Posts Tagged: "Judge Moore"

The Federal Circuit held that the district court failed to provide a proper justification for enhancing the amount by a multiplier of two. The basis for this multiplier was the court’s expeditious resolution on the merits which resulted in an “extremely low” lodestar, and had the court adopted Lumen View’s proposed schedule, FTB would have incurred more attorney fees. The Court disagreed with this as a rationale for enhancing the lodestar amount. The Court held an award can be enhanced only when it fails to account for a relevant consideration. Here, factors such as the expedited schedule were unrelated to the compensation of FTB’s attorneys and therefore, irrelevant to the enhancement of the lodestar.

Yesterday the Federal Circuit in an en banc decision held that the portion of Section 2(a) of the Trademark Act, which bars federal registration for trademarks that are disparaging, is unconstitutional under the First Amendment. The government advanced three principal arguments for why §2(a) did not violate the First Amendment: (1) because §2(a) does not “prohibit” or suppress speech at all; (2) because trademark registration is government speech; and (3) because §2(a) merely withholds a government subsidy. The Court rejected all three of the government’s arguments, and in doing so issued holdings on three separate issues that have divided other tribunals.

The law of patent eligibility is created by the nine least qualified people to make such a determination; the Justices of Supreme Court of the United States. The Supreme Court arbitrarily chooses which of its own prior decisions to follow and ignore, refuses to read and enforce the laws passed by Congress even when the statue is but a single sentence (as is 101), and they openly legislates from the bench by creating judicial exceptions to patent eligibility where no such statutory prerogative exists. If the Federal Circuit will not step up and do the right thing and limit the lawless Mayo decision, which instructs lower courts to ignore the patent statute and drive 100% of the analysis into 101, the U.S. will forfeit our lead in the biotechnology and medical device industries. That will be bad for the economy, but far worse for public health.

In a November 10 ruling, the Federal Circuit held that routine quality control testing of each batch of a generic drug as part of the commercial production process, after FDA approval, is not protected by the Hatch-Waxman safe harbor provision of 35 U.S.C. § 271(e)(1). However, infringement only occurs under 35 U.S.C. § 271(g), as a result of “making” a product, which does not include quality control testing.

According to Limelight, the district court’s construction of “tagging” was limited to using a “pointer” or “hook” to prepend or insert a virtual server hostname into a URL. The Court rejected “prepending” as a claim limitation because even though the ‘703 patent described prepending as a preference, there was no indication from the claims or prosecution history that tagging was limited to this preferred embodiment. The Court found no error in the jury instructions and held that Limelight was bound to the stipulated construction of “tagging” originally read to the jury.

Imaginal appealed, arguing that the district court improperly construed the disputed claim language, because: because it: (1) ignored the written description and claim language; (2) relied too heavily on general purpose dictionary definitions; and (3) improperly excluded a preferred embodiment. The Federal Circuit disagreed. It held that nothing in the patent claims or specification restricted the vision guidance system to only one particular system that is excluded from the claims (“without”). Accordingly, the Federal Circuit affirmed.

Advanced Steel sued X-Body Equipment for infringement of a method of loading shipping containers with bulk material. The “proximate end” of the claimed transfer base, for moving loaded material, was disputed by the parties. X-Body successfully argued on summary judgment that the piston-and-cylinder for its container packer was not connected to the proximate end of its transfer base, but instead was connected at a point on the bottom of the container packer. Under the district court’s construction of “proximate end” (which means “the extreme or last part lengthwise”), there was no literal infringement or infringement under the doctrine of equivalents.

The district court erred by relying entirely on the plain meaning of the claim where context-based interpretations were necessary. The Court held that the plural terms “intervals” and “remotes” in isolation could mean what must occur during each interval and what was applicable to all the remotes, but there was no requirement indicated in the remaining claim language or specification that at least one remote transmit and receive frames during at least one interval. The Court held that this evidence, together with other language in claim 21, and teachings in the specification, showed that each cycle in the claims must have intervals in which remotes were allowed to transmit.

The Federal Circuit reversed the district court’s claim construction, and held that the claim language does not require that the start and duration of remote-transmission intervals be communicated prior to the beginning of the cycle. St. Jude had not explained why, in accordance with the specification, it was not sufficient that a remote know roughly when to expect an upcoming cycle to begin, rather than its exact starting time, and why such interval information could not be communicated during a cycle. The Court postulated that a remote unit could power up its communications equipment for the entirety of a first cycle, receive interval information whenever it was transmitted, then only power up that equipment during its assigned interval for subsequent cycles.

Despite the Supreme Court ruling that laches is no defense to a copyright infringement action brought during the statute of limitations, the Federal Circuit ruled laches can bar recovery of legal remedies in patent infringement. The Federal Circuit explained that the 1952 Patent Act codified the common law rule, meaning that laches was codified as a defense under 35 U.S.C. 282.
The Federal Circuit, sitting en banc, followed the common law principle that, ”[w]hen a statute covers an issue previously governed by the common law, [the Court] must presume that Congress intended to retain the substance of the common law.” The Federal Circuit also ruled that laches does not preclude an ongoing royalty.

The Federal Circuit held that the structure and language of §122(a) indicate that Congress intended the exceptions to confidentiality to be narrow and reviewable. §122(a) contains two portions: a mandatory clause follows by two exceptions. The word ‘shall’ in the first portion of the provision made it mandatory for the PTO to maintain the confidentiality of patent applications. In addition, the word ‘necessary’ in the first exception indicated a narrow exception and afforded the agency no discretion. In light of this, coupled with the language of the second exception, the Court concluded that the PTO’s determination of “special circumstances” in the second exception is reviewable.

Even though the Board is generally not bound by the district court’s construction of claim terms, it does not mean that “it has no obligation to acknowledge that interpretation or to assess whether it is consistent with the broadest reasonable construction of the term.” Here, given that PI’s main argument was the proper interpretation of the term “coupled,” which was construed by the district court, the Board had an obligation “to evaluate that construction and to determine whether it was consistent with the broadest reasonable construction of the term.” Because the Board failed to address the district court’s interpretation of the term “coupled” and failed to provide adequate explanation for its decision to reject the claims as anticipated, the Court reversed and remanded.

The en banc Court reversed the previous panel, and expanded the circumstances under which an alleged infringer may be liable under §271(a). In addition to circumstances identified by the panel, liability may arise if “an alleged infringer conditions participation in an activity or the receipt of a benefit upon performance of a step or steps of the patented method, and establishes the manner or timing of that performance.” When that standard is satisfied, the actions of a third party may be attributed to the alleged infringer, who thereby directly infringes under §271(a), even though there was no “mastermind” acting though a formal agent.

The issue was whether the disputed prior art is sufficiently “analogous” to the art of marking interface plates for it to be applied in a proper obviousness analysis. The Court held that even though an inventor may be aware of rock carving, engraved signage, or Prussian Blue methods, this does not mean that he would look to these methods when trying to improve markings for circuit board testers. The Court also found that the jury’s determination of validity, which tacitly concluded the disputed prior art was non-analogous, was supported by substantial evidence in the record.

In Williamson v. Citrix, the Federal Circuit overruled its own precedent that there is a “strong” presumption that claim limitations that do not use the term “means” are not means-plus-function limitations. This change has been decried by practitioners who purposefully avoid the word “means” in order to avoid means-plus-function treatment of their functionally claimed elements. Means-plus-function claiming is an opportunity to be embraced, not a trap to be avoided. Invoking §112(f) and the associated scope of a means-plus-function limitation is largely in the control of the patent drafter.