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.

Still Curious Why Written Description Compels a Factual Inquiry.

Many en banc decisions lose impact soon after being issued.  Ariad v. Lilly raised such a threshold issue, about the written description necessary to obtain a valid patent, that it might have had a lasting impact.  Instead, clever patent prosecutors will adapt their practice, add more species and more research results, and go on obtaining duly examined, issued and presumtively valid patents.

One rub of the decision was  its answer to an issue, embedded in the 2nd en banc question, of whether the written description requirement will be assessed by the judge or a trier of fact.  This was nearly the first question asked at oral argument, and one not addressed in the parties’ brief.

The amicus brief filed by the UK IP Law Society urged that written description issues be melded with the Markman hearing, and decided as a matter of law.  The en banc ruling disagreed.  It held, on page 24 of the slip opinion, that the “test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.”  Maybe it’s just me, but that sounds a lot like how the Judge reads the specification to interpret the claims.

Having a separate inquiry, for the “separate requirement” of a written description, leads to duplicative inquiries.  Again, the judge read the specification and file history to interpret the claims, then months later, instructs a jury to engage in that “objective inquiry into the four corners…” to decide the facts about the written description.  And, that’s not all.  There too is overlap between the written description inquiries and the Wands factors for enablement.  The experts in Ariad discussed the degree of experimentation possibly needed to replicate the claimed, but not adequately described, but apparently enabled, inventions.  So, are the Wands factors extended to the inquiry about written description?

Why then, did the en banc court decide it was a fact question.  It derives, possibly, from the grammatical parsing of 112P1.  Ariad, Lilly and the amicis, put forth readings of the provision, and suggested how to parse the subordinate clauses and the commas.  It was decided that the written description clause and the enablement clause were inseparably bound by the passage on “any person skilled.”  This answered Ariad’s argument that having a separate requirement for written description was one “without a legal standard” (slip op. pg. 8).  The decision give that contention enough weight to join the two requirements around that one prepositional phrase.  This may not have “violat[ed] the rules of grammar,” but because it ended up making written description a factual inquiry, rather than one decided as a matter of law, the embedded logic must have violated something fundamental to fair and efficient resolution of patent cases.

NFP means for reaching result.

In a NFP order, the CAFC affirmed trial court rulings of not invalid and enforceable, in a suit about patents for those clunky tag devices and sensors used to deter shoplifters.  Defendants appeared for trial in 2008 and stipulated to infringement, choosing to defend on invalidity and unenforceability grounds.  Earlier, the defendants filed for re-exam, and with one possibly important exception, the claims survived. 

The trial presentation on invalidity apparently relied on references submitted in the re-exams, and in consonant fashion, the court upheld the patents as valid. 

The inequitable conduct ruling, and the remarks in the CAFC order, are curious or provoke this curiosity.  In the re-exam, a claim was rejected based on the `033 patent, which defendants contended was withheld during prosecution.  Quare: would not rejection based on that reference be prima facie proof that it was “material to patentability.”  Even if that `033 reference was not enough to reject the claim, it at least would seem to be “material” prior art. 
At trial, one of the inventors explained why he felt the `033 disclosed less than the examiner had said in the re-exam.  On that basis, the trial Judge ruled that “the `033 patent was not material.”  Per curiam, the CAFC affirmed, but stated “we do not address the question whether the information that was not disclosed was material.”  It affirms based on the finding that the inventors “did not act with intent to deceive.”  That’s a bit oblique to the district court’s specific findings that the non-disclosed art was cumulative and/or non-material, which was disconnected from the conclusory ruling that defendant “have not shown” the references were “intentionally withheld ..with an intent to deceive.”

Perhaps, here’s the difference between for-publication and NFP rulings by the CAFC: publication is needed to articulate how to reach the result on appeal; a ruling NFP comes to the right result, so there no need to say more about it.  Sensormatic v. Von Kahle, (CAFC 2009-1193, 2/17/2010).

Spring IP lectures.

Per an earlier post, this Spring semester has a lot of IP to offer.  Tomorrow afternoon, 2/10, Prof. Donald Chisum will sum up some of the most significant patent cases from 2009.  Then, on Thursday afternoon, 2/11, Prof. Janice Mueller will give the Randall-Park lecture on The ‘Impossible Issue’ of Non-Obviousness in Design Patents.

Both lectures are in the main courtroom at the UK Law School, Lexington, KY.

Procedural Process Errors, and Uninfringed Product by Process Claims = Certiorari?

At its conference today, the Supreme Court may decide, or decline, to consider the product-by-process issues in Astrellas Pharma v. Lupin Ltd., 09-335. The mystery of the chemistry was detailed by blawgers right after the CAFC issued its 8-4 decision on May 18, 2009. In the end, the CAFC ruled that that only the claimed product of a claimed process can be infringed.
The petitioner, after a 5-page table of cases, says it’s a case “without precedent,” then follows that with “the Federal Circuit violated the Court’s precedent.” Indeed, on pg. 16, petitioner points to an instance in the majority opinion that “ignores over 110 years of precedent.” One wonders if the rationale of 100 years ago to allow claiming a novel, but mysterious, product of known process steps is still viable in today’s laboratories.
Initially, petitioner argues error with the CAFC ruling en banc, sua sponte (my, those Latin classes at X have come in handy) to resolve an intra-circuit conflict about product by process claims. If the Supreme Court takes an issue, then it is more likely to review patent issues than Circuit operating procedures.
Petitioner’s further contentions regard fears that the CAFC crossed the bright-line rule that patent claims be interpreted the same for validity and infringement purposes. That point is key to disputes between the majority opinion or J. Rader and the dissent of J. Newman. And too, in a nutshell, it provokes the issue: what’s the issue, and how should product-by-process claims be treated? The legal inquiry may devolve upon claim interpretation (nonstatutory), or definiteness and full enablement (statutory), or 110 years of precedent (?), or more plainly, what ground sustains product-by-process claiming (nonstatutory).
The respondents point to the en banc issue arising within a “rarely invoked exception” for “rare” products that are not understood, but are known only as the product of a fully enabled process. That “exception” is nonstatutory, like many of the central issues. Respondents’ arguments also highlight whether the fundamental question is claim interpretation – should a claim be construed to cover unclaimed products of claimed process – or is it some broader inquiry into product-by-process claiming.
The proverbial ‘fly on the wall’ at today’s in camera conference (one more Latinism) will hear how constitutional rights have been stripped, property taken without due process, statutes violated, etc. When the Astrellas petition comes up, then that fly will wonder whether the CAFC’s treatment of nonstatutory product-by-process claims deserves further, Supreme review.

If nothing else, patent attys will follow the semantics.

All the upsurging interest in computer-operated method claims being Bilski-ed out of existence raised curiosity about whether ‘lip service’ was being paid to the machine-or-tranformation standard.

A search in the published, pending patent applications database yielded 1867 apps, published in 2009, describing a computer and using the claim term “transform.” That total would be reduced by eliminating claims to Fourier operations.

Among the many claimed transformation were the following:

“to transform said plurality of sensitive data values into a plurality of desensitized data”

“transforming through the computer readable storage medium a first operator variable of a first operator”

“to transform the encoded information to a readable format in that the user authenticates himself using a personal code”

Hard to know whether the “transform” limitation is there to particularly point out an essential feature, or was inserted so as to come out on the side of ‘claiming it the way they said to.’  Equally unknown about these apps is whether the intangible data, which is claimed to be part of the transformation, might be “representative of physical objects or substances.” In re Bilski. Let’s leave that inquiry – whether the data refers to a physical article – for some examiner to consider.

If Patent Troll Sends the Letter, Then a Case-or-Controversy “Implicitly” is Asserted.

 The CAFC reversed the dismissal of a DJ action, noting that it was a close case for jurisdiction, but the scales tipped due to the notice letter coming from a “non-competitor patent holding company.”  (N/K/A, “no-co-pho-co” which I find has an alliterative syncopation more appealling than ‘patent troll’).                                    So, it is not what was said, but who said it.  Plaintiff Acceleron’s letter “did not contain language threatening to sue for infringement or demand a license.”  It expressly was intended to provide “both parties with appropriate protections to create a productive atmosphere” to discuss the noted patent.  Where’s the case?      Judge Robinson in Delaware ruled that litigation was “too speculative a prospect” to exercise DJ jurisdiction.  The CAFC, in an opinion by C.J. Michel, disagreed and reversed.  It decided it was “not unreasonable for HP to interpret Acceleron’s letters as implicitly asserting” its patent rights. (‘I can tell what you’re thinking, even if you’re not saying it’).  In the conclusion of the ruling, the panel notes that its decision “undoubtedly marks a shift from past declaratory judgment cases,” and a “jurisprudence [that] must …evolve.” A moderate shift of the techtonic plates, but evolution to the one advanced is revolution to those comfortable with the past.   For a CAFC panel to feel empowered by the Supreme Court’s reversal in the Medimmune decision is evolutionary or shifty.                                                                           The case is HP v. Acceleron, 09-1283 (Fed. Cir. 12/4/09).

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.

Local Patent Rules Might Have Unintended Impact.

LegalMetric sends out routine emails referring to its statistical analysis of patent litigation. Recently, it reported the most pro-patentee and [allegedly] pro-infringer districts among the federal courts.

In order, the top 10 districts favoring parties accused of infringement are:

1. Northern District of California  *
2. Southern District of California * 
3. Eastern District of Pennsylvania
4. Central District of California * 
5. Southern District of New York 
6. Southern District of Ohio * 
7. Eastern District of Michigan
8. Western District of Washington *
9. Southern District of Florida
10. District of Arizona

The ten districts most favorable to patentees were, in order:

1. District of Delaware
2. Eastern District of Texas *
3. Middle District of Florida
4. District of New Jersey
5. Western District of Wisconsin
6. Eastern District of Virginia
7. District of Massachusetts*
8. Eastern District of Missouri
9. District of Minnesota*
10. Northern District of Ohio

My curiosity was what neutral factor might bear upon whether a district favored infringers over patentees. As listed above, the asterisks indicate those districts that have local rules for patent litigation.

IMO, the rules that allocate to patentees the burden of going forward with a proposed claim construction, identification of alleged infringing subject matter with claim chart details, etc., tend to be more favorable to infringers. The local patent rules, with links to those district’s webpages, are collected nicely on

Those districts that still practice using the ‘sporting’ rules of litigation tend to favor a patentee.

It is fair to conclude that my appraisal is unscientific and/or based on too small a sample to draw conclusions. On the other hand, the rating and report of LegalMetric has indicia of scientific reliability.

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: