1. 11 PATENT LAW Randy Canis CLASS 15 Case Law Update

2. §102 2

3. “On Sale” Bar - Suppliers 3

4. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. Case History E.D.VA –Summary judgment finding asserted claims as anticipated 2013 Panel Fed. Cir. of O’Malley, Bryson, and Reyna –Affirmed the grant of summary judgment –Dissent filed by Reyna 4

5. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. Invention –“’slow cookers,’ which are electrically heated lidded pots that are used to cook food at low temperatures for long periods.” 5

6. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. Background –Hamilton Beach claimed slow cooker includes clips to seal –Sunbeam attempt to design around the ‘831 patent by mounting sealing clips on the lid of the slow cooker instead of the body –Hamilton Beach filed a continuation with the clips on the lid –Hamilton Beach argued that a person of ordinary skill in the art would recognize that placing the clips on the lid was wholly consistent with the original disclosure in the ’222 application. 6

7. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. Claim 1 of the ‘928 patent 1. A slow cooker for heating of food stuffs, the slow cooker comprising: a housing having a base and a side wall extending therefrom to define a heating cavity within the housing, the housing further having a housing rim at a first, free edge of the side wall defining an opening to the heating cavity; a heating element disposed within the housing sufficiently proximate the heating cavity to heat the heating cavity; a container rim defining an opening for accessing the interior thereof, the interior being capable of retaining the food stuffs therein, the container being shaped and sized to fit within the heating cavity of the housing for heating thereof by the heating element; a lid sized and shaped to at least partially cover the opening of the container when placed on the container rim, the lid having a gasket around an outer edge thereof for sealing engagement with the container rim; and 7

8. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. at least one clip mounted between the lid and the side wall of the housing, the at least one clip being an over-the-center clip having a hook and a catch, one of the hook and catch being mounted on one of the lid and side wall of the housing and the other of the hook and catch being mounted on the other of the lid and side wall of the housing, the at least one clip being selectively engageable with the lid and side wall of the housing to selectively retain the lid in sealing engagement with the container rim to inhibit leakage of the food stuffs from the interior of the container, wherein the housing and lid have a vertical height, the at least one clip being disposed entirely within the vertical height of the housing and lid to facilitate storage and transport of the slow cooker when the at least one clip is engaged with the lid and side wall of the housing. 8

9. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. “We agree with the district court that Hamilton Beach’s transaction with its foreign supplier in early 2005 was an offer for sale of a product that anticipated the asserted claims and that the invention was ready for patenting prior to the critical date. As discussed below, therefore, we hold the asserted claims of the ’928 patent invalid under § 102(b).” 9

10. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. “The on-sale bar applies when two conditions are satisfied before the critical date: (1) the claimed invention must be the subject of a commercial offer for sale; and (2) the invention must be ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 67 (1998).” 10

11. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. “An actual sale is not required for the activity to be an invalidating commercial offer for sale. [] An attempt to sell is sufficient so long as it is “sufficiently definite that another party could make a binding contract by simple acceptance.” [].” 11

12. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. “An invention is “ready for patenting” when prior to the critical date: (1) the invention is reduced to practice; or (2) the invention is depicted in drawings or described in writings of sufficient nature to enable a person of ordinary skill in the art to practice the invention. [] The on-sale bar is a question of law based on underlying factual findings.” 12

13. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. “Second, there is no ‘supplier exception’ to the on-sale bar. [] Thus, it is of no consequence that the ‘commercial offer for sale’ at issue in this case was made by Hamilton Beach’s own supplier and was made to Hamilton Beach itself.” “[A] commercial offer for sale made by a foreign entity that is directed to a United States customer at its place of business in the United States may serve as an invaliding activity.” 13

14. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. “As this court has repeatedly stated, a commercial offer for sale under §102(b) is ‘one which the other party could make into a binding contract by simple acceptance.’” 14

15. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. “In other words, the supplier made an offer to sell the slow cookers to Hamilton Beach. At that point, the commercial offer for sale was made and, under the governing corporate purchase agreement, Hamilton Beach could accept the offer when it so pleased.” 15

16. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. “As such, even if the parties had not entered into a binding contract when the supplier responded to the purchase order, the response, nevertheless, was a commercial offer for sale that Hamilton Beach could have made into a binding contract by simple acceptance. This was enough to satisfy Pfaff’s first prong without the need for a binding contract.” 16

17. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. “A product is ‘ready for patenting’ for purposes of the on-sale bar under § 102(b) if the claimed invention is: (1) reduced to practice; or (2) depicted in drawings or other descriptions ‘that were sufficiently specific to enable a person skilled in the art to practice the invention.’” 17

18. Hamilton Beach Brands, Inc. v. Sunbeam Prods., Inc. “Under the ‘ready for patenting’ prong, so long as the descriptions and depictions of the slow cooker are sufficiently precise to enable a person of ordinary skill to build the invention, the district court properly concluded that the invention was ‘ready for patenting.’” 18

19. Supplier Exception En Banc (a) Do the circumstances presented here constitute a commercial sale under the on-sale bar of 33 U.S.C. §102(b)? (i) Was there a sale for the purposes of § 102(b) despite the absence of a transfer of title? (ii) Was the sale commercial in nature for the purposes of §102(b) or an experimental use? (b) Should this court overrule or revise the principle in Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2001), that there is no ‘supplier exception’ to the on- sale bar of 35 U.S.C. § 102(b)? The Medicines Company v. Hospira, Inc., (Fed. Cir. 2015) (en banc order 11/13/15) 19

20. §112 20

21. Indefiniteness 21

22. Media Rights Technologies, Inc. v. Capital One Financial Corp. Case History E.D.VA –Judgment on the pleadings that the asserted claims are invalid for indefiniteness 2015 Panel Fed. Cir. of O’Malley, Plager, and Taranto –Affirmed 22

23. Media Rights Technologies, Inc. v. Capital One Financial Corp. Invention –System that “prevents unauthorized recording via a compliance mechanism, which diverts incoming media content protected by law or agreement from being output from a system in order to stop the illegal copying or sharing of that content” 23

24. Media Rights Technologies, Inc. v. Capital One Financial Corp. 1. A method of preventing unauthorized recording of electronic media comprising: Activating a compliance mechanism in response to receiving media content by a client system, said compliance mechanism coupled to said client system, said client system having a media content presentation application operable thereon and coupled to said compliance mechanism; Controlling a data output pathway of said client system with said compliance mechanism by diverting a commonly used data pathway of said media player application to a controlled data pathway monitored by said compliance mechanism; and Directing said media content to a custom media device coupled to said compliance mechanism via said data output path, for selectively restricting output of said media content. 24

25. Media Rights Technologies, Inc. v. Capital One Financial Corp. “A claim fails to satisfy [§112(b)] statutory requirement and is thus invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, ‘fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.’” 25

26. Media Rights Technologies, Inc. v. Capital One Financial Corp. “[A] claim is indefinite if its language ‘might mean several different things and no informed and confident choice is available among the contending definitions.’” 26

27. Media Rights Technologies, Inc. v. Capital One Financial Corp. “It is well settled that [a] claim limitation that actually uses the word ‘means’ invokes a rebuttable presumption that §112, ¶6 applies.” [] And, it is equally understood that “a claim term that does not use ‘means’ will trigger the rebuttable presumption that §112, ¶6 does not apply.”[] But this presumption against the application of §112, ¶6 to a claim term lacking the word “means” can be overcome if a party can “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” [] “In undertaking this analysis, we ask if the claim language, read in light of the specification, recites sufficiently definite structure to avoid §112, ¶6. 27

28. Media Rights Technologies, Inc. v. Capital One Financial Corp. Avoiding means plus function? “Because ‘the claims indicate[d] that “modernizing device” functions as an electrical circuit that receives signals, processes signals, and outputs signals to other components’ and the specification ‘depict[ed] the modernizing device and its internal components,’ ‘show[ed] how the elements were connected together,’ and further described how these components perform the claimed functions, we concluded that ‘modernizing device’ was not a means-plus- function limitation. [] Here, unlike Inventio, the claims do not use the term ‘compliance mechanism’ as a substitute for an electrical circuit, or anything else that might connote a definite structure.” 28

29. Media Rights Technologies, Inc. v. Capital One Financial Corp. “Because ‘compliance mechanism’ is a means- plus function term, we now must ‘attempt to construe the disputed claim term by identifying the “corresponding structure, material, or acts described in the specification” to which the claim term will be limited.’ [] Where there are multiple claimed functions, as there are in this case, the patentee must disclose adequate corresponding structure to perform all of the claimed functions. []” 29

30. Media Rights Technologies, Inc. v. Capital One Financial Corp. “Because these functions are computer- implemented functions, moreover, the structure disclosed in the specification must be more than a general purpose computer or microprocessor. [] Instead, we require that the specification disclose an algorithm for performing the claimed function. [] The algorithm may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure. []” 30

31. Means Plus Function “[A] heightened burden is unjustified and [we] abandon characterizing as “strong” the presumption that a limitation lacking the word “means” is not subject to §112, para. 6. That characterization is unwarranted… Henceforth, we will apply the presumption as we have done prior to Lighting World, without requiring any heightened evidentiary showing and expressly overrule the characterization of that presumption as ‘strong.’” Williamson v. Citrix Online, LLC, Fed. Cir. 2015 31

32. Modules “‘Module’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of §112, para. 6. As the district court found, ‘“module” is simply a generic description for software or hardware that performs a specified function.’ [] Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6. Williamson v. Citrix Online, LLC, Fed. Cir. 2015 32

33. Inventorship 33

34. Shukh v. Seagate Teachnology, LLC 2015 Panel Fed. Cir. of Moore, Wallach, and Taranto Issue –Inventorship related claims 34

35. Shukh v. Seagate Teachnology, LLC “Dr. Shukh’s time at Seagate was undisputedly tumultuous. His performance evaluations indicated that he did not work well with others due to his confrontational style.” 35

36. Shukh v. Seagate Teachnology, LLC “This lawsuit stems, in part, from Dr. Shukh’s allegations that Seagate has not properly credited him for his inventions. Specifically, Dr. Shukh alleges that during his tenure at Seagate, Seagate wrongfully omitted him as an inventor from six patents (U.S. Patent Nos. 7,233,457; 7,684,150; 6,525,902; 6,548,114; 6,738,236; and 7,983,002) and four pending patent applications, all relating to semiconductor technologies. He also claims that Seagate discriminated against him and wrongfully terminated him both on the basis of his national origin and in retaliation for complaining about the discrimination.” 36

37. Shukh v. Seagate Teachnology, LLC “Today, we hold that concrete and particularized reputational injury can give rise to Article III standing. As we noted in Chou, ‘being considered an inventor of important subject matter is a mark of success in one’s field, comparable to being an author of an important scientific paper.’ 254 F.3d at 1359. We reasoned that ‘[p]ecuniary consequences may well flow from being designated as an inventor.’ Id. This is particularly true when the claimed inventor is employed or seeks to be employed in the field of his or her claimed invention. For example, if the claimed inventor can show that being named as an inventor on a patent would affect his employment, the alleged reputational injury likely has an economic component sufficient to demonstrate Article III standing.” 37

38. Shukh v. Seagate Teachnology, LLC “A trier of fact could conclude that Dr. Shukh’s omission from the disputed patents had a concrete impact on his reputation in his field. There is significant evidence that the number of patents an inventor is named on influences his reputation in the field of the patents.” 38

39. Infringement 39

40. Divided Infringement 40

41. Divided Infringement Under §271(a) 41

42. Akamai Technologies, Inc. v. Limelight Networks, Inc. “This case was returned to us by the United States Supreme Court, noting “the possibility that [we] erred by too narrowly circumscribing the scope of §271(a)” and suggesting that we “will have the opportunity to revisit the §271(a) question....” Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2119, 2120 (2014). We hereby avail ourselves of that opportunity.” 42

43. Akamai Technologies, Inc. v. Limelight Networks, Inc. “Direct infringement under §271(a) occurs where all steps of a claimed method are performed by or attributable to a single entity. [] Where more than one actor is involved in practicing the steps, a court must determine whether the acts of one are attributable to the other such that a single entity is responsible for the infringement.” 43

44. Akamai Technologies, Inc. v. Limelight Networks, Inc. “We will hold an entity responsible for others’ performance of method steps in two sets of circumstances: (1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise.” 44

45. Akamai Technologies, Inc. v. Limelight Networks, Inc. Direct or controls  Vicarious liability Option #1A “[W]e have held that an actor is liable for infringement under § 271(a) if it acts through an agent (applying traditional agency principles) or contracts with another to perform one or more steps of a claimed method.” 45

46. Akamai Technologies, Inc. v. Limelight Networks, Inc. Option #1B “[L]liability under §271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” 46

47. Akamai Technologies, Inc. v. Limelight Networks, Inc. Option #2 - Joint Enterprise “[W]here two or more actors form a joint enterprise, all can be charged with the acts of the other, rendering each liable for the steps performed by the other as if each is a single actor.” 47

48. Akamai Technologies, Inc. v. Limelight Networks, Inc. A joint enterprise requires proof of four elements: 1)an agreement, express or implied, among the members of the group; 2)a common purpose to be carried out by the group; 3)a community of pecuniary interest in that purpose, among the members; and 4)an equal right to a voice in the direction of the enterprise, which gives an equal right of control. 48

49. Akamai Technologies, Inc. v. Limelight Networks, Inc. “Section 271(a) is not limited solely to principal-agent relationships, contractual arrangements, and joint enterprise, as the vacated panel decision held.[] Rather, to determine direct infringement, we consider whether all method steps can be attributed to a single entity.” 49

50. Doctrine of Equivalents 50

51. Ring & Pinion Service Inc. v. ARB Corp. Ltd. Case History W.D.WA –Summary judgment of noninfringement Panel Fed. Cir. of Moore, Clevenger, and Reyna –Reverse and remand with instructions to enter judgment of infringement 51

52. Ring & Pinion Service Inc. v. ARB Corp. Ltd. Claim 1 A locking differential comprising a differential carrier..., a locking means... cylinder means formed in said differential carrier and housing an actuator position[ed] to cause movement of said locking means relative to said carrier.... 52

53. Ring & Pinion Service Inc. v. ARB Corp. Ltd. Issue – “whether an equivalent is barred under the doctrine of equivalents because it was foreseeable at the time of the patent application.” “All-Limitations Rule” 53

54. Ring & Pinion Service Inc. v. ARB Corp. Ltd. “There is not, nor has there ever been, a foreseeability limitation on the application of the doctrine of equivalents. It has long been clear that known interchangeability weighs in favor of finding infringement under the doctrine of equivalents.” 54

55. Ring & Pinion Service Inc. v. ARB Corp. Ltd. “Excluding equivalents that were foreseeable at the time of patenting would directly conflict with these holdings that ‘known interchangeability’ supports infringement under the doctrine of equivalents. We conclude that the foreseeability of an equivalent at the time of patenting is not a bar to a finding of infringement under the doctrine of equivalents.” 55

56. Ring & Pinion Service Inc. v. ARB Corp. Ltd. “Equivalence under section 112(f) is evaluated at the time of issuance. … Equivalence under the doctrine of equivalents, in contrast, is evaluated at the time of infringement. [] Hence, an after-arising technology, a technology that did not exist at the time of patenting, can be found to be an equivalent under the doctrine of equivalents even though it cannot be an equivalent under the literal infringement analysis of § 112(f).” 56

57. Ring & Pinion Service Inc. v. ARB Corp. Ltd. “For literal infringement, the accused structures must perform the function recited in the claim (identical function). … The doctrine of equivalents thus covers structures with equivalent, but not identical, functions.” 57

58. Ring & Pinion Service Inc. v. ARB Corp. Ltd. “Where a finding of non-infringement under §112(f) is based solely on the lack of identical function, it does not preclude a finding of equivalence under the doctrine of equivalents.” 58

59. Post Issuance 59

60. Reissue/Recapture 60

61. Antares Pharma, Inc. v. Medac Pharma Inc. Case History D.C.DE –Reissue claims are invalid for failing to comply with the “original patent” requirement 2014 Panel Fed. Cir. of Dyk, Reyna, and Taranto –Affirmed 61

62. Antares Pharma, Inc. v. Medac Pharma Inc. Invention –“a system for injecting medicant in which a needle punctures the skin before forcefully expelling the medicant, thereby minimizing some of the downsides of typical jet injectors (in which the medicant itself ruptures the outer layers of skin), while still maintaining some of the advantages of typical jet injectors.” 62

63. Antares Pharma, Inc. v. Medac Pharma Inc. What happened during prosecution? –“During prosecution, the applicants repeatedly distinguished their invention from the prior art by focusing on the ‘jet injector’ limitation present in their claims but not the prior art. The originally issued claims all contained the ‘jet injection’ limitation.” 63

64. Antares Pharma, Inc. v. Medac Pharma Inc. Broadening Reissue –“Section 251 allows a patent holder to correct an existing, issued patent by broadening or narrowing the originally issued claims. If the claims sought on reissue are broader than the original claims, the patentee must apply for the reissue within two years of the patent issuing.” 64

65. Antares Pharma, Inc. v. Medac Pharma Inc. Reissue is subject to the recapture rule –“The recapture rule generally prohibits applicants from claiming, on reissue, claim scope surrendered during the course of the original prosecution.” 65

66. Antares Pharma, Inc. v. Medac Pharma Inc. Reissue requirements 1)Claims cannot violate the recapture rule 2)Claims must satisfy the original patent requirement 3)Applicant cannot add new matter to the specification 66

67. Antares Pharma, Inc. v. Medac Pharma Inc. “Director shall … reissue the patent for the invention disclosed in the original patent …” (1952) 67

68. Antares Pharma, Inc. v. Medac Pharma Inc. “[A] reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.’” 68

69. Antares Pharma, Inc. v. Medac Pharma Inc. “Failing to disclose in the original patent matters claimed in the reissue will not enable the patentee to cover such new matter by the reissue, as least when the matter was within his knowledge when he applied for the original patent[; i]t is not enough that the invention might have been claimed in the original patent or that it was suggested in the specification…” 69

70. Antares Pharma, Inc. v. Medac Pharma Inc. “‘The original and reissue patents are for the same invention where the latter fully describes and claims the very invention intended to be secured by the original patent and describes and claims only those things which were embraced in that invention and where it is not merely suggested in the original but constitutes a part or portion of that invention.’ [] The court considered that ‘[i]t is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification,’ but must be ‘explicitly disclosed and taught’ in the specification.” 70

71. Antares Pharma, Inc. v. Medac Pharma Inc. “Whether or not the written description requirement of §112 was satisfied here, Industrial Chemicals made clear that, for §251, ‘it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ [] Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” 71

72. Defenses 72

73. Inducement of Infringement Defense “[A] defendant’s belief regarding patent validity is [not] a defense to a claim of induced infringement. [] The scienter element for induced infringement concerns infringement; that is a different issue than validity. Section 271(b) requires that the defendant “actively induce[d] infringement.” That language requires intent to “bring about the desired result,” which is infringement. [] And because infringement and validity are separate issues under the Act, belief regarding validity cannot negate the scienter required under §271(b).When infringement is the issue, the validity of the patent is not the question to be confronted.” Commil USA LLC v. Cisco Systems, Inc. 73

74. Covered Business Methods 74

75. What is a CBM? 75

76. Experian Marketing Solutions, Inc. v. RPost Communications Limited Case History Experian and Epislon filed a petition to institute a CBM with the PTAB PTAB denies the petition 76

77. Experian Marketing Solutions, Inc. v. RPost Communications Limited 1. A method of transmitting a message from a sender to a recipient through a server acting as a Mail Transport Agent, including the steps at the server of: transmitting the message to the recipient’s Mail Transport Agent in a protocol dialog selected from a group consisting of the selected one of the SMTP and ESMTP protocols; and recording at the server some portion of the selected one of the SMTP and ESMTP protocol dialog between the server and the recipient through the server including those portions of the selected one of the SMTP and ESMTP protocol dialog between the server and the recipient in which the receiving Mail Transport Agent accepts or declines delivery of the transmitted message. 77

78. Experian Marketing Solutions, Inc. v. RPost Communications Limited “A ‘covered business method patent’ is a patent that ‘claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.’” 78

79. Experian Marketing Solutions, Inc. v. RPost Communications Limited Focus is on the claims “A patent need have only one claim directed to a covered business method to be eligible for review.” 79

80. Experian Marketing Solutions, Inc. v. RPost Communications Limited “The ‘legislative history explains that the definition of covered business method patent was drafted to encompass patents “claiming activities that are financial in nature, incidental to a financial activity or complementary to a financial activity.”’ … The legislative history indicates that ‘financial product or service’ should be interpreted broadly.” 80

81. Experian Marketing Solutions, Inc. v. RPost Communications Limited “To determine whether a patent is for a technological invention, we consider ‘whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.’” 81

82. Experian Marketing Solutions, Inc. v. RPost Communications Limited “Lastly, merely because an invention’s claims recite a method, and such a method is applicable to a financial process, which does not obviate the need to determine whether the invention is directed to a technical invention.” 82

83. Design Patents 83

84. Utilitarian v. Design “Articles of manufacture necessarily serve a utilitarian purpose, but design patents are directed to ornamental designs of such articles. 35 U.S.C. §171. If a particular design is essential to the use of an article, it cannot be the subject of a design patent. [] We have found designs to be essential to the use of an article when the claimed design is ‘dictated by’ the use or purpose of the article. … Design patents on such primarily functional rather than ornamental designs are invalid. []” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., (Fed. Cir. 2015) 84

85. Questions on the Final Exam? 85

86. THANKS FOR A GREAT YEAR!!! 86

87. 87 Program Completed All course materials - Copyright 2002-15 Randy L. Canis, Esq.