August 2017

Markman Construction of “Along” based on the Specification

In Stern v. Globus Medical in the District of Delaware (Civil Action No. 1:16-cv-91-RGA), the Markman construction of the claim term “along a longitudinal axis” was “on line or course parallel or close to,” i.e., not necessarily on the longitudinal axis.  A representative one of the patents at issue is US8,556,895. Representative language from claim 1 reads: “at least one interlocking portion arranged on the cervical plate body along a longitudinal axis thereof.” The plaintiff proposed that “along a longitudinal axis” be construed as “located on or over.”  The defendant argued that the term should be construed as “on a line or course parallel or close to,” because there is nothing in the specification that limits “along” the axis to mean “on” the axis, and, in fact, “at least one of the embodiments disclosed in the patent has an interlocking portion that is comprised of two arms that are parallel to a longitudinal axis but not centered on the plate.”  Based on these factors, the Court agreed with the defendant’s proposed construction. This case is a reminder that consistent use of the terms across various embodiments can play a critical role in claim construction.  In the case of words like “along” that… Read More »Markman Construction of “Along” based on the Specification

With License Ambiguous, Patent Exhaustion Heads to Jury

In Audio MPEG, Inc. v. Dell Inc., the Eastern District of Virginia denied summary judgment of patent exhaustion because it was ambiguous whether a license between Audio MPEG and Dell’s supplier Microsoft covered the allegedly infringing software, leaving the issue to the jury. Audio MPEG asserted that Dell’s sales of computers infringed three of its patents on encoding and decoding digital audio signals. Dell sold computers with both Microsoft Windows and third-party audio software preinstalled. The parties primarily disagreed on two factual questions: (1) Did Audio MPEG’s license agreement with Microsoft cover Windows codecs called by the third-party software? (2) Did the preinstalled third-party software only call the codecs or does it contain infringing programming? (According to the expert witness quoted by the court, “A codec is a piece of software that encodes and/or decodes a digital data stream. Codecs typically exist as a part of a shared library, such as a DLL, so they can be utilized by more than one software program.”) In denying summary judgment of patent exhaustion, the court noted the stakes based on the resolution of these two questions: “if the Windows codecs are included under the License Agreement and the third party software calls… Read More »With License Ambiguous, Patent Exhaustion Heads to Jury

No Patent-Eligibility for Biometric Identification System

Patent claims to “providing global biometric identification services to a plurality of remote parties” are directed to an unpatentable abstract idea under 35 U.S.C. § 101, said the court in IQS US Inc. v. Calsoft Labs, Inc., No. 1-16-cv-07774 (N.D. Ill. Aug. 18, 2017), granting the defendant’s Rule 12(b)(6) motion to dismiss. Claim 1 of US 7,773,779 recites System for providing global biometric identification services to a plurality of remote parties, the system comprising: a template receiver, comprising a) a registration input configured to receive from at least one remote registering party communicating with said template receiver, at least one registration template complete as originally extracted from a respective biometric sample of an end user of said remote registering party, associated with a tag relating said registration template to said end user; and b) an enquiry input, configured to receive from a remote inquiring party communicating with said template receiver, at least one test template complete as originally extracted from a respective biometric sample of a person; and a verifier, associated with said template receiver, configured to determine a degree of match between said registration template and said test template, by directly comparing the registration template complete as originally extracted… Read More »No Patent-Eligibility for Biometric Identification System

PTAB Construes Claim Term Based on Explicit Definition in Specification

In AVX Corporation v. Presidio Components (IPR2016-00636), the PTAB construed the claim term “essentially monolithic” based on the explicit definition provided in the detailed description of the challenged patent, US6,661,639.  The PTAB found that some of the claim terms were not unpatentable based, in part, on this construction.  This case is an example of a benefit of clearly defining claim terms in the detailed description. Independent claim 1 of the ‘639 patent includes the limitation “essentially monolithic.”  The Petitioner asserted that “essentially monolithic” should be construed broadly enough to include structures that have no boundaries or joints, and based some invalidity positions on this construction. In contrast, the PTAB held that an “essentially monolithic structure” includes a partial boundary or seam.  The PTAB pointed to column 5, lines 3-19 of the ‘639 patent, which clearly differentiates between “monolithic” and “essentially monolithic”: To state another way, monolithic is generally understood to refer to an object comprised entirely of one single piece (although polycrystalline or even heterogeneous) without joints or seams as opposed to being built up of preformed units. In the present invention, the only assembly occurs in the green state, and the individual capacitors obtained are sintered, monolithic or essentially… Read More »PTAB Construes Claim Term Based on Explicit Definition in Specification

Court Finds Evonik Entitled to Permanent Injunction

In August 2009, Evonik Degussa GmbH filed a complaint for infringement of its U.S. Patent No. 7,378,528 directed to olefin metathesis catalysts containing NHC (N-heterocyclic carbene) ligands against Materia Inc.  After nearly eight years of lengthy litigation, and following findings of validity, infringement, and damages before a jury, the Court has now ruled that Evonik is entitled to a permanent injunction.  Evonik Degussa GmbH v. Materia Inc., 1-09-cv-00636, (D. Del. Aug. 9, 2017). While the Court directed the parties to confer on the specific terms, the Court analyzed Evonik’s entitlement to a permanent injunction per the traditional factors as interpreted in the Supreme Court’s eBay decision:  (1) irreparable harm, (2) adequacy of monetary damages, (3) balance of hardships, and (4) public interest.  eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). For irreparable harm, the Court cited the trial record regarding the parties’ competition and Evonik’s unwillingness to license competitors under the patent-in-suit. For adequacy of monetary damages, the Court relied on the same “irreparability” factors – competition and unwillingness to license, coupled with Evonik’s maintenance of its unwillingness to license through the lengthy litigation.  The Court rejected Evonik’s argument that Materia’s ability to pay a further judgment was in… Read More »Court Finds Evonik Entitled to Permanent Injunction

Is a Programmable Memory Patent-Eligible? Fed. Cir. Splits

A split Federal Circuit panel held that claims of U.S. Patent No. 5,953,740 are directed to “an improvement to computer memory systems” and “not to the abstract idea of categorical data storage.”  Visual Memory, LLC v. NVIDIA Corp., No. 2016-2254 (Fed. Cir. Aug. 15, 2017) (majority op. by Judge Stoll, joined by Judge O’Malley; Judge Hughes dissenting) (precedential).  Accordingly, the court reversed the district court’s Rule 12(b)(6) dismissal for failure to state a claim, hold that the ’740 patent was not, as the lower court had found, invalid under 35 U.S.C. § 101 and the Alice test. Claim 1 of the ’740 patent recites: A computer memory system connectable to a processor and having one or more programmable operational characteristics, said characteristics being defined through configuration by said computer based on the type of said processor, wherein said system is connectable to said processor by a bus, said system comprising: a main memory connected to said bus; and a cache connected to said bus; wherein a programmable operational characteristic of said system determines a type of data stored by said cache. Drawing from the ’740 patent specification, the court pointed to advantages over the prior art from a “memory system… Read More »Is a Programmable Memory Patent-Eligible? Fed. Cir. Splits

“Molded” Construed as Product-by-Process in IPR

In the Final Written Decision in L&P Property Management Company v. National Products Inc., the PTAB construed the terms “molded docking station,” “molded wall,” and “molded apparatus body” as product-by-process limitations.  The PTAB based this conclusion largely on intrinsic evidence, and since the specification primarily described “molded” in terms of the process by which the part is made, as opposed to the structural characteristics of a part that is formed by molding, the PTAB concluded that “molded” is a product-by-process limitation. Claim 1 reads, in part, 1. A molded docking station for laptops, mini-laptops, notebooks, netbooks, and ultra mobile personal computers (UMPCs), the docking station adapted for mounting in vehicle applications and comprising: a housing comprising: a molded wall, a device bearing surface on a first portion of an outer surface of the wall between opposing side edges thereof, an expansion connector presentation edge of the wall positioned adjacent to a rear portion of the device bearing surface between the opposing side edges of the wall, and… The patent holder argued that “molded” should be construed as an adjective describing structure because an ordinary skilled artisan would have recognized that a molded part is structurally different than a corresponding non-molded… Read More »“Molded” Construed as Product-by-Process in IPR

Patent-Ineligibility in Collateral Case Kills Damage Award

After a jury found infringement of claims of two patents, and awarded damages, the Federal Circuit held the patent claims invalid under 35 U.S.C. § 101 in another case, whereupon the court in Prism Technologies, LLC v. Sprint Spectrum, LP, No. 8-12-cv-00123 (D. Neb. Aug. 8, 2017), granted Sprint’s motion under FRCP 60 for relief from the judgment. The defendant had appealed to the Federal Circuit, and lost.  Validity was not at issue in the appeal because before trial the defendant had stipulated in motions in limine that it would not contest the validity of the patents.  After the Federal Circuit agreed the patent claims were invalid under the Alice case and 35 U.S.C. § 101 in the other case, in which T-Mobile was the defendant, Sprint asked the Federal Circuit to withdraw its mandate in its appeal.  But the Federal Circuit declined to do so, because the judgment against Sprint was stayed, and because Sprint had indicated it would appeal to the U.S. Supreme Court.  But the Federal Circuit also stated that the district court “must” consider the preclusive effect of the T-Mobile ruling. The district court found that the T-Mobile ruling was preclusive.  The plaintiff’s argument that by… Read More »Patent-Ineligibility in Collateral Case Kills Damage Award

Alice Step 2 Saves Conference Call Patents

Patent claims directed to managing teleconferences over hybrid networks, i.e., PSTN and Internet, recited an unconventional combination of elements, said the court in Meetrix, IP, LLC v. Citrix Systems, Inc., No. 1-16-CV-1033-LY (W.D. Texas July 27, 2017).  The court thus denied the defendants’ motion to dismiss alleging patent-ineligible subject matter under 35 U.S.C. § 101 and the Mayto/Alice test. The “subject matter” of the three patents-in-suit, U.S. Patent Nos. 9,094,525, 9,253,332, and 8,339,997, could, said the court, “be described as audio and video telecommunications for collaboration over hybrid networks.”  Rather than focusing on individual or representative claims, the court simply summarized each of the three patents as follows: The ‘997 patent teaches a system for telephonic (e.g. PSTN) participation in an audio video conference over a hybrid network with the use of multicast protocols, multicast appliances, and Virtual Private Networks (“VPNs”). The ‘525 patent teaches a system for telephonic participation in an audio-video conference over a hybrid network using a Voice Over Internet Protocol (“VoIP”) decoder to decode IP packets, at least one audio decompressor, and transmitted across a VPN tunnel. The ‘332 patent teaches a method for collaboration of audio and video telecommunications over a hybrid secure network by… Read More »Alice Step 2 Saves Conference Call Patents

No Estoppel for IPR Dicta

In Oil-Dri Corp. v. Nestlé Purina Petcare Co., No. 15-cv-1067 (N.D. Ill. Aug. 2, 2017), an Illinois district court held that 35 U.S.C. § 315(e)(2) does not estop an accused infringer from challenging the validity of claims under an invalidity theory even if the Patent Trial and Appeal Board’s Final Written Decision indicated the Board would not have held the claims unpatentable under the same theory, at least where the Board declined to institute inter partes review on the theory in the first place. By way of background, Oil-Dri sued Nestlé in the Northern District of Illinois alleging Nestlé infringed U.S. Patent No. 5,975,019 (“the ‘019 patent”). Shortly after, Nestlé filed a petition with the Patent Trial and Appeal Board for inter partes review of the ‘019 patent. Nestlé asserted five challenges against the ‘019 patent: (1) that claims 1-4, 6-13, 30 and 32 were unpatentable as anticipated by U.S. Patent No. 5,386,803 (“Hughes”); (2) that claims 1-4, 6-13, 30 and 32 were unpatentable as anticipated by U.S. Patent No. 5,458,091 (“Pattengill”); (3) that claims 1-13, 30 and 32 were unpatentable as obvious over Hughes; (4) that claims 1-13, 30 and 32 were unpatentable as obvious over Pattengill; and (5)… Read More »No Estoppel for IPR Dicta