On June 19, 2009, Taiwan's Industrial Technology Research Institute ("ITRI") filed two patent infringement lawsuits against Samsung Electronics America Inc. and two other Samsung entities in the U.S. District Court for the Western District of Arkansas (Case Nos. 4:09-cv-04063, 4:09-cv-04064).
ITRI claims that Samsung's i607 and D520 models infringed U.S. Patent Number 6,459,413, entitled “Multi-frequency band antenna," and its SPH-A940, SPH-M220, SPH-M320 and SGH-D307 models infringe U.S. Patent Number 5,208,472, entitled “Double spacer salicide MOS device and method.”
ITRI is a research institute backed by the Taiwanese government, and many Taiwanese high tech companies trace their origins to ITRI. These two cases appear to be the first patent infringement cases brought by a Chinese or Taiwanese patent holding company in the US. We will continue to monitor these cases, as a favorable outcome may be followed by more cases brought by patent holding companies from the greater China region.
Wednesday, June 24, 2009
Saturday, June 20, 2009
IP Law360 Published "Chinese Patent Litigation: Tips For US Companies" authored by Lei Mei, Partner at Mei & Mark LLP.
Click here for a copy of the article.
Saturday, June 6, 2009
Standing to Sue to Correct Inventorship in a Federal Court under 35 U.S.C. § 256 Requires Ownership Interest or Direct Financial Rewards if Corrected
Larson v. Correct Craft, Inc., No. 2008-1208, -1209 (Fed. Cir. June 5, 2009):
Holding:
If an alleged inventor lacks an ownership interest or being declared the sole inventor will not generate any other direct financial rewards, the alleged inventor has no constitutional standing to sue for correction of inventorship in federal court under 35 U.S.C. § 256. Slip op. at 12.
Relevant Facts:
An inventor assigned all his rights in a patent to his company. Believing he was misled, however, he sued the company alleging fraud, among other claims, and seeking declaration that he is the sole inventor of the patent.
Because he has no concrete financial interest in the correction of the patents in this case because he has assigned away all of his patent rights, and he claims no purely reputational interest in the patents, the Court held that he has no standing to bring a stand-alone action under § 256, unless and until Larson obtains equitable relief that restores his ownership right.
Comment:
Reputational Injury? The Court leaves open the question of whether a purely reputational interest is sufficient to confer standing for a § 256 claim. Id. at 13. If the opportunity arises, I believe the Court will find that reputational injury is sufficient to confer standing for a § 256 claim. Specifically, the line between financial injury and reputational injury is very superficial nowadays. Obviously, reputation leads to financial rewards, as it allows a person to enhance his resume and thus secure a better paying job.
Holding:
If an alleged inventor lacks an ownership interest or being declared the sole inventor will not generate any other direct financial rewards, the alleged inventor has no constitutional standing to sue for correction of inventorship in federal court under 35 U.S.C. § 256. Slip op. at 12.
Relevant Facts:
An inventor assigned all his rights in a patent to his company. Believing he was misled, however, he sued the company alleging fraud, among other claims, and seeking declaration that he is the sole inventor of the patent.
Because he has no concrete financial interest in the correction of the patents in this case because he has assigned away all of his patent rights, and he claims no purely reputational interest in the patents, the Court held that he has no standing to bring a stand-alone action under § 256, unless and until Larson obtains equitable relief that restores his ownership right.
Comment:
Reputational Injury? The Court leaves open the question of whether a purely reputational interest is sufficient to confer standing for a § 256 claim. Id. at 13. If the opportunity arises, I believe the Court will find that reputational injury is sufficient to confer standing for a § 256 claim. Specifically, the line between financial injury and reputational injury is very superficial nowadays. Obviously, reputation leads to financial rewards, as it allows a person to enhance his resume and thus secure a better paying job.
Patent Interference: Which Specification Informs the Interpretation of the Contested Claims?
Agilent Techs., Inc. v. Affymetrix, Inc., No. 08-1466 (Fed. Cir. June 4, 2009):
Holding:
When interpretation is required of a claim that is copied for interference purposes and the question is whether the copying party’s specification adequately supported the subject matter claimed by the other party, the copied claim is viewed in the context of the patent from which it was copied. Slip op. at 8-9.
Dictum:
When the issue is whether the claim is patentable to one or the other party in light of prior art, the PTO and courts must interpret the claim in light of the specification in which it appears. Id. at 9.
Holding:
When interpretation is required of a claim that is copied for interference purposes and the question is whether the copying party’s specification adequately supported the subject matter claimed by the other party, the copied claim is viewed in the context of the patent from which it was copied. Slip op. at 8-9.
Dictum:
When the issue is whether the claim is patentable to one or the other party in light of prior art, the PTO and courts must interpret the claim in light of the specification in which it appears. Id. at 9.
Preliminary Injunction: The Trial Court’s Responsibilities
Titan Tire Corp. v. Case New Holland, Inc., No. 08-1078 (Fed. Cir. June 3, 2009):
Holding:
At the preliminary injunction stage, when analyzing the likelihood of success factor, the trial court, “must determine whether it is more likely than not that the challenger will be able to prove at trial, by clear and convincing evidence, that the patent is invalid.” Slip op. at 12.
Note:
At the preliminary injunction stage, “[i]nstead of the alleged infringer having to persuade the trial court that the patent is invalid, at this stage it is the patentee, the movant, who must persuade the court that, despite the challenge presented to validity, the patentee nevertheless is likely to succeed at trial on the validity issue.” Id. at 7.
“[T]he trial court could understand its task to involve not only examining the alleged infringer’s evidence of invalidity, but also considering rebuttal evidence presented by the patentee and determining whether the patentee can show that the invalidity defense “lacks substantial merit.” Id. at 8.
“[T]he patentee’s rebuttal of the challenger’s invalidity evidence is an important part of the court’s overall evaluation of the evidence.” Id.
Holding:
At the preliminary injunction stage, when analyzing the likelihood of success factor, the trial court, “must determine whether it is more likely than not that the challenger will be able to prove at trial, by clear and convincing evidence, that the patent is invalid.” Slip op. at 12.
Note:
At the preliminary injunction stage, “[i]nstead of the alleged infringer having to persuade the trial court that the patent is invalid, at this stage it is the patentee, the movant, who must persuade the court that, despite the challenge presented to validity, the patentee nevertheless is likely to succeed at trial on the validity issue.” Id. at 7.
“[T]he trial court could understand its task to involve not only examining the alleged infringer’s evidence of invalidity, but also considering rebuttal evidence presented by the patentee and determining whether the patentee can show that the invalidity defense “lacks substantial merit.” Id. at 8.
“[T]he patentee’s rebuttal of the challenger’s invalidity evidence is an important part of the court’s overall evaluation of the evidence.” Id.
Ensnarement, Lost Profits, Reverse Doctrine of Equivalents: All in One Case
Depuy Spine, Inc. v. Biedermann Motech GMBH, No. 2008-1240, -1253, -1401 (Fed. Cir. June 1, 2009):
Holding:
1. “Ensnarement, like prosecution history estoppel, is a legal limitation on the doctrine of equivalents to be decided by the court, not a jury.” Slip op. at 7.
2. The first Panduit factor simply asks whether demand existed for the patented product and the focus on particular features corresponding to individual claim limitations is unnecessary. Id. at 21, 23.
3. “In contrast to such functionally-integrated components that are properly subject to lost profits, ‘there is no basis for extending that recovery to include damages for [unpatented] items that are neither competitive with nor function with the patented invention.’” Id. at 27.
4. “The reverse doctrine of equivalents, like the doctrine of equivalents, is applied to individual limitations of a claim.” Thus, the fact that a party argued on claim limitation under a doctrine of equivalents theory of infringement does not prevent the other party from raising the reverse doctrine of equivalents against the literal scope of a different limitation. Id. at 38.
Notes:
“Ensnarement bars a patentee from asserting a scope of equivalency that would encompass, or ‘ensnare,’ the prior art.” Id. at 6.
“A helpful first step in an ensnarement analysis is to construct a hypothetical claim that literally covers the accused device.” Id. at 11.
“Next, the district court must assess the prior art introduced by the accused infringer and determine whether the patentee has carried its burden of persuading the court that the hypothetical claim is patentable over the prior art.” Id.
+++
[T]he four-factor Panduit test . . . requires a showing of (1) demand for the patented product, (2) absence of acceptable noninfringing substitutes, (3) manufacturing and marketing capability to exploit the demand, and (4) the amount of profit that would have been made.
+++
Id. at 20 (citing Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978)).
+++
[W]here a device is so far changed in principle from a patented article that it performs the same or similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the [reverse] doctrine of equivalents may be used to restrict the claim and defeat the patentee’s action for infringement.
+++
Id. at 37 (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608-09 (1950)).
Holding:
1. “Ensnarement, like prosecution history estoppel, is a legal limitation on the doctrine of equivalents to be decided by the court, not a jury.” Slip op. at 7.
2. The first Panduit factor simply asks whether demand existed for the patented product and the focus on particular features corresponding to individual claim limitations is unnecessary. Id. at 21, 23.
3. “In contrast to such functionally-integrated components that are properly subject to lost profits, ‘there is no basis for extending that recovery to include damages for [unpatented] items that are neither competitive with nor function with the patented invention.’” Id. at 27.
4. “The reverse doctrine of equivalents, like the doctrine of equivalents, is applied to individual limitations of a claim.” Thus, the fact that a party argued on claim limitation under a doctrine of equivalents theory of infringement does not prevent the other party from raising the reverse doctrine of equivalents against the literal scope of a different limitation. Id. at 38.
Notes:
“Ensnarement bars a patentee from asserting a scope of equivalency that would encompass, or ‘ensnare,’ the prior art.” Id. at 6.
“A helpful first step in an ensnarement analysis is to construct a hypothetical claim that literally covers the accused device.” Id. at 11.
“Next, the district court must assess the prior art introduced by the accused infringer and determine whether the patentee has carried its burden of persuading the court that the hypothetical claim is patentable over the prior art.” Id.
+++
[T]he four-factor Panduit test . . . requires a showing of (1) demand for the patented product, (2) absence of acceptable noninfringing substitutes, (3) manufacturing and marketing capability to exploit the demand, and (4) the amount of profit that would have been made.
+++
Id. at 20 (citing Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978)).
+++
[W]here a device is so far changed in principle from a patented article that it performs the same or similar function in a substantially different way, but nevertheless falls within the literal words of the claim, the [reverse] doctrine of equivalents may be used to restrict the claim and defeat the patentee’s action for infringement.
+++
Id. at 37 (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608-09 (1950)).
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