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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
Sep092011

Federal Circuit Panel Disagrees Over Application of Rambus v. Infineon

Markem-Imaje Corp. v. Zipher Ltd. (Fed. Cir. Sept. 9, 2011)

In this case, the patent at issue related to devices for transfer printing, a process where ink is carried by a ribbon that is moved into contact with the substrate to be printed, and a print head impresses upon the ribbon and causes the ink to transfer from the ribbon to the substrate.  The majority per curiam opinion reversed the district court’s claim construction and found that the claims did not generally require “some method of deriving a tension measurement.”  The defendant argued that the claim itself did not explicitly recite measuring tension, and the requirement set forth in the district court’s claim construction would “violate the mandate of Rambus Inc. v. Infineon Tech. AG that ‘the claims need not recite every component necessary to enable operation of a working device.’”  The majority agreed and explained that, while deriving a tension measurement may be required to make the claimed device operational, it was not proper for the district court to incorporate such a method into the claim construction, using an example of “[a] claim to an engine providing motive power to a car should not be construed to incorporate a limitation for an exhaust pipe, though an engine may not function without one.”

In dissent, Judge Newman disagreed with the majority’s interpretation of Rambus and explained that “[t]his court has no authority to enlarge the scope of the patent beyond what the patentee described as its invention, notwithstanding my colleagues’ curious analogy to a car and its tailpipe.”  She went on to find, relying on statements made in the specification regarding measuring tension, that “while the invention is flexible as to how tension is measured, and permits measurement through indirect methods, some method of measurement is contemplated and required, as found by the trial court.”

Thursday
Sep082011

The Elevated Inter Partes Reexamination Threshold of Leahy-Smith: A Boon To Requesters

Guest Post by Matthew A. Smith1, Andrew R. Cheslock2, and Max Colice, Ph. D.3

Should President Obama sign the Leahy-Smith America Invents Act as expected, the threshold for initiating an inter partes reexamination will immediately change.  Rather than being required to demonstrate a “substantial new question of patentability”, requesters will be required to show a “reasonable likelihood that the requester would prevail with respect to at least 1 of the claims challenged in the request”.4

This is widely viewed as an elevation of the threshold requirement for initiating an inter partes reexamination.  The current “substantial new question” standard requires the Examiner to find only that “there is a substantial likelihood that a reasonable examiner would consider the prior art patent or printed publica­tion important in deciding whether or not the claim is patentable”.5  Notably, the Examiner does not need to find the art sufficient to reject a claim.6

Although some commentators expect a glut of filings prior to the change to avoid the new standard, it is actually a boon to requesters.  The worst possible result of an inter partes reexamination request is not a denial of the request.  The estoppel of 35 U.S.C. § 315(c) is not triggered by a denial,7 and in some cases the request can be supplemented and refiled.8  The worst possible outcome is a grant of the request, followed by an office action confirming all claims (about 1 in every 30 inter partes cases).  In this scenario, the Examiner can move directly to an Action Closing Prosecution, the patent owner need not respond (foreclosing a requester comment) and the requester is still faced with the estoppel provisions of § 315(c).  If a request can not demonstrate a “reasonable likelihood that the requester would prevail”, then even under the current standard it has no business being filed.

While it is true that the change in the threshold will probably cut down on the number of granted requests, it will do so principally by eliminating only those requests that fall in the space between “substantial new question” and “likely to result in a rejection”.  The change should thus effectively eliminate the single worst possible outcome of an inter partes reexamination for the requester, without having a practical impact on the requester’s ability to submit requests that will result in rejected claims. 


[1] Matthew A. Smith is Senior Counsel in the Washington, D.C. office of Foley & Lardner LLP, and the author of the West Treatise Inter Partes Reexamination 2d.  He also serves as an Adjunct Professor at George Washington University Law School, where  he teaches International Patent Law.  His practice includes litigation, reexamination and counseling in patent matters, especially relating to the fields of electronics, semiconductors and software. He can be reached at msmith@foley.com.  The views in this article reflect only the opinions of the authors, and are not necessarily the views of Foley & Lardner LLP or its clients.

[2] Andrew R. Cheslock is an associate in the Washington, D.C. of Foley & Lardner LLP. He specializes in patent litigation, reexamination, and counseling in the electronics and software fields.  He can be reached at acheslock@foley.com.

[3] Max Colice is a patent agent in the Boston office of Foley & Lardner LLP. He specializes in patent prosecution and reexamination, especially relating to optics, electronics, semiconductors, and software.  He can be reached at mcolice@foley.com.

[4] H.R. 1249, Sec. 6(c)(3)(A)(i)(I)(aa).

[5] MPEP § 2242.

[6] See, e.g., Procter & Gamble Co. v. Kraft Foods Global, Inc., 549 F.3d 842, 848 (Fed. Cir. 2008)(quoting MPEP § 2642).

[7] See 35 U.S.C. §§ 315(c) and 313.

[8] See, e.g., inter partes reexamination 95/000106 (2007-06-27 Petition Decision, pp. 7-8).

Thursday
Aug252011

Judge Crabb Does Away With Stand-Alone Markman Hearings

Dashwire, Inc. v. Synchronoss Technologies, Inc. (W.D. Wis. July 28, 2011)

Judge Crabb of the Western District of Wisconsin, a quite popular venue for patent cases given its familiarity with such cases and relative speed to trial, recently announced through an order by Magistrate Judge Crocker in a then-pending case that she will now only construe claim terms as part of summary judgment practice and will not be calling for separate claim construction briefing or holding a stand-alone Markman hearing.  The order reads, in part:

Judge Crabb has decided that the court now will construe terms as part of summary judgment motions practice.  As a result, the court is striking most-but not all-of the current claims construction process: the parties still must exchange terms according to the deadlines set in the preliminary pretrial conference order, but the parties shall not file motions or briefs requesting claims construction, which means there will be no responsive briefs.  The court will not hold a stand-alone claims construction hearing and shall not issue an order construing claims.  Instead, if any party wants the court to construe a claim, it must make that request and offer its proposed construction in its motion for summary judgment and supporting documents.  A party may not seek construction of a claim not disclosed in the initial exchange of terms without leave of court.  The sixteen-claim limit on construction no longer applies because the court expects that its new combined procedure will result in more tightly focused construction requests.  Any objection to an opponent's proposed construction would have to be argued in the response to the summary judgment motion.  The usual 21/10 response/reply cycle for summary judgment briefing continues to apply.

The order explains that this procedure will apply to "all pending patent lawsuits in which the parties have not yet submitted briefs on claims construction."

It will be interesting to see if other district court judges, including those in the Western District of Wisconsin, will consider and/or adopt Judge Crabb's new approach to claim construction practice.

Tuesday
Aug092011

False Marking - Settlement Update

Since the beginning of May 2010, we have seen 427 false marking cases settled.  Of those cases, the average total settlement amount (including payments to plaintiffs and payments to the government) is approximately $48,500.  This means that the government has received approximately $10,350,000 in payments from false marking cases, with an identical amount going to the various false marking plaintiffs.

Notably, the average settlement amount has gone down since the BP Lubricants decision.  Prior to BP Lubricants, 222 false marking cases had settled for an average amount of approximately $53,300.  Since BP Lubricants, 205 false marking cases have settled for an average amount of approximately $43,310.  It is also noteworthy that the single largest false marking settlement ($2,000,000) occurred post-BP Lubricants.  If we take this outlier out of the calculus, the average settlement post-BP Lubricants is approximately $33,700.

Below is a chart showing the trend of number of false marking settlements per month:

Below is a chart showing average settlement amounts tracked by month:

Finally, the chart below shows the top ten false marking plaintiffs by number of cases settled, and also shows the average settlement amount for each plaintiff:

All of the above charts and data are current as of August 3, 2011.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here.

Wednesday
Aug032011

False Marking - New Case Update

Since the Federal Circuit's decision in Forest Group, we have seen close to 1000 new false marking cases filed in district courts throughout the country.  But, since the BP Lubricants decision, there has been a sharp decline in the filing of new cases, as can be seen from the chart below, which tracks new case filings by month:

Over half of all post-Forest Group false marking cases have been filed in the Eastern District of Texas, as can be seen from the chart below that shows the number of cases filed in the most popular district courts:

 

And while many of the most prolific plaintiffs were quite active pre-BP Lubricants, most have been silent in new filings post-BP Lubricants.  The chart below shows the total number of cases filed by the top ten plaintiffs sorted by number of new case filings, and also shows the number of new cases each plaintiff has filed post-BP Lubricants.

All three of the above charts are current as of August 3, 2011.  Stay tuned for an update on false marking settlements.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here.

Thursday
Jul072011

Federal Circuit Holds FLFMC v. Wham-O Oral Argument

Today, the Federal Circuit held oral argument in the FLFMC, LLC v. Wham-O, Inc. false marking litigation, where Wham-O has challenged the constitutionality of the false marking statute, 35 U.S.C.  § 292(b).   Judge Linn, Judge Dyk, and Judge Prost sat on the panel.  The oral argument itself (available as an mp3 file from the Federal Circuit) can be listened to here.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here.

Friday
Jun242011

FLFMC v. Wham-O Appeal Set for July 7th Oral Argument at Federal Circuit

FLFMC, LLC v. Wham-O, Inc. (Fed. Cir. No. 2011-1067)

On Thursday, July 7th, the Federal Circuit will hold oral argument in the FLFMC v. Wham-O case concerning the constitutionality of the false marking statute, 35 U.S.C. § 292(b).  The Federal Circuit has agreed to allow the U.S. Government and the U.S. Chamber of Commerce to both participate in the oral argument.

Wham-O has asked the Federal Circuit to hold that the false marking statute is unconstitutional under both the Take Care Clause and the Appointments Clause of the Constitution.

Wham-O's brief raises the following four issues in its "Statement of the Issues":

  1. Whether a private litigant who has suffered no injury in fact has standing to assert a false marking claim under 35 U.S.C. § 292(b).
  2. Whether 35 U.S.C. § 292(b) violates Article II, section 3 of the Constitution (the President "shall take Care that the Laws be faithfully executed") by permitting any person to file, prosecute and terminate false marking cases on behalf of the government, but failing to require notice to the government of false marking cases, and failing to provide the government with any means of controlling their initiation, prosecution or termination.
  3. Whether 35 U.S.C. § 292(b) violates the Appointments Clause (Article II, section 2) of the Constitution by improperly vesting in a self-appointed relator the unbridled power to file and prosecute an unlimited number of false marking cases, failing to provide the government with any power to remove a relator from a false marking action, and failing to give the government any means of controlling the initiation, prosecution or termination of false marking actions prosecuted on the government’s behalf.
  4. Whether a false marking relator’s allegations that a manufacturer falsely marked a product with long-expired patents, coupled with an allegation that the patents-at-issue were among the assets the manufacturer purchased from a corporate predecessor after the patents’ expiration, are sufficient to meet the heightened pleading standards of Fed. R. Civ. P. 9(b) in a false marking action.

The following briefs have been filed in this appeal and are being made available here in PDF form:

  • Brief of Defendant-Appellee Wham-O, Inc. (PDF)
  • Response of Plaintiff-Appellant FLFMC, LLC to Brief of Defendant-Appellee Wham-O, Inc. (PDF)
  • Brief for the Intervenor United States (PDF)
  • Brief of Amicus CuriaeChamber of Commerce of the United States of America in SUpport of Defendant-Appellee and Affirmance (PDF)
  • Brief for the Cato Institute and Walter Olson as Amici Curiae in Support of Defendant-Appellee and Affirmance (PDF)

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here.

Friday
Jun172011

Federal Circuit Reverses District Court's Finding That Claim Terms Not Using "Means" Were Subject to § 112 ¶ 6

Inventio AG v. Thyssenkrupp Elevator Americas Corp. (Fed. Cir. June 15, 2011)

In this case, the Federal Circuit reversed the district court's finding that two claim terms, "modernizing device" and "computing unit", were terms subject to § 112 ¶ 6, that the written description of the patents in suit failed to disclose corresponding structure to perform the recited functions, and that the terms were therefore indefinite.  The patents in suit related to a modernized elevator system and a process for modernization that allowed elevator passengers to input desired destination floors when initially requesting an elevator.

The Federal Circuit began its analysis by explaining the "strong" presumption "not readily overcome" that claim terms not using the term "means" are not subject to § 112 ¶ 6.  Next, the Court settled a dispute between the parties concerning whether courts can consider the written description in making the initial determination of whether a claim term that does not use "means" is still subject to § 112 ¶ 6.  The Federal Circuit stated that "[c]laims are interpreted in light of the written description supporting them, and that is true whether or not the claim construction involves interpreting a 'means' clause."  The Federal Circuit went on to state that "[i]n cases where the claims do not recite the term 'means,' considering intrinsic and extrinsic evidence is usually helpful, as the litigated issue often reduces to whether skilled artisans, after reading the patent, would conclude that a claim limitation is so devoid of structure that the drafter constructively engaged in means-plus-function claiming."

Concerning the term "modernizing device" the Court held that while prior cases found the term "device" was a generic structural term that "typically do[es] not connote sufficiently definite structure", in this case "the claims recite a 'modernizing device,' delineate the components that the modernizing device is connected to, describe how the modernizing interacts with those components, and describe the processing that the modernizing device performs.  The written descriptions additionally show that the modernizing device conveys structure to skilled artisans.  Thus, this is not a case where a claim nakedly recites a 'device' and the written description fails to place clear structural limitations on the 'device.'"  The Court therefore found that the defendant had failed to overcome the presumption that "modernizing device" is not a means-plus-function limitation.

Concerning the term "computing unit" the Court similarly found that "the inventor did not draft the claims in 'means for' format, and his decision to avoid the term 'means' raises a strong presumption that the claimed 'computing unit' connotes sufficiently definite structure to those skilled in the art.  [Defendant] had the burden to show that the 'computing unit' terms are so structurally devoid that we should rewrite them in means-plus-function format.  The claims and the written description, however, indicate that those of skill in the art would understand a computing unit to connote sufficiently definite structure.  Thus, on this record, [defendant] has failed to meet its burden."

Wednesday
Jun082011

Second District Court Finds False Marking Statute Unconstitutional

Rogers v. Tristar Products, Inc. (E.D. Penn. June 2, 2011)

A second district court has found that the false marking statute is unconstitutional under the Take Care Clause of the U.S. Constitution.  Judge Robreno of the Eastern District of Pennsylvania recently made this ruling, stating, in part:

Applying Morrison, the Court finds that section 292(b) fails to provide the Executive Branch sufficient safeguards “to ensure that the President is able to perform his constitutionally assigned duties.” 487 U.S. at 696.

...

The False Marking Statute, by contrast [to the False Claims Act], contains no such statutory limitations on its qui tam provision. Broadly permitting “any person” to “sue for the [$500] penalty” in section 292(a), it requires no notice to the United States, and provides no means by which the United States may control the initiation, prosecution, or termination of litigation commenced on its behalf. 35 U.S.C. § 292(b). The what, when, where, and how of the litigation remain subject to the whims of whomever sees fit to bring the suit. Under these circumstances, the statute “essentially represents a wholesale delegation of criminal law enforcement power to private entities with no control exercised by the Department of Justice.” Unique, 2011 WL 649998, at *6. And given the available financial penalties under Forest Group, this lack of control is all the more troubling. See id.

Moreover, the supposed protections created by other sources of law simply do not suffice to ensure that the President can take care that the laws of the United States be properly carried out. Cf. Simonian, 2011 WL 1599292, at *5 (concluding that “the government maintains a sufficient level of control over qui tam actions brought under Section 292(b)”). First, the fact that notice of all pending patent cases is provided to the PTO within one month of filing, see 35 U.S.C. § 290, does not constitute sufficient notice to the Executive Branch. This notice is not expedient enough to provide the United States with sufficient time to protect its interests, and is not directed to the Department of Justice—the agency responsible for representing the United States’ interests in a false marking suit. See Unique, 2011 WL 649998, at *5 (“[B]y the time the government is informed by the clerk of an action being filed, the case may have already been settled. This presents a unique problem with False Marking qui tam actions because relators are likely to be interested in a quick settlement without the delay and expense of protracted litigation.”).

Second, the availability of intervention under the Federal Rules of Civil Procedure and the corresponding protections associated with intervention do not go far enough. While the United States could prevent a section 292(b) relator from voluntarily dismissing the case upon intervention, see Fed. R. Civ. P. 41(a)(1)(A)(ii), this requires the Court to order intervention on the United States’ motion in the first instance, see Fed. R. Civ. P. 24. Although the Federal Circuit has reversed a district court for refusing to permit intervention in a false marking suit under Rule 24(a)(2), see Stauffer, 619 F.3d at 1328, it is not clear to the Court that intervention will or must be ordered in any given case. Moreover, as noted, a section 292(b) relator could voluntarily dismiss a case before the United States even has the opportunity to seek intervention at all. See Fed. R. Civ. P. 41(a)(1)(A)(i); Unique, 2011 WL 649998, at *5.

Thus, despite the external protections available, the United States is not able to effectively exercise even a basic degree of control over a section 292(b) relator’s case.  The relator, by bringing the suit, is the master of the suit and—unlike in the False Claims Act context—remains as such. Indeed, unlike the rights it enjoys in False Claims Act qui tam litigation, the United States has no ability to (1) control the litigation by seeking dismissal or settlement over objection; (2) limit discovery in any meaningful way; or (3) take primary control over the litigation.

A PDF copy of the Court's decision is available here.  Thanks go out to the Docket Report blog for its initial reporting of this decision.

Gray on Claims, in conjunction with Docket Navigator®, is providing a false marking chart that is updated daily with new false marking cases as well as status updates on pending cases.  A downloadable PDF chart is available on this page as well including information on the specific patents and products at issue in each litigation.  Gray on Claims is also providing information on false marking settlements.  Other writings on false marking can be found here.

Friday
Jun032011

Federal Circuit Vacates Preliminary Injunction Where District Court Applied Incorrect Claim Construction

Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC (Fed. Cir. June 1, 2011) (nonprecedential)

In this case, the Federal Circuit vacated the district court's grant of a preliminary injunction in part when the district court's ultimate claim construction of certain terms differed from the claim constructions relied upon in granting the preliminary injunction.  The patents at issue related to machine-based methods of folding training pants at the crotch region, aligning and fastening the side seams of the training pants, inspecting the training pants, and folding the training patents for packaging.

In arguing against the preliminary injunction, the defendant argued that all the patents at issue were invalid.  For two of the patents, the district court's claim construction of various terms at the preliminary injunction phase significantly undermined the defendant's invalidity positions.  While the appeal of preliminary injunction was pending at the Federal Circuit, the district court issued its claim construction order.  In this order, the court altered the claim constructions it had relied upon in granting a preliminary injunction for these two patents.

On appeal, the Federal Circuit found that, for both patents, the fact that the district court had applied improper claim constructions, which were subsequently corrected, undermined the conclusion that a preliminary injunction was appropriate for these patents, especially in light of the fact that the amended claim constructions significantly strengthened the defendant's invalidity positions.  For these reasons, the Federal Circuit vacated the grant of preliminary injunction for these two patents.

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