Supremes Sink Seagate
| June 15, 2016
Halo Electronics, Inc. v. Pulse Electronics, Inc., et al.
June 13, 2016
Summary: The U.S. Supreme Court unanimously vacated the Seagate test for enhanced damages as inconsistent with §284. District courts have discretion to award enhanced damages where appropriate “as a sanction for egregious infringement behavior.”
Tags: 35 U.S.C. §284 > enhanced damages > non-infringement opinion > Seagate > willful infringement
Definition in specification trumps asserted meaning to a person of ordinary skill in the art and the doctrine of claim differentiation.
| June 10, 2016
Ruckus Wireless, Inc. v. Innovative Wireless Solutions, LLC
May 31, 2016
Before Prost, Reyna, and Stark. Opinion by Reyna, Dissent by Stark.
Summary
The specification consistently characterized “communications path” in terms of wired connections. In the absence of any evidence, either intrinsic or extrinsic, to the contrary, these characterizations are understood as definitional and limit “communications path” to a wired connection.
Details
The patent in suit: Innovative Wireless Solutions (“IWS”) owns U.S. Patent Nos. 5,912,895; 6,327,264; and 6,587,473 (the “Terry patents”), directed to techniques for providing access to a local area network (“LAN”) from a relatively distant computer, using an approach by which a “master” modem in the LAN dictates the timing of one-way communications between the master modem and a “slave” modem in the distant computer.
The patents, which are related to each other as parent and continuations, only describe connecting the master and slave modems over physical wires, such as a telephone line, and make no mention of wireless communications, but the claims recite that the two modems are connected via a “communications path.”
Issue at trial: The central dispute during claim construction was whether the recited “communications path” captures wireless communications or is limited to wired communication.
Ruckus argued “that its wireless equipment does not infringe the Terry patents because the Terry patents are limited to wired rather than wireless communications.”
The district court’s claim construction: The district court based its claim interpretation on intrinsic evidence, primarily the specification, which repeatedly refers to “two-wire lines and telephone lines,” and with respect to alternative embodiments says that “although as described here the line 12 is a telephone subscriber line, it can be appreciated that the same arrangement of master and slave modems operating in accordance with the new protocol can be used to communicate Ethernet frames via any twisted pair wiring which is too long to permit conventional 10BASE-T or similar LAN interconnections.”
The district court construed “communications path” to mean “communications path utilizing twisted-pair wiring that is too long to permit conventional 10BASE-T or similar LAN (Local Area Network) interconnections.”
The CAFC’s opinion: Because the district court relied on intrinsic evidence, its claim construction was a legal determination reviewed de novo by the CAFC.
Claim interpretation is based on the ordinary and customary meaning of the words in a claim, which 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,” but importantly, within the context of the patent. The CAFC pointed out that it is legal error to rely “on extrinsic evidence that contradicts the intrinsic record.”
IWS presented three arguments on appeal:
- The district court imported the wired limitation into the claims, thereby committing reversible error.
- The district court read a “wired” limitation into the claims on the basis that every disclosed embodiment was wired, thereby committing reversible error.
- Several dependent claims limited the communications path to wired lines, so the doctrine of claim differentiation requires that the independent claims to be interpreted not to be so limited.
Ruckus argued that “communications path” does not actually have a plain and ordinary meaning to a person of ordinary skill in the art and that the specification limited the scope of “communications path” to a wired connection. It also countered the “claim differentiation” argument by pointing out that the type of wired line recited in the dependent claims is only one of several types disclosed in the specification, so that all that the doctrine of claim differentiation requires is that the “communication path” not be limited to the type of wired line recited in the dependent claims.
The CAFC agreed with Ruckus that IWS could not point to any intrinsic or extrinsic evidence in support of an ordinary meaning for “communications path” encompassing both wired and wireless communications, and that the dependent claims merely exclude other types of wired communications disclosed in the patents; and agreed with the district court that the intrinsic evidence (specifically, the specification’s description of the invention) strongly supported an understanding that “communications path” must be a wired connection.
Finally, the CAFC pointed out that the canons of claim construction require that “if, after applying all other available tools of claim construction, a claim is ambiguous, it should be construed to preserve its validity”; but that “[b]ecause the specification makes no mention of wireless communications, construing the instant claims to encompass that subject matter would likely render the claims invalid for lack of written description.”
The CAFC accordingly affirmed the district court’s claim interpretation and final judgment of noninfringement.
Dissent: The dissent states that the district court’s judgment should have been vacated and the case remanded to the district court to provide the parties an opportunity to present extrinsic evidence on the meaning of “communications path.”
Take-away
When preparing an application, check dictionaries and do an online search to verify that terms used to designate elements of the invention have a well-understood meaning. If a term does not have a well-understood meaning, be aware that descriptions of the element and its embodiments may be viewed as implicit definitions that limit its scope.
Tags: claim construction > claim differentiation > extrinsic evidence > intrinsic evidence > ordinary meaning
A fax invalidates a patent due to the on sale bar
| June 8, 2016
Merck & Cie et al. v. Watson Laboratories, Inc.
May 13, 2016
Before Dyk, Mayer and Hughes. Opinion by Mayer.
Summary
Over a year before filing for a patent on the drug MTHF, Merck corresponded with a potential commercial partner regarding sale of a small quantity of the drug. Although the sale was never consummated, the correspondence was sufficient to be an invalidating offer for sale. In particular, a fax providing price, quantity and delivery information in response to a specific request for such information was considered sufficient, even though safety and liability information was not yet provided.
Tangible Components in the Claims could not save from 12(b)(6)Dismissal for patent-ineligible subject matter after Alice
| June 6, 2016
TLI Communications LLC v. AV Automotive et al.
May 17, 2016
Before Dyk, Schall and Hughes. Opinion by Hughes.
Summary
The East-District of Virginia dismissed the patent infringement suit under FRCP 12(B)(6) on the basis that the claims did not contain patent-eligible subject matter. TLI appealed to the CAFC. The Court, relying heavily on the disclosures of the patent’s specification, affirmed the ruling noting that the tangible components in the claims were insufficient to survive the Alice test even without a finding of fact.
Tags: 35 U.S.C. Section 101 > Motion to Dismiss > patent eligible subject matter
“CHURRASCOS” determined generic for restaurant services – earlier registration have no bearing on the USPTO’s genericness analysis
| May 19, 2016
In re: Cordua Restaurants, Inc.
May 13, 2016
Before Prost, Dyk, Stoll. Opinion by Dyk.
Summary
Appellant Cordua Restaurants, Inc. (Cordua) applied to register a stylized word “CHURRASCOS” for “Bar and restaurant services; Catering.” Although Cordua had prior registration for the standard character mark “CHURRASCOS” for the same services, that the mark was registered in the Principal Register had no bearing on the USPTO’s determination of whether the stylized form of “CHURRASCOS” was generic. In addition, even if the public does not understand the term to refer to the broad genus of restaurant services as a whole, the term is still generic, as the relevant public understands the term to refer to a type of restaurant within the broad genus of restaurant services. The U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Trademark Trial and Appeal Board (TTAB), finding the mark to be generic, and ineligible for registration.
Cordua Restaurants, Inc.（以下、「Cordua社」）のCHURRASCOSデザイン文字商標出願は、CHURRASCOSという言葉が、レストランサービスについて使用された場合、一般用語であるため、登録はできないとして拒絶された。Cordua社は、先登録として、標準文字のCHURRASOCOS商標登録を有しており、この先登録が存在するため、デザイン文字出願の方も登録されるべきと主張したものの、CAFCはこれを受け付けなかった。また、CHURRASCOSという言葉が、レストランサービス全体において一般用語として認識されていない場合でも、当該者はその言葉を、レストランサービスという大きな括り中のレストランの一種類であると理解しているため、CHURRASCOSは一般用語である。
More than one point of attack of Prima Facie cases of Obviousness can be presented
| May 16, 2016
Pride Mobility Products Corp. v. Permobil, Inc.
April 5, 2016
Before Reyna, Chen, and Taranta. Opinion by Taranta.
Summary:
Pride argued before the Board, in an inter partes review, and the CAFC that a skilled artisan would not be motivated to combine the cited art, as alleged, because it would compromise the performance of the resulting wheelchair. The argument by Pride focused only on a lack of motivation to combine the cited art and did not address the potential issue that if the rejection is sustained, there is a prima facie case of obviousness. The Board found, and the CAFC affirmed, that the disputed claims were obvious.
Design patent claim must not be construed eliminating functional elements.
| May 11, 2016
Sport Dimension v. The Coleman Company
April 19, 2016
Before Moore, Hughes and Stoll. Opinion by Stoll.
Summary:
The district court interpreted the claim of a design patent for a personal flotation device eliminating armbands and side torso tapering entirely from the claim because these are functional. CAFC rejected the claim construction vacating the judgment of non-infringement and remanded. CAFC ruled that even though the elements served a functional purpose, the construction improperly converted the claim scope of the design patent from one that covered the overall ornamentation to one that covered individual elements.
地裁は、救命胴衣に関するデザイン特許のクレームの解釈で、アームバンドと、次第に細くなる胴体側部をクレームから除外して解釈した。CAFCは、クレーム解釈及び非侵害の判断を破棄し、地裁に差戻した。CAFCはそれらの要素が機能的目的のものであっても、地裁の解釈は、全体的な装飾的観点をカバーするデザイン特許のクレーム範囲を、個々の要素をカバーするものに不当に変更するものであるとした。
The Federal Circuit Resolves Uncertainties of Venue Selection in Patent Cases
| May 6, 2016
In Re: TC Heartland LLC
April 29, 2016
Before: Moore, Linn, and Wallach. Opinion by Moore.
Summary:
The Federal Circuit denied a petition for a writ of mandamus by TC Heartland LLC (“Heartland”) after the U.S. District Court for the District of Delaware denied its motions to dismiss the complaint for lack of personal jurisdiction and transfer venue. The Federal Circuit held that Congress’ 2011 amendments to 28 U.S.C. §1391 did not overruled the VE Holding Corp. and actually broadened the applicability of the definition of corporate residence. Therefore, at least for now, the status quo remains in place with regard to venue in patent cases.
본 사건은 Heartland사가 연방항소법원에 Kraft사를 상대로 직무집행영장소송 (Writ of Mandamus)을 제기한 건으로, 연방항소법원은 기존의 특허 소송 재판지 (venue) 관련 판례를 뒤집지 않고 Heartland의 청원을 기각한다. 당분간 특허 소송 재판지에 관한 논란은 줄어들 것으로 예상된다. 하지만 특허소송 재판지는 특허 소송에 큰 영향을 미치므로 앞으로 의회 및 대법원의 대응을 주목할 필요가 있다.
Tags: 28 U.S.C. §1391 > 28 U.S.C. §1400 > personal jurisdiction > venue > writ of mandamus
A Federal Circuit Reminder of the Continued Importance of Laboratory Notebooks and Other Corroborative Evidence of Inventorship
| April 22, 2016
Meng v. Chu
April 5, 2016
Before: Prost, Dyk and Wallach. Opinion by Prost
Summary
In 1987, a research group at the High Pressure Low Temperature (“HPLT”) lab at the University of Houston lead by Ching-Wu Chu, a professor and the lab’s lead investigator, developed inventions related to superconducting compounds having transition temperatures higher than the boiling point of liquid nitrogen. The University of Houston filed two applications listing Chu as the sole inventor. The inventions were assigned to the University of Houston and licensed to Dupont. The University of Houston and Ching-Wu evenly shared the license proceeds received from Dupont, and Chu gave $274,000 from his share to Pei-Herng Hor, a grad student at the lab, and Ruling Meng, an independent scientist at the lab. After issuance of patents for the inventions, in 2008 Hor filed a law suit in the District Court for the Southern District of Texas seeking to be added as a co-inventor and in 2010 Meng intervened seeking to also be added as a co-inventor. The District Court denied both Hor’s and Meng’s claims on the bases that they had failed to meet the “heavy burden” of proving co-inventorship by clear and convincing evidence despite Hor and Meng having received proceeds under the license, having been the first and second listed authors on a publication related to the inventions, and having been commended by Chu in a letter of recommendation for Hor for his discoveries related to the inventions. The Federal Circuit affirmed.
Federal Circuit Considers What A Specification Should Disclose To Survive Alice
| April 13, 2016
Vehicle Intelligence v. Mercedes-Benz (non-precedential)
December 28, 2015
Panel: Moore, Clevenger, and Reyna. Opinion: per curiam.
Summary
Although this decision is non-precedential, it provides a rare glimpse into the Federal Circuit’s consideration of the types of technical detail the specification must disclose in order to support the patent eligibility of a computer-implemented software invention. The decision asks at least twenty times how some claimed component works, how some claimed feature is implemented, how something is made faster, more accurate and reliable, and how existing computer hardware and software components are made different. This decision also reiterates the proposition that lack of total preemption is not enough to overcome patent ineligibility.
