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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

Monday
Aug052013

Public Patent Foundation Asks Supreme Court to Review False Marking Provisions of AIA

Public Patent Foundation, Inc. v. McNeil-PPC, Inc.

As previously reported on this blog, in May 2013 the Federal Circuit issued an order summarily affirming a district court's decision dismissing a qui tam false marking case pursuant to the retroactive changes to the false marking provisions enacted by the America Invents Act ("AIA").

Last week, Public Patent Foundation filed a Petition for Writ of Certioari with the U.S. Supreme Court regarding the Federal Circuit's decision.  Public Patent Foundation has asked the U.S. Supreme Court "[d]oes the retroactive application of the AIA's changes to the false marking statute to this case violate Petitioner's Due Process under the Fifth Amendment?"

This petition relates to a false marking case filed by Public Patent Foundation in June 2009.  After the AIA was passed in 2011, McNeil moved for judgment on the pleadings as a result of the amendments made to the false marking statute and the retroactive application of those amendments.  The district court granted McNeil's motion in 2012 and the Federal Circuit summarily affirmed the district court's decision in May 2013.

A copy of the petition can be found here.

Thursday
Jul182013

Cybor Watch: Final Set of Briefs Filed in En Banc De Novo Claim Construction Appeal

Lighting Ballast Control LLC v. Philips Electronics North America Corporation

This blog has continued work on collecting all of the briefs filed (both by the parties and amici) in the pending Lighting Ballast appeal regarding de novo review of claim construction.  The Federal Circuit is scheduled to hear the appeal en banc on September 13, 2013.  

The following are the final set set of briefs recently filed with the Court:

Copies of prior briefs filed can be found here and here.

Friday
Jun072013

Cybor Watch: Additional Briefs Filed in En Banc De Novo Claim Construction Appeal

Lighting Ballast Control LLC v. Philips Electronics North America Corporation

This blog is continuing work on collecting all of the briefs filed (both by the parties and amici) in the pending Lighting Ballast appeal regarding de novo review of claim construction.  The Federal Circuit is scheduled to hear the appeal en banc on September 13, 2013.

Below are PDF copies of additional briefs recently filed with the Court:

 As any additional briefs are filed, they will be made available on this blog.

 Copies of prior briefs filed can be found here.

Friday
May312013

Cybor Watch: Collection of Briefs Filed in En Banc De Novo Claim Construction Appeal

Lighting Ballast Control LLC v. Philips Electronics North America Corporation

This blog is working to collect all of the briefs filed (both by the parties and amici) in the pending Lighting Ballast appeal regarding de novo review of claim construction.  The Federal Circuit is scheduled to hear the appeal en banc on September 13, 2013.

Below are PDF copies of the briefs collected to date:

This blog is still working on collecting other briefs recently filed by other amici.  From the docket, it appears we should also be expecting briefs from the USPTO, Paul Michel, Google, Intel, Microsoft, the Connecticut IPLA, the Austin IPLA, and the Association of the Bar of the City of New York, which have all successfully filed motions to extend the deadline to file amicus briefs.  As those briefs are filed, they will be made available on this blog.

Friday
May032013

Federal Circuit Summarily Affirms District Court Decision Dismissing False Marking Case

Public Patent Foundation, Inc. v. McNeil-PPC, Inc.(Fed. Cir. May 3, 2013) (nonprecedential)

In this case, the Federal Circuit issued an order summarily affirming a district court's decision dismissing a qui tam false marking case pursuant to the retroactive changes to the false marking provisions enacted by the America Invents Act ("AIA").

Initially, the Appellant petitioned the Federal Circuit to hear the appeal en banc in the first instance, or, in the alternative, for summary affirmance due to the Court's nonprecedential decision in Rogers v. Tristar Products.  That decision held that the AIA's retroactive application of changes to the false marking statute does not violate either the Takings Clause or the Due Process Clause of the Fifth Amendment.  Appellant also asked the Federal Circuit to make the Rogers decision precedential under Federal Circuit Rule 32.1(e).  Last year, the Court denied Appellant's requests.

Late last year in Brooks v. Dunlop Manfacturing Inc., the Federal Circuit held in a precedential decision that the retroactive application of the false marking provisions in the AIA did not violate the Due Process Clause or the Intellectual Property Clause of the Constitution.  Soon after that decision, Appellant again petitioned the Court to summarily affirm the district court under the Brooks decision.  Appellee agreed that Brooks was controlling, but pointed out that Appellant has made an argument that Rogers and Brooks are distinguishable from its case as its case was filed prior to the Federal Circuit's Forest Group decision and Congress's intent in passing the retroactive false marking provisions of the AIA was due, at least in part, to the growing number of false marking cases filed after Forest Group.

The Federal Circuit ordered that the district court's judgment is summarily affirmed.

Tuesday
Apr162013

Revised Briefing Schedule in En Banc Federal Circuit Appeal Regarding De Novo Claim Construction Review

Lighting Ballast Control LLC v. Philips Electronics North America Corporation (Fed. Cir. Mar. 15, 2013)

This blog had previously reported that in this case where the Federal Circuit has agreed to reconsider the de novo review of claim construction en banc, the Defendant-Appellant's en banc brief was due on April 29, 2013 (45 days from the Court's March 15, 2013 Order granting en banc review).  Recently, the Court modified this due date to May 20, 2013.

Thus, under the current schedule, the Defendant-Appellant's brief is due May 20, 2013.  The Plaintiff-Cross Appellant's response brief will likely be due June 19, 2013 (or 30 days after service of Defendant-Appellant's en banc brief if filed earlier than May 20, 2013).  Then the Defendant-Appellant's reply brief will likely be due July 5, 2013 (or 15 days after service of the response brief if filed earlier than June 19, 2013).

Prior coverage of this case can be found here.

Thursday
Mar282013

Federal Circuit Affirms Broad Disclaimer of Subject Matter During Prosecution

BASF Agro B.V., Arnhem (NL), Wadenswil Branch v. Makhteshim Agan of North America, Inc. (Fed. Cir. Mar. 20, 2013) (nonprecedential)

In this case, the Federal Circuit affirmed a district court's claim construction that the patentee had disclaimed particular scope during prosecution.  The patents at issue related to methods of applying insecticide to protect buildings against termites.

The district court had determined that during prosecution the patentee had "disclaimed applying insecticide without loopholes around a building, and applying insecticide without loopholes under a building, respectively."  On appeal, the plaintiff argued this disclaimer was too broad, and while the patents teach a treatment "without barrier", the disclaimer should have been limited to "without loopholes both around and under a building."

The Federal Circuit found that the district court correctly construed the claims of the patents based on the determination that the patentee had disclaimed "barrier treatments" without loopholes.  Looking first to the claim language itself, the Federal Circuit stated that "[t]he claims unambiguously require areas that are treated and untreated."  Looking next to the specification, the Federal Circuit determined that language in the specification describing the prior art and the object of the invention "confirms that the claims do not cover the prior art's loophole-free barrier treatments."  Turning to the prosecution history, the Federal Circuit explained that the patentee made specific arguments to distinguish prior art that required "the formation of a barrier that has no untreated locations" and the patentee relied on a declaration that also distinguished the prior art for that same reason and found the patented method was "unobvious and surprising."

Plaintiff made the argument that the patents' use of the term "comprising" overcame the potential disavowal of subject matter, but the Federal Circuit disagreed, stating that "comprising" is not "a talismanic incantation that counteracts a clear disclaimer."

Plaintiff also presented expert testimony that at the time of the invention an ordinarily skilled artisan would have understood barrier treatments to require formation of a complete barrier both around a building and underneath its foundation.  The Federal Circuit disregarded that testimony as inconsistent with the intrinsic evidence, explaining that "[e]ven testimony from a qualified expert has little probative value if it is inconsistent with the intrinsic record."

The Federal Circuit therefore affirmed the district court's claim construction.

Friday
Mar152013

Cybor Watch: Federal Circuit Will Reconsider En Banc De Novo Claim Construction Review

Lighting Ballast Control LLC v. Philips Electronics North America Corporation (Fed. Cir. Mar. 15, 2013)

In this case, the Federal Circuit (en banc) has agreed to reconsider the de novo review of claim construction under Cybor Corp. v. FAS Techs., Inc.  The Court has directed the parties and amici to address three questions:

1) Should this court overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998)?

2) Should this court afford deference to any aspect of a district court's claim construction?

3) If so, which aspects should be afforded deference?

Defendant-Appellant's en banc brief is due in 45 days from today, with Plaintiff-Cross Appellant's response brief is due 30 days after service of Defendant-Appellant's en banc brief.  Defendant-Appellant's reply brief is due 15 days after service of the response brief.

The Federal Circuit has invited the views of the USPTO as amicus curiae and has stated that briefs of other amici curiae will be entertained.

Wednesday
Mar132013

Federal Circuit Affirms Construction That Did Not Read Terms Out of the Claims and Covered the Preferred Embodiment

SynQor, Inc. v. Artesyn Technologies, Inc. (Fed. Cir. Mar. 13, 2013)

In this case, the Federal Circuit affirmed the district court's claim construction of "isolation" to be limited to "an input and an output of a particular stage, component, or circuit."  The patents at issue related to high-efficiency DC-DC power converter systems used to power circuitry in large computer systems and telecommunications and data communication equipment.

The district court construed the claim terms "isolation", "isolating", and "isolated" to mean "the absence of an electric path permitting the flow of DC current (other than a de minimus amount) between an input and an output of a particular stage, component, or circuit."  The court went on to grant partial summary judgment of infringement.

On appeal, the defendants argued the the construction should require isolation "between two points" rather than "between an input and an output of a particular stage, component, or circuit", also asserting that "consumers connect the input and output of the claimed system to a common ground such that the system is not isolated."

The Federal Circuit ultimately agreed with the district court's construction, explaining that the term "isolation" was used in the claims "as an adjective describing a stage or converter with the power converter system", citing examples in numerous claims.  The court found that "requiring 'isolation' between every two points in the system would read the terms 'stage' or 'convertor' out of the claims."

The court also stated that while the patent figures "show an isolation stage that has no electrical connection between its input and output" they do not show "the entire power converter system."  Further, the defendants' expert admitted that construing the claims in defendants' fashion would prevent the claims from encompassing the preferred embodiment.

The court held that the district court correctly construed "isolation" and affirmed the grant of partial summary judgment of infringement.

Monday
Feb042013

Federal Circuit Reverses Claim Construction That Excludes Preferred Embodiment

Accent Packaging, Inc. v. Leggett & Platt, Inc. (Fed. Cir. Feb. 4, 2013)

In this case, the Federal Circuit found the district court erred in construing the claim terms "each" and "a respective one" and reversed the district court's grant of summary judgment of non-infringement, finding instead that summary judgment of infringement was appropriate.  The patents-in-suit related to wire tier devices that are used to bale recyclables or sold waste for easier handling.

The claims at issue included the claim language "said operator assembly including a pivotal shaft assembly and elongated operator bodies, with each of the operator bodies being operably coupled with a respective one of said gripper, knotter, cutting element and cover so as to supply driving power from the single drive assembly thereto."  The district court concluded that "[t]he word each, in this patent, refers to one of four arms" and that "[a]n ordinary reading of the language, therefore, assigns the machine's four arms a single function."  As the accused device had only two arms, the district court granted summary judgment of non-infringement.

On appeal, the plaintiff argued that the claims were not limited to devices with four arms and the claims also did not require that each arm be coupled to one and one only operator element, pointing to the preferred embodiment disclosed in the specification which had only two arms that were coupled to multiple operator elements.  The defendant argued that because the claims recited four separate and distinct operator elements, the claims required at least four arms so that "each" of the arms is coupled to "a respective one" of the four claimed operator elements.

The Federal Circuit agreed with the plaintiff that the district court erred in its claim construction, relying heavily on the preferred embodiment in the specification and the fact that "[w]e have held that 'a claim interpretation that excludes a preferred embodiment from the scope of the claim is rarely, if ever, correct.'", quoting On-Line Techs., Inc. v. Bodenseewerk Perkin-Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004).  While the defendant's construction hinged on requiring each arm to correspond to one and only one operator element, the preferred embodiment disclosed arms that were coupled to one or more operator elements.  The Court further found that nothing in the claim language itself required that each arm be coupled to one and only one operator element.

Therefore, the Federal Circuit reversed the district court's grant of summary judgment of non-infringement.  Further, as the defendant did not contest the plaintiff's assertion that, without the limitation that required each arm to be coupled to one and only one operator element, the accused device infringed the asserted claims, the Federal Circuit remanded to the district court with instructions to enter summary judgment of infringement in favor of the plaintiff on those claims.