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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
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.

Tuesday
May172011

Federal Circuit Affirms Dismissal of False Marking Case Without Leave to Amend

Juniper Networks, Inc. v. Shipley (Fed. Cir. Apr. 29, 2011)

In this case, the Federal Circuit affirmed a district court's dismissal of a false patent marking cases for failure to state a claim.  The defendant allegedly developed software used on the defendant's website, and that software was listed on the defendant's website as associated with specific patent numbers.  The software itself was allegedly destroyed in 1999 due a hard drive crash, but the description of the software as well as the patent numbers remained on defendant's website.  In an amended complaint, plaintiff alleged that defendant falsely marked "the Website and any firewall or other security products or services operating thereon, as well as web pages generated by the Website."

The district court dismissed plaintiff's amended complaint for failure to state a claim and did not grant leave to further amend, finding that plaintiff had not pled facts showing defendant had marked an "unpatented article" because "when considered in context," the marking on the website referred to the specific software project, not that the specific was functioning or operating on the website.

The Federal Circuit affirmed.  The Court pointed out that plaintiff did not allege that the specific software associated with the patent numbers on the website was falsely marked; instead the plaintiff alleged that it was the website and web pages themselves that were falsely marked.  The Court then considered whether websites can qualify as "unpatented articles" within the scope of Section 292, and determined that "because websites may both embody intellectual property and contain identifying markings, this Court holds that websites can qualify as unpatented articles within the scope of [Section] 292."

Next the Court analyzed issues surrounding the website at issue in this particular case.  While the website indicated the specific software was a "current project", the Court found that nothing on the website reasonably suggested that the specific software at issue actually protected the website and agreed with the district court that "it is beyond cavil that, when considered in context, the reference to 'functioning' relates to the progress of the [software] project, not that the software was functioning or operating on the Website."  Ultimately, the Federal Circuit affirmed the dismissal of the plaintiff's amended complaint and did not give leave to further amend, finding no error in the district court's determination that the amended complaint "could not be saved by further amendment."

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.

Monday
Apr252011

Federal Circuit Prefers Construction that Harmonizes Claim Elements to Define a Workable Invention

Lexion Medical, Inc. v. Northgate Technologies, Inc. (Fed. Cir. Apr. 22, 2011)

In this case, the Federal Circuit affirmed the district court's claim construction as it harmonized the elements of the claim to define a workable invention.  The patent at issue related to an apparatus for heating and humidifying gas to a predetermined and preset temperature for use during laparoscopic procedures.

One limitation of the patent claims at issues required gas to enter the patient "humidified and having a temperature within 2°C of the predetermined temperature."  The district court held that this limitation did not require that the temperature range always be within 2°C of the predetermined temperature because the patent specification disclosed that that temperatures "will, at times, fluctuate outside the four-degree range."  The defendant argued that the claim construction of this limitation should require that the temperature always be within 2°C of the predetermined temperature.

The Federal Circuit agreed with the district court, mainly relying on the specification and surrounding claim language.  More specifically, two other limitations of the claim required "sensing the temperature of the gas as it exits the chamber to determine if it is in the predetermined range" and "actuating the heating means if the temperature of the gas is without the predetermined range."  The Federal Circuit found that these limitations, along with similar disclosure in the patent specification, supported a construction allowing for minor fluctuations outside the 4°C range, and stated that the Court "prefers a claim interpretation that harmonizes the various elements of the claim to define a workable invention."

Wednesday
Apr202011

Federal Circuit Reverses District Court's Finding of Means-Plus-Function Limitations

Rembrandt Data Technologies, LP v. AOL, LLC (Fed. Cir. Apr. 18, 2011)

In this case, the Federal Circuit reversed a district court's summary judgment decision of invalidity in part as there were genuine issues of material fact concerning whether the patent specification disclosed particular algorithms. The patent at issue related to a modem utilizing both the fractional rate encoding technique for more rapidly transferring data and the trellis encoding technique for reducing errors in data transmission.

During claim construction, the district court construed the limitations of "fractional rate encoding means for receiving said first group and performing a fractional encoding thereon to generate a group of fractionally encoded bits" and "trellis encoding means for trellis encoding said frames of equal number of bits" as means-plus-function limitations. The district court then found the patent claims invalid as it found the specification did not disclose algorithms able to perform the recited functions.

On appeal, the Federal Circuit determined that the district court had erred in construing these two claim limitations as means-plus-function claims because expert testimony indicated that the term "fractional rate encoding means" and "trellis rate encoding" were "self-descriptive to one of ordinary skill in the art" and the patent specification "adopted the common meanings" of these two types of encoding.

The parties then debated whether the necessary algorithms for the claim terms "buffer means" and "combining means" were disclosed in the patent specification. The Federal Circuit there were genuine issues of material fact regarding this issue and reversed the district court's grant of summary judgment of invalidity.

Friday
Apr012011

Patent Examiners Not Required to Make On-The-Record Claim Constructions

In re Jung (Fed. Cir. Mar. 28, 2011)

In this case, which was appealing a rejection of claims in a pending patent application, the Federal Circuit stated that patent examiners are not required to make an on-the-record construction of every claim term in every rejected claim.  The patent application at issue related to a photo-detector array system for transforming light inputs into electrical signals.  The claims at issue were rejected by the patent examiner and that rejection was sustained by the BPAI.

On appeal, the applicant argued that the patent examiner had not made a prima facie case of invalidity.  The applicant then argued during oral argument that such a prima facie case requires, among other things, an "[o]n-the-record showing of a reasonable, broadest reasonable construction."

The Federal Circuit responded in its opinion, stating that "[t]here has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection.  This court declines to create such a burdensome and unnecessary requirement."

Thursday
Mar312011

Decrease in New False Marking Cases Filed Post In re BP Lubricants

New false marking case filings have appeared to drop dramatically since the Federal Circuit's March 15, 2011 In re BP Lubricants decision.  This is evidenced by the fact that from March 16th through March 30th, the two week period directly following the BP Lubricants decision, only 9 new false marking cases have been filed.  This can be compared to prior two week periods from 2011:

  • 48 new cases filed March 1st through March 15th
  • 54 new cases filed February 15th through February 28th
  • 36 new cases filed February 1st through February 14th
  • 42 new cases filed January 16th through January 31st
  • 20 new cases filed January 1st through January 15th

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
Mar162011

N.D. Ohio District Court Reaffirms Decision Finding False Marking Statute Unconstitutional

Unique Product Solutions, Ltd. v. Hy-Grade Valve, Inc. (N.D. Ohio Mar. 14, 2011)

As previously reported, the Northern District of Ohio recently held that the false marking statute is unconstitutional as violating the Take Care Clause of the U.S. Constitution.  Recently, the U.S. government filed a motion to intervene and for reconsideration of that order.  Yesterday, as reported by the Docket Report, the Northern District of Ohio granted the U.S. government's motion for reconsideration but also reaffirmed its earlier decision.

A PDF copy of the Court's order can be found here

Tuesday
Mar152011

Federal Circuit Holds Rule 9(b) Applies to False Marking Cases

In re BP Lubricants USA Inc. (Fed. Cir. Mar. 15, 2011)

Today, the Federal Circuit held that the particularity requirement of Fed. R. Civ. P. 9(b) applies to false marking cases.  In its decision, the Court noted that:

  • "a complaint alleging false marking is insufficient when it only asserts conclusory allegations that a defendant is a 'sophisticated company' and 'knew or should have known' that the patent expired."
  • "[p]ermitting a false marking complaint to proceed without meeting the particularity requirement of Rule 9(b) would sanction discovery and adjudication for claims that do little more than speculate that the defendant engaged in more than negligent action."
  • "a complaint must in the [Sec.] 292 context provide some objective indication to reasonably infer that the defendant was aware that the patent expired."
  • A "bare assertion" that the defendant is a "sophisticated company and has experience applying for, obtaining, and litigating patents … provides no more of a basis to reasonably distinguish a viable complaint than merely asserting the defendant should have known the patent expired.  Conclusory allegations such as this are not entitled to an assumption of truth at any stage in litigation."

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.

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