The Year in Patent Litigation: A Review of Recent U.S. Patent Cases T.J. Cole [email protected] Patent Litigation Summit Indiana Continuing Legal Education.

The Year in Patent Litigation: A Review of

Recent U.S. Patent Cases

T.J. [email protected]

Patent Litigation SummitIndiana Continuing Legal Education Forum

November 19, 2009

Larson Manufacturing Co. v. Aluminart Products Ltd., 559 F.3d 1317 (Fed. Cir. 2009)

Inequitable Conductand the IDS

How much disclosureIs enough?


• Larson owns patent ‘998 with claims for retractable screen inserts movable in tracks located at sides of the door

• Larson sued Aluminart for infringement of its ‘998 patent

• Aluminart requested Reexamination of ‘998

• Meanwhile . . . Larson simultaneously prosecuting Continuation Application ‘039


‘039 Prosecution – Four office actions, third and fourth not disclosed to Reexam Panel– ‘039 prosecution: First Office Action– ‘998 Reexam IDS included ‘039 First Office Action– ‘039 Prosecution: Second Office Action– ‘998 Reexam Supplemental IDS included Second

Office Action– ‘998 Reexam Panel rejects all claims– ‘039 Prosecution: Third Office Action– ‘998 Reexam Some claims allowed– ‘039 Prosecution: Fourth Office Action

Tim

elin

e


• Inequitable conduct for failure to disclose Third and Fourth Office Actions during reexam?– Larson argued:

The Reexam Panel was aware of the ‘039 prosecution, thus constructive notice of the Third and Fourth Office Actions

It had disclosed each material reference disclosed in the office actions

The examiner’s rejections were only boilerplate reiterations of previous rejections


• Holding: – The Third and Fourth Office Actions were

material because they contained another examiner’s adverse decisions about substantially similar claims, and because they were not cumulative to the First and Second Office Actions.

– The three un-cited references were not material since they were cumulative of cited references

– Remanded to determine if there was deceptive intent.


• Third and Fourth Office Actions’ materiality:– Explained explicitly that a reference showed a

particular feature– Larson argued to the Reexam Panel that the

patent did not show that feature This argument was later conceded by the examiner.

– However, material because it contained valuable reasoning and rejections at the time when it was made (even though Larson’s argument was later conceded by the examiner)


• Concurrence by J. Linn– Prime example of inequitable conduct plague– Problem: ease with which inequitable conduct

can be pled, but not dismissed– Deceptive intent test falls short of the standard

needed to strictly enforce the burden of proof and elevated standard of proof in inequitable conduct cases

– The time has come for the court to review the issue en banc

Eqyptian Goddess, Inc. v. Swisa, Inc.,543 F.3d 665 (Fed. Cir. 2008)

• Changed standard for design patent infringement

• Prior standard = – Ordinary observer test + points of novelty

• New standard = – Ordinary observer test, in light of prior art

Points of Novelty test


Controversy: Nail buffer designs

Patented Design (3 buffer sides)

Infringing Design (4 buffer sides)

Prior ArtPatented Design (3 buffer sides)

Infringing Design (4 buffer sides)

Prior Art


• District court– Applied ordinary observer test + points of novelty

No infringement. – Point of novelty of Swisa’s design addition of

a fourth side without a pad• Federal Circuit

– Affirmed, applying new infringement standard. – Although pro-defendant, the decision articulates

a clear test for infringement making it easier for a patent holder to prove infringement


• New design patent infringement standard: – No infringement unless the accused article

embodies the patented design or any colorable imitation thereof as viewed from the eye of the ordinary observer.

– When not clearly dissimilar, requires a three-way side-by-side comparison of both articles and the prior art.

– The burden of production of comparison prior art rests on the accused infringer.


District court described in words the design shown figuratively in the patent:

“A hollow tubular frame of generally square cross section, where the square has sides of length S, the frame has a length of approximately 3S, and the frame has a thickness of approximately T = 0.1S; the corners of the cross section are rounded, with the outer corner of the cross section rounded on a 90 degree radius of approximately 1.25T, and the inner corner of the cross section rounded on a 90 degree radius of approximately 0.25T; and with rectangular abrasive pads of thickness T affixed to three of the sides of the frame, covering the flat portion of the sides while leaving the curved radius uncovered, with the fourth side of the frame bare.”


• Federal Circuit on claim construction:– Detailed verbal description not necessary for

design patent infringement litigation and should not be attempted

– An illustration better represents the design than can any written description

– Alternative options to guide the fact-finder: Conventions of design patent claim drafting Prosecution history Distinguish ornamental features from purely

functional features

Titan Tire Corp. v. Case New Holland, Inc.,2008-1078 (Fed Cir. 2009)

Preliminary InjunctionsAnd Obviousness

in

Design Patent Law


• Design Patent ‘862 claims a design for a tractor tire.

• Titan motioned for preliminary injunction to prevent Case from selling backhoes with infringing tires.

• District Court: Likely to succeed showing infringement, but not likely to withstand Case’s challenge to validity on obviousness grounds


• Holding: – No abuse of discretion in concluding Titan not

likely to withstand Case’s validity challenge

Alleged infringing design


• Standard for preliminary relief – Evidentiary burdens track the burdens at trial– If patentee cannot show that each of the

infringers invalidity defenses lack substantial merit not likely to succeed

– Thus, trial court, after considering early evidence, must determine whether it is more likely than not that the challenger can prove invalidity at trial


• Obviousness and Design Patents– Section 103(a) applies whether the designer of

ordinary skill would have combined teachings of the prior art to create the same overall visual appearance

1st – find primary reference w/characteristics similar to the claimed design

2nd – find a number of secondary references to modify the primary reference creating the overall visual appearance of the claimed design


• Obviousness and Design Patents

– Trial court’s failure to specify a primary design was not fatal to the court’s decision

– Similar to old “points of novelty” test used for infringement (focus on individual features rather than overall appearance)

– Declined to comment on whether obviousness test should be conformed to Egyptian Goddess infringement test


KSR and design patents?

“It is not obvious that the Supreme Court necessarily intended to exclude design patents from the reach of KSR.”

– issue decided without KSR, – left open the possibility of applying KSR to

design patent obviousness analyses in the future

Every Penny Counts, Inc. v. American Express Co.,No. 2008-1434 (Fed. Cir. 2009)

Claim Construction


• EPC has a patented method for donating “excess cash” to charities and savings account

• “Excess cash” is the change left over when an item is purchased after rounding to the nearest dollar

• Ex: Sale of $0.59 results in $0.41 excess cash when paid for with $1.00

http://www1.istockphoto.com/file_thumbview_approve/2992953/2/istockphoto_2992953_lincoln_penny_2007_on_white_background.jpg


• Markman hearing: – “Excess cash” = an “amount selected by the

payor beyond the total amount due at the point of sale.”

• EPC alleges: – Gift cards infringe its patents because they

involve a means of “loading value onto accounts at a point-of-sale terminal.”


• Held: no infringement.– Primary basis for construing the claims is the

patent specification

– The spec repeatedly described the patent as a method “for conveniently and frequently donating to qualified charities and savings or other accounts”

Revolution Eyewear, Inc. v. Aspex Eyewear, Inc.,563 F.3d 1358 (Fed Cir. 2009)

Pointing Out the Problem to be Solved

or

Objects of the Invention


• Spectacle frame that supports an auxiliary frame (e.g. sunglasses lenses)

• Claimed in ‘545 reissue of ‘207

• Owner: Apex• Infringer: Revolution


Two problems to be solved in the ‘545 spec:

1. “stable support” issue – Magnetic attachment means creates a tendency for the secondary lenses to move during jogging or jumping

2. “decreased strength” problem – Original designs embedded magnetic material in the frames, reducing the amount of structural support material


Revolution argued claim invalid for violating the written description requirement under 35 U.S.C. § 112


• Holding: – When the specification sets out two

different problems in the prior art, it is unnecessary for each and every claim in the patent to address both problems.

– The claim at issue addresses the “decreased strength” issue, so §112 satisfied

– But is it necessary to even set out the problems in prior art?

Felix v. American Honda Motor Co.,562 F.3d 1167 (Fed. Cir. 2009)

Narrowing Amendment

and

Prosecution History Estoppel


• Felix owns patent ‘625 and sued Honda– Trunk-like arrangement with hinged lid in the

back of a pickup truck

• Claim 6 includes: – “a weathertight gasket mounted on said

flange and engaging said lid in its closed position”

• Honda’s design places the gasket on the lid itself


Gasket

‘625 Patent Honda’s design


Federal Circuit: No literal infringement

• “Mounted” = securely affixed or fastened to• “Engaging” = coming together and

interlocking

Honda’s gasket is not “securely affixed or fastened to” any flange. Rather it is attached to the lid.


Felix: Doctrine of equivalents!Federal Circuit: No DOE because of PHE

• Canceled claim 1 and rewrote claim 7 as independent claim 14, including gasket limitation

• Claim 14 was never allowed• Patent claim 6 contains all of the limitations of

original dep. claim 8 (which was originally indicated to be allowable)

• The adding of the gasket limitation in the claim 14 amendment creates estoppel for that limitation in any other claim.


PHE attaches even if the amendment alone does not result in allowance

“It is the patentee's response to a rejection—not the examiner's ultimate allowance of a claim—that gives rise to prosecution history estoppel “

“We leave open the question of whether the presumption of surrender would have attached as to the gasket limitation if, in response to the first office action, Felix had cancelled both claim 1 and claim 7, and had rewritten claim 8 in independent form, instead of attempting to secure the broader coverage of rewritten claim 7 as an intermediate step.”

Does this place form over substance?

Aristocrat Tech. v. Int'l Game Tech., 543 F.3d 657 (Fed. Cir. 2008)

Improper Revival by PTO

As

Defense to Infringement


Prosecution Timeline:July 8, 1997 & September 9, 1997 Australian Provisional Applications filed

July 8, 1998 PCT/AU98/00525 filed claiming priority to Australian apps

January 10, 2000 (Monday)

30 month nationalization deadline § 371 national stage paperwork apparently submitted by this date

January 11, 2000 filing fee submitted one day late

June 13, 2000Notice of Abandonment mailed w/note that Applicants may consider filing petition to revive under Rule 137

September 15, 2000 Petition to Correct Date-In submitted

June 5, 2001 PTO mailed denial of Petition to Correct Date-In

July 18, 2002 Aristocrat filed Petition to Revive under Rule 137(b) note: > 6 mo after PTO denial of Petition to Correct Date-In

September 2, 2002 Petition to Revive granted


Filed a petition to revive as “unintentional,” but

§ 371: Title: “National stage: Commencement”“(d) ...Failure to comply with these requirements shall be regarded as abandonment of the application by the parties thereof, unless it be shown to the satisfaction of the Director that such failure to comply was unavoidable.” (Emphasis added).


• Federal Circuit:– 35 U.S.C. §282 spells out the defenses for

patent infringement and this is not one of them (only §§101, 102 & 103 for invalidity)

– “Procedural lapses during examination, should they occur, do not provide grounds of invalidity. Absent proof of inequitable conduct, the examiner’s or the applicant’s absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued.”


• Federal Circuit's Rationale:“If any prosecution irregularity or

procedural lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper. This deluge would only detract focus from the important legal issues to be resolved—primarily, infringement and invalidity.”

Prometheus Lab’s, Inc. v. Mayo Collaborative Serv’s,2008-1403 (Fed. Cir. 2009)

• Federal Circuit applies Bilski, even as the Supreme Court considers the fate of Bilski

• Bilski test:A claimed process is surely patent-eligible under § 101 if:

It is tied to a particular machine or apparatus, or It transforms a particular article into a different state or

thing In most cases mere data-gathering is not transformation

of any article


• Claimed methods for calibrating the proper dosage of thiopurine drugs

• Two claimed steps:

“Administering” a drug to a subject, and

“Determining” the levels of the drug’s metabolites in the subject.

Held: – Drug administration necessarily results in a

transformation of the human body – The determining step is transformative

because it requires some manipulation more than mere inspection

– The transformation is an “integral" part of recited calibration method, therefore patentable subject matter

• Court distinguished diagnosis claims merely requiring data gathering and correlation rather than an injection of drugs


Cardiac Pacemakers Inc. v. St Jude Medical Center, Inc.,2007-1296 (Fed. Cir. 2009)

Section 271(f)

Does Not Reach to

Method Claims

Small devices that detect and correct abnormal heart rhythms


Implantable cardioverter defibrillators “ICDs”

Photo by Steven Fruitsmaak

Photo by Lucien Monfils

http://images.suite101.com/1061035_com_cardiac_pa.jpg

http://upload.wikimedia.org/wikipedia/commons/6/66/Pacemaker.jpg


• Patent included method claims

• Method of heart stimulation:– Determining heart condition– Selecting mode of operation of

implantable heart stimulator– Executing the mode of operation


• Section 271(f): one who “supplies . . . in or from the United States, all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components” shall be liable as an infringer.

• Southern District of Indiana held: damages included sales of infringing devices supplied from the US to other countries


Held: Section 271(f) does not apply to method claims

– Based in the logic that a process is a series of steps and does not have any physical components amenable to export.

– Supplying an intangible step is a physical impossibility. That requirement eliminates method patents from Section 271(f)’s reach.

Edwards Lifesciences, LLC., v. Cook, Inc., 2009-1006 (Fed. Cir. 2009)

Claim Construction


• Patent relates to intraluminal grafts for treating certain conditions in blood vessels without open surgery.

• Alleged infringing device includes a fabric sleeve reinforced with resilient wires both inside and outside the sleeve, which are compressed during insertion and allowed to expand when an external sheath is removed.

• Claim construction required “malleable” wires.


• Held: No infringement

• Although no “wire” recited in independent claims, each claim recites an attachment that ultimately requires wires to function

• Every embodiment in the spec and drawings includes wires.


• Claim construction:

– The intraluminal devices must have malleable wires Inventors disclaimed use of resilient, or self-

expanding wires by describing in the spec problems associated with such designs as seen in the prior art.

– Dependent claims do not differentiate Dependent claims that add wire limitations also

add other limitations Thus, wires are not the only narrowing limitation Claim differentiation is a rule of thumb that does

not trump the clear import of the specification

The Year in Patent Litigation: A Review of

Recent U.S. Patent Cases

T.J. [email protected]

Patent Litigation SummitIndiana Continuing Legal Education Forum

November 19, 2009

The Year in Patent Litigation: A Review of Recent U.S. Patent Cases T.J. Cole [email protected] Patent Litigation Summit Indiana Continuing Legal Education.

Documents

infringement slide

larson manufacturing

patent aluminart

office action timeline

aluminart products

examiner slide

office actions materiality

buffer sides prior art