obvIPat - Obviously Patentable

The blog for inventors, in-house counsel, & entrepreneurs.

Archive for January, 2011

CAFC Weekly: January 28, 2011

by Orlando Lopez

There were no precedential opinions related to intellectual property issued during the week ending January 28, 2011.

Share

"The only man who never makes a mistake is the man who never does anything."
Theodore Roosevelt, 26th US President

Share

CAFC Weekly: January 21, 2011

by Orlando Lopez

The two patent related precedential opinions for this week include one opinion in which the CAFC further defines the meaning of “use” in patent infringement, holding that “the on-demand operation is a ‘use’ of the system as a matter of law,” and another opinion relating to claim interpretation (“claim construction”).

In Centillion Data Systems LLC v. Qwest Communications International Inc., Centillion owns a patent for a system for collecting, processing and delivering information from a service provider to a customer.  Centillion alleged that a number of Qwest’s billing systems infringed some of the claims of the patent.  The accused products include a back-office system controlled by Qwest and a front-end client application that a user installs in his/her computer.  The District Court determined that no single party used all the limitations of any of the claims in question and granted summary judgment of non-infringement.  The CAFC  reversed the summary judgment of non-infringement and held that when the user places the entire system into service that is “‘use’ of the system as a matter of law.”  In the system at issue, “the customer controls the system by creating a query and transmitting it to Qwest’s back-end,”  and the user places the entire system into service.  The District Court also determined that there was no evidence that Qwest had any direction or control over the users of the accused products and, therefore, could not be found vicariously liable for infringement.  The CAFC upheld the finding of no vicarious liability.  This opinion clarifies the definition of what “use” is in terms of infringement when the system accused of infringement is distributed (in this case a back-end and front-end, one being held by Qwest and other being held by the user).   It should be noted that the claims at issue here were system claims, the results would be different for method claims.

In Arlington Industries Inc. v. Bridgeport Fittings Inc., Arlington owns several patents for  improved electrical connectors and sued  Bridgeport for infringement.  Arlington had previously sued Bridgeport for infringement of the same patents, but alleged that other Bridgeport products, different from those in the present case, infringed.  The District Court, in that prior case, found that those other Bridgeport products had infringed Arlington’s patents.  In the present case, the District Court interpreted the term “spring metal adaptor” (a term used in the claims) differently from the previous District Court,  and granted summary judgment of non-infringement.  Arlington appealed  to the CAFC and the CAFC vacated the grant of summary judgment of non-infringement.  This opinion provides a good example of the difficulty of interpreting a claim based on the specification and prosecution history while not reading limitations from the specification into the claim.  The opinion illustrates the difficulties in claim interpretation (“claim construction”) and the fact that reasonable judges can arrive at different claim interpretations (the dissenting opinion providing a good example).

Share

Patent Damages Inflation – The Courts And Microsoft Spearhead The Reform

by Orlando Lopez

The recent Price Waterhouse Coopers report on patent litigation shows the difference between jury awards and bench awards, jury awards being larger. The old standard for patent damages, established by Polaroid, has now been topped, with cases in 2007 and 2009 where the patent damages exceeded $1 billion. The creep in patent damages and the increase in litigation by non-practicing entities (NPE’s-the entities formerly known as “patent trolls”) have been concerns of a number of companies, which are reflected in the patent reform proposals. While patent reform has been slow to move through Congress given the conflicting interests of stakeholders, the courts have been moving to bring rationality to patent damage awards. Read the rest of this entry »

Share

CAFC Weekly: January 14, 2011

by Orlando Lopez

This week produced two precedential opinions, one relating to awarding attorneys fees and costs to the prevailing defendant and another relating to whether a federal district court has jurisdiction over a malpractice case arising out of a patent dispute.

In iLor v. Google, iLor owns  a patent for methods “for adding a user selectable function to a hyperlink” and had sued Google for infringement.  The District Court, after interpreting the claim in question, granted summary judgment of non-infringement.  iLor appealed to the CAFC and the CAFC upheld the claim interpretation of the District Court and the judgment of non-infringement. On remand to the District Court, Google asked for and was granted, attorney fees and costs.  iLor again appealed to the CAFC.  The CAFC reversed the grant of attorney’s fees and costs, stating that a reasonable plaintiff could have offered the claim interpretation that ilor offered to show infringement, and that the patent specification or the prosecution history, did not clearly rule out the claim construction offered by iLor.  The CAFC stated that “simply being wrong about claim construction should not subject a party to sanctions where the construction is not objectively baseless.” The CAFC stayed away from the British Rule, where the loser pays the costs and fees.  The CAFC stated that sanctions, due to declaring the case special, require that the prevailing party show by clear and convincing evidence (a higher standard than more likely than not-preponderance of the evidence) that the suit was frivolous.

In Warrior Sports Inc.  v.  Dickinson Wright LLP, Warrior filed a malpractice suit against Dickinson based on a number of errors during patent prosecution, including errors that led to a defense of inequitable conduct in an infringement suit brought by Warrior and failure to pay the maintenance fee for the patents being asserted by Warrior in the infringement suit.  The infringement suit was settled, but Warrior alleges that it was forced into a less attractive settlement due to the errors in patent prosecution.  The malpractice suit started in state court, then was dismissed and re-filed in Federal District Court.  The Federal District Court found that it did not have subject matter jurisdiction over the case.  Dickinson appealed to the CAFC and the CAFC found that at least one of Warrior’s malpractice claims requires that the District Court resolve an issue of patent law and, therefore, the District Court does have subject matter jurisdiction over the practice case.  The opinion is of interest, not only because it shows the case within a case nature of a malpractice suit, but also because it underscores the growing number of malpractice suits related to patent prosecution issues.

Share