Publications

Fletcher Yoder hosts Continuing Legal Education caselaw reviews during lunch on many Thursdays. Below are briefs summarizing cases that have been covered recently.

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 Ex parte Halligan, presented by Allen Powell on February 19, 2009
Applying the machine-or-transformation test of Bilski, the Board of Patent Appeals and Interferences holds that a “programmed computer method” is not patentable subject matter under 35 U.S.C. § 101.

 Ex parte Li and  Ex parte Cornea-Hasegan, presented by Stephanie Chi on February 19, 2009
Applying the machine-or-transformation test of Bilski, two panels of the Board of Patent Appeals and Interferences disagree as to the patentability of Beauregard claims.

 Avocent Huntsville Corp. v. Aten International Co., presented by Tait Swanson on February 12, 2009
With respect to a declaratory judgment action, the Federal Circuit finds that the district court does not have personal jurisdiction over a foreign corporation patentee that sells goods in the district through a subsidiary, and that sent a threat letter to a competitor within the district.

 In re TS Tech USA Corp., presented by Kenny Liu on February 12, 2009
The Federal Circuit, relying on recent Fifth Circuit precedent, orders transfer of a patent case from the Eastern District of Texas to the “clearly more convenient” Southern District of Ohio.

 Egyptian Goddess v. Swisa, presented by Rob Manware on January 29, 2009
With respect to design patent infringement, the Federal Circuit rejects the “point of novelty” and “non-trivial advance” tests, and holds that the “ordinary observer” test should be the sole test for determining infringement.

 Ex parte Yamaguchi, presented by Matt Osterhaus on January 29, 2009
In a precedential opinion, the Board of Patent Appeals and Interferences holds that a patent reference claiming priority to a provisional application may qualify as prior art under § 102(e) as of the filing date of the provisional application, even if the provisional application does not provide § 112 support for the subject matter eventually claimed in the patent reference.

 Aristocrat Technologies Australia v. International Game Technology, presented by Jennifer Cohen on January 22, 2009
The Federal Circuit holds that “improper revival” of a patent application by the USPTO is not available as a defense to infringement of a patent issuing from such an application.

 Ex parte Miyazaki, presented by Cathy Hewitt on January 22, 2009
In a precedential opinion, the Board of Patent Appeals and Interferences holds that the “insolubly ambiguous” standard for indefiniteness is only applicable to issued claims, and that if a claim in a pending application is amenable to two or more plausible claim constructions, the USPTO is justified in rejecting the claim as indefinite under 35 U.S.C. § 112, second paragraph.

 In re Bilski, presented by Pat Yoderon November 6, 2008
Previous tests for patentable subject matter under 35 U.S.C. § 101 are replaced with a “machine or transformation” test, particularly for method claims arguably relating to fundamental principles and mental processes.

 Ex parte Wasynczuk, presented by Brian Tompkins on November 6, 2008
The Board found a “computer-implemented method” claim patentable because the claim recited a process that employs one of the other statutory categories, e.g., a particular apparatus and not a generic computing device. The Board found a “computer-implemented system” claim not patentable because the claim did not recite a particular machine or particular apparatus, but was instead directed to every substantial practical application of an abstract idea.

 Muniauction, Inc. v. Thomson Corp., presented by Chris Rogers on August 7, 2008
The Federal Circuit again rejects a “joint infringement” theory and relies on KSR in holding that the use of a conventional web browser in connection with an auction process otherwise known in the art is obvious.

 E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions LLC, presented by Matt Dooley on July 31, 2008
Failure of a patentee to correct an Office error with respect to a priority claim during prosecution and patentee’s use of non-standard language to claim priority to a provisional application do not render invalid a post-issuance certificate of correction addressing such mistakes.

 Honeywell International Inc. v. Hamilton Sundstrand Corp. (2008), presented by John Rariden on July 24, 2008
With respect to rebuttal of a presumption that prosecution history estoppel applies, the Federal Circuit affirms that the patentee failed to rebut the presumption by demonstrating that an alleged equivalent was unforeseeable or that the rationale for a narrowing amendment bore no more than a tangential relation to the alleged equivalent.

 Aventis Pharma S.A. v. Amphastar Pharmaceuticals, Inc., presented by Clay Faries on July 17, 2008
The Federal Circuit finds inequitable conduct in the failure to submit certain dosage information from experimental results provided to the Examiner during prosecution. In a dissent, Judge Rader criticized, among other things, the recurring “plague” of inequitable conduct assertions in patent litigation and the apparent merging of the materiality and intent prongs of the inequitable conduct analysis.

 DSU Medical Corp. v. JMS Co., presented by Jeff Sinclair on July 10, 2008
The Federal Circuit resolves conflicting precedent regarding inducement under 35 U.S.C. § 271(b), stating that a plaintiff “has the burden of showing that the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce actual infringements,” and that this knowledge requirement necessarily includes the requirement that the infringer knew of the patent.

 Quanta Computer Inc. v. LG Electronics Inc., presented by Mike Fletcher on July 10, 2008
The Supreme Court reverses the Federal Circuit, holding that the doctrine of patent exhaustion applies to method claims.

 Symantec Corp. v. Computer Associates Int’l Inc., presented by Kenny Liu on June 26, 2008
In this case, the Federal Circuit concludes that a recitation added to the preamble of a claim during prosecution, and concurrent with the addition of another recitation to the body of the claim, has no independent significance and is not a limitation.

 Caraco Pharmaceutical Laboratories Ltd. v. Forest Laboratories Inc., presented by Jila Bakker on June 26, 2008
The Federal Circuit holds that, following filing of an abbreviated new drug application including a Paragraph IV certification, a generic drug manufacturer has standing to file a declaratory judgment action against a patent holder, even after the patent holder executes a covenant not to sue the generic drug manufacturer for infringement of the patent at issue.

 Litecubes, LLC v. Northern Light Products, Inc., presented by Allen Powell on June 12, 2008
In this case, the Federal Circuit addresses the effect of extra-territorial activity by an alleged infringer on subject matter jurisdiction and infringement.

 TALtech Ltd. v. Esquel Apparel, Inc., presented by Nathan Stacy on June 5, 2008
In this non-precedential opinion, the Federal Circuit affirms a holding of invalidity for failure to disclose best mode.

 DataTreasury Corp. v. Wells Fargo, presented by Gunnar Heinisch on May 29, 2008
Based on regional and state contract law, the Federal Circuit finds that a subsequent purchaser of a patent is not bound by an arbitration clause in a license agreement existing before purchase of the patent.

 Micron Technology Inc. v. MOSAID Technologies Inc., presented by Josh Tucker on May 29, 2008
In reviewing a suit for declaratory judgment of noninfringement, the Federal Circuit finds the existence of an actual controversy between the parties based in part on the later filing of a patent infringement suit by the patentee in another jurisdiction, and finds that the original district court abused its discretion in transferring the suit to the patentee’s chosen forum.

 O2 Micro International v. Beyond Innovation Technology, presented by Matt Osterhaus on May 22, 2008
In patent litigation, a district court must construe all disputed claim terms, even those having “a well-understood definition.”

 Zenith Electronics Corp. v. PDI Communication Systems, Inc., presented by Jeff Peterson on May 22, 2008
The Federal Circuit again rejects a “practicing the prior art” defense to patent infringement; the court also finds that a purchaser of the patented product at issue has an implied license to use the product in an otherwise infringing manner based on express licenses between the patentee and manufacturers.

 PowerOasis Inc. v. T-Mobile USA Inc., presented by Cathy Hewitt on May 15, 2008
The Federal Circuit holds that a patentee has the burden of proving priority to the filing date of an earlier application unless the USPTO explicitly considers priority during prosecution.

 Pfizer Inc. v. Teva Pharmaceuticals USA Inc., presented by Tait Swanson on May 15, 2008
The Federal Circuit holds that claims in a continuation-in-part application filed following a restriction requirement in a parent application are invalid based on obviousness-type double patenting in view of the parent application.

 Ex parte Letts, presented by Jennifer Cohen on May 8, 2008
In a somewhat rare precedential opinion, the Board of Patent Appeals and Interferences sounds a cautionary note with respect to claim groupings in Appeal Briefs and conditional withdrawals of specific claims on appeal.

 Finisar Corp. v. The DirecTV Group, Inc., presented by Pat Yoder on May 8, 2008
The Federal Circuit reverses a district court claim construction based on a differing claim construction by another district court, and affirms the district court holding of invalidity of certain software-related means-plus-function claims under 35 U.S.C. § 112, ¶ 2, for failure to provide sufficient structure within the specification.

 SRI Int’l v. Internet Security Systems, presented by Brian Tompkins on April 24, 2008
The Federal Circuit holds that a paper publicly available from a non-indexed FTP site prior to the critical date of the claims does not qualify as prior art under 35 U.S.C. § 102(b).

 Atlanta Attachment Co. v. Leggett & Platt, Inc., presented by Lee Eubanks on April 24, 2008
The Federal Circuit considers the “experimental use” exception to the on-sale bar of Section 102, ultimately holding the claims to be invalid.

 Agrizap, Inc. v. Woodstream Corp., presented by Chris Rogers on April 17, 2008
In these two cases, the Federal Circuit applies aspects of KSR, finding the claims of one party to be obvious as reciting familiar elements yielding predictable results, and the claims of another party to be non-obvious based, in part, on unexpected results.

 Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc., presented by Lee Eubanks on April 17, 2008
Based on intrinsic evidence, the Federal Circuit affirms a district court claim construction decision in which the conjunction “and” is used to express mutually exclusive alternatives. Additionally, in view of evidence of unpredictability among alternative formulations, unexpected results, and objective indicia of nonobviousness, the Federal Circuit affirms the lower court finding of nonobviousness of a claimed compound.

 Aristocrat Technologies Australia v. International Game Technology, presented by Gunnar Heinisch on April 10, 2008
The Federal Circuit affirms a lower court holding that computer-related means-plus-function claims are invalid for failing to disclose an algorithm for performing the recited functionality.

 Tafas v. Dudas, presented by John Rariden on April 10, 2008
A district court grants summary judgment to Tafas, finding that the recent continuation and claim limit rules advanced by the USPTO are substantive in nature, and void as inconsistent with the law and in excess of USPTO authority.

 American Seating Co. v. USSC Group, Inc., presented by Jeff Sinclair on March 27, 2008
The Federal Circuit affirms an award of lost profits to a patentee based on offers to sell an infringing product, although the infringer ultimately used non-infringing products to complete the sales transactions.

 Amado v. Microsoft Corp., presented by Mike Fletcher on March 27, 2008
The Federal Circuit affirms the dissolution of a previously-granted permanent injunction in view of eBay v. MercExchange, and provides guidance regarding a reasonable royalty amount for infringing activity during a prior stay of the injunction.

 Shatterproof Glass Corp. v. Libbey-Owens Ford Co., presented by Kenny Liu on March 13, 2008
In the second case recently cited by the Federal Circuit in support of an ongoing royalty that allows continued infringing activity, the Federal Circuit does not find the amount of a royalty awarded by a district court for a compulsory patent license to be clearly erroneous or an abuse of discretion.

 United States v. Glaxo Group Ltd., presented by Clay Faries on March 13, 2008
In the first of two cases recently relied upon by the Federal Circuit to support the imposition of an ongoing royalty (or compulsory license) on parties to a patent suit following an infringement verdict, the Supreme Court orders compulsory patent licensing at “reasonable charges” as a remedy to antitrust violations by the patentee.

 Sitrick v. Dreamworks LLC, presented by Nathan Stacy on March 6, 2008
In this case, the Federal Circuit continues its recent expansion and application of the doctrine of full-scope enablement to invalidate patent claims having scope greater than that enabled by the specification.

 Gentry Gallery Inc. v. Berkline Corp., presented by Allen Powell on March 6, 2008
In view of the specification and testimony that the inventor had not, at the time the patent application was filed, considered a particular structural arrangement encompassed by claims broadened during prosecution, the Federal Circuit invalidates these claims based on the written description requirement.

 Integra v. Merck, presented by Jila Bakker on February 28, 2008
On remand from the Supreme Court, the Federal Circuit attempts to clarify the bounds of the FDA exemption of 35 U.S.C. § 271(e)(1); a dissenting opinion argues that the majority implicitly construes this exemption to eliminate protection for research tool inventions.

 Automotive Technologies International Inc. v. BMW of North America Inc., presented by Josh Tucker on February 21, 2008
Specification of patent for side impact airbag sensors enables mechanical sensors but not electronic sensors; as both the mechanical and electronic sensors are encompassed by the asserted claims, the claims are invalid for failing to enable their full scope.

 Baldwin Graphic Systems, Inc. v. Siebert, Inc., presented by Matt Dooley on February 21, 2008
Patentee’s failed attempt during prosecution of a reissue patent to remove limiting language in the detailed description results in court importing the limiting language into a broader claim during litigation.

 Innogenetics, N.V. v. Abbott Laboratories, presented by Matt Osterhaus on February 14, 2008
Upon a finding of patent infringement, a court may not award the patentee forward-looking damages and then enjoin future infringing activities by the infringer.

 Paice LLC v. Toyota Motor Corp., presented by Jeff Peterson on February 14, 2008
In lieu of an injunction, a district court may impose an “ongoing royalty” that requires future royalty payments from an infringer to a patentee, but allows the infringer to continue its infringing operations.

 Biotechnology Industry Organization v. District of Columbia, presented by Cathy Hewitt on February 7, 2008
State or local laws that prohibit drug manufacturers or their licensees from selling or imposing minimum resale requirements for patented prescription drugs at “excessive prices,” are preempted by federal patent laws.

 BMC Resources Inc. v. Paymentech LP, presented by Tait Swanson on February 7, 2008
Traditional standard for finding of direct infringement of method patent requires showing that single party performed all steps of claimed method and, if more than one party performed steps, that standard is not modified to permit plaintiff to prove joint infringement merely by showing that infringement resulted from “participation and combined action” of more than one party.

 In re Nuijten, presented by Rob Manware on January 31, 2008
Application claims directed to “[a] signal with embedded supplemental data” require some physical carrier of information, such as an electromagnetic wave, in which information is embedded; however, transitory forms of signal transmission, such as an electromagnetic wave or an electrical signal, cannot be considered to fall within any of the four statutory classes under 35 U.S.C. § 101 and, thus, are not patentable.

 In re Comiskey, presented by Chris Drymalla on January 31, 2008
Mental processes, i.e., processes that are not tied to specific machines and do not create or alter manufactures or compositions of matter, are not patentable under 35 U.S.C. § 101, even if they have a practical application.