THE PENALTY FOR / FALSE MARKING IS ASSESSED PER / MISMARKED ARTICLE

The Forest Group, Inc., v. Bon Tool Company, [2009-1044] (December 28, 2009)[MOORE, Rader, Plager] The Federal Circuit reversed and remanded the $500 fine against Forest for false patent marking, and affirmed the denial of attorneys fees and the holdings that that Forest had not violated the Lanham Act, that U.S. Patent No. 5,645,515 was not invalid, and was not infringed,
DISCUSSION: The Federal Circuit held that the plain language of 35 U.S.C. § 292 requires courts to impose penalties for false marking on a per article basis, and thus remanded the $500 penalty for district court to impose a per article penalty. The Federal Circuit provided some comfort noting:
This does not mean that a court must fine those guilty of false marking $500 per article marked. The statute provides a fine of “not more than $500 for every such offense.” 35 U.S.C. § 292(a) (emphasis added). By allowing a range of penalties, the statute provides district courts the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities. In the case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty.
COMMENT: This holding is of particular concern because of indications that mismarking may include statements that a product is “covered by one or more” patents on a list, or that the product is covered by an expired patent. Best Practice: Every patentee should promptly review the patent marking on its products, remove patents that do not cover the product, and consider removing patents that have expired.

CAN YOU PICTURE THIS? / SPECIMENS OF USE NEED NOT/ INCLUDE A PHOTO

In Re Michael Sones, [2009-1140 (Serial No. 78/717,427)](December 23, 2009)[ LINN, Newman, Rader] The Federal Circuit reversed theTTAB, which affirmed the Examiner’s rejection of internet specimens which did not necessarily have to include a photograph of the goods.
DISCUSSION: The Federal Circuit held that a picture is not a mandatory requirement for a website-based specimen of use, and that the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is “associated” with the goods and serves as an indicator of source.. The Court said that precedentestablishes that a visual depiction of a product is an important consideration in determining whether a submitted specimen sufficiently associates a mark with the source of the goods. It might well be that the absence of a picture will render website specimens ineffective in many cases and will be, as the PTO argues, “[a] crucial factor in the court’s analysis.” But a picture is not the only way to show an association between a mark and the goods, and we cannot approve of the rigid, bright-line rule that the PTO applied here.

LIABILITY / ESTIMATE FOR BANKRUPTCY / LARGELY AFFIRMED

In Re Electro-Mechanical Industries, [2008-1530, 2009-1137] (December 22, 2009) [MOORE, Newman, Plager] NON-PRECEDENTIAL The Federal Circuit affirmed, with modification, a the determination in an estimation proceeding of the bankrupt’s liability for willful patent infringement.

NO JMOL? / NO BASIS FOR APPEAL. / MICROSOFT ENJOINED

i4i Limited Partnership v. Microsoft Corporation, [2009-1504](December 22, 2009)[PROST, Schall, Moore] The Federal Circuit affirmed a $200 million damage award, and an injunction against future selling, offering to sell, importing, or using copies of Word with the infringing custom XML editor. Microsoft is also prohibited from instructing or assisting new customers in the custom XML editor’s use.
DISCUSSION: The Federal Circuit rejected Microsoft’s claim construction which the Federal Circuit found improperly imported benefit of the claim limitation, rather than the limitation.
CANON: Generally, a claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a “clear intention” to limit the claim’s scope with “words or expressions of manifest exclusion or restriction.” CANON: "By the same token, not every benefit flowing from an invention is a claim limitation." TIP: The use of permissive language in the specification, can help prevent the preferred embodiment from becoming the only embodiment.
The Federal Circuit also held that Microsoft could not challenge the non-obviousness determination, because Microsoft failed make a JMOL, holding that a party must file a pre-verdict JMOL motion on all theories, and with respect to all prior art references, that it wishes to challenge with a post-verdict JMOL. The Federal Circuit rejected Microsoft’s argument that the clear and convincing burden of proof should have been less for prior art that was not before the PTO. Finally the Federal Circuit affirmed the permanent injunction, with potentially serious impact on futures sales of Microsoft Word.

ANTICIPATION? / ORDINARY OBSERVER / IS THE CORRECT TEST

International Seaway Trading Corporation v. Walgreens Corporation, and TOUCHSPORT FOOTWEAR USA, INC., [2009-1237](December 17, 2009)[DYK, Bryson, Clevenger] The Federal Circuit, affirmed in part, reversed in part, and remanded the holding that the design patents in suit were anticipated.
DISCUSSION: The Federal Circuit held that the district court did not err in concluding that the ordinary observer test is the sole test for design patent invalidity under § 102, but that it did err in failing to consider the entirety of the designs, including the insoles of the shoes.

MANDAMUS GRANTED / FOR ABUSE OF DISCRETION / CASE SHOULD BE TRANSFERRED

In re Nintendo Co., Ltd., [MISCELLANEOUS DOCKET NO. 914] (December 17, 2009) [RADER, Clevenger, Dyk]] The Federal Circuit granted mandamus transferring the case from the Eastern District of Texas.
DISCUSSION: The Federal Circuit said that A motion to transfer venue should be granted upon a showing that the transferee venue is “clearly more convenient” than the venue chosen by the plaintiff. The Fifth Circuit applies the “public” and “private” factors for determining forum non conveniens when deciding a § 1404(a) motion to transfer venue.The private interest factors include: “(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.” The public interest factors include: “(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 law or in the application of foreign law.”

PRELIMINARY / INJUNCTION INCONSISTENT / WITH STAY, ONE REVERSED

Automated Merchandising Systems, Inc. v. Crane Co., [2009-1158, -1164] (December 16, 2009) [MICHEL, Clevenger, and Dyk] The Federal Circuit reversed the grant of a preliminary injunction, but affirmed the stay pending reexamination.
DISCUSSION: The Federal Circuit found that AMS had not demonstrated it was entitled to a preliminary injunction. The Federal Circuit noted that because it logically seems that there cannot simultaneously be a substantial issue of patentability and no substantial issue of patentability, stays pending reexamination are typically inappropriate in cases in which preliminary injunctions are appropriate. However, since the grant of preliminary injunction was reversed, there was no longer any problem with staying AMS’s claims against Crane pending the outcome of the reexamination process.

AFTER KSR / COMMON SENSE APPLIES NOT A / RIGID FORMULA

In Re Henry Gleizer, [2009-1373](December 15, 2009)[LOURIE, Dyk, Kendall] NON-PRECEDENTIAL The Federal Circuit affirmed the rejection of applicant’s claims for obviousness.
DISCUSSION: The Federal Circuit agreed with the Board affirmance of the rejection and noted that “[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case” and that the “common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.”

EXPERT'S CONCLUSION / DOES NOT CREATE ISSUE OF / MATERIAL FACT

Intellectual Science and Technology, Inc., v. SONY Electronics, Inc., [2009-1142] (December 15, 2009) [RADER, Archer, Gajarsa] The Federal Circuit affirmed summary judgment of non-infringement.
DISCUSSION: This court concludes that plaintiff expert did not sufficiently identify the structural elements corresponding to the claimed “data transmitting means.” An expert’s unsupported conclusion on the ultimate issue of infringement will not alone create a genuine issue of material fact. When counsel for Intellectual Science was asked at oral argument its expert identified the structural elements in his declaration, counsel conceded that the language is “perhaps not as grammatical as one would wish.” The Federal Circuit said that asking litigants to provide more than a difficult-to-decipher expert declaration does not impose too high a burden at summary judgment, especially where, as here, the structural elements are allegedly common.

CLAIMS SHOULD BE CONSTRUED / THE SAME FOR VALIDITY / AND FOR INFRINGEMENT

Source Search Technologies, LLC, v. Lendingtree, LLC, [2008-1505, -1524] (December 7, 2009) [RADER, Plager, Schall). The Federal Circuit reversed and remanded summary judgment that the asserted claims of U.S. Patent No. 5,758,328 (“’328 patent”) were infringed but invalid on obviousness grounds.
DISCUSSION: The Federal Circuit said that “[i]t is axiomatic that claims are construed the same way for both invalidity and infringement.” Having reversed summary judgment of invalidity, the Federal Ciruit also reversed the summary judgment of infringement.

JURISDICTION MORE / LIKELY WHERE A LICENSING / ENTITY INVOLVED

Hewlett-Packard Company v. Acceleron LLC, [2009-1283]( December 4, 2009) [MICHEL, Newman, Moore] The Federal Circuit reversed the dismissal for lack of declaratory judgment jurisdiction.
DISCUSSION: The Federal Circuit found declaratory judgment jurisdiction from the contacts by defendant patent holding company despite the lack of express threats, or the assertion of specific claims or the identification of accused products, noting it is implausible (especially after MedImmune and several post-MedImmune decisions from this court) to expect that a competent lawyer drafting such correspondence for a patent owner would identify specific claims, present claim charts, and explicitly allege infringement. The Federal Circuit said that: conduct that can be reasonably inferred as demonstrating intent to enforce a patent can create declaratory judgment jurisdiction. Finally, the Federal Circuit indicated that the conduct of a licensing entity, which without enforcement it receives no benefits from its patents, can affect the assessment of whether there is a actual case or controversy.

Federal Circuit Says “Common Sense” has Role in Obviousness Determinations. Who knew?

Perfect Web Technologies, Inc. v. Infousa, Inc., [09-1105] (December 2, 2009)

At issue was the obviousness of claim 1 of U.S. Patent No. 6,631,400, directed to managing bulk email distribution:

1. A method for managing bulk e-mail distribution comprising the steps:
(A) matching a target recipient profile with a group of target recipients;
(B) transmitting a set of bulk e-mails to said target recipients in said matched group;
(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and,
(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.

The parties agreed that steps (A) through (C) were in the prior art, and that step (D) was not. The parties further agreed on the scope and content of the prior art and the level of skill in the art. Infousa maintained that repeating the prior art steps until the desired number of emails had been received was a matter of common sense, and obvious. The Federal Circuit noted that in rejecting rigid application of the “teaching, suggestion, or motivation” test for obviousness, the Supreme Court said that common sense can be a source of reasons to combine or modify prior art references to achieve the patented invention. The Federal Circuit added that “Common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.” The Federal Circuit pointed out in Dystar “we explained that that use of common sense does not require a ‘specific hint or suggestion in a particular reference,’ only a reasoned explanation that avoids conclusory generalizations.” The Federal Circuit held that: “while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”
Turning to the facts of the present case, the Federal Circuit found the predicate evidence on which the district court based its “common sense” reasoning appeared in the record, namely the facts that step (D) merely involves repeating earlier steps, and that a marketer could repeat those steps, if desired. The district court also adequately explained its invocation of common sense. The district court reasoned: “If 100 e-mail deliveries were ordered, and the first transmission delivered only 95, common sense dictates that one should try again. One could do little else.” The Federal Circuit also found that step (D) would have been obvious to try. The experts identified at most a few potential solutions for this problem at the time, including resending failed messages and sending new messages. Of these limited options, “simple logic” suggested that sending messages to new addresses was more likely to produce successful deliveries than re-sending messages to addresses that have already failed.
So, common sense has been part of the obvious determination all along. Maybe we haven’t noticed because the courts and PTO have such a high regard for it, that they use it sparingly.