Blog Pause from 9/26 – Present

Hello everyone,

I have been in court all last week and am trying to catch up.  In the meantime, I need to pause the blog.  I am sorry for the lack o’ speediness, but  I will be posting as soon as I can.

Best regards,


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Some claims invalid as a JMOL, some invalid by jury decision. Parsing appellate procedure.


Issue(s):  Was the district court correct in granting Cordance’s post-verdict JMOL motion that insufficient evidence supported a finding that: (1) claims 7-9 of the ’710 Patent lack written description support; (2) claims 1-3, 5, and 7-9 of the ’710 Patent are invalid as anticipated; and (3) claims 1, 3, 5, 7, and 8 of the ’710 Patent are invalid under § 102(f)?

CORDANCE CORPORATION, Plaintiff-Cross Appellant, v. AMAZON.COM, INC., Defendant-Appellant. (2010-1502, -1545) Appeals from the United States District Court for the District of Delaware in case no. 06-CV-0491, Magistrate Judge Mary Patricia Thynge. (Decided: September 23, 2011); Before LOURIE, LINN (Author), and DYK,

Facts:  The ’710 Patent, titled “Object-Based On-Line Transaction Infrastructure,” covers an online purchasing system. The ’717 and ’325 Patents (collectively, “the Feedback Patents”), both titled “Computer-Based Communication System and Method Using Metadata Defining a Control-Structure,” cover computerized feedback systems. The ’717 Patent is a continuation of the ’325 Patent.

Cordance accused Amazon’s “1-Click®” (“1-Click”) purchasing features of infringing claims 1-3, 5, and 7-9 of the ’710 Patent. Amazon’s customers can store payment information and shipping addresses in their Amazon customer accounts. This information can then be retrieved later when that customer uses the 1-Click features. Cordance also alleged that Amazon’s features allowing customers to enter reviews of products for sale on Amazon’s website and to enter reviews of transactions with third-party sellers infringe the Feedback Patents.

Lower Court’s Decision:  After the district court construed the claims, Cordance Corp. v., Inc., No. 06-491 (D. Del. Dec. 5, 2008), a jury trial was conducted in August 2009. At trial, Cordance’s expert, Dr. Shamos (“Shamos”), explained how Amazon’s 1-Click features infringed the asserted claims of the ’710 Patent. Amazon’s expert, Dr. Alvisi (“Alvisi”), presented evidence that all asserted claims of the ’710 Patent were invalid for derivation and for failure to satisfy the written description requirement and that claims 1, 3, 5, 7, and 8 were also invalid as anticipated.

The jury rendered a verdict concluding that Amazon infringed claims 1, 3, 5, 7, and 8 of the ’710 Patent, but that claims 1-3, 5, and 7-9 of the ’710 Patent were invalid. The verdict form did not specify the basis for the invalidity finding. The jury also found that Amazon’s feedback features did not infringe any claims of the Feedback Patents.

Cordance filed post-verdict motions for JMOL and a new trial. Cordance sought, among other things, judgment of non-invalidity of the asserted claims of the ’710 Patent and challenged the court’s construction of “feedback information” as recited in the asserted claims of the Feedback Patents. The district court granted JMOL that Amazon failed to provide sufficient evidence to support a finding that (1) claims 7-9 of the ’710 Patent lacked written description; (2) claims 1-3, 5, and 7-9 of the ’710 Patent are invalid as anticipated; and (3) claims 1, 3, 5, 7, and 8 of the ’710 Patent are invalid under § 102(f). The court denied Cordance’s motion challenging the construction of “feedback information.”

Findings on Appeal: Amazon appeals the district court’s grant of Cordance’s JMOL motion and seeks to restore the jury’s verdict that each asserted claim of the ’710 Patent is invalid. Cordance raised several arguments in its cross appeal which fall into two categories. First, Cordance seeks to reverse or vacate the jury’s finding of invalidity as to claims 1-3 and 5 of the ’710 Patent. Second, Cordance seeks to modify the district court’s construction of “feedback information” in the Feedback Patents.

Amazon sought JMOL that the asserted claims of the ’710 Patent could not claim priority to the ’205 Patent because the ’710 Patent contained new matter that was added with the filing of the application that matured to the ’325 Patent. The district court granted Amazon’s motion and concluded that the effective date of the ’710 Patent was September 27, 1996.  This court agrees with Amazon that the district court did not err in granting Amazon’s motion. Cordance failed to prove that the ’710 Patent was entitled to claim priority to the 1993 conception document. To establish an earlier effective date, Cordance was required to prove prior conception. Conception “must be proven by evidence showing what the inventor has disclosed to others and what that disclosure means to one of ordinary skill in the art.”

Cordance’s attempt to claim priority to the filing date of the ’205 Patent fails for a similar reason. Under 35 U.S.C. § 120, “a claim in a later application receives the benefit of the filing date of an earlier application so long as the disclosure in the earlier application meets the requirements of 35 U.S.C. § 112, ¶ 1, including the written description requirement, with respect to that claim.” A review of the ’205 Patent specification shows that it does not support the claimed “automatically completing the purchase of the item . . . by processing said metadata” limitation. The district court did not err in granting Amazon’s JMOL that the effective date of the ’710 Patent is September 27, 1996.

At trial, Amazon presented an anticipation defense as to claims 1, 3, 5, 7, and 8. See JMOL Opinion at 37 n.109 (“The anticipation of claims 2 and 9 was never submitted to the jury.”). The jury found each of these claims invalid, but did not specify the basis of its invalidity finding. Cordance filed a post-verdict JMOL motion arguing that Amazon presented insufficient evidence to support the jury’s finding of invalidity premised upon a theory of anticipation. The district court granted Cordance’s motion.  Amazon argues that substantial evidence supports the jury verdict that claims 1, 3, 5, 7, and 8 of the ’710 Patent are invalid as anticipated by Amazon’s 1995 shopping cart system (the “1995 System”). Amazon explains that Paul Davis, an early Amazon employee, described in detail the 1995 System that was in operation in July 1995, more than one year before the September 1996 effective date of the ’710 Patent.

Cordance responds that the district court correctly rejected Amazon’s anticipation defense. Cordance contends that Amazon’s 1995 System did not automatically complete transactions nor did it include the required meta-data. Cordance also discounts Amazon’s anticipation defense as an improper “practicing the prior art” defense.

This court agrees with Amazon and concludes that claims 1, 3, 5, 7, and 8 of the ’710 Patent are anticipated by Amazon’s 1995 System as a matter of law. At trial, Amazon’s experts described in detail the 1995 System and how each limitation of claims 1, 3, 5, 7, and 8 of the ’710 Patent was satisfied by that system. The district court construed the “automatically completing the purchase of an item” limitation as “completing the purchase without human input.” Alvisi explained how the 1995 System satisfied this limitation because, once the user clicked the “Confirm” button and Amazon received the sessionID number, Amazon’s system automatically completed the order without human input and sent an order confirmation message.

Similarly, Amazon’s 1995 System also satisfies the “metadata” limitations of claims 1, 3, 5, 7, and 8. As explained above, the district court construed “metadata” to mean “data that describes or associates other data.” Because it is “data that describes or associates other data,” a session ID number, however transmitted, is metadata under a proper claim construction of that term.

Finally, contrary to Cordance’s allegations, Amazon’s theory of invalidity was not akin to the “practicing the prior art” theory rejected by this court in Tate Access Floors, Inc. v. Interface Architectural Resources, Inc., 279 F.3d 1357 (Fed. Cir. 2002). A “practicing the prior art” defense typically refers to the situation where an accused infringer compares the accused infringing behavior to the prior art in an attempt to prove that its conduct is either noninfringing or the patent is invalid as anticipated because the accused conduct is simply “practicing the prior art.” In Tate, this court explained that accused infringers “are not free to flout the requirement of proving invalidity by clear and convincing evidence by asserting a ‘practicing the prior art’ defense to literal infringement under the less stringent preponderance of evidence standard.” Instead “[a]nticipation requires a showing that each element of the claim at issue, properly construed, is found in a single prior art reference. ‘It is the presence of the prior art and its relationship to the claim language that matters for invalidity.’”

The district court erred by granting Cordance’s post-verdict JMOL motion that claims 1, 3, 5, 7, and 8 of the ’710 Patent were not invalid as anticipated. Because these claims are anticipated as a matter of law, this court reverses the district court’s grant of Cordance’s JMOL on this ground.

Due to the presentation of multiple invalidity theories and the jury’s general verdict, it remains unclear upon which ground(s) the jury based its findings of invalidity.  Those two theories were written description and derivation. While multiple invalidity theories were presented with respect to claims 1, 3, 5, 7, and 8, this court’s determination that claims 1, 3, 5, 7, and 8 are anticipated as a matter of law renders any question as to the basis of the jury’s verdict of invalidity as to these claims irrelevant.

When reviewing a general jury verdict, different rules apply depending upon whether the flaw is in the legal theory or the evidence.  A general jury verdict of invalidity should be upheld if there was sufficient evidence to support any of the alternative theories of invalidity. “A failure of proof with respect to any single item of evidence does not justify a grant of either JMOL or a new trial; even if some of the proposed factual grounds . . . are not generally sufficient to support a verdict, that is not fatal, because the critical question is whether the evidence, taken as a whole, was sufficient to support the jury’s verdict.”

In the absence of any ruling on the sufficiency of the evidence on both theories presented to the jury with respect to claim 9, the district court had no basis to find the jury’s general verdict unsustainable on the written description theory alone. The JMOL ruling on written description was, thus, improper and is vacated.

Cordance did not seek an amended judgment as to claims 2 and 9 and waived its challenge to the sufficiency of the evidence as to derivation before the district court and before this court on appeal. Moreover, by failing to present any arguments specifically relevant to Cordance’s entitlement to a new trial as to the validity of claims 2 and 9, that issue is similarly waived in this appeal.

For the foregoing reasons, this court concludes that the jury’s verdict, finding claim 2 invalid, remains in place and this court vacates the district court’s JMOL ruling overturning the jury’s verdict of invalidity as to claim 9.

Because claims 1, 3, 5, 7, and 8 of the ’710 Patent are invalid as anticipated as a matter of law, and because the jury’s verdict of invalidity as to claims 2 and 9 remains undisturbed, this court need not decide the remaining issues on appeal and cross-appeal concerning the ’710 Patent, for they are now moot.

Finally, In light of the disclosure that feedback information “consists of” attributes and values, and the lack of support for Cordance’s construction, the district court cannot be said to have erred in its construction of “feedback information.”


Allen’s Observations:  This is a messy case on appeal.  While I have avoided quoting the exact claims in this brief, it bears mentioning that some of the claims were found invalid as a matter of law while others were invalid based on substantial evidence.  The CAFC parses the requirements for invalidity in the opinion.  There is not much on substantive law of anticipation or written description, but the procedural aspects are interesting.


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How to greet your previous attorney in a new infringement case (say “hello” or move for disqualification?)


Issue(s):  Was the district court correct in finding that Floyd & Buss was not only disqualified from representing SMG against Nintendo, but also disqualified from representing SMG against all of the defendants in the patent infringement action?

IN RE SHARED MEMORY GRAPHICS LLC, Petitioner. (Miscellaneous Docket No. 978) On Petition for Writ of Mandamus to the United States District Court for the Northern District of California in case no. 10-CV-2475, Judge Maxine M. Chesney. ON PETITION (Decided: September 22, 2011); Before NEWMAN (dissenting), SCHALL, and DYK (Author),

Facts:  This petition arises out of SMG’s patent infringement suit against Nintendo, Apple, Inc., Samsung Electronics Co., and Sony Corporation of America. SMG’s claims against Nintendo—the only party that sought disqualification here—involve the “Hollywood chip,” a complex memory chip composed of multiple components.

The Hollywood chip was previously the subject of a suit for patent infringement, which was brought by Lonestar Inventions, L.P. Advanced Micro Devices (“AMD”) and Nintendo were defendants in that suit, and they decided to exchange information concerning litigation tactics and settlement strategies, drafts of briefs, and other confidential information under a Joint Defense Agreement. Paragraph 6 of the Agreement provided as follows:

Nothing contained in this Agreement has the effect of transforming outside or inside counsel for either party into counsel for the other party, or of creating any fiduciary or other express or implied duties between a party or its respective counsel and the other party or its respective counsel, other than the obligation to comply with the express terms of this Agreement, or of interfering with each lawyer’s obligation to ethically and properly represent his or her own client. The parties expressly acknowledge and agree that nothing in this Agreement, nor compliance with the terms of this Agreement by either party, shall be used as a basis to seek to disqualify the respective counsel of such party in any future litigation.

Kent Cooper—the attorney at the center of this dispute—was working as the Director of Patents and Licensing for AMD at the time of the Lonestar litigation. He helped assess the infringement claim and the validity of the patent at issue in that case. After the Lonestar litigation, Cooper left AMD to join the law firm of Floyd & Buss as a partner. Admittedly, the firm did not screen Cooper upon his entry.

Soon thereafter, Floyd & Buss filed this suit on behalf of SMG against Nintendo and the other defendants. Nearly ten months after the suit was filed, Nintendo moved to disqualify Floyd & Buss from continued representation in this case.

Lower court’s decision:  Although the parties agreed that Cooper never represented Nintendo at any time, there was a dispute whether Cooper received confidential information from Nintendo during the Lonestar litigation.

In the district court’s view, the Joint Defense Agreement’s provision waiving any basis to seek disqualification of the “respective counsel of such party in any future litigation,” did not pertain to an attorney like Cooper who subsequently left AMD or Nintendo or its counsel and joined another company or firm. Instead, the court held that the Agreement’s waiver provision only contemplated conflicts between AMD and Nintendo as “either party.”  The court stated that “[t]here is no evidence to suggest that the waiver contemplated covering attorneys who left their respective companies for new clients.” Id. Therefore, in the view of the district court, “the Lonestar JDA does not foreclose Nintendo’s motion to disqualify Cooper for breach of confidentiality.”

Finding that the case at bar and the Lonestar litigation involved similar technology and similar legal issues pertaining to whether the Hollywood chip infringed the asserted claims, the district court applied a conclusive presumption that Cooper had accessed Nintendo’s confidential information and held that disqualification of the entire Floyd & Buss firm was therefore necessary.

In a subsequent ruling, the district court clarified that Floyd & Buss was not only disqualified from representing SMG against Nintendo, but disqualified from representing SMG against all of the defendants in the action.

Findings on Appeal:   SMG filed this petition, which seeks a writ of mandamus to vacate these rulings and for the district court to be directed to reinstate Floyd & Buss as counsel for SMG. The remedy of mandamus is available in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power.

Citing Richardson-Merrell, Inc. v. Koller, 472 U.S. 424 (1985), Nintendo contends that mandamus authority cannot be exercised under the circumstances of this case. Nintendo’s reliance on Richardson-Merrell for this proposition, however, is misplaced. The question at issue there was whether an order disqualifying counsel could be appealed under the collateral-order doctrine, which furnishes “an exception to the final judgment rule for a ‘small class’ of prejudgment orders.”

Far from stating that an order disqualifying counsel may not be remedied through a writ of mandamus, the Court specifically noted that “a rule precluding appeal [under the collateral-order doctrine] would not necessarily leave the client or the disqualified attorney without a remedy” because “a party may seek . . . a writ of mandamus from the court of appeals.”

Nintendo also cannot seriously contest that SMG could meaningfully obtain this relief other than by seeking a writ of mandamus. By the time an appeal here could be taken, the trial would be over, and SMG would have gone through the litigation without the counsel of its choice.1 Mandamus thus acts as a safety valve to prevent such irreparable harm if appropriate circumstances are presented. See Mohawk Indus., Inc. v. Carpenter, 130 S.Ct. 599, 608 (2009).

We therefore turn to the merits.  SMG argues that the district court erred by granting Nintendo’s motion for disqualification. SMG contends that the motion was precluded by the waiver-of-conflict provision in the Lonestar Joint Defense Agreement. According to SMG, the Agreement clearly intended to bar Nintendo from seeking to disqualify “respective counsel” like Cooper who subsequently left one of the parties or its counsel to join another company or law firm.

We agree with SMG’s interpretation. As an initial matter, while challenging SMG’s reading of the Joint Defense Agreement, Nintendo cannot dispute that these types of waiver provisions are enforceable where, as here, there is a non-attorney-client relationship (Cooper did not represent Nintendo in the Lonestar litigation) involving sophisticated parties.  Even in attorney-client situations, general rules of professional legal conduct recognize that in certain circumstances it is not only proper but beneficial for parties to contractually consent to a waiver of future conflicts of interest. See Restatement (Third) of the Law Governing Lawyers.  Though California law governs motions to disqualify counsel, Paragraph 13 of the Joint Defense Agreement provides that the agreement is to be “governed by and construed in accordance with the laws of the State of Washington.” Our task is to give effect to the plain language of the parties’ agreement. In doing so, we look to the document as a whole, being careful to avoid an interpretation that would render any part of the Agreement superfluous.

In view of these principles, the Agreement’s terms clearly point away from the district court’s conclusion that Cooper was not covered by the waiver provision. Nintendo agreed not to seek disqualification of then “respective counsel of such party [i.e., AMD] in any future litigation.” Cooper was indisputably a “respective counsel” of AMD, and, contrary to Nintendo’s objections, the breadth and temporal scope of the waiver are broad enough to include “any future litigation” between Nintendo and a party employing, or represented by, Cooper.

This interpretation is bolstered by the fact that “respective counsel” was a term used consistently throughout Paragraph 6 of the Joint Defense Agreement. Just before the waiver provision, the paragraph provides: “Nothing contained in this Agreement has the effect of . . . creating any . . . duties between a party or its respective counsel and the other party or its respective counsel, other than the obligation to comply with the express terms of this Agreement[.]”

To limit the definition of “respective counsel” in this provision to current counsel of AMD and Nintendo (namely, counsel for AMD and Nintendo in 2010 and 2011, or at the time of the SMG litigation), however, would produce an illogical result: former counsel such as Cooper would have no ongoing obligation of confidentiality. In addition, such a reading of the Joint Defense Agreement would violate the fundamental principle that a contract should be interpreted so as to give meaning to each of its provisions.

Because the only construction that honors the parties’ intent to protect their confidential information while keeping the paragraph internally consistent is to include Cooper as a “respective counsel,” we agree with SMG that the district court’s determination was incorrect as a Furthermore, we believe that SMG will be adversely affected if it is required to wait until after a final adverse judgment to have this issue addressed because it will have been required to proceed through the litigation without counsel of its choice.

NEWMAN, Circuit Judge, (dissenting) It is not disputed that as Director of Patents and Li-censing and in-house counsel to AMD, Kent Cooper was a member of AMD’s litigation team when Nintendo and AMD entered into an agreement to exchange vital confidential information, and pursue a common defense against the Lonestar Corporation in a patent infringement suit involving the same accused graphics processing chip at issue here.

Nor is it disputed that after Cooper joined the law firm of Floyd and Buss, the firm was and is representing parties adverse to Nintendo. The firm did not take any steps to exclude Cooper from the firm’s activities in this lawsuit; there is no representation that the traditional “firewall” was erected. While Cooper states that he does not remember receiving Nintendo’s confidential information, even his co-counsel at AMD states that Cooper was privy to litigation tactics and strategies that are likely relevant in this substantially-related case. Whether or not Cooper drew upon his insider’s information in past interaction with Nintendo, it cannot be presumed that this did not occur.

There is no carve-out provision from the conditions of confidentiality that would allow an attorney to represent another party against Nintendo or AMD in a future action. The Agreement’s waiver provision, while attempting to avert disputes, does not authorize future adverse representation. The majority extracts text from several different parts of the paragraph, to support its result. However, the standard that SMG must meet is that Nintendo’s waiver clearly met this clear-cut conflict situation. That standard has not been met.

Despite my colleagues’ unwillingness to recognize that disqualification is proper based on breach of the lawyer’s professional obligations, in a footnote this court apparently acknowledges that Cooper and his law firm could be disqualified if they are found to breach the Agreement. However, professional responsibility in the legal system does not distinguish between a written agreement to protect information received as an attorney, and the ethical obligation to protect information received as an attorney.

The district court’s decision to disqualify Cooper and his law firm was not an abuse of the trial judge’s discretion. This court has inappropriately intruded into the district court’s authority and responsibility, to the detriment of the integrity of legal practice. I respectfully dissent

Allen’s Observations:   Interestingly, this case turns on a fairly simple conflict of waiver provision preventing attorneys from leaving the litigation to join the “other side.”  The question then was whether an attorney for a non-litigant was on the “other side” when the attorney held confidential information in the original patent proceeding, but subsequently represented a later party in another infringement proceeding.  The court did not reach any substantive issues, but rather chose to only interpret the contract as not preventing representation.  The more substantive issue is whether the attorney actually held any confidential information that could prejudice the new litigation. (See dissent).  Perhaps the court thought not, and in any event, the party seeking disqualification had no substantive basis to proffer such prejudice.


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Progeny plants infringe, but not their parent’s seed


Issue(s):  Was the district court correct in granting summary judgment of infringement in favor of Monsanto where farmers planted the progeny of genetically altered seeds covered by U.S. patents?

MONSANTO CO., Plaintiffs-Appellees, v. VERNON HUGH BOWMAN, Defendant-Appellant. (2010-1068) Appeal from the United States District Court for the Southern District of Indiana in case no. 07-CV-0283, Judge Richard L. Young. (Decided: September 21, 2011); Before BRYSON (Author), LINN, and DYK,

Facts:  Monsanto invented and developed technology for genetically modified “Roundup Ready®” soybeans that exhibit resistance to N-phosphonomethylglycine-(commonly known as “glyphosate”) based herbicides, such as Monsanto’s Roundup® product. The ’605 and ’247E Patents cover different aspects of this Roundup Ready® technology.

On October 4, 1994, the United States Patent and Trademark Office (“PTO”) issued the ’605 Patent to Monsanto for “chimeric genes for transforming plant cells using viral promoters.” Representative claims 1 and 4 cover:

1. A chimeric gene which is expressed in plant cells comprising a promoter from a cauliflower mosaic virus, said promoter selected from the group consisting of a CaMV (35S) promoter isolated from CaMV protein-encoding DNA sequences and a CaMV (19S) promoter isolated from CaMV protein-encoding DNA sequences, and a structural sequence which is heterologous with respect to the promoter.

4. A plant cell which comprises a chimeric gene that contains a promoter from cauliflower mosaic virus . . . .

Since 1996, Monsanto has marketed and sold Roundup Ready® soybean seeds under its own brands, and licenses its technology to seed producers who insert the Roundup Ready® genetic trait into their own seed varieties. Monsanto’s licensed producers sell Roundup Ready® seeds to growers for planting. All sales to growers, whether from Monsanto or its licensed producers, are subject to a standard form limited use license, called the “Monsanto Technology Agreement” or “Monsanto Technology/Stewardship Agreement” (both referred to hereinafter as the “Technology Agreement”). Monsanto’s Technology Agreement covers a variety of its patented agricultural biotechnologies, including Roundup Ready® soybeans. Both the ’605 Patent and the ’435 Patent (reissued as the ’247E Patent) are listed as “applicable patents” licensed under the Technology Agreement.

Although the express terms of the Technology Agreement forbid growers to sell the progeny of the licensed Roundup Ready® seeds, or “second-generation seeds,” for planting, Monsanto authorizes growers to sell second-generation seed to local grain elevators as a commodity, without requiring growers to place restrictions on grain elevators’ subsequent sales of that seed. Commodity seeds are a mixture of undifferentiated seeds harvested from various sources, including from farms that grow Roundup Ready® soybeans and those that do not, although nearly ninety-four percent of Indiana’s acres of soybeans planted in 2007 were planted using herbicide resistant varieties. Before this court, Monsanto has twice eschewed any reading of the Technology Agreement to prohibit unrestricted seed sales to grain elevators as a commodity.

In 1999, Bowman also purchased commodity seed from a local grain elevator, Huey Soil Service, for a late-season planting, or “second-crop.” Because Bowman considered the second-crop to be a riskier planting, he purchased the commodity seed to avoid paying the significantly higher price for Pioneer’s Roundup Ready® seed. That same year, Bowman applied glyphosate-based herbicide to the fields in which he had planted the commodity seeds to control weeds and to determine whether the plants would exhibit glyphosate resistance. He confirmed that many of the plants were, indeed, resistant. In each subsequent year, from 2000 through 2007, Bowman treated his second-crop with glyphosate-based herbicide. Unlike his first-crop, Bowman saved the seed harvested from his second-crop for replanting additional second-crops in later years. He also supplemented his second-crop planting supply with periodic additional purchases of commodity seed from the grain elevator. Bowman did not attempt to hide his activities, and he candidly explained his practices with respect to his second-crop soybeans in various correspondence with Monsanto’s representatives.

Lower Court’s Decision:  Bowman was sued for infringement, but Bowman argued that The Technology Agreement signed by Bowman extended only to seeds purchased from Monsanto or a licensed dealer; thus, Bowman’s use of the commodity seeds was not within the scope of the agreement. Monsanto did not allege infringement or breach of the Technology Agreement with respect to Bowman’s planting of first-generation seeds purchased from Pioneer.

On September 30, 2009, the district court granted summary judgment of infringement and entered judgment for Monsanto in the amount of $84,456.20. Am. Final J. and Order Granting Pls.

Findings on Appeal: Bowman argues that if the right to use patented seeds does not include the unlimited right to grow subsequent generations free of liability for patent infringement, then any exhaustion determination “is useless.”

Bowman also argues that Monsanto’s patent rights are exhausted with respect to all Roundup Ready® soybean seeds that are present in grain elevators as undifferentiated commodity. According to Bowman, the “[s]ales of second-generation seeds by growers to grain elevators, and then from grain elevators to purchasers (like Bowman) are authorized according to the terms of Monsanto’s [T]echnology [A]greement[], and are thus exhausting sales . . . under the Supreme Court’s analysis in Quanta [Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008)].”

Monsanto counters that licensed growers’ sales of second-generation seeds to grain elevators as commodity seeds did not exhaust Monsanto’s patent rights in those seeds “[b]ecause of the express condition [in the Technology Agreement] that the progeny of licensed seed never be sold for planting.”  According to Monsanto, “a grower’s sale of harvested soybeans to a grain elevator is not an ‘authorized sale’ when it results in those soybeans subsequently being planted.”  Monsanto argues that, even if there was exhaustion with respect to commodity seeds, Bowman is nevertheless liable for infringement by planting those seeds because patent protection “is independently applicable to each generation of soybeans (or other crops) that contains the patented trait.”

In Scruggs, Scruggs purchased Roundup Ready® soybean seeds from one of Monsanto’s authorized seed companies and never executed the Technology Agreement. 459 F.3d at 1333. Scruggs planted the purchased seeds, harvested them, and replanted the second-generation seeds containing the Roundup Ready® trait. \Scruggs asserted the doctrine of patent exhaustion as one of many defenses, and the court held that it was inapplicable: “There was no unrestricted sale because the use of the seeds by seed growers was conditioned upon obtaining a license from Monsanto.”

Thus, the doctrine of patent exhaustion did not bar the infringement claims in McFarling or Scruggs. Similarly, here, patent exhaustion does not bar an infringement action. Even if Monsanto’s patent rights in the commodity seeds are exhausted, such a conclusion would be of no consequence because once a grower, like Bowman, plants the commodity seeds containing Monsanto’s Roundup Ready® technology and the next generation of seed develops, the grower has created a newly infringing article.

While farmers, like Bowman, may have the right to use commodity seeds as feed, or for any other conceivable use, they cannot “replicate” Monsanto’s patented technology by planting it in the ground to create newly infringing genetic material, seeds, and plants.

Bowman argues that Monsanto cannot recover pre-Complaint damages because it did not provide actual notice and did not mark or require growers to mark second-generation seeds in compliance with 35 U.S.C. § 287(a).

Monsanto counters that Bowman waived this argument by failing to raise it at the district court. Monsanto argues that even if not waived, Monsanto complied with § 287(a) because Monsanto gave Bowman actual notice of infringement in a 1999 letter and again in the Technology Agreement, and alternatively put Bowman on constructive notice by marking and requiring all seed partners to mark first-generation seeds containing Monsanto’s patented technology.

This court holds that Bowman did not waive his lack of notice argument under § 287(a) because he argued before the district court that Monsanto failed to put any growers or grain elevators on notice of its patent rights with respect to commodity grain. While Bowman did not cite § 287(a) as the legal basis for this “lack of notice” contention, this court holds that, as a pro se litigant, he alleged facts and proffered argument sufficient to preserve the issue for appeal.

Monsanto sent Bowman a letter on June 11, 1999, specifically notifying Bowman of its patents covering Roundup Ready® soybeans and informing Bowman that the “[p]lanting of seed that is covered by a patent would be making the patented invention and using the patented invention.”  The fact that this letter does not specifically mention commodity seeds is of no import because the specific accused products are not commodity seeds as a class, but rather Monsanto’s Roundup Ready® seeds. Bowman planted Roundup Ready® seeds with actual notice that Monsanto considered this activity to infringe its patents.

For the foregoing reasons, this court affirms the district court’s holding that patent exhaustion does not apply to Bowman’s accused second-crop plantings.

Allen’s Observations:  Whether one agrees that farmers should not be able to plant second generation patented seeds or not, this case is fairly straightforward.  The court found that patent exhaustion likely attached to the parent seed once sold as a commodity to grain elevators and mixed with other seed.  The issue then is whether that patent exhaustion attached to subsequent generations.  Clearly, the CAFC did not agree, finding that the new plant progeny were “new articles” and thus protected under the patent.


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BPAI incorrectly defines fluff


Issue(s):  Did the Board of Patent Appeals and Interferences (“Board”) err in affirming the examiner’s rejection where it used the same reference as the examiner, but a different rationale for the rejection?

IN RE PHYLLIS LEITHEM, et al. (2011-1030) Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences. (Decided: September 19, 2011); Before NEWMAN, BRYSON, and LINN (Author),

Facts:  Leithem’s patent application discloses an improved personal hygiene device (“diaper”). Traditional diapers are constructed using an absorbent core of dry shredded wood fiber pulp, known as fluff pulp, interposed between a water barrier sheet and a permeable layer that allows liquid to pass through to the absorbent fluff pulp core. For absorption intensive devices, such as baby diapers, the fluff pulp is often pretreated with a chemical cross-linking agent. Chemical cross-linking increases the wet stiffness of the fluff pulp so that it retains its bulk and pore volume when wet, thereby enhancing its absorbency and preventing “wet collapse.” Leithem contends that prior to the discovery disclosed in the ’585 Application, it was not believed to be possible to achieve the absorption, liquid retention, softness, and pad integrity of modern diapers without using chemically cross-linked fluff pulp.

The examiner originally rejected the claims as obvious under 35 U.S.C. § 103 over U.S. Patent No. 3,658,064 (“Pociluyko”) in view of U.S. Patent No. 2,083,575 (“Novak”). The examiner explained that Pociluyko discloses a diaper satisfying every element of claim 104 except that Pociluyko was “silent as to the method of manufacturing the fluff pulp.” In other words, Pociluyko did not disclose using a fluff pulp that satisfied the cold caustic extraction limitation. The examiner then explained that Novak discloses cold caustic extraction of wood pulp and “a method of making fluff pulp.”

BPAI’s Disposition:  On appeal to the Board, Leithem argued that “Novak does not teach that his pulp is fluffed.” Instead, Leithem observed that the pulp product of Novak is a wet-laid paper and not a fluff material as the examiner alleged. Id. Because Novak describes the manufacture of wet-laid paper, not dry shredded fluff, Leithem argued that those skilled in the art could not simply substitute the wet-laid paper product of Novak for the dried fluff pulp of Pociluyko to produce the claimed invention. Accordingly, Leithem contended that the examiner’s § 103 rejection was improper.

The Board, in its initial decision, agreed with Leithem that Novak only discloses the cold caustic treatment of pulp to produce a wet-laid paper. The Board found that, while Novak itself does not disclose a fluffed pulp, “the Novak pulp is a pulp which may be fluffed for use in an absorbent core.” The Board reached this conclusion because Novak’s goal was to create a more absorptive paper and one of skill in the art “would have had reason to use this pulp as a fluffed pulp in an absorbent product such as Pociluyko.”

Leithem then petitioned the Board for rehearing. Lei them contended that the Board, in affirming the examiner, relied on a new ground of rejection. Specifically, Leithem explained that the examiner did not find that the caustic extracted pulp of Novak could be mechanically fluffed and used in the product of Pociluyko. Instead, the examiner simply found that Novak’s wet-laid pulp was itself already a fluff pulp. Thus, according to Leithem, the Board relied on a new ground of rejection when it affirmed the examiner on the basis that Novak’s pulp was not fluffed, but could be dried, fluffed, and then used as disclosed in Pociluyko.

The Board disagreed. The Board initially observed that both the examiner and the Board had rejected the claim under 35 U.S.C. § 103 over Novak and Pociluyko. Although the Board acknowledged Leithem’s argument that Novak does not teach fluffing, the Board reiterated that the examiner found that Novak’s pulp was fluffed.  Because the examiner’s rejection referred to “pulp,” Leithem’s appeal brief to the Board referred to “pulp,” and the Board referred to “pulp” in its initial decision, the Board determined that the thrust of the rejection had not changed and denied Leithem’s request for rehearing.

Findings on Appeal:   Leithem argues that the Board relied on a new ground of rejection in affirming the examiner’s rejection. Leithem contends that the examiner rejected claim 104 on the basis that Novak teaches a cold caustic extracted fluff pulp, even though Novak only teaches making wet-laid paper from cold caustic extracted pulp.  Leithem agrees that the wet-laid paper of Novak could be dried and then shredded in a hammermill to make fluff pulp, but points out that this was not the basis of the examiner’s rejection. Leithem argues that the Board relied on a new rationale for its rejection by finding that it would have been obvious to take Novak’s cold caustic extracted pulp, dry it, shred it into a fluff, and then combine it with the diaper of Pociluyko.

The Office argues that the Board did not impose a new ground of rejection.

The Board’s statutory authority requires the Board to review, on appeal, adverse decisions of the examiner.  The Board need not recite and agree with the examiner’s rejection in haec verba to avoid issuing a new ground of rejection.  However, mere reliance on the same statutory basis and the same prior art references, alone, is insufficient to avoid making a new ground of rejection when the Board relies on new facts and rationales not previously raised to the applicant by the examiner.

Rather than reviewing arguments directed towards ever-shifting rejections, this court is instead only presented with arguments concerning those rejections properly made by the examiner and, in due time, reviewed by the Board.  Here, the examiner cited Novak as teaching a fluff pulp.  This view of Novak is contrary to the examiner’s assertion that Novak discloses or teaches fluff pulp.

The Board agreed with Leithem but instead affirmed the examiner’s rejection by finding that Novak teaches a pulp “which may be fluffed.” The Board thus found new facts concerning the scope and content of the prior art. These new facts relate to whether the prior art discloses or teaches fluffing cold caustic extracted wood pulp to make fluff pulp for use in the diaper of Pociluyko. These facts were the principal evidence upon which the Board’s rejection was based. Leithem would certainly have responded differently had the examiner’s original rejection been premised upon Novak teaching pulp “which may be fluffed” as opposed to teaching fluff pulp which could be directly substituted into the diaper of Pociluyko.

The subsequent proceedings further solidifies this court’s conclusion that the thrust of the Board’s rejection differed from that of the examiner’s rejection. When Leithem sought rehearing as to whether the Board relied upon a new ground of rejection, the Board shifted its characterization of its earlier rejection. On reconsideration, the Board explained that the examiner viewed Novak as disclosing fluff pulp and, because the Board’s decision “referred to the pulp in the decision, not the wet-laid [paper],” the Board’s initial decision did so as well. This conclusory analysis is hardly persuasive when nothing in the Board’s initial decision describes the wet-laid paper of Novak as “fluffed”—the precise issue, in fact the only issue, appealed by Leithem.

Accordingly, while we express no opinion on the propriety of the Board’s rejection of claim 104, the case must be remanded to the Board to allow appellants a full opportunity to respond to the new rejection in the first instance. The Board’s decision to the contrary was “not in accordance with law,” 5 U.S.C. § 706, and is hereby vacated.

Allen’s Observations:   The case is literally fact specific.  Basically, the examiner made an obviousness rejection on one fact, and then the BPAI mutated this “fact” to support another rationale for the rejection.  I have personally seen this happen, as I am sure many other practitioners have.  While it would seem that an appeal is the best way to finally overcome a rejection, the problem is that the appeals process very long.  Many times, clients will simply opt to amend the claims to obtain patentable subject matter and save the appeal for another day.  The result is that patentees often are “bullied” into accepting a narrower scope than they are entitled.


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9/16-18/2011 No new cases

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One Year Anniversary!

Hi All,

I just realized that I have been doing this for one year now.  Whew!  I hope everyone has found at least some of these briefs useful.  I know there have been some glitches along the way (last month was a bear), but I plan to to keep things on track and I am always looking for ways to improve the blog. So, feel free to let me know what you think could be done better.

Thanks for subscribing!

Best regards,  Allen

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Claiming a Business Method on the Internet? Do it this way!


Issue(s):  Was the district court correct in dismissed Ultramercial, LLC and Ultramercial, Inc.’s (collectively, “Ultramercial”) patent infringement claims, finding that U.S. Patent No. 7,346,545 (“the ’545 patent”) does not claim patent-eligible subject matter?

ULTRAMERCIAL, LLC AND ULTRAMERCIAL, INC., Plaintiffs-Appellants, v. HULU, LLC, Defendant, and WILDTANGENT, INC., Defendant-Appellee. (2010-1544) Appeal from the United States District Court for the Central District of California in case No. 09-CV-6918, Judge R. Gary Klausner. (Decided: September 15, 2011); Before RADER (author), LOURIE and O’MALLEY.

Facts:  The ’545 patent claims a method for distributing copyrighted products (e.g., songs, movies, books) over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content. Claim 1 of the ’545 patent reads:

A method for distribution of products over the Internet via a facilitator, said method comprising the steps of:

a first step of receiving, from a content provider, media products that are covered by intellectual property rights protection and are available for purchase, wherein each said media product being comprised of at least one of text data, music data, and video data; a second step of selecting a sponsor message to be associated with the media product, said sponsor message being selected from a plurality of sponsor messages, said second step including accessing an activity log to verify that the total number of times which the sponsor message has been previously presented is less than the number of transaction cycles contracted by the sponsor of the sponsor message;

a third step of providing the media product for sale at an Internet website;

a fourth step of restricting general public access to said media product;

a fifth step of offering to a consumer access to the media product without charge to the consumer on the precondition that the consumer views the sponsor message;

a sixth step of receiving from the consumer a request to view the sponsor message, wherein the consumer submits said request in response to being offered access to the media product;

a seventh step of, in response to receiving the request from the consumer, facilitating the display of a sponsor message to the consumer;

an eighth step of, if the sponsor message is not an interactive message, allowing said consumer access to said media product after said step of facilitating the display of said sponsor message;

a ninth step of, if the sponsor message is an interactive message, presenting at least one query to the consumer and allowing said consumer access to said media product after receiving a response to said at least one query;

a tenth step of recording the transaction event to the activity log, said tenth step including updating the total number of times the sponsor message has been presented; and

an eleventh step of receiving payment from the sponsor of the sponsor message displayed.

Lower Court’s Decision:  Ultramercial filed suit against Hulu, LLC (“Hulu”), YouTube, LLC (“YouTube”), and WildTangent, Inc. (“WildTangent”), alleging infringement of the ’545 patent. Hulu and YouTube have been dismissed from the case. WildTangent filed a motion to dismiss for failure to state a claim, arguing that the ’545 patent did not claim patent-eligible subject matter.

Findings on Appeal: The district court dismissed Ultramercial’s claims for failure to claim statutory subject matter without formally construing the claims. This court has never set forth a bright line rule requiring district courts to construe claims before determining subject matter eligibility. Indeed, because eligibility is a “coarse” gauge of the suitability of broad subject matter categories for patent protection, 35 U.S.C. § 101 sets forth the categories of subject matter that are eligible for patent protection: “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title” (emphasis added). In Bilski, the Supreme Court explained that “[i]n choosing such expansive terms modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.”

In line with the broadly permissive nature of § 101’s subject matter eligibility principles, judicial case law has created only three categories of subject matter outside the eligibility bounds of § 101—laws of nature, physical phenomena, and abstract ideas. Bilski, 130 S. Ct. at 3225. Indeed, laws of nature and physical phenomena cannot be invented. Abstractness, however, has presented a different set of interpretive problems, particularly for the § 101 “process” category. Actually, the term “process” has a statutory definition that, again, admits of no express subject matter limitation: a title 35 “process” is a “process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” 35 U.S.C. § 100(b). Indeed, the Supreme Court recently examined this definition and found that the ordinary, contemporary, common meaning of “method” may include even methods of doing business. See Bilski, 130 S. Ct. at 3228. Accordingly, the Court refused to deem business methods ineligible for patent protection and cautioned against “read[ing] into the patent laws limitations and conditions which the legislature has not expressed.”

In an effort to grapple with the non-statutory “abstractness” limit, this court at one point set forth a machine-or-transformation test as the exclusive metric for determining the subject matter eligibility of processes. In re Bilski, 545 F.3d 943, 956 (Fed. Cir. 2008). The Supreme Court rejected this approach in Bilski, noting that the machine-or-transformation test is simply “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101” and is not “the sole test for deciding whether an invention is a patent-eligible ‘process.’”

Both members of the Supreme Court and this court have recognized the difficulty of providing a precise formula or definition for the judge-made ineligible category of abstractness. See id. at 3236 (Stevens, J., concurring) (“The Court . . . [has] never provide[d] a satisfying account of what constitutes an unpatentable abstract idea.”); Research Corp., 627 F.3d at 868. Because technology is ever-changing and evolves in unforeseeable ways, this court gives substantial weight to the statutory reluctance to list any new, non-obvious, and fully disclosed subject matter as beyond the reach of title 35. In sum, § 101 is a “dynamic provision designed to encompass new and unforeseen inventions.” J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124, 135 (2001).

Turning to the ’545 patent, the claimed invention is a method for monetizing and distributing copyrighted products over the Internet. As a method, it satisfies § 100’s definition of “process” and thus falls within a § 101 category of patent-eligible subject matter. Thus, this court focuses its inquiry on the abstractness of the subject matter claimed by the ’545 patent.

The ’545 patent seeks to remedy problems with prior art banner advertising, such as declining click-through rates, by introducing a method of product distribution that forces consumers to view and possibly even interact with advertisements before permitting access to the desired media product. By its terms, the claimed invention purports to improve existing technology in the marketplace. By its terms, the claimed invention invokes computers and applications of computer technology. Of course, the patentability of the ’545 patent, though acknowledged by the U.S. Patent Office, would still need to withstand challenges that the claimed invention does not advance technology (novelty), does not advance technology sufficiently to warrant patent protection (obviousness), or does not sufficiently enable, describe, and disclose the limits of the invention (adequate disclosure).

Returning to the subject matter of the ’545 patent, the mere idea that advertising can be used as a form of currency is abstract, just as the vague, unapplied concept of hedging proved patent-ineligible in Bilski. However, the ’545 patent does not simply claim the age-old idea that advertising can serve as currency. Instead the ’545 patent discloses a practical application of this idea. The ’545 patent claims a particular method for monetizing copyrighted products, consisting of the following steps: (1) receiving media products from a copyright holder, (2) selecting an advertisement to be associated with each media product, (3) providing said media products for sale on an Internet website, (4) restricting general public access to the media products, (5) offering free access to said media products on the condition that the consumer view the advertising, (6) receiving a request from a consumer to view the advertising, (7) facilitating the display of advertising and any required interaction with the advertising, (8) allowing the consumer access to the associated media product after such display and interaction, if any, (9) recording this transaction in an activity log, and (10) receiving payment from the advertiser.

Many of these steps are likely to require intricate and complex computer programming. In addition, certain of these steps clearly require specific application to the Internet and a cyber-market environment. One clear example is the third step, “providing said media products for sale on an Internet website.” And, of course, if the products are offered for sale on the Internet, they must be “restricted”—step four—by complex computer programming as well. Viewing the subject matter as a whole, the invention involves an extensive computer interface. This court does not define the level of programming complexity required before a computer-implemented method can be patent-eligible. Nor does this court hold that use of an Internet website to practice such a method is either necessary or sufficient in every case to satisfy § 101. This court simply find the claims here to be patent-eligible, in part because of these factors.

In this context, this court examines as well the contention that the software programming necessary to facilitate the invention deserves no patent protection or amounts to abstract subject matter or, in the confusing terminology of machines and physical transformations, fails to satisfy the “particular machine” requirement. This court confronted that contention nearly two decades ago in the en banc case of In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994). At that time, this court observed that “programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” As computer scientists understand:

the inventor can describe the invention in terms of a dedicated circuit or a process that emulates that circuit. Indeed, the line of demarcation between a dedicated circuit and a computer algorithm accomplishing the identical task is frequently blurred and is becoming increasingly so as the technology develops. In this field, a software process is often interchangeable with a hardware circuit.

Id. at 1583 (J. Rader, concurring). In other words, a programmed computer contains circuitry unique to that computer. That “new machine” could be claimed in terms of a complex array of hardware circuits, or more efficiently, in terms of the programming that facilitates a unique function. The digital computer may be considered by some the greatest invention of the twentieth century, and both this court and the Patent Office have long acknowledged that “improvements thereof” through interchangeable software or hardware enhancements deserve patent protection. Far from abstract, advances in computer technology—both hardware and software—drive innovation in every area of scientific and technical endeavor.

This court understands that the broadly claimed method in the ’545 patent does not specify a particular mechanism for delivering media content to the consumer (i.e., FTP downloads, email, or real-time streaming). This breadth and lack of specificity does not render the claimed subject matter impermissibly abstract. Assuming the patent provides sufficient disclosure to enable a person of ordinary skill in the art to practice the invention and to satisfy the written description requirement, the disclosure need not detail the particular instrumentalities for each step in the process.

Finally, the ’545 patent does not claim a mathematical algorithm, a series of purely mental steps, or any similarly abstract concept. It claims a particular method for collecting revenue from the distribution of media products over the Internet. In a recent case, this court discerned that an invention claimed an “unpatentable mental process.” CyberSource Corp. v. Retail Decisions, Inc., (Fed. Cir. Aug. 16, 2011). The eligibility exclusion for purely mental steps is particularly narrow. See Prometheus Labs., 628 F.3d at 1358 (noting that claims must be considered as a whole and that “the presence of mental steps [in a claim] does not detract from the patentability of [other] steps”).

In sum, as a practical application of the general concept of advertising as currency and an improvement to prior art technology, the claimed invention is not “so manifestly abstract as to override the statutory language of section 101.” Research Corp., 627 F.3d at 869. Accordingly, this court reverses the district court’s dismissal of Ultramercial’s patent claims for lack of subject matter eligibility and remands for further proceedings. This decision does not opine at all on the patentability of the claimed invention under the substantive criteria set forth in § 102, § 103, and § 112.

Allen’s Observations:  This is the shortest opinion on patentable subject matter I have ever seen.  Perhaps this is because it appears after Bilski, Prometheus, and Classen, which arguably contained more abstract claims; thus, by contrast, these claims must be patentable.  Alternatively, perhaps the opinion is too short.  Strangely, there is not one mention in the claims of anything tangible, except the Internet.  There is not even a nod to anything “computer-readable.”  Thus, it is just a business method performed on the Internet.  However, the claims are not found to be abstract because the “steps” require inherently complex programming, even though these hypothetical programs were not claimed.  This is a really difficult opinion to interpret.  There is a lot of law quoted but little in the way of useful analysis.  If anything, the take home message is just that if you draft claims to business methods, this format is now CAFC-blessed.


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Don’t bother reading– MARKEM-IMAJE CORP v. ZIPHER LTD


Issue(s):  Was the district court correct in granting summary of non-infringement after construing the claim terms related to ribbon tensioning?

MARKEM-IMAJE CORPORATION, Plaintiff-Appellee, v. ZIPHER LTD. AND VIDEOJET TECHNOLOGIES, INC., Defendants-Appellants (2010-1305) Appeal from the United States District Court for the District of New Hampshire in Case No. 07-CV-0006, Judge Paul J. Barbadoro. (Decided: September 9, 2011); Before NEWMAN (dissenting), CLEVENGER, AND LINN (PER CURIAM),

Facts:  The ’572 patent, entitled “Tape Drive and Printing Apparatus,” describes and claims a device for transfer printing. In transfer printing, ink is carried by a ribbon that is moved into contact with the substrate to be printed, and a print head impresses upon the ribbon and causes the ink to transfer from the ribbon to the substrate. In thermal transfer printing, the print head is heated, facilitating transfer and adherence of the ink to the substrate. Thermal transfer printers are used for such tasks as printing on plastic packaging and other surfaces to which ink does not readily adhere. In systems where the thermal printing is part of a mechanized and automated process, the printing step must keep pace with the production line, with minimal down time. The ’572 patent is directed to a heat transfer printing apparatus that provides increased control over the acceleration, deceleration, speed, and positional accuracy of the printing operation, while minimizing waste of unused portions of the ink ribbon.

The ’572 patent is directed to an improvement in controlling the movement and tension of the ribbon.  The patent specification explains the problems with the “slipping clutch” that has been used to provide ribbon tension in prior art printers. A slipping clutch provides a constant resistive torque to the supply spool, and the constant torque causes the tension in the ribbon to vary as the supply spool outer diameter changes with the draw of ribbon. The patent states that such dynamically changing ribbon tension requires tight tolerances in clutch force, which is difficult to maintain because wear in the clutch tends to change the resistive force of the clutch.

The ’572 patent describes optically monitoring the radii of the spools and using the data “to calculate the step rate and the number of steps required by each motor to drive the spools in an appropriate manner so as to feed the ribbon a predetermined distance.”  Claim 1, the broadest claim of the ’572 patent, is directed to a tape drive that corrects tension divergences from the predetermined limit in this manner.

Lower Court’s Decision:  Based on the district court’s ruling that the term “drive” in the ’572 claims requires that both spools are rotated together to adjust the tape, the court granted summary judgment of noninfringement. Zipher appeals, stating that the judgment was based on an erroneous claim construction.

Findings on Appeal: Zipher argues that the district court erred in limiting the claim phrase “drive the spools” to mean “rotate the spools.” Zipher argues that “drive” in this phrase has the inclusive meaning of not only rotate but also “hold steady in a commanded position.”

The district court acknowledged that the ordinary meaning of “drive” can be broad enough to encompass not only the rotation of the spools but also application of a holding torque that prevents the spool from rotating.  The district court reasoned that giving “drive” a meaning broader than “rotation” in the final clause of the claim (the tension control clause) would be contradictory to the meaning of “drive” in the tape transport clause, which states that “the controller energizes both said motors to drive the spools in a tape transport direction.” Markem states that Zipher conceded that “drive the spools in a tape transport direction” means that both spools are rotated in the tape transport direction. Markem stresses that “claim terms are normally used consistently throughout the patent,” Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc).

Zipher argues that the term “drive” has a meaning similar to that of “control,” and is not limited to rotation motion. We agree that “drive” need not be narrowly construed merely because a broader construction would make it similar to the word “control” that is also used in the claim. Nothing in the specification or the overall invention as presented in the claim and as argued to the patent examiner requires the narrow construction.  The district court’s construction that “drive” requires that the supply spool must always rotate to control the tension is incorrect.

Zipher also appeals the district court’s construction that the claims require “some method of deriving a tension measurement,” Markem, 2008 WL 4116666, at *12. Markem had asked the district court to hold that “using a contactless means of tension measurement that occurs during the rotation of both motors is a necessary and inherent aspect of such measurement because the specification does not describe any other method of such measurement.” Id. The district court declined this request, but stated that “some method of deriving a tension measurement, whether directly or indirectly, is a necessary predicate to maintaining tension ‘between predetermined limit values.’” Id. The court reasoned that “[w]ithout having a reasonable estimate of the current tape tension, it is not possible to identify whether the tension is approaching or exceeding the limit values.” Id.

Zipher argues that the claim does not explicitly recite measuring tension, and that construing the claims to require tension measurement would import a limitation into the claims from the specification and violate the mandate of Rambus Inc. v. Infineon Tech. AG that “the claims need not recite every component necessary to enable operation of a working device.” 318 F.3d 1081, 1093 (Fed. Cir. 2003). We agree with Zipher.

Thus, though “some method of deriving a tension measurement” may be required to make a claimed device operational, it is not proper to incorporate that method into the claim construction. We therefore reverse the district court’s determination that the claims require “some method of deriving a tension measurement.”

On our holding that “drive” is properly construed to mean the application of torque to the spools, whether the torque causes rotation or resists it, we vacate the judgment of non-infringement, and remand for determination of infringement on the corrected claim constructions.

NEWMAN, Circuit Judge, dissenting:  I concur in Part I of the court’s decision. I would, however, affirm the district court’s finding that “some method of deriving a tension measurement, whether directly or indirectly, is a necessary predicate to maintaining tension ‘between predetermined values.’” As the district court reasoned, “[w]ithout having a reasonable estimate of the current tape tension, it is not possible to identify whether the tension is approaching or exceeding the limit values.” Markem-Imaje Corp. v. Zipher Ltd., 2008 WL 4116666, *12 (D.N.H. Aug. 28, 2008). The panel majority’s contrary result ignores the paramount importance of the specification in claim construction.


Allen’s Observations:  This is purely a claim construction case.  The only notable aspect is that the opinion is per curiam (literally “through the court”) and, thus, not attributable to a specific author, with the exclusion of Newman who dissents.  That leaves Clevenger or Linn.  I am not sure why this opinion was framed this way.  Speculation anyone?


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Interference Appeal: Does incorporated “in its entirety” actually incorporate the reference completely?


Issue(s):  Was the Board correct in entering judgment against Harari on interference, also on the grounds that there was no written description support for Harari’s claims in the specification as filed because the necessary portions of the ’579 application were not incorporated by reference?

ELIYAHOU HARARI, ROBERT D. NORMAN, AND SANJAY MEHROTRA, Appellants v. ROGER LEE AND FERNANDO GONZALEZ, Appellees. (2010-1075) & Appellants, v. ANDREI MIHNEA, JEFFREY KESSENICH, AND CHUN CHEN, Appellees. (2010-1076) Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences (Decided: September 1, 2011); Before PROST, MOORE (Author), and O’MALLEY,

Facts:  Eliyahou Harari et al. (Harari) appeals separate decisions of the Board of Patent Appeals and Interferences (Board) in two interferences involving Harari’s U.S. Patent Application No. 09/056,398 (’398 application) and several patents assigned to Micron Technology, Inc. (Micron).1 In the Lee interference, the Board entered judgment against Harari on Count 1 of the interference (Harari’s corresponding claims are 63-66) on the grounds that there was no written description support for Harari’s claims in the specification as filed. Harari argued that it had incorporated by reference its own earlier application, U.S. Patent Application No. 07/337,579 (’579 application), and that this application provided the necessary written description support. The Board held that the ’579 application was not incorporated by reference, and that even if it were, the incorporation was not sufficiently specific in identifying the material Harari needs from the ’579 application.

Lower Court’s Decision:  Harari’s ’398 application descends through a chain of continuations and a divisional from U.S. Patent Application No. 07/337,566 (the ’566 application). Harari filed the ’398 application as a photocopy of the original ’566 application along with a preliminary amendment canceling the ’566 application’s claims and adding new claims that it stated “are substantial copies” of claims in Lee’s U.S. Patent No. 5,619,454 (the Lee patent). Harari later added more claims it asserted “are either exact copies or near exact copies” of claims in Mihnea’s U.S. Patent Nos. 6,426,898 and 6,493,280 (the Mihnea patents).

On June 23, 2008, the United States Patent and Trademark Office (USPTO) declared Patent Interference No. 105,642 against Lee. Several weeks later, the USPTO declared Patent Interference No. 105,645 between Harari and Mihnea. Mihnea. In both interferences, Micron – the real party in interest representing Lee and Mihnea – filed threshold motions to dismiss, alleging that Harari’s involved claims were unpatentable for lack of written description support. Harari asserted that the allegedly incorporated ’579 application supported the involved claims. Micron, however, argued that Harari’s ’398 application failed to incorporate the ’579 application by reference.

Micron did not dispute that Harari’s original ’566 application properly identified the ’579 application as “copending U.S. patent application[] . . . entitled ‘Multistate EEprom Read and Write Circuits and Techniques,’ filed on the same day as the present application, by Sanjay Mehrotra and Dr. Eliyahou Harari.” (emphasis added). Because the ’566 and ’579 applications were filed on the same day and were not yet assigned serial numbers, referencing the ’579 application by inventorship and title was appropriate.

Micron argued instead that, even though it was a photocopy of the ’566 application, Harari’s later-filed ’398 application failed to identify the ’579 application. Micron asserted that the phrase “the same day as the present application” should be interpreted to mean the same day that the ’398 application was filed, not the original ’566 application’s filing date. Both Board panels agreed, and determined that the allegedly incorporated material was instead new matter. Because Harari relied on this material to support the claims at issue, the two Board panels held that Harari’s claims lacked written description support.

The Board panels further concluded that even if the ’398 application adequately identified the ’579 application as the target application, it failed to identify with sufficient specificity the portions of the ’579 application relied upon by Harari. The Mihnea Board also held that even if the entire ’579 application was incorporated, Micron had shown that certain claims, the “offset erase verify bias” claims, still lacked written description support. In contrast, the Lee Board concluded that Micron had failed to show that the claims at issue lacked written description support if the entire ’579 application was incorporated by reference. The two Board panels thus granted Micron’s threshold motions to dismiss and entered judgment on priority against Harari. Harari appeals both cases, and we have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141.

After the Board panels entered judgment for Micron in the Lee and Mihnea interferences, we decided Harari v. Hollmer, which involved another Harari application similarly descended from the ’566 application. 602 F.3d at 1350. Like the ’398 application at issue, the Harari application in Hollmer was filed as a photocopy of the original ’566 application along with a preliminary amendment canceling the photocopied claims, adding new claims, updating the cross-references to related applications, and inserting text and drawings from the incorporated ’579 application. In Hollmer, we held that the same incorporation language that is before us in Lee and Mihnea was sufficient to identify the ’579 application. Micron now concedes that, under Hollmer, Harari’s ’398 application adequately identified the ’579 application for incorporation. The parties still dispute, however, how much of the ’579 application was incorporated.

Findings on Appeal: I. Incorporation by Reference:  Whether and to what extent a patent application incorporates material by reference is a question of law we review de novo. Hollmer, 602 F.3d at 1351. In making that determination, the standard is whether one reasonably skilled in the art would understand the application as describing with sufficient particularity the material to be incorporated. Zenon Envtl., Inc. v. U.S. Filter Corp., 506 F.3d 1370, 1378-79 (Fed. Cir. 2007).

Harari argues that in Hollmer we held that the entire ’579 application was incorporated by reference. We disagree. The parties in Hollmer disputed only whether the incorporation language adequately identified the ’579 application, and we had no occasion to determine whether all or only some of the application was incorporated. 602 F.3d at 1352 & n.1. Accordingly, Hollmer holds only that the photocopied incorporation language is sufficient to identify the ’579 application when considered by a “reasonable examiner in light of the documents presented.” Hollmer did not address the extent of the incorporation. Because the parties dispute the extent of incorporation, we must now perform that analysis.

The parties’ dispute focuses on two passages in the ’398 application, i.e., the photocopy of the ’566 application. The application first discusses incorporation of the ’579 application and another application which is not at issue here: The disclosures of the two applications are hereby incorporate[d] by reference. The Flash EEprom cells are erased by applying a pulse of erasing voltage followed by a read to verify if the cells are erased to the “erased” state. If not, further pulsing and verifying are repeated . . . .  (emphasis added). In a later paragraph, the application again discusses the two applications, but uses different and arguably narrower language:

Optimized implementations of write operation for Flash EEprom device have been disclosed in two previously cited co-pending U.S. patent applications, Serial No. 204,175, and one entitled “Multi-State EEprom Read and Write Circuits and Techniques.” Relevant portions of the disclosures are hereby incorporated by reference. Briefly, during the write cycle, the controller applies a pulse of programming (or writing) voltages. This is followed by a verify read to determine if all the bits have been programmed properly.

Harari argues that the first incorporation statement plainly and unambiguously incorporates the entire ’579 disclosure. According to Harari, the second incorporation statement shows that the inventors knew how to incorporate only a portion of the ’579 application and chose not to do so in the first statement. Harari further argues that there is no need to use such words as “in its entirety” to indicate that the entire reference is incorporated. Micron responds that the Board correctly determined that the above-quoted language fails to clearly indicate with detailed particularity that Harari intended to incorporate all of the ’579 application. Instead, Micron argues, the incorporation language when read in context indicates that Harari intended to incorporate only the optimized erase and optimized write implementations as described in the short passages following the incorporation language. Micron also argues that the second incorporation statement is superfluous if the first one actually incorporated the entire ’579 application.

We agree with Harari that the first incorporation passage incorporates the entire disclosures of the two applications rather than just the portions describing optimized erase implementations. The Board is certainly correct that the incorporation here occurred during a discussion of the erase implementations. We nonetheless conclude that the entire ’579 application disclosure was incorporated by the broad and unequivocal language: “The disclosures of the two applications are hereby incorporate[d] by reference.”

In Mihnea, the Board addressed the incorporation of material describing adjusting the bias applied to a reference cell, which is a part of the ’579 application’s disclosed indirect read implementation. The Mihnea Board determined that the incorporation language failed to sufficiently identify the material regarding adjusting the bias applied to a reference cell. Mihnea J.A. 35.

On appeal, Micron repeats the Board’s reasoning and further argues that adjusting the bias applied to a master reference cell is performed only to track and compensate for changes to the memory cells over time, and is therefore of little use in the “micro- or nano-seconds between the erasure of the cell and its verification.” Harari responds that verifying is performed by either of the two read embodiments disclosed in the ’579 application.

We again agree with Harari. The ’579 application explains that both read embodiments are used to verify. It unambiguously states that local reference cells “are used directly or indirectly to erase verify, program verify or read the sector’s addressed memory cells.” Furthermore, immediately after describing the indirect read implementation, the ’579 application explains that “the read circuits and operation described are also employed in the programming and erasing of the memory cells, particularly in the verifying part of the operation.” (emphases added).

II. Harari v. Mihnea: Written Description

The claims at issue can be divided into two categories: those with an “offset erase verify bias” limitation and those without. In Mihnea, the Board held that if the ’579 application was incorporated by reference, the claims without an “offset erase verify bias” limitation, such as claim 68, were supported by the specification. On appeal, Micron does not dispute that those claims – those not reciting the offset erase verify bias limitation – are supported if the disputed portions of ’579 application were indeed incorporated by reference. With regard to those claims reciting an “offset erase verify bias” limitation, the Board held that they lacked written description support even if all of the ’579 application was incorporated by reference. Harari disputes this determination.

The dispute is whether the ’579 application’s description of margining and biasing a master reference cell relative to a local reference cell provides written description support for the offset erase verify bias claims. We decline to resolve this technical, fact-intensive question in the first instance, and instead vacate and remand to the Board for further proceedings consistent with this opinion.

III. Harari v. Lee

In Lee, the Board determined that, if all of the ’579 application was incorporated by reference, then Micron failed to show that Harari’s claims 63-66 lack written description support.  The Board determined that the broadest reasonable construction of Harari’s claim 63 encompassed accessing more than one bit line to activate multiple memory cells.

To satisfy the written description requirement, the properly construed claim must be supported by Harari’s specification., as the moving party, bears the burden of proof to demonstrate that Harari’s claims as properly construed lack written description support.  Harari’s arguments rely on our rule that the indefinite article “a” means “‘one or more’ in open-ended claims containing the transitional phrase ‘comprising.’”

In this case, the relevant independent claim does not recite a memory device having “a” bit line. Instead, it recites a method comprising accessing a number of control gates and a bit line to activate a number of cells. The plain language of the claim clearly indicates that only a single bit line is used when accessing a number of cells.

This written description decision turned almost entirely on the claim construction. As Micron explains, the ’579 application discloses selecting a single memory cell by row and column. In short, there is no disclosure in Harari of a single bit line activating multiple memory cells.

On appeal, Harari argues that the ’579 specification describes selecting a plurality of bit lines simultaneously using a drain multiplexer.  Harari points to no section of its disclosure explaining that such selecting electrically connects the bit lines. Moreover, accessing multiple bit lines simultaneously with a multiplexer is not accessing a single bit line. Similarly, calling multiple bit lines a “composite bit line” as Harari does in its briefs does not make it so. Accordingly, we affirm the Board’s decision granting Lee’s threshold motion alleging unpatentability for lack of written description and its judgment on priority against Harari.

Allen’s Observations:  This interference has two issues.  The first is whether an incorporation by reference was operative by reciting the “magic” language of  “in its entirety” but a later incorporation reference used more narrow language.  The CAFC blessed the “magic” language, but obviously this could have been avoided altogether if the draftsman had simply put the information in the specification.  The remainder of the case is highly fact-specific claim construction.


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