Category Archives: Patents – Federal Circuit

Back when I was losing on False Patent Marking.

Proof of objective facts and subjective intent are essential to success on a false patent marking claim (as well as on the inequitable conduct defense).  Showing that ‘patented’ was in some form marked on a product should not be hard.  In all ‘false’ conduct actions, the most difficult aspect is proving intent.

In a case some years past, the Judge issued fairly straightforward rulings that “intent” raised fact questions precluding summary judgment on a false patent marking claim. The court noted that the product was promoted as “patented” before an application had been filed, and that notice of the misidentification was received, also before the patent application was filed. The one promoting it may have believed it was patented. 

Seemed plain – accepting favorably an inference of ‘good faith’  despite a mistaken belief that the product was “patented.”  This did not spawn hordes of mismarking cases, and intent should remain difficult to prove.

Rule 403 Prejudice Comes with the Combo.

As one Delaware jurist used to ask, ‘how many times do you patent lawyers want me to try your case?’  It was a rhetorical inquiry, since the judge had the power to keep it to one, even though the lawyers might prefer 3 trials: claim construction, liability and damages (plus maybe a TRO mini-trial on the front end).

The new school of patentee’s counsel tend to prefer one trial, hit hard and quick on the big issues, then shift the burden to infringer’s counsel to bore the jurors with proving all of the details.

That approach went under reconsideration after reading St. Clair IPC v. Fuji Photo, 1:03-CV-231 (D. Del. 11/19/09).  The jury upheld the patent and awarded damages based on .5% royalty rate.  St. Clair moved for a new trial on damages because evidence of other licenses, obtained under litigation duress, were excluded from evidence.  The judge ruled that the risk of prejudice outweighed the probative value, “particularly in light of the fact that damages and liability were being tried together.”  The obverse of that ‘particular’ may be that had damages be tried separately, then the litigation-induced licenses would have been admitted for the jury to consider.
The ‘whoops’ factor (scarred litigator-speak) was that someone in the courtroom must have thought having two trials was the better option, and it wasn’t St. Clair.  “In this regard, the Court notes that St. Clair opposed the bifurcation of liability and damages.”

There are plenty of cases, pro and con, on admitting evidence of royalty rates in licenses obtained after litigation was threatened or underway.  It can be held out, especially where those are the only licenses.  It can come in with a cautionary instruction to the jury, or it can just come in after cross-exam and closing argument explain the differences between arms-length and arm-twisting.

In that perfect world of the engineering mind, each issue would get full treatment, and if that takes separate trials, then OK.  But, the litigator’s mindset is to get to verdict as soon as possible, without being unduly rushed. For that, one trial plainly is preferable.  If a choice between bifurcation, trifurcation or singularity carries a risk of my evidence being excluded from the single trial, but admitted in one of separate trials, then tell me that – before any trial, and before I decide on bifurcation.

Ariad v. Lilly – amicus diverge.

My initial reading of the amicus briefs to the Federal Circuit, on the two en banc questions about the written description requirement, indicated two clusters of argument.  There are contentions that the requirements “as applied” impact the life sciences harshly.  Others contend that there is, or is not, a description requirement in 112,1 separate from having to enable.

The “as applied” contentions may have merit, or may be anecdotally accurate.  Either way, anecdotes are not a sound basis for precedential rulings.  The statute says what it says.  No one would desire a result that allows a patent to issue, before the invention is to the point of invention.  So sure, there are applications and issued patents that get treated harshly, especially if the final claim set is more a product of negotiation with the examiner than based on a restatement of the specification.

As part of my adjunct professor work, an amicus brief was filed with the assistance of law students in the IP Law Society at the University of Kentucky College of Law.  It now is published on, and accessible at:

About my lapsed patent, unpaid maintenance fees and the contours of your breaches, ‘See you in Court’ – somewhere.

A Michigan legal malpractice suit against patent attorneys, alleged a lapse due to unpaid maintenance fees, having to settle patent litigation on unfavorable terms, as well as “sundry other breaches … the precise contours of which breaches are not altogether clear from the Complaint.” The alleged nonfeasance regarded patenting an improved “lacrosse stick head.” Suit began in state court, but then the patent attorney defendants persuaded the plaintiff to re-file in federal court, based on two Federal Circuit rulings that found federal jurisdiction over two legal malpractice cases pleaded under Texas law.

So, in Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C., 2009 WL 1975383 (E.D.Mich. July 10, 2009), the adversaries were of one mind about federal court jurisdiction over malpractice claims arising from patent practice, but the district court felt obligated to self-check its power to act.

It did not check out, and the court found “unpersuasive” the arguments that there was any “substantial question of federal patent law.” At the crux, was whether proving damages proximately caused by legal malpractice required proving the underlying patent dispute as a “necessary element.” In answer to that inquiry, it was held that alleged malpractice did not require that the court “engage in claim construction, evaluate the viability of underlying patent litigation, or determine if others are infringing the patent in question.” The case was dismissed and sent back to state court, which plaintiff hopes will agree that it has jurisdiction. Guess that answers where the parties will have to go to deal with the “precise contours” of their “breaches.”

In re Bilski – Could be Transformative

News that the Supreme Court will review In re Bilski is quick to set off currents of speculation.  In its un-reviewed form, Bilski was relief from the State Street hangover and was a work-around to the stunted state of reforming the Patent Act.  Now, one wonders how the Supremes can keep intact their string of smackdowns on CAFC rulings, when Bilski seems to have been a reaction to prior whippings.

A Path that is Wide, but the Gate is Narrow.

How many roads must a patentee go down, before he can see the sky?  The patentee wishes to invest in plowshares, but those infringers divert some of the budget to swords.  Then, at the reckoning, what is gained.

Passages from two recent decisions that deny post-judgment recoupment remind us that when the fire burns out, there may be nothing to carry away.

In Star Navigation Systems Group, Ltd. v. Aeromechanical Services Ltd., 2009 WL 1313208 (N.D.Cal. 2009), the accused infringer’s motion was denied after the plaintiff-patentee voluntarily dismissed the case.  A “press release issued after Star voluntarily dismissed [explaining] that Star dismissed the action after concluding any award of damages it might obtain would be outweighed by the costs it would incur in prosecuting the matter” did not prove that Star had prosecuted the suit in bad faith.

Also denied was a post-judgment motion for attorneys fees, after a jury ruling, a JMOL, and a CAFC reversal, in Sundance, Inc. v. De Monte Fabricating, Ltd., 2009 WL 1324901 (E.D.Mich. 2009).  The Hon. Avern Cohn, who has seen a lot in 30 years on the federal bench, noted all of the hoops that the patentee had hurdled, before the CAFC ruled de novo and declared invalidity ab initio.  “The ′109 patent was not only duly granted; it was thrice examined. That the Court and three (3) patent examiners got it wrong in the view of the Federal Circuit does not make this an exceptional case.”

A variety of reasons suggest why the Patent Act needs to be reformed, but the gauntlet that the CAFC requires be run before a final decision can be reached, is a good one.

This 13 Thing Keeps Coming Up Decisively.

There’s a lot to think about on a Friday – do I have charcoal, will it rain, how come I’m still working on Monday’s work, what the numbers on my paycheck mean – oh, and that it is the 13th.  For all those lucky birds who were born on Friday the 13th, what can you tell us about how that rolls you along the tao of life.

This 13 thing infects decisive aspects of CAFC rulings.  Probably one of the more empiric IP blawgers could insert a chart here that statisticizes how many district court rulings are affirmed because of the intervention of a #13 circumstance.  Consider:

A CAFC panel, or at least two of them, troubled over the statute of limitations issues because it had been “thirteen years after the first patent was issued” when “Schlumberger reportedly represented …that Schlumberger owns the Barstow inventions.” DDB Technologies, L.L.C. v. MLB Advanced Media, L.P., (Fed. Cir. Feb.13, 2008).

Patent geeks find no reason to doubt that “the Lemelson patents occupied the “top thirteen positions” for the longest prosecutions from 1914 to 2001.” Symbol Techs., Inc. v. Lemelson Med., Educ. & Research Found., 422 F.3d 1378 (Fed. Cir. 2005).

Almost for certain it was not a random decision that the U.S. government “began requiring [V-chip] functionality in television sets thirteen inches or larger.” Sony Electronics, Inc. v. Guardian Media Technologies, Ltd., 497 F.3d 1271 (Fed. Cir. 2007).

It too was notable that the CAFC, in sanctioning a troll-to-be, seized upon that infringement complaint in Eon-Net LP v. Flagstar Bancorp, (Fed. Cir. Sept. 27, 2007) being “virtually identical” to thirteen other complaints “filed against parties with greatly disparate business operations.”

It is no wonder that a “thirteen-day jury trial” was needed to navigate around the alleged infringement of a claim construed to encompass “an array of microphones” arrayed around your skullcase. Medtronic Navigation, Inc. v. BrainLAB Medizinische Computersysteme GmbH, (Fed. Cir. February 7, 2007).

Certainly, one of refined taste for the bubbly {me} has no need for “applying the thirteen factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973), without deference” to negate a likelihood of confusion between a flute of Veuve Clicquot, the finest champagne of all, and some kid-sip marked Veuve Royale sparkling wine. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369 (Fed. Cir. 2005).

Some think these cases were decided on CAFC precedent, but there too is the deci-trio cum detritus theory of random order selection – chart please.  If your CAFC case gets a docket number that includes the #13, then wonder, ‘is it a sign?’

Representing Your Own Exceptional Prosecution, Less Often.

Take an unscientific sample (1 month of CAFC rulings), sum how many times attorneys who prosecuted the application also presented the case in court, and draw nebulous conclusions therefrom (and before the month is over).

In May, there were 13 decisions where the attorneys named on the issued patents could be compared with those listed as counsel of record (in others, the attorney or firm went unnamed on the patent). Also, there was reason to put aside those cases where the litigant was an assignee of the patent/s, since that made it less likely that the prosecuting attorney still had a client relationship with the litigant. In the remaining ten cases, there were three where the same attorneys prosecuted the patent and litigated the infringement case. That the figure was over a quarter of the sample was surprising.

When the District Judge or CAFC is interpreting the claims based on the intrinsic evidence, i.e., the work of the attorney now litigating the patent case, there must be occasions where counsel advocates, but does so based on first-hand knowledge. What did an amendment or argument mean, or what was the applicant’s intent; what happened when the examiner was interviewed; what prior art was known but not disclosed, etc. Seems like a difficult task, and one that involves putting one’s own work between the crosshairs of the lawsuit and the client’s best interests.

In today’s ruling in Cat Tech v. Tubemaster, the CAFC titles a section “Semantic Antics” to describe one claim interpretation argument. Another passage calls a construction argument “strained” to the point that it “renders an important claim limitation …fundamentally meaningless.” Understanding your own wordsmithing is easy, but getting an accused infringer or a court to understand it in the way you had hoped for is less than easy.

The World As We Knew It.

In today’s CAFC ruling In re Translogic, the panel recalls the observations and mandates made in the KSR v. Teleflex decision.  It really is the first CAFC opinion that gives more than a quick quote or cite to the KSR case.  In the context of a reexamination decision, the CAFC panel goes further to acknowledge the sea change made by what KSR announced.  You can read it, and if you’re an EE, you’ll enjoy it more than all the pharma-patents that so often are divined by the CAFC.

With the Supreme Court’s recent patent rulings, mainly KSR, and the upcoming revamp to the USPTO rules, the practiced and litigated issues of patent law are less and less within the four corners of the entire sets of F.2d and F. Supp.  The hoped-for certainty that the CAFC would provide, reduction of forum shopping, added value to patents on U.S. technology, prevention of copying and piracy, protections for first to patent against first to mass market, etc., etc., have not been realized, or have been lost, in recent years.  Patents today cost more and are worth less.  True technologic advances are assailed as “common sense” or “obvious.”

In my efforts to blawg, many sources are considered.  In the past three months, there’s hardly been a development worth reporting.  For a patentee, or a modestly-capitalized inventor, most all of the news has been bad.  Courts and the PTO change the patent law by interpretation or regulation.  Congress gives speeches and votes non-binding resolutions.  Patent reform garners too few votes.  Maybe it’s time to change the focus of the blawg to something that matters more, or less.

Only Use Rule 11 on Trolls After Going Thru the Motions.

My Oct. 11 `06 post overstated the utility of Rule 11 to excise cases that plead infringement like a mass tort by a class of internet merchants.  It was overstated, as a presently available remedy, because now the CAFC has reversed the R. 11 sanctions assessed in Eon-Net L.P. v. Flagstar Bank.  This non-precedential opinion instructs that a Rule 11 determination cannot be made about infringement allegations until after the Court performs a Markman analysis.

The Rule 11 remedy against mildly-researched infringement claims by patent trolls should be even more available after the Supreme’s ruling in Twombly.  The CAFC panel in Eon-Net noted that the District Judge found that “Eon-Net failed to present facts demonstrating infringement, identify [Flagstar] products that might infringe…, ‘proffer …’ or apply its [claims] construction to” allegedly infringing products.  Those shortcomings might have passed muster under the former “any set of facts” pleading standard, but not the present Twombly standard of alleging facts sufficient to make the case “plausible” and not “speculative.”

How then to rid the docket of thinly-pleaded claims, with generalized allegations of infringement, against no identified structure or product?  The CAFC was comfortable in taking away Rule 11 as a tool to triage trolls from the truly-infringed.  “[W]here a district court construes a patent without following the necessary steps, we should remand for …the district court …[to] follow the appropriate steps.”

The CAFC panel left undisturbed the finding of no pre-filing claims construction by Eon-Net, which had not “reasonably evaluated the `687 patent’s claims.”  It remanded for the district judge to do the claim construction, which the plaintiff essentially never did.  Only after a Court has construed the claims, can it adjudge the inadequacy of the plaintiff’s pre-filing read of those claims.  That mandate seems illogical, as though a Court is obligated to evaulate what evidence a plaintiff would need before ruling that suit was filed before the plaintiff had the evidence it needed.

Of course, the Eon-Net ruling is “nonprecedential.”  If, however, there is no CAFC precedent on how Rule 11 imposes a pre-filing obligation to perform a claims interpretation and apply it to specific subject matter, then a nonprecedential ruling has to be treated as near-gospel on the subject.