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Patent
Law:
Inventorship:
Olivia N.
Serdarevic, M.D. v. Advanced Medical Optics et al,
2008-1075 (CAFC, July 16, 2008)
The
plaintiff, Olivia N. Serdarevic, M.D.
("Serdarevic"), brought a lawsuit against the
defendant claiming that she was the inventor or co-inventor of
technology related to laser vision correction surgery.
The District Court held that Serdarevic's inventorship claim
was barred by laches and her state-law claims were barred by
the applicable statutes of limitations. The Court of
Appeals for the Federal Circuit ("CAFC")
affirmed the District Court's holding. Serdarevic had
learned of the issuance of the patents-in-suit but did not
file a lawsuit until nearly eight years later, which is beyond
the six year presumption of laches period. The CAFC
rejected Serdarevic's argument that a reexamination resets the
six year presumption of laches period. The CAFC
clarified that Vaupel Textilmaschinen KG v. Meccanica Euro
Italia S.P.S. 944 F.2d 870 (Fed. Cir. 1991) may apply to
excuse the delay of an infringement action, because,
for one thing the infringer knew of and participated in the
reissue proceedings. In this case, the defendants were
involved in reexamination proceedings, not Serdarevic.
The CAFC held that "there is no rule that the issuance
of a reexamination certificate automatically resets the
six-year clock for the presumption of latches in each and
every case."
The
CAFC also rejected Serdarevic's argument that the inability
for her to retain an attorney on a contingency basis excused
her delay. Nor did her ongoing efforts to license her
inventorship rights justify the delay.
The
six-year state statute of limitations period was also found to
have passed and her state law claim of fraud was also barred.
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Inequitable Conduct/Indefiniteness:
Star Scientific v. RJ Reynolds Tobacco
Company,
2007-1448 (CAFC, August 25, 2008)\
The
CAFC reversed the district court's holding of inequitable
conduct because it was based on factual findings that were
clearly erroneous. The district court's holding that the
claim term in issue ("anaerobic condition") in US
Patents 6,202,649 ("the '649 patent") and 6,425,401
("the '401 patent) was not indefinite.
Inequitable
Conduct:
The
CAFC held that with respect to the '649 patent, the district
court erred in finding that RJ Reynolds ("RJR") had
proven that Williams and Star, of Star Scientific, had an
intent to deceive the US Patent and Trademark Office
("PTO").
Regarding the '401 patent, the CAFC held that the district
court erred in finding the information contained in the Burton
letter and Curran data was material. The CAFC emphasized
that "courts must be vigilant in not permitting the
defense [of inequitable conduct] to be applied too
lightly. Just as it is inequitable to permit a patentee
who obtained his patent through deliberate misrepresentations
or omissions of material information to enforce the patent
against others, it is also inequitable to strike down an
entire patent where the patentee only committed minor missteps
or acted with minimal culpability or in good faith."
Information
that is later found to be material which was not disclosed,
cannot by itself, satisfy the deceptive intent element of
inequitable conduct. In order to prevail on the defense
of inequitable conduct, the accused infringer must prove by
clear and convincing evidence that the material information
was withheld with the specific intent to deceive the PTO. Also, "the more
material the omission or the misrepresentation, the lower
[the] level of intent [is] required to establish inequitable
conduct, and visa versa." citing Critikon, Inc. v.
Becton Dickinson Vascular Access, Inc., 120 F.3d 1253,
1256 (Fed. Cir. 1997).
The
district court's finding of deceptive intent as to both
patents-in-suit was based primarily on its acceptance of RJR's
theory that Williams and Star conspired to deliberately
prevent Delmendo and his colleagues at the Sughrue law firm
from disclosing the Burton letter to the PTO by replacing them
with the Banner law firm and purposely keeping the Banner law
firm ignorant of the Burton letter. The CAFC held that the RJR
"quarantine" theory was not supported by clear and
convincing evidence and as a result, the CAFC held that the
district court's finding of deceptive intent with regard to
the '649 patent was clearly erroneous.
Indefiniteness:
A
claim term is not indefinite just because "it poses a
difficult issue of claim construction." Exxon
Research & Eng'g Co. v. United States, 265 F3d 1371,
1375 (Fed. Cir. 2001). Rather, the standard is whether
"the claims [are] amenable to construction, however
difficult the task may be." Id. By finding claims
indefinite only if reasonable efforts at claim construction
prove futile, we accord respect to the statutory presumption
of patent validity..." Id.
The
district court construed the term "substantially prevent
the formation of at least one nitrosamine" to mean
"the level of at least one of the nitrosamines falls
within the following ranges: less than about 0.05 μg/g
for NNN, less than about 0.10 μg/g for NAT plus NAG, and
less than about 0.05 μg/g for NNK." Markman Order,
slip op. at 2. In other words, the district court was able to
discern from the intrinsic record that TSNA formation, as
contemplated by the asserted patents, is tied to highly
specific measurements of four very specific chemical
compounds. The CAFC therefore held, "far from being
insolubly ambiguous, a skilled artisan could determine whether
an "anaerobic condition" was present—or, rather,
was prevented—simply by measuring the levels of NNN, NAT,
NAG, and NNK." The CAFC concluded that the term
"anaerobic condition" clearly delineated the bounds
of the claim scope and thus it is not indefinite.
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Claim construction/Damages after
Notice:
DSW, Inc. et al v. Show Pavilion,
Inc., 2008-1085 (CAFC, August 19, 2008)
The
CAFC held the district court erred by construing claims 4-6 of
the ’622 patent to include the
track and roller configuration limitation recited in claims
1-3, and by misapplying Wine Railway Appliance Co. v.
Enterprise Railway Equipment, 297 U.S. 387 (1936). The
CAFC vacated the district court's ruling and remanded.
The
CAFC found that the district court erroneously imported the
Track and Roller Limitation directly recited in claims 1-3
into the generally phrased "vertically disposed,
horizontally movably positionable stack divider" language
of claims 4-6. First, absent contravening evidence from the
specification or prosecution history, plain and unambiguous
claim language controls the construction analysis. citing Northern
Telecom Ltd. v. Samsung Elecs. Co., 215 F.3d 1281, 1295
(Fed. Cir. 2000) ("The plain and ordinary meaning of
claim language controls, unless that meaning renders the claim
unclear or is overcome by a special definition that appears in
the intrinsic record with reasonable clarity and
precision."
The
CAFC found that on its face, the "horizontally movably
positionable stack divider" disputed language in claims
4-6 means that the vertically disposed stack dividers must be
capable of being moved into different horizontal positions in
the footwear display. Although broad, this claim language is
not ambiguous. Also, nowhere does the prosecution
history show an express disclaimer by DSW over a method of
displaying footwear not involving the Track and Roller
Limitation. To the contrary, the examiner allowed claims 4-6
without objection, concluding that the prior art does not
teach or suggest a method of displaying at least two footwear
styles using the particular stacking of containers and stack
dividers recited in independent claim 15 (issued as claim
4). The case was remanded to the district court to be
consistent with the claim construction provided by the CAFC.
Regarding
damages, the CAFC held that the district court misapplied the
standard expressed by the Supreme Court in Wine Railway,
which held that under the predecessor statute to the notice
provision of 35 U.S.C. § 287, a patentee who failed to mark
his patented article with the appropriate patent number could
only recover damages for infringement occurring after actual
notice was provided the infringer. Wine Ry., 297 U.S.
at 393-94. The issue was whether Shoe Pavilion was
liable for damages to DSW for infringement occurring subsequent
to receipt of actual notice, and Wine Railway flatly
states that a patentee may indeed recover damages for
infringement that continues after actual notice is provided. Wine
Ry., 297 U.S. at 393-94. Without a doubt, the law offers
an infringer no exception to liability for the time it takes
to terminate infringing activities, no matter how expeditious
and reasonable its efforts. See In re Seagate Tech., Inc.,
497 F.3d 1360, 1368 (Fed. Cir. 2007) (en banc) ("Because
patent infringement is a strict liability offense, the nature
of the offense is only relevant in determining whether
enhanced damages are warranted."). The trial court
therefore erred in concluding that Shoe Pavilion’s
reasonable steps and good faith efforts to bring its
infringing activity to a timely end equated to an immediate
cessation. Thus, if the patents at issue are valid, damages
are owed on the design for the 6-7 months of continued
infringement while Shoe Pavilion phased out use of the
displays in its stores.
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Claim
Construction:
John A. Helmsderfer et al. v. Bobrick Washroom Equipment, Inc. et
al., 2008-1027 (CAFC, June 4, 2008)
Plaintiffs-Appellants
Helmsderfer and Brocar Products ("Brocar") appealed
the judgment of the district court, which held that
Defentants-Appellees, Bobrick Washroom Equipment et al.
("Bobrick"), did not infringe claims 6 and 7 of
Brocar's US Patent 6,049,928 ("the '928
patent"). The CAFC affirmed the district court.
The
'928 patent is directed to baby diaper changing stations that
are able to resist vandalism, for example during use in public
restrooms.
Brocar
appealed the district court’s construction of only one term,
"partially hidden from view." The district court
construed the term as "hidden from view to some extent
but not totally hidden from view." Brocar
argued that the district court erred as a matter of law when
it construed that term to exclude totally hidden from view.
Brocar proposed that the term should be defined as
"positioned so at least some of the top surface is
blocked from being seen." The CAFC disagreed with
Brocar, because the specification never used the term
"partially hidden from view" to describe the
platform top surface. The only place where the platform
is described as "partially hidden from view" was in
claim 1.
The
CAFC also relied upon the district court's legitimate reliance
upon dictionary definitions of the term "partially hidden
from view" wherein the term "partially" is
defined as "to some extent" and "to a degree;
not totally" and "in a partial way or degree, as
opposed to totally; to some extent; in part; incompletely;
restricted; partly." This also supported the
district court's opinion that the ordinary and customary
meaning of the term "partially" excludes
"totally".
The
result of the appeal was that Bobrick's products did not
infringe the claims as construed.
Personal
Jurisdiction:
Medical Solutions, Inc. v. C Change Surgical
LLC, 2007-1163 (CAFC, September 9, 2008)
C
Change Surgical LLC ("CCS") develops and
commercializes an operating room device referred to as
IntraTemp, which is a mobile workspace that controls the
temperature of surgical fluids. According to Medical
Solutions, Inc. ("MSI"), IntraTemp infringes two of
MSI's patents, of which CCS had notice.
CCS
moved to dismiss MSI's complaint from the Federal District
Court for the District of Columbia under Rule 12(b)(2) for
lack of personal jurisdiction. MSI asserted that
personal jurisdiction existed in the District of Columbia
because CCS promoted, showed, and used the allegedly
infringing IntraTemp product at an industry trade show hosted
by the Association of periOperative Registered Nurses ("AORN"),
which was held in Washington, D.C. between March 19 and March
23, 2006. CCS was one of approximately 600 exhibitors at the
AORN trade show. CCS had its own booth, which displayed a
"large and visible" sign advertising the allegedly
infringing product. CCS representatives working at the booth
discussed the IntraTemp product with potential customers and
showed how parts of the device functioned. Brochures
describing IntraTemp were available. MSI alleged, without
dispute, that CCS later placed the IntraTemp product in two
hospitals – one in Maryland, and the other in Georgia - as a
direct result of its marketing at the trade show.
CCS
responded that it was not registered to do business in the
District of Columbia, nor did it have sales agents, employees,
offices, manufacturing facilities, bank accounts, or telephone
listings there. It neither owned nor controlled anything of
value in the District nor did it manufacture, use or sell any
products in the District. CCS neither directed marketing
efforts at the District nor generated any revenue from there.
CCS’s website is accessible from the District of Columbia;
however the website included no interactive features and is
not specifically targeted to residents of the District.
The
CAFC affirmed the district court's dismissal because courts
addressing the question of whether a defendant has
"used" a patented invention have held that "the
mere demonstration or display of an accused product, even in
an obviously commercial atmosphere" is not an act of
infringement for purposes of ' 271(a). Fluid Mgmt. Ltd. P’ship
v. H.E.R.O. Indus., Ltd., No. 95-5604, 1997 WL 112839, at
*4 (N.D. Ill. Mar. 11, 1997) (quoting Intermedics, Inc. v.
Ventritex, Inc., 775 F. Supp. 1269, 1286 (N.D. Cal. 1991)
(concluding that absent concurrent sales-oriented activity
which results in, or at least substantially advances, an
actual sale, the demonstration of an accused product at a
scientific trade show does not constitute an infringing
"use")); see also Brennan v. Mr. Hanger, Inc.,
479 F. Supp. 1215, 1231 (S.D.N.Y. 1979) (noting that the mere
display of the infringing hanger bars would not constitute an
infringing "use"). However, a demonstration of an
accused device plus the simultaneous solicitation of purchase
orders has been held to amount to a sufficient degree of
"selling" activity. See U.S. Envtl. Prods., Inc.
v. Infilco Degremont, Inc., 611 F. Supp. 371 (N.D. Ill.
1985). The CAFC held that holding is inapposite here since MSI
hangs its hat on the "uses" rather than the
"sells" prong of ' 271(a).
MSI’s
patented technology pertains to systems for warming and
controlling the temperature of medical and surgical items. At
the trade show, CCS displayed a prototype of its product,
staffed its booth with representatives, and made available
brochures about the product. But none of these activities was
putting the IntraTemp device into service. According to
the CAFC, much more would be needed to qualify as an
infringing use, including that the device was used to heat
medical items at the show.
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Copyright
Law:
Open Source Copyright
Licenses:
Robert Jacobsen v. Mathew Katzer et
al.,
2008-1001 (CAFC, August 13, 2008)
Robert
Jacobsen ("Jacobsen") appealed from an order denying
a motion for a preliminary injunction. Jacobsen holds a
copyright to computer programming code, which he makes code
available for public download from a website without a
financial fee pursuant to the Artistic License, an "open
source" or public license. Appellees Matthew Katzer
and Kamind Associates, Inc. (collectively
"Katzer/Kamind") develop commercial software
products for the model train industry and hobbyists. Jacobsen
accused Katzer/Kamind of copying certain materials from
Jacobsen=s website and incorporating them into one of Katzer/Kamind's
software packages without following the terms of the Artistic
License. Jacobsen brought an action for copyright infringement
and moved for a preliminary injunction.
In
this case the CAFC found that Jacobsen expressly stated the
terms upon which the right to modify and distribute the
material depended and invited direct contact if a downloader
wished to negotiate other terms. The restrictions were both
clear and necessary to accomplish the objectives of the open
source licensing collaboration, including economic
benefit. Moreover, copyright holders who engage in open
source licensing have the right to control the modification
and distribution of copyrighted material.
The
CAFC remanded the case to the district court and rationalized
its holding based on the following:
The
attribution and modification transparency requirements
directly serve to drive traffic to the open source incubation
page and to inform downstream users of the project, which is a
significant economic goal of the copyright holder that the law
will enforce. Through this controlled spread of information,
the copyright holder gains creative collaborators to the open
source project; by requiring that changes made by downstream
users be visible to the copyright holder and others, the
copyright holder learns about the uses for his software and
gains others' knowledge that can be used to advance future
software releases.
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Trademark
Law:
Duty
to Police Trademarks on the Internet:
Tiffany
(NJ) Inc. and Tiffany and Company v. Ebay, Inc. (US
District Court, Southern District of NY, No. 04 Civ. 4607 (RJS))
Tiffany
sought liability against Ebay for direct and contributory
trademark infringement, unfair competition, false advertising,
and direct and contributory trademark dilution, on the grounds
that Ebay facilitated and allowed these counterfeit items to
be sold on its website.
The
Court ultimately held that "it is the trademark
owner's burden to police its mark, and companies like Ebay
cannot be held liable for trademark infringement based solely
on their generalized knowledge that trademark infringement
might be occurring on their websites."
In
its 66 page opinion the Court reasoned that Ebay only used the
mark TIFFANY to identify TIFFANY's goods and the TIFFANY
goods, namely jewelry, was not readily identifiable without
the use of the TIFFANY trademark. Such a nominative use
was protected under the fair use doctrine. Also, not all
of the goods sold under the mark TIFFANY were counterfeit
goods. It was important to the Court that when Ebay
became aware of the existence of counterfeit goods, it took
steps to close the offending merchant's
auction.
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