Thomas Bejin

Not All Patent Prosecution Disclaimers Are Broadly Construed

Not all patent prosecution disclaimers are broadly construed; rather, in construing patent claim terms disclaimers must be closely aligned to actual arguments made during prosecution.  On March 3, 2017 the Federal Circuit in Technology Properties Limited, et al v. Huawei, again gave guidance on the issue of prosecution history disclaimer. The patent at issue in Technology Properties related to a microprocessor with different clocks and improving performance by decoupling a variable frequency CPU and I/O clocks with the CPU clock fabricated on the same silicon as the rest of the microprocessor.  The claim term at issue in Technology Properties was “an entire oscillator disposed upon said integrated circuit substrate”.  The district court found two disclaimers based on two different prior art references – Magar and Sheets. The disclaimer based on the Magar reference limited “an entire oscillator” to one “whose frequency is not fixed by any external crystal.”  Technology Properties argued how the Magar reference was different from the claimed invention in ways unrelated to the disclaimer.  The Federal Circuit acknowledged that the claimed invention may be different from the prior art in the manner in which Technology Properties argued, but nonetheless upheld the disclaimer.  Specifically, the Federal Circuit stated… Read More »Not All Patent Prosecution Disclaimers Are Broadly Construed

Detail Counts to Support Patent Damage Analysis

In Yodlee v. Plaid Technology, No. 14-1445-LPS-CJB (D. Del. 2017), Judge Leonard Stark gave guidance on the boundaries of an admissible opinion for a reasonable royalty analysis in a patent case.  Yodlee v. Plaid involves a patent relating to a method and apparatus for gathering summary information from websites and presenting that information as HyperText Markup Language.  The Plaid software used a different pricing model and included features in addition to those allegedly covered by the patents in suit.  Yodlee offered damage theories for both lost profits and reasonable royalties through damages expert Mark Robinson. Judge Stark’s comments on Mr. Robinson’s reasonable royalty analysis is interesting with respect to apportionment and profit splitting. The apportionment requirement mandates that an expert apportion defendants profits between patented and unpatented features.  Erricsson, Inc. v. D-Link Sys. Inc., 773 F.3d 1201 (Fed. Cir. 2014).  In his expert report, Mr. Robinson attributed the patents contribution at 60%.  Plaid argued that this was arbitrary.  In response, Yodlee referenced Mr. Robinson’s analysis of the functionality of the accused product.  Judge Stark was unpersuaded by Mr. Robinson’s apportionment analysis.  Judge Stark held that Mr. Robinson’s analysis was deficient as he relied on witnesses not listed in Yodlee’s Rule… Read More »Detail Counts to Support Patent Damage Analysis

Federal Circuit Says a Seemingly Subjective Claim Term Is Not Indefinite under 35 USC § 112

The Federal Circuit has reversed the Northern District of Illinois’ conclusion that the phrase “visually negligible” renders a patent claim invalid under 35 U.S.C. § 112 as indefinite.   Sonix Technology Co., LTD. v. Publications International, LTD, No. 16-1449 (Fed. Cir. Jan. 5, 2017).  The district court’s ruling should hardly have come as a surprise since the Federal Circuit has previously held the phrases “aesthetically pleasing” and “unobtrusive manner” invalid as purely subjective.  See Datamize, LLC v. Plumtree Software Inc., 417 F.3d 1342 (Fed. Cir. 2005); Interval Licensing LLC v. AOL, Inc., 766 F3d 1364 (Fed. Cir. 2014).    However, Judge Lourie, writing on behalf of a unanimous panel that also included Judges O’Malley and Taranto, concluded that in this case the examples in the specification saved the seemingly indistinguishable subjective phrase “visually negligible.” The Court’s began its analysis by concluding that its indefiniteness review would be entirely de novo because the district court did not rely on extrinsic evidence in reaching its conclusion of indefiniteness. Turning to the question of indefiniteness, the Federal Circuit stated that where a term of degree lacks guidance from the specification it is indefinite but where such guidance is provided the term may have sufficient clarity. … Read More »Federal Circuit Says a Seemingly Subjective Claim Term Is Not Indefinite under 35 USC § 112

Damages for Design Patent Infringement: What Is an “Article of Manufacture?”

On December 6, 2016, the U.S. Supreme Court issued its long awaited decision in Samsung Electronics Co. v. Apple Inc.  The issue in Samsung v. Apple was whether 35 U.S.C. § 289 requires that design patent damages of a multi-component product must always lie in the end product sold to the consumer.  The Court, in a unanimous decision, held that the term “article of manufacture” as used in § 289 does not mean only the end product sold to the consumer, but can mean a smaller component part – even where the component part is not available for separate purchase.  In so doing the U.S. Supreme Court reversed Apple’s $399 million award for design patent infringement. The design patents in the Samsung v. Apple litigation related to the appearance of the exterior of a smart phone.  The jury found that Samsung infringed those design patents and awarded Apple the total profits made by Samsung, $399 million.  The controlling statute for design patent infringement is 35 U.S.C. § 289, which states: Whoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture… Read More »Damages for Design Patent Infringement: What Is an “Article of Manufacture?”

Investors in a Separate Corporation that Files an IPR Petition Are Not Real-Parties-in-Interest

Clouding IP is the assignee of U.S. Patent No. 6,738,799 (the ‘799 patent).  The ‘799 patent is related to a method of file synchronization using a signature list.  Clouding asserted the ‘799 patent in a host of lawsuits, including one against Google.  More than one year after the Google case was filed, Unified Patents filed a petition to institute Inter Partes Review (IPR) of certain claims of the ‘799 patent.  In granting the petition, the Patent Trial and Appeals Board (PTAB) rejected the patent owner’s argument that Google was a real-party-in-interest.  Unified Patents, Inc. v. Clouding IP, LLC, Case IPR2013-00586, (PTAB March 21, 2014 (decision on institution of Inter Partes Review). Clouding had submitted a Patent Owner Preliminary Response, arguing that the IPR should not be instituted because Google, not Unified Patents, was the “real party in interest” under 35 U.S.C. § 312(a)(2).  Because Clouding sued Google more than one year before the Petition was filed, Clouding argued that the Petition was barred under 35 U.S.C. § 315(b). In support of its argument, Clouding pointed to a Bloomberg Online article identifying Google as a founding member of Unified Patents. Clouding also pointed to another article claiming that Unified Patents “counters… Read More »Investors in a Separate Corporation that Files an IPR Petition Are Not Real-Parties-in-Interest