Wednesday, March 31, 2010

35 U.S.C. § 116 Does Not Provide a Private Right of Action to Challenge Inventorship of a Pending Patent Application

HIF Bio, Inc. v. Yung Shin Pharms. Indus. Co., Ltd., No. 2006-1522 (Fed. Cir. Mar. 31, 2010).


35 U.S.C. § 116 does not provide a private right of action to challenge inventorship of a pending patent application, but 35 U.S.C. § 256 provides a private right of action to challenge inventorship under § 1338(a) for an issued patent. Slip op. at 9.

Relevant Facts:

Two scientist began investigating the effect of a chemical, YC-1, on a protein complex known as HIF-1, and filed and assigned a patent application to the plaintiffs. During the research, they discussed their hypothesis with another scientist who allegedly filed a separate application on the same idea and assigned it to another company. The plaintiffs sued the defendant in a state court, and the defendant removed the case to a federal district court. After dismissing the RICO claim, the district court declined to exercise supplemental jurisdiction and remanded the case to the state court. The defendant appealed, and the Federal Circuit initially held that the Federal Circuit lacked appellate jurisdiction to review a district court’s remand order that was based upon the district court’s decision not to exercise supplemental jurisdiction. The Supreme Court subsequently reversed the Federal Circuit’s decision. On remand, the Federal Circuit held that the district court did abuse its discretion because two of the remanded causes of action “arise under” 28 U.S.C. 1338(a), but the district court should have dismissed these purported causes of action for failure to state a claim for which relief can be granted.

New Federal Circuit Opinions - March 31, 2010

HIF Bio, Inc. v. Yung Shin Pharms. Indus. Co., Ltd., No. 2006-1522 (Fed. Cir. Mar. 31, 2010).

Tuesday, March 30, 2010

Chinese Courts Received 30K+ IP Cases in 2009

According to the People's Supreme Court of China's news release, Chinese courts received 30,626 new IR cases in 2009, an 25% increase over 2008. For additional statistics, please contact Lei Mei at Mei & Mark LLP.

New Federal Circuit Opinions - March 30, 2010

Power-One, Inc. v. Artesyn Techs, Inc., Nos. 2008-1501, -1507 (Fed. Cir. Mar. 30, 2010)

Wednesday, March 24, 2010

The Federal Circuit Affirmed its Written Description Doctrine

Ariad Pharms., Inc. v. Eli Lilly & Co., No. 2008-1248 (Fed. Cir. Mar. 22, 2010).


35 U.S.C. §112, paragraph 1, contains a written description requirement separate from an enablement requirement. Slip op. at 23.

The test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Id.

Relevant Facts:

Ariad sued Eli Lilly for infringement of U.S. Patent 6,410,516. A jury found the asserted claims valid and infringed. A panel of the Federal Circuit reversed the district court’s denial of Lilly’s motion for judgment as a matter of law (“JMOL”) and held the asserted claims invalid for lack of written description. Ariad petitioned for rehearing en banc, challenging the Federal Circuit’s interpretation of 35 U.S.C. § 112, first paragraph, as containing a separate written description requirement. The Federal Circuit affirmed its written description doctrine and affirmed the panel’s ruling.


The difference (or lack of it) between the written description requirement and the enablement requirement means little for electrical and mechanical inventions, but not always true for chemical or chemical-like inventions having genus claims:

Perhaps there is little difference in some fields between describing an invention and enabling one to make and use it, but that is not always true of certain inventions, including chemical and chemical-like inventions. Thus, although written description and enablement often rise and fall together, requiring a written description of the invention plays a vital role in curtailing claims that do not require undue experimentation to make and use, and thus satisfy enablement, but that have not been invented, and thus cannot be described. For example, a propyl or butyl compound may be made by a process analogous to a disclosed methyl compound, but, in the absence of a statement that the inventor invented propyl and butyl compounds, such compounds have not been described and are not entitled to a patent.

Slip op. at 29.

New Federal Circuit Opinions - March 24, 2010

Pressure Products Medical Supplies, Inc. v. Greatbatch Ltd., No. 2008-1602 (Fed. Cir. Mar. 24, 2010).

Tuesday, March 23, 2010

New Federal Circuit Opinions - March 22, 2010

Marrin v. Griffin, No. 2009-1031 (Fed. Cir. Mar. 22, 2010) (en banc).

Ariad Pharms., Inc. v. Eli Lilly & Co., No. 2008-1248 (Fed. Cir. Mar. 22, 2010).

Saturday, March 20, 2010

DTV Patent War Watch (9)

New DTV Case (ITC):

On March 18, 2010, Sony Corporation filed a complaint before the International Trade Commission (ITC), requesting that the Commission conduct an Section 337 investigation regarding Display Devices, Including Digital Televisions and Monitors.

The proposed respondents are: TPV Technology Limited, Hong Kong; Top Victory Electronics (Taiwan) Co., Ltd., Taiwan; TPV International (USA), Inc., Texas; Envision Peripherals, Inc., California; Top Victory Investments Ltd., Hong Kong; TPV Electronics (Fujian) Co., Ltd., China; TPV Display Technology (Wuhan) Co., Ltd., China; TPV Technology (Bejing), Co. Ltd., China; Innolux Display Corporation, Taiwan; Innolux Corporation, Texas and ViewSonic Corporation, California.

For a public version of the complaint, please click here.

New Federal Circuit Opinions - March 19, 2010

Odom’s Tenn. Pride Sausage, Inc. v. FF Acquisition, L.L.C., No. 2009-1473 (Fed. Cir. Mar. 19, 2010)

Friday, March 5, 2010

Good Faith Efforts to Design Around an Infringement Verdict Are Not Sufficient to Avoid a Contempt Proceeding

Tivo, Inc. v. EchoStar Corp., No. 2009-1374 (Fed. Cir. Mar. 4, 2010).


Good faith efforts to design around an infringement verdict are not sufficient to avoid a contempt proceeding. Slip op. at 12.

A contempt hearing may be proper even if the redesigned devices do not infringe in the exact same manner that has already been adjudicated to infringe. Id. at 9.

A contempt finding is improper if there is “more than a colorable difference” between the accused product and the adjudged infringing product such that “substantial open issues with respect to infringement” exist. Id. at 5.

Relevant Facts:

TiVo owns U.S. Patent 6,233,389 covering essential DVR features. Tivo sued Echostar and obtained a permanent injunction. In the previous appeal, EchoStar did not appeal the injunction. Subsequently, EchoStar redesigned its DVR software, but the district court found EchoStar in contempt of its injunction order. The Federal Circuit found that the district court did not abuse its discretion in imposing sanctions against EchoStar.


Judge Rader wrote in his dissenting opinion that “this decision discourages good faith efforts to design around an infringement verdict.” Indeed, EchoStar is a really sympathetic figure here, because it was slapped with contempt despite that (1) it made good faith efforts to design around and (2) the redesigned software does not infringe in the exact same manner that has already been adjudicated to infringe.

The majority opinion, however, appears to suggest that EchoStar could have avoided this predicament if it had appeared the district court’s permanent injunction order previously. Because EchoStar did not do that, under the “abuse of discretion” review standard, the Federal Circuit had to affirm the district court’s contempt finding.

In light of this decision, I believe that the losing party will continue good faith efforts to design around an infringement verdict (sorry, Judge Rader), but there will be more appeals of injunction orders to the Federal Circuit. In addition, the losing party should also seek clarification from the issuing district court in order to avoid a potential contempt finding.

I do agree with Judge Rader in the sense that this decision, in its current form, seems very discouraging and inconsistent with sound public policy. A contempt finding, by its punishing nature to deter future violations, should have a bad faith element. If a party tried to comply with the orders in good faith by designing around, it seems to be unfair to hold it in contempt.

Thursday, March 4, 2010

New Federal Circuit Opinions - March 4, 2010

Tivo, Inc. v. EchoStar Corp., No. 2009-1374 (Fed. Cir. Mar. 4, 2010).

Fairchild Semiconductor Files Patent Lawsuit Against Power Integrations in China

According to Fairchild Semiconductor's news release, available here,

Fairchild is seeking a permanent injunction preventing the sale, manufacture or use in China, or the importation into China, of Power Integrations products alleged to infringe four Chinese patents, including products in the TinySwitch II, TinySwitch III, LinkSwitch II, LinkSwitch XT and TOPSwitch GX product families. The company is also seeking monetary damages. The lawsuit was filed in Suzhou Intermediate Court.


It is interesting to see that Fairchild is moving its IP battle with Power Integrations from the United States to China. Because Power Integrations has been winning cases against Fairchild and its subsidiaries, this move does not really come as a surprise. Nowadays, most IC chips are made in China anyway, so if Fairchild prevails in China, Power Integrations would lose business globally including the U.S. market.

We will follow this landmark China case. If the outcome is favorable to Fairchild, it could open a flood gate for other companies to try their luck in China. Because the Chinese judicial system is less transparent and less predictable, however, it remains to be seen how this case will turn out.

Tuesday, March 2, 2010

New Federal Circuit Opinions - March 2, 2010

Davis v. Brouse McDowell, L.P.A., No. 2009-1395 (Fed. Cir. Mar. 2, 2010).

New Federal Circuit Opinions - March 1, 2010

Starting on March 1, 2010, we will list all new precedential opinions issued by Federal Circuit. For more notable opinions, we will provide our case comments.

Media Techs. Licensing LLC v. Upper Deck Co., No. 2009-1022 (Fed. Cir. Mar. 1, 2010).

Comaper Corp. v. Antec, Inc., Nos. 2009-1248, -1249 (Fed. Cir. Mar. 1, 2010).