Judge Jones Construes Claims in Toyota Hybrid Case

In a case that features Hollywood's David-versus-Goliath story of inventorship (for example see this link), independent inventor Conrad Gardner is suing Toyota for patent infringement of his U.S. Patent No. 7,290,627. The ‘627 Patent covers hybrid vehicle technology for automobiles. Specifically, the patent relates to the use of an internal combustion engine and a separate electric motor for powering a hybrid vehicle. While Mr. Gardner's patent has a priority date earlier than Toyota's first patent in this area, he has had difficulties in this case. The latest came in terms of claim construction, while it is not clear of the implications.

Claim one of the '627 patent is copied below:

1. A controller of a hybrid electric vehicle having an engine (22)
and a motor (12) for controlling driving of the engine (22) and the motor
12, comprising: a battery (58) for supplying electric power to the motor (12); motor-generated driving force transfer means (14) for transferring the driving force generated by the motor (12) to wheels (18); a power generator (78) driven by the engine (22) to supply generated electric power to the battery (58); engine-generated driving force transfer means (75) for transferring the driving force generated by the engine (22) to the wheels (28); means for detecting a vehicle running state (44); and control means (30) for controlling whether to transfer a driving force generated by an engine (22) to a power generator (78) or wheels (28)in accordance with a vehicle running state, wherein the control means (30) transfers the driving force generated by the engine (22) to wheels (28) when said running state is more than a predetermined value, transfers the driving force generated by the engine (22) to the power generator (78) when said running state is less than a predetermined value.

Judge Jones recently construed this claim and others. In particular, there was a lot to say about whether certain terms should be construed as means-plus-funtion under Section 112 paragraph 6.

From Judge Jones' order:


Mr. Gardner’s proposed construction is confusing, because he both contends that this claim does not have a means-plus-function limitation and also directs the court to the drawings as evidence to support the “well-understood meaning.” Again, Mr. Gardner has unsuccessfully attempted to rebut the means-plus-function presumption. In order to rebut the presumption, the claim language itself would have to define the structure that performs the stated function. Mr. Gardner has not pointed to any language in the claim itself that describes definite structure, and indeed relies on the drawings in order to construct the term. Thus, the court concludes that this is a means plus-function limitation because no specific structure is identified.

Goodbye and Thanks to Sam Darby

The son of James T. and Ellen Doran (Dunman) Darby, Sam Darby was born in Falcon, Arkansas, February 4, 1867. In the fall of 1882, he went to Annapolis, Maryland, as a cadet in the US Naval Academy. He left the Navy after graduation in 1886. Two years later, he started his undergraduate at Georgetown in Washington, D.C., finishing in 1891, with an LL.B and LL.M in law. During law school, he married Estelle Edgar Rawlings, and they had two children, Walter Ayers and Samuel Edgar, Jr. In 1894, Sam Darby Sr. joined Frank T. Brown, forming the firm Brown & Darby in Chicago.

After just seven years in practice, Sam Darby Sr. appeared before the U.S. Supreme Court, arguing on behalf of William R. Warner & Co., the founder of Warner-Lambert, a company that is now part of Pfizer. While he lost the case, Warner v. Searle, 191 U.S. 195 (1903), Sam Darby made important contributions to trademark law by helping to define the scope of descriptive trademarks. The mark at issue was PANCREOPEPSINE, which described an amino acid used to help cure indigestion (this also became the primary ingredient of PEPSI). Sam Darby Sr., went on to represent a number of other IP rights holders in cases that made important contributions to our existing laws.

Sam Darby Jr. probably joined his father in practice sometime around 1920. By that time, the firm had moved from Chicago to New York City, somewhere downtown. He appears as counsel for the infamous, self proclaimed "Father of Radio," Lee de Forest (http://www.leedeforest.org/) as early as 1924, see In Re De Forest Radio Telephone & Telegraph Co., 264 U.S. 568 (1924). Lee de Forest was one of the founders of the "electronic age" and the inventor of the "audion" which led to development of the triode, a device that was important for FM radio transmission. Lee de Forest "was involved in several patent lawsuits and he spent a substantial part of his income from his inventions on the legal bills," (source: http://en.wikipedia.org/wiki/Lee_De_Forest) most of which were likely paid to Darby & Darby, considering the volume of reported cases Sam Darby Jr. handled for Mr. De Forest. Lee's primary legal foe was Edwin Armstrong, the prolific inventor whose patent for the regenerative circuit had been issued in 1914. Armstrong's lawsuit with de Forest lasted twelve years, winding its way through the appeals process and ending up before the Supreme Court in 1926. The Supreme Court ruled in favor of De Forest, "although the view of many historians is that the judgment was incorrect." (Source: http://en.wikipedia.org/wiki/Lee_De_Forest) … but that's what I call some good lawyering).

While Sam Darby Jr. may have benefited from Lee de Forest's legal entanglements, he paid dearly as well, because he was indicted along with Lee de Forest for mail fraud, but was later acquitted. The firm moved to the Chrysler Building, 405 Lexington Avenue, in 1931 (one of the building's first tenants). Sam Jr. appears on dozens of U.S. Supreme Court cases of significance until his untimely death in 1947, he was probably not yet 60 years old.

Walter Darby also practiced with his brother and father. He died in 1949. He appears on very few cases, and was reportedly interested in admiralty law more than IP.

The legacy of Darby & Darby was passed down to Louis Fletcher, Floyd Crews, Don Overocker, Harvey Mortimer, and Morris Relson. According to some old letter head, these were the partners in 1961. Associates at this time were Robert Maikis, Robert Keegan, Howard Miskin, Gordon Copelein, and William Dudine, Jr. Prior to the decade that began in 1960, another Darby partner of note was Russell Pelton, who left to go in-house in 1957 with Norelco.

During the 1950s and 60s, Floyd Crews, Morrie Relson, and Louis Feltcher appear on dozens of CCPA and Supreme Court cases. According to Gordon Copelein "Floyd Crews was instrumental in having Giles Rich appointed to the CCPA." Gordon also reports that during the 1960s, many partners and associates would lunch at Schraft's restaurant. On occasion, the Darby lawyers were joined by judges, including some CCPA judges like Judge Rich. Mike Sweedler may remember some of these lunches, and I will leave the details to him.

The 1970s ushered in new associates, including the likes of Peter Ludwig, Mel Gardner, Adda Gogoris, Ethan Horwitz, and others. I know little of these details, from 1970 to when I joined in 2007, so Mel, or Peter will have to fill these in for me.

Over the last 115 years, Darby & Darby has represented some of this Nation's most prolific inventors and the companies they worked for. Companies etched in the American psyche, like Warner; Emerson Radio, Dumont and Olympic Television, Polorad Electronics; Fairchild Aircraft; Walter Kidde; Nokia; Yahoo; Boston Scientific; American Home Products; Wyeth; and a host of others. I'm proud to be a part of this history, and while today is a sad day because it marks the end of Darby & Darby, we can all take comfort in knowing that we were a part of something bigger than ourselves.

Cordance Wins JMOL in Amazon One-Click Patent Suit

Looks like local software company, Cordance may get a chance to have a jury determine the amount of damages Amazon owes for infringing certain patents covering aspects of the popular One-Click ordering system. In a case pending in USDC, District of Delaware, Cordance Corporation v. Amazon.com, Cause No. 06-491-MPT, a jury found late last year (among other things) that certain patents asserted by Cordance were infringed but invalid. The patents-in-suit are U.S. Patent Nos. 6,757,710; 6,269,369; 6,044,205; 5,862,325 and 6,088,717. Today, in a ruling issued by U.S. Magistrate Judge Thynge, JMOL was granted that (1) claims 7–9 of the ‘710 patent are not invalid for lack of written description; (2) claims 1, 2, 3, 5, and 7–9 of the ‘710 patent are not invalid as anticipated by Amazon's 1995-96 shopping cart system; and (3) claims 1, 3, 5, 7 and 8 of the ‘710 patent are not invalid under 35 U.S.C. 102(f).

A bench trial will commence on certain Amazon defenses, and if those do not succeed, Damages will likely need to be calculated, probably by another jury (separate from the one that had held these patent claims invalid).

In one interesting point of note, Judge Thynge passed on Cordance's invitation to eliminate the written description requirement of 35 U.S.C. Section 112, paragraph 1 in advance of the CAFC deciding Ariad.

"The court recognizes that the Federal Circuit has heard oral argument in Ariad Pharms., Inc. v. Eli Lilly & Co. and that the Federal Circuit’s forthcoming decision in that case may alter the scope and purpose of the written description requirement. However, this court, like the Informatica Corp. court, is constrained to follow existing standards under Federal Circuit law, and Federal Circuit precedent 'clearly recognizes a separate written description requirement.'" (internal footnotes and citations omitted)

Fed Cir. Reverses WDWA on Rare Interference Ruling

I previously posted about this case here, when Judge Pechman dismissed a suit brought by Philips Electronics seeking to overturn a ruling made in an interference. The Board of Patent Appeals and Interferences had ruled an inventor at Philips Electronics, Morgan, was not the first to invent certain defibrillator methods claimed in US Patent No. 6,241,751. The invention claimed in the '751 patent involved considering patient impedance levels and adjusting the pulse of the defibrillator in response to those impedance levels. According to the Board, an inventor at Cardiac Science, Owen, was the first to invent defibrillators with this capability. Philips asked the USDC here in Seattle to review the Board's decision under 35 USC section 146, and Judge Pechman affirmed the Board on all issues. Most notably, Judge Pechman decided that the Board was not required to construe the terms "impedance-compensated defibrillation pulse," because no matter how those terms were construed, the specific interpretation would not have impacted the Board's ultimate decision.

Yesterday, the CAFC reversed in an opinion authored by Judge Garjarsa (with him were Chief Judge Michel and Friedman, J.) stating that the lower court's ruling was "tantamount to sua sponte summary judgment." Slip Op. at 6. In its opinion, the CAFC explained "[t]hough the court suggested during the last hearing that it need not consider the merits of the interference if it agreed with the Board’s procedural grounds, § 146 grants parties the right to present new testimony and requires the court to review the Board’s factual findings. See Winner, 202 F.3d at 1345; Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 592 (Fed. Cir. 1997) (“Section 146 actions have been described as a hybrid of an appeal and a trial de novo.”)."

The CAFC also noted that "there remains a genuine dispute as to material facts between the parties. For example, the parties still disagree on whether the Owen application contains an adequate written description for the term “impedance-compensated defibrillation pulse” and on whether the Gliner patent anticipates Owen’s claim 38. Cardiac Science argues that Philips failed to inform the district court that it would need to address other issues after ruling on the motion for a claim construction hearing. But Cardiac Science ignores clear statements to the contrary."

Federal Circuit Authorizes Qui Tam False Marking Cases

In a decision interpreting the false marking section of the Patent Act, 35 U.S.C. § 292, the Federal Circuit authorized so-called “quit tam” suits against defendants who falsely mark their goods with an intent to deceive, and held that "the statute's plain language requires the penalty to be imposed on a per article basis." The decision, Forest Group, Inc. v. Bon Tool Company, No. 2009-1044, ___ F.3d ___ (Fed. Cir. 2009)  (Rader, Plager, Moore, JJ.), held that the district court erred when it assessed only $500 in penalties against Forest where the evidence supported a decision that multiple articles were falsely marked with an intent to deceive. In dicta, the court noted that “Congress’ interest in preventing false marking was so great that it enacted a statute which sought to encourage third parties to bring qui tam suits to enforce the statute.”  Slip Op. at 12.

A writ of qui tam is a common law writ given to private individuals who assist prosecution, permitting them to receive all or any part of the penalty imposed.  Judge Moore, who authored the panel’s unanimous decision, reasoned that “[b]y permitting members of the public to sue on behalf of the government, Congress allowed individuals to help control false marking.”  Slip Op. at 13.

Allegations of infringement in the case were based on U.S. Patent No. 5,645,515 (the ’515 patent), which includes claims covering spring-loaded parallelogram stilts of the type commonly used in construction. Following a claim construction and summary judgment order resulting in a determination of non-infringement, the district court held a bench trial on the defendant’s false marking counterclaims. The district court found that Forest falsely marked its stilts with its ’515 patent number after a summary judgment order of noninfringement was entered in an unrelated case pending in the District of Minnesota against another defendant, Warner Manufacturing Company, and assessed Forest a $500 fine for a single offense of false marking.  The court found that the summary judgment order of non-infringement in the Warner case provided Forest with knowledge that its own articles were not covered by the ‘515 patent.  Slip Op. at 4.

In reversing the district court’s construction of § 292, the Court held that “[t]he plain language of the statute does not support the district court’s penalty of $500 for a decision to mark multiple articles. Instead, the statute’s plain language requires the penalty to be imposed on a per article basis” and reversed on that basis for a calculation of the penalty on a per-article basis. The statute provides a fine of “not more than $500” for each offense. Slip Op. at 8. “By allowing a range of penalties, the statute provides district courts the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities.” Slip. Op. at 13. 

i4i Prevails on Appeal

Today, the CAFC decided the i4i appeal in what appears to be a sweeping victory for i4i. "We affirm the issuance of the permanent injunction, though we modify its effective date to accord with the evidence. In all other respects, we affirm for the reasons set forth below."

My previous posts on this case are found here. There will certainly be more to say about this opinion, but one thing that jumps out at me immediately is the sharp criticisms of certain decisions made by trial counsel not to seek per-verdict JMOL on the amount of damages.  Failing to seek pre-verdict JMOL is unfortunately a common error, but in this case, the decision appears to have been a deliberate one for strategy reasons.  What strategy, I'm not sure; there is little doubt, however, that Microsoft has some of the most high-powered and talent lawyers, so I'm sure there are reasons.  This is from the opinion:

"Although Microsoft now objects to the size of the damages award, we cannot reach that question because Microsoft did not file a pre-verdict JMOL on damages. ... Had Microsoft filed a pre-verdict JMOL, it is true that the outcome might have been different. Given the opportunity to review the sufficiency of the evidence, we could have considered whether the $200 million damages award was 'grossly excessive or monstrous' in light of Word’s retail price and the licensing fees Microsoft paid for other patents. Cf. Lucent, 580 F.3d at 1325-32.  As this court did in Lucent, we could have analyzed the evidentiary basis for the Georgia-Pacific factors, and whether the benchmark (XMetaL) was sufficiently comparable. Id."

Federal Circuit Scraps Point of Novelty for Design Patents

I'm happy to report that the case I recently argued at the Federal Circuit resulted in new law for anticipation of design patents.  Here is the article written for Darby & Darby.  Articles have also appeared in the National Law Journal and IP 360 (subscriptions required for both).

The Court of Appeals for the Federal Circuit has changed the law of anticipation for design patents.  The so-called "point of novelty" test was recently scrapped in a case handled by Darby & Darby.  Representing Walgreens and its supplier, Darby litigator Mark P. Walters argued for the Court to bring its case law in line with another recent decision that had changed the law of design patent infringement, Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008). "The Court's decision in Egyptian Goddess eliminated the point of novelty test for infringement, so it made sense that the same should happen for anticipation," Walters said.  Writing for the majority, Judge Timothy Dyk agreed, saying "[i]t has been well-established for over a century that the same test must be used for both infringement and anticipation."  The case is International Seaway Trading Corp. v. Walgreens, (2009-1237), and the patents-in-suit are U.S. Patent No. D529,263; D545,032, and D545,033.

Implicit Networks Accuses Windows Seven of Infringement

If it wasn't any good, no one would be accusing it of infringement, right?  Unwelcome flattery of this nature was thrust upon Microsoft and its successful Windows Seven product last week when a patent infringement case was brought by local patent licensing company, Implicit Networks.

Implicit owns US 6,629,163, Method and System for Demultiplexing a First Sequence of Packet Components to Identify Specific Components Wherein Subsequent Components are Processed without Re-Identifying Components.  According to the complaint, this technology is used in Microsoft's Windows Seven "Filtering Platform."

The True Cost of Discovery Disputes

"The parties have done their level best to avoid and undermine the purposes of the meet and confer requirements," was Judge Lasnik's opening sentence for a recent ruling granting in-part a motion to compel discovery filed by Defendants Industrial Ventilation, Inc. This is a case for patent infringement brought by Pace International who owns U.S. Patent No. 6,723,364 ("Fog Treatment Method Using a Liquid Composition For Treating Fruits And Vegetebles")

While Defendants were granted some of the relief requested, their approach was harshly criticized in the order.

"In the circumstances presented here, compliance with the Rules would have involved face-to-face or telephonic communications regarding the particular deficiencies defendants perceived in plaintiffs’ discovery responses. Instead, defendants wrote two letters identifying deficiencies, demanding supplementation, and stating that if plaintiffs “would like to discuss this matter further,” they should contact defense counsel. In the midst of a separate dispute regarding defendants’ expert report, defendants demanded that plaintiffs “provide supplementation of discovery or renewed objections by the end of the day [October 9, 2009]” or defendants would proceed with a motion to compel. Decl. of Brandon H. Pace (Dkt. # 41), Ex. 13. Plaintiffs correctly pointed out that they had already agreed to supplement their responses, that the parties were not at an impasse, and that a motion to compel in that situation was not likely to succeed. Decl. of Brandon H. Pace (Dkt. # 41), Ex. 14. Plaintiffs ultimately failed to produce any additional documents or make any further response to defendants’ discovery requests by the end of the day on October 14, 2009. Defendants filed this motion on October 15th.

There is no evidence that the parties had substantive face-to-face discussions regarding any of the issues raised in defendants’ motion. As is clear from the memoranda, the positions of the parties were unknown when defendants filed their motion, a sure sign that the requirements of Rule 37(a) have not been satisfied. 

Defendants' were not alone in their receipt of criticism


The fault is not solely on defendants’ side, however. After indicating a willingness to reevaluate their objections and supplement their responses, plaintiffs failed to act, leaving defendants in the untenable position of having to restart the meet and confer process or file a premature motion. Because both parties are responsible for the failure to comply with the meet and confer requirements of Rule 37(a), the Court will address the parties arguments with the warning that future failures may result in sanctions under General Rule 3."


This is an unfortunate reminder how discovery disputes can undermine both litigants' credibility with the presiding judge.  Many other districts have magistrate judges handle discovery disputes.  In this district, by design, the presiding judge will hear discovery disputes.  Built into this system is a strong incentive to avoid discovery disputes at all cost, for it is rare indeed that one party will emerge from the dispute untarnished by the process.

Seattle Patent Litigation Update: December 2009

As we enter the last month of 2009, there is much to report on the state of local patent litigation.

Here are some interesting orders that were issued over the past few months.

On October 23, 2009, Judge Pechman stayed a patent case filed by National Products, Inc. against Gamber-Johnson LLC. The case involves allegations that Gamber-Johnson has willfully infringement NPI's U.S. Patent Number US 7,573,706.  No reasons were given for the stay other than the fact that a request for reexamination of the patent-in-suit was filed.  (See Dkt. No. 20: "The Court has considered the submissions of the parties and determined that a stay is proper.")

On November 19, 2009, Judge Jones granted a motion for partial summary judgment in favor of Defendant Toyota Motor Corporation in a patent suit brought by independent inventor (and former Boeing in-house Patent lawyer), Conrad Gardner.  Mr. Gardner is the named inventor on U.S. Patent number 7,290,627, "Extended Range Motor Vehicle Having Ambient Pollutant Processing," with claims drawn to "[a] hybrid motor vehicle."  The priority date on the '627 patent is June 23, 1997, which is well before any of Toyota's patents in the hybrid vehicle space.  This all sounds good for the plaintiff, but unfortunately, the case is not going very well at all for Mr. Gardner.  Recently, Claim 6 (ostensibly the broadest claim) was invalidated as indefinite.  The grounds: lack of antecedent basis.  Claim 6 of the '627 patent had a glaring error in that the element "said speed demands," a remnant of a former dependent claim, lacked any antecedent basis at all.  This is true despite the fact that Claim 6 was the product of two CIPs, one Continuation application, and a successful Appeal to the Board of Patent Appeals and Interferences, which in 2005 reversed the Examiner's prior art-based rejections. 

Reading Judge Jones' order (and that's all I've read in connection with Toyota's motion), it is not immediately clear whether Gardner addressed this error head on, or whether attempts to file a reissue to correct this drafting mistake were initiated.  For example, Judge Jones' order states "Mr. Gardner does not respond directly to Toyota’s claim of the lack of express antecedent basis. Instead, Mr. Gardner’s response offers multiple constructions of the term 'said speed demands.'"

On September 24, 2009, local software company specializing in wireless data and communications, Airbiquity Inc., settled its patent case involving claims of infringement against AT&T Mobility LLC.  The patents in suit are U.S. Patent Nos. 6,681,121 ("Circuitry for Activating a Modem in a Cellular Telephone") and 7,206,305 ("Software Code for Improved In-band Signaling for data Communications Over Digital Wireless Telecommunications Networks").

The Airbiquity settlement comes after its counsel, Dorsey & Whitney, sought leave of court to withdraw as counsel for Airbiquity in view of its existing representation (unrelated matters) of Motorola and Apple who are not parties to the action, "but whose interests might be adversely affected if plaintiff prevails in this matter."  The motion raised novel issues under Washington law with respect to possible ethical concerns raised by representation of a litigant on legal issues that might be adverse to an existing client, although the current representation is not "directly adverse" to any existing client.

From Judge Zilly's order:

"Washington courts have not yet had occasion to opine on the ethical concerns raised
by Dorsey in this case. In this matter, Dorsey represents a patent holder claiming that a
cellular telephone service provider is infringing one or more of its patents. Dorsey also
provides unrelated legal services to a manufacturer of cellular telephones that has an
exclusive service arrangement with the provider being sued in this matter. In its motion to
withdraw, Dorsey has represented to the Court that the infringement contentions asserted by
Dorsey on behalf of one client (plaintiff) reach one or more of the products manufactured by
Dorsey’s other client (Apple). Motion at 1 (docket no. 133). Dorsey also indicates,
however, that plaintiff does not intend to join Apple as a party in this litigation."


Further, the order goes on to state:

"The Court is not persuaded that Dorsey has a concurrent conflict of interest. The
Court recognizes that the conflict of interest rules concerning current clients are different
from those involving former clients, and that the prohibition against representing clients
whose interests are adverse applies even when the matters in which the lawyer has provided
services are not the same or substantially related. Compare RPC 1.9(a) (“A lawyer who has
formerly represented a client in a matter shall not thereafter represent another person in the
same or a substantially related matter in which that person’s interests are materially adverse
to the interests of the former client unless the former client gives informed consent,
confirmed in writing.”). The concurrent conflict rule is premised on an attorney’s duty, and a
client’s legitimate expectation, of loyalty. See Concat LP v. Unilever, PLC, 350 F. Supp. 2d
796, 815 (N.D. Cal. 2004). It is also designed to safeguard client confidences. See
Prudential Ins. Co. v. Anodyne, Inc., 365 F. Supp. 2d 1232, 1237 (S.D. Fla. 2005). Dorsey
has not shown that either of these goals would be compromised if it is not allowed to
withdraw from representation of plaintiff in this action."


In addition to the above happenings, the following new cases were filed since September, bringing our year-to-date patent case total to 34, well behind where we were last year on this day; 42 patent cases filed in 2008 by December 3 of that year.  Numbers seem to be down everywhere, including East Texas.  On December 3, 2008, East Texas had 290 patent cases filed.  This year, just 230 cases filed by December 3. (Source: justia.com).  Numbers are down in East Texas for many reasons, not just the economy.  Indeed, some of you may have heard that yesterday, the CAFC granted mandamus again, reversing an order refusing to transfer venue to the E.D. of North Carolina.  See In re Hoffmann La-Roche Inc., 09-M911 (Fed Cir. 2009). That is the third time in less than a year that the CAFC has granted mandamus in order to reverse the Eastern District of Texas, albiet applying Fifth Circuit Law. See In re TS Tech USA Corp., 551 .3d 1315, 1322 (Fed. Cir. 2008) and In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009).  Times, they are a-changin'

Now, the list of Washington cases since September 2009.

Lectent LLC v. SAS Group Inc et al  (September 29, 2009)

Logan v. BabyPlus Company et al (October 1, 2009)

Laughing Rabbit Inc v. Stever (October 5, 2009)

Direct Route LLC v. OnOffline Inc et al (October 22, 2009)

LED Dental Ltd et al v. Trimira LLC et al (November 6, 2009)

Cequint Inc v. Toysoft Development Inc (November 6, 2009)

WRE-Hol LLC v. Pharos Science & Applications Inc et al (November 17 2009)

That's all for now.