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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

Send questions, comments and suggestions to
grayonclaims@gmail.com

Friday
Dec042009

Google Creates Its Own Dictionary: Will it Be Used by Patent Practitioners?

As reported this morning by Mashable, Google "has offered word definition via the define:word search query for quite some time now" but now has "quietly rolled out" its own dictionary, which can be found at google.com/dictionary.

Google's dictionary includes definitions in 28 languages and also includes related phrases and aggregated definitions from other Web services like Wikipedia.  As noted by Mashable, "similar services such as Dictionary.com or Answers.com surpass Google's dictionary when it comes to features, offering a thesaurus, synonyms, and definitions from specialized sources such as medical and scientific dictionaries … [however] Google's aggregation feature makes its service a good starting point, even if it's not the best dictionary out there."

It will be interesting to see whether Google's new dictionary can become a resource for patent prosecutors and litigators in the future.  Presently, Google's dictionary only appears to offer "current" definitions of terms and, at least as of yet, has no service that shows how definitions have changed over time.  Such a service would be useful to practitioners looking for specific definitions at particular points in the past.  However, to those practitioners wanting to get a general sense of what a specific term may presently mean, Google's dictionary could be a "good starting point" given its aggregation feature.  Hopefully, Google's aggregation feature can eventually expand into including medical, scientific, and other dictionaries so it can become a better resource.

Do you plan on using Google's dictionary or other online dictionaries in your practice?  Please send any comments to grayonclaims@gmail.com.

Thursday
Dec032009

Federal Circuit Finds Specific Case Where Claims Need Not be Construed Before Determining Validity

Perfect Web Techs., Inc. v. InfoUSA, Inc. (Fed. Cir. Dec. 2, 2009)

In this case, the Federal Circuit affirmed the district court's summary judgment order regarding obviousness.  The patent at issue related to methods of managing bulk e-mail distribution to groups of targeted customers.  After the district court conducted a Markman hearing, but before issuing a formal claim construction order, the court held a summary judgment hearing.  The court then granted the defendant's motion for summary judgment of obviousness, assuming for purposes of the motion that the plaintiff's proposed claim constructions were correct.  On appeal, the plaintiff argued that the district court should have formally construed the claims before deciding validity.

The Federal Circuit, in an opinion by Judge Linn, noted that it has previously said "a court may not invalidate the claims of patent without construing the disputed limitations of the claims and applying them to the allegedly invalidating acts … [h]owever, a district court need not construe undisputed claim terms prior to issuing a summary judgment of invalidity." (emphasis in original, internal citations omitted).  In this particular case, the parties disputed two claims terms found in the final step of the claimed four-step method.  However, both the district court and Federal Circuit found that "[n]either claim term was relevant" to the issue of obviousness (the issue being the repeating of the first three method steps).  The plaintiff offered no reasons why the constructions of these two terms would change the obviousness outcome.

Plaintiff also argued that the district court "adopted an improper 'claim construction' that oversimplified the claims" by referring to the final step of the claimed method as "try, try again" (the final step of the claimed method called for repeating the first three steps until a condition was satisfied).  The Federal Circuit disagreed, noting that "step (D) plainly calls for 'repeating steps (A)-(C),' and [plaintiff] identifies no construction that would change our analysis."

Wednesday
Dec022009

District Court Denies Summary Judgment Where Defendant Relied on Prior Art Already Considered by Examiner and Failed to Submit Expert Report

Woods v. DeAngelo Marine Exhaust, Inc., Case No. 08-81579-CIV (S.D. Fla. Nov. 23, 2009)

In this case, the district court denied defendant's motion for summary judgment of obviousness regarding patents relating to "water jacketed exhaust pipes for marine exhaust systems."  The prior art relied upon by the defendant was already considered by the patent examiner, leading the Court to state that defendant's burden of showing obviousness was "particular heavy" and "especially difficult when the prior art was before the PTO examiner during prosecution of the application."

The defendant did not submit an expert report analyzing the patents-in-suit and the prior art and also did not address the level of skill in the art in its motion for summary judgment.  In response, the district court noted that "[t]he lack of expert evidence is significant … although expert testimony is not always required, such evidence would help the court properly assess the primary factors set forth in Graham … [w]ithout the benefit of expert guidance from one skilled in the art, the court must evaluate the defendant's motion for summary judgment with only attorney argument."

Finding that none of the cited prior art appeared to teach or suggest a specific portion of the asserted claims, the Court found that there were genuine issues of material fact concerning obviousness, and denied defendant's motion for summary judgment.

Thanks go out to Docket Navigator for bringing this case to my attention.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Monday
Nov232009

Top 150 "Customers": Increasing Domination of the Patent System

Today, Hal Wegner and I have released a new study of patents granted over the past ten years as well as industry-specific "top ten" lists.  This study reflects a trend of increasing concentration of patenting activity in the United States amongst the top filers.  The study predicts that in the near future roughly half all of utility patents will be granted to just 150 patentees.  Further, EE/software/information technology patentees as well as automotive patentees dominate the list compared to bio/pharma patentees.

The study can be found here.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Wednesday
Nov182009

Supreme Court Denies Every Penny Counts' Cert Petition Regarding Claim Construction

On October 5th, Every Penny Counts, Inc. ("EPC") filed a petition for writ of certiorari regarding its pending litigation against various companies regarding gift cards.  The Question Presented by EPC to the Supreme Court was "Did the Federal Circuit err by construing the meaning of a plain and obvious term - a term not limited by the claim language, specifications, or prosecution history - by first considering the accused infringing device and then constructing a limiting definition that excluded the alleged infringing device?"  EPC sought "this Court's assistance in tempering the Federal Circuit's continued misapplication of Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)."

On November 9th, the Supreme Court denied EPC's cert petition.  While interesting, EPC's petition focused largely on Federal Circuit cases without once mentioning even one Supreme Court case other than Markman, and also did not allege a conflict between the Federal Circuit and any Supreme Court opinion.  Further, while the petition cited a total of eleven opinions from the Federal Circuit, it failed to allege any inter-circuit conflict.

Friday
Nov132009

Western District of Wisconsin Court Denies Motion for Claim Construction in Full

Semiconductor Energy Lab. Co. v. Samsung Elecs. Co. (W.D. Wis. Nov. 4, 2009)

In this case pending in the Western District of Wisconsin, plaintiff and defendants had requested construction of various claim terms.  The preliminary pretrial conference order in the litigation stated that "[i]t is the party's burden to persuade the court that construction of each specified term is necessary to resolve a disputed issue concerning infringement or invalidity."  While "both parties submitted lengthy initial and response briefs arguing their respective positions on the construction of certain claim terms," the Court denied both sides' requests for claim construction in full.

The Court stated that "[t]he reason for the order is not to require parties to parrot its language before the court construes claim terms; it is to avoid devoting judicial resources to the issuance of advisory opinions on the construction of claim terms about which the parties have no concrete dispute.  Claims construction is not an academic exercise.  As much as the parties may hate to show their hands at this early stage, they must do so if they hope to seek the benefit of claim construction before filing motions for summary judgment.  Because the parties have disregarded the order and failed to demonstrate the basis for requesting construction of the terms they dispute, their motions requesting claim construction will be denied."

During briefing, the plaintiff included a table "with only vague phrases" concerning the need to construe each term.  Conversely, while the defendants "provided complete sentences", they apparently only disclosed "that claim construction will 'inform the parties' about which of the hundreds of the accused products satisfy the claim limitation in question and will 'potentially narrow the issues' for trial."

The Court then informed the parties that they are both free to seek construction of claim terms when the file their summary judgment motions but they "have lost only the benefit of receiving some answers [concerning claim construction] before then."

Thanks go out to the Docket Report blog for its initial reporting of this case.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Wednesday
Nov042009

BPAI Uses Dictionary and Patentee's Explicit Distinguishing of Prior Art in Defining Claim Term and Reversing Rejection of Claims

Ex parte Westlund (BPAI Nov. 4, 2009)

The Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Lebovitz, reversed a rejection of claims relating to medical electrical leads and methods of fabricating and implementing them.  These leads can be used with cardiac stimulators for treating patients with cardiac rhythmic dysfunction.  At issue on appeal was whether the Examiner had erred in interpreting the claims to read on electrical leads described in a specific prior art reference.

The claims at issue comprised electrical leads with "one or more longitudinally extending cavities defining a plurality of lumens formed within the materials of the unitary lead body."  The claims also required that "essentially no material that forms the unitary lead body disposed between at least some of the plurality of lumens."

The examiner had found that a specific prior art reference had disclosed the claimed leads because "[c]learly, the tubes [of the prior art reference] are formed within the material since they are completely enclosed inside the material of the lead body … [and] [w]hile the lumens are not formed through the material of the lead body, or defined by the material of the lead body, this is not required by the claim."

The BPAI disagreed, focusing its analysis on the claim term "unitary lead body."  It found that the patent specification "explicitly distinguished its 'unitary lead body' construction from conventional leads with an outer sheath tubing, the same type of lead which is embodied in Figure 8 of [the prior art reference]."  The BPAI further cited to a general purpose dictionary for a definition of "unitary" as "indivisible" or "whole."  Ultimately, the BPAI that a person of ordinary skill in the art, upon reading the patent specification, would have understood "that the [claimed] lumens are formed from the material of the unitary lead body and are indivisible from it, rather than being separate lumens as in the [prior art] device."  As such, the prior art reference did not disclose all of the elements recited in the claim and the claim rejection was reversed.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Friday
Oct302009

BPAI Holds Term Indefinite and Summarizes Reasoning Behind Broadest Reasonable Interpretation Rule

Ex parte Senju Metal Industry Co. (BPAI Oct. 30, 2009)

The Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Delmendo, affirmed a rejection of claims on reexamination relating to a soldering flux for soldering components.  At issue on appeal were rejections relating to indefiniteness, enlargement of claim scope, and obviousness. This post will focus on the indefiniteness rejection.

The patent examiner had held that the claim term "volatile organic solvent conventionally used in a soldering flux" was indefinite as the patent specification did not contain this language, "let alone any disclosure that would enlighten one skilled in the relevant art as to what solvents are covered by the [term]."  In response, the appellants submitted a declaration stating that a person skilled in the relevant art would understand "volatile" to mean "evaporating or passing off readily in the form of a vapor and that solvents in the [patent at issue] fall under this definition."  The appellants further stated that "[o]ne skilled in the art of preparing soldering fluxes would understand what solvents are conventionally used in soldering flux."

Before reaching the merits, the BPAI summarized the reasoning behind the broadest reasonable interpretation rule, stating "[t]his longstanding principle is based on the notion that 'during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.'  That is, a patent applicant has the opportunity and responsibility to remove any ambiguity in claim term meaning by amending the application.  'Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.'  '[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.'" (internal citations omitted).

Turning to the merits, the BPAI noted that the term "volatile organic solvent" does not appear in the patent specification.  Further, the appellants used the term in a "manner contrary to the ordinary meaning of the term" as they argued that ethylene glycol, which has a boiling point of 197°C, is covered by the claim term whereas a prior art patent used the term in a more conventional sense to exclude compounds with relativity high boiling points, for example furfuryl alcohol with a boiling point of about 170°C.  While "use of terms contrary to their ordinary meanings, in and of itself, does not render a claim indefinite, for [p]atentees are free to act as their own lexicographers … one skilled in the relevant art would not be able to ascertain whether an organic solvent with a boiling point of, e.g., 200°C would be covered by the disputed claim terms."  While "non-limiting examples of solvents suitable for the invention are listed" in the specification, the BPAI found that the specification "does not reasonably apprise the full scope of what Patentees mean by 'volatile organic solvent conventionally used in a soldering flux.'"

While, as noted above, the appellants submitted a declaration in support of a particular definition of "volatile", the BPAI found that this definition recited terms of degree like "rapidly" and "readily" on which the patent specification was silent. 

For these reasons, the BPAI affirmed the indefiniteness rejection.

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Wednesday
Oct282009

Delaware Court Imposes Limit of Ten Disputed Terms For Claim Construction in Future Cases

Grape Tech. Group, Inc. v. Jingle Networks, Inc., Case No. 08-408 (GMS) (D. Del. Oct. 20, 2009)

In this case, Judge Sleet of the District of Delaware struck the parties joint claim construction chart from the record and required the parties the file an amended joint claim construction chart limited to ten disputed terms per patent-in-suit.  Judge Sleet stated in a footnote to the one-page opinion "[t]he parties have submitted for construction 19 terms from [the patent-in-suit].  Although disinclined to do so in the past, the court - regrettably - will impose a limit of 10 disputed terms per patent for claim construction in this and all future patent actions."

Thanks go out to the Docket Report blog for its initial reporting of this case. 

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com.

Tuesday
Oct272009

Summary of Local Patent Rules Affecting Claim Construction Practice (Part 6 of 6)

Presently, twelve federal district courts have enacted local patent rules. The rules are generally used to help streamline what can be very complicated disputes. Among these rules are rules that affect claim construction practice in each district court. Practitioners should be able to benefit from understanding these differences in practice. In this six-part series, this blog has undertaken to briefly summarize the applicable claim construction rules in each of these twelve courts. Today, in the final part of this series, we focus on the United States District Courts for the Southern District of Texas and the Northern District of California.

Southern District of Texas (rules available here)

  • 2 weeks after serving preliminary invalidity contentions, the parties simultaneously exchange a list of claim terms to be construed and elements that should be governed by 35 U.S.C. § 112 ¶ 6;
  • The parties are then required to meet and confer to finalize the list of claim terms;
  • 3 weeks after exchanging lists of claim terms, the parties simultaneously exchange preliminary proposed constructions for each term at issue, identification of structures/acts/materials corresponding to terms governed by 35 U.S.C. § 112 ¶ 6, identification of extrinsic evidence relied upon, including brief descriptions of any witness testimony;
  • The parties are then required to meet and confer to narrow issues and finalize preparation of a Joint Claim Construction and Prehearing Statement;
  • 4 weeks after exchanging proposed constructions, the parties must file a Joint Claim Construction and Prehearing Statement containing the following:

    1. agreed-upon constructions;
    2. each party's construction of each disputed claim term, including identification of intrinsic and extrinsic evidence in support of the party's position;
    3. anticipated length of time needed for claim construction hearing;
    4. whether any party plans to call witnesses, the identification of each witness, and summaries of opinions to be offered by each witness;
    5. a list of issues to be taken up at a prehearing conference prior to the claim construction hearing;
  • 4 weeks after filing the Joint Claim Construction and Prehearing Statement, claim construction discovery ends;
  • 1 week after claim construction discovery ends, the parties may provide the Court with written technology tutorials for the patent at issue (optional);
  • 3 weeks after claim construction discovery ends, the party claiming patent infringement files its opening claim construction brief;
  • 2 weeks after the opening brief filing, the opposing parties file their responsive briefs;
  • 1 week after the responsive brief filing, the party claiming infringement files its reply brief;
  • 1 week before the claim construction hearing, the parties must jointly submit a claim construction chart to the court containing each disputed term, each party's construction of that disputed term, a blank column for the court's construction, and agreed-upon constructions of terms (optional);
  • The Court will then conduct a claim construction hearing, if necessary.


Northern District of California (rules available here)

  • First, the parties simultaneously exchange a list of claim terms to be construed and elements that should be governed by 35 U.S.C. § 112 ¶ 6;
  • The parties are then required to meet and confer to finalize the list of claim terms and jointly identify the 10 terms that are the most significant or case or claim dispositive;
  • 20 days after exchanging lists of claim terms, the parties simultaneously exchange preliminary proposed constructions for each term at issue, identification of structures/acts/materials corresponding to terms governed by 35 U.S.C. § 112 ¶ 6, and identification of intrinsic and extrinsic evidence relied upon, including brief descriptions of any witness testimony;
  • The parties are then required to meet and confer to narrow issues and finalize preparation of a Joint Claim Construction and Prehearing Statement;
  • 30 days after exchanging proposed constructions, the parties must file a Joint Claim Construction and Prehearing Statement containing the following:

    1. agreed-upon constructions;
    2. each party's construction of each disputed claim term, including identification of intrinsic and extrinsic evidence in support of the party's position;
    3. identification of the most significant claim terms, up to a maximum of 10 terms, including identification of terms that will be case or claim dispositive;
    4. anticipated length of time needed for claim construction hearing;
    5. whether any party plans to call witnesses, the identification of each witness, and summaries of opinions to be offered by each witness;
  • 30 days after filing the Joint Claim Construction and Prehearing Statement, claim construction discovery ends;
  • 15 days after claim construction discovery ends, the party claiming patent infringement (or the party asserting invalidity if there is no infringement issue in the case) files its opening claim construction brief;
  • 14 days after the opening brief filing, the opposing parties file their responsive briefs;
  • 7 days after the responsive brief filing, the party claiming infringement (or the party asserting invalidity if there is no infringement issue in the case) files its reply brief;
  • 2 weeks after the reply brief filing, the Court will then conduct a claim construction hearing, if necessary, subject to the convenience of the Court's calendar.

As can be seen, the rules for the Southern District of Texas and Northern District of California are quite similar, except that the Northern District of California requires the parties to inform the Court of the ten most significant claim terms to be construed, including identification of those terms that may be case or claim dispositive.

The author will be working on drafting a more concise summary (potentially a chart) to show the differences between all twelve districts that have local patent rules.  In the meantime, parts one through five of this series can be found at the following links:

  • Part I (District of Massachusetts and District of New Jersey)
  • Part II (Western District of Pennsylvania and Eastern District of North Carolina)
  • Part III (Northern District of Georgia and Western District of Washington)
  • Part IV (District of Minnesota and Southern District of California)
  • Part V (Northern District of Illinois and Eastern District of Texas)

If you have a comment or would like to see a particular topic discussed on this site, please e-mail grayonclaims@gmail.com