Belief in Invalidity Does Not Prevent Liability for Inducement, Lack of Infringement Does

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In Commil USA, LLC v. Cisco Systems, Inc., [2012-1042] (December 28, 2015), the Federal Circuit considered the case after the Supreme Court held that belief that the patent is invalid does not negate intent to induce infringement.  Because it reversed and was remanding the case for a new trial on damages, the Federal Circuit chose not to address Cisco’s arguments that U.S. Patent No. 6,430,395 was not infringed.  Because the Supreme Court decision eliminated the need for a new trial, the Federal Circuit address Cisco’s non-infringement argument, finding them persuasive.

The district court construed the claims as requiring “for each connection of a mobile unit with a Base Station, running at the Base Station a copy of the low-level protocol supportingonly that connection and running at the Switch a corresponding separate copy of the high level protocol supporting only that connection.  The Federal Circuit was persuaded that Cisco’s system employs a single copy of the protocol to support all the connected devices. In view of this, the Federal Circuit found that a reasonable jury could not have found that Cisco’s devices run a separate copy of the protocol for each connected device, precluding liability under either direct or inducement theories.

While Cisco’s belief that the patent was invalid did not save it from liability for inducement, the fact that it was not infringing in the first place, did.

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Frustoconical – the Right Word for the Right Shape

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Another unusual pair of words that are common only in a patent attorney’s lexicon are frustoconical and frustopyramidal, meaning  truncated cone and truncated pyramid, respectively.  Frustoconical appears in the claims fo 8432 patents since 1976, frustopyramidal in only 80 patents since 1976.

If you need to describe the shape of a truncated cone, frustoconical is exactly what you need to use.  Even though the work is obscure, it is doubtful that it is any harder for a lay person to understand than “truncated cone” than frustoconical.

U.S. Patent No. 8,534,460, Fig. 2 showing a “tapering frustoconical sidewall 32”

 

Teaching Away Must Be Apparent from the Art as a Whole, and not Just Isolated Examples

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In Merck & Cie v. Gnosis S.P.A., [20140-1779] (Fed. Cir. 2015) the Federal Circuit affirmed a PTAB decision in an IPR that the claims were invalid for obviousness, rejected patent owner Merck’s arguments that the prior art taught away form the claimed method, and that objective indicia of non-obviousness further support the patentability of the claims of U.S. Patent No. 6,011,040 relating to methods of using folates to lower levels of homocysteine in the human body.

The Federal Circuit said that if all elements of the claims are found in a combination of prior art references, as is the case here, the fact finder should further consider whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have a reasonable expectation of success, and found that the Board’s finding of a motivation to combine the prior art to arrive at the claimed method was supported by substantial evidence.

The Federal Circuit rejected Merck’s argument that the prior art taught away from the combination, stating that Merck was citing isolated prior art disclosures, and that viewing the prior art as a whole.  The Federal Circuit also rejected Merck’s argument that there was no showing that a person of ordinary skill would have a reasonable expectation of success, stating that KSR does not require an explicit statement of a reasonable expectation of success in every case.  The Federal Circuit said the Board impliedly found a reasonable expectation of success, and declined to overturn the Board’s decision for failure to state expressly that a person of ordinary skill would have had a reasonable expectation of success.

With respect to objective indicia of non-obviousness, the Federal Circuit noted that even when present, however, objective indicia “do not necessarily control the obviousness determination.”  The Federal Circuit found that the Board properly considered Merck’s evidence regarding objective indicia of nonobviousness, but found that the nexus between the merits of the invention and the evidence of commercial success, licensing, copying, and industry praise was weak.  Thus, the Board’s finding that this evidence of commercial success should be afforded little weight was supported by substantial evidence.

 

 

 

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PTAB Incorrectly Determined that Claimed Element was Printed Matter where that Matter was not Claimed for its Communicative Content

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In In re Distefano, [2015-1453] (Fed. Cir. 2015), the Federal Circuit reversed the PTAB’s affirmance of the rejection of claim 24 of Distefano’s patent application, rejecting the PTAB’s determination that “one of the limitations of independent claim 24 fell within the printed matter doctrine and therefore was not entitled to patentable weight.”

Distefano claimed a method of designing web pages.  Claim 24 required:

     24. A method of designing, by a user in a user interface having first and second display regions each capable of displaying a plurality of element [sic], an electronic document, comprising:

selecting a first element from a database including web assets authored by third party authors and web assets provided to the user interface or outside the user interface by the user;

displaying the first element in the second display region;

interactively displaying the electronic document in the first display region;

modifying the first element displayed in the second display region upon receiving a first command to modify the first element in the second display region; and

displaying the modified first element in the first display region, wherein the modified first element forms at least part of the electronic document.

The parties agreed that the  elements other than the highlighted selecting limitation were anticipated, and the PTAB refused to give the selecting limitation patentable weight under the printed matter doctrine. The Federal Circuit explained that it has consistently limited the printed matter rule to matter claimed for its communicative content.  The Federal Circuit explained that only if the limitation in question is determined to be printed matter does one turn to the question of whether the printed matter nevertheless should be given patentable weight. The determination of whether printed matter is given such weight turns on whether the claimed informational content has a functional or structural relation to the substrate.

The Federal Circuit found that the PTAB erred in its application of the first step.  The Federal Circuit recognized that the selected web assets “can and likely do communicate some information” but found that “the content of the information is not claimed.”  Thus, it did not have to decide whether the printed matter should be give printed matter.

 

 

 

 

 

HOMAS L. DISTEFANO, III,

 

A “Connection” Between the Patented Feature and Consumer Demand Is Enough to Support an Injunction

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In Apple Inc. v. Samsung Electronics Co., Ltd., [2014-1802] (Fed. Cir. 2015), the Federal Circuit vacated and remanded the denial of Apple’s request for a permanent injunction.

The trial court denied Apple’s proposed injunction despite public interest favoring the injunction, and the narrowness of Apple’s proposed injunction (which tilted the balance of hardships in Apple’s favor), because these factors did not overcome Apple’s lack of irreparable harm.

Apple argued to the district court that it was irreparably harmed by Samsung’s infringement due to damage to its reputation as an innovator, lost market share, and lost downstream sales.  The district court rejected Apple’s arguments regarding irreparable harm, finding that Apple had not shown that a causal nexus connected Samsung’s infringement to these alleged injuries.

The Federal Circuit held that a causal nexus linking the harm and the infringing acts must be established regardless of whether the injunction is sought for an entire product or is narrowly limited to particular features, rejecting Apple’s argument to the contrary.

The Federal Circuit found the district erred, however, with respect to Apple’s allegations of lost market share and lost downstream sales.  The Federal Circuit said that the patent owner proving a causal nexus requires the patentee to show “some connection” between the patented features and the demand for the infringing products.  The Federal Circuit said that it was legal error for the district court to effectively require Apple to prove that the infringement was the sole cause of the lost downstream sales.  Instead, the Court should have determined whether the features “impact” customer’s purchasing decision.  The Federal Circuit said that the fact that the infringing features are not the only cause of the lost sales may well lessen the weight of any alleged irreparable harm, it does not eliminate it entirely.  Thus, the district court thus erred when it required Apple to prove that the infringing features were the exclusive or predominant reason why consumers bought Samsung’s products to find irreparable harm.

The Court concluded that on the record, applying the correct legal standard for irreparable harm, Apple has established irreparable harm.

 

 

No Need to Accentuate the Positive — Eliminate the Negative

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In Inphi Corporation v, Netlist, Inc., [2015-1179] (November 13, 3015), the Federal Circuit affirmed the BPAI decision affirming the examiner’s final decision declining to reject claims amended during inter partes reexamination to add a negative limitation. At issue in this appeal is a negative claim limitation Netlist introduced by amendment, limiting the
claimed chip selects to exclude three particular types of signals (CAS, RAS, and bank-address signals):

wherein the system memory domain is compatible with a first number of chip selects, and the physical memory domain is compatible with a second number of chip selects equal to twice the first number of chip selects, wherein the plurality of memory devices comprises double-data rate (DDR) dynamic random-access memory (DRAM) devices and the chip selects of the first and second number of chip selects are DDR chip selects that are not CAS, RAS, or bank address signals.

The Federal Circuit said that “[n]egative claim limitations are adequately
supported when the specification describes a reason to exclude the relevant limitation.” Santarus, 694 F.3d at 1351.  The Federal Circuit characterized the issue as  whether the specification of the ’537 patent provides a “reason to exclude” CAS, RAS, or bank address signals that is sufficient to satisfy the written description requirement.  The Federal Circuit quoted from Santarus that:

Negative claim limitations are adequately supported when the specification describes a reason to exclude the relevant limitation. Such written description support need not rise to the level of disclaimer. In fact, it is possible for the patentee to support both the inclusion and exclusion of the same material.

The Federal Circuit said that the “reason” required by Santarus is provided, for instance,
by properly describing alternative features of the patented invention.

The parties agreed that the disclosure in the ’537 patent distinguishes among the relevant
signal types, but disagreed about whether that distinction creates a “reason to exclude” that satisfies the requirements of § 112, paragraph 1, and the Federal Circuit held that the disclosure as an alternative was a sufficient reason to exclude.

As long as the disclosure makes a distinction, you don’t have to accentuate the positive, or eliminate the negative, the disclosure will support a negative limitation.

 

Certificate of Correction to Correct Information Not Available When Patent Issued

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Cubist Pharmaceuticals, Inc. v. Hospira, [2015-1197, 2015-1204, 2015-1259] (November 12, 2015), the Federal Circuit approved the use of a Certificate of Correction to correct information not available at the time the application was filed.

At the time the application was filed, and until well after that patent was issued, it was universally believed that the asparagine amino acid in daptomycin was the L-isomer of asparagine, as set forth in the structural diagram in the patent.  Years after the issuance of the patent researchers discovered that daptomycin actually contains the D-isomer of asparagine, not the L-isomer. Cubist sought to correct the error by requesting a certificate of correction from the Patent and Trademark Office (“PTO”) pursuant to 35 U.S.C. § 255, which was granted.

In subsequent infringement litigation with Cubist, Hospira argued that the PTO had erred by issuing the certificate of correction because the change in the structural diagram altered the substance of the claims, broadening their reach.  However, Cubist’s expert testified that the specification made it clear that the claims of the patent were directed to daptomycin, not to the variant containing the L-isomer of asparagine. Because it was plain that the claims were directed to daptomycin, it was appropriate for the PTO to correct the error in the structural diagram.

The Federal Circuit said that once the PTO has issued a certificate of correction, a
court may invalidate the certificate only upon a showing of clear and convincing evidence that it was improperly issued, which Hospira failed to do.  The Federal Circuit said that the problem with Hospira’s argument was that the district court did not view the change in the diagram as changing the scope of the claims at all. Instead, the district court regarded the change as simply conforming the structural diagram to the compound described in the specification and covered by the claims.

 

Using the Internet to Make Phone Calls is Not Patent Eligible

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In Telinit Technologies, LLC Alteva, Inc., [2:14-cv-369] (E.D. Tex. September 21, 2015), Judge Shroeder granted Judgment on the Pleadings that U.S. Patent Number 6,192,123 on a Method and Apparatus for Initiating Telephone Calls Using a Data Network is Invalid for Claiming Ineligible Subject Matter.

The Court applied the two-part test of Alice, first determining whether the claims at issue are directed towards one of the three patent-ineligible concepts, and then considering whether the elements of each claim both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent-eligible application.

The Court first considered claim 1, directed to “a method for initiating telephone calls on a voice network in response to requests from a data network comprising the steps, performed by a processor.”

The Court rejected Telnit’s reliance on DDR Holdings, finding that the claim “describes a well-known and widely-understood concept—making a telephone call—and then applies that concept to the Internet using conventional computer components as an intermediary to place and monitor the telephone calls.”

The Court found the claim more analogous to the claims from the asserted patent in Dick’s Sporting Goods.Telinit challenged the assertion that the claim is abstract because “because a human being would be unable to receive a ‘data request’ or monitor a telephone call originating from the Internet.” The Court responded that taking an otherwise abstract idea and applying it to the Internet does not transform the claim into patentable subject matter, and found that the remaining stepsare tasks that human beings, such as telephone operators, have been doing for the past century.  The Court further noted that the claim does not contain any specific structural components—beyond a generic “processor” and generic “networks”—that remove it from the realm of an abstract idea.

The Court continued its analysis to determine whether the claims nonetheless disclosed an inventive concept.  The Court said, that even accepting the structures and corresponding functions identified by Telinit as those most favorable to Telinit, none, taken individually or in combination, transform the claim so as to cover an inventive concept. The primary structures identified by Telinit result in nothing more than generic computer and Internet based elements—“processor” and “networks.” Moreover, claim 1 does not direct the generic elements to a specific application beyond “receiving,” “identifying,” “signaling,” “monitoring,” or “providing” information. Consequently, the Court found that claim 1 does not contain any transformative elements, either alone or in combination, that transforms its abstract idea into patentable subject matter.

The Court also considered the application of the Machine-or-Transformation Test.  The Court noted that Bilski made it clear that the machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process, but noted tht it is a useful and important clue, an investigative tool, for determining patentability. The Court found that the patent was not tied to a particular machine or apparatus, and it did not operate to change articles or materials to a different state or thing.  Accordingly, the Court found that the machine-or-transformation test did not aid the Court in determining whether or not the claims recite patent-eligible subject matter.

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Inconsistent Positions: Never as Good in Practice as in Theory

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In Smith v.Orbcomm. Inc. [2:14-CV-666 (E.D. Tex. 2015), Judge Gilstrap invalidated as indefinite two claims of U.S. Patent No. 6,611,686 on a system of remotely tracking vehicles and cargo, rejecting the patent owner’s argument that the claims contained a typographical error that the court had the authority to correct in view of the patent owner’s alternative construction for the erroneous claim language.

The patent owner argued that the phrase “inputs to be controlled” in claims 15 and 48 contain an obvious typographical error that the court should correct to “inputs to be monitored,” explaining that the language arose from errors apparent in the prosecution.  In the alternative, the patent owner proffered an interpretation for the claims as written.

The found that the phrase “said inputs to be controlled” lacks antecedent basis in claim 15
and 48.  The district court found that in view of the patent owner’s alternate construction, this language could not be regarded as an obvious typographical error.  Furthermore the court noted the patent owner’s failure to obtain a Certificate of Correction.finding the patent owner’s arguments and actions show that correction is subject to reasonable debate. and thus not correctable by the court..  In addition, the court found that the error was not evident from the face of the patent, another requirement for the court to make the correction.

While FRCP 8(d)(2) allows pleading in the alternative, the court found the patent owner’s inconsistent position on claim construction prevented the correction that it sought, concluding thatt “Plaintiff cannot have it both ways.”