1. 1 PATENT LAW Randy Canis CLASS 9 Inventors and Owners; Infringement pt. 1; ST: Patent Law Jobs

2. 2 Inventors and Owners

3. 3 A. Inventorship and Misjoinder

4. 4 Inventorship Applications must be filed in the name of the true inventors Inventors must sign a declaration or an oath stating that they believe they are the first inventors. Joint inventorship of an invention is possible. http://www.uspto.gov/web/offices/pac/m pep/s2137.html

5. 5 Joint Inventorship To avoid possible invalidity due to failure to name inventors make sure to name all inventors Inventive entities can be different for different claims: –A, B & C can have invented claim 1. –B & C can be inventors of claims 2 and 3, respectively. –A & C can be inventors as to claims 4 & 5, and so forth.

6. 6 Important Right of Joint Inventors "In the absence of an agreement to the contrary, each of the owners of patent may make, use, offer to sell, or sell the patented invention with the United States, or import [it], without the consent of and without accounting to the other owners." [Section 262 of Patent Statutes (35 U.S.C. 262)]

7. 7 Joint Inventors Recommendation: In light of Sec. 262, joint inventors: Should negotiate & enter into a joint venture or business organization agrmt. Should provide for mutual obligations for disposition of rights by any joint owner. Should cover sharing of proceeds of exploitation of invention.

8. Omitted Inventors Inventors sometimes refuse to join in or cannot be found By submitting sufficient information, may proceed without the omitted inventor –The omitted inventor is still named –The omitted inventor may join later 8

9. 9 Noninventors Supplies a component used with the invention “Hands of the Inventor” but did not conceive the invention Validity is compromised by misnomer of a person who is not an inventor

10. Burroughs Wellcome Co. v. Barr Laboratories, Inc. Case History E.D. of N. Carolina found 6 patents not invalid and infringed Panel Fed. Cir. 1994 of Mayer, Lourie, and Schall –Affirmed [in relevant part] 10

11. Burroughs Wellcome Co. v. Barr Laboratories, Inc. Invention –AZT to treat patients with HIV (Retrovir) 11

12. Burroughs Wellcome Co. v. Barr Laboratories, Inc. Claim 1 of 4,724,232 –A method of treating a human having acquired immunodeficiency syndrome comprising the oral administration of an effective acquired immunodeficiency syndrome treatment amount of 3'-azido- 3'-deoxythymidine to said human. 12

13. Burroughs Wellcome Co. v. Barr Laboratories, Inc. NIH used live AIDS and developed a test to demonstrate a compound’s effectiveness against HIV. 2/6/85 draft of patent application for filing in Europe 2/4/85 sample of AZT sent to NIH –Screen compound for activity against HIV 13

14. Burroughs Wellcome Co. v. Barr Laboratories, Inc. Barr sought to sell a generic version of AZT BW sued Barr for patent infringement Barr sought to correct inventorship and add two-coinventors from whom it has a license (and therefore would not infringe) 14

15. Burroughs Wellcome Co. v. Barr Laboratories, Inc. “A joint invention is the product of a collaboration between two or more persons working together to solve the problem addressed. … People may be joint inventors even though they do not physically work on the invention together or at the same time, and even though each does not make the same type or amount of contribution. 35 U.S.C. § 116. The statute does not set forth the minimum quality or quantity of contribution required for joint inventorship.” 15

16. Burroughs Wellcome Co. v. Barr Laboratories, Inc. “Thus, the test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention … An idea is definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue. …The conception analysis necessarily turns on the inventor’s ability to describe his invention with particularity. Until he can do so, he cannot prove possession of the complete mental picture of the invention.” 16

17. Burroughs Wellcome Co. v. Barr Laboratories, Inc. “But an inventor need not know that his invention will work for conception to be complete. … He need only show that he had the idea; the discovery that an invention actually works is part of its reduction to practice. …” 17

18. Burroughs Wellcome Co. v. Barr Laboratories, Inc. What happened here? –More than hope or expectation –Invention clearly defined in the inventors’ minds 18

19. Judicial Correction of Inventorship 19

20. 20 Correction of Inventors’ Names 35 U.S.C. 256 Correction of named inventor. Whenever through error a person is named in an issued patent as the inventor, or through error an inventor is not named in an issued patent and such error arose without any deceptive intention on his part, the Director may, on application of all the parties and assignees, with proof of the facts and such other requirements as may be imposed, issue a certificate correcting such error. The error of omitting inventors or naming persons who are not inventors shall not invalidate the patent in which such error occurred if it can be corrected as provided in this section. The court before which such matter is called in question may order correction of the patent on notice and hearing of all parties concerned and the Director shall issue a certificate accordingly.

21. 21 Correction of Inventors’ Names The request to correct inventorship must include: (1) Where one or more persons are being added, a statement from each person who is being added as an inventor that the inventorship error occurred without any deceptive intention on his or her part; (2) A statement from the current named inventors either agreeing to the change of inventorship or stating that they have no disagreement in regard to the requested change; (3) A statement from all assignees of the parties agreeing to the change of inventorship in the patent; and (4) A fee.

22. Joint Inventors and Multiple Claims 22

23. Joint Inventorship How do you become a joint inventor? –Contribute to the conception of at least 1 claim 23

24. Ethicon, Inc. v. United States Surgical Corp. “A patented invention may be the work of two or more joint inventors. See 35 U.S.C. § 116 (1994). Because “[c]onception is the touchstone of inventorship,” each joint inventor must generally contribute to the conception of the invention. ….Nevertheless, for the conception of a joint invention, each of the joint inventors need not “make the same type or amount of contribution” to the invention. 35 U.S.C. § 116. Rather, each needs to perform only a part of the task which produces the invention….Furthermore, a co- inventor need not make a contribution to every claim of a patent. See 35 U.S.C. § 116. A contribution to one claim is enough. … Thus, the critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims at issue.” 24

25. 25 Ethicon, Inc. v. United States Surgical Corp. “[E]ach co-inventor presumptively owns a pro rata undivided interest in the entire patent, no matter what their respective contributions.” “[J]oint inventions may become joint property without some express agreement to the contrary.”

26. B. Assignment and Ownership 26

27. Section 261: Patent Recording Statute 27

28. 35 U.S.C. 261 Subject to the provisions of this title, patents shall have the attributes of personal property. Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States. A certificate of acknowledgment under the hand and official seal of a person authorized to administer oaths within the United States… shall be prima facie evidence of the execution of an assignment, grant, or conveyance of a patent or application for patent. An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for a valuable consideration, without notice, unless it is recorded in the Patent and Trademark Office within three months from its date or prior to the date of such subsequent purchase or mortgage. 28

29. Assignment Basics Rights can be assigned from the inventor(s) to an entity Must be a patent owner, or an exclusive licensee, to bring suit Patent assignments can be recorded with the USPTO –Failure to record within 3 months may allow a subsequent purchaser to take rights (Bona Fide Purchaser Rule) 29

30. Rights of Employed Inventor 30

31. United States v. Dubilier Condenser Corp. Invention –Utilization of alternating current for applications beyond lighting –Developed without input from supervisors –Work was independent of their work 31

32. United States v. Dubilier Condenser Corp. “One employed to make an invention, who succeeds, during his term of service, in accomplishing that task, is bound to assign to his employer any patent obtained. The reason is that he has only produced that which he was employed to invent. His invention is the precise subject of the contract of employment.” 32

33. United States v. Dubilier Condenser Corp. “On the other hand, if the employment be general, albeit it covers a field of labor and effort in the performance of which the employee conceived the invention for which he obtained a patent, the contract is not so broadly construed as to require an assignment of the patent.” 33

34. United States v. Dubilier Condenser Corp. “[S]hop right … is … where a servant, during his hours of employment, working with his master’s materials and appliances, conceives and perfects an invention for which he obtains a patent, he must [then] accord his master a nonexclusive right to practice the invention.” 34

35. 35 Shop Right “… [T]he right of an employer to use employee’s invention in employer’s business without payment of royalty. The ‘shop right’ doctrine is that, where an employee during his hours of employment working with his employer’s materials and appliances conceives and perfects an invention for which he obtains a patent, he must accord his employer a nonexclusive right to practice the invention. The employer, however, is not entitled to a conveyance of the invention, this remains the right of the employee-inventor.” Blacks Law Dictionary, Abridged Sixth Edition

36. 36 Shop Right If you are an employee, what could you do to avoid providing your employer a shop right in your invention?

37. Infringement 37

38. 38 Infringement So now you have a patent, what comes next? Make money!!! –Sell the invention –License the invention and let others sell it… –Sell the patent –Sue others for patent infringement

39. 39 Quick Review of the Statute 271(a)-(i)

40. 40 Infringement Sec. 271. - Infringement of patent (a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent. (b) Whoever actively induces infringement of a patent shall be liable as an infringer. [Active Inducement] (c) Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination, or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer. [Contributory Infringement]

41. 41 Infringement (d) No patent owner otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of the patent right by reason of his having done one or more of the following: (1) derived revenue from acts which if performed by another without his consent would constitute contributory infringement of the patent; (2) licensed or authorized another to perform acts which if performed without his consent would constitute contributory infringement of the patent; (3) sought to enforce his patent rights against infringement or contributory infringement; (4) refused to license or use any rights to the patent; or (5) conditioned the license of any rights to the patent or the sale of the patented product on the acquisition of a license to rights in another patent or purchase of a separate product, unless, in view of the circumstances, the patent owner has market power in the relevant market for the patent or patented product on which the license or sale is conditioned.

42. 42 Infringement (e)(1) It shall not be an act of infringement to make, use, offer to sell, or sell within the United States or import into the United States a patented invention (other than a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Act of March 4, 1913) which is primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques) solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products. (2) It shall be an act of infringement to submit - –(A) an application under section 505(j) of the Federal Food, Drug, and Cosmetic Act or described in section 505(b)(2) of such Act for a drug claimed in a patent or the use of which is claimed in a patent, or –(B) an application under section 512 of such Act or under the Act of March 4, 1913 (21 U.S.C. 151 - 158) for a drug or veterinary biological product which is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques and which is claimed in a patent or the use of which is claimed in a patent, if the purpose of such submission is to obtain approval under such Act to engage in the commercial manufacture, use, or sale of a drug or veterinary biological product claimed in a patent or the use of which is claimed in a patent before the expiration of such patent.

43. 43 Infringement (3) In any action for patent infringement brought under this section, no injunctive or other relief may be granted which would prohibit the making, using, offering to sell, or selling within the United States or importing into the United States of a patented invention under paragraph (1). (4) For an act of infringement described in paragraph (2)- (A) the court shall order the effective date of any approval of the drug or veterinary biological product involved in the infringement to be a date which is not earlier than the date of the expiration of the patent which has been infringed, (B) injunctive relief may be granted against an infringer to prevent the commercial manufacture, use, offer to sell, or sale within the United States or importation into the United States of an approved drug or veterinary biological product, and (C) damages or other monetary relief may be awarded against an infringer only if there has been commercial manufacture, use, offer to sell, or sale within the United States or importation into the United States of an approved drug or veterinary biological product. The remedies prescribed by subparagraphs (A), (B), and (C) are the only remedies which may be granted by a court for an act of infringement described in paragraph (2), except that a court may award attorney fees under section 285. (5) Where a person has filed an application described in paragraph (2) that includes a certification under subsection (b)(2)(A)(iv) or (j)(2)(A)(vii)(IV) of section 505 of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355), and neither the owner of the patent that is the subject of the certification nor the holder of the approved application under subsection (b) of such section for the drug that is claimed by the patent or a use of which is claimed by the patent brought an action for infringement of such patent before the expiration of 45 days after the date on which the notice given under subsection (b)(3) or (j)(2)(B) of such section was received, the courts of the United States shall, to the extent consistent with the Constitution, have subject matter jurisdiction in any action brought by such person under section 2201 of title 28 for a declaratory judgment that such patent is invalid or not infringed.

44. 44 Infringement (f) (1) Whoever without authority supplies or causes to be supplied 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 outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer. (2) Whoever without authority supplies or causes to be supplied in or from the United States any component of a patented invention that is especially made or especially adapted for use in the invention and not a staple article or commodity of commerce suitable for substantial noninfringing use, where such component is uncombined in whole or in part, knowing that such component is so made or adapted and intending that such component will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

45. 45 Infringement (g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent. In an action for infringement of a process patent, no remedy may be granted for infringement on account of the noncommercial use or retail sale of a product unless there is no adequate remedy under this title for infringement on account of the importation or other use, offer to sell, or sale of that product. A product which is made by a patented process will, for purposes of this title, not be considered to be so made after - (1) it is materially changed by subsequent processes; or (2) it becomes a trivial and nonessential component of another product. (h) As used in this section, the term "whoever" includes any State, any instrumentality of a State, any officer or employee of a State or instrumentality of a State acting in his official capacity. Any State, and any such instrumentality, officer, or employee, shall be subject to the provisions of this title in the same manner and to the same extent as any nongovernmental entity. (i) As used in this section, an "offer for sale" or an "offer to sell" by a person other than the patentee or any assignee of the patentee, is that in which the sale will occur before the expiration of the term of the patent.

46. A. Introduction: The Primacy of Patent Claims 46

47. Requirements? Statute does not require –Any proof of access to inventor’s work –Any intent to infringe Courts ultimately required claims to determine patent scope… 47

48. B. Interpreting Claims 48

49. 49 Phillips v. AWH Corporation Procedural Background Factual Background Issue(s): –To what extent should the specification be relied on when ascertaining the scope of the claims? How should dictionaries be used in claim interpretation?

50. 50 Phillips v. AWH Corporation Invention –Modular steel panels that are welded together to form walls –Specification described baffled deployment at an angle other than 90 degrees to wall face to create interlocking D.C. – no infringement b/c at 90 degrees Panel – affirmed; baffles at non 90 angle enable deflection of bullets

51. 51 Phillips v. AWH Corporation Claims –define invention to which the patentee is entitled the right to exclude –“…the words of a claim ‘are generally given their ordinary and customary meaning.’” …

52. 52 Phillips v. AWH Corporation “We have made clear, moreover, that the ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.”

53. 53 Phillips v. AWH Corporation “[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.”

54. 54 Phillips v. AWH Corporation Apply well-accepted meaning of commonly understood words Examine terms that have a particular meaning in a field of art

55. 55 Phillips v. AWH Corporation “Quite apart from the written description and the prosecution history, the claims themselves provide substantial guidance as to the meaning of particular claim terms. … “To begin with, the context in which a term is used in the asserted claim can be highly instructive. … “Other claims of the patent in question, both asserted and unasserted, can also be valuable sources of enlightenment as to the meaning of a claim term.”

56. 56 Phillips v. AWH Corporation “[T]he presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim.”

57. 57 Phillips v. AWH Corporation Claims must be read in terms of the specification “Our cases recognize that the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess. In such cases, the inventor’s lexicography governs. … In other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the inventor has dictated the correct claim scope, and the inventor’s intention, as expressed in the specification, is regarded as dispositive. …

58. 58 Phillips v. AWH Corporation Prosecution history –evidence of how the PTO and the inventor understood the patent –“lacks the clarity of the specification and thus is less useful for claim construction purposes.”

59. 59 Phillips v. AWH Corporation “[W]e have also authorized district courts to rely on extrinsic evidence, which ‘consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises.’ “[W]hile extrinsic evidence ‘can shed useful light on the relevant art,’ we have explained that it is “less significant than the intrinsic record in determining ‘the legally operative meaning of claim language.’”

60. 60 Phillips v. AWH Corporation Extrinsic evidence –Less reliable –What five reasons did the court give? –“unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence”

61. 61 Phillips v. AWH Corporation What happened in Texas Digital? –Too much reliance on dictionaries (and other extrinsic sources)

62. 62 Phillips v. AWH Corporation “Moreover, we recognize that the distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice.”

63. 63 Phillips v. AWH Corporation Ruling –Reverse finding of infringement Holding –Reaffirms Markman. Dicta

64. 64 Phillips v. AWH Corporation What is the effect of this ruling on claim construction and claim drafting?

65. Cannons of Claim Construction 65

66. How are claims to be construed by a court? 1.Narrow Construction to Save Validity 2.Ordinary vs. Contextual Meaning 3.Contextual Meaning May Trump Ordinary Meaning 4.The “Lexicographer” Rule 5.Disclaimer of Subject Matter 6.Claim Differentiation: Contextual Meaning From Other Claims 7.Purpose or Goal of the Invention 66

67. Narrow Construction to Save Validity “[W]hen two interpretations are plausible, choose the one that preserves the validity of the patent — the narrower interpretation.” Last resort… 67

68. Ordinary vs. Contextual Meaning “Claim interpretation often seems to hinge on disputes about whether to give language an ‘ordinary’ meaning or a special ‘contextual’ meaning derived from particular usage in the patent, but the distinction is not sharp.” 68

69. Contextual Meaning May Trump Ordinary Meaning Sometimes more narrow definitions than ordinary meaning may be given to words in the claim based on the specification. 69

70. The “Lexicographer” Rule “Courts often say that patentees are free to be their own lexicographers — i.e., to define claim terms in any way they wish. These definitions are typically set forth in the specification. Yet, even when the patentee does define a term, the definition may be ambiguous.” 70

71. Disclaimer of Subject Matter “A corollary of the lexicographer rule is that the patentee’s statements in the specification or, more commonly, in the prosecution history may limit or disclaim apparently broad claim language.” 71

72. Claim Differentiation Presence of dependent claim that narrows provides support that the claim from which it dependents 72

73. Purpose or Goal of the Invention Supply meaning to the claim term from a purpose or goal of an invention 73

74. Joint and Divided Infringement 74

75. Divided/Joint Infringement Basics Must a single party perform all actions to infringe? What if a first party performs almost all steps, and the first party contracts with a second party to perform one or two of the steps, should the first party (or the second party) still infringe? If so, under what circumstances? General rule – if the second party engaged with the first party to perform actions at an arms length transaction, the first party (and the second party do not infringe) 75

76. 76 BMC Res., Inc. v. Paymentech, L.P “Courts faced with a divided infringement theory have also generally refused to find liability where one party did not control or direct each step of the patented process.” BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007)

77. 77 BMC Res., Inc. v. Paymentech, L.P Where the actions of multiple parties combine to perform every step of a claimed method, the claim is directly infringed only if one party exercises "control or direction" over the entire process such that every step is attributable to the controlling party, i.e., the "mastermind." At the other end of this multi-party spectrum, mere "arms-length cooperation" will not give rise to direct infringement by any party.

78. 78 Muniauction, Inc. v. Thomson Corp. “[T]he control or direction standard is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method.” Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008)

79. Akamai Technologies, Inc. v. Limelight Networks, Inc. Fed. Cir. Panel Decision From D.C. JMOL overturned jury verdict of infringement and award of $41.5 million dollars 79

80. Akamai Technologies, Inc. v. Limelight Networks, Inc. Patents at Issue –7,103,645 –6,553,413 –6,108,703 –The patents at issue have the same specification and disclose a system for allowing a content provider to outsource the storage and delivery of discrete portions of its website content. 80

81. Akamai Technologies, Inc. v. Limelight Networks, Inc. 19. A content delivery service, comprising: area network of content servers managed by a domain other than a content provider domain; for a given page normally served from the content provider domain, tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain; responsive to a request for the given page received at the content provider domain, serving the given page from the content provider domain; and serving at least one embedded object of the given page from a given content server in the do-main instead of from the content provider domain. 81

82. Akamai Technologies, Inc. v. Limelight Networks, Inc. 34. A content delivery method, comprising: distributing a set of page objects across a network of content servers managed by a domain other than a content provider domain, wherein the network of content servers are organized into a set of regions; for a given page normally served from the content provider domain, tagging at least some of the embedded objects of the page so that requests for the objects resolve to the domain instead of the content provider domain; in response to a client request for an embedded object of the page: resolving the client request as a function of a location of the client machine making the request and current Internet traffic conditions to identify a given region; and returning to the client an IP address of a given one of the content servers within the given region that is likely to host the embedded object and that is not overloaded. 82

83. Akamai Technologies, Inc. v. Limelight Networks, Inc. Limelight does not perform every step of the claims The content providers of Limelight perform the tagging step Akamai presented a theory of joint liability in that Limelight controls or directs the activities of another 83

84. Akamai Technologies, Inc. v. Limelight Networks, Inc. Direct infringement of a method claim requires that a single party perform each of the steps of the claimed method No infringement unless “one party exercises ‘control or direction’ over the entire process such that every step is attributable to the controlling party.” 84

85. Akamai Technologies, Inc. v. Limelight Networks, Inc. “The performance of a method step may be attributed to an accused infringer when the relationship between the accused infringer and another party performing a method step is that of principal and agent, applying generally accepted principles of the law of agency…” 85

86. Akamai Technologies, Inc. v. Limelight Networks, Inc. Holding “[T]here can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps.” 86

87. Akamai Technologies, Inc. v. Limelight Networks, Inc. Court suggests –Proper claim drafting in the first place –Seek reissue patents to correct the error 87

88. Akamai Technologies, Inc. v. Limelight Networks, Inc. Ruling –“Limelight did not perform all of the steps of the asserted method claims, and the record contains no basis on which to attribute to Limelight the actions of its customers who carried out the other steps, [therefore] this court affirms the finding of noninfringement …” 88

89. Akamai Technologies, Inc. v. Limelight Networks, Inc. Order –Signed April 20, 2011 –En banc consideration –Previous decision is vacated 89

90. McKesson Technologies, Inc. v. Epic Systems, Corp. Fed. Cir. Panel Decision From D.C. finding of summary judgment of noninfringement –Inducement of infringement 90

91. McKesson Technologies, Inc. v. Epic Systems, Corp. Patent at Issue –6,757,898 –The patent at issue relates to “an electronic method of communication between healthcare providers and patients involving personalized web pages for doctors and their patients.” 91

92. McKesson Technologies, Inc. v. Epic Systems, Corp. 1. A method of automatically and electronically communicating between at least one health-care provider and a plurality of users serviced by the health-care provider, said method comprising the steps of: initiating a communication by one of the plurality of users to the provider for information, wherein the provider has established a preexisting medical record for each user; enabling communication by transporting the communication... ; electronically comparing content of the communication... ; returning the response to the communication automatically... ; said provider/patient interface providing a fully automated mechanism for generating a personalized page or area within the provider’s Web site for each user serviced by the provider; and said patient-provider interface service center for dynamically assembling and delivering customer content to said user. 92

93. McKesson Technologies, Inc. v. Epic Systems, Corp. Epic argued that because its customers neither directly perform the “initiating a communication” step of the asserted method claims nor exercise control or direction over another who performs this step, McKesson failed to demonstrate that a single party directly infringes the ’898 patent and, accordingly, could not have succeeded on its claim of indirect infringement. The district court agreed and granted [the motion of summary judgment of noninfrigement]. 93

94. McKesson Technologies, Inc. v. Epic Systems, Corp. Issue on appeal – can the initiating a communication step be attributed to the MyChart providers? –MyChart users are not performing any of the claimed method steps as agents for the MyChart providers. –No agency relationship… –MyChart users are not contractually obligated to perform the method steps on behalf of the MyChart providers 94

95. McKesson Technologies, Inc. v. Epic Systems, Corp. Order –Signed May 26, 2011 –En banc consideration –Previous decision is vacated 95

96. Akamai and McKesson Case History Akamai v. Limelight –D.C. of MA McKesson v. Epic Systems –N.D. of GA Fed Cir. Panel Decisions Consolidated rehearing en banc 96

97. Akamai and McKesson Majority (6) – Rader, Lourie, Bryson, Moore, Reyna, and Wallach Dissent A (4) – Linn with Dyk, Prost, and O’Malley Dissent B (1) – Newman 97

98. Akamai and McKesson Major issue addressed – do the acts that would otherwise constitute infringement as a basis for direct infringement have to be performed by a single party (as required by direct infringement) or can they be performed by multiple parties so as to create a cause of action for inducement of infringement? 98

99. Akamai and McKesson Majority Opinion Does no address multiple party direct infringement Overruled BMC Resources case in which court held that in order for a party to be liable for induced infringement, some other single entity must be liable for direct infringement. 99

100. Akamai and McKesson “To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.” 100

101. Akamai and McKesson “The induced infringement provision of the Patent Act, 35 U.S.C. § 271(b), provides that “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” Because section 271(b) extends liability to a party who advises, encourages, or otherwise induces others to engage in infringing conduct, it is well suited to address the problem presented by the cases before us, i.e., whether liability should extend to a party who induces the commission of infringing conduct when no single “induced” entity commits all of the infringing acts or steps but where the infringing conduct is split among more than one other entity.” 101

102. Akamai and McKesson Direct infringement –strict liability tort Induced infringement –requires that the accused inducer act with knowledge that the induced acts constitute patent infringement 102

103. Akamai and McKesson Need not be an agent, or acting under direction or control “It is enough that the inducer ‘cause[s], urge[s], encourage[s], or aid[s]’ the infringing conduct and that the induced conduct is carried out.” 103

104. Akamai and McKesson “[I]nducement gives rise to liability only if the inducement leads to actual infringement. That principle, that there can be no indirect infringement without direct infringement, is well settled.” 104

105. Akamai and McKesson “If a party has knowingly induced others to commit the acts necessary to infringe the plaintiff’s patent and those others commit those acts, there is no reason to immunize the inducer from liability for indirect infringement simply because the parties have structured their conduct so that no single defendant has committed all the acts necessary to give rise to liability for direct infringement.” 105

106. Akamai and McKesson “Likewise, a party who performs some of the steps itself and induces another to perform the remaining steps that constitute infringement has precisely the same impact on the patentee as a party who induces a single person to carry out all of the steps.” 106

107. Akamai and McKesson Basis for Majority’s Opinion –Text –Legislative (e.g., Judge Rich) –Other Areas of Law (e.g., Criminal and Tort Law) 107

108. Akamai and McKesson Major issue in dispute between Majority and Dissent –Does 271(a) define “infringement” or not? 108

109. Akamai and McKesson Result for Akamai “Limelight would be liable for inducing infringement if the patentee could show that (1) Limelight knew of Akamai’s patent, (2) it performed all but one of the steps of the method claimed in the patent, (3) it induced the content providers to perform the final step of the claimed method, and (4) the content providers in fact performed that final step.” 109

110. Akamai and McKesson Result for McKesson “Epic can be held liable for inducing infringement if it can be shown that (1) it knew of McKesson’s patent, (2) it induced the performance of the steps of the method claimed in the patent, and (3) those steps were performed.” 110

111. Akamai and McKesson Dissenting Opinion Majority is trying to rewrite the law Direct infringement is an absolute requirement 111

112. Akamai and McKesson Basis for Minority Opinion –Statutory Scheme –Defining (or redefining infringement) –Support from additional portions to 271 –Other areas of law 112

113. Akamai Technologies, Inc. v. Limelight Networks, Inc. Supreme Court 2014 Ruled on inducement of infringement 113

114. Akamai Technologies, Inc. v. Limelight Networks, Inc. “[A]s our case law leaves no doubt that inducement liability may arise ‘if, but only if, [there is]... direct infringement.’” 114

115. Akamai Technologies, Inc. v. Limelight Networks, Inc. “[T]here has simply been no infringement of the method … because the performance of all the patent’s steps is not attributable to any one person. And, as both the Federal Circuit and respondents admit, where there has been no direct infringement, there can be no inducement of infringement under §271(b).” 115

116. Akamai Technologies, Inc. v. Limelight Networks, Inc. “The decision below would require the courts to develop two parallel bodies of infringement law: one for liability for direct infringement, and one for liability for inducement. … “The courts should not create liability for inducement of noninfringing conduct where Congress has elected not to extend that concept.” 116

117. Akamai Technologies, Inc. v. Limelight Networks, Inc. “[I]n this case, performance of all the claimed steps cannot be attributed to a single person, so direct infringement never occurred. Limelight cannot be liable for inducing infringement that never came to pass.” 117

118. Akamai Technologies, Inc. v. Limelight Networks, Inc. “But the reason Limelight could not have induced infringement under §271(b) is not that no third party is liable for direct infringement; the problem, instead, is that no direct infringement was committed.” 118

119. Akamai Technologies, Inc. v. Limelight Networks, Inc. “Finally, respondents, like the Federal Circuit, criticize our interpretation of §271(b) as permitting a would-be infringer to evade liability by dividing performance of a method patent’s steps with another whom the defendant neither directs nor controls. We acknowledge this concern. Any such anomaly, however, would result from the Federal Circuit’s interpretation of §271(a) in Muniauction. … Respondents ask us to review the merits of the Federal Circuit’s Muniauction rule for direct infringement under §271(a). We decline to do so today.” 119

120. Divided/Joint Infringement Conclusions Always draft claims from a single party perspective when possible Include system claims –Write system claims that can be “used” by a single party 120

121. Procedural Aspects of Claim Interpretation 121

122. 122 Literal Infringement Inquiry - Does a device or method literally infringe one or more claims of a patent?

123. 123 Markman v. Westview Instruments, Inc. Procedural Background –Federal Circuit en banc decision; Supreme court unanimously affirms this decision. Factual Background Issue: –Who determines claim construction—a jury or the court?

124. 124 Markman v. Westview Instruments, Inc. “To ascertain the meaning of claims, we consider three sources: The claims, the specification, and the prosecution history. … Expert testimony, including evidence of how those skilled in the art would interpret the claims, may also be used.”

125. 125 Markman v. Westview Instruments, Inc. “Claims must be read in view of the specification, of which they are apart.” “For claim construction purposes, the [specification] may act as a sort of dictionary, which explains the invention and may define terms used in the claims.” “… [A] patentee is free to be his own lexicographer … [but] any special definition must be clearly defined in the specification.” Court may also consider: –Prosecution history (if in evidence)

126. 126 Markman v. Westview Instruments, Inc. “Extrinsic evidence may demonstrate the state of the prior art at the time of the invention.” “Extrinsic evidence consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises … and may demonstrate the state of the art at the time of the invention.”

127. 127 Markman v. Westview Instruments, Inc. “An infringement analysis entails two steps. The first step is determining the meaning and scope of the patent claims asserted to be infringed. The second step is comparing the properly constructed claims to the device accused of infringing.” “… [I]n a case tried to a jury, the court has the power and obligation to construe as a matter of law the meaning of language used in the patent claim.”

128. 128 Markman v. Westview Instruments, Inc. Ruling –Affirmed the judgment of the noninfringement. Holding –“… [W]e conclude that the interpretation and construction of patent claims, which define the scope of the patentee’s rights under the patent, is a matter of law exclusively for the court.” Dicta

129. 129 Markman v. Westview Instruments, Inc. Supreme Court –Judges are better suited to interpret the patents –Uniformity of interpretation

130. 130 Trial procedure effect of Markman? Resolution of meaning of disputed patent terms by use of a Markman hearing and ruling by judge can be binding on litigants and may have effect of a final determination so that a full-blown trial before a jury may never occur.

131. 131 Markman v. Westview Instruments, Inc. This means JUDGE not JURY will construe the language of claims. Can have major effect on the way patent infringement trials are conducted Before case is presented to jury, which must decide issues of FACT Judge may decide issues of LAW by construing claim language.

132. 132 Trial procedure changed by Markman Or effect of Markman will leave a clearer set of issues of fact which are to be decided by jury at trial. But... Ultimately the jury factually determines whether there is infringement unless the claims have been so construed by judicial ruling after Markman hearing as to preclude an infringing interpretation. he overall effect of Markman v. Westview Instruments has had the practical effect of making patent infringement suits a multistage affair in which the Markman hearing often determines the outcome of the litigation before trial before jury occurs.

133. 133 Claim Construction Intrinsic –Claims –Specification –Prosecution History Extrinsic –Inventor testimony –Dictionaries –Learned treatises

134. 134 Additional Claim Interpretation Notes “To literally infringe, an accused product or process must include each and every limitation of a claim. Therefore the omission of any limitation is fatal to literal infringement.” “… [W]here the patent documents are unambiguous, expert testimony regarding the meaning of a claim is entitled to no weight.”

135. 135 Jobs in Patent Law

136. 136 Patent Law Jobs In-house Counsel Outside Counsel Patent Agent In-house Facilitator Patent Examiner

137. 137 In-house counsel Primary Responsibilities One of few or one of many –Drafting and prosecuting applications (?) –Managing outside counsel –Working with patent committee –Working with inventors –Determining patent strategy for company –Monetizing IP –Design around efforts

138. 138 Outside Counsel Primary Responsibilities –Drafting and prosecuting applications –Preparing opinions –Drafting and negotiating license agreements –Litigating patents –Working with in-house counsel –Rainmaking

139. 139 Patent Agents Primary Responsibilities –Drafting and prosecuting applications –Provide specialized technical knowledge to drafting patent attorneys

140. 140 In-house Facilitator Primary Responsibilities –Assist inventors with identifying new inventions –Obtain disclosure regarding new inventions –Preparing invention disclosures for new inventions –Work with in-house counsel, outside counsel, and inventors

141. 141 Patent Examiner Primary Responsibilities –Examine patent applications in a technical field

142. 142 Program Completed All course materials - Copyright 2002-14 Randy L. Canis, Esq.