Mark St. Amour

35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

In Packet Intelligence LLC, v. Netscout Systems, Inc. the Federal Circuit reversed a jury determination for pre-suit damages, and vacated an enhancement of such damages, for Netscout’s infringement of U.S. Patent 6,665,725, U.S. Patent 6,839,751, and U.S. Patent 6,954,789, all owned by Packet Intelligence. The patents at issue were all directed to monitoring packets exchanged over a computer network. The ‘798 patent includes system claims, and the ‘725 and ‘751 patents include method claims. It was important in this case that infringement of the various system and method claims have different requirements to qualify for pre-suit damages. Pre-suit damages for the system claims are controlled by the marking requirements of 35 U.S.C. § 287(a), whereas pre-suit damages for the method claims are not. With respect to the method claims of the ‘725 and ‘751 patents, Packet Intelligence argued that evidence of direct infringement of the ‘725 and ‘751 patents was sufficient to merit an award of damages for pre-suit activities. Direct infringement would require the method of the patent claims to actually be practiced, i.e., the steps of method actually performed. However, NetScout’s primary activity was to sell and license software, and, as the Federal Circuit pointed out, method claims… Read More »35 U.S.C. § 287(a) and the Burdens of Providing Notice for Pre-Suit Damages: Packet Intelligence LLC, v. Netscout Systems, Inc.

Means-Plus-Function Construction Can Lead to Indefiniteness

In Unicorn Global Inc. v. Golab, Inc. No. 3:19-CV-0754-N (N.D. Tex. May 26, 2020), the Northern District of Texas construed several disputed terms of U.S. Patent No. 9,376,155 and U.S. Patent No. 9,452,802, and found claims to be indefinite means-plus-function claims without having structure described in the specifications. The patents are directed to personal transportation devices known as hoverboards which include a divided platform with wheels on opposite ends. A rider stands on the platform and tilts halves of the platform to control movement of the hoverboard. Most notable of the construed claim terms was “limiting shaft.” Plaintiff and patent owner Unicorn conclusorily asserted that the term should be given its plain and ordinary meaning. Defendant and alleged infringer Golab argued that “limiting shaft” was means a plus-function term and could not be defined. The court started by stating that the term “sounds like a structural element” and was presumed not to be means-plus-function because there was no specific recitation of “means.” However, the court determined that the presumption was rebutted because “limiting shaft” clearly described a function, i.e., limiting relative rotation between two objects connected by the shaft, and further because Unicorn failed to provide evidence that described a structure… Read More »Means-Plus-Function Construction Can Lead to Indefiniteness

Claim Interpretation and Definiteness of Terms of Degree

In Kitsch LLC v. Deejayzoo, LLC (Case No. LA CV19-02556 JAK (RAOx)) the Central District of California interpreted claims of U.S. Patent No. 10,021,930 that included terms of degree as being sufficiently definite under 35 U.S.C. § 112. The case was initiated by Plaintiff Kitsch, who sought a judgment declaring invalidity of the ‘930 patent. The ‘930 patent is owned by Defendant Deejayzoo and is directed toward an improved shower cap that reduces volume experienced by a user of the cap. Claim 1 of the ‘930 patent recites, in relevant part: 1. A covering apparatus comprising: a unitary material; . . . wherein the unitary material comprises an outer layer and an inner layer; wherein the outer layer comprises a fabric; wherein the outer layer is water repellent; wherein the inner layer is polyurethane[;] . . . and wherein the covering apparatus is a shower cap. During claim construction, Kitsch argued to the Court that claim 1 was indefinite under 35 U.S.C. § 112 and could not be construed because the phrase “water repellent” was relative and failed to provide the necessary definitive metes and bounds. Specifically, Kitsch argued that all fabrics are water repellent to some degree, providing supportive… Read More »Claim Interpretation and Definiteness of Terms of Degree

Claim Interpretation and the Enablement Requirement

Providing a reminder about how to interpret elements of a patent claim when analyzing the claim against prior art during patent prosecution, in Technical Consumer Products, Inc. v. Lighting Science Group Corp. (April 8, 2020), the Federal Circuit vacated a PTAB decision that Appellant Technical Consumer Products’ (“TCP”) failed to show that claims of U.S. Patent No. 8,201,968 were invalid based on anticipation and/or obviousness. The ‘968 patent is owned by Appellee Lighting Science Group Corp. (“LSG”). The ‘968 patent is directed toward an LED assembly this is configured to be retrofitted into an existing light fixture, such as a recessed can lighting fixture. Application of the prior art turned on interpretation of the claim recitation of a “heat sink.” Claim 1 recites: a heat spreader and a heat sink thermally coupled to the heat spreader, the heat sink being substantially ring-shaped and being disposed around and coupled to an outer periphery of the heat spreader; … wherein the heat spreader, the heat sink and the outer optic, in combination, have an overall height H and an overall outside dimension D such that the ratio of H/D is equal to or less than 0.25. Figure 12 from the ‘968 patent… Read More »Claim Interpretation and the Enablement Requirement

Written Decision Needed For IPR Estoppel

In Finjan, Inc. v. Cisco Systems, Inc. Case No. 17-cv-00072-BLF (N. D. Cal. Feb. 3, 2020) the Northern District of California denied Plaintiff Finjan’s motion for summary judgement of validity of a number of claims of various patents asserted against defendant Cisco. Finjan’s arguments were centered around a pair of petitions for inter partes review filed by Cisco, and the court’s denial articulates the applicably of estoppel in situations where petitions are denied institution. The pair of petitions at the center of Finjan’s arguments were filed with the PTAB by Cisco after Finjan had sought enforcement of a few of its patents. The patents at issue had been subject to, and survived, challenges at the PTAB and Federal Circuit. Cisco was not a party to, or identified as a party of interest in, the previous challenges. The PTAB denied institution of the pair of petitions filed by Cisco. In addition to the petitions, Cisco challenged the validity of Finjan’s patents in the district court case. The invalidity theories presented in the district court were different than those of the IPR petitions – namely, they used different art and relied on expert testimony. Finjan’s primary argument pieced together Cisco’s use of… Read More »Written Decision Needed For IPR Estoppel

§ 112 Enablement and Written Description in Post-Grant Review

When are written description and enablement requirements of 35 U.S.C. § 112 met, and what is a Petitioner’s burden of showing those requirements are not met in a PTAB proceeding? In Instrumentation Laboratory Co. v. Hemosonics LLC, the Patent Trial and Appeal Board (PTAB) denied institution of post-grant review of U.S. Patent 9,977,039 (“the ‘039 patent”). The PTAB declined institution because if found that Instrumentation Laboratory Co. (“Petitioner”) didn’t meet its burden of proof to support the challenges under 35 U.S.C. § 112 it was alleging against the ‘039 patent. Hemosonics LLC (“Patent Owner”) is the owner of the ‘039 patent, which is directed toward devices, systems and methods for evaluating hemostasis of blood. The invention uses test chambers for holding blood, and “transducers associated with each of the plurality of test chambers in the interrogation of the test sample.” ‘039 Patent, claim 1 (identified as representative by the PTAB). The ‘039 patent issued from a continuation application filed on July 7th, 2017.  The ‘039 patent is a continuation of a series of a US patent application and prior US provisional application having priority dates of Feb. 15, 2012 and Feb. 15, 2011, respectively (“priority applications”). Remember, post-grant review is… Read More »§ 112 Enablement and Written Description in Post-Grant Review

112 and the Zone of Uncertainty

In consolidated cases Niazi Licensing Corp. v. Boston Scientific Corp. and Niazi Licensing Corp. v. St. Jude Medical S.C. Inc. the district court found U.S. Patent 6,638,268 (“the ‘268 patent”) to be invalid under 35 U.S.C. § 112 for being indefinite and not particularly pointing out and distinctly claiming the subject matter which the inventor regards as the invention. The indefiniteness determination for the ‘268 patent was arrived at by the Court during a Markman proceeding to interpret certain claim terms. The independent claims of the ‘268 patent each recite an “inner, pliable catheter.” For example, representative claim 1 recites: an inner, pliable catheter slidably disposed in the outer catheter and of greater length than the outer catheter so that a distal end portion of the inner catheter can be extended or retracted from a distal end opening of the outer catheter. During the Markman proceeding the parties disputed the interpretation of the “inner, pliable catheter.” Niazi argued that the phrase should be construed to mean “a catheter that is easily bent, flexible.” Defendants Boston Scientific and St. Jude argued that the phrase was indefinite. Niazi relied on McCreary v. United States, 35 Fed. Cl. 533, 556-57 (1996) to support… Read More »112 and the Zone of Uncertainty

Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding

In William Grecia v. Samsung Electronics (Fed. Cir. 2019) the Federal Circuit affirmed a finding of invalidity for U.S. Patent 8,533,860 (the ‘860 patent) under 35 U.S.C. § 112, ¶2 (indefinite). The invalidly determination for the ‘860 patent was arrived at by the Court after a means-plus-analysis and invocation of 35 U.S.C. § 112, ¶6. Claim 21, the only claim at issue, recites: 21. A computer product comprising a memory, a CPU, a communications console and a non-transitory computer usable medium, the computer usable medium having an operating system stored therein, the computer product further comprising a customization module, the computer product authorizing access to digital content, wherein the digital content is at least one of an application, a video, or a video game, wherein the digital content is at least one of encrypted or not encrypted, the computer product configured to perform the steps of: receiving a digital content access request from the communications console, the access request being a read or write request of metadata of the digital content, the metadata of the digital content being one or more of a database or storage in connection to the computer product, the request comprising a verification token corresponding to… Read More »Means-Plus-Function Claim Construction of “Customization Module” Results in Indefinite Finding

Communications System Patent Falls Under § 101

In Uniloc USA Inc. v. LG Electronics USA Inc. the district court found claims directed to “primary station for use in a communications system” in U.S. Patent 6,993,049 (“the ‘049 patent”) to be invalid under 35 U.S.C. § 101 for not claiming patentable subject matter. The invalidly determination for the ‘049 patent was arrived at by the court after analysis under the Alice framework, the court ultimately determining that the claims were directed to an abstract idea. Claim 2, selected by the court as representative, recites: A primary station for use in a communications system comprising at least one secondary station, wherein means are provided for broadcasting a series of inquiry messages, each in the form of a plurality of predetermined data fields arranged according to a first communications protocol, and for adding to each inquiry message prior to transmission an additional data field for polling at least one secondary station. In layman’s terms, the invention was directed to an improvement in Bluetooth technology. Specifically, the improvement and point of novelty in the claim was “adding to each inquiry message prior to transmission an additional data field for polling.” Under step one of the Alice framework the court found that… Read More »Communications System Patent Falls Under § 101

Using Claim Construction to Import Limitations

In Continental Circuits LLC v. Intel Corp. No. 2018-1076 (Fed. Cir. Feb. 8, 2019) the Federal Circuit determined the district court erred in its claim construction and explained the high bar that must be met to import limitations from a patent specification to the claims. Plaintiff Continental Circuits, LLC, (Continental) sued Defendants Intel Corp. et. al., (Intel) for infringement of U.S. Patent Nos. 7,501,582 (“the ’582 patent”); 8,278,560 (“the ’560 patent”); 8,581,105 (“the ’105 patent”); and 9,374,912 (“the ’912 patent”)(collectively “the patents”). The patents are direct toward a “multilayer electrical device . . . having a tooth structure” and methods for making such device. The patents are continuations of each other and share a substantially common specification. The patents’ specifications describe that the best method for producing the claimed teeth is to perform a double desmear etching process. The specifications specifically point out that the double desmear process differentiates the patents from a single desmear process used in the prior art. During prosecution of the ‘560 patent, the claims were subject to a rejection for indefiniteness and written description under 35 U.S.C. section 112. In response, Continental submitted an expert declaration explaining that the “etching” process disclosed in the specification… Read More »Using Claim Construction to Import Limitations