Philips Electronics Can't Overturn Interference Ruling

In the United States (at least for the time being), the first person to invent has superior rights in a dispute involving multiple claims covering the same subject matter. According to a decision by the USPTO's Board of Patent Appeals and Interferences, 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 '741 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 defiblliation pulse," because no matter how those terms were construed, the specific interpretation would not have impacted the Board's ultimate decision.

From Judge Pechman's order:

The issue presented by this motion is whether the Board erred in failing to construe the
claim “impedance-compensated defibrillation pulse.” The Board never made a single decision
not to construe the claim, but instead determined that claim construction was not necessary to resolve Philips’ preliminary motions. No authority suggests that the Board is required to
perform claim construction when it is not necessary to decide an issue presented in a party’s
motion.

phillips146action_orderdismissining.pdf

CAFC Reverses WDWA Decision on Personal Jurisdiction

In Campbell Pet Co. v. Maile, the Federal Circuit reversed an order finding personal jurisdiction lacking over an out-of-state defendant who had attended a trade show in Seattle and made verbal threats of patent infringement litigation. This decision reverses Judge Leighton's decision finding personal jurisdiction absent under Federal Circuit law (see my previous post on this decision here, where my description of the district court's order is rather prescient).

Here is some good coverage of the decision from the PLI patent law blog:

In June 2007, Ms. Miale (hereinafter "defendant") attended a three-day convention in Seattle, Washington, sponsored by the American College of Veterinary Internal Medicine. During that convention, the defendant demonstrated her products and offered them for sale. In the course of the convention, she took two orders for tables from residents of Virginia and New York, for a total purchase price of $9,400. Plaintiff Campbell also had a display at the convention featuring its products. In the course of the convention, the defendant and her mother confronted several of Campbell’s employees who were attending the convention and accused them of infringing the Miale patents.
In the month following the convention, Ty-Lift sent a letter to Campbell claiming that Campbell’s mobile folding stretcher infringed the Miale patents. Shortly thereafter, Campbell filed suit in the United States District Court for the Western District of Washington seeking a declaration of noninfringement and invalidity with respect to the Miale patents. In response, Ty-Lift moved to dismiss the complaint for lack of personal jurisdiction. The district court did granted the motion to dismiss, deciding that the level of contact between the defendants and the forum state was not sufficiently “substantial” and “continuous and systematic” to justify the exercise of general jurisdiction.
The Federal Circuit agreed that the district court was clearly correct in ruling that it did not have general jurisdiction over the defendants, but did not agree that there should be no specific jurisdiction. Specifically, in order to determine whether specific jurisdiction exists the court must determine whether the defendant has purposefully established minimum contacts with the forum state: (1) whether the defendant “has purposefully directed his activities at residents of the forum”; and (2) whether “the litigation results from alleged injuries that arise out of or relate to those activities.” When considering these inquiries the district court characterized the defendants actions at the June 2007 convention as constituting nothing more than attempts to inform Campbell of suspected infringement. This determination is what the Federal Circuit took issue with and ultimately disagreed with.
Employees’ affidavits asserted that the defendant did more at the trade show than simply inform Campbell that its animal stretchers might infringe her patents. The affidavits state that the defendant attempted to have plaintiff’s allegedly infringing products removed from the convention and that she told the plaintiff's customers that the products being sold were infringing. The Federal Circuit noted that it is critically important to the issue of personal jurisdiction that the defendant's patent rants were targeted at injuring the plaintiff's business in Washington and, therefore, could fairly be characterized as attempts to limit competition at the Seattle convention. Those efforts go beyond simply informing the accused infringer of the patentee’s allegations of infringement and open the defendant up to suit in Washington.

CAFC Rules in Egyptian Goddess: Point of Novelty Test Gone (sort of)

The Federal Circuit issued its en banc decision today in Egyptian Goddess, Inc. v. Swisa, Inc. (2006-1562). In a decision authored by Judge Bryson, the Court thoughtfully and carefully reviewed the history of the "point of novelty test," concluding that the test in its current incarnation "is of quite recent vintage" and holding that it "should no longer be used in the analysis of a claim of design patent infringement."


While the case holding is quite clear in ridding design patent law of the point of novelty test, the opinion does not say one may ignore the prior art during an analysis of design patent infringement. On the contrary, "when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the the ordinary observer would consider the two designs to be substantially similar will benefit from comparison of the claimed and accused designs with the prior art." Eliminated from the plaintiff's burden of proof in a design patent case, the point of novelty test therefore survives as a defensive doctrine, where the burden of producing prior art rests on the accused infringer. Under this new legal framework, one accused of design patent infringement is free to argue that any similarity between its device and the patented design results from prior art features or combinations and that the hypothetical ordinary observer would therefore not find the two designs "substantially the same."



What this means to a litigator like me is that a lot more design patent cases will go to the jury under the new test. Whether similarity in any given case is due to copying the prior art or due to actionable copying of the patented design is something the jury will now be asked to sort out on a more frequent basis. Score one point for trial lawyers and another for design patent holders in general.



In addition to eliminating the point of novelty test as a part of the Plaintiff's burden of proof for infringement, the opinion says that a detailed claims construction is not required, and that "the preferable course ordinarily will be for a district court not to attempt to 'construe' a design patent claim by providing a detailed verbal description of the claimed design." A district court may (in its discretion) reduce the design patent claim to a verbal or written pronouncement of scope, and the opinion gives several examples where a court might choose to do so; like where features appear in broken lines or where features have a purely utilitarian (as opposed to ornamental) purpose. The court has only one proviso "as a general matter, those courts should not treat the process of claim construction as requiring a detailed verbal description of the claimed design, as would typically be true in the case of utility patents."


So there you have it. Life just got a little easier for those owning design patents.

Defendant Not "Entitled" to Discovery on Claim For Section 285 Fees

In a case where the underlying claims of infringement were dismissed voluntarily under Rule 41, Judge Jones recently ordered that a defendant was not entitled to take discovery in order to support a theory that the case was "exceptional" under 35 USC Section 285.

From Judge Jones' order:

G-J appears to concede that it cannot substantiate its § 285 attorney fee request
without additional discovery. G-J will apparently base its § 285 request solely on its
allegations of inequitable conduct. See Dkt. # 46 at 7 (stating that G-J “is willing to
forego, without prejudice, its declaratory judgment claims of noninfringement and
invalidity, and to focus discovery and proceedings on the inequitable conduct claim”);
Dkt. # 55 at 7 (“G-J has already agreed to shorten and simplify this case by focusing
discovery on its inequitable conduct claim.”). G-J complains, however, that it “has not
been given the chance to substantiate its claims,” and that the court should permit it to
take discovery for that purpose. Dkt. # 46 at 9.


The court finds no merit in G-J’s contention that the mere fact that it has
counterclaims pending entitles it to discovery. The court has broad discretion to control
the scope of discovery. See Childress v. Darby Lumber, Inc., 357 F.3d 1000, 1009 (9th
Cir. 2004); see also Fed. R. Civ. P. 26(b)(1). The court’s April 23 order established that
the scope of the declaratory judgment counterclaims was no more extensive than the
scope of G-J’s request for § 285 attorney fees. The court will limit discovery in
accordance with the scope of the counterclaims.

***


[T]he court noted that it could have dismissed G-J’s counterclaims, retaining jurisdiction solely “to enter declaratory relief as appropriate in resolving G-J’s request under § 285.” Id. at 12 n.5.


judgejonesorderon285.pdf

Can You Hear me Now? The Next Big VoIP Patent Battle will be Fought in Tacoma

It's been almost a year since Vonage, industry pioneer in VoIP and (after going from $17 at IPO to $1) current poster child for patent reform, settled allegations of patent infringement made by Sprint and Nortel (stories here and here) and more than a year since it was hit with a $58 M judgment following a jury's verdict of infringement and a potentially devastating injunction resulting from patent infringement allegations made by Verizon (story here; this judgment was subsequently vacated in its entirety, but the battle between Verizon and Vonage rages on in the E.D. of Virginia).

The next big VoIP battle is set to take place right here in the WD of Washington, where Skype faces allegations of infringement of US Patent No. 7,099,304, covering Apparatus, Methods, and Systems for Anonymous Communication. The owner of the '304 patent is Vancouver, WA-based Flexiworld Technologies, the self-described "leader in wireless applications for mobile devices, including laptop PCs, PDAs, digital cameras, and mobile phones."

The case was filed in March, but not much has happened so far. I uploaded a copy of the complaint including the patent. I'll keep you posted as the case progresses.

skypecomplaint.pdf

Seattle Patent Litigation Update: August, 2008

While August was a relatively slow month for new cases in Seattle (only one, Laughing Rabbit Inc. v. OpticsPlanet, Inc (08-01176 JLR), area technology companies were busy elsewhere dealing with a variety of patent issues. Notably, Microsoft settled its dispute with Immersion Corp, obtaining a one-time payment of $20.75 M. The settlement resolves a contract dispute stemming from patent litigation Immersion won against Sony Corp over game controllers with so-called "rumble" or "haptic" technology (vibrating controllers, set to move in response to on-screen gaming events, like an explosion or car crash). Immersion sued Sony in 2004 in the ND of California. The suit targeted Sony's Playstation and Playstation 2, as well as Microsoft's X-Box controllers. In 2005, Microsoft and Immersion entered into a sublicense agreement as part of a $26 M settlement, where Microsoft paid Immersion $20 M to obtain licensing rights to the technology and $6 M to buy a 10% stake in the company. Microsoft's 10% stake became pretty valuable when Sony agreed to pay Immersion more than $150 M to settle remaining claims for infringement. Last month's payment resolved any remaining interest Microsoft had in proceeds from this patent litigation. Overall, one might say that Microsoft settled this dispute for $6M (but I have no idea whether Microsoft expects any more return on its 10% "investment" in Immersion ... Regardless, this is definitely some creative lawyering at work. ... Hats off to lawyers for MSFT).

In other Microsoft patent news from last month, Portland-based patent law blogger, Gary "Patent Hawk" Odom, author of The Patent Prospector, sued Microsoft in East Texas, alleging Infringement of his patent for "Tool Group Manipulations," US Pat. No. 7,363,592. (Complaint available here) Patent Hawk is represented by Susman Godfrey, among three other law firms and no fewer than 10 lawyers, including the Susman firm's Seattle-based patent litigators, Brooke Taylor and Genevieve Vose. The suit was filed in Tyler, TX, but it is not likely to get to trial very quickly there. The Texas Rocket Dockets (even Tyler's) are not as speedy as they once were.

Nintendo was also busy last month. It was dealt a one-two punch: (1) ITC investigation and (2) Federal Court patent litigation in USDC, Northern District of Maryland, both stemming from allegations that the Wii infringes certain patents owned by Hillcrest Laboratories, Inc. Hillcrest owns US Patent Nos. 7,158,118; 7,262,760; and 7,414,611, which allegedly cover a technology used on TV sets for user access to digital content like photographs, web sites, and games. The software typically uses a main menu that prompts users to choose which program they want to use. Hmmm, sounds like my Apple TV. Hillcrest also asserts infringement of US Patent No. 7,139,983, a patent alleged to cover hand-held three dimensional pointing devices that (unlike a traditional mouse) allow a user to translate or rotate the pointing tool in space instead of merely detecting movement relative to a flat surface.

Hillcrest is a different sort of plaintiff than Nintendo is perhaps used to (at least during the "modern age" of patent litigation, i.e., since about 2004). Hillcrest makes products and is relying on US trade law to seek a general exclusion order barring importation of any product infringing its US patents; this would apply to any importer of such products, so this case has implications beyond the immediate parties. Nintendo can stay litigation in Maryland district court or decide to proceed along parallel tracks in both US District court and the ITC. Things will move fast in the ITC, not as fast as they used to, but considerably faster than they will move in USDC in Maryland. It will be interesting from a strategy perspective to see which route Nintendo chooses to go. So far, no filings have been made by Nintendo in the district court litigation.

Finally, I was catching up on some of the cases that I've written about, and I noticed that in July, Judge Jones agreed to consolidate three cases brought by Unigen Pharmaceuticals over US Patent No. 7,192,611, a patent covering methods for treating osteoarthritis. Unigen sued Walgreens and others for selling an herbal supplement that is a blend of flavans from Acacia catechu and flavanoids from Chinese Skullcap (Scutellaria Baicalensis). Unigen markets this herbal supplement under the mark Univestin. Walgreens filed a motion for summary judgment seeking to invalidate the '611 patent in view of US Patent No. 5,650,433. Judge Jones has a standing order explaining that he normally does not entertain summary judgment motions that implicate claims construction issues until after Markman briefing and (if necessary) a Markman hearing and decision on claim construction. In view of this order, Judge Jones asked for a claims construction "proffer" from Unigen, saying that it would be accepted as true for purposes of summary judgment and limited only by counsel's obligations to have a good faith basis for the construction, consistent with Rule 11. My earlier post explains this in better detail.
Well, Unigen submitted its proffer, and this was accepted by Judge Jones and held sufficient to create a genuine issue of material fact, and hence, order denying summary judgment (at least for now). From Judge Jones' Order:

[T]he court notes that the parties’ evidence shows that osteoarthritis itself is a degradation of joint cartilage.The symptoms of osteoarthritis, or the effects of that degradation, include inflammation and pain. COX-2 is the shorthand name of an enzyme that promotes inflammation. Treatments that target COX-2 seek to inhibit its production to produce an
anti-inflammatory effect.

For each of the independent claims, Unigen proposes a construction that not only
makes each preamble a claim limitation, it makes each preamble a claim limitation with
meaning beyond its plain language. See Philips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (noting that claim terms must be construed according to their “ordinary
and customary meaning” to a person of skill in the art). The “method for treating
osteoarthritis” of claims 1 and 8 becomes a “method for alleviating those symptoms of
osteoarthritis that result from COX-2 mediated inflammation.” The “method for
improving impairments . . . in a living host having arthritis” of claim 15 becomes a
“method for improving impairments . . . that result from COX-2 mediated inflammation
in a living host having osteoarthritis.” The “effective amount” and “host in need thereof”
limitations that follow the preambles of the independent claims are similarly imbued with
meanings that limit them to targeting COX-2 mediated inflammation.

Accepting this claim construction, there is no clear and convincing evidence that
the ‘433 Patent anticipates the ‘611 Patent. The ‘433 Patent is targeted at protecting
cartilage (“chondroprotection”), not at COX-2 mediated inflammation. Indeed, the ‘433
Patent teaches away from anti-inflammatory treatment, noting that “conventional
analgesic and anti-inflammatory agents . . . were not effective against the destruction of
the articular cartilage, and in fact sometimes exhibited adverse effect . . . .” ‘433 Patent
at 1:36-40. If Unigen correctly construes the ‘611 Patent to require a method that targets
COX-2 mediated inflammation, then Walgreen has not provided uncontroverted clear and
convincing evidence that the ‘433 Patent is anticipatory prior art.1
It appears, then, that Unigen’s construction of the independent claims of the ‘611
Patent as limited to targeting COX-2 mediated inflammation is critical to sustaining the
validity of the patent. Expeditiously resolving that dispute may be key in efficiently
resolving these consolidated actions.

That's all for now.