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

Archive for March, 2011


"Failure is simply the opportunity to begin again, this time more intelligently."
Henry Ford, Automotive Industrialist

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CAFC Weekly: March 25, 2011

by Orlando Lopez

The opinions handed down this week include an opinion that exemplifies what is analogous prior art after KSR, an opinion that considers claim interpretation in light of two different interpretations from two District Courts and one more order allowing transfer of venue.

In Innovention Toys v. MGA Entertainment, Innovention Toys owns a patent for a chess-like, light reflecting board game and sued MGA, WalMart and Toys “R” Us for infringement. The District Court found that the patent was infringed and that the claims were not obvious, and the court issued an injunction. MGA and the other defendants appealed to the CAFC. The CAFC upheld the finding of infringement, but overturned the finding of non-obviousness and vacated the injunction. The District Court had found two references to be not analogous prior art and therefore, the two references could not be used in the non-obviousness analysis. The District Court also considered the level of skill in the art to be that of a layperson. The CAFC found the references to be analogous prior art and found the level of skill in the art required for dimension to be higher than that of a layperson. The opinion is of interest because it highlights the difference in what is considered analogous prior art after KSR.

In American Piledriving Equip., Inc. v. Geoquip, Inc., American Piledriving owns a patent for pile driving devices and sued, for patent infringement, in seven District Courts around the country. Whether the accused devices infringed the patent depends largely on the interpretation (claim construction) of three terms in the claims. Of the Courts that have interpreted the claims, no two District Courts have interpreted all three terms the same way. The district courts for the Eastern District of Virginia and the Northern District of California granted summary judgment of non-infringement. American Piledriving appealed to the CAFC. The CAFC interpreted the claims, upheld the judgment of the Eastern District of Virginia for all products accused of infringement, upheld the judgment of the Northern District of California for two of the products accused of infringement, but reversed the judgment of non-infringement for one product. This opinion is an example of a typical claim construction opinion. ( However, the opinion underscores the uncertainty in claim construction and the different possible outcomes in different courts. Since claim interpretation is a mixed task (aka “mongrel task”) combining a mixture of law and facts, many have called for some deference to be given to the District Court. This opinion is the poster child for de novo review of claim construction.

The CAFC issued another order, In re Verizon Business Network Services, granting a petition to transfer a patent infringement suit to a more convenient venue. This order follows a number of other orders providing the necessary precedent for determining whether a transfer of venue request should be granted. Red River had sued Verizon and a number of other defendants for patent infringement, fighting the suit in the Eastern District of Texas. Red River is operated from Oklahoma, but incorporated in Texas. The Northern District of Texas is a more convenient venue for the parties and witnesses; however, five years ago, the Eastern District of Texas had interpreted the claims of the patents in the suit. The patents have been re-examined by the USPTO since that early suit. The CAFC found that the connection to the earlier suit was insufficient in view of the length of time that transpired and the re-examination. This order adds to the growing number of orders regarding transfer of venue.

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The Empire Strikes Back – The CAFC Slows Down the False Marking Epidemic

by Orlando Lopez

The Court of Appeals for the Federal Circuit (CAFC), in their order regarding  In re BP Lubricants USA Inc.,  provided ammunition for slowing back the False Marking epidemic.  In cases involving fraud, the complaint that starts the suit has to describe with particularly factual bases for the allegation of fraud.  Applying to complaints in false marking cases, the standard applied in cases involving fraud, the CAFC issued an order dismissing the false marking complaint against BP, but also ordered the District Court to grant leave to amend the complaint.  The CAFC weakened their previous statement in Pequignot v. Solo Cup, where the CAFC held that marking as patented an unpatented article, while knowing that the article is unpatented, creates a rebuttable presumption of intent to deceive the public.  In the present order, the CAFC relegates the Pequinot holding to a factor in determining whether the complaint is sufficiently explicit.  The CAFC (thankfully) does not provide a roadmap for drafting a complaint that meets the particularity standards needed for a complaint alleging fraud.  The order, In re BP Lubricants USA Inc., will slow down the epidemic of False Marking cases, but it will not stop it.  Hopefully the epidemic will be slowed down enough so that an action of Congress, such as the portions of the America Invents (Patent Reform) Act or other proposals, will put an end to the epidemic.

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CAFC Weekly: March 18, 2011

by Orlando Lopez

This week yielded one opinion relating to the awarding of sanctions and attorney’s fees, one order dismissing a false marking complaint and finally, a denial of hearing en-banc for a case on assignments and standing.

In Old Reliable Wholesale, Inc. v. Cornell Corp., Old Reliable owns a patent for insulated roof board and sued Cornell Corp. (not be confused with the University) for infringement. The District Court granted summary judgment of invalidity due to anticipation and obviousness, andOld Reliable appealed to the CAFC. On December 11, 2009, the CAFC upheld the District Court’s decision. While the appeal was pending, Cornell had requested that it be awarded attorney’s fees based on statements made at depositions. Additionally, Cornell had also filed at the USPTO, for re-examination of the patent at issue. The USPTO had issued a notice of intent to grant certification of validity and reversed based on the CAFC’s December 11, 2009 decision. On February 2, 2010, the District Court allowed Cornell’s request for attorney’s fees. Old Reliable appealed to the CAFC andthe CAFC reversed the grant of attorney’s fees. In reversing, the CAFC applied the standard that for sanctions to be imposed: (1) that the suit was brought in bad faith, or (2) that the suit was so unreasonable that no reasonable plaintiff could believe that it would succeed. While the CAFC reviewed the arguments presented at the District Court in order to show that Old Reliable had a reasonable expectation of showing validity of their patent, the re-examination proceedings at the USPTO also indicated that Old Reliable had a reasonable expectation of showing validity. The opinion shows how difficult it is to obtain attorney’s fees and also the unexpected effects of re-examination.

In their order regarding In re BP Lubricants USA Inc., the CAFC dismissed the false marking complaint against BP, but also ordered the District Court to grant leave to amend the complaint.

In another order, the CAFC denied en-banc rehearing of Abraxis Bioscience, Inc. v. Navinta LLC, a case that reinforces the fact of whether an assignment of patent rights is automatic or whether it is a promise to assign, it is dependant on the language of the assignment. The order is notable since Judge O’Malley, a recent addition to the CAFC, filed her first dissent.

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Senate’s version of Patent Reform Bill of 2011: Comments on the day after

by Orlando Lopez

On March 8, 2011, the Senate passed, by 95 to 5, a version of the Patent Reform Bill, which has been renamed the America Invents Act (this really should be the America Profits From Invention Act).

The House Judiciary Subcommittee on Intellectual Property moved quickly to hold its first hearing on March 10, 2011, hearing testimony from Prof. Dan Burk,  UC Irvine Law School, Andrew Pincus, of Mayer Brown LLP, representing the Business Software Alliance (BSA), and Prof. Dennis Crouch, University of Missouri Law School (also known for his blog, patently-o).

Since we have recently presented an annotated version of the original bill, the adopted version of the bill is reviewed below along with some Monday morning quarterback comments. Read the rest of this entry »

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