September 2017

Patent Prior Art and the Necessity Requirement for Inherency

A patent claim limitation can only be inherently disclosed by patent prior art when such limitation is necessarily a component of a disclosed subject matter. In Southwire Co. v. Cerro Wire LLC, No. 2016-2287 (Fed. Cir. Sept. 8, 2017), the Federal Circuit rejected the Patent Trial and Appeals Board’s reasoning that certain claim elements were inherent in patent prior art cited in an inter partes reexamination. Luckily for the Petitioner, the Federal Circuit then held that the standard obviousness analysis invalidated the claims based on the cited patent prior art, and upheld the Board’s invalidity determination. At issue was Claim 1 of U.S. Patent 7,557,301. Claim 1 recited: 1. In a method of manufacturing a finished electrical cable having a conductor core and a jacket formed primarily of a first material, the jacket surrounding at least said conductor core and defining the outermost exterior surface of the finished cable, the improvement comprising combining a preselected lubricant with said first material prior to the formation of said jacket in order to provide a reduced coefficient of friction of said cable outermost exterior surface and also reduce the amount of force required to pull the cable, during its installation through building passageways,… Read More »Patent Prior Art and the Necessity Requirement for Inherency

CAFC Requires Broadest Reasonable Interpretation to Correspond to Inventor’s Description in Spec

In In Re: Smith International, Inc., the CAFC held that the broadest reasonable interpretation of a claim term must correspond with what and how the inventor describes the invention in the specification.  In this case, the CAFC held that the interpretation of the claim term “body” by the Examiner and the PTAB in the underlying ex parte reexamination may not have been inconsistent with the specification, but did arbitrarily include and exclude elements described in the specification and, thus, did not correspond to the specification.  Based on the CAFC’s broadest reasonable interpretation of “body,” the CAFC reversed the rejections of all of the appealed claims. The following is a representative claim: 28. An expandable downhole tool for use in a drilling assembly positioned within a well bore having an original diameter borehole and an enlarged diameter borehole, comprising: a body; and at least one non-pivotable, moveable arm having at least one borehole engaging pad adapted to accommodate cutting structures or wear structures or a combination thereof and having angled surfaces that engage said body to prevent said arm from vibrating in said second position; wherein said at least one arm is moveable between a first position defining a collapsed diameter,… Read More »CAFC Requires Broadest Reasonable Interpretation to Correspond to Inventor’s Description in Spec

Pleading Patent Infringement Does Not Require Proofs

Federal Circuit addressed the pleading standards for patent infringement in Lifetime Indus., Inc. v. Trim-Lok, Inc., No. 3:13-cv-00819-RLM-MGG (N.D. Indiana September 7, 2017).  Reversing and remanding a decision of the district court, the CAFC held that Lifetime Industries adequately pled facts sufficient to support claims of direct, indirect, and contributory patent infringement.   Patentee Lifetime makes seals for slide-out rooms in recreational vehicles (RVs) as shown in FIGS. 1-2 of the patent at issue (U.S. Pat. 6,966,590).  Among other things, the claims of the ‘590 patent require a resilient seal (having two portions—a mounting portion and a separate bulb portion), wherein the seal is used in combination with a mobile living quarters having a slide-out room.  Lifetime’s pleadings included the following allegations: Two Lifetime engineers—with knowledge of the ‘590 patent—left Lifetime and began working for Defendant Trim-Lok. Soon after these two engineers began working for Trim-Lok, Trim-Lok began offering for sale a two-part seal for an RV with a slide-out room. A Lifetime representative discovered the two-part Trim-Lok seal installed on an RV with a slide-out room at an RV manufacturer (Forest River, Inc.). That Trim-Lok caused the installation at Forest River for purposes of testing and/or soliciting sales. That… Read More »Pleading Patent Infringement Does Not Require Proofs

IPR Estoppel Remains Elusive for Patent Owners

In Finjan v. Blue Coat Systems, LLC, No. 15-cv-03295-BLF, (N.D. Cal. July 28, 2017), the court took the majority view on the scope of Inter Partes review estoppel, finding no estoppel for grounds of invalidity not included in a petition and for grounds of invalidity denied institution by the Patent Trial and Appeal Board. Finjan had sued Blue Coat, among several others, for infringement of several cybersecurity patents relating to “content-based security,” counteracting malicious code in downloaded files based on the behavior of the code rather than a maintained list of viruses and malicious code. Finjan’s enforcement campaign had spawned numerous IPR petitions before the PTAB. Blue Coat had joined four inter partes reviews filed by other defendants against U.S. Patent Nos. 8,677,494 and 8,225,408, which the PTAB instituted, with some claims of the ’494 patent and all claims of the ’408 patent surviving. Finjan moved for summary judgment that the grounds of invalidity left out of the petitions but raised in the litigation against the ’494 and ’408 patents should be estopped. Blue Coat had also filed its own IPR petitions against U.S. Patent Nos. 6,154,844; 6,965,968; 7,418,731; and 8,079,086, but the PTAB denied institution. Finjan moved for summary… Read More »IPR Estoppel Remains Elusive for Patent Owners

Knowledge of Skilled Artisan Can Beat Patent Indefiniteness

Knowledge of a person of skill in the art was recently used to revive claims that had earlier been found indefinite under 35 U.S.C. § 112.  Delaware District Court Judge Leonard P. Stark granted a motion for reargument on the issue of patent indefiniteness after considering evidence of a person skilled in the art.  Judge Stark held there to be a factual dispute regarding the knowledge that a person of skill in the art would bring to bear when testing for features claimed in US Patent Nos. 7,774,911 and 8,176,613.  The factual dispute determination precluded a conclusion, until the dispute is resolved, that it has been proven by clear and convincing evidence that the claims are invalid.  American Axle & Manufacturing, Inc. v. Neapco Holdings LLC and Neapco Drivelines LLC, C.A. No. 15-1168-LPS (D. Del. September 6, 2017). US Patent Nos. 7,774,911 and 8,176,613 were asserted by American Axle & Manufacturing, Inc. (“AAM”) against Neapco Holdings LLC and Neapco Drivelines LLC (“Neapco”).  Claims of each of the patents include the step of positioning a liner within a driveline shaft member to: damp shell mode vibrations by at least 2%; and damp bending mode vibration in the shaft, with the liner… Read More »Knowledge of Skilled Artisan Can Beat Patent Indefiniteness

Patent Claim Preamble Not Limiting, Infringement Not Derailed

Here is a case illustrating the general rule that the preamble of a patent claim is rarely construed as a substantive claim limitation. In Georgetown Rail Equipment Co. v. Holland L.P.¸ No. 2016-2297 (Fed. Cir. Aug. 1, 2017), the Federal Circuit affirmed a claim construction finding that elements of the preamble do not limit the scope of the claimed invention.   Georgetown owns U.S. Patent 7,616,329, which is directed to digital technology to inspect railroad track tie plates. Georgetown markets products that use lasers and cameras mounted on a rail car to collect and process information about track ties. A jury found that these products infringed claims of the ’329 patent. Holland purchases track tie and measuring technology from a third party and mounts such equipment on a rail car. Holland collects data with the rail car and stores such data on hard drives. The hard drives are then physically shipped overseas, where the data is processed by a third party.   Following a claim construction determination by the District Court for the Eastern District of Texas that the preamble did not limit the scope of the claim, a jury found that Holland willfully infringed the ‘329 patent, awarding lost… Read More »Patent Claim Preamble Not Limiting, Infringement Not Derailed

Indirect Patent Infringement Requires Direct Infringement

Because “a finding of direct infringement is a predicate to any finding of indirect infringement,” the Federal Circuit reversed a district court’s findings of indirect patent infringement where the evidence did not support a finding of direct infringement. Intellectual Ventures I LLC v. Motorola Mobility LLC, No. 2016-1795 (Sept. 13, 2017) (precedential) (majority opinion by Judge Dyk joined by Judge Taranto, Judge Newman concurring-in-part and dissenting-in-part). At issue was claim 41 of US Patent No. 7,810,144, which recites: A communications device, comprising: a processor; and a memory that stores at least one program usable to control the communications device, wherein the communications device is configured to: display a collection of file identifiers, wherein each file identifier represents a selectable file; receive a user selection of at least one file identifier representing a file selected to be transferred to a second device; display a collection of destinations identifiers, wherein each destination identifier represents a remote device having a numbered destination address on a circuit switched or packet switched network; receive a user selection of at least one destination identifier as selection of the second device; display a data entry field in which a text message can be entered; receiving the text… Read More »Indirect Patent Infringement Requires Direct Infringement

Patent Pleadings Standards and Divided Infringement

When a plaintiff accuses multiple defendants of cooperating to infringe a patent, a well-pled complaint must make clear which defendant controls an accused system, and how defendants cooperate to practice a claimed method.  On this basis, where a plaintiff’s complaint alleged that multiple parties conspired to infringe US Patent Nos. 8,920,068 and 8,956,075, directed to systems and methods for making “tunnel molds” for reinforced concrete structures, the court dismissed the complaint for failure to state a claim pursuant to FRCP 12(b)(6). Raptor, LLC v. Odebrecht Construction Inc. (S.D. Fla. Aug 31, 2017). The plaintiff had alleged that defendant #1 had listened to a presentation about the plaintiff’s patented technique, and had then shared the technique with defendant #2, the latter having allegedly actually carried out the unauthorized use. The plaintiff had also attempted to pierce the corporate veil with respect to individual defendants. After the court dismissed the plaintiff’s initial complaint, the plaintiff provided what it said were detailed claim charts laying out which party did what. The court agreed with the defendants that the plaintiff’s renewed pleading failed “to allege each corporate Defendant infringed each limitation of the Patents’ Claims,” and “lack sufficient to infer joint infringement.” (Emphasis in original.) … Read More »Patent Pleadings Standards and Divided Infringement

Analogous Patent Prior Art from Different Field of Endeavor?

If you are trying to disqualify a prior art reference as non-analogous in either patent prosecution or litigation, here is a case to remind you of limitations of such arguments. In Smartdoor Holdings, Inc. v. Edmit Industries, Inc., No. 2016-2152 (Fed. Cir. Sept. 7, 2017) (non-precedential), the Court affirmed an Inter Partes Review finding of the Patent Trial and Appeal Board (PTAB) that claims of U.S. Patent No. 6,484,784 were obvious over a combination of two prior art references. In so doing, the Court rejected the IPR petitioner’s argument that one of the references should have been disqualified as non-analogous patent prior art. The only independent claim of the ’784 patent at issue recites a door moved by an electric motor and including a generator configured such that moving the door from a first to a second position causes the generator to produce power to apply a braking force to slow movement of said door from said first position to said second position into power at least one auxiliary device. The reference relied upon to teach the braking force did not disclose a door, and therefore the petitioner argued it was non-analogous patent prior art. The Federal Circuit disagreed. One… Read More »Analogous Patent Prior Art from Different Field of Endeavor?

Defendant Controlled Information Not Required in Pleadings

Does the fact that relevant information is “arguably within [the defendant’s] sole possession” affect the plaintiff’s burden in pleading a claim for patent infringement?  In Prowire, LLC v. Apple, Inc. , the United States District Court for the District of Delaware denied Apple’s motion to dismiss for failure to state a claim. Noting that defendant’s arguments focused on information “arguably within [the defendant’s] sole possession,” the court held Prowire’s allegations plausible to state a claim for direct infringement. Prowire filed a complaint accusing Apple of infringing U.S. Patent No. 6,137,390 (“390 patent”) by making, using, importing, selling and offering for sale products, such as the iPad 4 tablet, which contain an inductor incorporating claims 1 and 11 of the ‘390 patent. Representative claim 1 of the ‘390 patent recites: [a]n inductor with enhanced inductance comprising: (a) a magnetic core; (b) an electrically conducting coil wound about said magnetic core; (c) a magnetic resin layer compression-molded to embed at least a portion of an outer periphery of said electrically conducting core; (d) wherein said magnetic resin layer contains a magnetic power dispersed in a polymer resin. Apple argued that Prowire’s claims are not plausible under the Supreme Courts decisions setting out… Read More »Defendant Controlled Information Not Required in Pleadings