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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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District Court Requires Defendant to Pay Fees for Supplemental Markman Briefing

Northbrook Digital, LLC v. Vendio Servs., Inc. (D. Minn. Dec. 28, 2009)

In this case, the U.S. District Court for the District of Minnesota required that defendant pay reasonable fees incurred by plaintiff for supplemental claim construction briefing.  The parties submitted a joint claim construction statement in April 2009 and submitted an amended joint claim construction statement in late July 2009.  The defendant then "argued for claim constructions [in its early November 2009 Markman brief] that varied (in some cases significantly) from the constructions offered" by the defendant in the previous joint claim construction statements.  At the Markman hearing, when asked by the Court about this issue, the defendant "failed to provide satisfactory explanation for having changed its claim-construction positions in the roughly three months between late July and early November."

The Court stated in its opinion that it "disapprove[d]" of defendant's behavior and defendant "made the Court's claim construction task more difficult than it already was."  As the Court "could benefit from further briefing" on certain claim construction issues and the defendant's "misbehavior has made this additional briefing necessary, [defendant] should pay for it."

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


Federal Circuit Holds that False Marking Statute Applies on a Per Article Basis

Forest Group, Inc. v. Bon Tool Co. (Fed. Cir. Dec. 28, 2009)

In a decision released today, the Federal Circuit held that penalties associated with violation of 35 U.S.C. § 292, which relates to false marking, should be imposed on a per article basis.

Plaintiff had sued defendants for infringing plaintiff's patent relating to an improved spring-loaded parallelogram stilt commonly used in construction.  Defendants counterclaimed alleging false marking, a Lanham Act violation, and seeking declaratory judgment that the patent was invalid.  In February 2007, the district court construed the patent claims.  In August 2007, the district court granted summary judgment of noninfringement in favor of defendants.  After holding a bench trial on defendants' counterclaims, the district court determined that plaintiff had falsely marked its "S2 stilts" with the number of the patent-in-suit after November 15, 2007 and assessed plaintiff a $500 file for a single offense of false marking.  Defendants appealed on numerous issues, including the district court's interpretation of 35 U.S.C. § 292.

Section 292 provides a civil penalty for false marking of goods.  It states: "Whoever marks upon, of affixes to, or uses in advertising in connection with any unpatented article, the word 'patent' or any word or number importing that the same is patented, for the purpose of deceiving the public … Shall be fined not more than $500 for every such offense."  The issue here was the appropriate mechanism for penalizing violations of the statute.

The Federal Circuit held that "the statute's plain language requires the penalty to be imposed on a per article basis."  Plaintiff argued that "the false marking statute should be interpreted to impose a single fine for continuous false marking", citing to a 1st Circuit decision from 1910.  The Federal Circuit distinguished that decision, explaining that the decision related to a different statute and further stating that a single $500 fine for each decision to falsely mark "would render the statute completely ineffective."

The Federal Circuit recognized that recent district court decisions have interpreted the false marking statute in different ways, including use of a single fine for continuous false marking, a time-based approach (i.e. a penalty for each day, week, or month that false marking occurred), or a per-article penalty.  However, the Federal Circuit held that "Section 292 clearly requires a per article fine … [and this interpretation] is consonant with the purpose behind marking and false marking."

The Court also cited to policy considerations in support of its statutory interpretation, stating "[a]cts of false marking deter innovation and stifle competition in the marketplace … [i]f an article that is within the public domain is falsely marked, potential competitors may be dissuaded from entering the same market … [and] [f]alse marking can also cause unnecessary investment in design around or costs incurred to analyze the validity or enforceability of a patent whose number has been marked upon a product with which a competitor would like to compete."

While plaintiff argued that this interpretation would encourage "a new cottage industry" of false marking litigation by plaintiffs who have not suffered any direct harm, the Federal Circuit explained that the false marking statute "provides that '[a]ny person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States' .. [and thereby] explicitly permits qui tam actions."  Further, the statue provides for a fine of "not more than $500 for every such offense" and the Federal Circuit stated "[b]y allowing a range of penalties, the statue provides district courts the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities.  In the case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty."

As the district court used a different interpretation of the false marking statute and did not determine the number of articles falsely marked by plaintiff or the amount of penalty to be assessed per article, the Federal Circuit vacated the $500 fine imposed by the district court and remanded the case.

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.  Additional coverage of false marking cases on this blog can be found here.



Northern District of California Invalidates 3D Computer Graphics Claims Under Bilski, Prometheus

Fuzzysharp Techs. Inc. v. 3D Labs Inc., No. C 07-5948 SBA (N.D. Cal. Dec. 11, 2009)

The Northern District of California, in an opinion by Judge Armstrong, has invalidated various claims of two patents directed to improving 3D computer graphics "through provision of an improved method for performing visibility calculations" as not directed to patentable subject matter under In re Bilski

Defendant argued in its summary judgment brief (no oral argument was heard by the Court) that the relevant claims were no more than "mathematical formulas and algorithms that fail Bilski's machine-or-transformation test."  Plaintiff countered by arguing that, while the claims at issue were not transformative, they were "tied to a particular machine; to wit, a computer."

The Court found that plaintiff's argument "miss[ed] the mark.  The salient question is not whether the claims are tied to a computer.  Rather, as Bilski makes clear, the question is whether the claims are 'tied to a particular machine.'" (emphasis in original).  The Court explained that "[c]ourts applying Bilski have concluded that the mere recitation of 'computer' or reference to using a computer in a patent claim [is] insufficient to tie a patent claim to a particular machine … [l]ikewise, the PTO Board of Patent Appeals and Interferences has reached the same conclusion, and consistently ruled that the mere fact that a claim references the use of a computer is, standing alone, insufficient to meet the machine implementation requirement." (emphasis in original).  Finding the disclosed authorities persuasive, the Court held that the while the claims at issue may be "performed on a computer," they were not "tied to any particular machine."  The Court therefore invalidated the claims as not directed to patentable subject matter.


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'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 or 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


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."


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


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


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.


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


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