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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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"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.


Federal Circuit Finds No Prosecution Disclaimer and Affirms Claim Construction From Preliminary Injunction Hearing

SEB S.A. v. Montgomery Ward & Co. (Fed. Cir. Feb. 5, 2010)

In this case, the district court, after holding a claim construction hearing, granted a motion for preliminary injunction in 1999.  The Federal Circuit affirmed the preliminary injunction order without opinion.  After the defendant redesigned the accused product, the plaintiff successfully sought to supplement the preliminary injunction to include the redesigned product.  After a jury trial, the defendant's accused products were found to infringe the patent.  Plaintiff appealed, and the Federal Circuit ultimately affirmed.  While there were many issues discussed on appeal, this post will focus on the claim construction issue.

The patent at issue claimed a deep fryer with an inexpensive plastic outer shell, or skirt.  The patent disclosed that, besides a heat-insulating and heat-resistive ring, the skirt and the pan of the fryer were separated by "an air space of sufficient width to limit the temperature of the skirt."  Because of the insulation provided by the air space, the skirt could be constructed from more inexpensive plastics.  The district court, as part of its 1999 preliminary injunction order, construed the claim term "completely free with respect to the pan" as "there are no thermal bridges between the skirt and the pan."  Defendant argued on appeal that this construction was incorrect and the term should instead be construed as "no solid material between the pan and the skirt." 

The Federal Circuit noted that its "prior affirmance of the district court's preliminary injunction order does not make the district court's claim construction in its 1999 opinion the law of the case."  Ultimately while the Court pointed out a "minor inconsistency" with the district court's construction, it still found that the district court's construction "rings true."  The Federal Circuit disagreed with defendant's proposed construction, relying on the prosecution history, the doctrine of claim differentiation, the fact that defendant's proposed construction would read out the preferred embodiment, and the fact that "the patent stresses that eliminating thermal bridges is not the same as eliminating any solid material."

Defendant had argued that the patentee narrowed the meaning of the claim term "completely free" during prosecution by making the statement "in the case of the present invention, the outer plastic skirt 3 is completely free with respect to the pan with the exception of ring 5.  This means that the space comprised between the skirt 3 and the pan 1 is entirely occupied by air and that there is no solid material therebetween" in distinguishing a prior art reference.  The Federal Circuit found that defendant's "attempt to create a disclaimer simply stretches this prosecution history to far" as "read in context, the applicant's reference to 'no solid material' refers only to the volume between the sides of the pan and the skirt."  Therefore, "[a]t most, the prosecution statement requires 'completely free' to mean 'no solid materials between the sides of the pan and the sides of the skirt and no thermal bridges between the base of the skirt and the base of the pan.'"

The Federal Circuit found no reversible error in the district court's claim construction and affirmed.


Firm Disqualified From Representing Party on Appeal Where Partner Served As Opponent's Expert at Trial

Outside the Box Innovations, LLC v. Travel Caddy, Inc. (Fed. Cir. Feb. 1, 2010) (nonprecedential)

In this case, a partner for King & Spalding had served as an expert witness in support of plaintiff's motion for attorneys fees at trial.  Defendant opposed this motion for attorneys fees and challenged the strength of and analysis in the expert's declaration.  The district court denied the request for attorneys fees.  After the district court proceedings concluded, defendant selected three attorneys from King & Spalding to represent it on appeal.  Plaintiff then filed a motion with the Federal Circuit, asking the Court to disqualify King & Spalding from representing defendant under the principle of imputed disqualification.

The Federal Circuit, in a nonprecedential opinion by Judge Dyk, granted the motion for disqualification, relying on Rule 1.7 of the Georgian Rules of Professional Conduct.  The Court noted that "[t]he question whether King & Spalding should challenge the expert opinion of one of King & Spalding's partners in our view would materially and adversely affect the firm's representation of [defendant] on appeal" as "to properly represent the interests of [defendant], the lawyers from King & Spalding would need to consider whether to challenge the sufficiency of [the] expert opinion in this appeal.  Members of the firm may not be able to provide adequate representation on that issue without challenging [the] opinion."


Omitting Step in Process Does Not Expand Claim to Cover Use Nothing Like That Described as Integral to Invention

Catch Curve, Inc. v. Venali, Inc. (Fed. Cir. Jan. 22, 2010) (nonprecedential)

In the case the Federal Circuit affirmed the district court's order granting summary judgment of noninfringement of patents relating to the transmission and storage of facsimile messages over switched telephone networks.

The claims at issue on appeal concerned methods for transmitting fax messages over switched telephone networks from an originating fax machine to an "SAFF" (a computer-based device known as a "store and forward facility"), which then stores the message.  During claim construction, the district court required that all of the claimed systems and methods use facsimile protocol as the basis for the claimed communications and that the transmissions all be routed over a switched telephone network.  In the accused system, an originating fax machine sent a fax message to a point of presence ("POP") over ordinary telephone lines.  The fax message was then converted into a TIFF, stored in a queue, encoded into XML, sent via HTTP to a data center, where the message was converted into a PDF or different TIFF file, stored in a user-specific mailbox, then sent by SMTP, HTTP, or HTTPS to the intended recipient.  The district court granted summary judgment of noninfringement as the accused process did not exclusively use the facsimile protocol and did not transmit the fax message exclusively using a switched telephone network.

On appeal, the plaintiff argued that the district court erred in limiting the claims to a specific protocol and instead argued that the communications at issue remained fax messages regardless of any subsequent changes in the format used to convey the data after it wa initially sent by a fax machine.  Defendant argued that the district court properly limited the claims because the patent specification used the terms "fax machine" and "fax communications" to mean messages communicated in a fax protocol over a switch telephone network, not conversion of messages into different formats for transmission over the internet.

The Federal Circuit found that "[n]othing in the [patent] specification suggests that the fax messages of the invention are converted to a different format and transmitted to the recipient over a medium other than a switched telephone network … [r]ather, the common specification makes clear that the fax messages that are the subject of the patent are sent and received by conventional fax machines or their proxies over a switched telephone network using fax protocol." 

Defendant countered by pointing to certain claims at issue relating only to the transmission of fax messages from the originating fax machine to the SAFF and not requiring the further step of transmitting the messages from the SAFF to another SAFF or to the ultimate recipient.  The Federal Circuit then explained that "merely omitting a step in a described process does not perforce expand the scope of the claim to encompass the use of devices that are nothing like those described in the specification as integral to the invention."  As the patent specification stated that the SAFF contemplated by the invention was "an integral part of a switch telephone network system" and that the SAFF must have been capable of receiving fax message from, and sending fax messages to, conventional fax machines over a switched telephone network, these claims "must be understood to be limited to an apparatus that contains a storage medium and has the capacity to receive and transmit fax messages in fax protocol over a switched telephone network."  As the accused system did not have the capacity to transmit fax messages over a switched telephone network to a fax-receiving device, the Federal Circuit affirmed the district court's order granting summary judgment of noninfringement.


New Patent Damages Handbook Released

Recently, a committee of patent practitioners, academics, and judges, formed at the request of Chief Judge Michel of the Federal Circuit, has released a Patent Damages Handbook for federal district court judges to consult in patent cases.  As stated on the committee's website:

The goal was to create a handbook drafted by a committee, national in scope, with members from the bench, bar and academia, including in-house counsel from a variety of industries, and patent damages experts.  The underlying idea was to benefit from the collective experience of judges, attorneys, academics and economists in how best to achieve the "just, speedy and inexpensive determination" of patent damages.  Recognizing that patent damages law is an area that continues to evolve, this handbook is not an attempt to restate substantive damages law or predict its future evolution but is instead focused on procedural practices that may be helpful in the adjudication of patent damages.

This handbook appears to be a good resource for both judges and patent practitioners.

Information about the handbook, as well as the handbook itself, can be found here.


Federal Circuit Panel Disagrees Regarding Scope of Disclaimer

Schindler Elevator Corp. v. Otis Elevator Co. (Fed. Cir. Jan. 15, 2010)

In this case, the Federal Circuit, in an opinion by Judge Linn, vacated the district court's grant of summary judgment of noninfringement as the district court erred in construing two claim terms.  Judge Dyk filed a separate opinion concurring in the result but dissenting in part.

The patent at issue related to "an elevator system that recognizes a user when he or she enters an entry location of a building, then dispatches an elevator to bring the user to a destination floor based on user-specific data."  At issue on appeal were the district court's constructions of the terms "information transmitter" and "recognition device."  The district court, relying on statements in the specification and prosecution history that described "hands-free," "automatic," and "contactless" elevator operations, construed both terms as excluding any "personal action" by an elevator user other than "walking into the monitored area."  The defendant argued successfully on summary judgment that the accused system did not infringe as the system required "use of a passenger's hands to bring an RFID card within [a] 3.5-inch effective range of a card reader" and such action was a "personal action" not covered by the patent claims.

On appeal, plaintiff argued that the district court improperly limited the scope of the claim terms and argued that "personal action" encompassed the action of "manually pressing buttons to actuate the transmitter or to select a destination floor, not to the initial act of bringing the transmitter within range of the recognition device."  Defendant argued that the district court correctly relied on limiting statements in the specification and prosecution history.

The Federal Circuit found that the district court's construction was "too narrow" and "[t]he statements in the specification and prosecution history on which the district court relied were directed to elevator operations that occur only after the information transmitter is already within range of the recognition device, not to the initial act of bringing the information transmitter within range of the recognition device."  In its decision the Court relied on the claim language itself, the specification, and the prosecution history.

Looking first to the claim language, the Federal Circuit found that the "claims appear to permit at least those types of personal action that are necessary to bring the information transmitter within range of the recognition device" as the claims allowed for personal actions such as carrying the transmitter, unlocking a door, and clocking in or out of work.  Next considering the specification, the Court found that "unlocking a door and pushing a cart are two 'personal actions,' other than simply walking, which are disclosed in the specification as actions needed to bring a transmitter within range of the recognition device."

Finally, the Court examined the prosecution history, where the patentee added the "information transmitter" limitation to the claims after the claims were rejected as obvious and described the invention during prosecution as operating "automatically, contactlessly, and independently of the orientation of the information transmitter."  While the district court read the prosecution history as "unambiguously disavowing the use of a passenger's hands for any and all purposes," the Federal Circuit disagreed, stating that the actions taken during prosecution did not rise to a "clear and unmistakable" disavowal of scope and instead related to "actions that take place only after the passenger has brought the transmitter within range of the recognition device." 

Ultimately, the Federal Circuit modified the district court construction of the terms at issue by striking the phrase "without requiring any sort of personal action by the passenger" from each construction.  The Court then vacated the grant of summary judgment and remanded.

Judge Dyk, in a separate opinion, concurred with the result but dissented in part.  While he agreed that the district court's construction "unduly limited the scope of the claims," he understood "the action of swiping a card to call the elevator separate from the action required to gain entry to the building is clearly within the disclaimer of both the specification and prosecution history."  He explained that, while the applicant could have distinguished the prior art on other grounds, the applicant "instead emphasized [during prosecution] that the patented device was distinguishable both because of the signal direction and because it was hands-free and automatic … [the applicant's] disclaimer must be based on what he said, not on what he could have said."


BPAI Rejects Claims Under In re Nuijten

Ex parte Wahlbin (BPAI Jan. 13, 2010)

Today the Board of Patent Appeals and Interferences ("BPAI"), in a decision by Administrative Patent Judge Lorin, affirmed a rejection of claims related to a "computer implemented method for estimating liability in an accident."  The patent examiner had rejected the pending claims as obvious in light of a number of prior art references.

While the BPAI affirmed the examiner's rejection on obviousness grounds, it went one step further.  For certain claims, it issued a new ground of rejection.  Specifically, it rejected certain claims as "being directed to non-statutory subject matter."

The claims at issue recited a "computer-readable storage medium comprising program instructions."  The BPAI found, giving these claims their broadest reasonable construction, the claims encompassed "a signal."  The BPAI also stated its construction was consistent with the specification, "which describes that the computer readable storage medium includes '…signals such as electrical, electromagnetic, or digital signals …'"  Citing In re Nuijten, the BPAI explained that "[a] signal does not fit within at least one of the four statutory subject matter categories under 35 U.S.C. 101."


The New Patent Marking Police: Answering Clontech and Forest Group

Today, Hal Wegner and I have released a new paper concerning the open questions regarding Section 292 false marking claims post-Forest Group.  We discuss the Forest Group case itself, the history of qui tam actions going back to the middle ages, pending appeals and district court cases, and open questions in light of the Forest Group decision.  Open questions include how to deal with marking products with multiple patent numbers, advertising as false marking, false marking for an unpatented but "patent pending" invention, and the scope of trial court discretion for the appropriate false marking penalty.  Interestingly, in the pending appeal concerning alleged false marking of 21 billion Solo Cup lids, the penalty for such marking may range from $21 million to over $10 trillion dollars under the Federal Circuit's formula.

The paper can be found here.

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.


Federal Circuit Affirms Wyeth v. Kappos

Wyeth v. Kappos (Fed. Cir. Jan. 7, 2010)

Today, the Federal Circuit held that extended patent term adjustments under 35 U.S.C. § 154(b) due to PTO delay in prosecution applies on an "A delay + B delay - overlap" basis contrary to the PTO's "greater-of-A-or-B" rubric.

At issue in the case were two Wyeth patents.  Both patents were granted patent term adjustment by the PTO of 462 days and 492 days, respectively under the PTO's interpretation of 154(b).  Wyeth disagreed with the PTO's calculations and argued that the respective adjustments should instead have been 756 days and 722 days.

35 U.S.C. § 154(b) provides for patent term adjustments for certain delays by the PTO.  "A delays" extend the term of the patent one day for each day the PTO does not meet certain examination deadlines (for example, providing a first response to a filed application within fourteen months). "B delays" extend the term of the patent one day for each day issuance of the patent is delayed due to the PTO's failure "to issue a patent within 3 years after the actual filing date of the application in the United States."  "C delays" occur due to delays resulting from interference proceedings.  Section 154 also, as described by the Federal Circuit, "restricts the period of adjustment when any of the 'periods of delay' 'overlap.'"  At issue in this case was the correct way to determine when "A delays" and "B delays" overlap for purposes of the statute.

The PTO had promulgated rules essentially finding that the entire period of "A delay" overlaps with the entire period of "B delay."  Under this interpretation, the PTO had a practice of using "greater-of-A-or-B" rubric wherein the PTO would calculate the "A delay", calculate the "B delay", then use the greater of "A" or "B" delays in its patent term adjustment calculations.  Wyeth disagreed with the PTO's interpretation of the statute, arguing that under the PTO's interpretation, "B delay" actually starts upon the filing of the patent application and not three years after the filing date, as specifically set forth in 35 U.S.C. § 154(b).  In Wyeth's interpretation, "A delay" and "B delay" can only overlap once the "B delay" clock has started (i.e. three years after filing of the patent application).

Despite the PTO's argument that Chevron deference applied to its interpretation of 154(b), the district court held that Chevron was inapplicable and sided with Wyeth's interpretation of the statute.  Further, the district court found that even if Chevron applied, it would have rejected the PTO's interpretation as contrary to the plain language of the statute.

The Federal Circuit affirmed, finding that the terms "periods of delay" and "overlap" in the statute contained no ambiguity and that "this court can easily detect any overlap by examining the delay periods covered by the A and B guarantees."  The Federal Circuit further stated that 154(b) "makes it clear that no 'overlap' happens unless the violations occur at the same time … [and] [b]efore the three-year mark, no 'overlap' can transpire between the A delay and the B delay because the B delay has yet to begin or take any effect.  If an A delay occurs on one day and a B delay occurs on a different day, those two days do not 'overlap' under section 154(b)(2)."

The PTO argued that "A delays" inherently cause "B delays" (as a delay early in prosecution may result in the patent not being granted in three years) and therefore the PTO's use of "greater-of-A-or-B" in its patent term adjustment calculations was proper as Wyeth's interpretation may cause "double counting" of days.  The Federal Circuit responding by stating that it "perceives potential perverse results as well under the PTO's suggested interpretation … [however] [r]egardless of the potential of the statute to produce slightly different consequences for applicants in similar situations, this court does not take upon itself the role of correcting all statutory inequities, even if it could.  In the end, the law has put a policy in effect that this court must enforce, not criticize or correct." 

The Federal Circuit also agreed with the district court that Chevron deference to the PTO was not applicable here as "the language of the statute itself control this case and sets an unambiguous rule for overlapping extensions, this court detects no reason to afford special deference to the PTO's interpretation."

It will be interesting to see how the PTO responds to this decision for pending requests for patent term adjustment and how this decision affects patent application strategies given how the PTO is treating Requests for Continued Examination (see PTA Strategies: Wyeth, RCE's and the PCT by C. Edward Polk, Courtenay C. Brinckerhoff and Harold C. Wegner).