive relief. Regarding validity, the Court will write to explain three decisions. Primarily, the Court concluded that the source “purified from mammalian cells grown in culture” limits claim 1 of the ‘422 patent. As shall be discussed, the undisputed record revealed that none of the prior art, including the Goldwasser study, satisfied this limitation. Second, sufficient evidence supported the jury’s finding that the term “human erythropoietin,” found in claim 1 of the ‘422 patent and claims 3, 7, and 9 of the ‘933 patent, is not indefinite, even though the specifications do not specify whether the glycoprotein described therein would be 165 or 166 amino acids in length.

¹ With well over 1,000 pages of post-trial briefing, responding to every issue would be an inappropriate use of judicial resources. The Court will focus on those issues that the parties raised at the February 28 hearing. All of the parties’ remaining contentions have been considered and found wanting. Because the jury’s verdict will stand, Roche’s antitrust claims are moot.

Next, the Court will write to explain its grant of summary judgment to Amgen with respect to infringement of claim 1 of the ‘422 patent, see Electronic Order August 28, 2007, and the decision to uphold the jury’s finding that Roche literally infringed claim 3 of the ‘933 patent. See Jury Verdict at 2. As shall be discussed below, Amgen patented recombinant EPO by reference to a specific amino acid sequence. See Amgen, Inc. v. F. Hoffmann-La Roche Ltd., 494 F. Supp. 2d 54, 63 (D. Mass. 2007) [hereinafter “Amgen Markman”]. Pegylation – the chemical reaction that attaches PEG to EPO via a single bond to form CERA, the active ingredient in MIRCERA – does not alter EPO’s amino acid sequence. See Trial Ex. 53, Roche’s Biologic License Application at 00004027 [hereinafter “Roche BLA”]. The attachment of PEG to EPO does not place MIRCERA beyond the boundary of the claims because “the specification expressly contemplates that additional molecules may be attached to ‘human erythropoietin.’” Amgen Markman, 494 F. Supp. 2d at 63 (emphasis omitted). Thus, any minor modification of EPO that does not alter the specific amino acid sequence – such as the displacement of a single hydrogen atom – is immaterial and does not preclude a finding of infringement.

Finally, Amgen has satisfied all four factors necessary for a permanent injunction set forth in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). Failure to issue a permanent injunction would cause irreparable, immeasurable harm, for which there is no adequate remedy at law. Given that Roche infringes Amgen’s valid patents, and in light of the harms that will be discussed, the balance of hardships clearly favors Amgen. Moreover, the Court has concluded that “the public interest would not be disserved by a permanent injunction.” Id. at 391. The record compiled over the course of a four-day evidentiary proceeding reveals no benefit to patient health or the public coffers so great as to outweigh the public’s interest in a robust patent system.

More reading:

Order (still nearly 300k)

Image from Wikipedia

Some Good (Patent) News For Dow Jones

2008-11-20T16:03:56-05:00

2009-1019 Netcurrents v. Dow Jones
CD/CA 07-4027
Judge John Walter

Plaintiff Netcurrents appeals from the order of Judge John Walters granting Dow Jones summary judgment of non-infringement on the asserted claims of 6,260,041 and 6,332,141. These patents are directed to a fast internet real-time search technology allowing users to index sites based on users selected parameters, and Dow Jones' Factiva.com range of products were accused....now if they can only do something about the Industrial Average.

The key issue was construction of the claim term "real-time," such as is used in claim 1 of the '041:

A fast Internet real-time search technology (FIRST) system for use in monitoring information on Web pages, message boards, chat rooms, discussion groups, e-mail messages, and other communications over the internet . . .

Dow Jones argued that “real-time” should be construed to mean “at the actual time that the changes occur” because that is the “ordinary and customary meaning” of “real-time” to a person of ordinary skill in the art in question at the time of the invention, relying on Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (words of a claim “are generally given their ordinary and customary meaning” when construing patent claims). Netcurrents argued that “real-time” means “periodic” or something other than "infrequently," and its definition is clear from the context in which “real-time” is used in the patents, relying on Vitronics Corp. v. Conceptronics, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“the context of the surrounding words of the claim must also be considered in determining the ordinary and customary meaning of those terms.”).

The court agreed with Dow Jones, finding that the common meaning of "real-time" coupled with its use in the specification (and confirmed by one of the inventors) meant at the time the change occurs.

The court also rejected Netcurrents plea as to what it meant to claim (rather than what it did claim), also finding that Netcurrent's proposed construction would render the claims indefinite:

While Plaintiff argues that interpreting “real-time” to mean “at the actual time that the changes occur” would render the patent claims inoperable, the Federal Circuit “repeatedly and consistently has recognized that courts may not redraft claims, whether to make them operable or to sustain their validity.” Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004) (affirming trial court who interpreted language in patent as requiring cookie dough itself to be heated “to” a certain temperature, and not merely air in oven where dough was placed even though this made the patent inoperable). In fact, “[e]ven a nonsensical result does not require the court to redraft the claims.” Id. Moreover, to interpret “real-time” as Plaintiff has suggested would result in the patent claims being indefinite – “periodic” could mean every minute, every hour, every day, every week, etc. – and patent claims must be “sufficiently precise to permit a potential competitor to determine whether or not he is infringing.” Amgen, Inc. v. Hoeschst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003); see, also, Geneva Pharms., Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 1384 (Fed. Cir. 2003) (“A claim is indefinite if its legal scope is not clear enough that a person of ordinary skill in the art could determine whether a particular [product or process] infringes or not.”). Plaintiff’s interpretation simply would not allow Defendants, or any competitor, to determine whether they were infringing Plaintiff’s patents or not.

The court found another, independent basis for non-infringement, construing the claims to search and index based on user-selected terms and internet locations. In the Fastiva product, users do not get to select these criteria, rather the operators do.

More reading:

Order

Muscle Mag Ads Invalidate Supplement Claims

2008-11-19T17:52:33-05:00

2009-1018 Iovate v. Bio-Engineered Supplements
ED/TX 07-cv-46
Judge Ron Clark

Plaintiff Iovate appeals from the order of Judge Ron Clark finding certain claims of 6,100,287 invalid as anticipated under § 102 based on TwinLabs and Weider advertisements and products. Summary judgment as to other claims was denied, but Iovate stipulated to dismissal of those claims in order the appeal the order. The patents are direct to a method for enhancing muscle performance and recover via a ketoacid and an amino acid, where the amino acid is cationic or dibasic.

The application of § 102 and the prior art ads to the claims is relatively straight forward, but the court's discussion of enablement in the § 102 context versus under § 112 is interesting.

The court rejected Iovate's argument that the advertisements were not enabled and did not teach the claimed method. The court disagreed, finding that the ads met the easier enablement requirement of § 102.

Even assuming that the advertisement does need to be enabled, the standard for enablement for purposes of Section 102 is different from the standard under Section 112. Novo Nordisk Pharmaceuticals, Inc. v. Bio-Technology General Corp., 424 F.3d 1347, 1355 (Fed. Cir. 2005). The Section 102 standard is somewhat easier to meet, because it “only requires that those suggestions [in the disclosure] be enabled to one of skill in the art,” not that the suggestions must enable one skilled in the art to actually perform the invention. Id.

The Federal Circuit’s use of the term “enablement” to mean two different things under Sections 102 and 112 may cause some confusion. The court believes a careful reading of the cases discussing these provisions reveals the distinction. Under Section 112, a patent specification must “enable any person skilled in the art. . . to make and use” the invention described. Section 102, which does not use the word “enable,” only requires that the person of skill in the art recognize that what is described in the prior art reference could be practiced. Thus, a person of ordinary skill in the art does not have to actually make the supplement as claimed in a prior art reference so long as a method of preparing it would have been known by, or been obvious to, that person based on the disclosure and his or her knowledge. See In re Donohue, 766 F.2d 531, 534 (Fed. Cir. 1985)(citing Application of Samour, 571 F.2d 559, 563 n.6 (C.C.P.A. 1978)).

The Mass Fuel advertisement provides the following guidance:

When mixed with water, New Improved Mass Fuel provides 50 grams of high biologicalquality milk and egg protein and 100 grams of complex carbohydrates. . . [the product] is also enriched with branched chain amino acids, L-glutamine, alpha-ketoglutarates, ketoisocaproate (KIC), L-ornithine alpha-ketoglutarate, L-carnitine, and creatine monohydrate. Plus, high potencies of vitamins and minerals, including potassium and chromium. BSN Mot. Sum. J., Ex. Q, at p. 107 (grammatical errors in original).

While no precise amounts of some of the components are given, a person of ordinary skill in the art would, combining his or her knowledge with the advertisement’s suggestions, consider the advertisement to be enabled. Therefore, the court will grant BSN’s motion for summary judgment with respect to claims 1, 2, 5, 8, 9, and 18.

More reading:

Order

Qualcomm Sanctioned For Contempt Of Injunction

2008-11-18T14:46:54-05:00

2009-1015 Broadcom v. Qualcomm
CD/CA 05-467
Judge James Selna

Qualcomm appeals from the Order of Judge James Selna finding it in contempt of Court for failing to make certain Sunset Royalty Payments to Broadcom under the terms of the Permanent Injunction. The royalties related to the Q-Chat technology and Broadcom's 6,389,010 patent.

In September, the Federal Circuit upheld the findings of infringement on the '010 and another Broadcom patent, but reversed the infringement verdict on the 5,657,317 patent and found it invalid. The oral argument was covered by us here.

The court required Broadcom to prove contempt by clear and convincing evidence. The court noted that a party should not be held in contempt if it took reasonable steps to comply or achieved substantial compliance.

However, the court found that Qualcomm was in contempt of the '010 Sunset Royalty--having paid nothing on the Q-Chat version 3.0 despite having received more than $93 million in payments from Sprint since the verdict. The court readily rejected Qualcomm's arguments:

Qualcomm’s principal defense is that Broadcom received full compensation under the verdict, and thus is not entitled to further compensation in view of the implied license conferred. King Instrument Corp., 814 F.2d at 1564. The Court disagrees. Broadcom could not have presented evidence of future revenues which did not then exist prior to commercialization. Some of the post-commercialization services were not contracted for until after the entry of the Injunction on December 31, 2007. (Ex. 75.) Tellingly, even as of the date of recent discovery which the Court allowed on this Motion, Qualcomm officials could still not predict the future revenue flow under the Sprint agreement. (Ex. 52, p. 52 [Vrechek].) The present situation is simply not akin to supplying spare parts for repair. King Instrument Corp., 814 F.2d at 1564.

and

Qualcomm argues that there has been no sale since the verdict, so that the royalty provision does not come into play. Given the Court’s revisions to the ‘010 royalty provision to include “revenues received from pre- and postcommercialization development fees and licenses,” this linguistic gamut fails. Moreover, the language in footnote 7 to the sunset provision would, under Qualcomm’s logic, render the sunset provision a complete nullity from the outset.

The court did find that Qualcomm was not in contempt with respect to Q-Chat versions 3.1 and 3.2, finding that Qualcomm was entitled to attempt design arounds and that Qualcomm did not have the burden to prove non-infringement of those versions.

For sanctions, however, the court awarded Broadcom its reasonable attorney's fees and expenses plus gross profits on the revenues from the infringing Q-Chat.

The Court has finds that the contempt for failure to pay the ‘010 sunset royalty is egregious. As Broadcom contended at oral argument, payment, even with interest, merely requires Qualcomm to do what is should have done in the first place. (Tr. 24.) The Court agrees that there was more than a “failure to pay”: so long a Qualcomm did not pay the royalty it was using technoloy it had no right to use. In formulating a remedy, the Court finds the district court’s approach in Brine, Inc. v. STX, L.L.C., 367 F.Supp. 2d 61, 71 (D. Mass. 2005), instructive. There the court was searching for the appropriate punishment for a second infringement violation of its injunction, and concluded that gross profit was an appropriate measure. The court considered awarding net profits from the infringing activities, but concluded that gross profits were a better measure for two reasons:

1. As is recognized in other areas of the law, there are evidentiary difficulties inherent in calculating net profit (i.e. profit after all expenses, depreciation and tax). Given such uncertainty, there is increased risk that the plaintiff will not be made whole. In a contempt proceeding, the need to ensure that the plaintiff is fully compensated and that the defendant is deterred, is acute.

2. While an award of gross profit may overcompensate [the plaintiff] Brine, it will do so in an amount which bears a direct relationship to the degree of infringement: the more X2+s that were sold, the greater the award. As such, a sanction in the amount of gross profit from the sales of the X2+ provides a natural means of imposing a penalty that is proportionate to the severity of the contempt.

More reading:

Contempt order

Medtronic, Abbott, Both Have Something To Appeal

2008-11-17T12:07:40-05:00

2009-1014, -1038 Advanced Cardiovascular v. Medtronic
D/DE 98-80-SLR
Judge Sue Robinson

Both sides appeal from the verdicts, orders and judgment from Judge Sue Robinson's court finding that Medtronic infringes the so-called Lau patents (including 6,432,133), there was no inequitable conduct in procuring the Lau patents, but also declining to enter a permanent injunction. The case involved various expandable, bare-metal stents.

This case has had a little bit of everything, including two previous trips to the CAFC, party realignment, and an arbitration. But hey, its only been pending 10.5 years.

Medtronic, the original plaintiff, sued defendants claiming infringement of various stent patents and asserting some state law claims. Defendants counterclaimed, asserting the Lau patents against Medtronic. The court granted summary judgment of non-infringement to defendants, a finding affirmed on appeal (2005-1280). The parties were then re-alligned for trial of the Lau patents.

A jury trial in 2005 found that Medtronic infringed the Lau patents, which were also found valid. A 2005 bench trial addressed Medtronic's inequitable conduct claim, that certain prior art references were not disclosed. In 2007 the court denied Medtronic's post-trial motions and found no inequitable conduct. An arbitration was then conducted regarding whether Medtronic had a license with respect to one of its products, with the arbitrator concluding that it did not.

Medtronic tried to appeal before (2007-1365), but it was dismissed as premature pending determination of Abbott's request for a permanent injunction---which the court just denied.

Injunction

In denying the injunction, the court found that monetary damages would suffice and that Abbott had not shown irreparable harm. On the former, the court noted that Abbott had been willing to license others in the same market, thus showing a willingness "to forego its exclusive rights for some manner of compensation."

The court also noted that, despite ACS (Advanced Cardiovascular System, now part of Abbott) losing significant market share after Medtronic entered the fray, other competitors clouded the issue and it "could not identify any specific customers it had lost, or stands to lose, directly as a result of Medtronic's continued sales of infringing stents."

The court further relied on the public's strong interest in maintaining a diversity of stents and on some doctor's preference for Medtronic's stents versus ACS's.

More reading:

Inequitable conduct order

Permanent Injunction order

Counsel:

Abbott: Richard Layton & Finger (Wilmington, DE); Finnegan Henderson Farabow Garrett & Dunner (DC).

Medtronic: Morris, Nichols, Arsht & Tunnell (Wilmington, DE); McDermott Will & Emory (DC; Irvin, CA)

Criticism Of Prior Art In Patent Limits Claims Literally And By Equivalence

2008-11-14T07:00:50-05:00

2009-1006 Edwards Lifescience v. Medtronic
ND/CA 03-3817
Judge Jeffrey White

Plaintiff Edwards Lifescience appeals from the grants of summary judgment of non-infringement by Judge Jeffrey White in favor of defendants Cook Inc. and W.L. Gore. The accused products are various types of endovascular stent grafts used to treat abdominal or thoracic aortic aneurysms. Cook sponsors a web site with a description of its products and a short animation of the procedure.

The key term on summary judgment was claim requirement of "malleable wires." The court construed this to mean that the wires had to be physically expended into contact with the aorta rather than expanding by virtue of their own resilience.

During claim construction the Court found that the patent itself differentiated and disclaimed resilient wires as undesirable and distinct from the claimed malleable wires:

[T]he Court concludes that the inventors disclaimed self-expanding wires in the specification. The inventors describe prior art intraluminal grafts as being comprised of “a sleeve in which is disposed a plurality of self expanding wire stents.” (‘458 Patent, col. 1, ll. 20-22.) They then state that “[t]here are a number of problems associated with such known grafts,” including the “lack of precise control of the expansion of the graft in the lumen.” The inventors then state that their invention is “directed to an alternative form of intraluminal grafts which provides an alternative to the known grafts.” (Id., col. 1, ll. 32-42.) Thereafter, the inventors describe the wires that form part of the invention as malleable or state that the device is expanded by use of balloons. (See, e.g., id., col. 1, ll. 49, 60-63, col. 2, ll. 8- 15, col. 3, ll. 8-10, col. 5, ll. 32-36, 58-60, 66-67, col. 6, ll. 5-7.) Thus, when the Court reads the claims in light of the specification, it concludes that a person of ordinary skill in the art would clearly understand that this invention requires malleable, rather than resilient, wires.

On summary judgment the Court found that the accused products all used resilient wires. The Court wrote with respect to Cook:

The manner in which Cook’s accused devices are deployed into a patient also is undisputed, with one exception. The accused devices are compressed and constrained within a sheath, which is part of a delivery catheter. This delivery catheter is inserted into a patient’s vessel, pushed to a diseased portion of the vessel, and, after the accused device is positioned satisfactorily, the sheath is withdrawn. As the pressure of the sheath is removed from the accused device, the wires regain their original shape and expand to fit within the vessel. . . . In sum, the wires in Cook’s accused devices initially expand within a vessel because of a release of pressure upon them, rather than by an exertion of pressure upon them.

The exception was the use of a balloon during the procedure, but the Court found that the balloon in the accused device was used to "seat" the device and not to expand the wires as claimed by the Edwards's patents.

The Court concluded that Edwards could not show literal infringement, and infringement by equivalence was foreclosed by the disclaimer of "resilient" wires, further finding that expanding the claims to reach such wires would vitiate the "malleable" limitation.

More reading:

Cook SJ; Gore SJ

Counsel:

Edwards: Sidley Austin (Chicago)
Cook: Brinks Hofer Gilson Lione (Chicago); Howard Rice Nemerovski Canady Falk & Rabkin (San Francisco); Sonnenschein Nath Rosenthal (San Francisco)
Gore: Dickstein Shapiro (New York); Morgan & Finnegan (New York); Sonnenschein

[Sealed] Beats [Sealed] Because of [Sealed]

2008-11-13T02:08:34-05:00

2009-1013 Laserfacturing v. Daimler Chrysler
SD/TX 7-cv-00207
Judge Melinda Harmon

Laserfacturing appeals from a sealed judgment and sealed order issued by Judge Melinda Harmon ruling on a bunch of sealed motions filed by Daimler Chrysler. The asserted patent is 5,595,670, directed to a method of high speed welding.

On its face this is perhaps the most egregious abuse of sealing documents in all the patent cases I have reviewed--even the Final Judgment is sealed. Perhaps things are either (1) so bad that everyone is embarrassed to have it public, or (2) contains the secret of Chrysler's stellar financial and automotive success. Seriously, it had better contain the formula for Coke®, workable cold fusion, AND next week's PowerBall numbers.

It appears to be another rubber-stamp where the parties get to self-select what is filed under seal without any judicial oversight or consideration of the the public's rights or the Constitution's requirements. Let's see how secret the Federal Circuit keeps it.

Anyway, not much to report, but here is a pdf of the docket.

Counsel:

Laserfacturing: Goldstein Faucett & Preberg (Houston)

Daimler Chrysler: Dickstein Shapiro (DC); Akin Gump (DC; Houston)

On the Radar: September 2008

2008-11-11T16:25:18-05:00

I am fresh off my panel appearance at the Center for American and International Law's 46th Annual Conference on Intellectual Property Law in Plano, Texas. The panel "All the News That's Fit to Blawg" was moderated by Bruce Sostek of Thompson & Knight (Dallas) and included:

Stephen R. Albainy-Jenei • Patent Baristas, Frost Brown Todd (Cincinnati)
Kyle B. Fleming • PATracer, Renner Otto Boisselle & Sklar (Cleveland)
Joe Mullin • The Prior Art, IP Law & Business Magazine (San Francisco)
Michael Smith • EDTexweblog, Siebman, Reynolds, Burg, Phillips & Smith (Marshall)
Peter Zura • The 271 Patent Blog, Katten Muchin Rosenman (Chicago).

Although I could not stay for the entire conference, the first day was outstanding (not even including my panel!), with Michael Smith providing on-site coverage. I had a great time, really enjoyed talking to the other bloggers, and hope to get invited back (hint to Bruce).

Anyway, with Josh über busy I thought I would sub-in and get the September edition of On the Radar published. New writer, same old story: overall filings were down again and the usual suspects remain atop the leader board.

September 2008

Total patent cases filed: 200 (241 in July, 218 in August)

Total districts receiving new patent filings: 46 (Top 8 districts have ~ 50% of cases)

You can download my spreadsheet with the cases here.

Sanctions, Jail, Possible For Refusing Debtor's Discovery

2008-11-11T03:10:00-05:00

2009-1005 US Philips v. Int'l Norcent
CD/CA 06-1366
Judge Manuel Real

Defendant Jennifer Long appeals from the order of Judge Manuel Real sanctioning her for refusing to comply with subpoena, court orders, and making false statements under oath. This case is related to 2008-1385 (covered by us here) in which she appealed the jury's verdict finding her joint and severally liable for over $12 million (plus trebling, attorney fees, and interest). The current sanctions relate to a debtor's exam and discovery efforts by US Philips towards collecting on the judgment.

After having been found personally liable, Long decided to stonewall discovery into her finances, refusing to produce documents responsive to a subpoena and, according to the court, trying to hide assets. Long's family apparently owns numerous companies, including several in China, and made various transfers and sales of assets to thwart collection---despite a court asset freeze order. The court found these efforts included:

Ms. Long, her brother, Kevin Long, and her mother, Shu Zhi Ju, co-own or co-control many companies including without limitation Shanghai Hongsheng Technology Co., Ltd. (“Hongsheng”), Hongpu Industry, Shanghai Lijie Investment Co. Ltd. (“Shanghai Lijie”), NHI, INT and IRC. (D.I. 610, p. 6, ¶ 40)

Ms. Long directed a $13.7 million transfer to her family-owned Chinese company to avoid the Judgment. (D.I. 610, p. 5, ¶¶ 32-35)

Ms. Long and her family manipulated assets through companies they own or control, including a $255 million transfer. (D.I. 610, p.6, ¶¶ 41-42)

Ms. Long demonstrated she will conceal her assets and has the ability to move her assets through her businesses out of Philips’ reach. (D.I. 610, p. 7, ¶ 48)

Ms. Long has a track record of failure to fully disclose her assets, failure to pay the Judgment, and liquidate and conceal assets despite bankruptcy asset freeze. (D.I. 610, p. 11, ¶ 71)

Ms. Long’s reported annual salary is insufficient to support her lavish lifestyle. She must have other sources of income, which other sources she failed to disclose and continues to withhold from Philips. (D.I. 610 p. 4, ¶¶ 23-26)

Ms. Long sold a Maserati in direct violation of a bankruptcy asset freeze order, and that is a fraudulent transfer in contempt of the Judgment. (D.I. 610, p. 2 ¶ 6)

The court was not pleased and ordered a bevy of sanctions including:

requiring production of her financial records to the Court;

$1,000/day sanction if the records are not produced;

possible incarceration if each daily sanction is not paid within 1 day of it becoming due; and

turning her passport in to the Court and instructing the State Department to deny her any new, replacement, or duplicate passport.

More reading:

Sanction Order

Counsel:

US Philips: Keats McFarland & Wilson (Beverly Hills); Finnigan Henderson Farabow Garrett & Dunner (DC).
Long: Seyforth Shaw (Los Angeles)

OK To Heat Accused Product To Show Infringement

2008-11-10T14:38:03-05:00

2009-1001 Gemtron v. Saint-Gobain
WD/MI 1:04-cv-0387
Judge Avern Cohn

Saint-Gobain appeals from the orders and judgment of Judge Avern Cohn and jury verdict finding that Saint-Gobain infringed 6,679,573 directed to a refrigerator shelf. Saint-Gobain raises the usual JMOL and post-trial arguments, but the most substantive (based on length of discussion by the court) relates to infringement and whether the accused product was "altered" to show infringement.

Also, this is the first CAFC appeal filed in the 2009 term: "The new phone books are here!"

The asserted claim 23 generally covers a refrigerator shelf constructed from a synthetic frame holding a panel of glass. The claim requires, in part,

at least one lower wall of at least one of said front and rear frame portions including a relatively resilient end edge portion which temporarily deflects and subsequently rebounds to snap-secure one of said glass piece front and rear edges in the glass piece edge-receiving channel of said at least one front and rear frame portion. [PATracer emphasis added.]

The question at trial (and beyond) is at what temperature does the frame have to exhibit the emphasized characteristic? Saint-Gobain had argued, unsuccessfully, at claim construction that this resiliency must exist at normal temperatures (room and below). The distinction was critical to Saint-Gobain because the shelf was manufactured in Mexico and was resilient only when heated during assembly in Mexico---thus, the accused shelf did not infringe in the United States, relying on Biotec Biologische Naturverurpackengen GmbH v. Biocorp, 249 F.3d 1341, 1350 (Fed. Cir. 2001).

Infringement of product claims by an imported product requires that the product be viewed in the form in which it is present within the United States. See 35 U.S.C. §271(a) (“whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States” infringes the patent). However, evidence of foreign activities may be relevant to determination of infringement upon importation.

The court disagreed, finding that the accused shelf could meet this limitation if it exhibited the resiliency characteristic at any temperature, including a higher temperature. Thus, the evidence of how it is manufactured in Mexico and Gemtron's expert's experiments in which the accused product was heated were appropriate and sufficient to show infringement.
More reading:

JMOL Order

Counsel:

Gemtron: Butzel Long (Detroit); Michael Best Friedrich (Chicago); and Steptoe Johnson (Chicago).
Saint-Gobain: Oblan Spivak McClelland Maier & Neustadt (Virginia).

Federal Circuit To Revisit Scope Of Akazawa

2008-11-06T12:01:00-05:00

2008-1606 Sky Tech. v. SAP AG
ED/TX 06-cv-440
Judge David Folsom

Defendant SAP was granted leave by the Federal Circuit (2008-m879) for an interlocutory appeal of Judge David Folsom's order determining that, by operation of Massachusetts state law, a security interest default and foreclosure sale transfers title to a secured patent even in the absence of any assignment in writing pursuant to 35 U.S.C. § 261. If the Federal Circuit reverses, Sky would apparently lack standing to assert 6,141,653, 6,336,105, and 6,338,050.

The Federal Circuit recently issued Akazawa v. Link New Technology Int'l, 520 F.3d 1354 (Fed. Cir. 2008), generally holding that although assignments of patents need to be in writing, not all transfers are assignment. Thus, in Akazawa transfer of legal title to heirs by operation of law need not be "in writing" under 35 U.S.C. § 261.

Here, the court ruled that under Massachusetts state law title in the subject patents transfered automatically "by operation of law." Thus, under Akazawa, that transfer need not be in writing.

More reading:

Order

Counsel:

Sky Technology: Susman Godfrey LLP (Houston); Ward & Smith Law Firm (Longview, TX); and Law Offices of George M. Schwab (Mill Valley, CA).

SAP: Day Casebeer Madrid & Batchelder LLP(Cupertino, CA); and Young Pickett & Lee (Texarkana, TX).

Pressure Products Wins Medical Device Verdict

2008-11-06T03:57:00-05:00

2008-1602 Pressure Products v. Quan Emerteq
ED/TX 06-cv-121
Judge Ron Clark

Defendant Quan Emerteq (aka Enpath) appeals from the jury verdict before Judge Ron Clark finding Pressure Product's 5,125,904 and 5,312,355 valid and infringed (but not willfully). The jury awarded approx. $1.1 million. As usual, Michael Smith at EDTexweblog provided excellent coverage of the final judgment here.

As also seems usual for an ED/Texas case, the court's reasons for denying Enpath's JMOL were given orally (and the transcript is not yet available) rather than in a written opinion, but Enpath complained in its motion about (shock) claim construction and invalidity. Not much more can be gleaned about the specific issues--and its yet another case with a lot of filings under seal, including the briefing on pre-judgment interest and attorney fees. You can get Enpath's JMOL here.

In Brief: Lacks Indus. v. McKenzie Wheel

2008-11-05T15:56:05-05:00

2008-1167 Lacks Indus. v. McKenzie Wheel
ED/MI 96-CV-75692
Judge John Feikens

An on-sale bar case where the court concluded that plaintiff’s product quotes—while not likely to be accepted without significant negotiations, back-and-forth, etc.--could have been accepted to create a binding contract, and thus qualify under Group One and establish an on-sale bar.

Oral argument is scheduled for Thursday, November 6, 2008 at 10:00 A.M., San Francisco Federal Court.

Summary of the Argument from Lacks Industries. Steven L. Underwood, Matthew J. Gipson and Andrea W. Zydron of Price, Heneveld, Cooper, DeWitt & Litton, LLP, (Grand Rapids, MI) and David W. Wicklund of Shumaker, Loop & Kendrick, LLP (Toledo, OH) on brief.

The District Court erred in ruling that the Remaining Claims of the ‘213 Patent are invalid under 35 U.S.C. § 102(b) because of Lacks' own activities before the critical date. The District Court adopted the findings of fact and the conclusions of law of the Special Master, wherein the Special Master found the Remaining Claims invalid based upon alleged on-sale bars. The District Court also endorsed the analysis and conclusions of the Special Master in his “Additional Considerations” section of the Report and Recommendation, wherein the Special Master criticized the Federal Circuit's Group One decision.

Unfortunately, the Special Master's hostility to Group One infected his analysis. As a consequence, he has refused to follow the Federal Circuit's mandate to apply the Group One standard to the record in this case. Although the Federal Circuit has repeatedly affirmed and further clarified Group One and the Supreme Court has had the opportunity to review the Group One standard multiple times (see, e.g., Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2001), cert. denied, 534 U.S. 1127 (2002); Linear Tech. Corp. v. Micrel, Inc., 275 F.3d 1040 (Fed. Cir. 2001), cert. denied, 538 U.S. 1052 (2003)), the Special Master seemingly believes that the Federal Circuit should follow his reasoning and abandon Group One.

The Special Master has relied upon five documents, which were not litigated until after the previous appeal, as alleged “offers,” in conducting his “totality of the circumstances” analysis in finding the Remaining Claims to be invalid based upon alleged on-sale bars. However, separate and apart from applying the wrong legal standard, and failing to follow the mandate, the five documents cannot render the claims invalid under § 102(b), because they are not “offers” and do not unambiguously require practice of any of the methods of the Remaining Claims.

None of the five documents are “offers,” since numerous essential terms are missing. More importantly, none of the five alleged offers can be made into a legally binding contract by mere acceptance (assuming consideration). In addition, the Special Master's analysis fails to truly recognize the fact that the Remaining Claims are method claims. In Plumtree Software, Inc. v. Datamize, LLC, 473 F.3d 1152, 1163 (Fed. Cir. 2006), the Federal Circuit addressed the on-sale bar in the context of method claims, holding that there are two ways in which a claimed method can be offered for sale before the critical date: (1) if a pre-critical date offer unambiguously required the patent holder to use the claimed method; or (2) if prior to the critical date the patent holder practiced the claimed method, pursuant to a contract. There is no dispute that Lacks did not practice any of the claimed methods of the Remaining Claims, pursuant to a contract, prior to the critical date. Thus, the issue in this case concerns the first Plumtree theory.

The Special Master makes no attempt to show that the cladding discussed in these five alleged “offers” unambiguously required Lacks to use any of the claimed methods of the Remaining Claims in assembling a composite wheel. Indeed, there is no dispute that Lacks could not have performed any method of the Remaining Claims in assembling a composite wheel prior to the critical date, because Lacks did not have a wheel supplier lined up to provide the wheel needed to perform the steps in the claimed methods until well after the critical date. It is important to note that all of the Remaining Claims require that the inboard surface of the overlay be “configured to face said outboard surface [of the wheel],” meaning that Lacks could not practice the different methods set forth in the Remaining Claims until a wheel supplier was lined up to provide a wheel that had an outboard surface that would configure with the inboard surface of a yet to be approved overlay. Claim 25 is set forth below with the representative language highlighted:

25. A method for assembling an overlay to a wheel, said method comprising the steps of:

forming said wheel to have a disk portion and a rim portion circumscribing said disk portion, said disk and rim portions defining an outboard surface of said wheel, said outboard surface having apertures formed therein;

forming said overlay to have an inboard surface configured to face said outboard surface upon assembling said overlay to said wheel, said overlay being configured so as to form a gap between said inboard and outboard surfaces upon assembling said overlay to said wheel;

depositing a curable adhesive on said outboard surface such that said curable adhesive is between said overlay and said wheel upon assembling said overlay with said wheel, said curable adhesive being selectively deposited along a peripheral edge of said outboard surface and around said apertures so as to exclude water and dirt from said gap upon assembling said overlay to said wheel; and

assembling said overlay to said outboard surface of said wheel with said curable adhesive so as to form said gap and permanently secure said overlay to said wheel, at least one void being present between said overlay and said outboard surface of said wheel, said at least one void entrapping air between said overlay and said wheel. (Emphasis added).

In addition, as discussed above, there are numerous different claimed methods set forth in the ‘213 Patent. Also, as discussed above, Lacks had many different methods of assembly available prior to the critical date. As discussed in the ‘809 and ‘906 Patents, Lacks was practicing a full-surface adhesive method for attaching the overlay to the wheel. In addition, Lacks was testing a foaming process, which is the subject of yet additional patents, for attaching the overlay to the wheel. The Special Master utterly failed to establish any correlation of the five alleged “offers” and any of the methods disclosed and claimed in the ‘213 Patent, let alone the methods of the Remaining Claims of the ‘213 Patent. Instead, the Special Master concocts a law-of-the-case argument as a substitute for clear and convincing evidence that there is a nexus between the five alleged “offers,” litigated after the prior appeal, and the methods of the Remaining Claims. However, just because the methods of the ‘213 Patent were allegedly “ready for patenting” prior to the critical date, does not mean that the five alleged “offers” unambiguously required Lacks to use the methods of the Remaining Claims, especially given all the methods available to Lacks and Mr. Chase at that time.

Summary of the Argument from Hayes Wheel. J. Michael Huget and John C. Blattner of Butzel Long, PC (Ann Arbor, MI), and Stephen Glazek, Josh Moss of Barris Sott Denn &, Driker, LLC (Detroit, MI) on brief.

The District Court correctly found that there is no genuine issue of material fact that each of five separate and distinct commercial transactions between Lacks and various third parties constituted a pre-critical date “commercial offer for sale” of the invention of the Remaining Claims of the ‘213 Patent as defined in Group One (the “Five Offers”). Any one of the Five Offers is sufficient invalidate those claims under 35 U.S.C. § 102(b).

Lacks raises two basic challenges to the District Court's determinations.

First, Lacks argues that none of the Five Offers rises to the level of a Group One commercial offer for sale under contract law principles. In so arguing, Lacks rejects the clear mandate of this Court to consider the realities of sales practice in the automotive industry; ignores or misapplies basic principles of contract law and the on-sale jurisprudence of this Court; and misstates the legal standard regarding an offer for sale of a patented method. The approach advocated by Lacks eviscerates the policies underlying the on-sale doctrine as enunciated by the Supreme Court.

Lacks's second challenge is that Defendants have not proven that the Five Offers pertained to the invention of the Remaining Claims. This is wrong both legally and factually. Defendants proved this element of their case by clear and convincing evidence at trial in 2000, and this Court affirmed the District Court's finding in its 2003 opinion, making it part of the mandate in this proceeding. Moreover, Lacks waived further consideration of these issues by failing to raise them in its first appeal. Finally, even if Lacks were not legally foreclosed from raising these issues, the record shows that Lacks has never offered evidence sufficient to rebut Defendants powerful prima facie showing.

The District Court correctly found that there was no genuine issue of material fact that each of the Five Offers triggered the on-sale bar of Section 102(b), rendering the Remaining Claims of the ‘213 patent invalid. Accordingly, the District Court's grant of summary judgment in favor of defendants should be affirmed. At the very least, genuine issues of material fact preclude summary judgment in favor of Lacks, such that at minimum the District Court's denial of Lacks's motion should be affirmed.

Court Trims Daiichi's Award Of Costs

2008-11-05T10:30:57-05:00

2008-1600 Ortho-McNeil v. Mylan Labs
ND/WV 02-cv-32
Judge Irene Keeley

Defendant Mylan appeals from Judge Keeley's order awarding plaintiff Daiichi costs in the matter. The costs issue has been pending for quite a while--the district court ruled in 2004 that the asserted patent was not invalid or unenforceable, and the Federal Circuit affirmed in 2005. The various parties had been attempting to resolve the costs issues, but Mylan and Daiichi could not reach an agreement.

Under 28 U.S.C. § 1920, Daiichi sought approximately $2.2 million in costs, as set forth here:

Fees of Clerk	$ 75.00
Fees for Service of summons and subpoena	$ 1,676.81
Trial Transcripts	$ 31,225.18
Pre-trial hearing transcripts	$ 4,924.20
Deposition transcripts	$ 112,911.70
Fees for Witnesses	$ 60,499.94
Fees for exemplification and copies of papers necessarily obtained for use in the case	$ 141,281.90
Interpretation	$ 87,448.50
Translation	$1,751,040.00

Mylan objected in some manner to the amount of each item, disputing the cost of daily trial transcripts, video deposition transcripts and miniscripts, etc.

The bulk of the costs (and court discussion) in on interpretors and translation. The parties used Japanese interpretors at trial, and Daiichi's share of the official trial interpretors was about $24,000. Daiichi also used "check interpretors" to double-check or confirm the official interpretors. The court rejected costs for these "check interpretors," finding them useful but not necessary for the litigation.

The court also slashed the translation costs down to $1 million, finding Daiichi could not substantiate its claimed estimated costs of $0.45/word, instead basing the award on Mylan's translation costs of $0.26/word.

The court otherwise awarded the costs requested by Daiichi.

More reading:

Order

In Brief: Takeda v. Teva

2008-11-04T03:04:34-05:00

2008-1314 Takeda Pharma v. Teva Pharma
D/DE 06-cv-33
Judge Susan Robinson

An inequitable conduct case regarding the inventors' failure to disclose certain test results during prosecution of 4,628,098. The district court found the patent enforceable. The '098 patent covers lansoprazole, marketed by plaintiffs as Prevacid® for gastric ulcers. The case was previously covered here.

Oral argument is scheduled for Wednesday, November 5, 2008 at 10:00 A.M., San Jose Federal Court.

Summary of the Argument from Teva. John L. North, Jeffrey J. Toney, Jeffrey D. Blake, Darcy L. Jones, David A. Reed of Sutherland LLP (Atlanta) on brief.

Takeda committed inequitable conduct to secure a patent on the “me-too” compound lansoprazole.¹¹ In trying to establish the patentability of lansoprazole over the structurally similar, “benchmark” industry standard compound omeprazole, Takeda disclosed a single piece of favorable IMAU test data that purported to show lansoprazole was greater than 20-times more potent than omeprazole. Takeda made the greater than 20-times superior representation because Takeda questioned whether lansoprazole could be patented given that its “[s]tructure is too similar to Omeprazole.” (A1415-19.) Takeda had every reason to expect that it could avoid an obviousness rejection only by asserting that its “me-too” omeprazole analog was significantly more potent than omeprazole itself. Takeda's strategy succeeded. The examiner accepted this assertion and allowed the claim to lansoprazole to issue.

FN11. Lansoprazole can be referred to as a “me-too” compound because of the strategy used to develop it. A “me-too” strategy involves a medicinal chemist preserving the structure of a previously-known compound and modifying that structure by placing “substitutions” on the structure in a methodical, step-wise fashion. A “me-too” strategy is a “low risk/low reward” approach to drug development, providing the highest expectation of success, but a much lower likelihood that the resulting compounds would be patentably distinct from previously known compounds. (See. e.g., A689 (730:3-18); A811 (1218:2-4; 1218:13-24).)

The evidence of record, however, clearly and convincingly showed that Takeda failed to disclose to the PTO a wide range of other test data in its possession that directly contradicted the claim that lansoprazole was greater than 20-times superior to omeprazole. Only one set of data taken in one particular animal testing model, the IMAU model, supported the greater than 20-times superior assertion. Takeda withheld anti-ulcer data that showed lansoprazole to be only slightly more potent than omeprazole. Takeda also withheld data taken from other pertinent test models that showed lansoprazole and omeprazole to be equally potent. And Takeda withheld still more data that showed that omeprazole was the more potent compound. All of these tests directly or indirectly focused on whether a Proton Pump Inhibitor could inhibit the Proton Pump and reduce production of acid in the parietal cell. A reasonable patent examiner would have considered all of the withheld, contradictory data important when determining whether lansoprazole was patentably distinct over the prior art.

The District Court, however, erred by concluding that the withheld data had only a “low level of materiality.” This error resulted from three separate underlying errors, each of which compels reversal:

First, the District Court erroneously held that the withheld data was not inconsistent with Takeda's disclosures to the PTO because Takeda indicated that lansoprazole was 1.5 to more than 20 times more effective than omeprazole. This was clear error. Takeda asserted that the claimed compounds as a whole were between 1.5 and 20 times superior to the prior art; however, the only data that Takeda disclosed comparing lansoprazole to omeprazole -the ID50 values for the two compounds - indicated that lansoprazole was greater than 20-times superior to lansoprazole.

Second, the District Court erroneously concluded that the full range of testing data - including the withheld, entirely contradictory data - would not have been important to an examiner. This was clear error. Every expert to testify at trial agreed that the full range of data was important to an evaluation of the compound, and a reasonable examiner would have wanted to know that most of the data in Takeda' s hands contradicted the claims of greater than 20-times superiority.

Third, the District Court erred as a matter of law by concluding that the level of materiality of the misrepresentation of superiority, and the materiality of the data that was withheld, depended on what stage of patent prosecution the misrepresentation occurred. The District Court lowered the materiality of the withheld data because the greater-than-20-times-superior data was disclosed in the original application, and not disclosed only in response to an examiner rejection or other office action. This is legal error and compels reversal.

The District Court also correctly found that the assertions and selective disclosure of data was “self-serving,” but the erroneous finding of a “low level of materiality” tainted the remainder of the inequitable conduct analysis. Had the District Court properly found a high level of materiality, the record provided compelling support for an inference that Takeda intended to deceive the PTO - an inference sufficiently strong to compel a finding of inequitable conduct. Takeda internally questioned whether lansoprazole was patentable due to its structural similarity to omeprazole. (A1415-19.) The Takeda scientist who was involved in the selection of data admitted that he chose to include only data from the IMAU model in the patent application because of the results - because lansoprazole “showed strong activities in this model.” (A899 (1569:9-19).) Further, Takeda internally considered the withheld, contradictory data to be sufficiently material that it submitted this withheld data (and only the withheld data) to the FDA in its IND and reported it in peer-reviewed journal articles. And Takeda failed to bring a single live witness to the trial to explain why Takeda chose to withhold data from the PTO.

Summary of the Argument from Takeda and TAP. Eric J. Lobenfeld, Philippe Y. Riesen, Arlene L. Chow, Tedd W. Van Buskirk, Dillon Kim, Hogan & Hartson LLP (New York) and William F. Cavanaugh, Jr., Stuart E. Pollack, Chad J. Peterman, Melissa Mandrgoc, Patterson, Belknap, Webb & Tyler LLP (New York) on brief.

The District Court did not abuse its discretion in finding no clear and convincing evidence of inequitable conduct. Significantly, the District Court found that intent to deceive the PTO was lacking because:

• “Takeda has presented evidence that [it] placed a heavy reliance on the IMAU testing, as compared to other testing methods.” A45, ¶ 75.

• “Takeda itself viewed the IMAU results as the best evidence of the activity of lansoprazole.” A47.

• “Takeda identified the relevant prior art ... to the PTO, and did not manipulate the data it reported to the PTO,” and there were “indicia of Takeda's good faith.” Id.

• Takeda “made no misrepresentations to the PTO.” Id.

• Thus, Takeda and TAP affirmatively demonstrated that Takeda's employees involved in the ‘098 patent's prosecution did not intend to deceive the PTO. A45-47, ¶ 74-77.

These factual findings are firmly supported by the record and are not clearly erroneous. On appeal, Teva does not challenge any of these factual findings or assert that they are clearly erroneous.

The District Court correctly concluded that this case was similar to Takeda Chem. Indus,, Ltd. v. Mylan Labs., Inc., 417 F. Supp. 2d 341, 390 (S.D.N.Y. 2006), affd sub nom. Takeda Chem. Indus., Ltd. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1354 (Fed. Cir. 2007). A47. The Takeda v. Mylan court, and subsequently this Court on appeal, found no intent to deceive the PTO where, as here, “Takeda ... relied upon the data in [its internal] report in making critical business decisions,” thus finding “it was entirely appropriate for Takeda to rely on that same data in preparing Table 1 for the PTO.” 417 F. Supp. 2d at 390. No meaningful differences exist between the facts here and the facts in Takeda v. Mylan, and Teva makes no argument distinguishing Takeda v. Mylan in its brief.

On appeal, Teva contends that the District Court committed clear error on three findings of fact underpinning its low-materiality finding. Appellants' Br. at 28-29. Teva has not shown that these finding are so clearly in error that this Court should have “a definite and firm conviction that a mistake has been committed,” the requisite for reversal. And Teva forgets that inequitable conduct cannot be found solely on materiality where there is no evidence of intent to deceive the PTO. Instead, Teva essentially asks this Court to reweigh de novo the evidence and draw a result opposite from the District Court.

Abuse Of Discretion Returns To Preliminary Injunction Review, At Least For One Case

2008-11-03T09:57:32-05:00

For those that followed our previous posts on the Federal Circuit's unsettled review of preliminary injunction appeals (here, here, here and here), the Court's recent decision in Abbott Labs v. Sandoz, sheds some more light on the conflict within the CAFC. Perhaps more than any other current patent issue, a PI appeal may hinge almost completely on which panel members you draw.

Judge Newman, writing for the majority (Newman, Archer: Gajarsa dissenting), starts with the standard of review:

On appellate review of the grant of a preliminary injunction, the question "is simply whether the issuance of the injunction constituted an abuse of discretion." Doran v. Salem Inn, 422 U.S. 922, 932 (1975). "It is well settled that the granting of a temporary injunction, pending final hearing, is within the sound discretion of the trial court; and that, upon appeal, an order granting such an injunction will not be disturbed unless contrary to some rule of equity, or the result of improvident exercise of judicial discretion." Deckert v. Independence Shares Corp., 311 U.S. 282, 290 (1940). Abuse of discretion is established "by showing that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings." Novo Nordisk of North America, Inc. v. Genentech, Inc., 77 F.3d 1364, 1367 (Fed. Cir. 1996). See Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448, 1460 (Fed. Cir. 1998) (en banc) (“A district court abuses its discretion when its decision is based on clearly erroneous findings of fact, is based on erroneous interpretations of the law, or is clearly unreasonable, arbitrary or fanciful.”). [Opinion, p. 4.]

While reciting this standard might not be newsworthy, actually following it is.

While the case specific portion of the opinion is interesting, the real thrust is in the discussion of the conflicting precedent within the CAFC on preliminary injunctions, in particular the level of "vulnerability" to validity that must be raised (or disproven) as part of the likelihood of success factor. The court concludes this section as follows:

To summarize my concern for the conflict that is here continued, I again point out that the dissenting opinion, despite its initial recitation of the correct four-part criteria for deciding the grant or denial of a preliminary injunction, then applies the different and incorrect criterion of whether the defendant raised a “substantial question” that may render the patent “vulnerable”. That standard conflicts with precedent of the Supreme Court and all of the regional circuits, all of which require that likelihood of success on the merits be determined and weighed along with the equitable factors. It is not the law that raising a “substantial question” will “negate the patentee’s likelihood of success.” Diss. op. at 3. Raising a substantial question may avoid dismissal on the pleadings, but contrary to the view of the dissent, establishing that there is an issue for trial is not the same as establishing the likelihood of prevailing at trial. [Opinion, pp. 50-51.]

This portion of the opinion also contains a rather lengthy review of the preliminary injunction factors employed by the Supreme Court and the CAFC's sister circuits, and it seems to us that the whole issue is building towards en banc review--perhaps this is the case.

More reading:

2007-1300 Decision

This is the CAFC's third decision on a preliminary injunction concerning these patents, see also Abbott Laboratories v. Andrx Pharmaceuticals, Inc., 473 F.3d 1196 (Fed. Cir. 2007) and Abbott Laboratories v. Andrx Pharmaceuticals, Inc., 452 F.3d 1331 (Fed. Cir. 2006).

Claims Not Obvious Over Prior Art Aren't Enabled By That Art

2008-10-31T15:14:31-04:00

2008-1594 Janssen Pharma v. Teva
In re: '318 Patent Infringement Litigation
D/DE 05-356
Judge Sue Robinson

Plaintiff Janssen appeals from the judgment of Judge Sue Robinson, after a bench trial, finding 4,663,318 invalid as not enabled under § 112 ¶ 1. The patent relates to the treatment of Alzheimer's disease with galanthamine and is sold by Janssen as Razadyne®. This is a consolidation of approximately 7 cases by Janssen against various ANDA filers--Teva was the first lawsuit and Purepac appears to have filed the first ANDA. Defendants conceded infringement and tried invalidity.

Claims 1 and 4 of the '318 claim:

1. A method of treating Alzheimer's disease and related dementias which comprises administering to a patient suffering from such a disease a therapeutically effective amount of galanthamine or a pharmaceutically-acceptable acid addition salt thereof.

* * *

4. A method according to claim 1, wherein said administration is oral and is in the range 10-2000 mg per day.

The court provides a fairly detailed history of the prior related to Alzheimer's research, noting that galanthamine is discussed with respect to some dementias [but not Alzheimer's]. For this reason the court rejected defendants' anticipation argument.

The court also rejected defendants' obviousness argument, which it described as:

Defendants assert that there were indeed "a finite number of identified, predictable solutions" to improve cognitive function in AD patients, and Dr. Davis did nothing more than substitute one reversible tertiary amine CI with proven capabilities (galanthamine) for another (physostigmine or THA) to achieve this purpose.

55. Defendants' "obvious to try" argument has two premises: first, that a person of ordinary skill in the art would have followed the intra-synaptic approach, insofar as it was the only approach with "proof of concept" in 1986; and second, that such a person would have been led "directly" to galanthamine, a reversible tertiary amine CI like physostigmine and THA, because the prior art disclosed that galanthamine had a better side effect profile and longer duration of action.

The court found that the evidence showed that galanthamine had an unexpected benefit with Alzheimer's disease, and that those skilled in the art at the time of filing would not have been looking in that direction (again noting that the prior art discussed galanthamine for different conditions).

Enablement. The unexpected and non-obvious success of galanthamine, however, seems to have led to an enablement problem. The evidence showed that while Dr. Bonnie Davis, the inventor, conceived of using galanthamine for Alzeimer's, there were no pre-filing (or pre-issue) tests, clinical studies, or the like:

31. Having conceived of using galanthamine for AD, Dr. Davis sought to procure a sample of galantharnine for preclinical studies. (ld..:. at 715:13-718:15; PTX-121; PTX- 122; PTX-123) Galanthamine was unavailable in the United States in 1985 and 1986. (0.1. 389 at 718:12-15) Dr. Davis was unable to obtain galanthamine prior to filing her patent application. (ld..:. at 718: 16-25) Likewise, no clinical studies were performed prior to filing.

* * *

79. As discussed previously, Dr. Davis did not have galanthamine when her
patent application was filed; Dr. Coyle's experiments were not completed until after the '318 patent was allowed. Nevertheless, and despite Dr. Davis' offer to provide experimental data once it was obtained (PTX-14 at 2), the examiner allowed the application, implicitly finding that adequate evidence of utility existed. Defendants assert, in view of the minimal disclosure of the specification, that the '318 patent cannot be both non-obvious and enabled. That is, if no one would have believed that galanthamine would work as a treatment for AD, persons of ordinary skill in the art would not accept the statements as to the effects of galanthamine "without question."

80. Defendants lift this language from Rasmusson v. SmithKline Beecham
Corp., 413 F.3d 1318 (Fed. Cir. 2005), wherein the Federal Circuit discussed the
enablement requirement of § 112, first paragraph, in the context of a pharmaceutical patent application. [Emphasis by PATracer].

While the court disagreed with some of defendants' argument regarding Rasmusson, it did conclude that Dr. Davis failed to enable the claim:

In the case at bar, Dr. Davis stated that, even after conceiving of her invention and constructively reducing it to practice, she "certainly wasn't sure, and a lot of other people weren't sure[,] that [CIs] would ever work." (0.1. 389 at 712:14-17) As stated in Rasmusson,

[i]f mere plausibility were the test for enablement under section 112, applicants could obtain patent rights to "inventions" consisting of little more than respectable guesses as to the likelihood of their success. When one of the guesses later proved true, the "inventor" would be rewarded the spoils instead of the party who demonstrated that the method actually worked.

413 F.3d at 1325. Dr. Davis did not receive any confirming data until after the '318 patent was allowed. In view of the prior art disclosures regarding the flaws of physostigmine in AD treatment, discussed previously in the context of obviousness, it does not follow that a person of ordinary skill in the art, reading the '318 patent, would have recognized that galanthamine would be effective in treating AD in the absence of any experimental proof. See Application of Fisher, 427 F.2d 833, 839 (C.C.P.A. 1970) ("In cases involving unpredictable factors, such as most chemical reactions and physiological activity, the scope of enablement obviously varies inversely with the degree of unpredictability of the factors involved."). Put another way, since plaintiffs rely exclusively on the prior art to establish enablement, the court agrees with defendants that the '318 patent cannot both be non-obvious and enabled.

More reading:

Opinion

In Brief: Mathworks v. Comsol

2008-10-30T15:23:33-04:00

2008-1283 Mathworks v. Comsol
ED/TX 06-cv-334
Judge Leonard Davis

A claim construction appeal by Mathworks related to 7,051,338 and the parties' respective MATLAB® and COMSOL Script® software programs. Mathworks essentially stipulated to non-infringement the court construed the term "rank" and "ranking" to require placing the method signatures in an ordered manner relative to one another.

Oral argument is scheduled for Tuesday, November 4, 2008 at 10:00 A.M., Santa Clara University School of Law.

Summary of the Argument from Mathworks. Gregory Castanias, Susan Gerber and Krista Schwartz, all of Jones Day (Washington, Cleveland and Chicago) on brief.

The district court erroneously substituted its own judgment as to the “ordinary meaning” of the “ranking” terms contained in the ‘338 patent, instead of giving those terms their proper meaning in light of the intrinsic record, viewed through the eyes of one of ordinary skill in the art. Had the district court viewed the claims in this way, it would have arrived at the proper construction of the “ranking” terms, as meaning categorizing a method from an object-oriented computing environment based on its determined suitability.

In the context of the ‘338 patent, “ranking” is used much more like the “rankings” given in academic settings, not (as the district court thought) the narrow and specific kind of ordinal rankings, e.g., of sports teams in “top 25 rankings.” A teacher might rank students by giving a numerical ranking (100, 90, 80, etc.) to each one, by giving a letter-grade ranking (A, B, C, D, F), or by simply assigning the student to one of two categories, as in the case of assigning pass/fail grades (P, F). In this context, a single student may be ranked, and multiple students may have the same ranking. Viewed through the eyes of one of skill in the art, the ordinary meaning of “ranking” used in the ‘338 patent is “to assign to a particular class.”

The specification's teachings confirm this ordinary understanding of “ranking.” When a user of an array-based mathematical tool attempts to invoke a method in an object-oriented environment, the tool retrieves a list of method signatures. That list may represent zero, one, or multiple methods that have the same name as the desired method. According to the invention, the mathematical tool will compare the data types of the possible methods with the input parameters of the mathematical tool. Based on the results of that comparison, the mathematical tool will categorize, or assign, the methods to a class based upon suitability. This is “ranking.”

In some embodiments, the mathematical tool will calculate a narrower and more specific type of ranking, referred to in certain dependent claims as a “fitness ranking.” Fitness ranking is a species of “ranking” referring to the assignment to a class that corresponds to a particular level of suitability. There is nothing, however, in the specification or file history that limits the broader term, “ranking” to that specific assignment technique. Yet that is precisely what the district court's claim construction did.

The district court's construction is wrong for several reasons.

First, the district court determined the “ordinary” meaning of “rank” based on nothing other than its own understanding of the meaning of that term, and it provided no support other than its own assertion for that “ordinary” understanding.

Second, the district court's claim construction violates the doctrine of claim differentiation. By construing the “ranking” terms to require that the method signatures be ordered relative to one another, the district court vitiated the distinction between “ranking” and “fitness ranking.” “Ranking” requires only a categorization based upon suitability vel non, while “fitness ranking” requires categorizations of specific levels of suitability, which is the same as what the district court required out of the broader term “ranking” - putting the method signatures in order relative to one another.

Third, the district court's claim construction is erroneous because it excludes the preferred embodiment of the ‘338 patent - a kind of construction that this Court has said is “rarely, if ever, correct.” The district court's construction excludes the preferred embodiment because, inter alia, it does not allow for the case when zero or one method signatures are retrieved, or when multiple method signatures have the same rank.

Fourth, the district court wrongly determined that the step of “comparing the data types ... to determine suitability of each method” precluded a construction where the “ranking” step assigned methods to a suitable or unsuitable class. The district court failed to appreciate the difference between the former step, which involves the system making a mere determination of suitability, and the latter step of assigning the method signatures to a rank “based on the determined suitability.”

Finally, the district court's selective reliance upon two sentences out of the prosecution history was improper: Not only were those sentences perfectly consistent with the broader interpretation of “ranking,” but the district court's approach neglected the intrinsic record as a whole. That complete record confirms that, in the context of the ‘338 patent, “ranking” means simply sorting the methods based on suitability or the absence thereof; “ranking” means “to assign to a particular class.”

Summary of the Argument from COMSOL. Thomas Watkins and Elizabeth Bloch, Brown McCarroll LLP (Austin, TX) on brief.

Math Works proffers a construction of the “ranking” terms in the 338 patent that is not consistent with the ordinary meaning of the terms, is contrary to the way in which those terms are used in the claims and in the specification, and is not supported by MathWorks' own use of those terms in its prosecution of the patent. MathWorks now wants to be its own lexicographer in defining the “ranking” terms, yet it failed to provide notice to the public of those special definitions in the‘338 patent.

In contrast, the district court's construction of the ordinary meaning of the “ranking” terms is entirely consistent with the intrinsic record, including the specification, the use of those terms in the claims themselves, and the prosecution history. It is MathWorks' proposed construction, not the district court's, that violates the doctrine of claim differentiation by not giving effect to all of the claimed terms in the patent. MathWorks' construction of “ranking” as assigning to a class of suitable or unsuitable fails to differentiate and renders superfluous the “comparing” element of the claim, which is the step “to determine suitability.” And the court's construction does not, as MathWorks asserts, exclude the preferred embodiment.

PATracer Note: Due to server storage constraints we are not loading all of the appeal briefs that we have collected. We do have many of the briefs here in pdf, so send us an email if you would like a particular brief sent to you.

In Brief: Dippin' Dots v. Mosey

2008-10-29T02:34:00-04:00

2008-1337, 1125 Dippin' Dots v. Mosey
ND/TX 3:96-cv-1959
Judge Thomas Thrash, Jr.

A case presumably on its last round as plaintiff appeals from the award under § 285 of attorney fees. Dippin' Dots lost at trial, lost its trade dress appeal at the 11th Circuit, but partially won the appeal to the CAFC, getting a reversal on defendants' Walker Process claim. The patent was, however, found not infringed, invalid and unenforceable. The court originally awarded fees under the antitrust laws but, on remand after the CAFC decision, re-awarded most of the same fees under § 285.

We previously reported on the case here.

Oral argument is scheduled for Tuesday, November 4, 2008 at 2:00 P.M., Stanford University School of Law.

Summary of the Argument from Dippin' Dots. Daniel J. Warren of Sutherland, Asbill & Brennan (Atlanta, GA) on brief.

During the first appeal, this Court reversed the district court's finding of fraud on the PTO and vacated the district court's antitrust judgment. Dippin' Dots, Inc. v. Mosey, 476 F.3d 1337, 1348 (Fed. Cir. 2007) (hereinafter “Dippin' Dots II”). This Court also begrudgingly affirmed the district court's inequitable conduct judgment finding that DDI had the “minimum, threshold level of intent required for [finding] inequitable conduct.” Dippin' Dots II, 476 F.3d at 1346. This Court relied on the fact that “defendants submitted no evidence of their own - aside from the absence of the Festival Market sales from the prosecution record - which affirmatively shows DDI's fraudulent intent.” Id. at 1348. Moreover, the Court determined that DDI's submissions to the PTO were “not actually false.” Id. at 1347. Relying on these findings, this Court vacated the $3 million dollars in fees awarded to Defendants under the Clayton Act and remanded for determination of whether attorney fees were appropriate under Section 285. Id. at 1349.

On remand, the district court noted that “Defendants seek the same fees that were awarded under the Clayton Act, but they want them awarded under section 285 of the Patent Act.” (JA0163.) The district court, in direct contradiction with the holdings of this Court in the first appeal, found that this case was exceptional because it involved “inequitable, and in my view egregious, conduct before the PTO” and awarded Defendants over $4 million dollars in attorney fees and interest. (JA0161; JA0167; JA0169; see also JA0745; JA0747 (2005 Section 285 award to FBD).) Specifically, the district court found that DDI's “conduct before the PTO was inappropriate and, in my judgment, outrageous enough to warrant attorney fees.” (JA0166.)

The district court clearly erred by basing its exceptional case attorney fees award on a level of intent that this Court already found DDI did not possess. The law of the case is a judicially created doctrine that prevents district courts from disregarding the opinions of appellate courts. In short, a factual finding, such as the level of DDI's intent to deceive the PTO, relied on by this Court cannot, except in exceptional circumstances, be disturbed by the trial court on remand. By relying on a higher level of intent to defraud, without making any new factual findings or without being presented with any new evidence on remand, the district court clearly erred by finding this case exceptional.

Even if the district court did not clearly err in making its factual findings, the district court abused its discretion by:

failing to require Appellees to present some affirmative evidence showing that DDI had a higher level of fraudulent intent than is required to support the finding of inequitable conduct;
failing to consider DDI's success in the first appeal;
failing to consider the closeness of this case;
failing to make adequate factual findings concerning the fees to be awarded; and
failing to require that Defendants submit adequate documentation of the hours their attorneys expended.

The award of prejudgment and postjudgment interest also should be reversed because the district court either clearly misapprehended the facts or abused its discretion by awarding attorney fees under Section 285 without requiring the introduction of additional evidence supporting a higher level of fraudulent intent.

Finally, the district court's denial of DDI's Rule 60(b) motion also must be reversed and accordingly the 2005 Section 285 award should be vacated. After appeal, it is clear that DDI did not commit fraud on the PTO. Dippin' Dots II, 476 F.3d at 1348 (reversing this finding). The district court's award of attorney fees to FBD in the 2005 Section 285 award was based on “[t]he jury's finding that Jones and his attorney committed fraud on the Patent Office” a decision that the district court found “compels a finding that this is an exceptional case which warrants an award of fees.” (JA0745.) However, inequitable conduct is not equivalent to fraud. This Court found that the evidence did not support anything more than the minimal intent required for inequitable conduct. Without evidence of more, an award of attorney fees under Section 285 cannot stand. Likewise, the district court abused its discretion by denying DDI's motion to stay this award pending appeal.

Summary of the Argument from appellee Mosey et al. Robert Oake, Jr., Oake Law Office (Allen, TX) and Rudolf O. Siegesmund, Siegesmund & Associates (Plano, TX) on brief.

The district court's exceptional case finding is not clearly erroneous. The district court based its finding on DDI's inequitable conduct and not on Walker Process fraud. The inequitable conduct holding was affirmed by this Court and inequitable conduct is a well-recognized basis for finding a case exceptional.

There is no requirement that “exceptional case” misconduct must exceed the minimal level of misconduct to support a finding of inequitable conduct. However, assuming arguendo that such a requirement existed, the district court found that DDI's inequitable conduct was “egregious,” and this finding has strong evidentiary support.

The district court's rationale for finding this case exceptional does not conflict with any statements this Court made in the first appeal. This Court never stated that DDI's conduct (which is determined by balancing intent and materiality) was not egregious. Indeed, this Court stated that the materiality of the non-disclosed Festival Market sales was high.

Further, although this Court made statements with regard to DDI's intent when affirming the inequitable conduct ruling, the “exceptional case” issue was not before this Court in the first appeal, and therefore this Court's statements do not constitute “law of the case.” This Court did not analyze all the inferences of intent in the first appeal - because there was no reason for this court to do so. When the evidence is analyzed for an exceptional case determination, strong inferences of intent exist under this Court's prior case law. Additionally, this Court's statements in the previous appeal regarding the evidence needed to prove Walker Process fraud are not “law of the case” because the analysis is different for determining the level of intent needed for Walker Process fraud and the level of intent needed to support an exceptional case finding.

The district court's award of attorney fees is not an abuse of discretion because the exceptional case finding is not clearly erroneous and the court considered the proper factors when making the award. Further, the district court adequately explained the basis for its award in the attorney fee orders and in the ruling on inequitable conduct.

The fees awarded were not disproportionate to the results achieved. DDI did not challenge the reasonableness or necessity of the Manufacturing Parties' fee requests below and the Manufacturing Parties achieved an excellent result by invalidating and rendering unenforceable the subject patent and defeating DDI's infringement claims by summary judgment. Further, the evidence indicated that this case was not close.

The Manufacturing Parties should be awarded fees for the antitrust aspects of the case because time spent on antitrust matters is compensable in a motion under §285. Further, since an overall excellent result was achieved, the Manufacturing Parties may still recover fees on claims that were rejected. Additionally, fees should be awarded for third party work because the fees are adequately documented.

The award of prejudgment and post judgment interest was not an abuse of discretion because the exceptional case determination and fee award were not clearly erroneous or an abuse of discretion and the evidence indicates that the interest awards were not an abuse of discretion.

Summary of the Argument from appellee Frost Bites. Keith E. Broyles, William R. Hubbard, Alston & Bird LLP (Atlanta, GA) on brief.

In its brief, because DDI cannot seriously dispute that the evidence from trial showed that this is exceptional under § 285, DDI instead takes direct aim at the district court judge, portraying him as a renegade bent on ignoring this Court's appellate authority. Indeed, DDI castigates the district court for allegedly trying to reinstate findings that were overturned by the Court in Dippin' Dots II. Yet, to make out such a dramatic story, DDI must premise its tale on gross misrepresentations of the district court and its October 2007 Order.

Tellingly, DDI does not - because it cannot - support its criticisms with direct quotations from the district court's remand decision. The reason for DDI's numerous citation omissions is clear: The record below speaks for itself and directly contradicts DDI's arguments. Indeed, a comparison of the findings in the October 2007 Order with the misrepresentations in DDI's brief makes clear that DDI is desperately attempting to fabricate error where, in fact, there is none. The district court carefully considered Dippin' Dots II and the evidence adduced at trial, engaged in the proper analysis for awarding fees under § 285, and fully supported its decision.

It is DDI that has behaved inequitably. As found by this Court in Dippin' Dots II, DDI engaged in inequitable conduct in the prosecution of the 156 Patent. Based on that conduct, the district court correctly found this case exceptional.

DDI failed to disclose pre-critical date sales (the Festival Market sales) during prosecution of the 156 Patent, despite this Court's repeated admonitions that patent applicants should be particularly forthcoming regarding their prior art sales. The Court found in Dippin' Dots II that such prior sales invalidated the 156 Patent and thus satisfied the highest level of materiality. The Court further ruled that DDI acted with sufficient deceptive intent in withholding this crippling prior art to constitute inequitable conduct. Based on the Court's inequitable conduct affirmance and the facts established at trial, the district court correctly found - and certainly did not clearly err in finding - that this case is exceptional.

Likewise, the district court correctly applied the proper legal test in deciding to award fees in this exceptional case. The district court found that equitable considerations favored awarding FBD fees, including DDI's misconduct during trial and FBD's sweeping victories on summary judgment regarding every claim for relief DDI raised in the case, as well as on patent validity and unenforceability at trial. The district court also considered equitable considerations such as DDI's conduct in procuring the 156 Patent.

The district court also used the correct analysis in determining a reasonable amount of fees to award. Using the universally accepted lodestar method, the district court multiplied the reasonable hours worked by FBD's lawyers by the undisputedly reasonable hourly rates for those lawyers. With regard to FBD's calculation of the reasonable number of hours, DDI did not even meaningfully dispute those numbers in the district court, and the district court properly rejected the only criticisms that DDI did raise.

First, the district court did not abuse its discretion in determining that the reasonable number of hours included time spent working on the reversed Walker Process counterclaim because that counterclaim was fundamentally intertwined with FBD's successful patent defenses. Second, the district court did not abuse its discretion in determining that FBD's detailed fee records provided an adequate basis for determining the reasonable number of hours.

Similarly, DDI has never contested in any respect - not once - the hourly rates used by FBD in its fee request. The district court therefore did not abuse its discretion by accepting those uncontested rates. Likewise, the district court did not abuse its discretion in finding reasonable the total amount of fees awarded to FBD. DDI did not once claim in the district court (as it does now) that that fee award was unreasonable because it is larger than the vacated Clayton Act award. More importantly, there is no error from this increase because it stems only from the passage of time. DDI's suggestion that there is something unreasonable or deceitful about the § 285 fee award being greater than the vacated Clayton Act award is unsupported and simply absurd.

Finally, the district court correctly rejected DDI's Rule 60(b) motion. DDI improperly sought to substitute a Rule 60(b) motion for a timely appeal. Moreover, despite DDI's attempt to twist the reversal of the Walker Process verdict in its favor, the Rule 60(b) motion was groundless. Indeed, successfully making out a Walker Process claim has never been a prerequisite to a court awarding fees under § 285 and, therefore, an unsuccessful Walker Process claim certainly does not per se defeat an award of fees under § 285, as DDI suggests.

No Love For Nipple Cover Patent

2008-10-28T08:00:51-04:00

2008-1590 Randi Black v. Ce Soir Lingerie
ED/TX 2:06-cv-544
Judge John Love

Plaintiff Randi Black appeals from the summary judgment decision and order of Judge John Love finding her 7,152,606 patent invalid as obvious. The patent essentially claims a pad covering at least 1/2 of a breast and tapered in thickness to a relatively thin outer edge that would not be readily noticeable under clothes. The accused product is the NuBra®, and defendants also include retailers Dillard's, Federated, Victoria's Secret, Gap, Neiman Marcus and Nordstrom.

Claim 1 of the '606 claims:

1. A method of covering a nipple on a human breast, the nipple cover having a center and comprising a flexible material for conforming to a human breast, the method comprising the steps of:

placing the nipple cover directly on a human breast so as to cover at least about one half and less than all of the breast, with the center of the cover proximate the nipple;

the nipple cover having a first thickness proximate the center and a second thickness proximate a periphery thereof, and the thickness of the nipple cover gradually tapering from the first thickness to the second thickness, wherein the method further includes the step of bending the nipple cover on the breast such that the periphery of the cover blends smoothly with a curved portion of the breast while concealing a nipple shape.

The court provides a comprehensive, 30 page opinion analyzing obviousness under the factors of Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), specifically:

the scope and content of the prior art;
the differences between the claimed invention and the prior art;
the level of ordinary skill in the art; and
any relevant secondary considerations that give light to the circumstances surrounding the origin of the subject matter sought to be patented, such as commercial success, long-felt but unsolved needs, failures of others, and the presence of lack of motivation to combine or avoid combining in the prior art.

Level of Skill. The court first determined that the level of ordinary skill in the art was "low," and equivalent to a "backyard inventor"--the subject matter of the patent was merely a method of wearing an article of clothing.

Prior Art. The court then provides a brief history of the prior art of nipple covers and breast pads (a field described as "broad and highly nuanced"), including patents not cited during prosecution, and concludes that a relatively small number of patents disclose all of the limitations of the '606.

Difference with Prior Art. The court found these differences "minuscule," noting also that during prosecution the "plaintiff found great difficulty in distinguishing her application from the vast field of prior art." The one difference that was asserted is, however, found in the uncited prior art.

Secondary Consideration. The court has a nice discussion on secondary considerations, and particularly on plaintiff's argument that the commercial success of defendants' NuBra supports non-obviousness. The court criticizes the theory and factual support, finding no nexus between the success of the NuBra and the claimed invention:

A patentee cannot demonstrate commercial success unless they can show that the commercial success of the product results from the claimed invention, and also that the success was due to the merits of the claimed invention beyond what was readily available in the prior art. J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997).

More reading:

Order

Joint Action Of Website And Its Users Can't Infringe

2008-10-27T14:49:10-04:00

2008-1588 Global Patent Holdings v. Panther BRHC
SD/FL 08-80013
Judge Kenneth Marra

Plaintiff Global appeals from the decision of Judge Kenneth Marra dismissing the case for failure to state a claim. Global owns 5,253,341, which is directed to a remote query communication system--the asserted claim has some limitations that are performed by the web server, but others that are ultimately performed by the web site user. Since infringement requires two different actors, the issue is whether the user is acting under the "direction or control" of the web site operator, in this case defendant Panther.

This is the same plaintiff--represented by Niro Scavone--that has sued the Green Bay Packers and others, generally claiming a patent on downloading JPEGs from the internet. You can see some of the coverage by David Donoghue at Chicago IP who reports that the patent in undergoing a second re-exam.

Claim 17 of the '341 patent claims:

A method for downloading responsive data from a remote server comprising the following steps:

(a) identifying a query via a data input means and inputting said query to remote query and data retrieval means;
(b) transmitting said query from said remote query and data retrieval means to said remote server via an input/output means;
(c) receiving a compressed or non-compressed response to said query at said remote query and data retrieval means from said remote server via said input/output means;
(d) displaying a presentation corresponding to said compressed or non-compressed response on output means;
(e) wherein said compressed or non-compressed response is compressed prior to receipt at said remote query and data retrieval means, and wherein said compressed response is decompressed at said remote query and data retrieval means using an asymmetric decompression technique corresponding to an inverse operation of the technique used to compress said compressed or noncompressed response.

Global conceded that infringement took place only upon the joint action of both the website and the user, but argued that Panther was liable under the joint infringer theory, recently elucidated by the Federal Circuit in BMC Resources v. Paymentech, 498 F.3d 1373 (Fed. Cir. 2007) [2006-1503].

In BMC, the joint infringer test was whether one party exerted "direction or control" over other(s) so as to make that party a direct infringer. While acknowledging a lack of firm guidance on the standard, the court did determine that merely giving some directions or "how-to" instructions was not enough:

that the third party must perform the steps of the patented process by virtue of a contractual obligation or other relationship that gives rise to vicarious liability in order for a court to find “direction or control.” Without this kind of relationship, the Court does not believe that a finding of “joint infringement” is warranted under BMC Resources.

Because web users were free to visit, or not visit, the site and also free to decide what or how to download, search or navigate, there was no "direction or control" present in this case. There was no contractual or agency relationship.

The court also found that the indirect infringement claim failed to state a claim because there is no "predicate finding of direction infringement by some party." Symantec Corp. v. Computer Associates International, Inc., 522 F.3d 1279, 1292 (Fed. Cir. 2008); see also Dynacore Holdings Corp. v. U.S. Phillips Corp., 363 F. 3d 1263, 1272 (Fed. Cir. 2004) (“Indirect infringement, whether inducement to infringe or contributory infringement, can only arise in the presence of direct infringement, though the direct infringer is typically someone other than the defendant accused of indirect infringement.”).

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