Dismissal of Infringement Claims Reversed; Complaint Merely Must Place the Alleged Infringer on Notice of What Activity is being Accused of infringement. 

In Alexsam, Inc. v. AETNA, Inc., [2022-2036] (October 8, 2024), the Federal Circuit vacated and remanded portions of the district court’s dismissal of AlexSam’s claim for infringement of U.S. Patent No. 6,000,608.   The ’608 patent is entitled “Multifunction Card System” is directed to “a debit/credit card capable of performing a plurality of functions” and a “processing center which can manage such a multifunction card system.”

The district court found that AlexSam could not prevail on its claims based on the Mastercard Products because Aetna had an express license via the License Agreement to market those products. The court further concluded that AlexSam failed to state a claim of direct infringement based on the VISA Products because only third-party customers, and not Aetna itself, could have directly infringed. It appeared to the district court that AlexSam’s accusations were largely targeted at Aetna’s subsidiaries, who were not defendants, and that “AlexSam fail[ed] to allege control or direction by Aetna which would warrant disregarding the corporate form.”

On appeal, AlexSam raised two specific challenges to the district court’s conclusions: (i) that Aetna’s Mastercard Products are licensed and, therefore, cannot directly or indirectly infringe claims 32 and 33 of the ’608 patent, and (ii) that it is implausible to believe that Aetna itself “makes” or “uses” the VISA Products.

The Federal Circuit agreed with AlexSam that the district court erred by resolving the Mastercard licensing issues “on the limited information provided” in the Second Amended Complaint, its attachments, and the motion to dismiss briefing.   The Federal Circuit said that not only was the scope of the license narrower than the district court seems to have un-derstood, but there were also open issues remaining that need to be resolved before the impact of the license on AlexSam’s allegations can be fully assessed.

On the infringement allegations, the Federal Circuit said the district court erred by concluding that AlexSam failed to allege a plausible claim of direct infringement by Aetna’s making and using the VISA Products.  The Federal Circuit said that a plaintiff is not required to plead infringement on an element-by-element basis.  Instead, it is enough that a complaint place the alleged infringer on notice of what activity is being accused of infringement. 

October 8, 2024

On October 8, 1940, David C. Rockola received U.S. Patent No. D122,946 on a Cabinet for Remote Control Apparatus:

This was not the first patent by this prolific inventor, that was U.S. Patent No. USD81021 that issued more than ten years earlier in 1930, and it was far from the last, that was U.S. Patent No. US 3771691 that issued more than thirty years later in 1973.

David Rockola invented everything from gaming devices, to parking meters, to vehicles, to juke boxes — what his is probably best know for.

It turns out that ROCKOLA was not just a snappy name for juke boxes, but it a snappy name for a prolific inventor who did far more than juke boxes.

October 7, 2024

On October 7, 1975, Ysidore M. Martinez received U.S. Patent No, 3,909,854 on a Knee Implant Prosthesis:

Ysidore, an amputee, revolutionized the prosthetic field by creating a prosthesis that was better at giving the wearer control of acceleration and deceleration, while simultaneously reducing pressure and friction for the wearer. This concept, a departure from trying to make prosthetics that faithfully mimicked the limb being replaced, is still used in prosthesis’ today.

October 6, 2024

On October 6, 2024, Chester F. Carlson a physicist, patent attorney, and inventor, received U.S. Patent No. 2,297,691 on Electrophotography – photocopying:

Chester did is initial work in a laboratory in Astoria, Queens, New York. The very first photocopied image was made there on October 22, 1928, which consisted of the date and place written by his laboratory assistant Otto Kornei, an out-of-work Austrian physicist.

The initial results thrilled Carlson, but Kornei was so discouraged, that within a year he left Carlson on cordial terms, dissolving his agreement with Carlson that would have given Kornei ten percent of Carlson’s future proceeds from the invention and rights in the inventions they had worked on together. Oops!

Carlson persisted, and eventually his ideas became the backbone of the Xerox Corporation. Xerox was a combination of the Greek words xeros (“dry”) and graphein (“writing”).  

October 5, 2024

On October 5, 1869, Fisher Spofford and Matthew Raffington received U.S. Patent 95,531 on Improvement in Water-Velocipedes:

Apparently, bicycling on water preoccupied the 19th century mind, because there are numerous

The fascination with bicycling on water even carried into the 20th Century:

October 4, 2024

On October 4, 1949, Harry Crooks, Mildred Rebstock, John Controulis, and Quentin Bartz received U.S. Patent No. 2,483,885 on Nitrophenyl Acyl Amido Alkane Diols:

Dr. Mildred “Millie” Rebstock was a researcher working for Parke, Davis & Company when she was charged with synthesizing a new antibiotic discovered in a culture of Streptomyces venezuela. Dr. Rebstock and her team found a way to fully synthesize this antibiotic, which allowed it to be economically manufactured, rather than producing it organically through fermentation.  This was the first time that an antibiotic has been synthesized. The ready availability of chloromycetin as a result of Rebstock’s Team’s work allowed its use to treat Rocky Mountain Spotted Fever and Typhoid. It is still used today as a secondary treatment for extreme cases of meningitis, cholera, and other bacterial diseases. After chloromycetin was linked to an increased risk of aplastic anemia, its use dropped off in developed nations, but it is still so widely used in developing nations that the World Health Organization has it on its list of Essential Medicines.

October 3, 2024

On October 3, 1950, U.S. Patent No. 2,524,035 issued to J. Bardeen and W.H. Brattain on a Three Electrode Circuit Element Utilizing Semiconductive Material –the transistor:


Their invention ushered in the electronics age starting with simple transistor radios but leading to the microchip and modern computer technology.

The transistor was the work of not just Bardeen and Brattain, but also Willam Shockley (who was left off of the patent for strategic reasons). The trio received the 1956 Nobel prize for physics for their work in transistors. Shockley described the workings of the team as a “mixture of cooperation and competition.” Shockley eventually alienated Bardeen and Brattain, blocking the two from further work on transistors. Bardeen began working on superconductivity for which he won a second Nobel prize. Brattain refused to work with Shockley further and was pursued other interests, before leaving for academia. Shockley continued to improve transistors, developing a more robust layered structure that evolved into the modern bipolar junction transistor.

October 2, 2024

On October 2, 1866, J. Osterhoudt received U.S. Patent No. 58544 on an Improved Method of Opening Tin Cans:

The first tin cans were so thick they had to be hammered open. As cans became thinner, specialized can openers were developed, such as the one disclosed in Ezra Warners’ U.S. Patent No. 19063, issued January 5, 1858:

Early can openers were complicated and difficult to use, leaving ample room for Osterhoudt’s simple key, which did require a specially constructed can.

On July 12, 1870, William Lyman received U.S. Patent No. 105346 on an improved Can Opener that used a rotating wheel to cut the can lid: :

T.A. Killman improved this design in 1925 by adding a crank operated knurled wheel to driving the cutting wheel around the top of the can, receiving U.S. Patent No. 1,558,372 on October 20, 1925:

A year later Charles A Bunker filed on the now familiar pliers-grip, top opening can opener, which was granted U.S. Patent No. 1,838,525 on December 31, 1931:

October 1, 2024

Oon October 1, 1991, U.S. Patent No. 5,052,418 issued to David Miller on a Solar Body Tattoo:

Miller’s method was to apply a template having a central opening to the subject’s skin. Sun block is then applied over the central opening, and the template is removed. Thereafter, the subject’s skin is exposed to tanning rays, and the sun block washed away revealing a skin tattoo.

Alas, Miller was not the first to use the sun for tattooing. See, for example. U.S. Patent No. 2,851,805, which issued September 16, 1958, on a Sun Tattoo Form:

It seems no matter what someone comes up with, there is always prior art to consider.

September 30, 2024

On September 30, 1862, Theodore Ruggles Timby. received U.S. Patent No. 36353 on “a revolving tower for defensive and offensive warfare, whether placed on land or water.”

John Ericsson incorporated Timby’s design when building the ironclad ship, Monitor, the world’s first turret battleship. Timby was paid a royalty for the use of his patent. The great military value of this invention was proven in wartime, and it was soon adopted by other nations.