Posts in Courts

Pressure Products v. Greatbatch: Why Another 5 Judge Panel?

Nothing in the appealed issues in Pressure Products (claim construction, denial of motion for JMOL, leave to amend answer) even remotely hints at or suggests the basis for this five judge panel. In fact, Pressure Products has all the markings of a fairly ordinary, garden variety patent infringement case. So why not the standard three judge panel? Not a word of explanation.

Not Losing the Forest for the Trees: Newman Concurs in Ariad

Coming as no surprise, a majority of the en banc Federal Circuit just ruled in Ariad Pharmaceuticals v. Eli Lilly &Co. that there is there is a separate and distinct “written description” requirement in the first paragraph of 35 U.S.C. § 112. Also not surprisingly, there were multiple concurring (and dissenting) opinions. Judge Lourie (writing the majority opinion) has now won the on-going debate that has raged between him and Judge Rader (who has strenuously argued there is no written description requirement separate and distinct from the “enablement” requirement) since the 1997 case of Regents of the University of California v. Eli Lilly & Co.

Best Mode Patent-Raptor Devours Another Victim in Ajinomoto

In the end, Ajinomoto, and especially the ‘698 and ‘160 patents, were unable to outrun the “best mode” patentraptor. And like the sequels to Jurassic Park, there are likely to be future instances where this patentivour devours other U.S. patents, including those of foreign applicants who may even be ignorant of this patent monster. But ignorance of the “best mode” patentraptor is equivalent to not being aware that the bioengineered dinosaurs were multiplying in dangerous numbers in Jurassic Park. The message is now clear in the Ajinomoto case: be aware or be eaten by the “best mode” patentraptor.

A Discussion of SEB v. Montgomery Ward—Developments in the Law of Inducement and Direct Infringement

The Federal Circuit’s recent decision in SEB S.A. v. Montgomery Ward & Co., Inc. (Fed. Cir. Feb. 5, 2010) (“SEB”) addresses a defendant’s liability for inducement as well as for direct infringement. It is significant in that it may expand the scope of infringement liability, particularly for foreign defendants, in multiple respects.  What follows is an Executive Summary of SEB…

TiVo Stock Surges Over 50% on Patent Decision in EchoStar Case

TiVo, Inc. (NASDAQ: TIVO), owner of U.S. Patent 6,233,389, titled “Multimedia Time Warping System,” was a big winner today at the United States Court of Appeals for the Federal Circuit when the CAFC handed down its decision in Tivo, Inc. v. EchoStar Corp. A majority of the 3 judge panel hearing the case agreed with the district court and ratified the contempt order against EchoStar (NASDAQ: SATS) and Dish Network (NASDAQ: DISH). On news of the Federal Circuit ruling TiVo stock immediately surged ahead well over $5, up over 50%. Within less than 1 hour TiVo stock when from trading just over $10 a share, trading at $10.31 at 11:06 am EST, to trading at $16.07 at 11:42 am EST.

How to Effectively But Safely Tell the Story of the Invention

I’m sure some patent litigators will blanch at what I’m suggesting about telling the “story” behind the invention in a patent application because of all the supposed “admissions” that will be made. But most patent litigators haven’t had to endure the frustration we patent prosecutors experience when try to get a “silk purse patent” based on a “sow’s ear description” because there’s no “story” told in the patent application about why the invention is patentable. Also, drafting a “litigation-proof” patent application (if one exists) is meaningless if you can’t get that patent application allowed because the “story” told doesn’t sell the patentability of the invention.

Judge Rader Doth Protest Too Much in Media Technologies

Normally, I find Judge Rader, the heir apparent for Chief Judge of the Federal Circuit, to write cogently and persuasively, even in dissent. Witness his withering blast in In re Bilski where he rightly takes the majority to task for the nonsensical “machine or transformation” test. But unfortunately, like the line from Hamlet, Judge Rader “doth protest too much, methinks” without case law support in his dissent in Media Technologies.

CAFC Grants En Banc Review of BPAI to District Court Appeal

On February 17, 2010, the United States Court of Appeals for the Federal Circuit issued an order in Hyatt v. Kappos vacating the previous decision issued by a 3 judge panel on August 11, 2009, when the case was then styled Hyatt v. Doll. Hyatt’s petition for rehearing was denied. After polling the judges of the Federal Circuit, however, rehearing en banc was granted on whether 35 USC 145 requires de novo review and the submission of new evidence.

Obviousness Ruling Based on Mischaracterizations of Reference Overturned by CAFC

But what is refreshing and important in the Federal Circuit’s opinion is that mischaracterizations of references relied upon by the patent examiner (or the BPAI) for obviousness rulings are not to be simply glossed over as “harmless error.” Put differently, the Chapman decision gives patent applicant’s a viable legal basis to hold a patent examiner’s (as well as the BPAI’s) “feet to the fire” to challenge an obviousness (or anticipation) rejection based on one or more mischaracterizations of a reference.

Deciding Bilski on Patentable Subject Matter is Just Plain Wrong

Unfortunately, those who oppose software patents frequently, if not always, want to turn the patentability requirements as they apply to software and business methods into a single step inquiry. They want it all to ride on patentable subject matter, which is a horrible mistake. The majority of the Federal Circuit got it completely wrong in Bilski, and other notable recent decisions. Patentable subject matter is a threshold inquiry and should not be used to weed out an entire class of innovation simply because bad patents could and will issue if the other patentability requirements are not adequately applied. That is taking the “easy” way out and is simply wrong.

CAFC: Reliance on Unrelated Licenses Doom Damage Award

the patented technology involved screen recognition and terminal emulation processes to download a screen of information from a remote mainframe computer onto a local personal computer (PC). Basically, the patented technology facilitated the ability of the PC to operate like earlier “dumb terminals” in recognizing information sent by a mainframe connected to the PC. The alleged infringing terminal emulator program called “NewLook” was developed in Australia (by Looksoftware Proprietary Limited) but was sold by Lansa, Inc. (Lansa) in the U.S.

Divisional of Divisional Reaches Safe Harbor of 35 U.S.C § 121

Some may recall my “dissertation” on the case of Amgen Inc. v. F. Hoffman-La Roche Ltd. See CAFC: A Divisional By Any Other Name Is Not a Divisional .  In Amgen, the Federal Circuit made it clear that you had better characterize an application as a “divisional” if you wanted the benefit of the “safe harbor” provided by 35 U.S.C…

Bilski Tea Leaves: Remembering the Lab Corp. Non-decision

It has been just over two months since the Supreme Court heard oral arguments in Bilski v. Kappos, and we likely have at least several more months to wait for a ruling. Notwithstanding, pundits and commentators are certainly trying to figure out what the Supreme Court will do, engaging in thought exercises and gazing into crystal balls. The crystal ball…

Supreme Court Won’t Review CAFC Ruling that 35 USC § 271(f) Doesn’t Apply to Patented Processes

You may recall that I wrote back in September of last year on the case of Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. See CAFC Says “Patented Invention” Does Not Include Methods .  In Cardiac Pacemakers, all but one member of the en banc Federal Circuit ruled that 35 U.S.C. § 271(f) doesn’t apply to patented processes.  Judge Newman…

CAFC: Wyeth and Elan Pharma Win A+B Patent Term Adjustment

For those who find math daunting, determining whether the USPTO has correctly calculated patent term adjustment under 35 U.S.C. § 154(b) can create an Excedrin size-headache.  Patent term adjustment adds term to the granted patent for any “period of delay” caused by the patent prosecution process which is due to USPTO.  The problem is that there can be more than…