Wednesday, September 23, 2009

US Copyright Office Registration Does Not Qualify As a “Printed Publication” under § 102

In re Lister, No. 2009-1060 (Fed. Cir. Sept. 22, 2009):


US Copyright Office’s automated catalog alone is insufficient to support a finding of public accessibility due to an inadequate index, because the automated catalog is not sorted by subject matter and could only be searched by either the author’s last name or the first word of the title of the work. Slip op. at 12-13.


The inventor filed a copyright registration more than one year before filing a patent application. The PTO rejected the patent application under § 102 based on the submitted manuscript for the copyright registration. However, US Copyright Office’s automated catalog was not sorted by subject matter and could only be searched by either the author’s last name or the first word of the title of the work. Westlaw and Dialog obtained the automated catalog data from the Copyright Office and entered it into their own databases. Users of the Westlaw and Dialog databases could perform keyword searches of the titles, but not the full texts, of the works.


This case makes clear that because US Copyright Office’s automated catalog is not adequately indexed to qualify as a “Printed Publication” under § 102. However, because Westlaw and Dialog obtained the automated catalog data from the Copyright Office and entered it into their own databases, and allow users to perform keyword searches of the titles, Westlaw and Dialog databases may qualify as a “Printed Publication” under § 102. In this case, however, the PTO did not prove when the reference became available in the Westlaw and Dialog databases, and therefore cannot prove that the reference is a § 102 reference.

Friday, September 18, 2009

Standing to Sue: When Must an Exclusive Licensee Join the Patentee?

AsymmetRx, Inc. v. Biocare Med., LLC, No. 2009-1094 (Fed. Cir. Sept. 18, 2009):


When a patentee retains substantial control over the patent rights it was exclusively licensing such that it did not convey all substantial rights under the patents, it did not make the license tantamount to an assignment, and the exclusive licensee must therefore be considered a licensee, not an assignee, and thus cannot sue for patent infringement without joining the patentee. Slip op. at 12.

Relevant Facts:

The AsymmetRx License effected a broad conveyance of rights to AsymmetRx by Harvard, but Harvard retained substantial interests under the patents, including that (1) if AsymmetRx elects not to exercise its right to sue, Harvard has the right to bring its own infringement action, (2) Harvard retained the right to make, use, and license the invention for academic research purposes, (3) Harvard retained a great deal of control over aspects of the licensed products within the commercial diagnostic field, and (4) AsymmetRx was required to grant sublicenses suggested by Harvard.


It is well settled that whether an exclusive licensee has the standing to sue on its own (i.e., without joining the patentee) depends on whether the transfer of a particular right or interest constitutes an assignment or license. Of course, “whether a transfer of a particular right or interest was an assignment or license did not depend on the name applied to it, but on the intention of the parties as revealed by the record.” Slip op. at 7.

Determining whether the transfer of a particular right or interest constitutes an assignment or license, however, is fact intensive and can be complicated.

The cases whether the courts have found the standing to sue:

Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 875 (Fed. Cir. 1991): Here, the right to sue was granted in its entirety, subject only to the obligation to inform the patent owner of the existence of the suit. The only rights under the patent that the patent owner retained were a veto right on sublicensing, the right to obtain patents on the invention in other countries, a reversionary right in the patent in the event of bankruptcy, and a right to receive infringement damages.

Speedplay, Inc. v. Bebop, Inc., 211 F.3d 1245, 1251 (Fed. Cir. 2000): The license grant was not subject to any prior-granted licenses or to any retained rights by the licensor to practice the patent. It did not grant the original patent owners “the right to participate in an infringement action brought by [the licensee], nor [did] it limit [the licensee’s] management of any action.” In addition, the Federal Circuit found that a clause allowing the patent owners to bring their own infringement action if the licensee failed to do so within three months was an “illusory” retention of the right to sue because the licensee could “render that right nugatory by granting the alleged infringer a royalty-free sublicense.”

The cases whether the courts have found no standing to sue:

Abbott Labs. v. Diamedix Corp., 47 F.3d 1128, 1132 (Fed. Cir. 1995): The Federal Circuit found that the patent owner had retained too great an interest in the patents to enable the licensee to sue for infringement on its own. Those interests included “a limited right to make, use, and sell products embodying the patented inventions, a right to bring suit if [the licensee] declined to do so, and the right to prevent [the licensee] from assigning its rights under the license to any party other than a successor in business.” The agreement also stated that if the patent owner asked the licensee to bring suit against an alleged infringer and the licensee declined to do so, the patent owner had the right to bring its own infringement action. In addition, even if the licensee did exercise its option to sue for infringement, it was obligated under the agreement not to “prejudice or impair the patent rights in connection with such prosecution or settlement.”

Key Question?

Is your case more similar to Abbott or to Vaupel or Speedplay in terms of what rights the patentee retained under the patents?

In addition, as a practical note, if the exclusive licensee does not have the standing to sue on its own, it should try to join the patentee. However, if the patentee, being within the jurisdiction, refuses or is unable to join an exclusive licensee as co-plaintiff, the licensee may make it a party defendant by process and it will be lined up by the court in the party character which he should assume. Slip op. at 8.

Wednesday, September 16, 2009

Double Patenting: The § 121 Safe Harbor Protects Patents Descending from Divisional Applications, but not from Continuation Applications Exclusively

Amgen Inc. v. F. Hoffmann-La Roche Ltd, Nos. 2009-1020, -1096 (Fed. Cir. Sept. 15, 2009):

In the 80-page decision, the Court addressed many issues. Instead of covering the entire opinion, we choose to focus on a couple of notable holdings.

Notable Holdings:

The 35 U.S.C. § 121 safe harbor protects patents descending from divisional applications, but not from continuation applications exclusively. Slip op. at 18.

An accused infringer cannot show patentable indistinctiveness by relying on evidence up to the filing date of the secondary application; rather, it must rely on evidence up to the filing date of the first application because of the priority claim under 35 U.S.C. § 120. Slip op. at 23.


Section 121, entitled “Divisional applications,” provides in its third sentence:
A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application.
35 U.S.C. § 121.

The Court’s holding that the § 121 safe harbor does not protect patents descending from continuation applications exclusively is consistent with its earlier decisions that § 121 protects patents which issued directly from continuation applications that descended from divisional applications that were filed as a result of restriction requirements. Slip op. at 18.

Regarding patentable indistinctiveness, the Court rejected Roche’s interpretation of Takeda Pharmaceutical Co. v. Doll, 561 F.3d 1372 (Fed. Cir. 2009), that both the patentee and the accused infringer can show patentable indistinctiveness by relying on evidence up to the filing date of the secondary application. Because of 35 U.S.C. § 120, the Court held that only the patentee may do so, but not the accused infringer.

However, if the patentee pursues that course, the accused infringer will be free to rely on subsequent developments in the art up to the filing dates of the second application to prove that any alternative processes put forth by the patentee do not render the claims of both applications patentably distinct. Slip op. at 25.

Sunday, September 13, 2009

All-In-One: Direct Infringement, Contributory Infringement, and Damages

Lucent Techs., Inc. v. Gateway, Inc., Nos. 2008-1485, -1487, -1495 (Fed. Cir. Sept. 11, 2009):


Direct infringement may be found based on circumstantial evidence. Slip op. at 20-21.

To prove contributory infringement, a patentee may focus the “substantial noninfringing use” inquiry under 35 U.S.C. § 271(c) on the specific infringing feature or component rather than the entire product. Id. at 26-27.

A lump-sum royalty agreement may, during the license negotiation, consider the expected or estimated usage or production of a given invention. Id. at 38.

For a jury to use a running-royalty agreement as a basis to award lump-sum damages, some basis for comparison must exist in the evidence presented to the jury. Id. at 43.

Relevant Facts:

Lucent asserted U.S. Patent No. 4,763,356, which is generally directed to a method of entering information into fields on a computer screen without using a keyboard, against Microsoft. The jury returned a verdict that the patent is not invalid and infringed by Microsoft, and awarded more than $357 million to Lucent. Microsoft appealed, and the Court affirmed the validity and infringement findings, but vacated and remanded the damage award to the district court for further proceedings.


Regarding the point that direct infringement may be found based on circumstantial evidence, the Court distinguished other cases on the basis that the patentees in these other cases failed to present any circumstantial evidence while Lucent noted that “Microsoft not only designed the accused products to practice the claimed invention, but also instructed its customers to use the accused products in an infringing way.” Slip op. at 21.

It is still desirable, however, to present at least one instance of infringing activities. Relying on circumstantial evidence should only be the last resort.

Regarding contributory infringement, the Court again rejected the argument that an otherwise infringing product may automatically escape liability merely because it contains a noninfringing staple ingredient. Id. at 26.

Regarding damages, the Court illustrated the difficulties in applying the Georgia-Pacific factors. Really, there is no easy way to calculate the damages, but any reasonable calculation must be legally sound and logical in order to be upheld on appeal.

Saturday, September 12, 2009

Means-Plus-Function in the Prior Art Context

Fresenius USA, Inc. v. Baxter Int'l, Inc., Nos. 2008-1306, -1331 (Fed. Cir. Sept. 10, 2009):

Relevant Holding:

“[A] challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Slip op. at 16.

Relevant Facts:

Among many issues and facts in this case, the challenger neither identified the structure in the specification that corresponds to the means at issue nor compared it to the structures present in the prior art.


Regarding means-plus-function limitations, the Court requires a structure analysis and a functional analysis to prove infringement as well as invalidity.

“Just as a patentee who seeks to prove infringement must provide a structural analysis by demonstrating that the accused device has the identified corresponding structure or an equivalent structure, a challenger who seeks to demonstrate that a means-plus-function limitation was present in the prior art must prove that the corresponding structure—or an equivalent—was present in the prior art.” Slip op. at 16.

Claim Preclusion: The Focus of the “Material Differences” Test May Be on the Claim Limitations at Issue

Nystrom v. Trex Co., No. 2009-1026 (Fed. Cir. Sept. 8, 2009):


The accused infringer may assert claim preclusion when the sole claim limitations at issue in the first suit remain unchanged in the second suit. Slip op. at 6-7.


In the earlier case, the patentee sued the accused infringer for patent infringement and lost, during which the district court found that the patentee waived the doctrine of equivalents (DOE). In the present and second case, the patentee alleged that the accused infringer’s second generation products infringe the same patent under the DOE. The Court held that claim preclusion applies.

Judge Rader’s Additional Views

Judge Rader issued a separate opinion to present interesting and insightful additional views, explaining the differences between DOE and claim vitiation.

In short, Judge Rader explained that “the vitiation doctrine is really subsumed within the test for equivalents itself” because “the all elements rule is simply a circular application of the doctrine of equivalents.” Slip op. at 2. (J. Rader). The only difference is that “the identical equivalents and vitiation tests are made by different decision makers,” as the determination of equivalency is a question of fact, while application of the all elements rule (claim vitiation) is a question of law. Id. at 3.


To apply claim preclusion, an accused infringer must show that the accused product or process in the second suit is “essentially the same” as the accused product or process in the first suit. Slip op. at 6.

Previously, the Court has emphasized that the focus for claim preclusion should be on “material differences” between the two accused devices, but has not addressed directly whether the focus of the “material differences” test is on the claim limitations at issue in each particular case. Slip op. at 7.

This case presents a slightly new angle because it presents the latter issue. The two “material differences” tests are really not that different. Indeed, “material differences” between the two accused devices may be further analyzed through “material differences” on the claim limitations at issue.

Note that the “colorable changes” do not alter the application of claim preclusion. In this case, the addition of wood grain or a change in color does not alter this limitation either in any way material to the infringement inquiry.

On another practical note, here, in the first case, the parties stipulated to non-infringement without reference to equivalents. As a result, the Court held that the patentee had waived the DOE argument. To avoid this pitfall, in the future, the parties should clearly indicate whether the DOE is waived when stipulating to non-infringement.

An Abandoned Patent Application May Be Evidence of Conception, but not Reduction to Practice

Martek Biosciences Corp. v. Nutrinova, Inc., Nos. 2008-1459, -1476 (Fed. Cir. Sept. 3, 2009):

Relevant Holdings:

An abandoned patent application is evidence of conception, but it is insufficient to corroborate testimony that an alleged prior inventor reduced the invention to practice. Slip op. at 18.

“[A] patent claim is not necessarily invalid for lack of written description just because it is broader than the specific examples disclosed.” Slip op. at 9.

Relevant Facts:

Lonza argues that the district court improperly excluded its evidence that the claimed invention is not patent eligible because it was previously made by another inventor, Dr. Long. To corroborate Dr. Long’s testimony that he had reduced the claimed invention to practice prior to Martek’s date of invention, Lonza offered: (1) Dr. Long’s 1987 abandoned patent application and (2) evidence that the examples originally disclosed in that abandoned application were later reproduced, generating the results described in the application. The Court affirmed the district court's ruling on this issue.


Regarding prior inventorship evidence, the Court recognizes that when a party seeks to introduce the testimony of an alleged prior inventor under § 102(g) for the purpose of invalidating a patent, that party is required to produce evidence corroborating the alleged prior inventor’s testimony. Slip op. at 15.

The case law is unequivocal that an inventor’s testimony respecting the facts surrounding a claim of derivation or priority of invention cannot, by itself, rise to the level of clear and convincing proof. Id. at p. 16. When determining whether an alleged inventor’s testimony is sufficiently corroborated, the Court applies a rule-of-reason analysis and consider all pertinent evidence. Id.

An alleged prior inventor must provide independent corroborating evidence in addition to his own statements and documents, such as testimony of a witness, other than the inventor, to the actual reduction to practice or evidence of surrounding facts and circumstances independent of information received from the inventor. Id. at 17-18.

“Documentary or physical evidence that is made contemporaneously with the inventive process provides the most reliable proof that the inventor’s testimony has been corroborated.” Id. at 18.

Therefore, it is desirable for a company to implement a R&D procedure that preserves contemporaneous documentary or physical evidence for any inventions, such as including a witness in the lab notebook. Certainly, this should not come as a surprise, as the case law has always been very clear on this point.

Thursday, September 10, 2009

DTV Patent War Watch (6)

Relevant Timeline for 337-TA-617:

November 15, 2007: ITC instituted Investigation No. 337-TA-617 based on Funai’s complaint.

April 10, 2009: ITC terminated the investigation and issued a limited exclusion order.

July 8, 2009: The United States Customs and Border Protection agency (“CBP”) issued a ruling that all current models of VIZIO televisions do not infringe U.S. Patent No. 6,115,074 (‘074) held by Funai.

August 5, 2009: CBP issued a ruling holding that three semiconductor chip samples submitted by Amtran Logistics, Inc., TPV International (USA), Inc., and Envision Peripherals, Inc., are not subject to Exclusion Order 337-TA-617.

August 14, 2009: Funai filed a complaint seeking enforcement proceedings under Commission Rule 210.75, 19 C.F.R. § 210.75.

September 1, 2009: Fuani sued CBP before the US Court of International Trade (CIT).

September 4, 2009: ITC instituted the enforcement proceeding.

DTV Patent War Watch (5)

ITC Investigation No. 337-TA-617 continues to be the case to watch.

On September 4, 2009, the U.S. International Trade Commission (ITC) issued a notice instituting a formal enforcement proceeding relating to the limited exclusion order and cease and desist orders issued in ITC Inv. No. 337-TA-617 (Certain Digital Televisions and Certain Products Containing Same and Methods of Using Same).

This ITC notice is in response to Funai’s complaint filed on August 14, 2009, alleging that Respondents have violated the limited exclusion order and/or the cease and desist orders and seeking enforcement proceedings under Commission Rule 210.75.

Saturday, September 5, 2009

DTV Patent War Watch (4)

Following recent US Customs’ rulings on the scope of the exclusion orders issued in ITC Investigation No. 337-TA-617 that allows importation of redesigned DTV products, Funai, the Complainant in the ITC investigation, sued US Customs on September 1, 2009 in the US Court of International Trade, seeking to enjoin US Customs from allowing the importation of the redesigned DTV products.

See also DTV Patent War Watch (1).