New Study Says Western District's Claim Construction Decisions Get Reversed Nearly 40% of the Time

A soon-to-be-published study in the Michigan Law Review says that claim construction decisions by the Western District of Washington were reversed by the CAFC 38.9 % of the time during the time period April 24, 1996 (the date of the Supreme Court's decision in Markman) and June 30, 2007. Presented by Professor David L. Schwartz, the study seeks to test the conventional wisdom that "[p]ractice makes perfect - the old adage promises that the more you practice, the better you will become." The theory here is that the busiest judicial districts for patent litigation (the Western District of Washington is ranked 14th in terms of the number of claim construction decisions appealed to the CAFC during this time period) ought to fare better over time in terms of claim construction reversal rate. The results of Schwartz' study may surprise you (or perhaps not). His study shows that the level of judicial experience with claims construction issues appears to have little, if any, impact on reversal rate. Nor does reversal rate decrease when a district court judge has more CAFC appeals. Indeed the busiest judicial district during this time period (measured either in terms of the number of appeals or the number of patent cases filed), the C.D. of California, had the highest reversal rate of any of the "busy" judicial districts for patent litigation, with 43.5% of all claim construction decisions reversed by the CAFC. In short, practice does not make perfect when it comes to issues of claims construction.

Why is this the case? Why doesn't "practice make perfect" in the realm of claim construction? The primary culprit according to Schwartz is that "[c]laim construction may be inherently indeterminate." You think? Do you mean to say there are multiple, potentially outcome-changing ways to interpret claim language? Forgive the sarcasm, but anyone who has litigated a patent case knows that claim construction in many cases is a crap shoot. It comes down to good advocacy and this why it is so important to choose your counsel wisely.

NOTE: This post was updated May 10, 2008 to reflect the fact that the study is not yet published and to provide an updated link.

Subject Matter Jurisdiction After MedImmune

Yesterday, Judge Jones issued a decision that required the Court to "traverse uncharted territory between the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007), and the Federal Circuit’s decision in Monsanto Co. v. Bayer Bioscience N.V., 514 F.3d 1229 (Fed. Cir. 2008)."

Because I'm personally involved in this case on behalf of National Products, Inc., I'll limit my commentary to simply state that the ruling is important, timely, and useful for patent litigators attempting to navigate the jurisdictional coral reef left by the Supreme Court's decision in MedImmune. It involves a situation where a patentee filed suit for infringement and was later provided information by the defendant claiming to have sold the accused device more than one year before the filing date. Once this evidence was evaluated, the patentee provided a covenant not to sue and sought dismissal of the case, including DJ counterclaims for noninfringement and invalidity. This case reaffirms settled law that a covenant not to sue divests the court of DJ jurisdiction over counterclaims for invalidity and noninfringement. However, the court may in some case retain jurisdiction to hear requests for fees under 35 U.S.C. section 285.


Doc%20037%20-%20ORDER%20Granting%20%20%20Denying%20%28in%20prt%29%20Mtn%20to%20Dismiss%20%2880170672%29.PDF

Washington State Patent Law Association Files Amicus Brief in Bilski

On April 4, 2008 the Washington State Patent Law Association (WSPLA) filed an amicus brief in support of Petitioner Bernard L Bilksi and Rand A Warsaw in the case currently under en banc consideration by the CAFC, In re Bilksi. My earlier posts on this case can be found here and here.

WSPLA's brief was signed by Michael Swope over at Woodcock Washburn. Also on the brief were Grzegorz S Plichta (Woodcock Washburn), Dale Bar, President of WSPLA and lawyer at Lee and Hayes, and Peter J Knudsen, IP counsel for Nastech Pharmaceutical Co., Inc.

Dennis Crouch over at Patently O, has a good summary of all Amicus Briefs filed in the case.

Crocs Suffers Major Setback at the ITC

Because of my involvement in this case as counsel for local shoe designer, Australia Unlimited (maker of the NOTHINZ brand of foam clog), I'll limit my post to reporting the fact that Crocs has suffered a major blow in its case at the ITC. By way of background, Crocs filed a complaint at the ITC over two years ago claiming that a number of other providers of foam clogs were infringing its IP rights.

Earlier this week, Administrative Judge Charles E. Bullock issued an initial determination denying Crocs' request for an order barring importation of shoes Crocs says infringe its patents covering the popular BEACH model foam clog. Judge Bullock's decision also finds that Crocs' US Patent No. 8,993,858 is invalid. The entire ruling is not yet public, but these basic facts were released earlier this week. Crocs will likely seek review of this order by the Commission. If affirmed, the order will be highly persuasive, and potentially outcome determinative of any similar cases filed by the Colorado Shoe seller.

I've posted previously on this case here.

IP 360 reported as follows:

Tuesday, Apr 15, 2008 --- In a significant setback for footwear company
Crocs Inc., an administrative law judge for the U.S. International Trade
Commission has ruled that one of the company's key patents for its colorful
plastic shoes is invalid for obviousness.
In May 2006, Crocs filed a complaint before the ITC against several
competitors, claiming that their products infringed two of Crocs' patents, one
utility patent and one design patent.
In his ruling Friday, Judge Charles E. Bullock found that some of the
competitors had infringed the utility patent, but none had infringed the design
patent.
However, he found that the utility patent was invalid for obviousness, so the
infringement by the competitors is in effect meaningless. The judge found the
design patent valid but not infringed.
Judge Bullock's ruling is a preliminary determination, meaning that any party
can ask to have it reviewed, which Crocs is likely to do, said Glenn Bellamy,
an attorney for one of the defendants.
After a final determination is made, the case can be appealed to the U.S.
Court of Appeals for the Federal Circuit.
A representative for Crocs could not be reached for comment.
A representative for Holey Soles Holding Ltd., one of the defendants, said
that the company had maintained its innocence throughout the proceeding.
"While it's an interesting and useful outcome, it's really just business as usual
for us," he said of the ruling. He characterized the suit by Crocs as an
attempt to block competition.
Only three pages of Judge Bullock's 122-page ruling were made public, with
the rest sealed until the parties have a chance to submit redactions. The full
ruling is expected to be released within a few weeks, according to Bellamy.
The utility patent at issue is U.S. Patent Number 6,993,858, entitled
“Breathable footwear pieces” and issued in 2006. The design patent is
D517,789, entitled "Footwear" and issued in 2006.

Report for Washington State Patent Cases: March 2008

Patent case filings in Washington State remained strong through March. There were four cases filed total; three in the Western District and one in the Eastern District. This is one better than March 2007, which only had three patent cases total. So far, Washington is substantially ahead of where it was last year at this time in terms of the number of patent cases filed. Through March last year, there were only nine (9) patent cases filed. This year's total through March is eighteen (18), that's an increase of 100%.

Here is a list of cases for March.

Zacklift International Inc v. Kooima (WA Eastern) Judge Van Sickle

Progressive International Corporation v. CKC International LLC (WA Western) Judge Theiler

Cequint Inc v. TECMobile Software LLC (WA Western) Judge Jones

CRS LLC v. Valve Corp. (WA Western) Judge Donohue

AIPLA Submits Amicus Brief in Bilski Case, Arguing for Broad Patentable Subject Matter

Here is a Link to the AIPLA Brief in the Bilski case. My post on this case is found here.

This is from the AIPLA post on the case:

AIPLA on April 7, 2008, filed an amicus brief with the en banc Federal Circuit, arguing that it is improper to apply the subject matter categories at 35 U.S.C. §101 narrowly to require that a process claim must be implemented by an apparatus in order to be patent-eligible under Section 101. In re Bilski, en banc Fed. Cir., No. 2007-1130.
According to the brief, Section 101 broadly encompasses anything under the sun made by man, and is limited only by the judicially-developed exclusions for laws of nature, physical phenomena, and abstract ideas. The brief maintains that this formulation provides a flexible rubric that promotes disclosure and adapts to yet unforeseen technologies, while retaining the safeguard against overbreadth in the traditional patentability requirements of novelty, non-obviousness, and sufficient disclosure to the public.

Jury Hits Microsoft with Patent Infringement Verdict of $367 million

A San Diego, CA jury returned a verdict last Friday against Microsoft in its patent infringement suit with Alcatel-Lucent. The amount: $367 million. Check out my previous post on this case to get some more background. The patents at issue all involve video coding technology as well as patents related to a form entry system, algorithms for gesture recognition and commands to select video display modes. They are U.S. Patent Numbers 4,958,226; 4,383,272; 4,763,356; 5,347,295; and 4,439,759.

Todd Bishop's Microsoft blog correctly describes this as a partial victory for Microsoft. Alcatel-Lucent was seeking almost $2 billion in damages. Judge Huff had previously granted a motion by Microsoft, dismissing Alcatel-Lucent's claim for willful infringement. That claim, if left in the case, could have tripled the amount awarded by the jury.

So, as Judge Huff put it, "It's kind of a mixed verdict -- everybody wins,'' she said, according to a Bloomberg news report. "There's something for everybody.''

Patent Case for Wrist Apparatus Stayed Pending Reexamination

Belkin, Inc., a leading manufacturer of accessories for the electronics industry, won its motion to stay a patent infringement case filed by Prokop Labs, LLC for infringement of US 5,566,913, for a "Wrist Apparatus." Several other manufacturers and retailers were sued. The case is styled Prokop Labs LLC v. Staples Inc. (07-1094-MJP). According to the order, the case will be stayed indefinitely pending reexamination of the '913 patent.
staplesReexamOrder.pdf

Judge Cacheris Grants GSK's and Tafas' Motions for Summary Judgement

Most patent practitioners are rejoicing today. The proposed new USPTO rules will will remain blocked, at least for now. Judge Cacheris from the U.S.D.C., E.D. of Virginia issued a decision today granting GSK's and Mr. Tafas' motions for summary judgment.

From the order:


Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court
finds that the Final Rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.” 5 U.S.C. § 706(2).

Tafas%20v.%20Dudas%20%2801485532%29.pdf