Patent News:

In Typhoon Touch Technologies v. Dell et al., Judge Newman addressed a claim setting forth, inter alia: ”a memory for storing at least on data collection application configured to determine contents and formats of said inquiries displayed on said screen”

The district court construed “a memory for storing . . .” as: “A memory that must perform the recited function” including storing the applications, etc. Plaintiff Typhoon argued that the claims should have been interpreted as an apparatus, not a method, and therefore the functional language is met if the memory of the accused product is capable of being configured to store data collection applications, even if the memory is not so configured. Citing Microprocessor Enhancement Corp. v. Texas Instruments, Inc.,¹⁾ Typhoon suggests that it is irrelevant if the function is actually performed by the device, if the device can be programmed or configured to perform the function.

Microprocessor: The Fed. Cir. distinguished this case from Microprocessor, stating that Microprocessor held that a device must be capable of performing the recited function, not that it might later be modified to perform that function. The court then cited a number of cases, including Fantasy Sports Props v. Sportsline.com ²⁾, Telemac Cellular v. Topp Telecom ³⁾, and High Tech Med. Instrumentation v. New Image Indust. ⁴⁾, showing that infringement cannot be based on a finding that an accused product is capable of being modified to operate in an infringing manner. The court never explicitly states that the “memory for storing” set forth in the asserted claims must be modified to operate as claimed, but this is the clear implication based on the citation of case law and agreement with the District court that “the 'memory for storing' clause requires that the memory is actually programmed or configured to store the data collection application.”

Take-away: The court appears to hold that a computer memory is not just a device that can store any arbitrary data–a memory used for one thing is not the same as a memory used for another thing. According to the Fed. Cir., the act of storing data or an application in a memory turns the memory into something new and different. Therefore, anytime a memory is claimed as being “for” a particular purpose, that purpose must always be considered limiting.

Other holdings:

• For a claim limitation, “a processor . . . for executing” the Fed. Cir. agreed with the district court that the recited function is limiting. This determination is primarily based on patentee's statements in the specification and during prosecution of the application.
• For “operating in conjunction,” Typhoon argued that the clause does not limit the run-time generator to be configured and programmed to operate with the processor operating system, and the court improperly injected a “use”requirement into the claim. The Fed. Cir. agrees that the district court's interpretation is the only one consistent with the specification, which describes the invention as “an improved portable computer. . . which is specifically adapted for facilitated data collection . . .”
• Typhoon argues that the term, “keyboardless” has a special definition by the specification to mean that the device does not require the use of a separate keyboard, but that the claims do not exclude devices in which a separate keyboard is present, whether integrated or not. The district court held that the claims exclude the presence of an integrated keyboard, although a separate keyboard may be “hooked up.” The Fed. Cir. agreed that the term, “keyboard” is used to include both a physical as well as “simulated” keyboard, and no support for Typhoon's interpretation.
• The Fed. Cir. reversed the District Court's holding that the phrase, “means for cross-referencing” is indefinite since, citing Aristocrate Technologies Australia v. International Game Technology ⁵⁾, the specification “does not contain an 'algorithm' adequate to provide structure for this function.” The Fed. Cir. agreed with Typhoon that the phrase is supported by the “structure, materials, or acts” in the specification, specifically that the specification states that cross-referencing entails the steps of data entry, then storage of data in memory, then the search in a library of responses, then the determination if a match exists, and then reporting action if a match is found.

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In Ultramercial v. Hulu, the Fed. Cir. reviewed and reversed a dismissal by the district court of a patent because the claim was not patent-eligible subject matter. Chief Judge Rader reviewed the history of non-statutory subject starting with the Bilski decision, and held the following:

1. The Supreme Court . . . recognized the difficulty of providing a precise formula or definition for the judge-made ineligible category of abstractness.
2. Although abstract principles are not eligible for patent protection, an application of an abstract idea may well be deserving. . .” (citing Diehr, 450 U.S. at 187). - The application of an abstract idea to a “new and useful end” is the type of invention that the Supreme Court has described as deserving of patent protection, citing Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
3. Far from abstract, advances in computer technology–both hardware and software–drive innovation in every area of scientific and technical endeavor.
4. Programming creates a new machine, because a general purpose computer once it is programmed to perform particular functions pursuant to instructions from program software, citing In re Alappat, 33 F.3d 1526, 1545.
5. A broadly claimed method . . . [that] does not not specify a particular mechanism for delivering media content . . . does not render the claimed subject matter impermissibly abstract. Assuming the patent provides sufficient disclosure to enable a person of ordinary skill in the art to practice the invention and to satisfy the written description requirement, the disclosure need not detail the particular instrumentalities for each step in the process.

The PTO made effective as of December 8, 2010, a program for delaying action on a newly filed application. Requirements are as follows:

1. The application must directly claim benefit to a provisional application.
2. A nonpublication request must NOT be submitted.
3. Basic filing fee, executed oath or declaration, and applicatoin papers that are in condition for publication (required within a 2-month extendable time period).
4. A certification and request to participate in the Extended Missing Parts Pilot Program must be submitted with the non-provisional application.
   • This is required for duration of the pilot program, rather than applying to all applicants.
5. Before the expiration of the 12-month period, the search fee, examination fee, any excess claim fees, and a surcharge ($130 for non-small entity) for late submission of the search and examination fees must be paid. The nonprovisional application will be published under existing 18-month publication provisions.

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• Summary
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In Therasense v. Becton, the CAFC En Banc opinion authored by Chief Judge Rader, the court eviscerated the prevailing inequitable conduct doctrine replaced existing doctrine with a new, stricter doctrine that will severely limit the availablity of the inequitable conduct defense. Held by the court:

1. To prevail on a claim of inequitable conduct, the accused infringer must prove that the patentee acted with specific intent to deceive the PTO.
   • A finding that the misrepresentation or omission amounts to gross negligence or under a “should have known” standard does not satisfy this intent requirement.
   • In other words, the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.
2. Intent and materiality are separate requirements.
   • The district court should not use a “sliding scale,” where a weak showing of intent may be found sufficient based on a strong showing of materiality, and vice versa. A district court may not infer intent solely from materiality.
3. As a general matter, the materiality required to establish inequitable conduct is but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art (emphasis added).
   • Hence, in assessing the materiality of a withheld reference, the court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference. In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction. . . . Often the patentability of a claim will be congruent with the validity determination–if a claim is properly invalidated in district court based on the deliberately withheld reference, then that reference is necessarily material because a finding of invalidity in a district court requires clear and convincing evidence, a higher evidentiary burden than that used in prosecution at the PTO.
   • This court does not adopt the definition of materiality in PTO Rule 56.
4. Although but-for materiality generally must be proved to satisfy the materiality prong of inequitable conduct, . . . an exception [is recognized] in cases of egregious misconduct.
   • This exception . . . incorporates elements of the early unclean hands cases before the Supreme Court, which dealt with “deliberately planned and carefully executed scheme[s]” to defraud the PTO and the courts.

Dissents:

Judge O'Malley dissented in part because he finds the but-for test “contrary to the very nature of equity and centuries of Supreme Court precedent.” O'Malley further stated that “We should adopt a a test that provides as much guidance to district courts and patent applicants as possible, but, in doing so, we may not disregard the equitable nature of the inquiry at hand. Judge O'Malley would have affirmed the district court in this case, in which the applicant made one statement to the EPO, and a contrary statement to the PTO

Judges Bryson, Gajarsa, Dyk, and Prost dissented in support of the Rule 56 standard for materiality, stating that the current standard serves important policy goals of incentivising applicants to submit prior art references and was persuaded by the PTO amicus brief that “The prosect of agency disciplinary action for disclosure violations is unrealistic . . . because the Office is required by statute to file any charges within five years . . . and it seldom learns of inequitable conduct within that period of time. In addition, the PTO explains that it rarely has access to relevant facts regarding inequitable conduct, because it lacks investigative resources.”

PTO response: On May 27, the PTO said that it is studying the impact of the court's decision on agency practice and procedures and will “soon” issue guidance to patent applicants.

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• Summary with excerpts and snark
• Summary
• Article

In Innovation Toys v. MGA Entertainment (cached - 2up) the Fed. Cir. reversed the district court ruling that a virtual laser-based chess game was not analogous to the patented physical laser-based chess game. The case was then remanded to the District Court for reconsideration of its finding that the patent was non-obvious. The court relied on “Analogous Art” stalwarts In re Clay ⁶⁾ and In re Bigio ⁷⁾ in its holding that the prior art virtual game and the patented physical game are directed to the same purpose and address the same problem and are therefore analogous under Bigio.

• Summary with excerpts
• Summary, discussion

The CAFC recently denied a motion for an en banc rehearing of the previous decision by the CAFC, which upheld the safe harbor provisions of 35 U.S.C. § 121. In this case, of a related set of three patent applications the patentee's first application was subject to a ten-way restriction by the PTO. In two subsequent divisionals, the patentee included multiple patentably distinct inventions set forth in the restriction requirement of the first application. The PTO did not issue restriction requirements in the two divisionals and each issued as a patent claiming multiple distinct inventions identified in the PTO's initial restriction requirement. The district court held that that the patentee, Boehringer, could not seek shelter in § 121's safe-harbor provision and invalidated the third patent for obviousness-type double patenting based on the second patent. The CAFC panel decision reversed the district court, ruling that the

1. patentee did not err in combining independent and distinct inventions in subsequent divisional applications, and
2. the patentee's motivations for filing subsequent divisional applications were irrelevant so long as the later-filed claims could have been filed in the initial application absent the restriction requirement.

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Marking: A false marking claim under 35 U.S.C. §292 requires an intent to deceive the public, which is found when “a party acts with sufficient knowledge that what it is saying is not so and consequently that the recipient of its saying will be misled into thinking that the statement is true.” In Forest Group v. Bon Tool, the CAFC agreed with a lower court ruling that Forest lacked requisite knowledge to falsely mark prior to November 15, 2007, when it received a second summary judgment determination of non-infringement in a separate case case that its S2 stilts were not covered by the ’515 patent. The Court, however, vacated the lower court's fine of a mere $500 for a single decision to false mark, stating, “The plain language of the statute does not support the district court’s penalty of $500 for a decision to mark multiple articles. Instead, the statute’s plain language requires the penalty to be imposed on a per article basis.”

• Patent In Suit
• Summary, analysis
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In Ariad Pharmaceuticals et al v. Eli Lilly the CAFC upheld a separate written description requirement. The patent at issue relates to a method for inhibiting an intracellular mechanism for expressing genes driving an immune response. Ariad and its co-plaintiffs sued Eli Lilly for infringement of claims 80, 95, 144, and 145 of the patent. A jury returned a verdict that the claims were valid (meeting the enablement and written description requirments) and infringed. Eli Lilly appealed the Federal Circuit, which reversed the jury's verdict of validity on grounds that the patent fails to set forth an adequate written description in a decision rendered in April 2009 ⁸⁾. The CAFC agreed to rehear en banc to answer the following two questions:

1. Whether 35 U.S.C. §112, paragraph 1, contains a written description requirement separate from an enablement requirement?
2. If a separate written description requirement is set forth in the statute, what is the scope and purpose of that requirement?

In answering the first question, the CAFC held that the plain meaning of the statute does not limit the written description requirement solely to requiring enablement. Stated the court: “If Congress had intended enablement to be the sole description requirement of § 112, first paragraph, the statute would have been written differently” and “Finally, a separate requirement to describe one’s invention is basic to patent law. Every patent must describe an invention. It is part of the quid pro quo of a patent. . . .” The CAFC cited the Supreme Court cases Schriber-Schroth ⁹⁾, Gill v. Wells ¹⁰⁾, and Festo ¹¹⁾.

With regard to the scope of the requirement, the court held that:

1. “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveyed to those skilled in the art that the inventor had posession of the claimed subject matter as of the filing date.”
2. “the specification must describe an invention understandable to that skilled artisan and show that the invention actually invented the invention claimed.”
3. “the written description requirement does not demand either examples or an actual reduction to practice”
4. “actual 'posession' or reduction to practice outside oft he specification is not enough.”

With regard to the purpose of the requirement, the court held that:

1. “requiring a written description of the invention plays a vital role in curtailing claims that do not require undue experimentation to make and use, and thus satisfy enablement, but that have not been invented, and thus cannot be described.”
2. “The written description requirement also ensures that when a patent claims a genus by its function or result, the specification recites sufficient materials to accomplish that function–a problem that is particularly acute in the biological arts.

The court does not sympathize with the impact of the written description requirement on research institutions (such as co-plaintiff MIT):

1. “Patents are not awarded for academic theories, no matter how groundbreaking or necessary to the later patentable inventions of others. '[A] patent is not a hunting license. It is not a reward for the search, but compensation for its successful conclusion.'”
2. “The goal is to get the right balance, and the written description doctrine does so by giving the incentive to actual invention and not 'attempt[s] to preempt the future before it has arrived. […] As this court has repeatedly stated, the purpose of the written description requirement is to 'ensure that the scope of the right to exclude, as set forth in teh claims, does not overreach the scope of the inventor's contribution to the field of art as described int he patent specification.”

• Summary
• Excerpts, commentary
• Analysis, discussion

In In re Gutta, the BPAI sua sponte rejected claims 14, directed to a system, and claim 19, directed to “an article of manufacture . . . comprising a computer readable medium” under 35 U.S.C. § 101. The BPAI cites Comiskey ¹²⁾ and Benson ¹³⁾ for the principle that the scope of §101 is not unlimited. The BPAI then cites Alappat to support the notion that mathematical algorithms are not patentable, and that this exception applies to true apparatus claims ¹⁴⁾. In re Johnson ¹⁵⁾ is cited for stating, ”Benson . . . applies equally whether an invention is claimed as an apparatus or a process, because the form of the claim is often an exercise in drafting.” The BPAI concludes:

If a claimed machine . . . involves a mathematical algorithm, . . . then we must determine whether the scope of the claimed invention encompasses one of the judicially-created exceptions. This determination of claim scoep requires that we make two inquiries:

(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significantce”)?

(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even “only one field?”

In footnote 11, the BPAI notes:

Notwithstanding the court's statement in Nuijten, 500 F.3d at 1356 n.7 (“We have never held that a manufacture is ever required to produce any result.”), if an applicant chooses to claim the manufacture in terms of applying a mathematical algorithm (e.g., Appellants' claim 19), then this two-part inquiry applies to determine if the claim is directed to eligible subject matter under § 101.

The BPAI follows the same logic in rejecting Beauregard style claim 19.

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In Tyco Healthcare Group v. Ethicon Endo-Surgery, Defendant Ethicon challenged Tyco's ownership of the patents being asserted. Tyco argued it received the patents in accordance with a Contribution Agreement from a third party, U.S. Surgical Corporation (USSC). The Contribution Agreement assigned all assets except ”[a]ny and all patents and patent applications relating to any pending litigation involving USSC” (emphasis added). On the same day as the Contribution Agreement was signed, USSC and Ethicon executed the Settlement Agreement, which purportred to resolve “five pending patent litigations” and several interference proceedings between the two companies. The court rejected Tyco's argument that the “relating to” phrase includes only patents asserted in the then-pending litigation or patent applications in the same family as an asserted patent. Since “relating to” was not defined in the Contribution Agreement, the court turned to a broad dictionary definition, and prior court decisions that broadly construe “related,” and agreed with the district court that Tyco bore the burden of proving the patents presently asserted were not related to the earlier litigation. The CAFC also refused to convert the dismissal without prejudice to one with prejudice as requested by Ethicon since the district judge may have reasonably concluded that Tyco can cure its lack of standing, e.g., by obtaining ownership of the patents.

Newman Dissents: Judge Newman argues that the Settlement Agreement identifies litigation that was pending at the time of the Contribution Agreement, and could have been used to identify which patents are “related” to the litigations. Since the technology of the patents asserted in prior litigations is not related to the patents asserted here, the patents clearly should not have been excluded, and the dismissal should have been reversed. Newman presents several other rationales for reversing the dismissal.

• Excerpts, commentary

In Exergen v. Wal-Mart, the CAFC, upheld the district court's refusal to consider inequitable conduct charges due to lack of particularity in defendant's pleading.

Background: Exergen asserted three patents directed to infrared thermometers for calculating internal or oral body temperature based on surface temperature, e.g., of the ear drum.

Inequitable Conduct: SAAT (Walmart's codefendant) filed a motion to add inequitable conduct as an affirmative defense and counterclaim against the '813 and '685 patents, which was denied by the district court, which denial was upheld by the CAFC. SAAT's proposed pleading argued that:

• Exergen was aware of a pending patent applications that was material to the '685 patent application, but did not disclose the application to the Patent Office.
• Exergen cited a material reference in an IDS for the '205 patent but never cited it in the '685 patent application.
• Exergen made arguments that it knew to be not true, i.e., that it was not obvious that reliable temperature measurements could be obtained from the forehead and that it had not been appreciated that the superficial temporal artery provides an exceptionally reliable temperature reading, despite statements in Exergen's own website to the effect that “the temporal artery area has a long history of temperature measurement, dating back to the early centuries before Christ…”

After summarizing the relevant case law, the CAFC notes that SAAT's pleading refers generally to “Exergen, its agents and/or attorneys,” but fails to name the specific individual associated with the filing or prosecution of the application issuing as the '685 patent, who both knew of the material information and deliberately withheld or misrepresented it, that is, the “who” of the material omission. Secondly, the pleading, according to the CAFC, fails to identify which claims, and which limitations in those claims, the withheld references are relevant to, and where in those references the material information is found–i.e., the “what” and “where” of the material omissions. Third, the CAFC found that the pleading states generally that the withheld references are “material” and “not cumulative,” but does not identify the particular claim limitations, or combination of claim limitations, that are supposedly absent from the information of record. Such allegations are necessary to explain both “why” the withheld information is material and not cumulative, and “how” an examiner would hav eused this information in assessing the patentability of the claims.

The CAFC went a step further, stating that, the facts that are alleged do not give rise to a reasonable inference of scienter, including both (1) knowledge of the withheld material information or of the falsity of the material misrepresentation, and (2) specific intent to deceive the PTO. The court, citing FMC Corp. v. Manitowoc Co., Inc. ¹⁶⁾ stated: “one cannot assume that an individual, who generally knew that a reference existed, also knew of the specific material information contained in that reference.” As for the alleged misrepresentation, any knowledge of its alleged falsity is similarly deficient. No facts are alleged from which one can reasonably infer that, at the time of the allegedly false statement, the individual who made this statement to the PTO was aware of an allegedly contradictory statement on Exergen's website.

The CAFC instructs that “pleading on 'information and belief' is permitted under Rule 9(b) when essential information lies uniquely within another party's control, but only if the pleading sets forth the specific facts upon which the belief is reasonably based. […] The circumstances that SAAT has alleged, even if true, do not plausibly suggest any 'deliberate decision to withhold a known material reference' or to make a knowingly false misrepresentation–a necessary predicate for inferring deceptive intent.”

Anticipation: The CAFC reversed the denial defendants' motion for JMOL on validity of Claim 1 of Exergen's '205 patent. The claim requires “electronically detecting the peak radiation from the multiple areas to obtain a peak temperature signal.” The prior art reference shows an infrared temperature brobe that takes measurements seven times a second for ten seconds from the moment the user removes the probe from the “chopper” unit, and stores the maximum reading. The user is intended during the ten seconds to move the probe to an ear canal to take a temperature. During this time, testimony revealed that “peak radiation from multiple areas” is obtained. Therefore, the CAFC held the prior art reference inherently teaches each of the limitations of the '205 patent.

Infringement: The CAFC reversed the jury finding of infringement of the '813 patent, which claimed in part, “a display for providing an internal temperature.” The internal temperature is construed as the temperature beneath the area of surface temperature measurement, and is distinct from oral temperature, which is a standard location to take body temperature in the United States. Defendant-Appellant SAAT convinced the CAFC that since its device displays oral temperature and not internal temperature, it does not infringe the claim. The CAFC rejected arguments that oral temperature provides an indication of internal temperature, since the two have known correlations. Stated the court:

We observe that it is Exergen, not SAAT, which seeks to change the ordinary meaning of “indication” that was given to the jury. Exergent's own expert and coinventor on the '813 patent, Dr. Pompei, testified on direct examination that the phrase, “a display for providing an indication” in claim 7 means that ”[o]n the display it reads a temperature that is – you know, is the internal temperature.”

• Patents in suit: 5,012,813, 6,047,205, and 6,292,685
• Summary of inequitable conduct holdings, discussion
• Excerpts, comments
• Summary, commentary
• Summary of anticipation ruling
• Hal Wegner's take:
  

  Exergen represents an important decision in the evolution of the law of inequitable conduct and deserves careful study.

In Callaway Golf Co. v. Acushnet Co., the CAFC reversed the district court's ruling that claims were not anticipated by a prior art reference since it didn't successfully incorporate by reference material critical to anticipation. The Patent states,

The inner, intermediate, or first layer or ply 14 and the outer cover, second layer or ply 16 or either of the layers may be cellular when formed of a foamed natural or synthetic polymeric material. Polymeric materials are preferably such as ionomer resins which are foamable. Reference is made to the application Ser. No. 155,658, of Robert P. Molitor issued into U.S. Pat. No. 4,274,637 which describes a number of foamable compositions of a character which may be employed for one or both layers 14 and 16 for the golf ball of this invention.

Despite the fact that the referenced patent “undisputably” teaches that many foamable materials, including both polyurethane and ionomer-resin blends may be used as golf ball cover materials, the district court held that the patent at issue failed to specifically incorporate polyurethane and ionomer-resin blends from the referenced patent, and therefore granted summary judgment of no anticipation.

The CAFC cites In re de Seversky ¹⁷⁾ and Adv. Display Sys. ¹⁸⁾ for the proposition that “To incorporate matter by reference, a host document must contain language 'clearly identifying the subject matter which is incorporated and where it is to be found'; a 'mere reference to another application, or patent, or publication is not an incorporation of anything therein . . . .” In the present case, the CAFC concludes that the patent at issue “identifies with specificity both what material is being incorporated by reference (foamable polymeric compositions suitable for golf ball cover layers) and where it may be found (the [referenced] patent).”

• Brief summary, discussion

In Hyatt v. Doll, the Fed Cir., in an extensive opinion, upheld the district court's refusal to admit evidence that was previously requested by the PTO during prosecution, but not provided to the PTO. In this case, the plaintiff-applicant was repeatedly asked where in the jumbo application (238-page specification, 40 pages of drawings, incorporating by reference multiple publications, and 117 claims at the time of appeal) support could be found for numerous claim elements. Stated the court:

There is, under Alton, [¹⁹⁾] only one acceptable response to a written description rejection: showing the examiner where by column and line number in the specification he may find written description support for each disputed claim limitation. ²⁰⁾ Here, not only was Hyatt’s response to the written description rejections completely and wholly inadequate, it was willfully so. He simply refused to respond as required by Alton to the requests of the examiner for citations to the specification, and he clearly did so deliberately, thus impeding the examination the PTO is legally required to conduct.

The Fed. Cir. narrows its ruling:

The dissent incorrectly describes our decision as promulgating a “sweeping exclusionary rule.” See Dissent at 2. We have not adopted a “sweeping” or “per se rule.” See id. at 2, 15. We express no opinion as to admissibility of evidence in the multitude of variegated factual scenarios that may arise in the future which the dissent claims are decided today. The dissent also characterizes the majority opinion as standing for something that it does not: that evidence must be excluded simply because it could have been presented to the PTO. See Dissent at 10. Instead, we have merely reached the unremarkable conclusion that it is unreasonable to believe Congress intended to allow a patent applicant in a § 145 action to introduce new evidence with no regard whatsoever as to his conduct before the PTO, and that, specifically, Congress did not intend that evidence owed, ²¹⁾ requested and willfully withheld from the PTO must nevertheless be admitted in a § 145 action.

• Summary, extensive quotes of dissent, discussion

Taylor v. USPTO ²²⁾ arises out of a dispute between a pro se patentee, who attempted to make 7.5- and 11.5-year maintenance payments, but was $10 deficient in his 7.5 year payment. The Fed. Cir. stated that “the PTO’s action in taking Mr. Taylor’s payment without notifying him of its deficiency is not reasonable.” The Fed. Cir. concluded, ”[I]n this case, equity would counsel that the PTO should reinstate Mr. Taylor’s patent upon receipt of his payment for all outstanding maintenance fees. This relief will remedy, to this court’s best estimation, the PTO’s arbitrary and capricious actions.”

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• Brief Summary and discussion

As reported by Hal Wegner and others, the following is the top 10 domestic patentees based on data from the IPO, and whether they are a member of the Coalition for Patent Fairness (CPF).

1. IBM, 4169
2. Microsoft, 2043 CPF member
3. Intel, 1772 CPF member
4. Hewlett-Packard 1,422 CPF member
5. Micron 1,277 CPF member
6. General Electric 1,243
7. AT&T, 820
8. Honeywell, 774
9. Texas Instruments, 755
10. Cisco, 704 CPF member

In Felix v. American Honda Co., the Federal Circuit affirmed a Summary Judgment finding patent 6,155,625 not literally infringed and estopped from a doctrine of equivalents when the applicant canceled broad claims and incorporated them into dependent claims. With respect to the literal infringement, the Fed. Cir. rejected four arguments put forth by Felix. The court was particularly testy due to misrepresentations by Felix as to how the dictionary defined the terms “mounted” and “engaging.” In both cases, the court rejected broad construction of these terms, electing to define “mounted” as “securely affixed or fastened to” and “engaging” as “forming a seal” but not “bring together” as argued for by Felix, or “latching” as the district court held.

With regard to the doctrine of equivalents, the court noted that Felix rewrote claim 7 , which included “a weathertight gasket mounted on said lip and engaging said lid in its closed position,” into independent form. Citing Festo, the Fed. Cir. held that, by adding these limitations into the broader canceled claim 1, Felix gave rise to a presumption of surrender. The fact that this first amendment did not succeed in obtaining an allowance and that a further amendment was required is of no consequence to the estoppel effect of the first amendment. Also, it was immaterial that the cancellation and amendment were to claims 1, 7, and 14, rather than to claims 8 and 16 which resulted in the asserted claim. Quoting Deering, “The presumption of surrender applies to all claims containing the [added] [l]imitation, regardless of whether the claim was, or was not, amended during prosecution.”²³⁾ Felix's arguments that the amendment was made for a different purpose and therefore only tangentially related to the gasket position was rejected. Stated the court, “If Felix had intended only to add a channel and not add a gasket, he could easily have simply amended original claim 1 to add limitation (e) and not limitation (f).

• Analysis and discussion
• Summary with excerpts

In Clock Spring v. Wrapmaster, the Fed. Cir. affirmed the district court's grant of summary judgment of invalidity of claims directed to a method for repairing high-pressure gas pipes, but on a ground not adopted by the district court. Specifically, the district court granted the summary judgment based on obviousness whereas the Fed. Cir. ruled the patent invalid for prior public use. Stated the court:

A use may be experimental only if it is designed to (1) test claimed features of the invention or (2) to determine whether an invention will work for its intended purpose – itself a requirement of patentability.

After establishing that the prior public use involved all features of asserted claim 1, the Fed. Cir. rejected Clock Spring's argument that the prior public use was designed to determine durability of the pipe-repairing method. The court noted that contemporaneous reports in the record identify the purpose as being “to demonstrate . . . the stops of application and the ability of minimally-trained crews to make Clock Spring installations” and for “acceptance by regulators and the pipeline industry.” One report stated that “recovery and analysis of installed composite after several years of exposure in pipeline settings was the only means of verifying the long-term performance . . . in moist soils.” But this was not persuasive to the Fed. Cir., which noted that the 1989 installation was not dug up and examined until almost a year after the 1992 patent application. Stated the court,

“Thus, even if durability were being tested, it was not for purposes of the patent application, and cannot bring the experimental use into play. By filing the 1992 application, the inventors represented that the invention was ready for patenting, and studies done thereafter cannot justify an earlier delay in filing the application under the rubric of experimental use.”

• Patent in suit
• Summary with excerpts
• Hal Wegner's take:
  

  ”Clock Spring is a useful reality check for applicants who wish to delay filing under the guise of “experimental use”. A tour de force treatment of the limitations of this doctrine may be found at pages 12-15 of the opinion.”

In ICU Medical v. Alaris Medical Systems, the Fed. Cir. affirmed the district court's narrow construction of the term, “spike” as being “an elongated structure having a pointed tip for piercing the seal, which tip may be sharp or slightly rounded” stating that “it is 'entirely proper to consider the functions of an invention in seeking to determine the meaning of particular claim language.'” ²⁴⁾

§112, ¶1: In addition, the Fed. Cir. affirmed the district court's finding of invalidity under §112 ¶1 of broader “spikeless” claims. The Fed. Cir. cited LizardTech v. Earth Resource Mapping ²⁵⁾ and rejected ICU's contention that “a person . . . would recognize that the specification discloses a preslit (or precut) seal that would permit fluid transmission without the piercing of a spike.” Stated the court: “It is not enough that it would have been obvious . . . that a preslit trampoline seal could be used without a spike. ICU has failed to point to any disclosure in the patent specification that describes a spikeless valve with a preslit trampoline seal” (citation omitted).

• Patent in suit - 6,682,509
• Summary with excerpts; discussion
• Comment on attorney-fees damage; discussion

In Nartron Corp. v. Schukra U.S.A., the Federal Circuit held on appeal from Summary Judgment that a person is not an inventor when the “contribution . . . was the exercise of ordinary skill in the art.” In addition, the court held that the person's contribution did not rise to the level of “inventor” because his contribution “was insignificant when measured against the full dimension of the invention of [the] claim” because (1) the specification only mentions the contribution once in a twenty-column patent, (2) refers to it as background, (3) does not discuss or show in drawings structural details, (4) does not describe the physical characteristics of the contribution, and (5) the contribution “is not, and could not be, . . . anything but obvious.”

• Patent in suit

In Netcraft v. Ebay and Paypal (December 2007), the Western District of Wisconsin narrowly construed the phrase, “providing a communications link through equipment of the third party” as requiring, for infringement, that Defendants perform a step of providing Internet access to customers. The term, “communications link” was interpreted consistently with the specification as essentially Internet access. Since Ebay and Paypal are not Internet Service Providers, they did not perform this step, and therefore were not infringing. I am posting this because although it is a district court decision, it illustrates a common pitfall with the use of the word “providing” in method claims.

• Summary, excerpts

on 01/27/09, Bilski filed for writ of certiorari with the following two questions being presented:

Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (“machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”

Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

• Bilski's Petition (250 pages, 668 KB)
  • Paper-saver copy (125 pages, 984 KB)
• See the comprehensive Bilski page.
• Announcement, associated documents, discussion

In 2007, the Fed. Cir. issued its ruling that mental processes are not patentable. Now, the Fed. Cir., acting en banc, ordered that the original opinion be vacated and a new opinion be issued. The Order affirms the correctness of the original ruling in that “appellate tribunal [is allowed] to affirm an agency on alternative legal grounds or to remand to the agency to consider an alternative ground.” In this case, the BPAI rejected claims on obviousness grounds only, and the BPAI, rather than addressing the obviousness rejection, held that the method claims were non-statutory. Judge Moore, writing for the dissent and joined by Newman and Rader, states,

“In this case, the court declined to address the only ground for rejecting the patent claims decided below and appealed by the parties (§ 103). Instead, the court reached out to decide a new ground of rejection (§ 101), raised sua sponte by the court. The court evaluated both the process and machine claims under its chosen ground, § 101, concluding that the process claims were not directed to patentable subject matter, but that the machine claims, in light of our well-established precedent were directed to patentable subject matter. This resulted in affirming the rejection of the process claims albeit on a different ground and remanding the rejection of the machine claims without ever addressing the obviousness rejection by the PTO. Today, the en banc court vacates the original Comiskey opinion and permits the panel to revise it. The only change the panel makes is to remand the uncontroversial determination that

the machine claims are in fact directed to patentable subject matter. Why remand the machine claims and not the process claims? More importantly, why remand when the PTO already rejected the system claims as obvious. Given that the court has pointed to no flaw in the agency’s obviousness rejection, the court’s decision in Comiskey amounts to a wasteful remand.”

• Cached Fed. Cir. slips: Order; Revised opinion
• Summary and discussion
• Hal Wegner's take:

”[The] panel has repudiated controlling precedent of the court and indeed 180 years of practice since the Patent Act of 1839 that had established a strict proscription against a judicial reviewing body of Patent Office decisions playing de novo “examiner”. Instead, the reviewing court has had a limited statutory role that focused upon the rejection that had been made by the Office.

One hundred eighty years ago the Patent Act of 1839 established the ground rules for judicial review of Patent Office denials of patentability. A strict standard was established that the reviewing court should only review the decision below and never on a de novo basis impose a new ground to deny patentability.

• Summary, exceprts
  • Excerpts, discussion of Wegner's article

In Micron v. Rambus the district court in Delaware held that Micron was prejudiced by Rambus' conduct in destroying discoverable and relevant to anticipated litigation with Micron. The court was “not prepared to rely on Rambus' generally assertive approach to business to answer the question before the court.”²⁶⁾ In determining sanctions, the court found that:

“the showing of bad faith is so clear and convincing that the showing of prejudice can be proportionally less. The spoliation conduct was extensive, including within its scope the destruction of innumerable documents relating to all aspects of Rambus' buisness; when considered in light of Rambus' litigation conduct, the very integrity of the litigation process has been impugned. Sanctions such as adverse jury instructions and preclusion of evidence are impractical, bordering on meaningless, under these circumstances and in the context of a typical trial. Therefore, the court concludes that the appropriate sanction for the conduct of record is to declare the patents in suit unenforceable against Micron.”

• Articleok