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

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Presentation on theme: "The Year in Patent Litigation: A Review of Recent U.S. Patent Cases T.J. Cole Patent Litigation Summit Indiana Continuing Legal Education."— Presentation transcript:

1 The Year in Patent Litigation: A Review of Recent U.S. Patent Cases T.J. Cole tjcole@uspatent.com Patent Litigation Summit Indiana Continuing Legal Education Forum November 19, 2009

2 Larson Manufacturing Co. v. Aluminart Products Ltd., 559 F.3d 1317 (Fed. Cir. 2009) Inequitable Conduct and the IDS How much disclosure Is enough?

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

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

5 Larson Manufacturing Co. v. Aluminart Products Ltd., 559 F.3d 1317 (Fed. Cir. 2009) 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 examiners rejections were only boilerplate reiterations of previous rejections

6 Larson Manufacturing Co. v. Aluminart Products Ltd., 559 F.3d 1317 (Fed. Cir. 2009) Holding: –The Third and Fourth Office Actions were material because they contained another examiners 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.

7 Larson Manufacturing Co. v. Aluminart Products Ltd., 559 F.3d 1317 (Fed. Cir. 2009) 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 Larsons argument was later conceded by the examiner)

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

9 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

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

11 Eqyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) District court –Applied ordinary observer test + points of novelty No infringement. –Point of novelty of Swisas 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

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

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

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

15 Titan Tire Corp. v. Case New Holland, Inc., 2008-1078 (Fed Cir. 2009) Preliminary Injunctions And Obviousness in Design Patent Law

16 Titan Tire Corp. v. Case New Holland, Inc., 2008-1078 (Fed Cir. 2009) 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 Cases challenge to validity on obviousness grounds

17 Titan Tire Corp. v. Case New Holland, Inc., 2008-1078 (Fed Cir. 2009) Holding: –No abuse of discretion in concluding Titan not likely to withstand Cases validity challenge Alleged infringing design

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

19 Titan Tire Corp. v. Case New Holland, Inc., 2008-1078 (Fed Cir. 2009) 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 1 st – find primary reference w/characteristics similar to the claimed design 2 nd – find a number of secondary references to modify the primary reference creating the overall visual appearance of the claimed design

20 Titan Tire Corp. v. Case New Holland, Inc., 2008-1078 (Fed Cir. 2009) Obviousness and Design Patents –Trial courts failure to specify a primary design was not fatal to the courts 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

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

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

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

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

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

26 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

27 Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed Cir. 2009) Spectacle frame that supports an auxiliary frame (e.g. sunglasses lenses) Claimed in 545 – reissue of 207 Owner: Apex Infringer: Revolution

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

29 Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed Cir. 2009) Revolution argued claim invalid for violating the written description requirement under 35 U.S.C. § 112

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

31 Felix v. American Honda Motor Co., 562 F.3d 1167 (Fed. Cir. 2009) Narrowing Amendment and Prosecution History Estoppel

32 Felix v. American Honda Motor Co., 562 F.3d 1167 (Fed. Cir. 2009) 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 Hondas design places the gasket on the lid itself

33 Felix v. American Honda Motor Co., 562 F.3d 1167 (Fed. Cir. 2009) Gasket 625 Patent Hondas design

34 Felix v. American Honda Motor Co., 562 F.3d 1167 (Fed. Cir. 2009) Federal Circuit: No literal infringement Mounted = securely affixed or fastened to Engaging = coming together and interlocking Hondas gasket is not securely affixed or fastened to any flange. Rather it is attached to the lid.

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

36 Felix v. American Honda Motor Co., 562 F.3d 1167 (Fed. Cir. 2009) PHE attaches even if the amendment alone does not result in allowance It is the patentee's response to a rejectionnot the examiner's ultimate allowance of a claimthat 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?

37 Aristocrat Tech. v. Int'l Game Tech., 543 F.3d 657 (Fed. Cir. 2008) Improper Revival by PTO As Defense to Infringement

38 Aristocrat Tech. v. Int'l Game Tech., 543 F.3d 657 (Fed. Cir. 2008) Prosecution Timeline: July 8, 1997 & September 9, 1997 Australian Provisional Applications filed July 8, 1998PCT/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, 2000filing fee submitted one day late June 13, 2000 Notice of Abandonment mailed w/note that Applicants may consider filing petition to revive under Rule 137 September 15, 2000Petition to Correct Date-In submitted June 5, 2001PTO 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, 2002Petition to Revive granted

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

40 Aristocrat Tech. v. Int'l Game Tech., 543 F.3d 657 (Fed. Cir. 2008) 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 examiners or the applicants absolute compliance with the internal rules of patent examination becomes irrelevant after the patent has issued.

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

42 Prometheus Labs, Inc. v. Mayo Collaborative Servs, 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

43 Prometheus Labs, Inc. v. Mayo Collaborative Servs, 2008-1403 (Fed. Cir. 2009) 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 drugs metabolites in the subject.

44 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 Prometheus Labs, Inc. v. Mayo Collaborative Servs, 2008-1403 (Fed. Cir. 2009)

45 Cardiac Pacemakers Inc. v. St Jude Medical Center, Inc., 2007-1296 (Fed. Cir. 2009) Section 271(f) Does Not Reach to Method Claims

46 Small devices that detect and correct abnormal heart rhythms Cardiac Pacemakers Inc. v. St Jude Medical Center, Inc., 2007-1296 (Fed. Cir. 2009) Implantable cardioverter defibrillators ICDs Photo by Steven Fruitsmaak Photo by Lucien Monfils

47 Cardiac Pacemakers Inc. v. St Jude Medical Center, Inc., 2007-1296 (Fed. Cir. 2009) Patent included method claims Method of heart stimulation: –Determining heart condition –Selecting mode of operation of implantable heart stimulator –Executing the mode of operation

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

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

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

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

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

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

54 The Year in Patent Litigation: A Review of Recent U.S. Patent Cases T.J. Cole tjcole@uspatent.com Patent Litigation Summit Indiana Continuing Legal Education Forum November 19, 2009


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