Archive for December, 2009

Injunction Against Microsoft Word Affirmed

December 22, 2009

This summer, a district court in the Eastern District of Texas issued a permanent injunction against Microsoft ordering it to stop selling versions of Word that include an XML editor.  Needless to say, this created a firestorm by potentially disrupting Microsoft’s flagship product.  The Federal Circuit stayed the injunction while it heard the appeal in the case.

The Federal Circuit has now affirmed the jury’s finding that Microsoft willfully infringed U.S. Patent No. 5,787,449, that the patent is not invalid, a damage award of $240 million, and the permanent injunction.  i4i Partnership v. Microsoft Corp.

The Injunction

The only issue that was not affirmed by the Federal Circuit in its entirety was the permanent injunction.  The Federal Circuit altered the effective date from 60 days after the district court’s judgment to 5 months after the judgment.  Thus, the injunction takes effect January 11, 2010.  The court characterized the injunction as narraw because it does not affect copies of Word sold or licensed prior to the effective date of the injunction, nor is Microsoft prohibited from providing support for copies sold prior to that date.  Microsoft is not required to provide a fix to copies of Word sold or licensed prior to the effective date.  Microsoft is simply barred from selling, offering for sale, importing, or using copies of Word containing the infringing XML editor after the effective date.

Microsoft may request a further stay of the injunction while it petitions the court to rehear the case en banc or should it decide to petition the Supreme Court to review the case.  The likelihood of such a stay being granted seems fairly small now that the infringement has been affirmed by a panel of the Federal Circuit.


Federal Circuit Finishes Off Point of Novelty Test

December 21, 2009

Last year in Egyptian Goddess, the Federal Circuit ruled that the point of novelty test should no longer be used as the test for infringement of design patents.  Instead, the ordinary observer test should be used.  In that case, the court left open the question of which test should be used to determine validity of a design patent.

Last week, the Federal Circuit determined in International Seaway Trading Corp. v. Walgreens Corp. that only the ordinary observer test should be used for determination of invalidity of a design patent as well.  Thus, it appears that the point of novelty test has been eliminated completely.

Previously, the tests for design patent invalidity and infringement had included both the ordinary observer test and the point of novelty test.  In applying the ordinary observer test, the court would compare the patented design with the accused device to determine infringement, and the patented design to the prior art reference to determine validity. 

In applying the point of novelty test for infringement, the court would determine whether the accused design appropriated the points of novelty of the patented design.  To determine the points of novelty, the patented design was compared to the prior art.  For validity, the court would compare the patented design with the prior art reference to determine whether the patented design appropriated the points of novelty of the prior art reference.

In Egyptian Goddess, the Federal Circuit abandoned the point of novelty test for design patent infringement and held that the ordinary observer test is the sole test for design patent infringement.  The ordinary observer was “deemed to view the differences between the patented design and the accused product in the context of the prior art.”  The court determined that the two tests sometimes lead to conflicting results.

In International Seaway, the Federal Circuit held that for the same reason that the point of novelty test was no long applicable for infringement determinations, the sole test for anticipation in design patent cases is the ordinary observer test.  The Federal Circuit did remand the case to the district court because it misapplied the ordinary observer test in this case.

Means-Plus-Function Claiming, Expert Opinions

December 16, 2009

For many years, patent attorneys interpreted claims that included “means-plus-function” language as being very broad because it was not necessary to include the actual structure that performs the function in the claim.  For a long time now, the Federal Circuit has ruled that this interpretation is incorrect.  In fact, the opposite is true.  Such claim language is actually construed much more narrowly than claims including structure.

Means-plus-function clauses are permitted in claims by 35 U.S.C. § 112, ¶ 6:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

The Federal Circuit has interpreted this provision to mean that “means-plus-function” clauses cover the exact structure described in the specification as performing the precise function described in the claim, as well as reasonable equivalents thereof.  Based on this interpretation, one can immediately see why the use of “means-plus-function” clauses in patent claims has decreased significantly in recent years.  If the specification is not carefully written, such clauses are fraught with peril.


The Federal Circuit has invalidated numerous patents through the years for failure to comply with these statutory provisions.  For example, if the specification does not include structure corresponding to the function described in the claim, the claim is invalid.  If the specification describes the function somewhat differently from the function described in the claim, there can be no corresponding structure.  When no structure is identified in the specification as corresponding to the function recited in the claim, the claim does not fulfill various parts of § 112.

The original claims are considered a part of the written description of the invention.  Thus, if a structure is included in the claims, but is omitted from the specification, it can be added to the specification without violating the prohibition against adding new matter or new material after the application is filed.  For a claim that contains a means-plus-function clause, however, if the structure is omitted from the specification, it cannot be added later because it was by definition absent from the original claim as well.


As if that weren’t enough, the Federal Circuit issued an opinion on Monday that the patent owner had failed to prove infringement of a claim that includes means-plus-function language.  Intellectual Science and Technology, Inc. v. Sony Electronics, Inc.

Intellectual Science sued Sony and other defendants for infringement of U.S. Patent No. 5,748,575.  Claim 1 of the ‘575 patent reads:

An information processing apparatus with multitasking function, the information processing apparatus comprising:

(a) a plurality of turntables, each comprising a disc-setting table for mounting an optical disc;

(b) a plurality of optical units, each comprising a driving means and an optical read head, wherein said driving means is provided for moving said optical read head in a radial direction of said optical disc to a predetermined disc position on a surface of said optical disc;

(c) means for simultaneously controlling a plurality of said driving means to move a plurality of said optical read heads to a plurality of predetermined disc positions on at least two optical discs for retrieving information stored thereon;

(d) a plurality of signal-process systems for converting a plurality of information sets retrieved by said plurality of optical read heads from a compact disc format to the original state of the information; and

(e) data transmitting means for transmitting a plurality of the information sets converted by said plurality of signal-process systems to a host computer.

The “data transmitting means” of clause (e) was at issue on appeal.  The parties basically agreed on the claim construction of this clause.  They agreed that it was a “means-plus-function” clause, they agreed on its function, and they agreed on the corresponding structure in the ‘575 patent.  The district court, however, issued a ruling of summary judgment of non-infringement in the defendants’ favor because the Intellectual Science’s expert did not demonstrate specific structure in the defendants’ devices that corresponded to this limitation.

The Federal Circuit affirmed, holding that the expert’s opinion was insufficient to satisfy the summary judgment standard.

To satisfy the summary judgment standard, a patentee’s expert must set forth the factual foundation for his infringement opinion in sufficient detail for the court to be certain that features of the accused product would support a finding of infringement under the claim construction adopted by the court, with all reasonable inferences drawn in favor of the non-movant.

The court held that the expert’s opinion was conclusory and unsupported by evidence.  He did not pinpoint where this claim element was found in the accused device.  Intellectual Science argued that this element was an “off-the-shelf” component, presumably meaning that it was common in many devices.  The court found that this did not satisfy the requirement of proving that each limitation of the claim is found in the accused device.

Without that further identification and explanation, a reasonable juror would not be able to determine that those allegedly infringing components are actually present.

It was necessary for Intellectual Science’s expert to identify the specific structure in each accused device that performed the exact function described in the claim, and, show that this structure is the same as or equivalent to the structure described in the ‘575 patent specification.  The expert did not fulfill this obligation.


The lessons here are two-fold.  First, be very careful when using means-plus-function language in claims.  Such clauses should be used rarely and only in circumstances where it is necessary.  The patent should also include other claims that do not contain means-plus-function language.  When using the language, be certain that the specification is well drafted and that it contains specific structure that performs the function recited in the claim.

The second lesson is more general and applies even to patents that do not include means-plus-function claims.  To prove infringement, and even to survive summary judgment, it is necessary for the evidence to specifically demonstrate infringement of each claim limitation.  Expert declaration or testimony must show this with particularity and not in a merely conclusory way.  The purpose of an expert witness is to help the court and the jury to understand his party’s position.  When the expert renders conclusory opinions that are not supported by particular facts and evidence, he has not fulfilled this purpose.

Is There Any Limit Left on Declaratory Judgment Jurisdiction?

December 8, 2009

Last week, the Federal Circuit reversed a district court’s dismissal of a declaratory judgment complaint against a patent holding company in Hewlett-Packard Co. v. Acceleron LLC.

Declaratory Judgment

A party may file a “declaratory judgment” action against a patent owner where it asks the court for a declaration that it does not infringe a patent or that the patent is invalid or unenforceable.  A party may not, however, simply go through the patent database and file such actions against any patent it does not like (at least not yet).  There needs to be an actual “case or controversy” between the parties.  Previously that meant that the patent owner had asserted infringement against the party that files the suit.  The bar to such actions continues to get lower.

HP v. Acceleron

Acceleron, a patent holding company, acquired ownership of U.S. Patent No. 6,948,021.  Acceleron sent a letter to HP to “call [HP’s] attention to” the patent.  Acceleron requested to discuss the patent with HP, but asked that HP agree that all information exchanged would not be used for litigation purposes and that HP agree that Acceleron has not asserted the patent against it and no declaratory judgment jurisdiction exists between the parties. 

HP responded by stating that it would agree to a mutual 120-day period when no lawsuit would be filed by either party and that it would send such an agreement to Acceleron.  Finally, Acceleron reponded to this correspondence by stating that it did not believe that any basis for declaratory judgment jurisdiction existed, so no such agreement was necessary.  As if to test this point, HP then filed a declaratory judgment action.

The district court agreed with Acceleron and dismissed the case.  The Federal Circuit, however, reversed.

The court noted that the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., wittingly or not, lowered the bar for declaratory judgment actions.  Although the court did note that there is still a slight bar after that case.

[A] communication from a patent owner to another party, merely identifying its patent and the other party’s product line, without more, cannot establish adverse legal interests between the parties, let alone the existence of a “definite and concrete” dispute. More is required to establish declaratory judgment jurisdiction. 

That quotation would seem to support an affirmance, right?  The court spent the remainder of its opinion pointing to facts that fulfilled the “more” requirement.  The circumstances the court noted were that Acceleron had indicated that the patent was “relevant” to a specific HP product line and that Acceleron is solely a licensing entity.  “[W]ithout enforcement it receives no benefits from its patents.”  The court found that this to be an important factor in finding jurisdiction.

Is Anything Left?

In a word–no.  The court did recognize that “[o]ur decision in this case undoubtedly marks a shift from past declaratory judgment cases,” but then blamed this on MedImmune.  The only case left to test seems to be simply putting the patent in an envelope and sending it with no letter whatsoever.  I am not confident that the court would not find jurisdiction in that case either.

Does the Patent Act Include a Written Description Requirement Separate From the Enablement Requirement?

December 7, 2009

This afternoon, the 11 active judges of the Federal Circuit will hear argument in Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co.  The issue is whether 35 U.S.C. § 112, ¶ 1 contains a written description requirement that is separate from the enablement requirement.

A patent must include a description that would enable one of ordinary skill in the art to make and use the invention.  This is the disclosure part of the bargain for which we grant the limited monopoly of a patent.  Without the incentive of a patent, many inventions might be kept secret.  To ensure sufficient disclosure of the invention to the public in exchange for the limited monopoly, the patent must be enabling.

Is there a separate requirement that the patent contain a written description of the invention to ensure that the inventor was “in possession” of the invention at the time he invented it?  If so, what does that mean?

The problem is that the statute is not written as a model of clarity.

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

Two Interpretations of the Statute

One way to read the statute is that the specification shall include a written description (1) of the invention, and (2) of the manner and process of making and using it.  What does it mean to describe the invention other than by the manner and process of making and using it?  Does this mean that examples are required?  If so, how many?  Does this mean that actual reduction to practice of the invention is required?  Is a working model or prototype a requirement?

Or does this mean that the patent must describe exactly how the invention works?  Sometimes the inventors do not know exactly why a new discovery or invention works the way it does.  This can be especially true in the case of a relatively new discovery or endeavor.  They know what they did, but are not sure of the scientific explanation of why they achieved the result they did.  It may take years of additional testing and experimentation to determine how or why the invention works as it does.  They may still, however, be able to adequately describe how to make and use the invention, just not how or why it works.  Should they be denied patent protection for their discovery?

Another way to read the statute is simply to read it as requiring a written description that enables one of ordinary skill in the art ot make and use the invention.  Unless such a description is inadequate or would require undue experimentation to reproduce, examples, working models, and prototypes are not required.  Moreover, it is not necessary for the inventor to know why the invention works as it does in order to gain patent protection for it.

Which of these views is correct?  There has been disagreement in recent years on the issue at the Federal Circuit.  This afternoon, the court will begin trying to answer this question.

Federal Circuit Uses KSR’s “Common Sense” Test to Affirm Invalidity

December 3, 2009

Yesterday, the Federal Circuit issued an opinion in Perfect Web Technologies, Inc. v. InfoUSA, Inc. affirming that claim 1 of U.S. Patent No. 6,631,400 is invalid as obvious.

The ‘400 patent relates to sending bulk marketing e-mails to targeted customers.  Claim 1 reads as follows:

1. A method for managing bulk e-mail distribution comprising the steps:

(A) matching a target recipient profile with a group of target recipients;

(B) transmitting a set of bulk e-mails to said target recipients in said matched group;

(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and,

(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.

The patent owner conceded that steps (A)-(C) were in the prior art, so the only issue on appeal was regarding step (D).  The defendant conceded that step (D) was not in the prior art.  The claim basically covers a method of sending out bulk e-mails.  Step (D) refers to the situation that if fewer messages are sent than were originally planned, repeat steps (A)-(C).  The district court had construed step (D) to mean simply “try, try again.”

On appeal, the patent owner argued that there was no evidence in the record that step (D) was known in the art; the district court had simply used its own hindsight judgment to determine obviousness.  The Federal Circuit relied on the Supreme Court’s KSR decision that referred to using what is known to one of ordinary skill in the art and also to “common sense” to determine whether a patent claim is obvious.

We therefore hold that while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.

[O]n summary judgment, to invoke “common sense” or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.

The Federal Circuit characterized the claim as a simple repitition of a known procedure until success is achieved.  It’s hard to imagine anything more obvious.

The court also noted that the claim is invalid as “obvious to try,” another KSR mantra.  When there are only a finite number of identified, predictable solutions to attempt, it is obvious to try the known choices.  In this case, the problem was not sending as many messages as desired.  The only potential solutions were to oversend messages, resend to addresses that had failed delivery, or identify new addresses to which to send messages.  With these being the only choices, step (D) of claim 1 was “obvious to try.”


The district court had also held the patent claims invalid as directed to unpatentable subject matter under § 101, a holding that the Federal Circuit did not address.  For those of us that believe in a broad range of patentable subject matter, a strong application of the other patentability requirements, such as enablement, anticipation, and obviousness, is essential.  It seems that KSR and decisions like Perfect Web should lead us in that direction.  Let’s hope the Supreme Court doesn’t also squeeze patentability from the other end.

USPTO Annual Performance Report

December 2, 2009

The PTO has released its Annual Performance Report for FY 2009 and the news is not good. 

The report describes FY 2009 as a time of economic crisis at the PTO.  The agency anticipated fee collections for FY 2009 at $2.0101 billion, but due to decreased patent filings and maintenance fee payments collected only $1.8742 billion.  That left the PTO with a budget shortfall of $135.9 million, or 6.8% of forecasted revenue.  Indeed, the total number is lower in FY 2009 than FY 2008 when collections were $1.8793 billion.

Pendency and Backlog

On the patent pendency front, average time to first Office Action increased from 25.6 months to 25.8 months, and total pendency increased from 32.2 months to 34.6 months.  Not surprisingly, the PTO met its goals that it set for these actions of 27.5 and 37.9 months, respectively.  The PTO always seems to set ridiculously easy goals for itself that it can easily meet.  The increase in time to first action is fairly small at less than 1%, but the increase in total pendency is about 7.5%. 

The PTO is obviously not making any progress toward P-PAC’s unrealistic goal of 24 month pendency by the end of FY 2010 or Commerce Secretary Locke’s goal of 10 months to first action and 20 months total pendency.  And, as we know, the pendency numbers don’t take into account RCEs and continuation applications.  The PTO counts these as new filings, significantly reducing their numbers.  In its annual report, P-PAC recommends changing the pendency definition to track from an application’s actual first filing to its final disposal, i.e., final issuance or abandonment including RCEs and continuations.

Regarding its backlog, the PTO notes a slight decrease in the backlog of unexamined applications.  At the end of FY 2009, there are 1,207,794 applications pending, down from 1,208,076 at the end of FY 2008, a negligible decrease.  There are now 735,961 applications awaiting examiner action, down more significantly from 771,529, a decrease of 4.6%.  The decrease in numbers is due to the fact that the PTO disposed of 487,140 patent applications, an increase of about 23% from FY 2008!  How it accomplished this is a bit of a mystery given the numbers on examiners.

Examining Corps

The report laments the hiring freeze and reduction in examiner overtime as part of the cause for the increase in pendency.  While the examining corps numbered 6,099 at the end of FY 2008, the PTO’s 2009 report puts the number at 6,243, for an increase of about 2.4%.  In recent years, the size of the examining corps has increased by over 10% annually, usually 13-14%.  The PTO’s goal is to have 8,400 examiners by 2014.

Application Filings and Maintenance Fees

The PTO only has preliminary data for FY 2009 patent filings, but estimates them to be at 485,500, a decrease of 2.3% from FY 2008.  Trademark filings were down even more dramatically, dropping 12.3%.  After a decrease last year, the PTO issued 190,121 patents in FY 2009, a 4% increase from FY 2008.

On the maintenance fee front, the PTO puts renewal rates for the 1st, 2nd, and 3rd maintenance fees at 80.3%, 63.5%, and 45.4% respectively, down from 83.1%, 73.7%, and 49.2% from FY 2008.  This also contributed to the PTO’s budget shortfall.


The number of ex parte reexamination requests was down in FY 2009 to 658.  The PTO granted 574 of 614 requests on which a determination was made in FY 2009, a grant rate of 93.5%, which is actually a bit of a decrease from the last couple of years.

The number of inter partes reexamination requests was up to 258 from 168, an increase of 53.6%.  The PTO granted 218 of 229 requests on which a determination was made in FY 2009.  The grant rate for inter partes reexaminations is 95.2%, which is fairly consistent with the yearly average.


Finally, the crisis at the Board of Appeals:  at the end of FY 2008, 3,956 cases were pending.  The Board decided 6,862 cases.  Pretty good, right?  Unfortunately, 15,483 new appeals were filed in FY 2009, leaving a new total of 12,577 cases pending.  This backlog will have a significant effect on appeal pendency and whether applicants should even consider filing an appeal.

Of the decided cases, 3,574 (52.1%) were affirmed, 961 (14%) were affirmed-in-part and reversed-in-part, 1,732 (25.2%) were reversed, 131 (1.9%) were dismissed or withdrawn, and 464 (6.8%) were remanded to the examiner.