Federal Circuit Finds That A Leak-Resistant Drinking Cup Did Not Infringe Plaintiff’s Patents

Case: Hakim v. Cannon Avent Group, PLC, No. 2005-1398 (Fed. Cir. Feb. 23, 2007)

The One Sentence Summary: Plaintiff failed to demonstrate that the defendant’s product infringed its patents.

What They Were Fighting About: The plaintiff argued that the defendant’s leak-resistant drinking cup violated two of its patents for drinking cups that prevented spills if the cup were to be tipped over. In its defense, the defendant argued that plaintiff’s claims lacked merit because one of the patents was narrow and did not encompass its product, and the other was invalid.

Federal Circuit Holdings:

• The court addressed each patent in turn. With regard to the first patent, the court concluded that its scope was limited and accordingly, the defendant’s product did not infringe it. In its initial patent prosecution the plaintiff had used limiting language to describe the patent. Subsequently, the plaintiff refiled its patent in an attempt to broaden its claim and used the word “opening” instead of “slit.” Given that the patent examiner accepted the refiled application, the plaintiff argued that the examiner also accepted the broadened claim. The court disagreed. The court held that the plaintiff had the right to refile its application and to attempt to broaden its claims; however, “an applicant cannot recapture claim scope that was surrendered or disclaimed.” In the instant case, the court concluded that the plaintiff originally used limiting language to avoid prior art, and as such, it surrendered the broader scope.
• The court turned to the other allegedly infringing patent and concluded the patent was invalid based on anticipation by an Italian patent. Accordingly, neither patent was infringed by defendant’s product.
  
  

Click here to read more.

Exercise of Supplemental Jurisdiction Over Foreign Patent Claims Absent Articulation of 28 U.S.C. § 1367(c) Analysis Constitutes Abuse of Discretion

Case: Voda v. Cordis Corp. (02/01/07 - No. 05-1238)

The One Sentence Summary: District court abused its discretion in exercising supplemental jurisdiction over foreign patent infringement claims through its failure to undertake 28 U.S.C. § 1367(c) discretionary analysis regarding issues surrounding supremacy of United States treaties and considerations of comity, judicial economy, convenience, and fairness, factors which would have compelled the court to decline supplemental jurisdiction.

What They Were Fighting About: Voda held United States patents on a catheter device, as well as European, British, Canadian, French, and German Patents on the same device. Cordis allegedly began to infringe these patents. After bringing infringement claims against Cordis based on his United States patents in the United States District Court for the Western District of Oklahoma, Voda sought to amend his complaint to add claims of infringement on his foreign patents. The district court determined that it had supplemental jurisdiction over the additional claims. In so doing, it did not discuss the circumstances laid out by § 1367(c), in which federal courts may exercise their discretion not to hear cases over which they otherwise have supplemental jurisdiction under § 1367(a).

Federal Circuit Holdings:

• Federal Circuit law applies because supplemental jurisdiction over foreign patent claims based on claims of United States patent infringement is a question unique to United States patent law.
• Factors from Mars, Inc. v. Kabushiki-Kaisha Nippon Conlux, 24 F.3d 1368 (Fed. Cir. 1994) (“[1] The respective patents are different, [2] the accused devices are different, [3] the alleged acts are different, and [4] the governing laws are different”) are neither an exhaustive list of factors properly considered in determining whether claims derive from “common nucleus of operative fact” under § 1367(a), nor the necessary conditions for a finding that the court lacks supplemental jurisdiction.
• Because the district court failed to make findings on the Mars factors, and because the district court abused its discretion under § 1367(c), it is more prudent not to decide “common nucleus of operative fact” question in this case.
• The court did not decide whether jurisdiction under § 1367(a) requires that district courts would ordinarily be expected to try domestic and foreign patent infringement claims all in one judicial proceeding, because the district court abused its discretion under § 1367(c). Thus, it did not decide whether Voda’s foreign patent claims fall within the scope of the “same case or controversy” requirement of § 1367(a).
• The text of § 1367(a) makes § 1367(c) an express statutory exception to the authorization of jurisdiction granted by § 1367(a).
• Because considerations of comity, judicial economy, convenience, fairness, and other exceptional circumstances constitute compelling reasons to decline jurisdiction under § 1367(c) in this case, the Federal Circuit held the district court abused its discretion by failing to undertake § 1367(c) analysis.
• Exercise of jurisdiction over Voda’s international patent claims could undermine international treaties joined and ratified as the “supreme law of the land” by the United States, and may therefore constitute an “exceptional circumstance” to decline jurisdiction. The Paris Convention for Protection of Industrial Property, the Patent Cooperation Treaty, and the World Trade Organization are all treaties entered into by the United States that do not contemplate or allow one jurisdiction to adjudicate the patents of the other.
• Considerations of comity do not support exercise of jurisdiction because Voda: (1) did not identify any international duty that would require our courts to adjudicate foreign patent infringement claims, (2) did not show that it would be more convenient for our courts to assume supplemental jurisdiction, (3) did not show that foreign courts will inadequately protect his foreign patent rights. Moreover, assuming jurisdiction over Voda’s foreign patent claims could prejudice the rights of the foreign governments.
• The local action doctrine also weighed against granting jurisdiction -- sovereigns ordinarily expect that claims related to rights limited by the metes and bounds of their jurisdictional territory will not be heard in other jurisdictions. Patent rights, like real property rights, are so limited.
• The Federal Circuit further reasoned that the Supreme Court ordinarily construes ambiguous statutes to avoid unreasonable interference with the sovereign authority of other nations. Exercise of supplemental jurisdiction over Voda’s foreign patent claims would risk suck interference.
• Because our courts lack expertise in foreign patent systems, it would be less efficient to try foreign claims here, and the variance in different patent regimes is likely to cause jury confusion. While it might otherwise be more efficient to try all claims at once, no international treaty establishes full faith and credit and there is nothing that would require foreign countries to recognize or obligate the enforcement of United States judgments. Based on these concerns, district court’s failure to articulate any judicial economy analysis supports finding that the district court abused its discretion.
• The Federal Circuit also reasoned that the district court’s failure to articulate any convenience analysis also supports the finding that the court abused its discretion.
• It also found prejudice to Cordis, given that the doctrine that acts of foreign states taken within their own jurisdictions are deemed valid dictates that foreign patents must be presumed valid. Thus, a U.S. court reviewing Voda’s claims would be unable to consider Cordis’s defenses of patent invalidity.
• Because Voda did not plead diversity jurisdiction, the court did not consider this basis for jurisdiction on appeal.
  

Dissent:

• The only question before the court is the authority of a United States court, having personal jurisdiction of the parties, to exercise its discretion to accept the amended complaint concerning Voda’s foreign patents. Judicial authority to decide questions of foreign law is not a matter of the federal/state relationship codified at § 1367, but supplemental jurisdiction analysis does provide a helpful analogy to the Voda/Cordis situation because the Gibbs considerations of judicial economy, convenience, and fairness to the parties are relevant to considerations of the exercise of judicial discretion. In this case, Gibbs factors support, rather than negate, district court’s exercise of discretion. United States courts have always had the authority to decide questions that require application of foreign law. Courts have done so successfully on a range legal areas, including patent law. Majority’s ruling essentially eliminates discretion afforded under § 1367 in foreign patent cases.
  

Click here to read more.

Government Contractor who Chose Infringing Method for Specifications of Government Contract Still Immune under 28 U.S.C. §1498

Case: Sevenson Environmental Services, Inc. v. Shaw Environmental, Inc. (02/21/07 - No. 06-1391, 06-1408)

The One Sentence Summary: Where specifications in a government contract required infringement (even though the defendant contractor drafted the specification), suit was barred by government contractor immunity, and the only possible relief was to sue the government (not the contractor) in the U.S. Court of Federal Claims.

What They Were Fighting About: Sevenson brought a patent infringement suit against Shaw, based on Shaw’s use of a phosphoric acid method in hazardous waste remediation at a site owned by the United States and managed by the U. S. Army Corps of Engineers. Shaw moved for summary judgment, asserting that 28 U.S.C. §1498 granted it immunity from suit. The district court granted summary judgment.

Federal Circuit Holdings:

• Because Shaw is a contractor, under §1498, its use of the patented method qualifies as use for the United States, giving it immunity from suit except by action against the United States in the United States Court of Federal Claims, provided two criteria are met. First, use must be for the government. Second, use must be with the authorization and consent of the government.
• “For the government” prong requires only that the use of patented methods occur pursuant to a contract with the government and for the benefit of the government, even if it is not a primary purpose of the contract. Shaw’s use of the allegedly patented method was in its capacity as a government contractor and pursuant to its contract for the benefit of the government.
• The Federal Circuit held it irrelevant that Shaw selected the infringing method, or that it could have used non-infringing methods, and that it reaped the benefits of choosing that particular method over others. The question for this prong is not whether the choice of an infringing method was made for the government, but whether that method was practiced for the government.
• Where a government contract contains an explicit authorization and consent clause, the scope of the governments “authorization and consent” to liability hinges on the language of that clause. Here, Shaw’s contracts expressly granted authorization and consent for use of patented methods where such use “necessarily results from compliance by the Contractor . . . with specifications or written provisions forming part of this contract.” Because “Work Plans” required by the contract constitute “specifications,” and because one such Work Plan, drafted by Shaw and approved by the government’s Contracting Officer, included a provision requiring use of the phosphoric acid method, any infringement necessarily resulted from Shaw’s compliance with the contract. Once the Work Plan was approved, Shaw would have violated its contractual obligations had it not used the phosphoric acid method. As such, this prong of §1498 was also met.
  
  

Click here to read more.

Starbuck's Dilution Claim Still Alive

Case: Starbucks Corp. v. Wolfe's Borough Coffee, Inc. (2d. Cir. 02/15/07 - No. 06-0435)

Second Circuit Holdings:

Starbucks sought injunctive relief on the issue of dilution; therefore application of the amended statute posed no retroactivity problems. The injunction would protect against future, continuing harm and should be determined at the time of hearing.

The district court judgment should be vacated and remanded for further proceedings. The district court should review the case consistent with the amended statute.

The Second District expressed no opinion on the merits of Starbuck’s remaining trademark and unfair competition claims.

Click here to read more.

Sixth Circuit Finds That Roger Miller’s Renewal Copyright Interests Were Properly Conveyed

Case: Roger Miller Music, Inc. v. Sony/ATV Publ’g, LLC, No. 05-6824/6880 (6th Cir. Feb. 13, 2007)

The One Sentence Summary: Defendant proves that it executed a valid contract conveying author’s renewal copyright interests.

What They Were Fighting About: On October 25, 1992, Roger Miller, a well-known country singer and writer, died. During his lifetime, Miller executed publishing agreements that conveyed the original copyrights of his songs to Tree Publishing (Sony’s predecessor). At issue was whether Miller properly conveyed the renewal copyright interests in his music. Specifically, in 1958, 1960 and 1962 Miller executed three publishing agreements that provided that he would sign a separate form for each renewal right he conveyed to Tree Publishing. Although no separate forms were ever signed, the parties entered into an agreement in 1969 that no such separate agreement was necessary for Miller to convey his renewal rights. The plaintiff (Miller’s estate) argued that the 1969 agreement did not encompass renewal rights and thus, it now had an ownership interest in Miller’s music and Sony was consequently infringing its copyrights. In turn, Sony argued that it owned the renewal copyrights pursuant to the 1969 agreement.

Federal Circuit Holdings:

• As a threshold issue, the Court held that the plaintiff’s claim for copyright ownership was timely. An ownership claim is barred three years from a “plain and express repudiation” of authorship. In the instant case, neither Miller’s estate nor Sony ever made a claim that it had exclusive ownership to the copyrights prior to the commencement of the action. Accordingly, the plaintiff’s ownership claim was not barred. In contrast, some of the plaintiff’s infringement claims were barred by the three-year statute of limitations for infringement claims because the plaintiff knew of potential infringements as early as 1995.
• The Court noted that the renewal term of a copyrighted work is distinct from the original copyright and can be therefore transferred independently of the original copyright. Furthermore, there is a strong presumption against the conveyance of renewal copyright interests simultaneous with the original copyright interest. Accordingly, a valid transfer of a renewal interest requires a clear and express grant. Nonetheless, if an author dies before the vesting of the renewal copyright (28 years after the creation of the original copyright), the party to whom the renewal copyright interest was conveyed loses the entitlement to that interest. Thus, an assignee of a renewal right assumes the risk that the right acquired may never vest in the assignor.
• The Court first addressed the validity of the 1969 agreement to assign Miller’s renewal rights without using the separate form originally contracted for. Given that the parties clearly intended to assign renewal rights the Court held that the contract was valid.
• The effect of finding the 1969 contract valid meant that Sony owned the renewal copyrights for songs authored in 1958-63. However, Miller died before the renewal rights for the songs he authored in 1964 vested. Accordingly, the contract alone did not convey the renewal rights to Sony. Whether Sony had an ownership interest in the 1964 songs was remanded to the district court.
  
  

Click here to read more.

Disney Declared Victorious In Copyright Infringement Action Over EPCOT

Case: Corwin v. Walt Disney Co., Nos. 04-16554 and 05-12869 (11th Cir. 11/02/2006)

The One Sentence Summary: The 11th Circuit affirmed summary judgment in favor of Walt Disney World Company ("Disney") finding that plaintiff Orrin Corwin ("Corwin") failed to raise a genuine issue of material fact as to either: (1) Disney's access to a painting by Mark Waters of a theme park concept for a "Miniature Worlds" containing cities, villages and landscapes representing nineteen nations from six continents, or (2) as to "striking similarity" between Waters' illustration of "Miniature Worlds" and Disney's EPCOT.

What They Were Fighting About: Corwin, the sole heir and personal representative of the Estate of Mark Waters, filed a copyright infringement action against Disney alleging that Waters, while living in Hawaii in the 1960's, painted a rendering of a concept developed by Robert Jaffray ("Jaffray") for an international theme park in miniature and that Disney copied the rendering of Jaffray's concept to create EPCOT. In support of his assertions regarding Disney's access to the Waters painting, Corwin offered the testimony of Waters' former wife, Jaffray's widow, and Jaffray's daughter. In addition, Corwin submitted correspondence between Jaffray and Disney representatives to show that Jaffray pitched the idea to Disney and shared plans of the "Miniature Worlds" concept including the Waters illustration with Disney representatives. He also offered the reports of four experts, each indicating that there was similarity between the Waters proposal for "Miniature Worlds" and EPCOT. Disney, in turn, produced evidence of the independent creation of EPCOT. Disney explained that the idea for EPCOT arose from a concept called International Street (a cluster of buildings, including restaurants and shops, designed to feature other countries and cultures) and further developed to include architectural pavilions following Disney's participation in the 1964 World's Fair, and that ultimately the concept merged with Walt Disney's idea for a "City of Tomorrow." Disney moved for summary judgment and to exclude portions of the four expert reports submitted by Corwin as well as certain of Corwin's evidence on Disney's access to the Waters painting. The district court granted the Daubert motion to exclude portions of the expert reports, excluded certain testimony relating to Disney's access to the Waters painting as hearsay, and granted summary judgment in favor of Disney. Corwin appealed.

Federal Circuit Holdings:

• The 11th Circuit reviewed the grant of summary judgment de novo and affirmed the district court's grant of summary judgment, finding there was no genuine issue of material fact as to any of the essential elements of a copyright infringement claim.
• To establish copyright infringement, Corwin had to prove his ownership of the copyright in the Waters painting and that Disney copied the work to create EPCOT. To demonstrate copying, Corwin had to show that Disney had access to the copyrighted material and that there was substantial similarity between the Waters illustration of the concept "Miniatures World" and EPCOT. Although the Court acknowledged that Corwin owned the copyright to the Waters painting, the Court explained that Corwin failed to establish Disney had access to the Waters illustration. The evidence Corwin submitted on this point consisted of inadmissible witness testimony. Waters' former wife had no direct personal knowledge of the painting or of the transaction between Waters and Jaffray relating to the "Miniatures World" concept. Jaffray's widow and Jaffray's daughter each admitted they did not attend the alleged meeting between Jaffray and Disney and could only speculate about what materials Jaffray might have taken with him to the alleged meeting. In addition, the correspondence between Jaffray and Disney representatives did not provide any indication that Disney ever had access to the painting. The 11th Circuit agreed with the district court that the evidence offered by Corwin was insufficient to raise a genuine issue of material fact as to access.
• In the 11th Circuit, even where a plaintiff cannot show the defendant had access to the work, a plaintiff may establish copying by demonstrating that the copyrighted work and the alleged infringing work are "strikingly similar." The Court explained that striking similarity exists "where proof of similarity in appearance is so striking that the possibilities of independent creation, coincidence and prior common source are, as a practical matter, precluded." The four expert reports submitted by Corwin were of no help to him on this point. The Court agreed with the lower court's determination that the bulk of the reports should be excluded from evidence because they focused the analysis on the uncopyrightable ideas (and common elements) behind the Waters painting, explaining neither the originality of the Waters arrangement of elements or "how, precisely, the expressive effect of Water's arrangement is duplicated by either EPCOT or the rendering thereof." What remained of the reports failed to support any assertion of striking similarity.
• Moreover, the Court rejected Corwin's claim that a 1981 rendering of EPCOT showed that Disney copied Waters' illustration of Jaffray's concept. Corwin was unable to refute the "significant differences" between the various elements depicted in Waters' painting of Jaffray's "Miniature Worlds" concept and the elements embodied in the 1981 rendering of EPCOT.
• The Court was convinced, as was the district court, by Disney's presentation of "overwhelming, uncontroverted evidence" of independent creation. In addition to the testimony of a high-level executive at Disney Imagineering (the creative development, design, and research and development arm of The Walt Disney Company and its affiliates), the record contained many drawings and correspondence relating to Disney's independent development of the concepts and designs that led to the creation of EPCOT.
• Having ruled against Corwin on nearly every substantive issue, the only item returned to the district court on remand was the award of costs to Disney, which impermissibly taxed as recoverable costs various items including witness and travel expenses.
  

Click here to read more.

The Sixth Circuit Clarifies Exceptions to the First Sale Doctrine in Both Trademark and Copyright.

Case: Brilliance Audio, Inc. v. Haights Cross Communications, Inc., No. 05-1209 (6th Cir. 1/26/2007)

The One Sentence Summary:
The Sixth Circuit holds that in trademark law, the first sale doctrine does not apply where the alleged infringer provides insufficient notice of repackaging or where the alleged infringer sells goods materially different from those of the trademark holder; in copyright law, the record rental exception to the first sale doctrine applies only to musical works, not to audiobooks.

What They Were Fighting About:
Brilliance Audio, Inc. (“Brilliance”) sued Haights Cross Communications, Inc. (“Haights”) for trademark and copyright infringement. Brilliance produces and sells audiobooks through exclusive agreements with publishers and authors. Brilliance produces two versions of its audiobooks, a retail version and a library version, which differ in packaging and marketing. It has copyrights in these works and protectable rights in the federally-registered BRILLIANCE trademark. Haights is a direct competitor of Brilliance. Brilliance claims that Haights uses the Brilliance mark on the repackaged products, constituting trademark infringement. Brilliance also alleges that Haights is repackaging and relabeling Brilliance’s retail editions as library editions, which it then distributes for commercial advantage, constituting copyright infringement.

Sixth Circuit Holdings:

• In trademark law, the Sixth Circuit joins other circuits in holding that the “first sale doctrine,” a defense to claims of trademark infringement, has two exceptions.
• The first exception occurs where the notice that the item has been repackaged is inadequate. Here, Brilliance alleges that Haights is repackaging Brilliance’s retail editions as library editions, and that the notice of repackaging is inadequate because it misrepresents that Haights has a relationship with Brilliance and that Haights has obtained permission for its activities, possibly resulting in consumer confusion.
• The second exception occurs where an alleged infringer sells trademarked goods that are materially different than those sold by the trademark owner. Here, Brilliance alleges that the retail edition is different than the library edition, and that by packaging the retail edition as a library edition, Haights is altering the product in a manner likely to cause consumer confusion.
• In copyright law, the court found that the record rental exception to copyright’s first sale doctrine, codified at 17 U.S.C. § 109(b)(1)(A), applies only to sound recordings of musical works, and not to sound records of literary works, such as audiobooks. The court found the plain language of 109(b)(1)(A) ambiguous, and based its holding on a combination of the legislative history, the context in which the statute was passed, and the policy rationales behind trademark and copyright law.
  
  

Click here to read more.

Seventh Circuit Denies Trademark Protection to a Registered Descriptive Mark Which Has Not Acquired Secondary Meaning

Case: Custom Vehicles, Inc. v. Forest River, Inc., No. 06-2009 (7th Cir. 02/07/2007)

The One Sentence Summary: Although the plaintiff was the first to use the mark at issue, its limited efforts did not generate secondary meaning and did not constitute use of the mark within the “ordinary course of trade.”

What They Were Fighting About: Plaintiff, Custom Vehicles, Inc., sued Forest River, Inc. for trademark infringement. At issue was use of the mark “Work-N-Play.” In 2000, the plaintiff registered the mark with the PTO as an “intent to use” mark. By 2004, the plaintiff sold a total of eight (8) vehicles using the mark. In 2002, the defendant started using the same mark on its product. In contrast, it was successful, with annual sales exceeding $10 Million.

Federal Circuit Holdings:

• The Court found that “Work-N-Play” was a descriptive mark and as such, could not receive trademark protection without acquiring secondary meaning (i.e., the mark “has come to denote a single brand, not the entire product, so that its use by other sellers of the product would confuse consumers about the source of what they were buying.”) Given that the plaintiff made negligible sales of an unpopular brand the Court held that it had not acquired the requisite secondary meaning and thus, was not protected.
• Regardless of whether it had acquired secondary meaning, the plaintiff argued that registration with the PTO gave it a presumption of validity. The Court took issue, holding that bare registration was not enough to earn the presumption. Instead, within six months of registration the mark had to be used in commerce, defined as “the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in the mark.” 15 U.S.C. § 1127. In the instant case, the Court held that the sale of one vehicle in the six month window did not rise to the level of use within the “ordinary course of trade.” Rather, the Court held that “use,” within the meaning of 15 U.S.C. § 1127, would have to “be enough to seize the attention of the relevant market” and thus, place the market on notice that the registered mark was taken.
  
  

Click here to read more.

Limitations Argued to Distinguish Prior Art Carried into Claim Construction for Wood Polymer Products

Case: Andersen Corp. v. Fiber Composites, LLC (01/26/07 - No. 05-1434, 06-1009)

The One Sentence Summary: The Federal Circuit upheld in part, and reversed in part, the district court's claim construction, relying on the prosecution history and prior applications to find that limitations relied on to distinguish prior art should carry over to the claims.

What They Were Fighting About: Anderson alleged Fiber Composite's polymer-wood products infringed six of its patents, one group of which used the claim term "composite composition," and the second group of which used the term "composite structural member." Fiber contended the first group was limited to compositions in pellet or linear extrudate form, and the second to members extruded from composites previously extruded into pellet or linear extrudate form; Anderson contended they were not so limited.

Federal Circuit Holdings:

• First, the Federal Circuit upheld the district court's finding that "composite composition" is limited to a mixture in pellet or linear extrudite form, based on the specifications, even though the claims themselves did not include the limitation. Among other things, the court found the patents used the term restrictively, stating the step of extruding composite in pellet or linear extrudie is "require[d]." Thus, the limitation described the overall invention, not just a preferred embodiment.
• The prosecution history also supported this construction, because the patents at issue were each continuations based on an single application with claim language similar to that of the patents that finally issued. In that application, prior art had repeatedly been distinguished by referring to the pellet form, or pelletication process, as an essential part of the invention. This evidence also served to counter an argument by Anderson that the district court's construction was contrary to the doctrine of claim differentiation.
• As to the construction of "composite structural member," used with the second patent group, Fiber had argued that it should be interpreted like the term "composite composition" in the first patent group, as requiring a product first formed into a solid pellet or linear extrudite. The district court had rejected this, reasoning the claims were limited to a product, not a particular process, and so the limitation was inappropriate.
• On this issue, the Federal Circuit again reviewed the specifications and prosecution history to determine whether this second group of patents should be construed as being limited to a particular process.
• Like the first patent group, this group also referred to pelletization as part of the process for making the product from which the claimed composite structural members were constructed. The Federal Circuit further found that the specification attributed the claimed physical properties of these structural members to the process used to make them, and that process included pelletization. Therefore, contrary to the district court's holding, the Federal Circuit found it appropriate to read a limitation into these patents requiring use of the pelletization process.
• The Federal Court acknowledged that prior cases had cautioned against reading limitations into claims based solely on specifications, absent a clear disclaimer of claim scope. However, here the claims were properly limited given the patents' prosecution history. For example, responding to an initial rejection, the applicants had highlighted characteristics achieved through the pelletization process in order to distinguish prior art. Although Anderson argued that was not the only ground offered to distinguish the prior art, the Federal Circuit reasoned that each proffered ground could be subsequently used to construe the claim.
• Therefore, based on language in the original applications, the prosecution history, and the specifications,the Federal Circuit reversed the summary judgment finding of infringement as to these patents, accepting Fiber's more narrow claim construction.
• The district court had also rejected Anderson's theory that Fiber's use of rejected railing parts, ground up and reused, was an infringement of the first patent group. It held that those products did not satisfy the claim limitation requiring pellets or linear extrudite. The Federal Circuit affirmed, rejecting Anderson's argument that the reprocessed materials were "linear" merely because they had length. It concluded this definition was overbroad, because every physical object has length.
• Finally, at trial, the jury had rejected arguments the second patent group was invalid for failure to comply with written description and enablement requirements, a finding the district court refused to reverse on a JMOL motion. The Federal Circuit agreed, rejecting an argument based on Anderson's failure to specify an upper limit for tensile strength. It reasoned one of ordinary skill in the art would recognize the upper limit must lie between that for wood and that for the polymer used in the composition, and the jury could credit expert testimony to that effect.
  
  

Click here to read more.

District Court's Claim Construction Revised Based on Prosecution History of Reissue Patent's Relatives

Case: MBO Labs., Inc. v. Becton, Dickinson & Co. (01/24/07 - No. 06-1062)

The One Sentence Summary: On plaintiff MBO's appeal of a finding of noninfringement on summary judgment, the Federal Circuit reversed the district court's claim construction in part, and remanded for further proceedings.

What They Were Fighting About: MBO disputed the district court's claim construction of a broadening reissue patent related to a device to prevent accidental needlesticks from hypodermic syringes, while conceding that under that construction there was no infringement. While review was limited to claim construction, the Federal Circuit examined the history of the broadening reissue patent, and the prosecution history of its relatives.

Federal Circuit Holdings:

• The Federal Circuit reviewed the claim construction for several terms.
• Although MBO claimed infringement of only a broadening reissue patent, the entire prosecution history of that patent's relatives was found relevant to that analysis.
• For example, in construing the term "immediately," which literally appeared in the preamble of some but not all claims, both the district court and Federal Circuit held the limitation applied to both claims where it was in the preamble, and to some claims where it was not literally stated in the preamble.
• The court reached this holding based on language in the specifications, and based on the absence of language setting any other time for the needle being rendered safe in the reissue application. The courts also reviewed the prosecution history of its relatives, reasoning that prosecution arguments distinguishing prior art are useful in determining whether the patentee intended to surrender territory, because they show in the inventor's own words what the invention is not.
• However, the Federal Circuit refused to extend the same limitation to two reissue claims which did not use "immediately" in either the preamble or the actual claim, finding as to them no textual reference in the claim supporting the limitation.
• The district court had also applied the 'recapture rule' to preclude MBO from claiming embodiments where the needle guard moved forward (which it had sought through its broadening reissue), and limited it to those where the needle moved backward into a guard. The Federal Circuit held this error, given that the posture of the case required that the focus be on claim construction, not validity. The district court's interpretation applied rules of validity construction, but whether the broader claims were invalid under the recapture rule is a separate issue, apart from claim construction.
• Finally, the Federal Circuit took issue with two other elements of the district court's claim construction, based on standard principles.
  
  

Click here to read more.

A Walker Process Claim Alleging Threats of Patent Infringement Litigation May Be Based Upon Enforcement Activity Against the Plaintiff's Customers

Case: Hydril Co. LP v. Grant Prideco LP, No. 2006-1188 (Fed. Cir. January 25, 2007)

The One Sentence Summary: The Federal Circuit reversed the district court's dismissal of the antitrust and patent infringement claims and vacated the district court's dismissal of the state law contract claim, holding that: (1) the antitrust claim based on patent enforcement activity directed against the plaintiff's customers sufficiently alleged a Walker Process claim, and (2) the parties did not waive the right to sue for patent infringement in their merger agreement.

What They Were Fighting About: Hydril Company LP and Hydril U.K. Ltd. ("Hydril"), manufacturer of threaded connections for drill pipes, filed an action against Grant Prideco LP and Grant Prideco, Inc. ("Grant Prideco"), manufacturer and seller of drill pipes and connections, alleging Grant Prideco: (1) monopolized two product markets by enforcing a patent that was fraudulently obtained from the USPTO, (2) breached a technology licensing agreement that stemmed from a merger agreement between the parties, and (3) infringed a patent owned by Hydril because the patent license terminated upon Grant Prideco's breach. The district court dismissed the complaint for failure to state a claim on the antitrust and patent infringement claims and declined to exercise supplemental jurisdiction over the state law breach of contract claim.

Federal Circuit Holdings:

The Federal Circuit reversed the dismissal of the antitrust claim, holding that although it was unclear whether the district court dismissed the claim because the complaint failed to allege sufficient enforcement activity by Grant Prideco or because the complaint failed to claim that Grant Prideco threatened such enforcement activity against Hydril rather than against Hydril's customers, neither ground justified the dismissal of the complaint. It further stated that a Walker Process antitrust claim may be based on patent enforcement activity directed against the plaintiff's customers. The Federal Circuit declined to consider additional grounds for affirming the district court's dismissal, stating they would be more appropriately dealt with in the district court.

To determine the validity of the patent infringement claim, the Federal Circuit interpreted the meaning and application of a section of a merger agreement where each party waived rights and remedies relating to the agreement. The Federal Circuit interpreted the limitation of rights and remedies under the agreement to end when the patent licensing agreement was terminated due to breach, and stated that Grant Prideco could no longer rely on the prior license to use Hydril's patented technology. The Federal Circuit therefore reversed the dismissal by the district court, holding that the patent infringement claim was not precluded by the terms of the merger agreement.

Because it reversed the dismissal of the federal antitrust and patent infringement claims, the Federal Circuit vacated the district court's dismissal of the state law breach of contract claim to allow the district court to reinstate the claim in light of this decision.

Click here to read more.

Ninth Circuit Affirms Constitutionality of the Copyright Term Extension Act and the Copyright Renewal Act

Case: Kahle v. Gonzales, No. 04-17434 (9th Cir. May 14, 2007) (amended and en banc denied)

The One Sentence Summary: A First Amendment challenge brought by the builders of an "Internet library" was unsuccessful because the Ninth Circuit held the Copyright Term Extension Act ("CTEA") and the Copyright Renewal Act of 1992 ("CRA") did not "alter a traditional contour of copyright protection" or violate the Copyright Clause's "limited Times" prescription.

What They Were Fighting About: Plaintiffs appealed the district court's dismissal of their complaint and asserted a First Amendment challenge to the CTEA and the CRA. First, the plaintiffs alleged that the elimination of copyright renewal requirements under the CTEA and CRA changed the "opt-in" copyright system to an "opt-out" system, which altered the "traditional contours of copyright protection" and therefore required First Amendment review under Eldred v. Ashcroft, 537 U.S. 186 (2003). Second, the plaintiffs argued that the current copyright term was "essentially perpetual" and therefore violated the Copyright Clause's "limited Times" prescription. In Eldred v. Ashcroft, however, the U.S. Supreme Court addressed First Amendment arguments similar to those brought by plaintiffs and found that extending existing copyrights was constitutionally permissible.

Ninth Circuit Holdings

• While the plaintiffs provided policy reasons for their arguments and claimed that their specific claims were either not answered or were only answered in dicta in Eldred, the Ninth Circuit held that plaintiffs did not provide a legal argument explaining why the Court should "ignore the clear holding of Eldred."
• Even though the CTEA and the CRA eliminated renewal requirements and extended the copyright term for works created between 1964 and 1977, the Ninth Circuit held that Eldred's approval of efforts achieving parity between existing copyrights and those for future works refuted plaintiff's claim that the creation of an "opt-out" system should trigger First Amendment scrutiny.
• The meaning of the phrase "limited Times" is construed pursuant to a balancing test, i.e., whether the encouragement provided to authors by longer copyright terms outweighs the benefit provided to the public by shorter terms. While the weighing is left to Congress (subject to rationality review), the Supreme Court in Eldred already upheld the constitutionality of the current copyright term so plaintiffs' claim was properly dismissed.
  

Click here to read more.

State’s Participation in PTO Proceedings Waives Eleventh Amendment Immunity

Case: Vas-Cath, Inc. v. Curators of the Univ. of Missouri, No. 06-1100 (Fed. Cir. January 23, 2007)

The One Sentence Summary: Where University of Missouri requested the Patent Trade Office (“PTO”) to conduct litigation-type activity and obtained a favorable agency ruling for which Federal statute authorizes judicial review, it effectively waived all Eleventh Amendment immunity from suit in Federal court for the remainder of the proceedings.


What They Were Fighting About: The University of Missouri had brought patent interference proceedings in the PTO against Vas-Cath because Vas-Cath had been issued a patent despite the fact that the University had already filed an application on the same patent. After a six-year interference proceeding, during which both sides produced records and witnesses and filed numerous motions and briefs, the PTO awarded priority to the University. When Vas-Cath appealed the PTO ruling to the United States District Court, as authorized by 35 U.S.C. § 146, the University asserted Eleventh Amendment immunity from suit.

Federal Circuit Holdings:

• The interference contest in the PTO was conducted at the University’s request and with its full participation. Thus, this situation is unlike circumstances in which the State is compelled to participate in Federal administrative proceedings. Because the principals of federalism are not designed for tactical advantage, principals of fairness and consistency prohibit the University from selectively asserting Eleventh Amendment immunity.
• University’s argument that the Section 146 proceeding was not a mere continuation of the PTO proceeding because it allowed for live testimony and witnesses in the courtroom is negated by University’s full participation in the PTO proceeding. The University had allowed its witnesses to testify in the proceeding without raising any Eleventh Amendment objections.
  
  

Click here to read more.

Standing Requires Full Ownership or Cooperation of Joint Inventors

Case: Israel Bio-Engineering Project v. Amgen, Inc., No. 06-1218 (Fed Cir. January 29, 2007)

The One Sentence Summary: A plaintiff must demonstrate full ownership of a patent, or obtain co-inventor’s cooperation, to satisfy the standing requirements to sue for alleged patent infringement.

What They Were Fighting About: Plaintiff Israel Bio-Engineering Project (“IBEP”) brought suit against several pharmaceutical companies claiming patent infringement. Yeda Research and Development Company, Ltd. (“Yeda”) successfully intervened in the suit and brought summary judgment motions questioning the standing of IBEP to bring the suit, as Yeda claimed IBEP did not have full ownership in the patent. Yeda and IBEP had entered into numerous research agreements in the early 1980s. Although these agreements allowed for the assignment of patent rights to IBEP, the research period was a defined time period, ending in December 1987. The patent at issue in this case, the ‘701 patent, included two claims involving inventions arising out of research done after December 1987. IBEP argued that the contracts provided that any inventions or patents “resulting from the R&D Programs” would be assigned to IBEP. IBEP’s claimed ownership rights in the result of any research continuing after December 1987 that was associated with research done pre-1987.

Federal Circuit Holdings:

• In its decision, the Federal Circuit was guided by the fundamental principle that an invention belongs to the inventor, and where multiple inventors appear on a patent, each presumptively owns a pro rata, undivided interest in the patent. Moreover, one co-owner can limit another’s right to pursue legal actionto enforce patent rights merely by refusing to join the suit. The court then reviewed the relevant contracts, extrinsic evidence, and employment relationships to determine ownership.
• Following Israeli law, it examined not only the language of the contracts between Yeda and IBEP, but also all extrinsic evidence to determine the parties’ intentions. It concluded that the parties intended to put time constraints on the R&D programs affected by these agreements, and had agreed to a December 1987 cut-off -- any products of research done after this date were no longer governed by their agreements.
• The court then found that at the very least, Yeda owns a pro rata undivided ownership interest in the whole ‘701 patent through the assignment by one of the inventors. As a result, Yeda must voluntarily join in the suit with IBEP to satisfy the standing requirements to sue for patent infringement.
• Given that the record further showed that Yeda wanted nothing to do with this litigation, the Federal Circuit concluded that IBEP lacked standing to proceed on its own, and affirmed the grant of summary judgment for defendant.
  
  

Click here to read more.