Everyone Makes Mistakes; But the Patentee Has to Fix Them All

Everyone makes mistakes, but when a mistake occurs in a patent, regardless of who is at fault, the patent may not have full force and effect unless and until the patent is corrected. At first blush the Fig. 12 from U.S. Patent No. 8,075,302 might appear to be of a transparent device, but it is supposed to be "an exploded view of a preferred embodiment of the dispensing and mixing head showing the static mixer, the mixing block, seal plate, valving block, compound pin valves, O-rings, packing, valve actuating air cylinder, and associated connecting and mounting hardware." Furthermore the Figure in the patent is not the Figure that the applicant submitted. How the image disappeared is the Patent Office's problem, but the fact that it disappeared is the patentee's problem. The specification may be incomplete unless and until the patent is corrected, by reissue or a Certificate of Correction

Design Patent Claim Drafting

While the words of a design patent claim are standardized, that does not mean that there is no art to drafting a design patent. A design patent claims the design "as shown and described". Thus the scope of the claim is controlled by controlling what is shown and how it is described. U.S. Patent No. D456,915 is an interesting example of controlling the scope of a design patent claim through the use of dashed lines and description. The invention, an eggnog-colored candle top with a sprinkled nutmeg-like topping, is defined solely by dashed lines. This means that the claim is not limited to any particular shape, and essentially covers randomly dispersed dots on the top of a candle. Also interesting is the attempt to cover color (eggnog) with a black and white drawing solely through written description and the submission of informal drawings.

Proper preparation of a design patent means thoughtful preparation of the drawings, and careful drafting of the description.

The Name of the Game is the . . . Spec?

Retractable Technologies, Inc. v. Becton, Dickinson And Company, 2010-1402 (July 8, 2011) [LOURIE, Rader, Plager] the Federal Circuit affirmed in part and reversed in part judgment that Becton Dickinson infringed U.S. Patent Nos. 5,632,733, 6,090,077, and 7,351,224 on syringes with retractable needles.

DISCUSSION: The primary issue on appeal was whether the district court erred in construing “a hollow syringe body” in several of the claims in dispute as not being limited to a one-piece hollow syringe body.

While there was a dependent claim that limited the body to a “one-piece body” which tended to imply the independent claim was not so limited, the Federal Circuit found that this implication was “not a strong one”, noting that independent claim that “none of the claims expressly recite a body that contains multiple pieces”.

The Federal Circuit said that “[i]t is axiomatic that the claim construction process entails more than viewing the claim language in isolation” and that [c]laim language must always be read in view of the writ-ten description”. The Federal Circuit found that the specification indicated that “body” referred to a one-piece body. The Federal Circuit pointed to the Background of the Art said:

U.S. Patent No. 5,632,733, col. 2, ll. 26-31. The Federal Circuit also pointed to the Summary of the Invention:

U.S. Patent No. 5,632,733, col. 2, ll. 45-47. The Federal Circuit noted that the Detailed Description repeatedly mentions the one-piece construction:

U.S. Patent No. 5,632,733, col. 5, ll. 54-56.

U.S. Patent No. 5,632,733, col. 10, ll. 9-10. In contrast, the Federal Circuit noted that the “specifications do not disclose a body that consists of multiple pieces or indicate that the body is anything other than a one-piece body”.

Noting that there is a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims, the Federal Circuit identified it “strive[s] to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention.” The Federal Circuit said that “while the claims leave open the possibility that the recited ‘body’ may encompass a syringe body composed of more than one piece, the specifications tell us otherwise.” The Federal Circuit concluded that “a construction of “body” that limits the term to a one-piece body is required to tether the claims to what the specifications indicate the inventor actually invented.”

SIGNIFICANCE:

1. While Judge Rich famously proclaimed “the name of the game is the claim” (Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L., 497, 499 (1990) ("To coin a phrase, the name of the game is the claim."), in a post-Philips world the specification is can undo the work of a careful claim drafter.

2. When drafting a specification, describe alternatives, and when an adjective is used (e.g. one-piece) specifically contemplate alternatives.

3. When employing claim differentiation, don’t rely on a dependent claim specifically claiming the preferred embodiment to broaden the base independent claim, specifically claim alternatives to the preferred embodiment.

Findings on Intent Lacking in first Post-Thersense Inequitable Conduct Case

American Calcar, Inc. v. American Honda Motor Co., Inc., 2009-1503, -1567 (June 27, 2011) [LOURIE, Bryson Gajarsa] the Federal Circuit affirmed summary judgment decisions of non infringement, reversed the denial of JMOL on the validity of the ’759 patent, and vacated and remanded the finding of inequitable conduct.

DISCUSSION: Although the question of inequitable conduct was presented to the jury for an advisory determination, the Federal Circuit said that inequitable conduct is equitable in nature, with no right to a jury, and the trial court has the obligation to resolve the underlying facts of materiality and intent. The Federal Circuit said that its en banc decision in Therasense that to prove inequitable conduct, the accused infringer must provide evidence that the applicant (1) misrepresented or omitted material information, and (2) did so with specific intent to deceive the PTO.

Under Therasense, the materiality required to establish inequitable conduct is, in general, but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Further, while deceptive intent can be inferred from indirect and circumstantial evidence, that “inference must not only be based on sufficient evidence and be reasonable in light of that evidence, but it must also be the single most reasonable inference able to be drawn from the evidence to meet the clear and convincing standard.” The Federal Circuit reiterated that in a case involving nondisclosure of information, clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.

The Federal Circuit noted that the withheld information may be material if it would have blocked patent issuance under the PTO’s preponderance of the evidence standard, giving those patents’ claims their broadest reasonable construction. However it could not infer that finding from the district court’s opinion, so it vacated and remanded the case.

Under Therasense, “the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.” The Federal Circuit noted that although the court performed a detailed analysis of the facts withheld, it made no holding that any of the inventors knew that the withheld information was in fact material and made a deliberate decision to withhold it. The Federal Circuit said that instead, the district court relied on the sliding scale standard that was rejected in Therasense, basing its finding of intent significantly on the materiality of the 96RL system to the claimed invention. The Federal Circuit said that it was not its task to make factual findings, and vacated the district court’s finding of intent and remand the issue to the district court.

Regarding the summary judgment of non-infringement, the Federal Circuit agreed with the district court that the language of the summary and the detailed description limited the meaning of the claims, despite the fact that at least the summary used the language “for example” as well as an argument based upon claim differentiation, noting that if a claim will bear only one interpretation, similarity will have to be tolerated.

The Federal Circuit also held the patentee to a narrower construction of the term “source”, noting that it may reach a narrower construction, limited to the embodiments disclosed in the specification, when the claims themselves, the specification, or the prosecution history clearly indicate that the invention encompasses no more than that confined structure or method. On the issue of equivalents, the Federal Circuit found that ACI failed to provide particularized testimony and linking argument as to the ‘insubstantiality of the differences’ between the claimed invention and the accused device or process, and in any event finding a signal from one source to be equivalent to “signals from a plurality of sources” would vitiate that claim limitation by rendering it meaningless.

The Federal Circuit agreed with the district court’s claim construction and that “in response to” connotes that the second event occur in reaction to the first event. This was supported by the language of the claim itself. The Federal Circuit further observed that the specification did not disclose any embodiment that requires intervening action.

Transfer Right When You Pick A Court Just For Venue Court Needs Link to Case

In re Acer, Misc. No. 942, [SCHALL, Gajarsa, Moore] (2010), the Federal Circuit granted a petition for mandamus transferring the case from the Eastern District of Texas to the Northern District of California. Mandamus is available to correct correct a “patently erroneous denial of transfer”. The Court must consider both the private interest factors of (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make a trial easy, expeditious, and inexpensive, and the public interest factors of (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflicts of laws or in the application of foreign law. Mandamus was used to correction a “patently erroneous denial of transfer”.
The Federal Circuit concluded “the convenience of the parties and witnesses, the sources of proof, the local interest, and the compulsory process factors all significantly favor transfer. Mean-while, no factor remotely favors keeping this case in the Eastern District of Texas. Although Dell may be a likely source of evidence at trial.”

Induce Infringement / Without knowledge of Patent / Don't Turn A Blind Eye

SEB S.A., v. Montgomery Ward & Co., Inc., [2009-1099, -1108, -1119] (February 5, 2010) [RADER, Bryson, Linn] The Federal Circuit affirmed the holding that U.S. Patent No. 4,995,312 was valid, and infringed, and that defendant had induced infringement of the patent.
DISCUSSION:
Claim Construction: U.S. Patent No. 4,995,312 covers a deep fryer having a heated pan, and a plastic skirt that is “completely free with respect to the pan”. The limitation “completely free with respect to the pan” was construed to mean “there are no thermal bridges between the skirt and the pan.” The patented device had screws fixing the skirt, but these were thermally isolated and thus were not thermal bridges. The Federal Circuit perceived a slight internal inconsistency with the district court’s claim construction of “completely free” in the phrase “said skirt (3) being completely free with respect to the pan (1) with the exception of a ring (5)” because if “completely free” merely meant “no thermal bridges between the skirt and the pan,” the claim would not need to exclude expressly the ring from the completely free limitation with the fact that there was an insulting ring between the skirt and the pan. Despite the inconsistency, to the Federal Circuit the district court’s construction of “completely free” rings true. The Federal Circuit, applying the Canon that “Differences among claims can . . . be a useful guide in understanding the meaning of particular claim terms”, noted that if “completely free” actually meant “completely free” then claim 8, which calls for a rod, would be excluded. Furthermore, applying the Canon that “[A] construction that would not read on the preferred embodiment would rarely if ever be correct and would require highly persuasive evidentiary support.” the Federal Circuit said if “completely free” meant “completely free” then the claim would not cover the only embodiment. The Federal Circuit put great stock in the fact that the specification repeatedly highlights the inventiveness of eliminating thermal bridges to prevent heat transfer to the plastic skirt, and was apparently untroubled by the fact that applicant forsook this language in favor of “completely free”. The patent prosecutors (from the big city of Arlington, Virginia, got it right, while defendant’s counsel “from the middle of nowhere” (see below) doesn’t get the benefit of the doubt. The Federal Circuit said that read in light of the entire specification and with an eye to the preferred embodiment, then, the term “completely free” means “practically or functionally free.”

Because of the jury instructions, the Federal Circuit had to conclude that there was both direct infringement and inducement in order to affirm.
Actual Infringement by f.o.b. sales abroad:
As to direct infringement, defendant argued two points: First, an offer in the United States to sell goods outside of the United States does not violate the “offer to sell” provision of § 271(a). Second, in determining if a sale occurred in the United States, it was erroneous to consider “where the products were shipped from and where the products were shipped to”. The Federal Circuit observed that it had yet to define the full territorial scope of the “offers to sell” offense in § 271(a), but did point out that in Rotec Indus., Inc. v. Mitsubishi Corp., Judge Newman, concurring said that “[A]n offer to sell a device or system whose actual sale can not infringe a United States patent is not an infringing act under § 271.” The Federal Circuit said that the sales did not so clearly occur overseas that the district court’s failure to include such a limitation in its jury instructions affected the integrity of the trial. The Federal Circuit said that the only evidence of where sales occurred was that the products were delivered f.o.b. Hong Kong or mainland China. However, the Federal Circuit said that it has “rejected the notion that simply because goods were shipped f.o.b., the location of the ‘sale’ for the purposes of § 271 must be the location from which the goods were shipped.” Citing Lightcubes. Thus the district court’s instruction that the jury could consider “where the products were shipped from and where the products were shipped to” was not error.
Inducement by Turning A Blind Eye:
The district court found that there is no evidence that defendant was aware of the ’312 patent before April 9, 1998, but still found evidence to support plaintiff’s theory of inducement. This “evidence” included the fact that despite the fact that there are “a zillion patent attorneys in New York City” defendant went to a “guy in the middle of nowhere” to clear the product. The district court found that this was enough for the jury to infer that defendant understood that he was likely violating a patent. Implicit in this finding are: 1. Binghamton New Your is in the middle of no where, and 2. The zillionth best patent attorney in New York City, is better than any patent attorney in Binghamton.
Defendant argued that it could not be held liable for inducing a patent that it did not actually know existed, citing DSU Med Corp. v. JMS Co., which said that “The requirement that the alleged infringer knew or should have known his actions would induce actual infringement necessarily includes the requirement that he or she knew of the patent.”. However Federal Circuit said that DSU Medical did not set out the metes and bounds of the knowledge-of-the-patent requirement. In the Federal Circuit’s words, DSU Medical “decided the target of the knowledge, not the nature of that knowledge”.
The Federal Circuit said that inducement requires a showing of “specific intent to encourage another’s infringement” but that specific intent is not so narrow as to allow an accused wrongdoer to actively disregard a known risk that an element of the offense exists. The Federal Circuit said that the standard of deliberate indifference of a known risk is not different from actual knowledge, but is a form of actual knowledge, and a party’s knowledge of a disputed fact may also be proved through evidence that he consciously avoided knowledge of what would otherwise have been obvious to him.
The Federal Circuit held that a claim for inducement is viable even where the patentee has not produced direct evidence that the accused infringer actually knew of the patent-in-suit, and that this was such an instance. The Federal Circuit noted the following evidence that defendant deliberately disregarded a known risk that there was a patent:
1. Defendant purchased a plaintiff product in Hong Kong and copied all but the cosmetics.
2. While defendant hired an attorney to conduct a right-to-use study, it did not tell him that the product had been copied (noting that such failure would be highly suggestive of deliberate indifference in most circumstances).
3. Defendant’s did not point to any exculpatory evidence -- the lack of patent marking was rejected because defendant did not explain why it thought a product marketed in Hong Kong would have the U.S. patent number.
The Federal Circuit indicated that it was not setting the outer limit of what is sufficient constructive knowledge to constitute actual knowledge, but hinted that ignoring patent numbers marked on a product might be enough.

HYPOTHOSIZE A / REASONABLE ROYALTY / BUT DON'T SPECULATE

Resqnet.Com, Inc., v. Lansa, Inc., [2008-1365,-1366, 2009-1030] (February 5, 2010) [NEWMAN, LOURIE, and RADER] The Federal Circuit affirmed the finding that U.S. Patent No. 6,295,075 is valid and infringed, that U.S. Patent No. 5,831,608 is not infringed, reversed the imposition of sanctions, and vacated the damage award and remanded for recalculation.
DISCUSSION: Regarding the reasonable royalty damages, the Federal Circuit observed “a reasonable royalty analysis requires a court to hypothesize, not to speculate”. The Federal Circuit said that “the trial court must carefully tie proof of damages to the claimed invention’s footprint in the market place”. The licenses used by the plaintiff’s damages expert were silent about the patent in suit, and included rights beyond a license to the patent in suit. The Federal Circuit instructed that on remand the trial court should not rely on unrelated licenses to increase the reasonable royalty rate above rates more clearly linked to the economic demand for the claimed technology. The Federal Circuit reversed the award of sanctions as an abuse of discretion and untimely.

The Patent Office / Miscalculates Patent Term / Extensions Increase

Wyeth v. Kappos, [2009-1120] (January 7, 2010)[RADER, Plager, and Moore] The Federal Circuit affirmed summary judgment that Wyeth was entitled to extended patent term adjustments under 35 U.S.C. § 154(b) due to the Patent and Trademark Office’s delay in prosecuting their patent applications.
DISCUSSION: 35 U.S.C. § 154(b)(1) provides two separate extensions of patent term, one under part (A) for delays occasioned by failure of the USPTO to meet certain deadlines, and one under part (B) for pendency greater than 3 years. These are subject to reduction for overlap, which the USPTO interpreted as limiting the patentee to the greater of the part (A) extension or the part (B) extension, while Wyeth argued that only the part (A) that occurred after three years from filing is a true overlap. For one patent, the USPTO determined an extension of 462 days, while Wyeth calculated an extension of 756 days, and for the other patent, the USPTO determined a 492 day extension, while Wyeth determined a 722 day extension.
On a matter of pure statutory construction, the Federal Circuit agreed with Wyeth that the USPTO was calculating the extension wrong, and that the extension under parts A and B don't overlap, except when the A extension is for delays beyond the third anniversary of filing.