Archive for February, 2010

Assembly Line Litigation

February 25, 2010 2 comments

I keep thinking I will stop doing posts listing new false marking cases, at some point, because they just keep coming.  Nevertheless, I keep putting these up because it’s just so interesting to see the initial wave of something that looks like it will change the legal landscape for patents.  The more of these cases that come out, and the more they look like assembly-line litigation, the more I’m convinced that either the legislature or the judiciary is going to push back and make these suits less attractive.

On the other hand, isn’t the rash of suits strong evidence that qui tam actions under 35 U.S.C. Sec. 292 are a good thing?  If, indeed, Congress established that section of the U.S. Code to deputize the public and send us all on a hunt for falsely-marked goods, which represent an abuse of a Constitutional privilege, then it would seem imperative that we, the public, take the reins and do some policing.  The fact that there are so many cases of false marking being found suggests that we, the People, should have been more active in this regard.

In that vein, who, today, is Johnny Law?  Here are 20 more false marking suits filed in the last 48 hours, bringing the total for this year to 52 cases.  Compare that to the 27 cases filed in the last two years.

  • H. N. Akbar v. Procter & Gamble Co., 10-cv-00105-RC, Feb. 23, 2010, E.D. Tex.
  • Bentley A. Hollander v. Ranbaxy Labs. Inc., 10-cv-00793-MMB, Feb. 23, 2010, E.D. Pa.
  • Public Patent Foundation, Inc. v. Quigley Corp., 10-cv-01552-BSJ, Feb. 24, 2010, S.D.N.Y.
  • Public Patent Foundation, Inc. v. Novartis Consumer Health, Inc., 10-cv-01553-CM, Feb. 24, 2010, S.D.N.Y.
  • Thomas A. Simonian v. Pella Corp., 10-cv-01253, Feb. 24, 2010, N.D. Ill.
  • Thomas A. Simonian v. 3M Co., 10-cv-01255, Feb. 24, 2010, N.D. Ill.
  • Thomas A. Simonian v. BP Lubricants USA, Inc., 10-cv-01258, Feb. 24, 2010, N.D. Ill.
  • Thomas A. Simonian v. Quigley Corp., 10-cv-01259, Feb. 24, 2010, N.D. Ill.
  • Thomas A. Simonian v. Irwin Industrial Tool Co., 10-cv-01260, Feb. 24, 2010, N.D. Ill.
  • Thomas A. Simonian v. Edgecraft, Corp., 10-cv-01263, Feb. 24, 2010, N.D. Ill.
  • Thomas A. Simonian v. Monster Cable Products, Inc., 10-cv-01269, Feb. 24, 2010, N.D. Ill.
  • Thomas A. Simonian v. Novartis Consumer Health, Inc., 10-cv-01268, Feb. 24, 2010, N.D. Ill.
  • Thomas A. Simonian v. Novartis Animal Health US, Inc., 10-cv-01267, Feb. 24, 2010, N.D. Ill.
  • Thomas A. Simonian v. Global Instruments, Ltd. & Global TV Concepts, Ltd., 10-cv-01293, Feb. 25, 2010, N.D. Ill.
  • Thomas A. Simonian v. Tru Fire Corp., 10-cv-01295, Feb. 25, 2010, N.D. Ill.
  • Thomas A. Simonian v. Darex, LLC, 10-cv-01296, Feb. 25, 2010, N.D. Ill.
  • Thomas A. Simonian v. Merck & Co., Inc. & Schering-Plough Healthcare Products, Inc., 10-cv-01297, Feb. 25, 2010, N.D. Ill.
  • Thomas A. Simonian v. Cisco Systems, Inc., 10-cv-01306, Feb. 25, 2010, N.D. Ill.
  • Thomas A. Simonian v. Novartis Pharms. Corp., 10-cv-01308, Feb. 25, 2010, N.D. Ill.
  • Thomas A. Simonian v. Adv. Vision Research, Inc., 10-cv-01310, Feb. 25, 2010, N.D. Ill.

Of note, this batch of cases brings up an issue that I noted in my first post of this series: What will happen when a defendant is sued multiple times for false marking, in different courts, and by different plantiffs?  Here, The Public Patent Foundation and Thomas Simonian both sued Quigley Corporation and Novartis Consumer Health.

Note: Gene Quinn at IPWatchdog hosts a pseudonymous author’s humorous take on this situation.

Categories: False marking Tags: ,

Ill Will Toward Cybor?

February 25, 2010 Leave a comment

Today, the Federal Circuit decided Trading Techs. Int’l, Inc. v. eSpeed, Inc. [TTI v eSpeed (PDF)], in which the Court broadly affirmed the holdings of the district court regarding infringement of patents directed to commodity trading software.  Thus, the court approved of the district court’s holdings of infringement as to one product but not others, preclusion of infringement under the doctrine of equivalents, no on-sale bar under 35 U.S.C. § 102(b), no indefiniteness, and no inequitable conduct.  Yes, the parties appealed everything possible.

     There are at least two interesting aspects of this case.

     First, the court’s holding that it “may not give any deference to the trial court’s factual decisions underlying claim construction.”  The panel correctly noted that under Markman v. Westview Instruments, 517 U.S. 370 (1996), claim construction is an issue for the court, not a jury, suggesting de novo review of the district court’s conclusions.  The panel also noted that, though establishing claim construction as an issue of law, Markman was replete with references to the factual nature of the claim construction process, suggesting review of the district court’s conclusions for clear error.  Notwithstanding its recognition of this problem, the panel felt that it was compelled by the holding of Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) to review without deference the lower court’s claim construction.  The panel in this case did not seem pleased that it had to follow Cybor:

Of course, as the Supreme Court repeatedly clarified in Markman, the trial court occupies the best vantage point and possesses the best tools to resolve those evidentiary questions:

•  “The decisionmaker vested with the task of construing the patent is in the better position to ascertain whether an expert’s proposed definition fully comports with the specification and claims and so will preserve the patent’s internal coherence.” Id. at 390.

•  “[A] jury’s capabilities to evaluate demeanor to sense the mainsprings of human conduct or to reflect community standards are much less significant than a trained ability to evaluate the testimony in relation to the overall structure of the patent.” Id. at 389-90 (citations and internal quotation marks omitted).

Despite the Supreme Court’s emphasis on the trial court’s central role for claim construction, including the evaluation of expert testimony, this court may not give any deference to the trial court’s factual decisions underlying its claim construction. (emphasis added) This court’s prior en banc decision requires a review of the district court’s claim construction without the slightest iota of deference. See Cybor, 138 F.3d at 1451.

     Second, District Judge Ron Clark (sitting by designation from the Eastern District of Texas) made a point of concurring “to respectfully suggest that the current de novo standard of review for claim construction may result in the unintended consequences of discouraging settlement, encouraging appeals, and, in some cases, multiplying the proceedings.”  It’s one thing for the judges of the Federal Circuit to have an internal debate regarding the appropriate standard of review in claim construction (see point 1, above).  It’s a different matter when a district court judge (who presumably does not enjoy this standard of review, given its tendency to promote reversals) lets his colleagues on the Federal Circuit know that they are misguided:

The de novo review standard has at least two practical results, neither of which furthers the goal of the “just, speedy, and inexpensive determination of every action and proceeding.” Fed. R. Civ. P. 1. First, rejection of settlement is encouraged, and a decision to appeal is almost compelled, where counsel believes the client’s position is valid, even if debatable, depending on the view taken of extrinsic evidence.


A second, although less common, consequence of the de novo review standard is the opportunity it offers to the party that presents a case with an eye toward appeal rather than the verdict. Skilled counsel who believes a client may not be well received by a jury is tempted to build error into the record by asking for construction of additional terms, and/or presenting only a skeleton argument at the claim construction stage.

     The issue is clearly debatable: The Courts of Appeals go both ways regarding whether to apply two standards to mixed questions of fact and law.  For example, the Third Circuit says that courts should “break down” a matter and apply “the appropriate standard to each component.” Meridian Bank v. Alten, 958 F.2d 1226, 1229 (3d Cir. 1992).  On the other hand, the Ninth Circuit (like the Federal Circuit) says that mixed questions of fact and law get de novo review.  Boone v. U.S., 944 F.2d 1489, 1492 (9th Cir. 1991). 

     My feeling is that there should be two standards applied, based on the two types of conclusions (factual and legal) involved in claim construction.  Trial judges are clearly in the best position to establish facts after the presentation of evidence.  Recognizing this situation, the appellate court should review the established facts with some degree of deference.

Categories: CAFC Tags: ,

Crocs Prevails Against the ITC

February 24, 2010 Leave a comment

19 USC Sec 337 allows for exclusion from the United States of articles which infringe a valid and enforceable United States patent, copyright, trademark, or other intellectual property right.  A patent owner, for example, may file a complaint with the International Trade Commission (ITC) alleging a violation of Sec. 337 and requesting an investigation.  As part of an investigation based on asserted patent rights, the ITC may conduct hearings to determine whether accused imported articles actually infringe the patents recited in a patent holder’s complaint.

In this case, Crocs filed a complaint alleging infringement of its utility (US6993858) and design (D517789) patents related to its foam footwear.  The ITC conducted an investigation and determined that Crocs’s patents were either not infringed (design patent) or invalid for obviousness (utility patent).  Crocs appealed to the Federal Circuit.

Today, the Federal Circuit reversed the Commission’s determinations regarding both patents (Crocs v ITC), holding that the ITC “erred in finding that the prior art taught all of the claimed elements of the ’858 patent and incorrectly weighed the secondary considerations” and “erred in claim construction for the ’789 patent, in applying the ordinary observer test for infringement.”

The Federal Circuit first reiterated that the proper determination of design patent infringement requires application of the “ordinary observer” test of Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc):

In determining whether an accused product infringes a patented design, this court applies the “ordinary observer” test, without any “point of novelty” perspective. Egyptian Goddess, 543 F.3d at 678. To show infringement under the proper test, an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design. See id. at 681. When the differences between the claimed and accused designs are viewed in light of the prior art, the attention of the hypothetical ordinary observer may be drawn to those aspects of the claimed design that differ from the prior art. Id. If the claimed design is close to the prior art designs, small differences between the accused design and the claimed design assume more importance to the eye of the hypothetical ordinary observer. Id. The ordinary observer, however, will likely attach importance to those differences depending on the overall effect of those differences on the design. Id. Even if the claimed design simply combines old features in the prior art, it may still create an overall appearance deceptively similar to the accused design. In that case, this court will uphold a finding of infringement. Id. at 677–78. In other words, “the deception that arises is a result of the similarities in the overall design, not of similarities in ornamental features in isolation.” Amini Innovation, 439 F.3d at 1371. The ordinary observer test applies to the patented design in its entirety, as it is claimed. See Braun, Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 820 (Fed. Cir. 1992). “[M]inor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement.” Payless Shoesource, 998 F.2d at 991 (quoting Litton Sys. Inc. v. Whirlpool, 728 F.2d 1423, 1444 (Fed. Cir. 1984)).

Thus, regarding design patent infringement, the Federal Circuit noted (gently scolding the ITC):

Turning to this case, the Commission placed undue emphasis on particular details of its written description of the patented design. Those details became a mistaken checklist for infringement. Without a view to the design as a whole, the Commission used minor differences between the patented design and the accused products to prevent a finding of infringement. In other words, the concentration on small differences in isolation distracted from the overall impression of the claimed ornamental features.

The proper comparison requires a side-by-side view of the drawings of the ’789 patent design and the accused products….

Regarding the obviousness determination, Federal Circuit said:

[T]he prior art did not include any hint or suggestion or even common sense reason to include the passive restraint system of the ’858 patent at the time of the invention. The prior art, in fact, taught away from the passive restraint system. Because this claimed feature of the invention yielded more than predictable results, the ’858 patent for this reason also would not have been obvious at the time of invention.

And the Court also found that secondary considerations weighed against a finding of obviousness:

[T]he Commission found, based on substantial evidence, that Crocs shoes practice the ’858 patent and that the Crocs shoes were commercially successful…. This court gives even more credit to the administrative judge’s finding of substantial industry praise for the claimed invention and the products covered by the claimed invention. Still another objective measure tips the scale farther in the direction of non-obviousness, namely the Commission’s finding of copying. Copying may indeed be another form of flattering praise for inventive features.

Because of these errors, the case will go back to the ITC for determinations of infringement.

False Marking Suits Go Bananas

February 23, 2010 1 comment

We noted in a post last week that there has been a dramatic uptick in the rate of filing of false marking suits.  As noted there, false marking suits are qui tam actions filed under 35 USC Sec. 292, with an individual making the claim on behalf of the United States (any monetary award is shared equally between the plaintiff and the U.S.).  We posited (as have others, such as Justin Gray at Gray on Claims) that this uptick may be due to the Federal Circuit’s holding in Forest Group v. Bon Tool that false marking damages shall be awarded on a per-article basis (rather than on a per-occurrence basis), thus raising the possibility of large damage awards.

The rate of filings has continued unabated.  Using the lawsuit classifications of RFC Express, it appears that there have been 14 18 more false marking complaints filed in the last 4 days.

  • Arthur Lee Yarbough v. S.C. Johnson & Son, Inc. & Energizer Holdings, Inc., Feb. 19, 2010, 10-cv-00096, E.D. Tex.
  • Gregory Harrelson v. Stanley Works, Inc., Feb. 19, 2010, 10-cv-00371, N.D. Ala.
  • Advanced Cartridge Techs., LLC v. Lexmark Int’l, Inc., Feb. 22, 2010, M.D. Fla.
  • Patent Compliance Group, Inc. v. Tweezerman Int’l LLC, Feb. 22, 2010, 10-cv-00350, N.D. Tex.
  • Patent Compliance Group, Inc. v. Nutro Products Inc. & S&M NuTec LLC, Feb. 22, 2010, 10-cv-00351, N.D. Tex.
  • Azimuth Unlimited, LLC v. Seatel, Inc., Feb. 22, 2010, 10-cv-60253, S.D. Fla.
  • Thomas A. Simonian v. Mead Westvaco Corp., Feb. 23, 2010, 10-cv-01217, N.D. Ill.
  • Thomas A. Simonian v. Weber-Stephen Prods. Co., Feb. 23, 2010, 10-cv-01220, N.D. Ill.
  • Patent Compliance Group, Inc. v. Hunter Fan Co., Feb. 23, 2010, 10-cv-00359, N.D. Tex.
  • David O’Neill v. Roche Diagnostics Corp., Feb. 23, 2010, 10-cv-01205, N.D. Ill.
  • Thomas A. Simonian v. Pfizer, Inc., Feb. 23, 2010, 10-cv-01193, N.D. Ill.
  • Thomas A. Simonian v. Bunn-O-Matic Corp., Feb. 23, 2010, 10-cv-01203, N.D. Ill.
  • Thomas A. Simonian v. Ciba Vision Corp., Feb. 23, 2010, 10-cv-01202, N.D. Ill.
  • Thomas A. Simonian v. Blistex, Inc., Feb. 23, 2010, 10-cv-01201, N.D. Ill.
  • Thomas A. Simonian v. Fiskars Brands, Inc., 10-cv-01225, Feb. 23, 2010, N.D. Ill.
  • Thomas A. Simonian v. Oreck Corp. et al., 10-cv-01224, Feb. 23, 2010, N.D. Ill.
  • Thomas A. Simonian v. Merial LLC et al., 10-cv-01216, Feb. 23, 2010, N.D. Ill.
  • Thomas A. Simonian v. Kimberly-Clark Corp. et al., 10-cv-01214, Feb. 23, 2010, N.D. Ill.

This listing makes crystal clear that at least some people (or entities) are making a serious go of it in searching out falsely marked goods.  If businesses needed any more encouragement to review their patent portfolios and package markings, this should be it.  Any falsely marked good is now like big game to the false marking hunters.

[Updated at 10:26pm to add a 14th complaint]

[Updated 7:00am Feb. 24, 2010 to add more]

Categories: 35 USC 292, False marking

An Efficient Federal Circuit

February 19, 2010 2 comments

The Court of Appeals for the Federal Circuit can affirm a lower court decision without opinion by following Federal Circuit Rule 36.

That Rule states (in part):

Rule 36. Entry of Judgment – Judgment of Affirmance Without Opinion

The court may enter a judgment of affirmance without opinion, citing this rule, when it determines that any of the following conditions exist and an opinion would have no precedential value:

(a) the judgment, decision, or order of the trial court appealed from is based on findings that are not clearly erroneous;…(emphasis added)

The full text of a typical Rule 36 affirmance looks something like this:

ON APPEAL from the United States District Court for the Western District of Washington

in CASE NO. 07-CV-1660.

This CAUSE having been heard and considered, it is


Per Curiam (BRYSON, GAJARSA, and PROST, Circuit Judges.)

AFFIRMED. See Fed. Cir. R. 36

What, then, to make of Sensormatic Elec., LLC v. Von Kahle? This is an order that looks like a Rule 36 affirmance, which doesn’t follow the Rule 36 form. 

Here’s the full text:


Before BRYSON, LINN, and DYK, Circuit Judges.


          The judgment in this case is affirmed. With respect to the inequitable conduct claim, we uphold the district court’s ruling of no inequitable conduct based on the court’s finding that the inventors did not act with the intent to deceive the Patent and Trademark Office; we do not address the question whether the information that was not disclosed was material. With respect to the public use issue, we uphold the district court’s conclusion that the appellant Phenix failed to prove by clear and convincing evidence that the invention was in public use more than one year before the filing date for the patent; we do not address the question whether any alleged use of the invention during the period prior to the filing date of the patent fell within the experimental use exception to the public use doctrine.

So what to make of that?  Is it an order of summary affirmance, but lacking in form?  Is it one of the shorter per curiam opinions in Federal Circuit history?

It strikes me that this is actually a substantive opinion, styled as an order.  On one hand, I would hate to see a proliferation of nonprecedential opinions like this.  On the other, when it is clear to the appellate court that there is a single element dispositive of each claim, easily addressed without opinion, it contributes to the greater efficiency of the federal court system to issue these orders. See FRCP 1: [These rules] “should be construed and administered to secure the just, speedy, and inexpensive determination of every action.”

Categories: CAFC Tags: ,
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