Monday, September 27, 2010

You can't infringe a surrendered patent.


By way of general background, the Patent Office may reissue a patent if there was some error in the patent, or the inventor didn't claim all she was entitled to claim. See 35 U.S.C. § 251. See also MPEP 1401 et seq. The deal is that the inventor must "surrender" the issued patent to the Patent Office. In exchange, assuming the reissue application meets certain requirements, the Patent Office will reissue the patent with the error corrected.

Voter Verified has asserted such a patent, relating to electronic voting systems. U.S. Patent No. 6,769,613, entitled "Auto-verifying voting system and voting method" issued on August 3, 2004. On Valentine's day the following year, one of the co-inventors filed a reissue application. A few years later, examination ended on that reissue application and Reissue Patent 40,449 issued. Per the requirements of 35 U.S.C. § 251, the '613 was "surrendered" to the Patent Office so it could be reissued as the '449 patent on August 5, 2008. About a year later, Voter Verified sued Diebold and Premier Election Solutions for alleged infringement of both the '613 Patent and the '449 Reissue Patent.

Defendants sought, and were granted, summary judgment that the '613 Patent could not be infringed. It had been surrendered to the Patent Office, and thus was no longer capable of being infringed.
Pursuant to 35 U.S.C. § 251, when a patent is “deemed wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent . . . .” Once a reissue patent has been granted, “the original patent cannot be infringed . . . for the original patent is surrendered.” Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 827 (Fed. Cir. 1984). Notwithstanding the surrender of the original patent to the PTO, 35 U.S.C. § 252 provides that “in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending or abate any cause of action then existing . . . .” 35 U.S.C. § 252 (emphasis added). In sum, the original patent must be surrendered to the PTO in order for the reissue patent to be granted, rendering the original patent unenforceable. Despite this surrender, a patent holder may still enforce a claim of the reissued patent against infringing activity that occurred before the reissue date if the asserted reissued claim is substantially identical to a claim in the original patent. Bloom Eng’g Co., Inc. v. N. Am. Mfg., 129 F.3d 1247, 1250 (Fed. Cir. 1997). On the other hand, claims of the reissued patent that are not substantially identical to a claim in the original patent cannot be asserted against infringing activity that occurred before the date of the reissue. Id.
As such, the '613 Patent is no longer enforceable. Any claims of the '449 reissue patent, that are substantially identical to the claims of the original patent, are enforceable for infringing activity that happened before the '449 reissue date.

Prior Art

The parties also disputed whether or not certain articles published in 1986 constituted prior art. Apparently, prior to the priority date of the patent, the articles were available on a website. The website included a search tool which could have been used to locate the three articles. Plaintiff argued this wasn't proper indexing of the articles to make them prior art. Defendant countered that it was.

The Court, after noting controlling Federal Circuit law, explained that indexing wasn't dispositive, but the following factors should be considered:
(1) the length of time reference was displayed; (2) the expertise of the intended audience; (3) whether there is a reasonable expectation that the displayed information will not be copied; and (4) the ease with which the material could be copied.
Because someone could have used the website's search tool to find these articles, the Court held that they were prior art.

Indirect Infringement

Direct infringement is when a single party does every step or element of a claimed method or apparatus. But if 2 or more actors must do something to infringe a claim, indirect infringement principles apply. So, where a party participates in infringing a claim, or encourages someone else to infringe a claim, but does not itself perform every limitation of the claim, that party may be liable for indirect infringement. The plaintiff in such a situation must prove that there is direct infringement (i.e. someone does perform all of the limitations of the claim). In other words, you can't have indirect infringement if there is no direct infringement.

An exception to this rule is where 2 or more parties combine to infringe a claim, and 1 of those parties acts as the mastermind -- exercising direction or control over the other actors in order to infringe the claim. That mastermind is vicariously liable for the acts of infringement.

This is an important concept to remember when drafting claims. Claims should be drafted to be infringed, and you want to make sure the entity infringing those claims is a worthwhile entity to pursue in litigation. Otherwise, the issued patent might not be as valuable as it could be.

The claims in the '449 reissue patent relate to electronic voting method and systems. Some of the method claims require the following steps:
  • voting by a voter using a computer voting station, whereby the computer voting station temporarily stores the voter's votes
  • printing the voter's votes;
  • comparison by the voter of the printed votes
  • deciding, by the voter, whether or not the printed ballot is acceptable; and
  • submitting the acceptable printed ballot
As you can see, a computer system does some things (temporarily stores the votes, prints a ballot, submits a ballot). But the voter has to do some things also (vote, compare the ballot, and decide if the ballot is acceptable. So, who could directly infringe this claim? The voter has to do something. And the computer system (such as the defendants' accused systems) has to do something. Because the Defendants don't exercise sufficient control or direction over the users, the accused devices don't infringe the subject claims.

Means-plus-function

One of the claims at issue includes the limitation "means for tabulating the acceptable votes." The Court held that this limitation is a means-plus-function limitation, which means that first the function must be determined, and then the specification must be examined to see what adequate structure is disclosed for performing that function. For computer inventions, if the structure disclosed is a general purpose computer, the specification must also disclose an algorithm for performing the function. This is true regardless of the simplicity of the algorithm. Judge Fawsett explained the law:
In cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, the Federal Circuit consistently requires that the structure disclosed in the specification be more specific “than simply a general purpose computer or microprocessor.” Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The point of this requirement is to limit the scope of the claim to the structure and its equivalents and thus avoid purely functional claiming. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) (“If the specification is not clear as to the structure that the patentee intends to correspond to the claimed function, then the patentee . . . is attempting to claim a [function] unbounded by any reference to structure in the specification.”). Because “general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to the corresponding structure that performs the function,” as required by § 112 ¶ 2. Aristocrat, 521 F.3d at 1333. Therefore, in a means-plus-function claim where the disclosed structure is a general purpose computer programmed to carry out a particular function, the claim is invalid as indefinite if the specification fails to disclose an algorithm for performing the claimed function. Net Moneyin, 545 F.3d at 1367 (citing Aristocrat, 512 F.3d at 1334); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999).
Because the specification didn't disclose a sufficient algorithm, the claim was invalid as indefinite.


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