The use of ex parte reexamination proceedingscontinues to increase. Requests for reexamination are routinely granted (92% proceed to reexamination on the merits). Average pendency of ex parte proceedings is a bit over two years (median is closer to 1.5 years), which indicates that some small percentage of proceedings take much longer than two years. Of all of the ex parte reexamined patents, nearly one quarter pass through without any amendments to the claims. Eleven percent fail to certify any of the claims. The remaining majority of ex parte reexamined patents certify claims with amendments made during the ex parte reexamination process.
While inter partes reexaminations are still comparatively few in number, the rate of increase in the use of the inter partes reexamination continues, as a less costly way of challenging the validity of an issued patent than patent litigation. 95% of all inter partes reexamination requests are accepted by the USPTO. The average pendency is 3 years for inter partes proceedings (median pendency being only a bit shorter). Significantly, few patents reexamined under the inter partes proceeding escape without amending the claims, and 60% result in all of the claims being cancelled or disclaimed. The remaining patents, about one-third of the total reexamined, result in amended claims.
Thursday, September 24, 2009
Friday, January 23, 2009
Egyptian Goddess
The United States Court of Appeals for the Federal Circuit has clarified previously ambiguous tests for design patent law. In Egyptian Goddess, Inc. v. Swisa, Inc. (Fed. Cir. 9/22/08), a rehearing en banc established a single test for determining whether a design patent is infringed. Design patents, which protect only inventive ornamental features of an article of manufacture, are different than utility patents, which protect the functional features of inventions. Design patent infringement is more closely related to trade dress infringement than infringement of a utility patent. The objective test of infringement is whether an accused design may be reasonably viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs when making a purchasing decision. How much attention does an ordinary purchaser give to a purchase of an article having the patented design, and what design features are important to the purchaser in distinguishing one design from another? These are the questions that will often arise in design patent litigations. The decision in Egyptian Goddess has selected a single test, based on Supreme Court precedent, has clarified the burdens on the patentee and the accused infringer, and has made life simpler for trial courts.
The court held that the point of novelty test could not be applied as a separate, stand-alone test or threshold for patent infringement. Rigid applications of such tests have been overturned by the Supreme Court in recent decisions. Instead, the finder of facts in a trial must apply an ordinary observer test, applied through the eyes of an observer familiar with the prior art. Using this approach, there is no debate about how a combination of old design features define a point of novelty. The fact finder may take into consideration the similarity between the prior art and an alleged infringing article within the ordinary observer test. If an alleged infringing article is very similar to the prior art, then it may be difficult for a patentee to meet its burden to show that the alleged infringing article infringes the claim of the design patent. “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other,” then the alleged infringing article infringes the claim of the design patent. Egyptian Goddess citing Gorham Co. v. White, 81 U.S. 511, 528 (1871). This early Supreme Court decision and a later decision by the Supreme Court form the basis for the en banc court’s decision in Egyptian Goddess.
The point of novelty test was sometimes confusing to a jury, and the court decided that if “…the accused design has copied a particular feature of the claimed design that departs conspicuously from the prior art, the accused design is naturally more likely to be regarded as deceptively similar to the claimed design, and thus infringing” by an ordinary observer familiar with the prior art. “At the same time, unlike the point of novelty test, the ordinary observer test does not present the risk of assigning exaggerated importance to small differences between the claimed and accused designs relating to an insignificant feature simply because that feature can be characterized as a point of novelty,” according to the en banc court.
The ordinary observer test is the appropriate test to be used in all circumstances to inform a fact finder of infringement. There will be cases when “…the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear ‘substantially the same’ to the ordinary observer,” as required by the decision in Gorham. However, in other cases, when “…the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art…,” which might make otherwise unnoticeable differences “…significant to the hypothetical ordinary observer who is conversant with the prior art.”
Elimination of the points of novelty as a separate, stand alone test means that the accused infringer, not the patentee, has the burden of production of the prior art, if the accused infringer chooses to rely on comparison prior art. However, it will remain the burden of the patentee to establish sufficient similarity between the claimed design and the accused design that would cause purchaser confusion. According to Egyptian Goddess, the burden of proof for infringement remains with the patentee to show that the accused design could “…reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs, ‘inducing him to purchase one supposing it to be the other’” by a preponderance of the evidence.
Furthermore, the decision in Egyptian Goddess releases district courts from any perceived requirement for district courts to “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.” Instead, district courts are free to provide “…an appropriate measure of guidance to a jury without crossing the line and unduly invading the jury’s fact-finding process…,” leaving “…the question of verbal characterization of the claimed designs to the discretion of trial judges.” Time will tell if trial courts take this opportunity to provide less guidance to the jury on the meaning of design patent claims.
It is unclear whether the decision in Egyptian Goddess will give rise to more design patent infringement litigations, but the decision should make it easier for district courts to litigate design patent infringement cases. The decision provides a single test to be used, limits the patentee’s burden to establishing infringement by a preponderance of the evidence, places the burden of production of comparison prior art on the accused infringer, and releases the trial court from a tedious and sometimes burdensome exercise in design patent claim construction. These changes should reduce the length of design patent infringement litigations and should make litigation of design patent cases less costly for both plaintiffs and defendants.
The court held that the point of novelty test could not be applied as a separate, stand-alone test or threshold for patent infringement. Rigid applications of such tests have been overturned by the Supreme Court in recent decisions. Instead, the finder of facts in a trial must apply an ordinary observer test, applied through the eyes of an observer familiar with the prior art. Using this approach, there is no debate about how a combination of old design features define a point of novelty. The fact finder may take into consideration the similarity between the prior art and an alleged infringing article within the ordinary observer test. If an alleged infringing article is very similar to the prior art, then it may be difficult for a patentee to meet its burden to show that the alleged infringing article infringes the claim of the design patent. “[I]f, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other,” then the alleged infringing article infringes the claim of the design patent. Egyptian Goddess citing Gorham Co. v. White, 81 U.S. 511, 528 (1871). This early Supreme Court decision and a later decision by the Supreme Court form the basis for the en banc court’s decision in Egyptian Goddess.
The point of novelty test was sometimes confusing to a jury, and the court decided that if “…the accused design has copied a particular feature of the claimed design that departs conspicuously from the prior art, the accused design is naturally more likely to be regarded as deceptively similar to the claimed design, and thus infringing” by an ordinary observer familiar with the prior art. “At the same time, unlike the point of novelty test, the ordinary observer test does not present the risk of assigning exaggerated importance to small differences between the claimed and accused designs relating to an insignificant feature simply because that feature can be characterized as a point of novelty,” according to the en banc court.
The ordinary observer test is the appropriate test to be used in all circumstances to inform a fact finder of infringement. There will be cases when “…the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear ‘substantially the same’ to the ordinary observer,” as required by the decision in Gorham. However, in other cases, when “…the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art…,” which might make otherwise unnoticeable differences “…significant to the hypothetical ordinary observer who is conversant with the prior art.”
Elimination of the points of novelty as a separate, stand alone test means that the accused infringer, not the patentee, has the burden of production of the prior art, if the accused infringer chooses to rely on comparison prior art. However, it will remain the burden of the patentee to establish sufficient similarity between the claimed design and the accused design that would cause purchaser confusion. According to Egyptian Goddess, the burden of proof for infringement remains with the patentee to show that the accused design could “…reasonably be viewed as so similar to the claimed design that a purchaser familiar with the prior art would be deceived by the similarity between the claimed and accused designs, ‘inducing him to purchase one supposing it to be the other’” by a preponderance of the evidence.
Furthermore, the decision in Egyptian Goddess releases district courts from any perceived requirement for district courts to “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.” Instead, district courts are free to provide “…an appropriate measure of guidance to a jury without crossing the line and unduly invading the jury’s fact-finding process…,” leaving “…the question of verbal characterization of the claimed designs to the discretion of trial judges.” Time will tell if trial courts take this opportunity to provide less guidance to the jury on the meaning of design patent claims.
It is unclear whether the decision in Egyptian Goddess will give rise to more design patent infringement litigations, but the decision should make it easier for district courts to litigate design patent infringement cases. The decision provides a single test to be used, limits the patentee’s burden to establishing infringement by a preponderance of the evidence, places the burden of production of comparison prior art on the accused infringer, and releases the trial court from a tedious and sometimes burdensome exercise in design patent claim construction. These changes should reduce the length of design patent infringement litigations and should make litigation of design patent cases less costly for both plaintiffs and defendants.
Tuesday, December 2, 2008
Malicious Prosecution of Patent Infringement
Lessons from Mee Industries v. Dow Chemical
Mee sued Dow for malicious prosecution after a failed attempt by Dow to crush Mee as an annoying “cockroach,” as counsel for Mee pointed out during closing arguments in their successful defense in a patent infringement suit. According to Judge Presnell’s Order, the “Mee-as-cockroach” reference came from one of Dow’s internal emails. You would think that corporate America would learn from Microsoft’s mistakes in the already legendary antitrust litigation that candid emails of this kind are gold for a defendant trying to build a theme of David versus Goliath. One lesson that will be repeated again and again, unfortunately, is that email and text messages should be treated as formal, written correspondence and not as casual conversation, but this is not the most important lesson taken from this important case in the Middle District of Florida. Three important lessons may be learned from this case: small companies should consider the patent position of market leaders early on in product development and seek advice of patent counsel, malicious prosecution is a separate state law tort and is not precluded by failure to obtain attorneys fees under 35 U.S.C. § 285, and due diligence before bringing a patent infringement litigation requires at least some evidence of at least one instance of direct infringement.
A small company needs to consider, early on, whether a new product will infringe one of the patents of its larger rivals. Mee Industries did the right thing. According to the record, “Thomas Mee wrote to his lawyer that ‘we are going to have to face the Dow patent issue sometime soon … [e]ven if we only negotiate favorable terms for a license.’” Instead, Mee’s patent counsel was able to develop a strategy that allowed Mee Industries to avoid patent infringement, based on the known prior art and the interpretation of the meaning of the claims in Dow’s patent. In my experience, the vast majority of patents issued by the patent office provide any number of ways for competitors to design around the claims of the issued patent and to compete in the same marketplace as a patentee. If consulted early on in product development, a competent patent attorney can provide invaluable assistance to a small company faced with competition by a much larger market leader. Claim interpretation and prior art searching is not something that should be left to the last minute, because design changes might be necessary to make sure that a new product does not infringe an existing claim of a patent that is presumed to be valid. Advice of a dispassionate outside patent counsel should be sought.
To design around a problematic patent claim, patent counsel might need to work with designers and engineers early on before the design goes into production. According to Judge Presnell, any “…prudent (and non-infringing) business owner in Mee’s position – accused of infringement by a competitor with effectively bottomless pockets, faced with the prospect of spending a million dollars or more to successfully defend an infringement suit – would likely explore the possibility of making the problem go away more economically by securing a license.” How true! However, a successful design around of problematic patent claims can put a business in a position of being able to successfully seek a summary judgment motion of noninfringement in a patent infringement litigation. In addition, as shown by Mee Industries, a cause of action for malicious prosecution can be successful if the defendant is successful in the patent infringement litigation, and the defendant can show that the plaintiff did not have a reasonable belief, based on the facts and circumstances known to it at the time of filing of a patent litigation, that its patents were being infringed. This provides a far stronger position for a defendant to negotiate an end to a patent infringement lawsuit early on in the litigation process.
A defendant sued for malicious prosecution should not take the matter lightly. Unlike a request for attorneys fees pursuant to 35 U.S.C. § 285, which requires clear and convincing evidence that a case was so exceptional as to qualify for an award of attorney’s fees, malicious prosecution is a state law tort requiring proof of malice only by a preponderance of the evidence, a lesser burden. However, a cause of action for malicious prosecution must be brought in a separate civil action after the original action is terminated. To prevail in a malicious prosecution civil tort action under Florida law, Mee Industries had to establish: (1) that an original civil judicial proceeding was commenced or continued against Mee Industries; (2) that the present defendant was the legal cause of the original proceeding against Mee Industries; (3) that the termination of the original proceeding constituted a bona fide termination of that proceeding in favor of Mee Industries; (4) that there was an absence of probably cause for the original proceeding; (5) that there was malice on the part of the present defendant; and (6) that the plaintiff suffered damage as a result of the original proceeding. Alamo Rent-A-Car v. Mancusi, 632 So. 2d 1352, 1355 (Fla. 1994). According to the order in Mee Industries, under “…Florida law, probable cause for instituting suit is defined as ‘a reasonable ground of suspicion, supported by circumstances sufficiently strong in themselves to warrant a cautious man…’” to have had “‘...a reasonable belief, based on the facts and circumstances known to him, in the validity of the claim.’” (citing Dunnavant v. State, 46 So. 2d 871, 874 (Fla. 1950); and Wright v. Yurko, 446 So. 2d 1162, 1166 (Fla. 5th DCA 1984). The most difficult element to prove for the plaintiff is that there was malice on the part of the present defendant in bringing the original civil action.
In the court’s order, Judge Presnell dismantles Dow’s arguments that the evidence at its malicious prosecution trial was so overwhelmingly in favor of Dow that no reasonable juror could have found against Dow. The court, and presumably the jury as well, discounted the legal opinions from in house and litigation counsel and the vetting by the litigation review committee of Dow. The advice of in house counsel and the litigation review committee was discounted, at least in part, because the evidence presented was merely conclusory, according to the court, without providing adequate evidence to support the conclusion. This should be a warning to all in house counsel and review boards to document the evidence relied upon in vetting the decision to bring a patent infringement action.
Best practice would be to send the matter to outside patent counsel, separate from litigation counsel, for an opinion of infringement based on all of the evidence known to the potential plaintiff in the litigation. In Mee Industries the advice of outside patent counsel was discounted, at least in part, because the outside patent counsel was the same attorney who litigated the case, which is a powerful incentive to find infringement, when no direct infringement is shown by the facts and a proper claim interpretation.
In any decision to bring a patent infringement lawsuit, when a serious question arises as to whether direct infringement of a claim actually exists, the advice of an independent outside patent counsel, who is not the litigation counsel, is desirable. This independent voice of reason was not obtained by Dow (or at least the opinion was not shared in their defense of Mee Industries action for malicious prosecution). Instead, Mee Industries was able to present evidence that Dow never ascertained whether any of Mee’s customers were directly infringing one of the claims of Dow’s issued patent. Dow needed to show that at least one of Mee’s customers was directly infringing a patent claim in the underlying patent litigation, because Mee Industries product was capable of being used for noninfringing purposes. Indeed, Mee provided a list of its customers to Dow. Dow sent letters to the customers of Mee warning them of possible infringement litigation, but “Dow made no effort to ascertain whether any of these customers actually used Mee’s equipment in a manner that would infringe,” according to the court.
A patent infringement suit based on infringement of only a method claim may be more difficult to bring than one based on infringement of a machine or composition of matter. If there are noninfringing methods of using a machine, a determination must be made whether it is reasonable to assume that the machine is being used in an infringing process. This is a difficult hurdle that might require inspection of the equipment being used in service by one of the customers of potential defendant, if access is available to a potential plaintiff. Even then, prior to commencing an action for contributory infringement or inducement to infringe, a patent owner should consider whether there is sufficient evidence to commence a patent litigation.
Dow did have one of its engineers analyze Mee’s equipment, but failed to confirm that the equipment was being used in service in any infringing way. The engineer concluded that under certain temperature and humidity conditions that the equipment could be used to accomplish wet compression, but this report necessarily supported the opposite conclusion, as well, that Mee’s equipment could be used in ways that do not infringe. Also, mere incremental wet compression was old technology and was disclosed in the prior art, according to the court. Therefore, the engineer’s report did not support any inference of direct patent infringement. The engineer, “…among others, admitted as much at trial,” according to Judge Presnell. Without any evidence supporting an inference that Mee’s equipment inherently infringed each and every element of at least one of Dow’s claims, it was Dow’s duty to determine if one of Mee’s customers was using Mee’s equipment in a way that was infringing at least one of Dow’s claims. Without this step, Dow did not have probable cause under Florida law for instituting the patent infringement suit, according to the Order of Judge Presnell.
Still, Dow might have successfully defended against the tort of malicious prosecution if it had been able to show a good faith reliance on the advice of counsel in instituting the patent infringement lawsuit. The jury was asked whether before “…filing the patent infringement case against Mee, Dow in good faith sought the advice of a lawyer, gave the lawyer a full, correct, and fair statement of what it knew, and reasonably relied on the lawyer’s advice in filing the case.” According to the Order of the court, the “jury answered in the negative.” The court opined that “…the jury could have reasonably concluded that Dow had reason to believe its lawyers’ advice was not sound.” Mee Industries was able to present evidence to convince the jury that there was malice on the part of Dow in its determination to ratchet up the pressure on Mee Industries to force Mee Industries to either pay Dow for a license or get out of the market for power augmentation technology. Emails referring to Mee Industries as a “cockroach” could not have helped Dow’s cause. The lack of any showing of direct infringement by one of Mee’s customers was the focus of the Order. Hubris does not play well with a jury, and potential plaintiffs should be forewarned to avoid any appearance of it.
A patent owner has the right to assert an infringed patent, but there should be neither joy nor animus in determining if a patent litigation is warranted. These emotions cloud good judgment. It is always important to choose dispassionate opinion counsel to provide reasoned advice that can be reasonably relied upon to make an informed decision whether to bring a patent infringement action. Even if there is not “probable cause” to bring a patent litigation, a party can enter into good faith negotiations to license the patent and know-how related to the technology to others.
Although bringing patent litigation on a method claim may be problematic, under some circumstances, method claims may provide for the protection of substantial revenue generated from services, technology transfer and licensing that should not be overlooked in patent prosecution. This specific case does not suggest that method claims should be disfavored in any way, and this commentary should not be construed as suggesting that method claims have no value or that method claims may be safely ignored by potential infringers.
Thursday, October 23, 2008
Minks v. Polaris Industries, 2008 WL 4601732 (Fed.Cir.(Fla.) 2008)
Summary: Patent marking issues and the district court reduced damages awarded to a plaintiff in the Middle Destrict of Florida for infringement of a patent claim by a long time purchaser of the plaintiff’s patented products. In a decision rendered Oct. 17, 2008, The Court of Appeals for the Federal Circuit opined on the state of law in the Eleventh Circuit, including the Middle District of Florida. When based on a factual analysis about the reasonableness of jury award of compensatory damages in a patent infringement lawsuit, such as determining damages based on a reasonable royalty, a reduction in damages award must be accompanied by an offer for a new trial. “In the Eleventh Circuit, the district court's decision to reduce the jury's damages award without offering Minks a new trial is a matter of law reviewed de novo. See Johansen, 170 F.3d at 1335; see also Tronzo II, 236 F.3d at 1351 (identifying issue as a matter of law).” The Federal Circuit used the law of the 11th Circuit and found that the exception for reducing an award without a new trial based solely on an error of law did not apply to the reasonableness of juries calculation of compensatory damages for patent infringement.
Excerpts from the decision follow.
The Reexamination Clause of the Seventh Amendment states that "no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of common law." U.S. Const. amend. VII. "[T]he Reexamination Clause does not inhibit the authority of a trial judge to grant new trials 'for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.' " Gasperini v. Ctr. for Humanities, Inc., 518 U.S. 415, 433, 116 S.Ct. 2211, 135 L.Ed.2d 659 (1996). This authority extends to "overturning verdicts for excessiveness and ordering a new trial without qualification, or conditioned on the verdict winner's refusal to agree to a reduction (remittitur)." Id. (citing Dimick v. Schiedt, 293 U.S. 474, 486-87, 55 S.Ct. 296, 79 L.Ed. 603 (1935)). Nevertheless, the Supreme Court has long interpreted the Seventh Amendment as requiring that the exercise of a district court's discretion to set aside an excessive jury award be accompanied by an offer of a new trial. In Kennon v. Gilmer the [Supreme] Court stated: [I]n a case in which damages for a tort have been assessed by a jury at an entire sum, no court of law, upon a motion for a new trial for excessive damages and for insufficiency of the evidence to support the verdict, is authorized, according to its own estimate of the amount of damages which the plaintiff ought to have recovered, to enter an absolute judgment for any other sum than that assessed by the jury. 131 U.S. 22, 29, 9 S.Ct. 696, 33 L.Ed. 110 (1889). The Court reaffirmed this principle in Hetzel v. Prince William County, holding that the entry of judgment for a lesser amount than that awarded by the jury, without the offer of a new trial, "cannot be squared with the Seventh Amendment" when the reduction is premised on a finding that the evidence does not support the award. 523 U.S. 208, 211, 118 S.Ct. 1210, 140 L.Ed.2d 336 (1998).
[The] Eleventh Circuit held in Johansen that when a jury's award is premised on "legal error," a court may reduce the award and enter an absolute judgment in an amount sufficient to correct the legal error without offering the plaintiff the option of a new trial. Compare Johansen, 170 F.3d at 1328, 1331 (stating that "the Seventh Amendment prohibits reexamination of a jury's determination of the facts, which includes its assessment of the extent of plaintiff's injury," and analyzing Hetzel), with id. at 1330-31 ("The Seventh Amendment is not offended by this reduction because the issue is one of law and not fact."). Johansen considered whether a federal court may reduce a punitive damages award by an amount required by the Due Process Clause of the Fourteenth Amendment without offering the plaintiff a new trial. In its analysis, the court identified two types of legal error that permit the reduction of a jury award without the offer of a new trial. First, "where a portion of a verdict is for an identifiable amount that is not permitted by law, the court may simply modify the jury's verdict to that extent and enter judgment for the correct amount." Id. at 1330 (citing N .Y., L.E. & W.R. Co. v. Estill, 147 U.S. 591, 13 S.Ct. 444, 37 L.Ed. 292 (1893)). [FN4] Second, a court may reduce a jury's punitive damages award when the award "enter[s] that 'zone of arbitrariness that violates the Due Process Clause of the Fourteenth Amendment.' " Id. at 1331, 1334 (quoting BMW of N. Am., Inc. v. Gore, 517 U.S. 559, 568, 116 S.Ct. 1589, 134 L.Ed.2d 809 (1996)). Importantly, both types of error derive from the operation of legal principles without regard to the evidence presented by the plaintiff. That is, legal errors permitting the reduction of a jury award without the offer of a new trial arise without regard to whether the jury's award is or is not supportable as an evidentiary matter. [FN5]
Under the Eleventh Circuit's analysis of Supreme Court precedent, we conclude that the district court's reduction of the jury's compensatory damages award in this case is governed squarely by Hetzel.
In its analysis of this award, the district court identified no legal principle--such as was present in Estill (state law prohibition on awarding interest) or Johansen (Due Process Clause of the Fourteenth Amendment)--that would limit the amount of a reasonable royalty in this case. Rather, the district court examined the evidence in the record with respect to the components of a reasonable royalty--number of infringing sales, royalty base, and royalty rate--and found that the evidence could not support the jury's damages award. Damages Reduction Order at 25-28. The court further found that "at most the legally competent evidence in the record supported a jury award based on a price per reverse speed limiter of $6.11, a reasonable royalty of 4 percent, and total infringing sales of 116,270, for a total compensatory damage award of $27,904.80." Id. at 33. Despite its effort to cast this decision as one of law rather than fact, the court necessarily engaged in an independent review of the evidence and substituted its conclusion for that of the jury on the factual issue of compensatory damages. Cf. Cooper Indus., Inc. v. Leatherman Tool Group, Inc., 532 U.S. 424, 437, 121 S.Ct. 1678, 149 L.Ed.2d 674 (2001) (" 'Unlike the measure of actual damages suffered, which presents a question of historical or predictive fact, the level of punitive damages is not really a "fact" "tried" by the jury.' " (quoting Gasperini, 518 U.S. at 448, 459 (1996) (Scalia, J., dissenting))); see also Micro Chem. ., Inc. v. Lextron, Inc., 317 F.3d 1387, 1394 (Fed.Cir.2003) ("The amount of damages based on a reasonable royalty is an issue of fact.").
A comparison of the Georgia-Pacific factors and the standard of a hypothetical negotiation to the evidence of record in this case makes clear that the district court's reduction of compensatory damages necessarily amounted to an assessment of the sufficiency of the evidence, and as such, the option of a new trial was required.
NOTICE INSTRUCTION
As an interesting aside, the Federal Circuit sided with Minks on an improper jury instruction about actual notice.
Title 35 U.S.C. § 287(a) of the patent marking statute provides that where a patentee has failed to mark its patented product, "no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice." The plaintiff, Minks, did not mark its products; therefore, damages are limited by the date that the defendant received actual notice satisfying the requirements of § 287(a). The date of actual notice can be critical to a damages calculation in any case that includes a successful patent marking defense, because sales of infringing articles are not counted towards a damages award until proper notice under 287(a) is provided.
Excerpts of the decision follow.
The district court gave the following instruction on actual notice:
“The date notice was given is the date on which Minks communicated to Polaris a specific charge that one of its products may infringe claim two of the '080 patent.”
Minks objected to this instruction on the grounds that it precludes a jury from finding notice prior to discovery of Polaris' infringement. Minks thus requested the following instruction:
“The date notice was given is the date on which Minks communicated to Polaris a specific charge that one of its products infringed or would infringe claim two of the '080 Patent.”
Minks argues that the proposed instruction indicates that a patentee can provide sufficiently specific notice to an accused infringer before the patentee discovers the actual infringement by the accused. We agree with Minks that the given instruction does not fairly and correctly state the issues and the law; the jury should have been more clearly instructed that it was permitted to find notice prior to the date Minks discovered Polaris' infringement.
Section 287(a) requires actual notice to the accused "to assure that the recipient knew of the adverse patent during the period in which liability accrues, when constructive notice by marking is absent." SRI Int'l, Inc. v. Adv. Tech. Labs., Inc., 127 F.3d 1462, 1470 (Fed.Cir.1997). "[I]n SRI we explained that as long as the communication from the patentee provides sufficient specificity regarding its belief that the recipient may be an infringer, the statutory requirement of actual notice is met. Thus, the requirement of 'a specific charge of infringement' set forth in Amsted does not mean the patentee must make an 'unqualified charge of infringement.' " Gart v. Logitech, Inc., 254 F.3d 1334, 1345-46 (Fed.Cir.2001) (internal citation omitted). Under this standard, general letters referring to the patent and including an admonishment not to infringe do not constitute actual notice. See Amsted Indus. Inc. v. Buckeye Steel Casting Co., 24 F.3d 178, 187 (Fed.Cir.1994). Conversely, letters that specifically identify a product and offer a license for that product do constitute actual notice. See Gart, 254 F.3d at 1346.
As a long time customer of Minks Engineering, Polaris knew of the '080 patent. Moreover, as early as 1997, Minks specifically communicated his belief that reverse speed limiters sensing engine speed and a DC input infringe the '080 patent. Similarly, on September 24, 2001, Minks sent Polaris a letter confirming that a third party vendor was refusing to build a quoted reverse speed limiter for Polaris because the quoted part would infringe the '080 patent. During this time period, Polaris misrepresented the nature of its substitute reverse speed limiter, employed since 1996, as sensing ground speed rather than engine speed. Although it is not for us to determine whether, as a factual matter, any of these exchanges were sufficient actual notice under § 287(a), the court's instruction to the jury should have more clearly articulated that, in the context of this ongoing relationship between the parties, knowledge of a specific infringing device is not a legal prerequisite to such a finding.
Excerpts from the decision follow.
The Reexamination Clause of the Seventh Amendment states that "no fact tried by a jury, shall be otherwise re-examined in any Court of the United States, than according to the rules of common law." U.S. Const. amend. VII. "[T]he Reexamination Clause does not inhibit the authority of a trial judge to grant new trials 'for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States.' " Gasperini v. Ctr. for Humanities, Inc., 518 U.S. 415, 433, 116 S.Ct. 2211, 135 L.Ed.2d 659 (1996). This authority extends to "overturning verdicts for excessiveness and ordering a new trial without qualification, or conditioned on the verdict winner's refusal to agree to a reduction (remittitur)." Id. (citing Dimick v. Schiedt, 293 U.S. 474, 486-87, 55 S.Ct. 296, 79 L.Ed. 603 (1935)). Nevertheless, the Supreme Court has long interpreted the Seventh Amendment as requiring that the exercise of a district court's discretion to set aside an excessive jury award be accompanied by an offer of a new trial. In Kennon v. Gilmer the [Supreme] Court stated: [I]n a case in which damages for a tort have been assessed by a jury at an entire sum, no court of law, upon a motion for a new trial for excessive damages and for insufficiency of the evidence to support the verdict, is authorized, according to its own estimate of the amount of damages which the plaintiff ought to have recovered, to enter an absolute judgment for any other sum than that assessed by the jury. 131 U.S. 22, 29, 9 S.Ct. 696, 33 L.Ed. 110 (1889). The Court reaffirmed this principle in Hetzel v. Prince William County, holding that the entry of judgment for a lesser amount than that awarded by the jury, without the offer of a new trial, "cannot be squared with the Seventh Amendment" when the reduction is premised on a finding that the evidence does not support the award. 523 U.S. 208, 211, 118 S.Ct. 1210, 140 L.Ed.2d 336 (1998).
[The] Eleventh Circuit held in Johansen that when a jury's award is premised on "legal error," a court may reduce the award and enter an absolute judgment in an amount sufficient to correct the legal error without offering the plaintiff the option of a new trial. Compare Johansen, 170 F.3d at 1328, 1331 (stating that "the Seventh Amendment prohibits reexamination of a jury's determination of the facts, which includes its assessment of the extent of plaintiff's injury," and analyzing Hetzel), with id. at 1330-31 ("The Seventh Amendment is not offended by this reduction because the issue is one of law and not fact."). Johansen considered whether a federal court may reduce a punitive damages award by an amount required by the Due Process Clause of the Fourteenth Amendment without offering the plaintiff a new trial. In its analysis, the court identified two types of legal error that permit the reduction of a jury award without the offer of a new trial. First, "where a portion of a verdict is for an identifiable amount that is not permitted by law, the court may simply modify the jury's verdict to that extent and enter judgment for the correct amount." Id. at 1330 (citing N .Y., L.E. & W.R. Co. v. Estill, 147 U.S. 591, 13 S.Ct. 444, 37 L.Ed. 292 (1893)). [FN4] Second, a court may reduce a jury's punitive damages award when the award "enter[s] that 'zone of arbitrariness that violates the Due Process Clause of the Fourteenth Amendment.' " Id. at 1331, 1334 (quoting BMW of N. Am., Inc. v. Gore, 517 U.S. 559, 568, 116 S.Ct. 1589, 134 L.Ed.2d 809 (1996)). Importantly, both types of error derive from the operation of legal principles without regard to the evidence presented by the plaintiff. That is, legal errors permitting the reduction of a jury award without the offer of a new trial arise without regard to whether the jury's award is or is not supportable as an evidentiary matter. [FN5]
Under the Eleventh Circuit's analysis of Supreme Court precedent, we conclude that the district court's reduction of the jury's compensatory damages award in this case is governed squarely by Hetzel.
In its analysis of this award, the district court identified no legal principle--such as was present in Estill (state law prohibition on awarding interest) or Johansen (Due Process Clause of the Fourteenth Amendment)--that would limit the amount of a reasonable royalty in this case. Rather, the district court examined the evidence in the record with respect to the components of a reasonable royalty--number of infringing sales, royalty base, and royalty rate--and found that the evidence could not support the jury's damages award. Damages Reduction Order at 25-28. The court further found that "at most the legally competent evidence in the record supported a jury award based on a price per reverse speed limiter of $6.11, a reasonable royalty of 4 percent, and total infringing sales of 116,270, for a total compensatory damage award of $27,904.80." Id. at 33. Despite its effort to cast this decision as one of law rather than fact, the court necessarily engaged in an independent review of the evidence and substituted its conclusion for that of the jury on the factual issue of compensatory damages. Cf. Cooper Indus., Inc. v. Leatherman Tool Group, Inc., 532 U.S. 424, 437, 121 S.Ct. 1678, 149 L.Ed.2d 674 (2001) (" 'Unlike the measure of actual damages suffered, which presents a question of historical or predictive fact, the level of punitive damages is not really a "fact" "tried" by the jury.' " (quoting Gasperini, 518 U.S. at 448, 459 (1996) (Scalia, J., dissenting))); see also Micro Chem. ., Inc. v. Lextron, Inc., 317 F.3d 1387, 1394 (Fed.Cir.2003) ("The amount of damages based on a reasonable royalty is an issue of fact.").
A comparison of the Georgia-Pacific factors and the standard of a hypothetical negotiation to the evidence of record in this case makes clear that the district court's reduction of compensatory damages necessarily amounted to an assessment of the sufficiency of the evidence, and as such, the option of a new trial was required.
NOTICE INSTRUCTION
As an interesting aside, the Federal Circuit sided with Minks on an improper jury instruction about actual notice.
Title 35 U.S.C. § 287(a) of the patent marking statute provides that where a patentee has failed to mark its patented product, "no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice." The plaintiff, Minks, did not mark its products; therefore, damages are limited by the date that the defendant received actual notice satisfying the requirements of § 287(a). The date of actual notice can be critical to a damages calculation in any case that includes a successful patent marking defense, because sales of infringing articles are not counted towards a damages award until proper notice under 287(a) is provided.
Excerpts of the decision follow.
The district court gave the following instruction on actual notice:
“The date notice was given is the date on which Minks communicated to Polaris a specific charge that one of its products may infringe claim two of the '080 patent.”
Minks objected to this instruction on the grounds that it precludes a jury from finding notice prior to discovery of Polaris' infringement. Minks thus requested the following instruction:
“The date notice was given is the date on which Minks communicated to Polaris a specific charge that one of its products infringed or would infringe claim two of the '080 Patent.”
Minks argues that the proposed instruction indicates that a patentee can provide sufficiently specific notice to an accused infringer before the patentee discovers the actual infringement by the accused. We agree with Minks that the given instruction does not fairly and correctly state the issues and the law; the jury should have been more clearly instructed that it was permitted to find notice prior to the date Minks discovered Polaris' infringement.
Section 287(a) requires actual notice to the accused "to assure that the recipient knew of the adverse patent during the period in which liability accrues, when constructive notice by marking is absent." SRI Int'l, Inc. v. Adv. Tech. Labs., Inc., 127 F.3d 1462, 1470 (Fed.Cir.1997). "[I]n SRI we explained that as long as the communication from the patentee provides sufficient specificity regarding its belief that the recipient may be an infringer, the statutory requirement of actual notice is met. Thus, the requirement of 'a specific charge of infringement' set forth in Amsted does not mean the patentee must make an 'unqualified charge of infringement.' " Gart v. Logitech, Inc., 254 F.3d 1334, 1345-46 (Fed.Cir.2001) (internal citation omitted). Under this standard, general letters referring to the patent and including an admonishment not to infringe do not constitute actual notice. See Amsted Indus. Inc. v. Buckeye Steel Casting Co., 24 F.3d 178, 187 (Fed.Cir.1994). Conversely, letters that specifically identify a product and offer a license for that product do constitute actual notice. See Gart, 254 F.3d at 1346.
As a long time customer of Minks Engineering, Polaris knew of the '080 patent. Moreover, as early as 1997, Minks specifically communicated his belief that reverse speed limiters sensing engine speed and a DC input infringe the '080 patent. Similarly, on September 24, 2001, Minks sent Polaris a letter confirming that a third party vendor was refusing to build a quoted reverse speed limiter for Polaris because the quoted part would infringe the '080 patent. During this time period, Polaris misrepresented the nature of its substitute reverse speed limiter, employed since 1996, as sensing ground speed rather than engine speed. Although it is not for us to determine whether, as a factual matter, any of these exchanges were sufficient actual notice under § 287(a), the court's instruction to the jury should have more clearly articulated that, in the context of this ongoing relationship between the parties, knowledge of a specific infringing device is not a legal prerequisite to such a finding.
Bella Builders, Inc. v. Joseph Minghenelli, 2008 WL 4569880 (M.D.Fla. 2008)
Summary: In the Middle District of Florida, plaintiff is not entitled to a cause of action for conversion of intellectual property in architectural plans under state law conversion, because U.S. copyright laws preempts such a claim for alleged derivative works.
According to JOHN E. STEELE, District Judge of the Middle District of Florida, “Section 301 of the Copyright Act provides in relevant part that: [o]n January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished are governed exclusively by this title.” No person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. 17 U.S.C. § 301(a). The "intention of section 301 is to preempt and abolish any rights under the common law or statutes of a State that are equivalent in copyright and that extend to works coming within the scope of the Federal copyright law." Dunlap v. G & L Holding Group, Inc., 381 F.3d 1285, 1296 (11th Cir.2004) (internal citations omitted). In order to determine whether a state cause of action is preempted, the Court must determine whether: (1) the rights at issue fall within the "subject matter of copyright" set forth in sections 102 and 103; and (2) the rights at issue are equivalent to the exclusive rights of section 106. Dunlap, 381 F.3d at 1294; see also Crow v. Wainwright, 720 F.2d 1224, 1225-26 (11th Cir.1983).
Architectural plans are architectural works fixed in a tangible medium of expression, which are within the subject matter of copyright law; therefore, “the first part of the preemption analysis is satisfied….” See 17 U.S.C. § 102(a). The “owner of a copyright has the exclusive right to: (1) reproduce the copyrighted work; and (2) prepare derivative works based upon the copyrighted work. See 17 U.S.C. § 106. According to the court, the count of conversion of intellectual property alleges that the designs of the defendant’s architectural were derived from the plaintiff’s architectural works; therefore, pursuant to 17 U.S.C. § 106(2), the rights at issue are equivalent to one of the exclusive rights of section 106, namely an allegation that the designs are a derivative work of the plaintiff’s architectural plans. “Therefore, the Court finds … that both prongs of the preemption test have been met,” resulting in dismissal of the count alleging conversion of intellectual property, a state law claim.
According to JOHN E. STEELE, District Judge of the Middle District of Florida, “Section 301 of the Copyright Act provides in relevant part that: [o]n January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished are governed exclusively by this title.” No person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. 17 U.S.C. § 301(a). The "intention of section 301 is to preempt and abolish any rights under the common law or statutes of a State that are equivalent in copyright and that extend to works coming within the scope of the Federal copyright law." Dunlap v. G & L Holding Group, Inc., 381 F.3d 1285, 1296 (11th Cir.2004) (internal citations omitted). In order to determine whether a state cause of action is preempted, the Court must determine whether: (1) the rights at issue fall within the "subject matter of copyright" set forth in sections 102 and 103; and (2) the rights at issue are equivalent to the exclusive rights of section 106. Dunlap, 381 F.3d at 1294; see also Crow v. Wainwright, 720 F.2d 1224, 1225-26 (11th Cir.1983).
Architectural plans are architectural works fixed in a tangible medium of expression, which are within the subject matter of copyright law; therefore, “the first part of the preemption analysis is satisfied….” See 17 U.S.C. § 102(a). The “owner of a copyright has the exclusive right to: (1) reproduce the copyrighted work; and (2) prepare derivative works based upon the copyrighted work. See 17 U.S.C. § 106. According to the court, the count of conversion of intellectual property alleges that the designs of the defendant’s architectural were derived from the plaintiff’s architectural works; therefore, pursuant to 17 U.S.C. § 106(2), the rights at issue are equivalent to one of the exclusive rights of section 106, namely an allegation that the designs are a derivative work of the plaintiff’s architectural plans. “Therefore, the Court finds … that both prongs of the preemption test have been met,” resulting in dismissal of the count alleging conversion of intellectual property, a state law claim.
Tuesday, October 14, 2008
Cohesive Technologies v. Waters Corp. (Fed Cir 10/7/08)
The patents at issue in the appeal to The Court of Appeals for the Federal Circuit (CAFC) have claims drawn to a high performance liquid chromatography process (“HPLC”), which separates, identifies and measures compounds in a liquid. The terms to be construed included the terms “rigid” and “greater than about 30” microns. Claim construction requires claims to be interpreted within the context of the claims themselves and the specification. Also, the prosecution history must be considered in determining what the claims mean. There were three interesting holding by the CAFC in this recent decision: limiting disclaimer to what is actually disclaimed, finding error in keeping the issue of anticipation from the jury, and an interesting determination of the meaning of the term “about” that precludes the consideration of the Doctrine of Equivalence as already included within the literal meaning of the claim term.
In one matter before the CAFC, Cohesive Technologies asserted that the polymeric material used in particles of Waters Corp. is rigid. However, Waters Corp. argued that the prosecution history clearly and unequivocally disclaimed polymer materials as insufficiently rigid to be considered “rigid” within a proper interpretation of the claims. This interpretation of the prosecution history by Waters Corp. was an overly broad reading of the record, which merely distinguished a particular type of polymer particle as being not rigid. Had Waters Corp. used that particular type of polymer particle, then its particles would not have infringed the asserted claims. The CAFC held that there was sufficient evidence to support the juries determination the polymer particles used by Waters Corp. were rigid within the meaning of the claim. In determining the meaning of a claim term in a patent, it is important not to overly broadly narrow meanings of claims terms in ways that were not clearly and unequivocally disclaimed by the applicant.
In a second issue, CAFC agreed with Waters Corp. that granting judgment as a matter of law of no anticipation before the jury was allowed to consider the issue was error. The trial court thought that preserving the issue of obviousness over the same references precluded any harm to Waters Corp., but obviousness requires a different analysis than anticipation. A reference anticipates a claim if it reads on each and every claim limitation exactly, without considering any of the other factors that must be considered in an determination of obviousness. If not allowed to consider anticipation, a jury might consider a claim to be nonobvious for any of a number of reasons that are not relevant to a determination of anticipation. Thus, the issue of anticipation should not have been removed from the juries consideration if it was “iffy” as suggested by the trial court. Both anticipation and obviousness must be submitted to the jury, unless no claim was anticipated as a matter of law with deference to the defendant.
CAFC overturned the trial courts interpretation of the meaning of “greater than about 30” microns, because the use of “about 30” within the context of the claims and the specification provided a range for the lower range of particle size. Interestingly, CAFC held that the claim was not entitled to the benefit of the Doctrine of Equivalents, because by introducing “about” to the claim limitation, the applicant had already captured what would have been captured by the Doctrine of Equivalents within the literal meaning of the claim. The term “about” within the context of the claims, the specification, prosecution history and the prior art meant plus or minus 15.22%, according to the CAFC. For this reason, the CAFC reversed the trial court’s judgment of noninfringement based on trial court’s erroneous claim construction of “at least about 30” microns, without consideration of the Doctrine of Equivalents for the applicable literal range of particle size. Claims drafted with a similar use of “about” may avoid arguments that the Doctrine of Equivalents vitiates a claim limitation specifying a lower or higher critical range within a claim by introducing a variance within the literal meaning of the claim.
In one matter before the CAFC, Cohesive Technologies asserted that the polymeric material used in particles of Waters Corp. is rigid. However, Waters Corp. argued that the prosecution history clearly and unequivocally disclaimed polymer materials as insufficiently rigid to be considered “rigid” within a proper interpretation of the claims. This interpretation of the prosecution history by Waters Corp. was an overly broad reading of the record, which merely distinguished a particular type of polymer particle as being not rigid. Had Waters Corp. used that particular type of polymer particle, then its particles would not have infringed the asserted claims. The CAFC held that there was sufficient evidence to support the juries determination the polymer particles used by Waters Corp. were rigid within the meaning of the claim. In determining the meaning of a claim term in a patent, it is important not to overly broadly narrow meanings of claims terms in ways that were not clearly and unequivocally disclaimed by the applicant.
In a second issue, CAFC agreed with Waters Corp. that granting judgment as a matter of law of no anticipation before the jury was allowed to consider the issue was error. The trial court thought that preserving the issue of obviousness over the same references precluded any harm to Waters Corp., but obviousness requires a different analysis than anticipation. A reference anticipates a claim if it reads on each and every claim limitation exactly, without considering any of the other factors that must be considered in an determination of obviousness. If not allowed to consider anticipation, a jury might consider a claim to be nonobvious for any of a number of reasons that are not relevant to a determination of anticipation. Thus, the issue of anticipation should not have been removed from the juries consideration if it was “iffy” as suggested by the trial court. Both anticipation and obviousness must be submitted to the jury, unless no claim was anticipated as a matter of law with deference to the defendant.
CAFC overturned the trial courts interpretation of the meaning of “greater than about 30” microns, because the use of “about 30” within the context of the claims and the specification provided a range for the lower range of particle size. Interestingly, CAFC held that the claim was not entitled to the benefit of the Doctrine of Equivalents, because by introducing “about” to the claim limitation, the applicant had already captured what would have been captured by the Doctrine of Equivalents within the literal meaning of the claim. The term “about” within the context of the claims, the specification, prosecution history and the prior art meant plus or minus 15.22%, according to the CAFC. For this reason, the CAFC reversed the trial court’s judgment of noninfringement based on trial court’s erroneous claim construction of “at least about 30” microns, without consideration of the Doctrine of Equivalents for the applicable literal range of particle size. Claims drafted with a similar use of “about” may avoid arguments that the Doctrine of Equivalents vitiates a claim limitation specifying a lower or higher critical range within a claim by introducing a variance within the literal meaning of the claim.
Tuesday, August 5, 2008
Claim Interpretation
One of the trends that I am seeing at the patent office is a tendency by Examiners to broaden the claims beyond the context provided in the specification. This allows references to be cited that would otherwise not read on the claims, if the claims were properly interpreted in light of the specification and the level of skill of a person having ordinary skill in the pertinent field. There was a time when precedent of the Court of Appeals of the Federal Circuit supported reading the claim language broadly, according to its plain meaning or a dictionary definition. That time has past. The precedent of the Federal Circuit and the U.S. Supreme Court has established that Applicant’s specification is the best source for determining what the claims mean. Thus, now more than ever, both the drafting of a system of claims that protects all of the aspects of the invention and the context provided by the written description are critical to obtaining the proper scope of protection in an application filed with the United States Patent & Trademark Office. The increasing importance of the specification for interpreting the meaning of the claims means that most clients will be better served by developing long term relationships with a competent, local patent counsel that develops an intimate knowledge of the technology and business goals of the client.
The claims of a patent set the scope of protection granted by the patent. Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir.2005). However, in construing what the claims mean, the patent office must determine what the claim language of the claims would have meant to a person having ordinary skill in the relevant art at the time of the invention within the context provided by the specification. Id. at 1313. According to precedent, the hypothetical “person of ordinary skill in the art” interprets the meaning of the claims after having read the entire patent and within the context of the patent as a whole. Id. The specification--and other intrinsic evidence, such as the prosecution history and the language of other claims--often provides the best indicator of the meaning of claim language. Id. at 1314-15. Provided that due caution is exercised to avoid reading limitations from the specification into the claims, the specification is "…the single best guide to the meaning of a disputed claim term…" and is usually dispositive. Id. at 1315 and 1323 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)).
The patent protects the entire scope of the invention as stated in the claim, not merely the example or examples of the invention provided in the specification. See 415 F.3d at 1312. However, any interpretation of the claims must be equally careful to avoid reading the claims too broadly, as would be done if the claims terms are defined according to dictionary definitions rather than in the context of the specification. Id. at 1321. While extrinsic evidence, such as learned treatises and technical dictionaries, may be consulted, the purpose of such extrinsic evidence is limited. Extrinsic evidence merely provides "…background on the technology at issue, to explain how an invention works…” or ensures that the Examiner's “…understanding of the technical aspects of the patent is consistent with that of a person having ordinary skill in the art…” or establishes that a particular claim term has a particular meaning within the context of the specification or within the pertinent field. Id. at 1318. Again, the specification is the best source for determining the meaning of a claim term, and assertions of what a claim term means that are not supported by the specification, prosecution history or the prior art in the pertinent field are not useful. Id.
The strongest patent protection is provided by having competent, local patent counsel working closely with the inventors to describe the background of the invention and to prepare a written description that provides context to the language used in the claims. Development of the context needed to support the claims is enhanced by early and frequent contact between patent counsel and the inventors involved in the research and development process. Thus, the patent process benefits from a close proximity between a local patent counsel and the client. The failures and technical challenges faced during reduction of an invention to practice establish a context for defining the patentable features of the claims that are nonobvious over the state of the art at the time that the invention is made. The technical vocabulary developed during close collaboration between local patent counsel and the inventors is invaluable in the understanding of the invention and the defnition of the claim language used in the drafting of strong patent protection. Furthermore, a local patent counsel working closely with inventors is much more likely to be able to identify measurements and comparisons that may be made during evaluation of a new technology, which can be used to distinguish the new technology over the prior art, providing “objective evidence of nonobviousness” such as synergistic results or results that are surprising and unexpected, which is the sin qua non for patentability post-KSR.[1]
Finally, if an ongoing relationship exits between local patent counsel and both top management and the innovators of a client, then patent counsel is much more capable of identifying those particular discoveries and improvements over the prior art that warrant patent protection: inventions with features distinguishable over the known prior art, inventions having important applications within the field of the client or within a field of a potential licensee, and inventions that are aligned with the business goals of the client and support the business objectives of the client. When this type of integration of the client and local patent counsel is achieved, the drafting of a system of patent claims that are fully supported and adequately defined within the context of the written description of the specification is not difficult. The claim terms are defined using the language adopted by innovators within the particular field and defined by the written description, providing no room for abusive over-broadening by the patent office. More importantly, the scope of the claims protected by patenting is not selected merely for ease of patenting or for incremental improvements. Instead, a consistent framework is established for the language used in the claims within the context of the written descriptions across the entire patent portfolio, which strengthens all of the issued patents and pending applications within the enterprise’s intellectual property portfolio.
[1] In KSR v. Teleflex the U.S. Supreme Court overruled the Federal Circuit’s rigid application of the TSM test and instead relied on earlier precedent that patent examiners and the courts must consider (1) the scope and content of the prior art, (2) the differences between the claimed invention and the prior art, (3) the level of ordinary skill in the pertinent art, and (4) objective evidence relevant to the issue of obviousness, when determining if a claim is nonobvious over the prior art. (For an introduction to patentability post-KSR see http://www.bpcouncil.com/apage/488.php.)
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