Wednesday, September 29, 2010

Parties failed to overcome "heavy presumption" that claim term carries its ordinary and customary meaning.

Judge Antoon resolved the parties' claim construction dispute of certain claim terms. First, "calcium carbonate in aqueous suspensions or dispersions of calcium carbonate" was construed as "insoluble particles of calcium carbonate distributed in water or calcium carbonate in a system with two or more distinct phases consisting of finely divided particles dispersed throughout a bulk substance." Second, "molar ratio" is construed as "a ration comparing a number of urea molecules to a number of hydrochloric acid molecules."

EMS seeks a declaratory judgment that it didn't infringe U.S. Patent 5,672,279. Generally, the' 279 Patent involves the removal of unwanted calcium carbonate using urea hydrochloride.

The original claims recited the removal of "undesirable solids." In response to a rejection during examination, the applicant changed "undesirable solids" to include the removal of "calcium carbonate in aqueous suspension or dispersions of calcium carbonate." The Court noted that this amendment did not change the ordinary and customary meaning of "calcium carbonate in aqueous suspensions or dispersions of calcium carbonate" (although the patentee disclaimed the subject matter that lied between those 2 terms).

PSL sought a claim construction that covered a preferred embodiment from the specification (and also arguably covers EMS's allegedly infringing products.) The Court found that that construction altered the ordinary and customary meaning of the claim term. EMS argued that prosecution history estoppel should limit the scope of the '279 claims. The Court did not agree with either party and adopted the construction above. The jury will decide whether EMS's products fall within the scope of the claim.

Environmental Manufacturing Solutions, LLC v. Peach State Labs, Inc., Case No. 6:09-CV-395 (M.D. Fla. Sept. 21, 2010) (J. Antoon)

Monday, September 27, 2010

Industry standards may be used in addressing infringement

Can a court rely on an industry standard in analyzing patent infringement? Yes.
We hold that a district court may rely on an industry standard in analyzing infringement. If a district court construes the claims and finds that the reach of the claims includes any device that practices a standard, then this can be sufficient for a finding of infringement. We agree that claims should be compared to the accused product to determine infringement. However, if an ac-cused product operates in accordance with a standard, then comparing the claims to that standard is the same as comparing the claims to the accused product. We ac-cepted this approach in Dynacore where the court held a claim not infringed by comparing it to an industry stan-dard rather than an accused product. An accused in-fringer is free to either prove that the claims do not cover all implementations of the standard or to prove that it does not practice the standard.
* * *
We acknowledge, however, that in many instances, an industry standard does not provide the level of specificity required to establish that practicing that standard would always result in infringement. Or, as with the ’952 pat-ent, the relevant section of the standard is optional, and standards compliance alone would not establish that the accused infringer chooses to implement the optional section. In these instances, it is not sufficient for the patent owner to establish infringement by arguing that the product admittedly practices the standard, therefore it infringes. In these cases, the patent owner must com-pare the claims to the accused products or, if appropriate, prove that the accused products implement any relevant optional sections of the standard. This should alleviate any concern about the use of standard compliance in assessing patent infringement. Only in the situation where a patent covers every possible implementation of a standard will it be enough to prove infringement by showing standard compliance.

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.


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.

Wednesday, September 15, 2010

Possession may be 9/10 of the law, but that last 1/10th is a doozy. The power of license agreements. What are you getting when you "buy" software?

Usually, you're getting a license to use the software -- not an ownership interest in the copy of the software you just purchased. Think back to the days of cassette tapes with music on them. When you bought a tape, you had this physical thing you could do certain things with. If you wanted, you could resell it to someone else (i.e. at a garage sale). No worries. Publishers of content on the tape had less worry of you creating tons of unauthorized copies of those tapes because making copies of tapes was slow, hard, and not exact. Then we move into the digital age. CDs are easy to copy. Digital data is easy to copy. Those publishing digital content need to control their distribution channels.

First Sale Doctrine

Copyright protects works of authorship fixed in a tangible medium of expression. One affirmative defense to a charge of copyright infringement is the first sale doctrine. The first sale doctrine provides that once a copyright owner sells a particular copy of her work, the purchaser may sell or otherwise dispose of that copy of the work. See 17 U.S.C. 109(a).

Timothy Vernor bought a number of used copies of Autodesk's AutoCAD Release 14 software. He bought these copies from others who had directly purchased AutoCAD from Autodesk. Vernor then sold these copies on eBay. Sounds like a typical first sale, right? Wrong.

The entities that "bought" AutoCAD from Autodesk in the first place hadn't "bought"it at all. They had licensed it. And their license precluded them from transferring what they had bought to someone else without Audodesk's permission.

If you don't own it, you can't assert the first sale doctrine as a defense to copyright infringement:
The first sale doctrine does not apply to a person who possesses a copy of the copyrighted work without owning it, such as a licensee.
(citing 17 U.S.C. 109(d); Quality King Distribs. , Inc. v. L'Anza Research Int'l Inc., 523 U.S. 135, 146-47 (1998)).

Essential Step Defense

The Ninth Circuit also addressed the essential step defense. The essential step defense applies to software copyrights and provides that an "owner of a copy" of a copyrighted piece of software does not commit copyright infringement when the software is copied from a storage device (like a disk) into the memory of a computer. This copying step is an "essential step in the utilization of the computer program" and is not subject to copyright infringement liability. (Otherwise, starting a copyrighted computer program, which automatically copies portions of the program from disk into memory, would subject the user to infringement liability.) See 17 U.S.C. 117(a)(1).

In the Ninth Circuit, the essential step defense does not apply where the copyright owner grants a user a license and significantly restricts the user's ability to transfer the software. In order to benefit from the essential step defense, the defendant must be an owner of the copy (just like under the first sale doctrine above). So, the court must determine if the software user is a licensee or an owner of a copy. The Ninth Circuit prescribes three considerations for making this determination:
First, we consider whether the copyright owner specifies that a user is granted a license. Second, we consider whether the copyright owner significantly restricts the user’s ability to transfer the software. Finally, we consider whether the copyright owner imposes notable use restrictions.

Vernor's sales of AutoCAD

The Court then applied its tests to Vernor's activities. Autodesk distributed AutoCAD to its customers pursuant to a software license agreement. This agreement restricted what the customers could do with the software, and expressly stated that Autodesk retained title to the software. Recipients of the software could not transfer it without Autodesk's permission, and certain use restrictions were imposed.

Since the people who originally "bought" AutoCAD from Autodesk didn't "own" it, they couldn't properly sell it to Vernor. And Vernor couldn't use the first sale doctrine or essential step defense to protect himself. So the Court reversed the trial court's grant of summary judgment in Vernor's favor. All is not lost for Vernor, though, as the Court has permitted him to raise the copyright misuse defense (a topic for another post) when the case returns to the trial court.

Policy Arguments

Both sides presented important policy arguments. Vernor argued that the Court's decision is contrary to the law's aversion to restraints on alienation of personal property and could force everyone buying copyrighted property to thoroughly analyze the chain of title for what they were buying to see if an original sale were ever made.

eBay (which filed an amicus brief) argued that a broad view of the first sale doctrine was needed to help create secondary markets for copyrighted works. The American Library Association was concerned that the Court's view would hamper non-profit libraries' abilities to lend software for non-commercial purposes and would hamper their ability to distribute out-of-print software.

Autodesk argued the copyright owner's policy position in favor of the decision as it allows for tiered pricing, increases software companies' sales, lowers everyone's prices and reduces piracy.

The Court essentially punted on these issues, and said Congress is welcome to modify the first sale doctrine and essential step defense if it wants.


The first sale doctrine and the essential step defense only apply to defendants who own authorized copies of the subject work. Software copyright owners who want to control downstream distribution need to: (1) specify that the user is granted a license; (2) significantly restrict the user's ability to transfer the software; and (3) impose notable use restrictions. And users of software (i.e. all of us) need to be careful what we do with leftover discs and software we find -- be careful trying to sell it, because you might not own what you think you own.

(Note that other circuits have not necessarily adopted this test. Vernor tried to convince the Court not to take this approach as it would conflict with the Federal Circuit and Second Circuit's positions on the essential step defense. The Court did not find this argument persuasive. I have not found any Eleventh Circuit decisions discussing the essential step defense.)

Monday, September 13, 2010

Allegations of false marking alone give a plaintiff standing?

False patent marking has become the new quick-hit area for patent infringement litigation. I have discussed these cases and issues previously. To briefly recap, Congress enacted the false marking statute (35 U.S.C. §295) to prevent people from deceiving the public into believing their goods were patented. Thus, if you mark your widget as "patented" or covered by U.S. Patent No. 1,234,567, and it isn't and you intended to deceive the public by marking it as such, then you shall be fined not more than $500 for each offense. The statue goes on to permit any person to bring an action to enforce this right. And to encourage each of us to do so, if we bring such a suit and win, we get half the fine.

These cases made the headlines when a patent attorney sued Solo Cup for falsely marking billions of cups. The potential fine there was in the trillions of dollars. (The total exposure was $10.8 trillion -- who wouldn't want half of that?) Solo Cup won that case on summary judgment -- there was no question that Solo Cup did not intend to deceive the public by marking its cups with expired patent numbers.

Most defendants present this argument, but it is not an argument you can win at the pleading stage. Whether or not you intended to deceive the public by marking a product with an expired patent number requires you to prove you didn't. You can't dismiss a plaintiff's properly pleaded case by saying "I didn't intend to deceive anyone."

This brings in another avenue of attack defendants have used -- challenging standing. Raymond Stauffer, a patent attorney, sued Brooks Brothers (and its corporate parent) for falsely marking some bow ties. The challenged bow ties contain an "Adjustolox" mechanism and are marked with U.S. Patent Nos. 2,083106 and 2,123,620.
U.S. Patent No. 2,083,106
U.S. Patent No. 2,123,620
Brooks Brothers argued that the plaintiff did not have standing to bring the claim because Stauffer's claim that Brooks Brothers' actions wrongfully quelled competition were too hypothetical to constitute an injury. The district court agreed because there had been no "injury-in-fact" to the United States. Thus, the district court dismissed the plaintiff's complaint. Stauffer appealed.


To establish standing:
a plaintiff must show (1) that he has suffered an “injury in fact,” an invasion of a legally protected interest that is “(a) concrete and particularized, and (b) actual or imminent, not conjectural or hypothetical,” (2) that there is “a causal connection between the injury and the conduct com-plained of,” and (3) that the injury is likely to be redressed by a favorable decision.
And because the false marking statute is a qui tam action, a plaintiff need not concern himself with his own injury -- he has been partially assigned the United States's injury claim:
In other words, even though a relator may suffer no injury himself, a qui tam provision operates as a statutory assignment of the United States’ rights, and “the assignee of a claim has standing to assert the injury in fact suffered by the as-signor.” Vermont Agency, 529 U.S. at 773. Thus, in order to have standing, Stauffer must allege that the United States has suffered an injury in fact causally connected to Brooks Brothers’ conduct that is likely to be redressed by the court.
The Court went on to discuss the two different types of injuries the U.S. could suffer -- proprietary and sovereign. Proprietary injury is the money the U.S. is entitled to (half of the $500 fine). Sovereign injury is the violation of a U.S. statute (i.e. the U.S. is injured if people do not respect its laws). The Federal Circuit said it did not need to state which of these injuries satisfied the injury-in-fact requirement. Stauffer properly pleaded his standing, and it was error for the district court to dismiss his complaint.

Reversed (and remanded to address the merits of the case, including Brooks Brothers's motion to dismiss on the grounds that Stauffer didn't properly plead the required intent to deceive).

Wednesday, September 1, 2010

Is Marty McFly prior art?

Is this prior art?

Marty went to the future (namely, 2015). Nike must have realized 2015 was coming up, so they got around to actually inventing this technology, and they want to protect it. On May 2, 2008, Nike filed a patent application for an "Automatic Lacing System."  And the design looks familiar.

Examination of this application has not yet begun.  The first proposed claim reads:
An automatic lacing system for an article of footwear, comprising:
a sole including a cavity;
a motor disposed in the cavity; the motor including a driveshaft; the driveshaft including at least one gear;
at least one belt engaged with the at least one gear at an intermediate portion of the belt;
a yoke member connected to the at least one belt at an attachment portion of the at least one belt;
a plurality of straps attached to the yoke member, the plurality of straps being configured to adjust an upper of the article of footwear; and
wherein the straps can be automatically moved between a closed position and a loosened position by activating the motor. 
Nike has submitted a couple of Information Disclosure Statements to provide background information to the Examiner.  I did not see Back to the Future II as a listed reference.  But that's probably ok, because the video above is likely not enabling.  But I'm glad the self-tying shoe is finally here.  And I'm ready for my flying car.