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 29th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Automed Technologies, Inc. v. Microfil, LLC, et al. (07/16/2007, nonprecedential): appeal of summary judgment of non-infringement of two patents-in-suit and award of nominal damages for previously adjudicated breach of contract claim (affirmed-in-part, vacated-in-part, and remanded); discussion of two patents related to a system for automatically dispensing drugs (U.S. Patent Nos. 6,449,927 and 6,742,671, both entitled “Integrated automated drug dispenser method and apparatus”); “the same term or phrase should be interpreted consistently where it appears in claims of common ancestry”; dictionary definitions cannot be used to “contradict any definition found in or ascertained by a reading of the patent documents”; “[T]hat a device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement”; “If a party proves that it has the right to damages but fails to provide a proper basis for computing those damages, only nominal damages may be awarded”; affirmed-in-part because one of the accused products lacked a “vibratory dispenser” and because the patentee failed to provide a proper basis for calculating damages beyond the nominal award; vacated-in-part and remanded for further proceedings consistent with the opinion

Benitec Australia, LTD. v. Nucleonics, Inc. (07/20/2007): appeal of judgment of dismissal for lack of subject matter jurisdiction on declaratory judgment counterclaims against patentee (affirmed); discussion of patent related to RNA-based disease therapy (U.S. Patent No. 6,573,099, entitled “Genetic constructs for delaying or repressing the expression of a target gene”); a party seeking to base jurisdiction on the Declaratory Judgment Act bears the burden of proving that the facts alleged, “under all the circumstances, show that there is a substantial controversy, between the parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment”; “[t]he burden is on the party claiming declaratory judgment jurisdiction to establish that such jurisdiction existed at the time the claim for declaratory relief was filed and that it has continued since”; the fact that the defendant may file an NDA in a few years does not provide the immediacy and reality required for a declaratory judgment; judgment of dismissal for lack of jurisdiction affirmed because defendant has not made a showing of “sufficient immediacy and reality” to support declaratory judgment jurisdiction

Colida v. Nokia America Corp. (order) (07/20/2007, nonprecedential): Nokia moved to dismiss Colida’s appeal and also moves for sanctions, which is opposed; Colida sued Nokia for infringement of his design patent, for which Nokia motion for dismissal was assigned to a magistrate judge, who recommended dismissal for failure to state a claim upon which relief could be granted; magistrate offered ten days to file written objections, for which Colida failed to object; Colida’s failure to object acted as waiver; Nokia’s motion to dismiss granted and it’s other motions denied

In a brief press release this week, the USPTO announced that the review of the pending continuations and claims rule changes was completed by the OMB, and that “[t]he final rules will be made public when they are published in the Federal Register, which is expected to be later this summer.”

The first rule change, entitled “Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims,” references in the abstract that “[t]he revised rules would require that second or subsequent continuation applications and second or subsequent requests for continued examination of an application include a showing as to why the amendment, argument, or evidence presented was not previously submitted,” which would “ease the burden of examining multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and common assignee by requiring that all patentably indistinct claims in such applications be submitted in a single application absent good and sufficient reason.”

The second rule change, entitled “Changes to Practice for the Examination of Claims in Patent Applications,” mentions in the abstract that “the Office amends the rules to provide that if an application contains more than 10 independent claims, the applicant must provide a patentability report that covers all of the independent claims in the application,” and that “the Office amends the rules to provide that the Office will give a separate examination only to those dependent claims expressly elected for separate examination, and that the applicant must provide a patentability report that covers all of the independent claims and elected dependent claims in the application if the number of independent claims plus the number of dependent claims elected for examination is greater than 10.”

Common to both abstracts is a statement that the rule changes would mean “faster, more effective examination for the typical applicant without any additional work on the applicant's part, but a small minority of applicants who consume a disproportionate share of agency resources will be required to share the burden they place on the Agency.” Links to the RegInfo.gov web pages for both rule change references are provided below. According to the USPTO, these rules are expected to become effective sometime after October 1, 2007.

USPTO Press Release: LINK
Continuations Rule Change Reference: LINK
Claims Rule Change Reference: LINK

According to the CNET News Article (link below), the owner of the now-disabled Allofmp3.com website is facing criminal charges related to his “massive” copyright infringement. Charges have been filed against Denis Kvasov, who ran the mp3 file website up until the Russian government shut it down at the request and urging of U.S. trade officials. According to the article, the Recording Industry Association of America (RIAA) had “long targeted the site,” which may have been reborn as a second mp3 website run by the same operators as Allofmp3.com. The prosecutor in the case is seeking $590,000 in restitution and three years in prison as punishment for Kvasov’s copyright infringement. According to the ars technica article (link below), there are at least two other websites offering illegal mp3s owned by the same people backing the shuttered website, noting further that “[w]hatever else the operators of AllOfMP3 may be, they are certainly tenacious; each time steps are taken against them, they find some way to keep going.” This quote is in relation to the recent ruling that attempts to stop some credit card payments to the website were deemed improper by a Russian court, allowing Allofmp3 to continue to receive credit card revenues prior to being disabled.

According to the ars technica article (link below), an amendment is being planned to the Higher Education Reauthorization Act in an attempt to curb illegal file sharing. The amendment (Senate Bill 1642), according to the article, could have the effect of “hold[ing] educational funds hostage for US colleges and universities that do not meet a set of criteria meant to bolster the war on file-sharing on college campuses.” Specifically, the bill would “blacklist” the top 25 college/university campuses involved in illegal file sharing and will place them on probation until they enact specific anti-P2P technology to reduce such piracy. It is specifically noted within the article that raw data will be used as the measure and not the percentage of students involved in illegal file sharing, so the very large campuses are more likely to be “blacklisted” by this measure than the smaller campuses. This legislation is being introduced by Senator Harry Reid, and according to the Inside Higher Ed article (link below), the “Reid plan” would require colleges to report policies instituted related to illegal file sharing on an annual basis to the U.S. Education Department, continuously review internal policies and procedures to ensure their effectiveness, and to “provide evidence to the U.S. Education Department that the affected colleges and universities have “developed a plan for implementing a technology-based deterrent to prevent the illegal downloading or peer-to-peer distribution of intellectual property.”

ars technica Article: LINK
Inside Higher Ed Article: LINK
Senate Bill 1642 (as Introduced in the Senate): LINK
Senate Bill 1642 (as Reported by the Senate): LINK

The USPTO recently announced on its website (link below) that it will be hosting three intellectual property seminars on piracy next month. These seminars, co-hosted with the U.S. Chamber of Commerce, will occur in Seattle, WA, Burlington, VT, and Los Angeles/Long Beach, CA, and will feature speakers from the two host organizations, local industry, and local, state, and federal government officials. The Seattle seminar (hosted on August 10th) will feature Attorney General Rob McKenna, representatives from Microsoft Corporation and Flex-a-lite Consolidated. The Burlington seminar (hosted on August 17th) will feature Senator Patrick Leahy. The Los Angeles/Long Beach seminar (hosted on August 21st) is only one of four different counterfeiting and piracy seminars hosted that week, with additional seminars hosted in the area on August 20th, 22nd, and 23rd. All seminars will also feature at least one representative from each of the USPTO and the U.S. Chamber of Commerce. Links to registration websites for each seminar are provided below.

USPTO Announcement: LINK
Seattle Seminar Website: LINK
Burlington Seminar Website: LINK
Los Angeles/Long Beach Seminar Website: LINK

It was recently announced that Dailymotion.com, a user-posted video clip website based in France, was ordered to pay a fine in excess of $30,000 for copyright violations present on its website. According to the Forbes.com article (link below), the French court issuing the decision ordered Dailymotion to pay “a symbolic one euro to Christian Carion, the director of the film Joyeux Noel, as well as 23,000 euros to the film's distributors.” This dispute began when the film was first “discovered” on Dailymotion back in February, and although it was taken down upon request, it was subsequently re-uploaded by a user and re-removed by Dailymotion. According to the Forbes article, Catherine Mullen, the Executive Vice President of International Operations for Dailymotion, noted that the ruling categorized Dailymotion as a “hosting company” instead of a “publishing company,” and that this particular case “started well before the current implementation of an industry-leading set of anti-piracy tools for copyright owners which, we believe, goes well above and beyond what the court would expect of a hosting provider." Dailymotion.com does have a mechanism for copyright violation notifications (link below), stating in part that “Dailymotion does not permit copyright infringing activities and infringement of intellectual property rights on its Website, and will remove all Content if properly notified that such content infringes on another's intellectual property rights.”

Forbes.com Article: LINK
Dailymotion.com: LINK
Dailymotion’s Copyright Notification Webpage: LINK

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 28th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Pharmasterm Therapeutics, Inc. v. Viacell, Inc., et al. (07/09/2007): appeal of judgment as a matter of law (“JMOL”) orders on infringement and cross-appeal from the court’s refusal to grant JMOL on invalidity (judgment as to infringement issues affirmed, and with respect to the counterclaim of invalidity for obviousness, judgment reversed and the entry of judgment for the defendants directed); discussion of two patents related to stem cell isolation and preservation (U.S. Patent No. 5,004,681, entitled “Preservation of fetal and neonatal hematopoietic stem and progenitor cells of the blood”, and U.S. Patent No. 5,192,553, entitled “Isolation and preservation of fetal and neonatal hematopoietic stem and progenitor cells of the blood and methods of therapeutic use”); “[a] statement in the patent that something is in the prior art is binding on the applicant and patentee for determinations of anticipation and obviousness”; “[g]ranting patent protection to advances that would occur in the ordinary course without real innovation retards progress”; “simply because the formation and properties of a new compound must be verified through testing does not mean that the compound satisfies the test for patentability ‘since the expectation of success need only be reasonable, not absolute’”; “an invention would not be deemed obvious if all that was suggested “was to explore a new technology or general approach that seemed to be a promising field of experimentation, where the prior art gave only general guidance as to the particular form of the claimed invention or how to achieve it”; “[w]hen the party asserting invalidity relies on references that were considered during examination or reexamination, that party “bears the added burden of overcoming the deference that is due to a qualified government agency presumed to have done its job”; the judgment of the district court with respect to the appeal affirmed but the judgment on the cross-appeal with respect to the issue of obviousness reversed and remanded to the district court for entry of judgment in the defendants’ favor

Kramer v. Dudas (07/11/2007, non-precedential): appeal of final judgment by district court dismissing his complaint for failure to timely file (affirmed); plaintiff was entitled to appeal the USPTO’s final decision under 35 U.S.C. § 32, his complaint was properly construed as seeking relief under that section; discussion of regrade of patent bar examination; because complaint not filed within 30 days of the challenged USPTO action, the plaintiff’s petition was deemed untimely; equitable tolling was deemed unwarranted because plaintiff was not mislead or misinformed about deadlines for seeking judicial review

Daiichi Sankyo Co. v. Apotex (07/11/2007, non-precedential): appeal of judgment of infringement and that the patent-in-suit is not invalid or unenforceable (reversed); discussion of patent related to a method for treating bacterial ear infections (U.S. Patent No. 5,401,741, entitled “Topical preparation for treating otopathy”); the underlying factual inquiries in an obviousness analysis include: “(1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness”; “[f]actors that may be considered in determining level of ordinary skill in the art include: (1) the educational level of the inventor; (2) type of problems encountered in the art; (3) prior art solutions to those problems; (4) rapidity with which innovations are made; (5) sophistication of the technology; and (6) educational level of active workers in the field”; district court’s determination of the level of ordinary skill in the art was in error based on the facts of the case; determination that a reasonably jury, when presented with the specific prior art reference pertinent to the case, would have no other choice than to conclude that the teachings of the patent-in-suit would have been obvious; because the patent-in-suit would have been obvious in view of the prior art, the district court’s decision was reversed

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 an errata and the final patent case that was appealed from the district court level and decided by the Federal Circuit during the 27th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Omegaflex, Inc. v. Parker- Hannifin Corporation (errata) (07/03/2007, non-precedential): errata to make typographical corrections within the Omegaflex, Inc. v. Parker-Hannifin Corporation decision from June 18, 2007

Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co. (also known as SMC Corporation) (07/05/2007): this case raises the question of whether an equivalent is foreseeable within the meaning of Festo VIII and subject to surrender under the doctrine of prosecution history estoppel; discussion of patent related to a magnetically coupled arrangement operable by a pressure medium (U.S. Patent No. 4,354,125, entitled “Magnetically coupled arrangement for a driving and a driven member”); “[w]e disagree that the foreseeability test requires application of the function/way/result or insubstantial differences test” and “[r]ather, we find that an alternative is foreseeable if it is disclosed in the pertinent prior art in the field of the invention”; “[t]he theory of the doctrine of equivalents is that an applicant through the doctrine of equivalents should only be able to protect the scope of his invention … not to expand the protectable scope of the claimed invention to cover a new and unclaimed invention”; the Court concludes that “foreseeability does not require the applicant to be aware that a particular equivalent would satisfy the insubstantial differences test or the function/way/result test with respect to the claim as amended” and that SMC’s aluminum sleeve was a foreseeable alternative to Festo’s magnetizable sleeve and that prosecution history estoppel applies; District Court’s decision of no infringement of the patent-in-suit affirmed

On Thursday, the USPTO posted a transcript of its June 28, 2007 independent inventor online chat. Although many questions were repeated from prior online chats (like the differences between patents, trademarks, and copyrights, inquiries about locating patent attorneys, requests for information on invention promotion companies, etc.), a number of questions were answered that may be helpful to many independent inventors, including:

“What's the best way to research for a product idea that may already exist?”

“If money is sent with your invention to be patented, and it is already patented, do you get your money back?”

“I filed a provisional about two years ago. I am still working on funding. Can I file another provisional if I have not sold the idea in any form? I want to present it to some new people.”

“Is there a way to designate primary and secondary inventors, so that I may give credit to someone for helping, yet keep myself as the sole holder of intellectual property?”

The full transcript is provided in the first link below, while the second link provides additional links to the ten (10) earlier transcripts dating back to 2004.

June 28, 2007 Online Chat Transcript: LINK
USPTO Online Transcript Webpage: LINK
USPTO Online Transcript FAQ Webpage: LINK

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 27th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Honeywell International v. Universal Avionics Systems Corp. (07/03/2007): appeal of claim construction leading to a jury decision of infringement (affirmed); discussion of patent related to aircraft technology to warn pilots of hazardous flight conditions (U.S. Patent No. 4,914,436, entitled “Ground proximity approach warning system without landing flap input”); “[w]hen a patentee defines a claim term, the patentee’s definition governs, even if it is contrary to the conventional meaning of the term”; a claim term may be defined in a particular manner for purposes of a patent even “without an explicit statement of redefinition”; case-specific reasons for affirming the claim construction provided by the district court

Hutchins v. Zoll Medical Corporation (07/03/2007): appeal of summary judgment of non-infringement of patent and copyright (affirmed); discussion of patent related to an interactive computer-directed system for guiding emergency rescue personnel in conducting on-site administration of CPR. (U.S. Patent No. 5,913,685, entitled “CPR Computer Aiding”); summary judgment of non-infringement of patent because two claim terms not present in the defendant’s device; “an aspect expressly disavowed during prosecution of the patent cannot be reached under the doctrine of equivalents”; “a computer program, whether in object code or source code, is a 'literary work' and is protected from unauthorized copying, whether from its object or source code version”; "a text describing how to operate something would not extend copyright protection to the method of operation itself; other people would be free to employ that method and to describe it in their own words"

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 four patent cases that were appealed from the district court level and decided by the Federal Circuit during the 26th calendar week of 2007. All opinions are precedential unless otherwise indicated.

In re Star Scientific, Inc. (Order) (06/27/2007, non-precedential): petition for a writ of mandamus to direct the district court to issue a decision regarding patent unenforceability; district court entered orders granting summary judgment for invalidity due to indefiniteness; request to certify the invalidity determination for immediate appeal (because there was no final judgment) was denied; petition for writ of mandamus denied because Star Scientific has not shown “a clear abuse of discretion or that the district court has "obstinately refuse[d]" to adjudicate the matter” and because the district court recently stated a date certain upon which it expects to resolve the matter

Hyatt v. Dudas (06/28/2007): appeal of district court’s decision that compliance with MPEP § 2163.06(I)(B) is insufficient to establish a prima facie case and shift the burden to the applicant (reversed); discussion of several continuation applications, dating back to the 1970’s, all based on the same specification; during prosecution, the applicant withdrew all claims, submitted over 1,100 new claims, and the examiner rejected the claims under 35 U.S.C. § 112 because although each element of the claims had support in the specification, the configurations or combinations claimed had no support; examiner based the rejection on the procedure outlined in MPEP § 2163.06(I)(B); the applicant responded only to the adequacy of the examiner’s prima facie case and not the substance of the rejection; the MPEP “does not have the force of law,” but it “is made available to the public and . . . describe[s] procedures on which the public can rely”; “[a] statement of a prima facie case need not be a full exposition on every conceivable deficiency of a claim”; adequate written description means that, in the specification, the applicant must “convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention”; an examiner, by complying with MPEP § 2163.04(I)(B), sets forth a sufficient prima facie basis for a rejection due to lack of written description

Takeda Chemical Industries, LTD., et al. v. Alphapharm PTY., LTD., et al. (06/28/2007): appeal of decision that patent-in-suit was not invalid for obviousness (affirmed); discussion of patent related to antidiabetic compounds (U.S. Patent No. 4,687,777, entitled “Thiazolidinedione derivatives, useful as antidiabetic agents”); confirmation that the Graham factors “still control an obviousness inquiry” in view of KSR; “structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness”; detailed application of KSR; conclusion that the district court did not err in holding that Alphapharm failed to establish a prima facie case of obviousness; “one who claims a compound, per se, which is structurally similar to a prior art compound must rebut the presumed expectation that the structurally similar compounds have similar properties”; decision affirmed because the district court did not err in determining that the claimed compounds would not have been obvious in light of the prior art, and hence that the patent has not been shown to be invalid

Frazier, et al. v. Layne Christensen Company, et al. (06/29/2007, non-precedential): appeal of judgment as a matter of law that the asserted claims of the patent-in-suit are invalid for obviousness, and appeal by patentee of sanctions for discovery misconduct (both affirmed); discussion of patent related to stimulating, refurbishing, or otherwise increasing production from water wells (U.S. Patent No. 5,579,845, entitled “Method for improved water well production”); “[o]rdinarily, the steps of a method claim need not be performed in the order in which they are recited”; several patent-related and procedural reasons cited to support the court’s rejection the plaintiffs’ argument that the district court failed to refer to specific prior art references in support of the JMOL of obviousness

The Daily Dose of IP Blog will resume on Monday, July 9th. Have a safe and happy July 4th!

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 four patent cases that were appealed from the district court level and decided by the Federal Circuit during the 26th calendar week of 2007. All opinions are precedential unless otherwise indicated.

Microstrategy Incorporated v. Business Objects Americas (Successor by merger to Crystal Decisions, Inc.) (06/25/2007, non-precedential): appeal of grant of summary judgment of noninfringement of claims of one patent and summary judgment of invalidity of claims of two other patents (affirmed); discussion of three patents related to business intelligence software to assist users in making their business decisions (U.S. Patent No. 6,279,033, entitled “System and method for asynchronous control of report generation using a network interface”, U.S. Patent No. 6,567,796, entitled “System and method for management of an automatic OLAP report broadcast system”, and U.S. Patent No. 6,658,432, entitled “Method and system for providing business intelligence web content with reduced client-side processing”); technical reason (within the two claims of the ‘033 patent) for affirming noninfringement of that patent; a court can only correct an error in a patent if “(1) the correction is not subject to reasonable debate based on the consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims”; “[i]n the absence of any evidence to the contrary, [the Federal Circuit] must presume that the use of these different terms in the claims connotes different meanings”; example of the presence of an ambiguous claim term rendering the claims invalid; patentee failed to raise genuine issues of material fact regarding the invalidity arguments of two of its patents

Young v. Lumenis, Inc. (06/27/2007): appeal of judgment holding specific claims of patent at issue as being invalid as indefinite under 35 U.S.C. § 112, paragraph 2, and summary judgment that the patent is unenforceable for inequitable conduct. (both reversed); discussion of patent related to surgical methods for declawing cats (U.S. Patent No. 6,502,579, entitled “Laser onychectomy by resection of the redundant epithelium of the ungual crest”); the purpose of the definiteness requirement is to “ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude”; defendant did not prove by “clear and convincing evidence” that the claims are invalid for indefiniteness, noting that the claim language and the specification make clear that the claim term “near” has support within the specification; “[i]nequitable conduct includes affirmative misrepresentation of material fact, failure to disclose material information, or submission of false information coupled with an intent to deceive”; error in granting summary judgment of inequitable conduct as the office action response statements made were not misrepresentations of material fact and there was no failure to disclose information while the reexamination proceeding on the patent was still pending before the USPTO

The Saunders Group, Inc. v. Comfortrac, Inc., et al. (06/27/2007): appeal of grant of summary judgment of noninfringement on the ground that the devices did not have an element (a pressure activated seal) as required by the claims (reversed and remanded); discussion of patent related to cervical traction devices (U.S. Patent No. 6,899,690, entitled “Portable cervical traction device”); “[e]ven where a patent describes only a single embodiment, claims will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope”; “the doctrine of prosecution disclaimer generally does not apply when the claim term in the descendant patent uses different language”; summary judgment reversed because the district court’s claim construction was erroneous

Leggett & Platt, Incorporated, et al. v. VUTEk, Inc. (Order) (06/27/2007, non-precedential): motion pending to dismiss appeal for lack of final judgment, which has been opposed; initial suit was for infringement of one patent, with counterclaims for declaratory judgments of noninfringement and invalidity; district court granted summary judgment for invalidity of asserted claims but did not decide outstanding motions on infringement; request to certify (Fed. R. Civ. P. 54(b)) was denied; district court granted relief on counterclaim seeking declaratory judgment on invalidity, but stated no disposition on the remaining counterclaim; appeal dismissed because there is no final judgment on all claims for relief