CAFC reverses US District Court for the Southern District of California on Claim Construction and Satisfaction of Written Description Requirement

In THE LARYNGEAL MASK COMPANY LTD. AND LMA NORTH AMERICA, INC., v. AMBU A/S, AMBU INC., AND AMBU LTD, 10-1028 (CAFC, September 21, 2010), the CAFC reversed the US District Court for the Southern District of California on Claim Construction and Satisfaction of Written Description Requirement. The Laryngeal Mask Company Ltd. and LMA North America, Inc. (collectively, LMA) appealed the district court's summary judgment that the Aura40™, AuraOnce ™, and AuraStraight™ products made by Ambu A/S, Ambu Inc., and Ambu Ltd. (collectively, Ambu) did not infringe the asserted claims of U.S. Patent No. 7,156,100 ('100 patent) and that all claims were invalid for lack of written description under 35 U.S.C. Section 112. Laryngeal mask airway devices were pioneered in the 1980s by Dr. Archibald Brain, the inventor listed on the '100 patent. According to the '100 patent, one problem with prior art laryngeal mask airway devices is that during insertion, the leading edge of the deflated cuff will occasionally fold over on itself, allowing the more rigid end of the mask to catch the inside of the patient's throat. This can be unpleasant for the patient and may prevent the cuff from making a full seal around the patient's laryngeal inlet.

The invention of the '100 patent seeks to minimize the risk that the deflated cuff will fold over on itself by adding a reinforcing rib which serves to stiffen the leading end of the LMA-device during the course of the procedure for its insertion.

The district court construed the disputed terms of the '100 patent. Relevant to this appeal, the court construed the claim term "backplate" as "the relatively rigid mask structure surrounded by the cuff and including a tube joint."

The tube joint is the connection between the mask and the airway tube. See, e.g. , '100 patent figs. 2-3. The district court concluded that Ambu's accused devices did not have a tube joint because the mask structure and the airway tube are integral y molded. They are one continuous piece rather than two pieces joined together by a joint. Because the accused products lacked a tube joint the district court concluded they lacked a backplate.

Therefore, the court granted summary judgment that Ambu's Aura40, AuraOnce, and AuraStraight products did not literal y infringe claims 1 to 6 of the '100 patent.

The district court further granted Ambu's motion for summary judgment of invalidity for lack of written description.

The court determined that the specification failed to adequately describe a mask having at least a portion of the posterior portion of a wall of the cuff in the distal region being thicker and stiffer than other portions of the cuff, as required by claim 1. Id. at 4-6. The court thus concluded that claim 1 and its dependent claims were invalid under 35 U.S.C. Section 112,

Ambu argued that the claim limitation "back-plate" should be construed to include a tube joint.

The CAFC stated that "Although it is a close case, in light of the claim language, specification, and prosecution history, we conclude that the term backplate is not so limited. The claims themselves are limited to the mask structure. The claims require "a backplate" defining a passage."

Although there is ample discussion of the tube joint throughout the specification, there is only one place where the specification indicates that the tube joint is part of the backplate (in the preferred embodiment's description of Figures 5 and 6): The backplate 52 has a one-piece, integral spoon-shape including a bowl 90 and an external tube-joint 92 oriented proximal y relative to the bowl, as shown in FIGS. 5 and 6.

[T]he claim term will not receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a definition of the disputed claim term in either the specification or prosecution history.). The specification does not clearly contain such a special definition.

Although the preferred embodiment includes a backplate that contains a tube joint, the CAFC held that they do not generally limit claims to the preferred embodiment.

The CAFC further found that the specification did not clearly indicate the patentee's intent to give backplate a unique meaning different from its ordinary and customary meaning to one of skill in the art.

The failure to introduce a dictionary definition for the disputed claim term did not preclude a conclusion that there exists a plain meaning to one of skill in the art.

The CAFC found that the term backplate has a somewhat self-descriptive nature. As the prior art patents indicate it is the plate on the back. In light of the claims, specification, prosecution history, and prior art patents, the court concluded that one of skill in the art would understand the claimed backplate to be "the relatively rigid mask structure surrounded by the cuff."

The CAFC then concluded that one of skill in the art would not conclude that the backplate must have a tube joint and that the inventor did not act as his own lexicographer here and clearly require the backplate to have a tube joint.

Regarding the District Court's summary judgment order on lack of an description, the CAFC stated "adequate written description requires that the applicant "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention."'

The court then concluded that the district court erred in granting summary judgment that the patent was invalid for failing the written description requirement. The Summary of the Invention does not require that the cuff reinforcement be connected to the backplate. Rather, it describes a reinforcement incorporated into the distal end of the cuff.

The Summary of the Invention further states that "[i]n a preferred aspect," the reinforcement extends from the backplate.

The court agreed with LMA that one of ordinary skill in the art could read these disclosures as providing for a cuff reinforcement in the distal region that need not be connected to the backplate. In addition, we agree with LMA that one of ordinary skill in the art could read the Cuff Wall Thickening Passage as disclosing a thickened cuff portion that need not be connected to the backplate.

US Patent and Trademark Office Invites Public Comment for new Strategic Plan for 2010-2015

The Patent and Trademark Office on July 9, 2010, published its Draft 2010-2015 Strategic Plan for public comment, (link to it here) which must be submitted by August 2, 2010.  The Plan is designed to strengthen the capacity of the USPTO, improve the quality of patents and trademarks issued and shorten the time it takes to get a patent.  The plan as fully implemented will enhance and accelerate the innovation and job growth needed to transform the U.S. economy, foster competitiveness and drive the creation and growth of U.S. businesses.

USPTO Expands Green Technology Pilot Program to More Classes of Inventions

The United States Patent and Trademark Office ("USPTO") has announced that it is revising its Green Technology Pilot Program to allow more categories of technology to be eligible for expedited processing under the program.  Eligibility for the pilot program, which was designed to promote the development of green technologies, had previously been limited to applications within a select number of U.S. classifications.  Inventions are classified at the USPTO according to what is known as the Manual of Classification.  The USPTO has now removed that requirement. By allowing more inventions related to green technologies to be accorded special status and receive expedited examination, the Green Technology Pilot Program will accelerate the development and deployment of green technology, create more green jobs and promote U.S. competitiveness in this vital sector.


Under the Green Technology Pilot Program, pending patent applications in green technologies are eligible to be accorded special status and given expedited examination.  Patent applications are normally taken up for examination in the order that they are filed. Under the pilot program, for the first 3,000 applications related to green technologies in which a grantable petition is filed, the agency will examine the applications on an expedited basis. 
When the Green Technology Pilot Program was announced in December 2009, the program was limited to inventions in certain classifications in order to assist the USPTO in balancing the additional workload and to gauge the resources needed for the program.  The USPTO has determined that the classification requirement is unnecessary because the workload has been balanced with other mechanisms, and the requirement was causing the denial of petitions for a number of green technology applications that would have otherwise qualified for the program.  

To date, more than 950 requests have been filed by applicants who wish for their application to be eligible for the Green Technology Pilot Program.  Only 342 of those have been granted, primarily because many of the inventions weren’t in classifications that were eligible.  The lifting of the classification requirements is expected to allow many more applications to be eligible for the program.

The full announcement is available here.

Federal Circuit Judge Urges Congress to Repay the US Patent Office to Preserve American Economic Security

Paul R. Michel is the Chief Judge of the United States Court of Appeals for the Federal Circuit ("CAFC").  The CAFC is the court of exclusive jurisdiction of all patent cases that are appealed from federal district courts from across the country.  In a speech delivered to the Patent Examiners at the US Patent and Trademark Office ("USPTO") in Alexandria, Virginia last month, Judge Michel urged Congress to repay the $900 million that has been diverted away from the fees collected by the USPTO since 1982.  The figure recommended was actually $1 Billion.  The full text of Judge Michel's speech can be found here.

American economic security is being threatened by an outflow of jobs, talent, technology and production.  We must boost invention and make new products Americans and the rest of the world will need, want and buy.  The answer is to provide faster, sounder and clearer patents, plus faster, stronger enforcement.  Such improvements can be made if we improve the USPTO and the Federal Courts.  Patents have been the main engine of economic growth and technological progress since 1790 when the First Congress passed the first Patent Act.

Among the problems identified are:

• Delay: in some technologies it is taking 4-6 years to get a patent and the product life-cycle may be shorter than that.  The gears of the USPTO seem to almost be seized up.
• Antiquated technology:  It is ironic that the government entity that examines state of the art technology is using 30 year old computer technology.
• Backlogs:  There are over 700,000 patent applications that sit unread in a warehouse in Alexandria, Virginia, often for years.  Almost 400,000 new applications are being filed each year, which adds to the backlog.
• Employee turnover: Most examiners leave after only 3 years for better pay and working conditions in the private industry.  The average experience level of the 6,000 examiners has fallen to only about 3 years, but it takes that long to become experienced and competent.  Inexperienced examiners harm the system by rejecting claims that should be allowed and allowing claims that should be rejected.
• Fee diversion:  Since 1982 Congress has diverted over $900 Million from the USPTO.  Even this fiscal year, Congress will not allow the USPTO to keep the fees that it collects from inventors and patent owners.  An estimated $150-250 million will be diverted from the USPTO to other government programs.  

The solution proposed is to:

• Provide a one-time capital investment of $1 billion.  In view of what has already been diverted, such an investment by congress would be a repayment of money already taken from fees that have been collected by the USPTO.
• Guarantee that Congress will stop diverting fees away from the USPTO. 
• Hire thousands of additional patent examiners.
• Provide salary increases to retain experienced examiners.
• Modernize the 30 year old computer system.
• Increase space to house the additional patent examiners.
• Open satellite offices in major cities such as Houston and Detroit.
• Hire unemployed engineers who are already experienced in patent matters.
• Exclude scientists and engineers from the restrictive General Pay Schedule so that the pay can be increased for examiners to be more competitive with private industry.
• The Director should be given greater authority to give earlier examination to patent applications in promising new technologies and individual applications for pioneering inventions.

Judge Michel closes by saying that it is time for Congress to "prime the pump" -- only then can private investment take over.  This is perhaps the best and perhaps only way to increase innovation and reverse competitive decline in America.  It could restore us as the technology leader of the world, increase private and public revenues and stock value and create millions of new jobs.

Broadest-Construction Rubric Coupled with Term "Comprising" Does not Give USPTO Unbridled License to Expand Scope of Claims

The Court of Appeals for the Federal Circuit ("CAFC") held in In re Suitco Surface, Inc., 2009-1418 (CAFC, April 14, 2010) that the "broadest broadest-construction rubric coupled with the term “comprising” does not give the PTO an unfettered license to interpret claims to embrace anything remotely related to the claimed invention. Rather, claims should always be read in light of the specification and teachings in the underlying patent. See Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 217 (1940) (“The claims of a patent are always to be read or interpreted in light of its specifications.”).

The CAFC remanded the US Patent and Trademark Office ("PTO") claim interpretation that was made during a reexamination proceeding.  The reexamination was for US Patent 4,944,514 ("the '514 patent"), the representative claim 4 follows:

4. On a floor having a flat top surface and an improved material for finishing the top surface of the floor, the improvement comprising:
at least one elongated sheet including a uniform flexible film of clear plastic material having a thickness between about one mil and about twenty-five mils and
a continuous layer of adhesive material disposed between the top surface of the floor and the flexible film, the adhesive layer releasably adhering the flexible film onto the top surface of the floor. (emphases added).

During reexamination, the Board of Patent Appeals and Interferences ("the Board") affirmed the patent examiner's rejection of claim 4 based on US Patent 3,785,102 ("Amos") or US Patent 4,543,765 ("Barrett").  Amos shows a plurality of plastic sheets, each containing an adhesive layer.  Individual layers are removed after they have been used to collect dirt or other debris from the soles of shoes by people entering a clean or sterile room.  Barrett shows the use of a clear plastic connected to a floor with an adhesive layer.  The clear plastic in Barrett is used to temporarily protect a floor during construction.

In its rejection, the Board construed the term “material for finishing the top surface of the floor” to mean “requiring a material that is structurally suitable for placement on the top surface of a floor.” Under that construction, according to the Board, the “material for finishing the top surface of the floor” could be any layer above the floor regardless of whether it was the top or final layer. The Board also construed the term “uniform flexible film” to mean “including, for example, a flexible film having the same thickness throughout, as well as a flexible film having the same textured surface throughout.” 

The CAFC disagreed, stating the express language of the claim and the specification require the finishing material to be the top and final layer on the surface being finished. See, e.g., ’514 patent, col.1 ll.15-20 (“The present invention is directed generally to a material and method for quickly and easily producing a transparent wear resistant finish on a smooth flat surface subject to wear and more particularly to a material and method for finishing a floor . . . .”). The PTO’s proffered construction therefore fails.  Slip Opinion at pages 8-9.

Workflow may Pickup at US Patent and Trademark Office by the Third or Fourth Quarter of this Year

The workflow at the US Patent and Trademark Office ("USPTO") has slowed down dramatically over the past couple of years.  First Office Actions, which historically issued within 12-18 months after filing a new patent application are now taking over two years.  Even though the delays are added to the patent life under the American Inventors' Protection Act, the delay creates problems for inventors and patent owners because they do not know know the extent of the patentability of their inventions until the USPTO issues an opinion on patentability or when a patent actually issues.

In an effort to speed up the slow turning gears at the USPTO, a hiring campaign in underway.  The hiring is targeting people who either have patent examining experience or experience working in the Intellectual Property field and who have the skills necessary to examine patent applications.  The recent announcement drew in over 4,000 applications.  The USPTO has published a schedule that describes when decisions should be made on who will be hired from the large bank of applicants.  According to the schedule, individuals who are hired could start work as early as May 10th, June 7th or July 6th, 2010.

This is all potentially great news to the patent community and to inventors and invention owners.  We will all benefit when the USPTO returns to a reasonably paced workflow.

US Patent and Trademark Office (“USPTO”) issues guidelines for Computer Readable Media

The USPTO has suggested amending any claim that is drawn to a computer readable media that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 USC § 101 by adding the limitation “non transitory” to the claim.  The Notice isavailable here.

The suggestion follows the case of In Re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), in which signals were claimed that were watermarked.  That is, the original signals were manipulated so as to imbed the signal with additional data.  Because patent claims during examination at the USPTO are interpreted as broadly as possible, if claims are not limited to being non-transitory, the USPTO will reject them as being non-patentable subject matter.

The only situation where the suggested amendment could raise issues of new matter, is when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment.

CAFC Expands Ruling to Leave Open Question of Abandoned versus Dedicated to the Public

The Court of Appeals for the Federal Circuit (“CAFC”) found the District Court for the Southern District of New York erred in its claim construction of critical claim terms in Shindler Elevator Corp. et al. v. Otis ElevatorCompany,  2009-1146 (CAFC, January 15, 2010).  As a result, the District Court’s summary judgment of non-infringement by Otis of US Patent 5,689,094 (“the ‘094 patent”) ruling was vacated.   The accused elevator control system was installed at 7 World Trade Center in New York City.

The ‘094 patent includes two independent claims, both of which include the disputed terms at issue:   “information transmitter” and “recognition device”.

In Fig. 2, the recognition devices 5 mounted in access areas 33 and 34. When a passenger 35 is recognized in access area 33, an elevator is dispatched, and a display device 18, which is mounted above the elevator door and/or at an input device 19, tells the passenger which elevator to take. A proposed destination floor is announced acoustically or is displayed visually on display device 18. If the passenger wishes to change his destination floor, he may do so manually at input device 19.

Claim 1 is representative of the asserted claims and includes the disputed claim elements “information transmitter” (and “recognition device”. 

1. An elevator installation having a plurality of elevators comprising:

a recognition device for recognizing elevator calls entered at an entry location by an information transmitter carried by an elevator user, initializing the entry location as a starting floor of a journey;

a control device receiving the recognized elevator call and allocating an elevator to respond to the elevator call, through a predetermined allocating algorithm;

a call acknowledging device comprising one of a display device and an acoustic device to acknowledge recognition of the elevator call and to communicate a proposed destination floor to the elevator user;

the recognition device, mounted in the access area in the vicinity of the elevators and spatially located away from elevator doors, actuating the information transmitter and comprising a unit that independently reads data transmitted from the information transmitter carried by the elevator user and a storage device coupled between the unit and the control device;

the recognition device one of transmitting proposed destination floor data, based upon the data transmitted from the information transmitter, to the control device, and, transmitting elevator user specific data,  based upon individual features of the elevator user stored in the storage device, to the control device.

The District Court’s Claim Construction:

The district court construed “information transmitter” to mean “a device that communicates with a recognition device via electromagnetic waves, after being actuated by that recognition device, without requiring any sort of personal action by the passenger.”  It construed “recognition device” to mean “a device that actuates and reads data transmitted by an information transmitter without requiring any sort of personal action by the passenger.” Id. In the claim construction order, the district court declined to specify the particular kind of “personal action” prohibited under its construction, but stated that it “rules out, not just standing in front of the recognition device, or inputting data into the information transmitter by hand, but any and all types of personal action by the passenger.”

The district court issued its summary judgment ruling on November 17, 2008. Although it had previously said that “any and all types of personal action” were prohibited under its construction, the district court refined its understanding of “personal action” on summary judgment to expressly permit “walking into the monitored area.”

The CAFC Claim Construction and Analysis:

The CAFC majority held that the District Court’s claim construction was too narrow and construed the claims to allow the user to take “personal action” to the extent that he or she brings the “information transmitter” within range of the “recognition device”.

The majority relied upon the claim language, the specification and the file prosecution history to construe the claims.

Claim Language:

The majority found that in claim 1, the term “information transmitter” itself suggests that the transmitter is a thing, separate and apart from an “elevator user”, which transmits information. The claim also provides that “elevator calls [are] entered at an entry location by an information transmitter.” Thus, at least with regard to the transmission of information and the entry of calls, it is the information transmitter—not the elevator user—that performs these tasks.

Carrying a transmitter is thus a type of “personal action” that is expressly required in the claims. The majority held that nowhere does claim 1 limit the act of carrying to any specific manner of carrying.

Claim 7 depends from claim 1 and adds the phrase “wherein the recognition device reads a key having a code.”  Because a user would need to use his hands to bring the transmitter key within range of the recognition device to unlock the door, or to clock in or out of work, these types of personal action are implicitly permitted in claim 7 and, by extension, in claim 1.

Specification:

The phrase “personal action” is used only once in the specification, in the following sentence:

The advantages achieved by the invention reside in the fact that the desired journey destination is communicated automatically to the elevator control by [(1)] the information transmitters carried by the elevator users or by [(2)] the recognition of features of the elevator users without any personal action being required by the passenger.

The majority supports the broad reading of personal action, because a passenger would need to place his hand on the optical recognition device for it to read his fingerprints, this cannot be the “personal action” to which the sentence refers.

Prosecution History:

The majority interpreted the prosecution where it describes the invention as operating “automatically, contactlessly, and independently of the orientation of the information transmitter” as modification actions that take place only after the passenger has brought the transmitter within range of the recognition device—specifically, the actuation of the transmitter, the entry of call commands, and the selection of a destination floor.  The majority therefore concluded that applicants’ statement during the prosecution did not constitute a “clear and unmistakable” disavowal of personal action for the limited purpose of bringing the transmitter within range of the recognition device. Instead, the majority read the prosecution history in this case “as support for the construction already discerned from the claim language and confirmed by the written description.” citing 800 Adept, Inc. v. Murex Sec., Ltd., 539 F.3d 1354, 1365 (Fed. Cir. 2008).

Dissent:

The dissent agrees that the “without requiring any sort of personal action” construction imposed by the district judge unduly limited the scope of the claims.  Dependent claim 7 contemplates using a key (or a card swipe) to enter the building and at the same time transmitting the user’s elevator data.  In other words, the device would be “hands-free” and “automatic” even though the user has to take elaborate action to bring the device within range.

The specification and prosecution history make no such distinction, and consistently emphasize the hands-free and automatic nature of the device without regard to whether it is in range or not.

The majority disputes the dissent’s position in footnote 2, stating that “The embodiment was not “abandoned,” it simply was never claimed in the application that led to this particular patent.” 2009-1146 at page 11, fn 2. 

That raises the question of how does abandoned compare with the well established rule that disclosed, but unclaimed matter is dedicated to the public. Johnson & Johnston Associates, Inc. v. R.E. Service Co., Nos. 99-1076, -1179, -1180, 2002 WL 466547 (Fed. Cir. Mar. 28, 2002) (en banc) (per curiam).   There were no divisional patent applications filed from this application that resulted in the ‘094 patent, so according to Johnson & Johnson, the embodiment was dedicated to the public.  This case leaves open the question:  what is the difference between “abandonment” and “dedication to the public”?

CAFC Constructs Patent Term Extension Provision of 1999 AIPA to Benefit Inventors

The Court of Appeals for the Federal Circuit (“CAFC”) has interpreted the 1999 American Inventors Protection Act (“AIPA”) to benefit inventors in contrast to the position asserted by the US Patent and Trademark Office (“USPTO”).  Wyethet al. v. David J. Kappos et al., 2009-1120 (CAFC, January 7, 2010).

In 1999, the American Inventors Protection Act amended 35 U.S.C. § 154(b) to address the problem of reduced patent terms caused by delays be the USPTO.  Prior to the passage of the AIPA, the patent term in the US was 17 years from the date of issue of the patent.  The AIPA provides a patent term of 20 years from the date of filing of the application. 

The AIPA, 35 U.S.C. § 154(b)(1) provides:

(A) Guarantee of prompt Patent and Trademark Office responses.--Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the Patent and Trademark Office to [meet deadlines specified in clauses (i)-(iv)] . . .

the term of the patent shall be extended 1 day for each day after the end of the period specified in clause (i), (ii), (iii), or (iv), as the case may be, until the action described in such clause is taken.

(B) Guarantee of no more than 3-year application pendency.--Subject to the limitations under paragraph (2), if the issue of an original patent is delayed due to the failure of the United States Patent and Trademark Office to issue a patent within 3 years after the actual filing date of the application in the United States . . .

the term of the patent shall be extended 1 day for each day after the end of that 3-year period until the patent is issued.

(C) Guarantee or adjustments for delays due to interferences, secrecy orders, and appeals.--Subject to the limitations under paragraph (2) . . .

the term of the patent shall be extended 1 day for each day of the pendency of the proceeding, order, or review, as the case may be.

Paragraphs (A) and (B) are at issue.  Paragraph (A) is referred to as the A delay and paragraph (B) is referred to as the B delay.  The USPTO interpreted the B delay to start at the time of filing the patent application, not three years later.  The resulting USPTO calculation was the greater or the A delay and the B delay, less delays by the applicant.   

The District Court for the District of Columbia found that “The problem with the PTO’s interpretation is that it considers the application delayed under [the B guarantee] during the period before it has been delayed.” Wyeth v. Dudas 580 F. Supp. 2d 138, 141 (D.D.C. 2008) (citing Merck & Co. v Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996)).

The CAFC agreed with the District Court and constructed the statute to require the adding the A delay plus the B delay less delays by the application.  Although this may sometimes result in patent terms that are greater than 17 years, such a patent term is supported in the legislation.  Specifically, the statute provides that the statute “includes a new provision guaranteeing diligent applicants at least a 17-year term…”  H.R. Rep. No. 106-464, at 125 (1994) (emphasis added).  The USPTO’s interpretation effectively created a 17-year term cap where B delays are greater than A delays.

Means Plus Function Claims Still Limited to Structure Described in Specification

The Court of Appeals for the Federal Circuit ("CAFC") this week in RESTAURANT TECHNOLOGIES, INC. v. JERSEY SHORE CHICKEN and KLEE’S BAR & GRILL, have essentially held that means plus function claims cover the structure as disclosed in the specification.

The case involved an invention that relates to the supply and disposal of cooking oil for use with restaurant fryers. Restaurant Technologies, Inc. ("RTI") owns the patent in suit, US Patent 5,249,511 ("the '511 patent"), that is directed to a system for the distribution, filtering, removal, and disposal of cooking oil.  The system enhances safety to workers and efficiency to deep frying operations.

The primary disputed claim term involved a squeezable trigger valve, which RTI argued would be equivalent to a lever, button, or some other structure, including either the pump or the dipstick with a triggering button of the accused product.   The CAFC disagreed, "although the dipstick assembly, in conjunction with the pump, may perform the identical function as the squeezable trigger valve, the differences between the dipstick assembly plus a pump on the one hand, and a squeezable trigger valve with a nozzle, on the other, are not insubstantial. For example, the dipstick assembly and pump are activated with a push button on the dipstick assembly that energizes the pump; fluid pressure in the line then overcomes a spring-loaded check valve to pour into the fryer. The accused system thus uses a pump and fluid pressure to overcome a check valve, whereas the patent claims a valve that is squeezed. Thus, no reasonable fact finder could have found that the dipstick assembly, alone or in conjunction with the pump, meets the limitations of claim 1, paragraph (d)(iii)."

Additional claim terms were in dispute but all were construed according to the specific structure and then evaluated for equivalence based on the insubstantial difference test.  Having found insubstantial differences between the claimed elements in the '511 patent and the accused device, the District Court Judgment of Non-infringement was affirmed and we are again reminded that means plus function format claims are still limiting claims.

Fine for False Marking is Per Article, not Per Ocurrance

In THE FOREST GROUP, INC., v. BON TOOL COMPANY, et al., the Court of Appeals for The Federal Circuit ("CAFC") has held that under 35 USC §292, the fine for falsely marking an item as patented must be imposed on a per article basis, as opposed to a "per decision to mark" basis.  The defendants had continued to mark its construction type stilts as patented with its US Patent No. 5,645,515, even after a district court had held that its own devices and the accused devices did not infringe its patent.

The district court only awarded $500 in damages and the CAFC has now remanded the case to  the district court to determine the number of articles falsely marked by Forest after the district court's decision and the amount of penalty to be assessed per article.  The fine is discretionary with the court so it does not necessarily need to assess a fine of the maximum of $500 per article.  This could obviously be important in situations that involve a high volume of low cost products.

USPTO Rescinds Controversial Patent Regulations Package

Yesterday the US Patent and Trademark Office rescinded the controversial Patent Regulations Package, which limited the number of continuation applications as well as the number of claims that could be included within each application.  The regulations were published in the Federal Register in August 2007, but were enjoined and never came into effect.  The full text of the USPTO Press Release is found here.

US Patent Office Proposes Changes to Examiner Count System

US patent examiners operate under a "count system" in which they earn points for performing tasks during the examination of a patent application.  The count system has not been revised since 1976.  The revisions are designed to improve the examiner's working condition, give examiners more examination time and ultimately allow examiners to process applications more quickly.

As the USPTO revises its system, we will also revise our prosecution strategies to compliment the revisions in an effort to benefit our clients.

The full News Release is  available here. http://uspto.gov/web/offices/com/speeches/09-19.htm

A patent examiner has provided his perspective on the proposed changes here: http://just-n-examiner.livejournal.com/37762.html

Hold on to your Blackberrry – More Damages to pay?

As you may recall, in 2006 Research in Motion (RIM), the owner of Blackberry, paid $612.5 million to patent owner NTP to settle a patent infringement lawsuit.
The US 4th Circuit Court of Appeals, in Richmond, VA in September heard a Freedom of Information Act (”FOIA”) based lawsuit filed by NTP.  The lawsuit is intended to uncover details about the relationship between RIM and the US Department of Justice at the time of the 2006 settlement.
The US Government was the largest user of Blackberry’s and relied upon their reliable secure data functionality.  What NTP lawyers did not know at the time of the settlement was the Justice Department had entered into a “common-interest” agreement with RIM to advance governement interests in the patent infringement dispute.
The Justice Department allegedly withheld over 300 documents related to the effect of injunction on government Blackberrys.
Although common interest agreements are legal, questions remain concerning whether the terms of the deal should have remain private to NTP.  RIM may face additional pressure if the documents from the FOIA suit are revealed and additional limitations may be placed on the use of common interest agreements that effect settlement agreements between adverse parties.

Appeals of Patent Applications to the US Patent and Trademark Office Board of Patent Appeals and Interferences increases 41.7% between 2008 and 2009

A US Patent Application that is finally rejected by a patent examiner may be appealed to the Board of Patent Appeals and Interferences (“BPAI”).  The increase in the number of appeals would not come as a surprise to members of the patent bar because the rejection rate for new patent applications has increased dramatically since the 2007 landmark US Supreme Court Decision of KSR v Teleflex. The KSR case limited patentability by eliminating the requirement that a patent examiner show that there is some teaching, suggestion or motivation (known as the “TSM test”) in the prior art to combine references for an obviousness type rejection of the claim(s) of a patent application. The TSM test was not eliminated, but became just one factor to consider. The result has been patent examiners now routinely combine prior art references to assemble the elements in the claims of a patent application to form a basis for rejecting the patent application. This has led the increase in appealed patent applications. In 2008 6,385 applications were appealed, while in 2009 15,500 applications are projected to be appealed at the current appeal rate.

The increase in appealed patent applications has resulted in a delay from filing of the appeal, to decision of from 21 to 37 months.  The BPAI has said that it has plans to bring in more judges, together with patent attorneys and paralegals, but it admits that funding is not currently available for an increase in staffing.

For now, the most effective strategy, for the inventor and his/her patent attorney, is to avoid an appeal altogether by interviewing, in person, with the patent examiner, and at least one Supervisory Patent Examiner. Collectively a realistic evaluation of the prior art cited against the patent application can be made to define the patentable subject matter to result in an allowance of the patent application.

Multimedia Time Warping Patents Net TiVo $304 Million in Damage Awards

On September 4th, TiVo won an additional $200 million in damages for several of the patents that cover time warp recording of audio-video displays. The patents at suit were: US-6233389, US-7529465 and US-7493015. The damages were awarded by a federal judge in Marshall, Texas against Dish Network. TiVo earlier won damages of $104 million against AT&T and Verizon Communications. See the full story here.

Google Obtains Design Patent for its 2004 Home Page – So What?

This week Google obtained a US Design Patent for its search engine home page from 2004.  See the Patent at D599372.  A design patent is much narrower and weaker than a utility patent.  While a design patent only protects the ornamental features of an article, a utility patent protects the functional aspects.  Moreover, for an infringement of a design patent to occur, the accused design must be substantially similar, and nearly identical to the design shown in the design patent.

Google’s current home page is significantly different than the 2004 home page that it patented so the value of its patent may be more for the portfolio or wall dressing than an offensive tool to prevent infringement.

IBM Files US Patent for Facebook Remote Control

IBM has filed a US Patent Application for a Facebook, or other blog site, remote control.  A copy of the published application is available here: http://www.iplaw-usa.com/docs/7519658.pdf

274 green patents filed in second quarter

Green technology, and resulting I.P. protection of the new technology are going to be a hot growth area in the new economy.
See http://www.bizjournals.com/baltimore/stories/2009/08/24/daily37.html for an example of the growth on this area, especially in the area of fuel cells.