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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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BPAI Finds Broadest Reasonable Construction of "Computer Program Product" Includes Non-Statutory Subject Matter

Ex parte Peyrelevade (BPAI Mar. 17, 2010)

Today, the BPAI reversed an examiner's final rejection of claims and entered a new ground of rejection of claims related to a module that may be used in multiple websites.  While the BPAI found that the applicant overcame the prima facie showing of anticipation and obviousness of the claims at issue, the BPAI entered a new ground of rejection of certain claims as being directed to non-statutory subject matter.

These claims recited a "computer program product" that includes code.  Giving the claims their broadest reasonable interpretation, the BPAI found that the claims "encompass[] a computer program per se … [and] also encompass[] the computer program product being embodied on a carrier wave" since the claims recited "the open transitional phrase 'comprising and do[] not preclude the computer program product from being embodied in a carrier wave."  Citing In re Nuijten along with two documents available on the USPTO website, "Subject Matter Eligibility of Computer Readable Media" and "Interim Examination Instructions for Evaluating Subject Matter Eligibility under 35 U.S.C. 101", the BPAI found that the claims encompassed both a computer program per se as well as a signal, and were therefore directed to non-statutory subject matter.


Design Patent Claim Construction: Segregation of Functional From Ornamental Features Appropriate

Richardson v. Stanley Works, Inc. (Fed. Cir. Mar. 9, 2010)

Today the Federal Circuit approved a district court "distinguish[ing], as part of its claim construction, the ornamental aspects from the functional aspects of [the patentee's] design" in a design patent infringement case relating to a multi-function carpentry tool that combines a conventional hammer with a stud climbing tool and a crowbar.

The plaintiff had argued on appeal that "the district court erred in its claim construction by separating the functional aspects of the design from the ornamental ones, rather than considering the design as a whole" in violation of the Egyptian Goddess requirement that "the patented design be compared in its entirety with the accused design" and argued instead that separating out functional aspects of a design patent is only appropriate for designs that contain "purely functional" elements.

Finding that the issue before the court was not very different from that in OddzOn Prods., Inc. v. Just Toys, Inc., the Federal Circuit explained that "[i]f the patented design is primarily functional rather than ornamental, the patent is invalid. However, when the design also contains ornamental aspects, it is entitled to a design patent whose scope is limited to those aspects alone and does not extend to any functional elements of the claimed article." (internal citations omitted).  The court followed up by stating that "[a] claim to a design containing numerous functional elements, such as here, necessarily mandates a narrow construction.  Nothing in our en banc Egyptian Goddess opinion compels a different outcome."

Ultimately, the Federal Circuit approved the district court's segregation of functional elements from ornamental elements in the design patent claim construction.


False Marking: Senate Proposes to End False Marking Onslaught

If the comprehensive patent reform amendment announced today is passed, qui tam plaintiffs who have been hunting for expired patent numbers to bring false marking suits will be out of luck.  Only "competitive[ly] injure[d]" parties will be able to sue for false marking.  The Senate bill, if enacted, would have sweeping retroactive effect even for still-pending but earlier-filed actions.

Today, leaders of the Senate Judiciary Committee announced details of an agreement by key Senate leaders on legislation for patent reform.  Among the provisions of this proposed legislation is a modification of the false marking statute.  Presently, 35 U.S.C. 292(b) provides that "[a]ny person may sue for the [false marking] penalty, in which event one-half shall go to the person suing and the other to the use of the United States."  The proposed legislation amends 292(b) to read as follows:

(b) A person who has suffered a competitive injury as a result of a violation of this section may file a civil action in a district court of the United States for recovery of damages adequate to compensate for the injury.

The proposed legislation is retroactive as it states the amendment would "apply to all cases, without exception, pending on or after the date of the enactment of this Act."

Roughly 75 false marking lawsuits have been filed in the last two months against over 100 companies (up-to-date case information available here), with many of these qui tam plaintiffs apparently being individuals or entities specifically formed to litigate such false marking suits.  The full text of the Manager's Amendment is available for review here.


Public Patent Foundation Releases Free Claim Construction Dictionaries

On March 1st, the Public Patent Foundation ("PUBPAT") announced that it has released claim construction dictionaries authored by Dr. David Garrod (PUBPAT Senior Litigation Counsel) free of charge to the public.  The dictionaries are available for download through the PUBPAT web siteor through Google Docs.  Three dictionaries are available relating to (1) electronics, computer and business method arts; (2) mechanical, electro-mechanical and medical device arts; and (3) chemical, pharmaceutical and biotechnology arts.

As stated in PUBPAT's press release, "[e]ach of the released volumes covers district and appellate court decisions in the indicated subject areas, starting with the Federal Circuit's 1995 Markman decision and running through the end of 2009.  Content appears in an easy-to-read dictionary format, indexed by the exact claim language construed. Because the usefulness of any particular construction depends critically on the reason that the court adopted the construction in question (e.g., was it "plain meaning" or a definition in the patent), each entry is endnote-linked to the relevant decisional text, with the portions of the full-text that define the particular construction highlighted for easy reference."

Interested individuals can download the three claim construction dictionaries using links in PUBPAT's press release.


Patent Marking Police Strike Again - 100 Companies Now Affected by False Marking Suits

Yesterday, two plaintiffs (Patent Compliance Group and Bentley Hollander) who have already filed multiple false marking lawsuits since the Federal Circuit's Forest Group Inc. v. Bon Tool Co. decision, filed a total of five additional false marking suits in Texas and Pennsylvania.  This is on top of 27 false marking suits filed by a single plaintiff in Illinois last week.  These new cases bring the total number of false marking suits brought in the last two months to at least 68 lawsuits by 22 different plaintiffs against roughly 100 companies.

Gray on Claims has recently added a new feature to track these newly filed false marking cases, as well as those filed prior to the Forest Group decision.  Up-to-date false marking case information can be found here.

Other false marking resources available on Gray on Claims:


Visiting Judge Explains Potential Downfalls of De Novo Standard of Claim Construction Review

Trading Techs. Int'l, Inc. v. eSpeed, Inc. (Fed. Cir. Feb. 25, 2010)

In a case where a claim construction ruling was affirmed, the interesting point from a standpoint of patent law is the public policy discussion of the Visiting Judge concerning the Federal Circuit standard of de novo claim construction review.  Visiting District Judge Clark from the Eastern District of Texas, sitting by designation, explains the potential downfalls of this de novo review in his concurring opinion.  As it is a good read for those interested, the concurring opinion is reproduced in full below for the reader's reference:

Believing that the judgment is correct and that the opinion correctly analyzes the issues in this case in light of current law, I concur. I write separately to respectfully suggest that the current de novo standard of review for claim construction may result in the unintended consequences of discouraging settlement, encouraging appeals, and, in some cases, multiplying the proceedings.

Determination of the meaning that would have been attributed to a claim term by one of ordinary skill in a sophisticated field of art on the date of filing often requires examination of extrinsic evidence—a determination of crucial facts underlying the dispute, as outlined by Judge Rader in the majority opinion. On some occasions, a determination will be made based, in part, on the weight to be given to conflicting extrinsic evidence or even to an evaluation of an expert’s credibility.

The standard of review that will be applied by a higher court sets one of the important benchmarks against which competent counsel evaluates decisions regarding settlement and appeal. The importance is highlighted by the fact that every brief must state the standard of review. See Fed. R. App. P. 28(a)(9)(B), (b)(5); Fed. Cir. R. 28(a)(10),(b).

The de novo review standard has at least two practical results, neither of which furthers the goal of the “just, speedy, and inexpensive determination of every action and proceeding.” Fed. R. Civ. P. 1. First, rejection of settlement is encouraged, and a decision to appeal is almost compelled, where counsel believes the client’s position is valid, even if debatable, depending on the view taken of extrinsic evidence. It is a natural reaction upon receiving an unfavorable claim construction from a trial court to conclude that one’s own view of complicated facts will be better understood by the judges of the Federal Circuit, who generally have more experience with patent cases, and who, by their own authoritative rule, review the claim construction without regard to any determination the lower court has made.

A patentee has the opportunity to write clearly enough so that the meaning of the claims can be determined from the specification. What public policy is advanced by a rule requiring the determination of underlying facts by more than one court, especially when the likely result is that another group of citizens will be required to “volunteer” for lengthy jury duty on remand?

A second, although less common, consequence of the de novo review standard is the opportunity it offers to the party that presents a case with an eye toward appeal rather than the verdict. Skilled counsel who believes a client may not be well received by a jury is tempted to build error into the record by asking for construction of additional terms, and/or presenting only a skeleton argument at the claim construction stage. This is risky, but it would be unusual for this Court to consider a point waived if a particular claim construction had been requested of the trial court and some argument made, but the clearest explanation was presented on appeal. An appellate court normally does not consider an unpreserved point of error, but a more sharply focused argument regarding points presented on appeal, from among those that are technically preserved, is actually the goal of the appellate specialist. This tactic would be less inviting if claim construction was officially accorded some measure of deference, even if it was applied only in those cases in which resort to extrinsic evidence was necessary.


Northwestern Law IP Symposium in Chicago March 5th

On March 5th, the Northwestern School of Law will be holding its fifth annual IP symposium entitled "New Rules for a New Day - Examining Recent Trends in IP Law."  Sharon Barner, Deputy Under Secretary and Deputy Director of the USPTO, will be giving a keynote speech.  Topics for the symposium include:

  • The Patenting of Social Interactions: Bilksi Before the Supreme Court
  • Trademark and Copyright in the Days of Internet: The Google Influence
  • Who Defines the Law?: USPTO Rule Making Authority
  • Redefining "Free": a Look at Open Source Software Management

Symposium speakers include academics and practitioners from the Chicago area.

The event itself is free to the public and Northwestern is also offering up to four CLE credits for the State of Illinois (one credit for each panel attended), for a fee of $200.  This should be a quality event for those interested.

More information about the Northwestern IP Syposium can be found here.


Federal Circuit Finds Harmless Error in Submitting Claim Construction to the Jury

Alloc, Inc. v. Pergo, Inc. (Fed. Cir. Feb. 18, 2010) (nonprecedential)

In a puzzling case where the trial court had referred claim construction to the jury, the Federal Circuit affirmed the district court's findings that the two patents-in-suit were invalid but not unenforceable due to inequitable conduct.  The patents related to mechanical joints that enable flooring panels to be joined without the use of glue or other fasteners, such as nails or metal clips.

The Federal Circuit first found that the prior art references "were more than sufficient to support the jury's finding of obviousness."  It then noted that "although we need not reach the infringement analysis, we note that the district court surprisingly presented the claim construction to the jury.  Claim construction has always been a legal issue for the court and not within the fact-finding role of a jury.  The district court's submission of the claim construction to the jury, leaving the jury free to make its own determination of the meaning of the claims, was error.  Here the error is harmless due to our obviousness ruling but the district court's procedure is not one supported by the law."  (internal citations omitted).

This is a puzzling result.  If the district court improperly allowed the jury to decide claim construction issues, the jury then improperly decided those issues for purposes of both infringement and validity.  It appears that any such "error" should apply to both infringement and validity and cannot be rendered "harmless due to our obviousness ruling."  Of course, if the Federal Circuit had explicitly determined that the patent claims were obvious under any reasonable construction of the claims, a finding of "harmless error" may be appropriate, but there was no such explicit finding here.

Upon further research into this case, it appears that two potential claim construction issues were presented to the jury regarding the claim terms "tight" and "tongue."  For the term "tight", the district court judge appears to have instructed the jury that "[t]he term 'tight joint' means that neither dirt nor water may penetrate the joint.  With respect to water, 'tight' joint means that standing water will not penetrate the joint for several hours."  However, in the verdict form the jurors were asked "[w]hat criteria did you use to determine whether the joints Accused Products are 'tight'?" and were given two options: "[p]enetrate means that neither water nor dirt pass into the joint" or "[p]enetrate means that neither water nor dirt pass through the joint."

Similarly, for the term "tongue", the district court judge appears to have instructed the jury that "the term 'tongue' means a portion of the panel that is designed to mate with a groove of an adjacent panel."  However, in the verdict form the jurors were asked "[w]hat criteria did you use to determine the presence or absence of a protrusion or snapping web on the tongue?" and were given two options: "[t]he tongue includes the tongue side of the panel" or "[t]he tongue includes only the part that extends outwardly from the upper edge."

Arguably, it appears that the jury's determination of whether the term "tight" means that neither water nor dirt pass "into the joint" versus "through the joint" does appear, on its face, to be a claim construction issue.  Conversely, the jury's determination of what part of the accused products comprise the "tongue" is arguably more of a factual issue.  Unfortunately, the Federal Circuit did not specifically point out what portion of the verdict it found to be improper claim construction by the jury.  It is intriguing that these instructions appear to have been proposed by one of the parties with no objection from the other party or by the judge.


"Patent Marking Police" Out in Full Force

As predicted by myself and Hal Wegner in our recent article, "the year 2010 will see the continued renaissance of the newly created ad hoc 'patent marking police.'"  In the roughly 50 days since the Federal Circuit released its decision in Forest Group, Inc. v. Bon Tool Co., at least 14 17 lawsuits alleging false marking have been filed against 29 33 different companies in various district courts, including:

  • San Francisco Tech., Inc. v. Adobe Sys. Inc., No. 5:09-cv-06083-RS (N.D. Cal.) (complaint filed Dec. 30, 2009)
  • Brinkmeier v. Bayer Healthcare LLC, No. 1:10-cv-00001-SLR (D. Del.) (complaint filed Jan. 3, 2010)
  • Heathcote Holdings Corp. v. Crayola LLC, No. 1:10-cv-00342 (N.D. Ill.) (complaint filed Jan. 19, 2010)
  • Hollander v. Hospira, Inc., No. 2:10-cv-00235-JD (E.D. Penn.) (complaint filed Jan. 19, 2010)
  • Dye v. Mag Instrument, Inc., No. 2:10-cv-00167-RDP (N.D. Ala.) (complaint filed Jan. 26, 2010)
  • Hollander v. Timex Group USA, Inc., No. 2:10-cv-00429-BMS (E.D. Penn.) (complaint filed Jan. 29, 2010)
  • Hollander v. EUSA Pharma (USA), Inc., No. 2:10-cv-00492-LDD (E.D. Penn.) (complaint filed Feb. 2, 2010)
  • Hollander v. Etymotic Research, Inc., No. 2:10-cv-00526-PBT (E.D. Penn.) (complaint filed Feb. 5, 2010)
  • Hungerpiller v. S.C. Johnson & Son, Inc., No. 2:10-cv-00290-AKK (N.D. Ala.) (complaint filed Feb. 5, 2010)
  • Zojo Solutions, Inc. v. Leviton Mfg. Co., No. 1:10-cv-00881 (N.D. Ill.) (complaint filed Feb. 9, 2010)
  • Heathcote Holdings Corp. v. Clorox Co., No. 1:10-cv-00942 (N.D. Ill.) (complaint filed Feb. 11, 2010)
  • Josephs v. Federal-Mogul Corp., No. 2:10-cv-10617-SFC-MJH (E.D. Mich.) (complaint filed Feb. 12, 2010)
  • Patent Compliance Group, Inc. v. Timex Group USA, Inc., No. 3:10-cv-00286 (N.D. Tex.) (complaint filed Feb. 12, 2010)
  • Patent Compliance Group, Inc. v. Brunswick Corp., No. 3:10-cv-00287 (N.D. Tex.) (complaint filed Feb. 12, 2010)
  • Patent Compliance Group, Inc. v. Activision Publ'g, Inc., No. 3:10-cv-00288 (N.D. Tex.) (complaint filed Feb. 12, 2010)
  • Patent Compliance Group, Inc. v. Wright Med. Tech., Inc., No. 3:10-cv-00289 (N.D. Tex.) (complaint filed Feb. 12, 2010)
  • Josephs v. Sigma-Adrich Corp., No. 2:10-cv-10660 (E.D. Mich.) (complaint filed Feb. 16, 2010)

Interestingly, two of these fourteen seventeen lawsuits have been filed against Timex Group USA, Inc., were filed within two weeks of each other, and alleged false marking related to the same three patents. Further, two of the other lawsuits were filed against S.C. Johnson & Son related to the same alleged false marking of an expired patent on Edge shaving gel.  As noted in the Gray/Wegner article, "it is certain that Forest Group signals an increased interest in filing qui tam actions for false marking … [however it] remains to be seen whether courts will readily find the necessary mens rea to find false marking [and it is unclear] what courts will do in the exercise of their discretion in terms of the size of damage awards."

Thanks go out to the Docket Navigator service ( for providing pending case information.  It is currently unclear whether additional false marking lawsuits have been filed as these suits are not being consistently categorized within the federal court system.

Gray on Claims has recently added a new feature to track these newly filed false marking cases, as well as those filed prior to the Forest Group decision.  Up-to-date false marking case information can be found here.

(updated February 18, 2010 to add three more false marking complaints)


Reines and Greenblatt Publish "Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II"

Today, Dennis Crouch's Patently-O blog published an article by Edward Reines and Nathan Greenblatt  of Weil, Gotshal & Manges LLP entitled "Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II." Edward Reines and Nathan Greenblatt, Interlocutory Appeals of Claim Construction in the Patent Reform Act of 2009, Part II, 2010 Patently-O Patent L.J. 7 (2010).

This article is a follow-up to an article the authors published on the same topic in August 2009.  In today's article, the authors discuss a modification to the interlocutory claim construction appeal provision of the Patent Reform Act of 2009.  This modification places four qualifications on the eligibility of such appeals: (1) the claim construction order would need to be "final"; (2) the order would need to be based on a "sufficient evidentiary record" for appeal; (3) interlocutory treatment of the order would need to materially advance the ultimate termination of the litigation or would need to likely control the outcome of the case; and (4) the Federal Circuit would have to find the interlocutory appeal at issue not "clearly erroneous."

While the authors admit that "[t]hese modifications represent an admirable effort to respond to problems with the original proposal", they conclude that "[c]ongress should scrap the proposed interlocutory appeals provision altogether and stick with the time-tested interlocutory appeals provision applicable to civil cases generally."  Id. at 8-9, 13.

The article provides a thought-provoking perspective on the interlocutory appeal debate and is a must-read for those interested.  The article can be found in its entirety here.