May 31, 2007

At 2:00PM today, the USPTO will host a brief ceremony to unveil the top inventions of the 2007 Modern Marvels Invent Now Challenge. John Dudas, the Director of the USPTO and Under Secretary of Commerce for Intellectual Property, Michael Sykes, the winner of the 2007 Modern Marvel of the Year, will speak at the event. According to the USPTO press release (link below), the Challenge “is a national invention contest that invites independent inventors to share their vision and ingenious designs with the world,” and that “[t]he inventions featured in this exhibit were chosen from nearly 2,500 contest entries.” This free public exhibit will be available through June 30th at the Atrium of the USPTO’s Madison Building.

USPTO Press Release: LINK
History Channel Invent Now Challenge Website: LINK
National Inventors Hall of Fame Invent Now Challenge Website: LINK

May 30, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the last two patent cases that were appealed from the district court level and decided by the Federal Circuit during the 21st calendar week of 2007. All opinions are precedential unless otherwise indicated.

Monsanto Co. v. McFarling (05/24/2007): appeal of award by district court for damages for patent infringement, rejection of McFarling’s arguments for vacating the judgment of liability, and refusal to grant Monsanto’s request to modify the permanent injuction (District Court's rulings on McFarling’s appeal and Monsanto’s cross-appeal affirmed); discussion of two patents related to a system for weed control employing genetically modified crops that resist glyphosphate herbicide (U.S. Patent No. 5,352,605, entitled “Chimeric genes for transforming plant cells using viral promoters,” and U.S. Patent No. 5,633,435, entitled “Glyphosate-tolerant 5-enolpyruvylshikimate-3-phosphate synthases”); patent license between the parties for Roundup Ready soybean seeds, and McFarling saved seeds he grew for planting in subsequent seasons in violation of the license agreement (as determined by the courts); argument of patent misuse in the license agreement rejected as the prior arguments made by the appellate court for one patent-in-suit applies to the other patent-in-suit; rejection of antitrust counterclaim as “simply a repackaged version of his patent misuse defense”; damages for patent infringement are to be “adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court”; “technology fee” per bag of Roundup Ready soybean seed not the sole measure of damages, as there was an “added obligation imposed on all authorized licensees under the Technology Agreement,” namely to purchase seed from an authorized seed store; jury’s damages verdict was supported by evidence and was not grossly excessive; court rejected Monsanto’s argument that McFarling only be able to purchase Roundup Ready soybean seed with “express authorization from Monsanto”

Honeywell v. Universal Avionics (05/25/2007): appeal of issues of claim construction, infringement, and subject matter jurisdiction; cross-appeal of final decision that other remaining claims were not barred by public use or premature sales activity; appeal of decision that Honeywell did not commit inequitable conduct; appeal of denial of commercial counterclaims (claim construction vacated, remanded for new infringement determination, and affirmed district court’s retention of jurisdiction over the withdrawn claims and the decision that 35 U.S.C. § 102(b) does not erect a bar); discussion of five patents related to aircraft terrain warning systems (U.S. Patent Nos. 5,839,080, 6,092,009, 6,122,570, 6,138,060 and 6,219,592); fact-specific claim construction review of several terms performed; “[w]ithout a customary meaning of a term within the art, the specification usually supplies the best context for deciphering claim meaning”; exclusion of expert testimony affirmed when testimony addressed doctrine of equivalents arguments not considered by the same expert a day earlier; decision to maintain jurisdiction over withdrawn claims maintained as patentee did not affirmatively withdraw all claims of two patents-in-suit; discussion of on-sale bar and public use regarding defendant’s invalidity contentions; no inequitable conduct as patentee provided express statements on its commercial flights and industry demonstrations

May 29, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 21st calendar week of 2007. All opinions are precedential unless otherwise indicated.

Byrne v. The Black & Decker Corporation, et al. (05/21/2007, non-precedential): appeal of grant of summary judgment of noninfringement (affirmed); discussion of patent related to a guide and a guard for a string trimmer (U.S. Patent No. RE 34,815, entitled “Flexible flail trimmer with combined guide and guard”); claim meaning “is determined by using intrinsic evidence, which includes the claims, the specification, and the prosecution history and by using extrinsic evidence, which includes dictionaries,” but “[h]owever, extrinsic evidence in determining the meaning of a claim may be less reliable than intrinsic evidence”; discussion of phrase “generally planar surface” as being defined within the claims and the specification; error at district court level because “it gave too much preliminary weight to dictionary definitions without relying on intrinsic evidence, as cautioned against in Phillips”; waiver of doctrine of equivalents infringement argument by not raising it in appellant’s opening brief; accused device has a “surface” but it does not have a “generally planar surface,” so summary judgment of noninfringement is appropriate here (affirmed)

Pfizer, Inc. v. Apotex, Inc. (formerly known as TorPharm, Inc.) (05/21/2007) (order): Appellee (Pfizer) filed petition for panel rehearing and rehearing en banc and Appellant (Apotex) filed response; poll requested (whether or not to rehear the appeal en banc), taken, and denied, and Appellant moved for expedited denial of rehearing and rehearing en banc and for expedited issuance of mandate; petition for rehearing and rehearing en banc denied, and motion for expedited denial of rehearing and rehearing en banc denied as moot; motion for expedited issuance of mandate granted; three separate dissents provided

Furnace Brook, LLC v. Overstock.com, Inc. (05/23/2007, non-precedential): appeal of review of final judgment granting summary judgment of noninfringement (affirmed); discussion of patent related to an improved method and apparatus for an interactive, computerized electronic catalog system (U.S. Patent No. 5,721,832, entitled “Method and apparatus for an interactive computerized catalog system”); district court held that the terms “telephone terminal” and “customer terminal means” limitations of the claims of the patent-in-suit do not read on the accused structures, namely personal computers and internet-enabled cellular telephones that may access Appellee’s (Overstock.com’s) website over the Internet; the specification of the patent-in-suit requires that a telephone terminal “dial a predetermined assigned telephone number” and that the telephone terminal establish a “communication link” over a telephone network by dialing the computer system directly; no evidence in the record that the accused devices place such calls when accessing the overstock.com website; infringement under the doctrine of equivalents argument rejected because no evidence was introduced sufficient to create a genuine issue of material fact as to that factual question; scope of means-plus-function limitation “is . . . limited to the structures disclosed in the specification, and their equivalents” and that equivalence of communication with a server over the Internet and communication with a server by dialing the server over telephone networks was not addressed by the deposition testimony in the case

May 25, 2007

It was recently announced that NFL Properties LLC has expressly abandoned its two federal trademark applications for “The Big Game.” The two applications, namely U.S. Trademark Application Nos. 78/803,677 and 78/804,122, were filed last year and together spanned four international classes of goods and services. According to the San Francisco Chronicle news article (link below), two major Universities, namely Stanford and California, and eighteen companies, including Anheuser-Busch and Wal-Mart, filed documentation with the USPTO expressing their intentions to oppose the two trademark applications, and NFL Properties decided not to substantively defend the applications against that many potential oppositions.

San Francisco Chronicle News Article: LINK
U.S. Trademark Application No. 78/803,677: LINK
U.S. Trademark Application No. 78/804,122: LINK

May 24, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the last two patent cases that were appealed from the district court level and decided by the Federal Circuit during the 20th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Wechsler v. Macke International Trade, Inc., et al. (05/18/2007): appeal of decisions granting judgment as a matter of law (JMOL) that the individual defendant was personally liable for inducement of infringement and denying JMOL that the jury’s award of lost profits to the patentee was not supported by substantial evidence, and cross-appeal of the grant of summary judgment that the corporate defendant is not the alter ego of the individual defendant (reversed-in-part and affirmed-in-part); discussion of patent related to a portable device for dispensing liquids and flowing feed to animals (U.S. Patent No. 5,636,592, entitled “Portable device for feeding animals”); special jury verdict that individual plaintiff was not personally liable for infringement “essentially discarded” by district court by grant of JMOL that he was personally liable; the grant or denial of JMOL is reviewed “under the law of the regional circuit in which an appeal from the district court would normally lie”; ”the district court’s statement that finding Macke liable for willful infringement while exonerating O’Rourke would be “inconsistent and unreasonable” because Macke could not act independently of O’Rourke is clearly incorrect” (grant of JMOL in error); “[t]o recover lost profits, the patent owner must show ‘causation in fact,’ establishing that ‘but for’ the infringement, he would have made additional profits”; plaintiff here did not manufacture or sell product while defendant’s device was on the market; “[w]ithout some evidence tying the lower price Wechsler received for his product to Macke’s infringing sales or indicating that Macke’s infringing sales preempted subsequent sales by Wechsler, the jury’s award of lost profit damages was not supported by substantial evidence” (denial of JMOL in error); discussion of alter ego and piercing the corporate veil in a situation where one person is the sole shareholder, director, and officer of a company; no facts presented by plaintiff raised a genuine issue as to any material fact, and “no reasonable jury could have found that Macke was the alter ego of O’Rourke”; reversed grant of JMOL that O’Rourke was personally liable for inducement of infringement and the award of lost profits damages associated therewith; affirmed grant of summary judgment that Macke is not the alter ego of O’Rourke

McKesson Information Solutions, Inc. v. Bridge Medical, Inc. (05/18/2007): appeal of dismissal of infringement suit after district court determined that the patent in suit was unenforceable due to inequitable conduct (affirmed); discussion of patent related to a patient identification system using bar codes on the patient and his or her medications (U.S. Patent No. 4,857,716, entitled “Patient identification and verification system and method”); district court found by clear and convincing evidence that during prosecution of the patent in suit, the applicant failed to disclose the existence of a patent cited in a related application, the rejections of broad related claims by another Examiner, and that the allowance of claims in a related patent were “material omissions done with an intent to deceive”; argument that undisclosed patent was cumulative because two other disclosed patent contained all of the elements was unpersuasive; totality of evidence established that withholding the prior art patent in this case was done with an intent to deceive the USPTO; rejections made by one examiner are deemed to be material if the rejected claims are “substantially similar” to the claims pending before another examiner, and failure to disclose prior rejections in this case was done with an intent to deceive; “ a notice of allowance in a co-pending application is material if the allowed claims could conceivably have given rise to a double patenting rejection”; no error found with the district court’s finding that the patent in suit is unenforceable due to inequitable conduct, so the decision was affirmed

May 22, 2007

On May 10th, the Hershey Co. filed a trademark infringement lawsuit against Kenneth Affolter two months after he was sentenced to nearly 6 years in prison for criminal acts related to his manufacture of marijuana-laced candy. According to the San Francisco Chronicle news article (link below), Affolter’s products, under the Beyond Bomb name, included Munchy Ways, Buaddahfingers, Puff-a-Mint Patties, Rasta Reese’s, Keef Kat, Toka-Cola, and Stoney Ranchers. This lawsuit, filed by Hershey and its trademark management subsidiary in the U.S. District Court for the Northern District of California, San Jose Division, alleges unfair competition and trademark dilution in addition to its trademark infringement claims, and seeks $100,000 in damages. In March of this year, Affolter was fined and sentenced to 70 months in prison for his role in manufacturing the marijuana-laced products. During a raid of a number of warehouses, officials obtained nearly $200,000 in cash, nearly 30,000 growing marijuana plants, and a small stash of weapons. The initial raid occurred in March of 2006, and as shown in The Smoking Gun article (link below, with several product images), additional marijuana-laced products, including 3 Rastateers, Tri-Chrome Crunch, and Twixed candies, four flavors of Pot Tarts, and a line of “Jones’n” sodas (including Puffsi (Pepsi), Joint (Jolt), Bong’s (Barq’s), and Chronic (Crush)) were also being manufactured and distributed by the drug ring Affolter was involved in. According to the York Dispatch news article (link below), Affolter is attempting to reach a settlement with Hershey.

San Francisco Chronicle News Article: LINK
York Dispatch News Article: LINK
The Smoking Gun Article: LINK

May 21, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the first two patent cases that were appealed from the district court level and decided by the Federal Circuit during the 20th calendar week of 2007. All opinions are precedential unless otherwise indicated.

General Mills, Inc. v. Kraft Foods Global, Inc. (05/16/2007): appeal of final judgment dismissing patent infringement claims as being barred by covenant not to sue granted to defendant’s predecessor-in-interest and cross-appeal challenging the decision to treat the counterclaim as abandoned after plaintiff’s filing of an amended complaint (both affirmed); discussion of two patent related to rolled fruit items (U.S. Patent No. 5,284,667, entitled “Rolled Food Item Fabricating Methods,” and U.S. Patent No. 5,723,163, entitled “Rolled Food Item”); patentee sued predecessor-in-interest (Farley) for patent infringement, which was eventually settled, and Kraft subsequently succeeded Farley’s business interests; Kraft the sold its assets in the Farley business to Catterton Partners in 2002, and sold the remainder of its rolled food business to Kellogg in 2005; current lawsuit addresses infringement by Kraft between the Catterton and Kellogg transactions; settlement agreement construed under state law instead of federal law; “no basis for concluding that Kraft’s rights under the agreement were terminated by operation of law at the time of the Catterton transaction; Kraft entitled to protection of Farley’s covenant not to sue at least until the Kellogg transaction, which was the time the allegedly infringing activities ceased; Kraft deemed to have abandoned its counterclaim because it did not “file an answer and counterclaim or take any such other action as may have been permitted to protect its interests”

Hildebrand v. Steck Manufacturing Company, Inc., et al. (05/17/2007, non-precedential): appeal of judgment based on jury verdict for non-willful patent infringement and cross-appeal from District Court’s refusal to rule as a matter of law that the patent-in-suit was anticipated and obvious in light of the prior art (affirmed); discussion of patent related to a removal device adapted for the removal of difficult to remove threaded connecting devices (U.S. Patent No. 5,737,981, entitled “Removal device for threaded connecting devices”); patent-in-suit not anticipated by single patent references as the prior art patent discloses a device to screw in bolts and the patent-in-suit discloses a device to remove bolts; defendant did not carry the burden to convince the jury by clear and convincing evidence that the patent-in-suit was obvious; this is short and fact-specific non-precedential opinion

May 17, 2007

As argued in her brief to the U.S. Court of Appeals for the Ninth Circuit, Denice Halicki contends that her trademarks to the original movie “Gone in 60 Seconds” and the “star” car of the movie (“Eleanor”) extend to the 2000 version of “Gone in 60 Seconds” and that Carroll Shelby and Unique Performance infringe her copyrights and trademarks. This appeal comes after the U.S. District Court for the Central District of California in Los Angeles granted summary judgment against Halicki in 2005, and according to The Auto Channel article (link below), summary judgment was granted even though Halicki has maintained common law trademark rights for 33 years, and that she, and not Disney (the producer of the 2000 movie remake), maintained rights in the “Eleanor” mark via agreement with Disney. Shelby and Unique Performance, the defendants in the original suit, obtained summary judgment in their favor in part by arguing that Halicki lacked standing, and that Disney, and not Halicki, owned rights to the “Eleanor” trademark. Halicki currently runs a website (gonein60seconds.com, link below) to sell related merchandise, and Shelby has teamed with Unique Performance to sell Shelby G.T. 500E replica vehicles on the unique performance website (link below). The Carroll Hall Shelby Trust owns U.S. Trademark Reg. No. 2,837,333 for “Eleanor” in IC 012 (US 019, 021, 023, 031, 035 and 044) for “VEHICLES, NAMELY, AUTOMOBILES, ENGINES FOR AUTOMOBILES, AND STRUCTURAL PARTS FOR AUTOMOBILES.”

The Auto Channel Article: LINK
Gonein60seconds.com Website: LINK
Unique Performance Website: LINK
U.S. Trademark Reg. No. 2,837,333: LINK

May 16, 2007

It was recently announced that the U.S. Department of Justice will be forwarding proposed legislation to Congress to increase the penalties related to intellectual property piracy. This legislation, called the Intellectual Property Protection Act of 2007, includes several changes to IP piracy penalties, including:

- increasing the maximum prison term for counterfeiting offenses resulting in physical harm from 10 to 20 years;

- stronger penalties for repeat copyright piracy offenders; and

- forfeiting all profits related to piracy operations, including the property and equipment used during the production of counterfeit goods.

According to the Bureau of National Affairs news article (link below, subscription required), U.S. Attorney General Alberto Gonzales was quoted as saying that it is “clear that this administration cares very much about the protection of intellectual property” and that “[w]e have dedicated more resources than ever before” regarding the protection of U.S. intellectual property rights. The E-commerce Times News Network article (link below) also references the inclusion of the crime of an “attempt” to commit an intellectual property crime in the Act. This crime of “attempt”, along with others not listed above, are discussed in the CNET Networks article (link below).

Bureau of National Affairs News Article: LINK
U.S. Department of Justice Press Release: LINK
ECT News Network Article: LINK
Transcript of May 14 Comments by Alberto Gonzales: LINK
CNET Networks Article: LINK

May 15, 2007

According to the CNET.com news article (link below), a recently published Apple patent application may have shed some light as to the next generation iPhone. The original iPhone, set to hit the market next month using AT&T/Cingular service, is a handheld device with a relatively large screen and no keyboard. Apple’s U.S. Patent Application Publication No. US2007/0103454, entitled “Back-Side Interface for Hand-Held Devices,” was published last Thursday and includes 32 claims on a hand-held electronic device and methods for operating the same. The application discloses a hand-held device with two surfaces, having “a force-sensitive touch-surface is provided on a first or back-side surface of the device through which a user provides input (e.g., cursor manipulation and control element selection/activation)” and on “a second or front-side surface, a display element is used to present one or more control elements and a cursor that is controlled through manipulation of the back-side touch-surface.” The drawings show several embodiments of the device, including those having a click-wheel (as on the iPod), a number pad, and a keyboard (with the keys in alphabetical order). The figures can be seen in the application itself, with some being reproduced in the Unwired View article (link below).

CNET.com News Article: LINK
U.S. Patent Application Publication No. US2007/0103454: LINK
Unwired View Article: LINK
CNET Apple iPhone Review: LINK

May 14, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the sole patent case that was appealed from the district court level and decided by the Federal Circuit during the 19th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., et al. (05/09/2007): appeal of judgment of noninfringement and invalidity of claim of patent-in-suit (affirmed); discussion of patent related to a learning device to help young children read phonetically (U.S. Patent No. 5,813,861, entitled “Talking phonics interactive learning device”); no clear error in the district court’s application of the claim to the essentially undisputed facts of this case (pertaining to noninfringement); “[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not” (quote from KSR v. Teleflex, cited); claim invalid as obvious in view of the combination of a prior art patent, a known device, and the knowledge of one of ordinary skill in the art concerning readers

May 11, 2007

It was recently announced that Kentucky Fried Chicken (Great Britain) Limited has filed suit against a pub in Northern England alleging infringement of its "Family Feast" trademark. The alleged infringer is the Tan Hill Inn, and according to the Yahoo! News article (link below), the Inn is knows as being England’s highest pub at roughly 1/3 of a mile above sea level. According to the article, the KFC "Family Feast" comprises fried chicken, fries, coleslaw, potatoes and gravy, and a soft drink within a cardboard box, and according to the Times Online article (link below), Tan Hill Inn’s "Family Feast" comprises "paté, turkey, roast beef and the trimmings." Tracy Daly, a manager at the Tan Hill Inn, noted that "[w]e do have chicken and chips with a salad on the menu, but we use local free-range birds — no coating, no secret spices. I could understand if we had set put to rip off what they do, but this is worlds away." KFC has two registered trademarks in the UK for "Family Feast," namely Trade Mark No. 1570878 (registered on August 11, 1995), and Trade Mark No. 2338376 (registered on February 2, 2004).

Yahoo! News Article: LINK
Times Online News Article: LINK
UK Trade Mark No. 1570878: LINK
UK Trade Mark No. 2338376: LINK
Tan Hill Inn Website: LINK
KFC (UK) Website: LINK

May 10, 2007

On Tuesday, the USPTO issued a press release regarding Margaret J.A. Peterlin and a meeting announcement regarding the forthcoming Business Methods Partnership Meeting.

First, the USPTO announced that Margaret J.A. Peterlin was named Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO. Peterlin was appointed by Carlos Gutierrez, the Secretary of Commerce, and was sworn in by Jon Dudas, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Peterlin, a law graduate of the University of Chicago, has held a number of positions within the U.S. Government and otherwise, including communications work with the U.S. Navy, clerking on the Fifth Circuit Court of Appeals, as General Counsel to Richard Armey (the U.S. House of Representatives Majority Leader), and as a Security Advisor to J. Dennis Hastert, the Speaker of the U.S. House of Representatives.

Second, the USPTO announced its 2007 Business Methods Partnership Meeting to be held on June 19th in the Madison Auditorium (South) at the USPTO. This meeting, which will be open to the public, will include discussions on patentable subject matter eligibility (under 35 U.S.C. § 101) and other topics relating to business methods. Specific requests to attend this meeting are encouraged and can be submitted by fax or e-mail to the number and e-mail address provided in the link below. A formal agenda has not yet been announced, but questions regarding the meeting can be forward to Jeff Smith at the e-mail address provided in the announcement.

USPTO Press Release – Peterlin: LINK
USPTO Meeting Announcement – Business Methods: LINK

May 08, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 18th calendar week of 2007. All opinions are precedential unless otherwise indicated.

E-Pass Technologies v. Microsoft Corporation, et al. (05/02/2007, non-precedential): appeal of summary judgment of noninfringement by both defendants, finding no direct or indirect infringement (affirmed); discussion of patent related to a method and device for storing information from various sources, such as credit cards, on one multi function card. (U.S. Patent No. 5,276,311, entitled “Method and device for simplifying the use of a plurality of credit cards, or the like”); challenge of claim construction as being improper at the district court level; Sometimes claim construction “involves little more than the application of the widely accepted meaning of commonly understood words”; comparison of plaintiff’s construction for one claim to the same construction in other claims would result in multiple meanings of the same claim term (fact-specific case)

Foremost in Packaging Systems (Doing Business as Envirocooler) v. Cold Chain Technologies (05/02/2007): appeal of claim construction and ruling of noninfringement (affirmed); discussion of patent related to insulated shipping containers designed to carry items such as pharmaceuticals and human tissue (U.S. Patent No. 5,924,302, entitled “Insulated shipping container”); discussion of the claim term “slidingly engage”; no literal infringement shown, and in this particular case, infringement under the doctrine of equivalents cannot be invoked (fact-specific case)

Syngenta Seeds v. Monsanto Company, et al. (05/03/2007): appeal of determination of no infringement as a matter of law regarding two patents, but that claims of a third patent were infringed but invalid (affirmed); discussion of three patents related to a transgenic corn plant modified to produce and insecticidal protein (U.S. Patent Nos. 6,075,185 and 6,320,100, both entitled “Synthetic DNA sequence having enhanced insecticidal activity in maize,” and 6,403,865, entitled “Method of producing transgenic maize using direct transformation of commercially important genotypes”); discussion of invalidity of patent for obviousness based on prior art published patent application disclosure; “[w]hether there was a reasonable expectation of success is a question of fact,” and “[w]hether the degree of success is unexpected in light of suggestions in the prior art is a factual question”; discussion of claim construction led to the application of the doctrine of waiver; [t]he doctrine of waiver precludes a party from advocating a new theory of claim constriction on appeal,” and because the plaintiff never raised its present proposed construction before the district court, its proposed construction was waived

May 07, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the three patent cases that were appealed from the district court level and decided by the Federal Circuit during the 17th calendar week of 2007. All opinions are precedential unless otherwise indicated.

In re Omeprazole Patent Litigation (04/23/2007): appeal of two phases of a four-phase patent infringement trial of literal infringement of several claims of the patent at issue, additional judgments regarding enforceability of the patent, and the determination by the district court that the asserted claims of the patent at issue were anticipated or obvious (affirmed); discussion of patent related to Omeprazole (the generic name for Prilosec® (U.S. Patent No. 6,013,281, entitled “Method of making a pharmaceutical dosage form comprising a proton pump inhibitor”); “infringement analysis proceeds as a two-step process: claim construction, followed by comparison of the claims to the accused device”; discussion of the claim phrase “a water soluble salt”; no error of district court’s claim construction or determination of infringement; discussion of anticipation of patent, noting that “[E]mbodiments and examples appearing in the specification will not generally be read into the claims”; refusal to read “limitation” into the claim 1 of the patent at issue because it was an example from the specification and there was no “clear intent to the contrary” to direct the court to import that example into the claims; district court’s determination of inherent anticipation upheld; determination that it would have been obvious to one skilled in the art to substitute any number of alkaline reacting compounds (ARCs) for the claimed ARC; discussion of inequitable conduct and unclean hands, noting that the challenger of the patent “bears the burden of proving by clear and convincing evidence that [the patentee] acted with unclean hands”; court affirmed findings of literal infringement, anticipation and obviousness of specific claims, the conclusion of mootness of counterclaims, that there was no inequitable conduct, fraud, or unclean hands, and that two of Astra’s other patents are not unenforceable through “infectious unenforceability” (because no finding of inequitable conduct of the first patent)

Verizon Services Corp., et al. v. Vonage Holdings Corp., et al. (ORDER) (04/25/2007): motion for stay, pending appeal, by Vonage of the permanent injunction issued against it by the U.S. District Court for the Eastern District of Virginia; grant of motion to stay, with briefing and oral argument deadlines provided

Pods, Inc. v. Porta Stor, Inc., et al. (04/27/2007): appeal of judgment of patent infringement and copyright infringement (affirmed-in-part, reversed-in-part, and remanded-in-part); discussion of patent related to an apparatus and method for lifting a storage container from the ground onto a transport vehicle or vice versa (U.S. Patent No. 6,071,062, entitled “Apparatus for lifting, handling, and transporting a container”); jurisdiction to hear appeal as case falls under Federal Rule of Appellate Procedure 4(a)(2); “[A]rguments made during prosecution regarding the meaning of a claim term are relevant to the interpretation of that term in every claim of the patent absent a clear indication to the contrary”; district court found infringement by equivalents of two of the claims, but this court noted that “prosecution history estoppel limits the range of equivalents available to a patentee by preventing recapture of subject matter surrendered during prosecution of the patent”; discussion of ownership of a copyright and “works made for hire”; determination that the district court’s claim construction was incorrect, that no literal infringement could occur under the correct construction, infringement under the doctrine of equivalents barred by prosecution history estoppel, and a reversal of the judgment as a matter of law on copyright infringement

May 03, 2007

In a press release from Tuesday, the USPTO announced that use of its web-based filing system (EFS-Web) exceeded expectations set for its first year of use. Since its inception, over 700,000 documents have been filed using EFS-Web, and was noted that “for the first time in USPTO's history, more new patent applications are being filed electronically each week than through the traditional paper application process.” Several individuals with various interests in intellectual property protection, including the Under Secretary of Commerce for Intellectual Property and Director of the USPTO (Jon Dudas), a Senior Vice President for Motorola (Jonathan Meyer), the Director of Practice Systems for Fish & Richardson (Rolf Hille), and the President of CogniTek Management Systems (Michael Gurin, also an inventor), provided their own positive comments regarding EFS-Web in the USPTO press release (link below). According to the USPTO, “[t]he shift from a paper-based system to an electronic environment offers several advantages for patent filers,” including being able to “file applications and related documents virtually anytime and anywhere” using files in PDF format, further noting the additional advantage of the “practical flexibility to the intellectual property community by allowing staff to file documents prepared and reviewed by patent attorneys.” Once documents are filed through EFS-Web, they become available through the Patent Application Information Retrieval (PAIR) system, allowing filers to “view their submissions online and confirm that documents have been securely and accurately received.” EFS-Web was launched in March of 2006 after a successful pilot program involving the USPTO and numerous inventors, companies and law firms.

USPTO Press Release: LINK
Public PAIR at the USPTO: LINK
USPTO EFS-Web Help and Tutorial Webpage: LINK
USPTO Patent Electronic Business Center Webpage: LINK

May 01, 2007

I will periodically post case citations from the Federal Circuit along with the date of the opinion/order and a brief list of the legal topics discussed therein (specifically those with additional embedded case law citations). My goal is to post new cases on a weekly basis. This posting covers the two patent cases that were appealed from the district court level and decided by the Federal Circuit during the 16th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Intamin, LTD. v. Magnetar Technologies, Corp. (04/18/2007) (erratum from 04/19/2007: LINK): appeal of district court ruling of non-infringement and the vacation of a prior award of Rule 11 sanctions (affirmed-in-part, vacated-in-part, and remanded); discussion of patent related to a magnetic braking system for amusement park rides (U.S. Patent No. 6,062,350, entitled “Braking system for an amusement device”); district court granted summary judgment of non-infringement because several limitations were absent in the defendant’s device; “dependent claims can supply additional context for construing the scope of the independent claims associated with those dependent claims”; remanded for review of claim construction and determination of non-infringement; “[a] patentee may draft different claims to cover different embodiments”; remanded for determination of infringement, either literally or under the doctrine of equivalents; plaintiff’s pre-filing inquiry was reasonable (and thus not subject to Rule 11 sanctions) under the circumstances by reviewing documents pertaining to defendant’s devices, inspecting the devices as installed, taking photographs of the devices, and reviewing the devices with experts

Advanced Technology Materials, Inc. v. Praxair, Inc. (04/19/2007, non-precedential): appeal of grant of summary judgment of invalidity for obviousness (affirmed); discussion of two patents related to containers for storing and dispensing pressurized gases for use in the manufacture of semiconductors (U.S. Patent Nos. 6,101,816, entitled “Fluid storage and dispensing system,” and 6,343,476, entitled “Gas storage and dispensing system comprising regulator interiorly disposed in fluid containment vessel and adjustable in situ therein”); defendant asserted invalidity based on four prior art patents, and the district court determined that the asserted patents were invalid for obviousness (anticipation was not addressed); “[u]nder certain circumstances, an expert’s opinion may illuminate disputes of fact, thus requiring a trial”; defendants presented an expert report to dispute what was taught by the prior art, but the appellate court stated that “the report lacks the detail necessary to avoid summary judgment” and that the defendant’s expert “lacked logical continuity, leaving only a conclusory record to oppose summary judgment f obviousness”; district court decision affirmed because the decision was “well supported by the record” and “no issues of material fact remain”

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The DDIP Author





Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

Click HERE to view my full professional bio at Reichel IP LLC.


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