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The Year in Patent Litigation: A Review of Recent U.S. Patent Cases

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

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The Year in Patent Litigation: A Review of Recent U.S. Patent Cases

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  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 examiner’s 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 werematerial because they contained another examiner’s adverse decisions about substantially similar claims, and because they were not cumulative to the First and Second Office Actions. • The three un-cited references were not material since they were cumulative of cited references • Remanded to determine if there was deceptive intent.

  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 Larson’s 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 Infringing Design (4 buffer sides) Infringing Design (4 buffer sides) Patented Design (3 buffer sides) Patented Design (3 buffer sides) Prior Art 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 Swisa’s design  addition of a fourth side without a pad • Federal Circuit • Affirmed, applying new infringement standard. • Although pro-defendant, the decision articulates a clear test for infringement making it easier for a patent holder to prove infringement

  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 Case’s 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 Case’s 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 1st – find primary reference w/characteristics similar to the claimed design 2nd – find a number of secondary references to modify the primary reference creating the overall visual appearance of the claimed design

  20. Titan Tire Corp. v. Case New Holland, Inc.,2008-1078 (Fed Cir. 2009) • Obviousness and Design Patents • Trial court’s failure to specify a primary design was not fatal to the court’s decision • Similar to old “points of novelty” test used for infringement (focus on individual features rather than overall appearance) • Declined to comment on whether obviousness test should be conformed to Egyptian Goddess infringement test

  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: • “stable support” issue – Magnetic attachment means creates a tendency for the secondary lenses to move during jogging or jumping • “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 gasketmounted on said flange and engaging said lid in its closed position” • Honda’s 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 Honda’s 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 Honda’s 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 rejection—not the examiner's ultimate allowance of a claim—that gives rise to prosecution history estoppel “ “We leave open the question of whether the presumption of surrender would have attached as to the gasket limitation if, in response to the first office action, Felix had cancelled both claim 1 and claim 7, and had rewritten claim 8 in independent form, instead of attempting to secure the broader coverage of rewritten claim 7 as an intermediate step.” Does this place form over substance?

  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)

  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 examiner’s or the applicant’s 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 Lab’s, Inc. v. Mayo Collaborative Serv’s,2008-1403 (Fed. Cir. 2009) • Federal Circuit applies Bilski, even as the Supreme Court considers the fate of Bilski • Bilski test: A claimed process is surely patent-eligible under § 101 if: • It is tied to a particular machine or apparatus, or • It transforms a particular article into a different state or thing • In most cases mere data-gathering is not transformation of any article

  43. Prometheus Lab’s, Inc. v. Mayo Collaborative Serv’s,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 drug’s metabolites in the subject.

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

  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. Cardiac Pacemakers Inc. v. St Jude Medical Center, Inc.,2007-1296 (Fed. Cir. 2009) Small devices that detect and correct abnormal heart rhythms 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

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