Litigating? Be nice or face the wrath.
In an order dated January 26, 2012, Chief Judge Gerald Rosen of the Eastern District of Michigan sua sponte sanctioned plaintiffs’ counsel $1,000. The offense? The “transparent gamesmanship” of opposing the defendant’s out-of-time Answer to plaintiffs’ Amended Complaint.
You can definitely hold the other side’s feet to the fire, but be careful that you don’t fuel the fire with dollar bills.
Want an Oregon office of the PTO?
Do you wish you could work for the U.S. Patent and Trademark Office, but in or near lovely Portland, Oregon? Or perhaps Bend? Eugene?
Government benefits, Mt. Hood, the Coast, the desert, adventures in the Gorge, Voodoo Doughnuts. What could be better?
Join Oregon Senator Ron Wyden in his effort to bring a PTO satellite office to Oregon, by sending a letter of support to satelliteoffices@uspto.gov by Monday, January 30, 2012 (that’s next Monday).
For details, see this letter.
Beware the Object of the Invention
One thing that can be good when working as a lawyer is to have a way with words. As a patent prosecutor, you must also be very careful with your words.
It is well known that prosecution history estoppel can be used to limit the scope of patent claims. A recent decision from the Middle District of New Carolina also reminds prosecutors of the need to have caution in drafting a patent’s specification.
In BASF Agro B.V., Arnhem (NL), Wädenswil Branch, et. al. v. Makhteshim Agan of North America, Inc., et. al., the accused infringer (Makhteshim) argued that the patentee (Kimura, who assigned his patent rights to BASF) disclaimed claim coverage over Makhteshim’s method of applying insecticide. Interestingly, Makhteshim argued that the disclaimer was in a single sentence of the patent’s specification (U.S. Pat. No. 6,414,040), in which the patentee described the objects of the invention.
In its decision finding noninfringement, the court agreed.
The court stated (at pp. 18-19):
The use of an exterior barrier as a required element of treatment is prior art as defined and clearly disclaimed by Mr. Kimura. Under Northern Telecom, because Mr. Kimura clearly and unmistakably disclaimed the use of a prior art barrier, the prior art barrier and Mr. Kimura’s invention became “mutually exclusive.” See Northern Telecom Ltd., 215 F.3d at 1297. Thus, by definition, one practicing a form of treatment which requires both an exterior barrier element and an interior loophole element is not practicing Mr. Kimura’s invention. This court finds that Mr. Kimura’s description of his invention as “a termite treatment without barrier,” (U.S. Pat. No. 6,414,040, col. 1, ll. 43-44), excludes barrier treatments from the invention and therefore the combination of a barrier treatment and Mr. Kimura’s loopholes does not infringe the patents at issue.
The entirety of Kimura’s disclaimer read: “Another object of the instant invention is to provide a termite treatment without barrier,” with the key word being without. The court found this to be a clear disclaimer of claim scope, and contrasted this disclaimer to cases where the patentee was either silent on the issue, or stated that certain features were merely undesirable, in which cases courts do not find disclaimers of claim scope.
Decision in Bilski v. Kappos
The Supreme Court released its decision in Bilski v. Kappos today, a long-awaited case dealing with the scope of patentable subject matter under 35 USC Sec. 101. In short, the Supremes affirmed the Federal Circuit’s judgment that Bilski’s business method was not patent-eligible, but stated that the Federal Circuit’s “machine-or-transformation” test was not the sole test of patentable subject matter. More will come shortly, but for now, here is a link to the opinion:
Bilski v. Kappos opinion
There is bound to be much erudite commentary on the Bilski decision. Here is a running list of the posts I have found that might be of interest to the casual (or professional) reader. If you have something you want linked, let me know. Note that Gene Quinn at IPWatchdog.com also has what appears to be a memo to Examiners at the U.S. Patent and Trademark Office giving a preliminary assessment of Bilski‘s impact on their operations. [As an aside, so much of the following commentary is really excellent that it gives me pause regarding whether I should even try to contribute my two cents’ worth. Nice work, everyone.]
Eric Guttag at IPWatchdog
IP Now: Australia and New Zealand
IPWatchdog Memo to Examiners [PDF]
Joe Mullin at Corporate Counsel
Joe Mullin at The Prior Art [same]
Ted Sichelman at Patently-O
Federal Circuit Giveth, and Taketh Away
In business, we often forget, the effect of an adverse (or favorable) court ruling can be drastic, and immediate. Today’s shining example of this effect is the ruling of the Court of Appeals for the Federal Circuit that it will reconsider, en banc, its March 4, 2010 ruling (in favor of TiVo) in Tivo Inc. v. Echostar Corp, et al. In that earlier decision, the Federal Circuit held (roughly) that Echostar’s attempts to design around TiVo’s DVR patents (after an earlier loss at trial) were properly found invalid by the district court, and upheld a more-than-$90 million award against Echostar. The decision and award have now been vacated, and the case will be decided anew.
TiVo’s stock dropped approximately 35% in the minutes after the Federal Circuit’s decision was announced today, wiping out grand amounts of book-money for TiVo’s shareholders. Before, however, anyone cries great tears for TiVo and its owners, please recall that this effect essentially restores the status quo. After the Federal Circuit’s March 4 ruling, TiVo’s stock price leapt more than 60%; today’s loss brings TiVo’s shares back to within a dollar of their pre-March 4th selling price.
For you legal nerds, the Federal Circuit’s order establishes that rehearing en banc will address the following issues:
- Following a finding of infringement by an accused device at trial, under what circumstances is it proper for a district court to determine infringement by a newly accused device through contempt proceedings rather than through new infringement proceedings? What burden of proof is required to establish that a contempt proceeding is proper?
- How does “fair ground of doubt as to the wrongfulness of the defendant’s conduct” compare with the “more than colorable differences” or “substantial open issues of infringement” tests in evaluating the newly accused device against the adjudged infringing device? See Cal. Artificial Stone Paving Co. v. Molitor, 113 U.S. 609, 618 (1885); KSM Fastening Sys., Inc. v. H.A. Jones Co., 776 F.2d 1522, 1532 (Fed. Cir. 1985).
- Where a contempt proceeding is proper, (1) what burden of proof is on the patentee to show that the newly accused device infringes (see KSM, 776 F.2d at 1524) and (2) what weight should be given to the infringer’s efforts to design around the patent and its reasonable and good faith belief of noninfringement by the new device, for a finding of contempt?
- Is it proper for a district court to hold an enjoined party in contempt where there is a substantial question as to whether the injunction is ambiguous in scope?
Between this and the rehearing en banc order in Therasense, Inc. v. Becton, Dickinson and Co. there is a lot of amicus briefing fun to be had.
37 Thoughts 