SoCal IP Law Group

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Monthly Archives: June 2012

SoCal IP Institute :: July 2, 2012 :: Doctrine of Equivalents, Unexpected Results and Teaching Away

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, July 2, 2012. Brief synopses are presented below.

Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, Case No. 2011-1140, 2011-1150 (Fed. Cir. June 22, 2012) (attached).

This suit involved infringement assertions between two competitors in the chewing gum industry.  Cadbury contended that Wrigley infringed its Patent No. 5,009,893, which claims chewing gum containing a combination of menthol and a coolant known as WS-3, while Wrigley contended that Cadbury infringed its Patent No. 6,627,233, which claims chewing gum containing a combination of menthol and a coolant known as WS-23.

In the district court, Cadbury obtained summary judgment of anticipation and obviousness of the ‘233 patent, while Wrigley obtained summary judgment of noninfringement of the ‘893 patent.  Both parties appealed.  The Federal Circuit affirmed both holdings stating that Wrigley’s WS-23 coolant and menthol combination did not infringe Cadbury’s patent under the doctrine of equivalents.  Additionally, Wrigley’s patent was held invalid as anticipated by U.S. Patent No. 5,688,491 (Shahidi), and obvious in view of the prior art, particularly because there were no unexpected effects of the WS-23 coolant and menthol combination.

In Re Mouttet, Case No. 2011-1451 (Fed. Cir. June 26, 2012) (attached).

In 2006, Mouttet filed a utility patent application for a “Crossbar Arithmetic Processor,” disclosing a computing device for processes such as addition, subtraction, multiplication, and division using nanoscale materials in a crossbar array with conductive wires. The examiner rejected all claims as obvious and the Board of Patent Appeals and Interferences affirmed. On appeal, although all the claim elements were in the prior art, Mouttet argued teaching away and non-combinability of the prior art references, specifically a change in operating principle.  The Federal Circuit affirmed the Board’s decision, stating that substantial evidence supports the conclusion that the claimed invention would have been obvious to one having ordinary skill in the art.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 2, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

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SoCal IP Institute :: June 25, 2012 :: Question of Law in Willful Infringement and Incorporation Statements

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, June 25, 2012. Brief synopses are presented below.

Bard Peripheral v. W.L. Gore, Case No. 2010-1510 (Fed. Cir. June 14, 2012) (attached).

The District Court for the District of Arizona had previously held that Gore had willfully infringed Bard’s patent and awarded enhanced damages and attorneys’ fees to the patentee.  On appeal, the Federal Circuit looked at its previous decision in Seagate, where they defined a two-prong test for willfulness that requires clear and convincing evidence (1) “that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and (2) that the infringer had knowledge (or should have known) of this risk.

Willfulness is a question of fact that has been traditionally decided by a jury.  The Federal Circuit stated that a court, rather than a jury, should first decide the threshold question of whether there existed an objectively high-likelihood that the infringer’s action’s constituted infringement. The Federal Circuit ruled that this “objective prong” of the test for willful patent infringement is a separate question of law and that it is the trial court’s duty to determine whether the defendant’s actions were objectively reckless. Further, the objective prong will now be subject to de novo review on appeal.

The Federal Circuit stated: “After reviewing the Supreme Court’s precedent in similar contexts, as well as our own, we conclude that simply stating that willfulness is a question of fact over-simplifies the issue. While the ultimate question of willfulness based on an assessment of the second prong of Seagate may be a question of fact, Seagate also requires a threshold determination of objective recklessness. That determination entails an objective assessment of potential defenses based on the risk presented by the patent. Those defenses may include questions of infringement but also can be expected in almost every case to entail questions of validity that are not necessarily dependent on the factual circumstances of the particular party accused of infringement.”  Slip Op. at 6.

Hollmer v. Harari, Case No. 2011-1276 (Fed. Cir. June 7, 2012) (attached).

The Board of Patent Appeals and Interferences previously held that Harari’s Patent Application No. 09/310,880 (’880) was entitled to priority to the filing date of Harari’s earlier 07/337,566 (’566) application, which preceded the date of conception for Hollmer’s patent. The ’880 application is the latest in a family of applications filed by Harari and claimed priority back to the ’566 application, filed on April 13, 1989.  The ’566 application was filed on the same day as another application No. 07/337,579 (’579), also by Harari, and was incorporated into the ’566 application. Harari’s later applications included the same priority language used in the ’566 application, referencing the ’579 application only by specifying that application’s title, inventor name, and by indicating the ’579 application’s filing date as “the same day as the present application.”

Hollmer argued that the later applications in Harari’s applications were ambiguous, because the incorporation by reference statement could have referred to other applications besides the ’579 application. The Board found the statement not ambiguous, because a reasonable patent examiner could have correctly determined that the applications in question referred to the ’579 application.

On appeal, the Federal Circuit disagreed, holding that the correct standard was whether a reasonable person of ordinary skill in the art could have determined what application was referenced. The court determined that the incorporation by reference statement in two of the applications in the chain were ambiguous.  Accordingly, the’880 application was only allowed priority to the effective date of the immediately prior application in the family, which was Dec. 20, 1996.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 25, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: June 18, 2012 :: Patent Infringement Pleading Standards and Indirect Infringement

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, June 18, 2012. Brief synopses are presented below.

In re Bill of Lading Transmission and Processing System Patent Litigation, Case Nos. 2010-1493, -1494, -1495, -1496; 2011-1101, -1102 (Fed. Cir. June 7, 2012) (attached).  In this case R + L Carriers, Inc. sued a number of defendants alleging infringement of a patent directed to a method of transmitting bills of lading from a truck cab, as the truck is in the process of transporting freight from a location to a destination.  The case was consolidated to the S.D. of Ohio wherein each of the complaints were dismissed as failing to identify specific customers who directly infringed.  The defendants in these cases provide systems that enable trucking companies to transmit the bills of lading.  The district court noted that for contributory infringement, R+L was required to allege that the accused products were not staple articles and that they were not suitable for substantial non-infringing uses.  R+L did not and, therefore, these claims were dismissed.  The remaining claims for indirect infringement were similarly dismissed. R+L appealed.

First, R+L argued that no direct infringement in an offer-to-sell case was necessary.  The Federal Circuit noted that this argument was incorrect under the law.  Direct infringement is always required.  R+L also argued that it adequately pled the presence of a direct infringer in each case.  On this the Federal Circuit agreed citing Form 18 of the Appendix of Forms to the Federal Rules of Civil Procedure.  The Federal Circuit indicated that these forms, though written before Twombly, were adequate to meet pleading requirements.  R+L’s pleading roughly fulfilled Form 18’s boilerplate language.  The Federal Circuit took the opportunity to subtly note its displeasure with the bare bones nature of Form 18.  With regard to one of the complaints, that against Intermec, the complaint simply alleged that “[Intermec] customers are in fact practicing the ‘078 Patent” without naming a specific direct infringer.  The Federal Circuit found that it was sufficient.

Turning to contributory infringement, the Federal Circuit found that R+L’s claims were not helped by Form 18, which was directed only to direct infringement.  Because the Federal Circuit agreed that there were many substantial non-infringing uses, the contributory infringement dismissal was affirmed.  Induced infringement was discussed at some length for each defendant, taking care to note the district court’s dismissal and the factual allegations associated with each defendant. In each case, the Federal Circuit found that, taking all reasonable inferences for the benefit of the non-moving party, the six complaints met the pleading standards for induced infringement.

Judge Newman dissented to voice concern regarding the adoption of the bare bones pleading standards of Form 18 for patent infringement actions.

Toshiba Corp. v. Imation Corp. et al., Case No. 2011-1204 (Fed. Cir. June 11, 2012) (attached).  Toshiba accused a number of DVD manufacturers of infringing two patents related to finalized DVD writing and the information associated with finalization.  The defendants moved for summary judgment on Toshiba’s claims of indirect infringement.  Because, the district court found that there were substantial non-infringing uses of the DVD’s, all indirect infringement claims must fail.  The parties stipulated to dismissal of the remaining claims and Toshiba appealed.

The Federal Circuit agreed with the district court’s decision regarding contributory infringement for the same reasons given by the district court. However, the Federal Circuit pointed out that the district court applied the law of indirect infringement incorrectly when it stated that a substantial non-infringing use was a bar to liability for infringement. As an alternative on appeal, the appellees argued that Toshiba failed to proffer evidence of direct infringement, a requirement for indirect infringement liability.  In response, the Federal Circuit relies upon circumstantial evidence to support at least one direct infringer and to enable Toshiba’s indirect infringement claim to survive summary judgment.

Toshiba also appealed the construction of claim 1, particularly as to an alleged “reading in” of a “purpose” to the construction of claim 1 when it construed claim 1 as requiring the identifying information on the DVD to provide identifying information for the entire recording medium.  The Federal Circuit agreed. Instead, the identifying information need only “uniquely identify a recording plane.”  The case was remanded for further proceedings.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 18, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: June 11, 2012 :: Trademark Dilution and Irreparable Harm for Preliminary Injunction

We will be discussing one Trademark Trial and Appeal Board case and one Federal Circuit case during our weekly SoCal IP Institute meeting on Monday, June 11, 2012. Brief synopses are presented below.

Research in Motion Ltd. v. Defining Presence Marketing Group, Inc. & Axel Ltd. Co., Opposition Nos. 91178668, 91179490, 91181076 (T.T.A.B. Feb. 27, 2012) (attached).

In an opposition case before the Trademark Trial and Appeal Board (TTAB), Research in Motion (RIM) opposed intent-to-use applications to register the mark CRACKBERRY for clothing items and marketing, computer and communications services. RIM previously registered the mark BLACKBERRY for “handheld devices including smart phones and related goods and services as well as promotional and collateral goods.”  RIM argued that the mark CRACKBERRY was likely to cause confusion with BLACKBERRY and dilute the distinctiveness of their famous trademark.

The defendants argued that their mark was a parody of BLACKBERRY.  However, the Board stated that the parody defense is available only if the parody is not used to designate the source of the applicant’s goods or services.

Before applying the du Pont factors, the TTAB found that BLACKBERRY was a famous mark. The Board noted that RIM had sold billions of dollars worth of BLACKBERRY products to millions of consumers and spent tens of millions of dollars advertising and promoting the mark. The Board also noted that the media has extensively covered the BLACKBERRY brand and that BLACKBERRY consistently appears on the lists of the most famous and valuable trademarks in the world.

Given the similarities in sight and sound of the marks and the fact that the public began using the nickname “Crackberry” to refer to “addictive” BLACKBERRY devices before the defendants applied to register the CRACKBERRY mark, the TTAB found that the du Pont factors pointed to a likelihood of confusion.

Turning to the issue of dilution under Section 43(c) of the Lanham Act, the TTAB found that the BLACKBERRY trademark was sufficiently famous to meet the higher standard for fame required in the dilution context.  The TTAB found that the CRACKBERRY mark was likely to dilute, by blurring, the distinctiveness of the trademark BLACKBERRY.   The Board noted that there is “a high degree of similarity” between the marks.

Apple, Inc. v. Samsung Electronics Co., Ltd., Case No. 2012-1105 (Fed. Cir. May 14, 2012) (attached).

In the Northern District of California, Apple filed a motion for preliminary injuction based on infringement of three of their design patents and a utility patent.  Apple argued that Samsung’s Galaxy S 4G and Infuse 4G smartphones infringed two of their design patents and that Samsung’s Galaxy Tab 10.1 tablet infringed another design patent.  Apple also argued that all three of Samsung’s devices infringed their utility patent toward the iPad and iPhone “bounce” feature.  The district court denied the motion stating that Samsung had raised substantial questions regarding the validity of two of Apple’s design patents and that the other Apple patents were likely valid and infringed, but Apple had failed to provide sufficient evidence on the issue of irreparable harm.

On appeal, the Federal Circuit affirmed the denial of preliminary injunctive relief with respect to two of the design patents and the utility patent, stating that the district court had not abused its discretion in finding no likelihood of irreparable harm.  Apple argued that the district court erred in requiring Apple to demonstrate a nexus between the claimed infringement and the alleged harm.  The Federal Circuit disagreed, stating that a likelihood of irreparable harm cannot be shown if sales would be lost regardless of the infringing conduct.  Apple also argued that the district court had erred in rejecting Apple’s dilution theory of irreparable harm.  The Federal Circuit noted that “[t]he district court’s opinion thus makes clear that it did not categorically reject Apple’s ‘design erosion’ and ‘brand dilution’ theories, but instead rejected those theories for lack of evidence.”

The Federal Circuit did, however, vacate the denial of preliminary injunctive relief with respect to the D’889 patent.  The district court had found that the D’889 patent was likely obvious, using a 1994 tablet design (the “Fidler tablet”) as the primary reference.  For design patents, any finding of obviousness must be supported by a primary reference having basically the same appearance as the claimed design.  The Federal Circuit disagreed with the district court, holding that the Fidler tablet was not a proper primary reference.  The Federal Circuit stated that there are substantial differences in the overall visual appearance of the design patent and the Fidler reference.   The Federal Circuit remanded this portion of the case for further proceedings to analyze the balance of harms and the public interest in deciding whether preliminary injunction is appropriate for the D’889 patent.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 11, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.

SoCal IP Institute :: June 4, 2012 :: Standard of Review for Obviousness and Hindsight Bias

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, June 4, 2012. Brief synopses are presented below.

Plasmart v. Kappos & Wang, Case No. 2011-1570 (Fed. Cir. May 22, 2012) (attached).

Appellee sells the TwistCar, a scooter with a handlebar that is twisted to propel the scooter.  Appellee also owns patent No. 6,722,674, which claims a scooter with a safety wheel mounted to a “supporting arm fowardly extended from said driven portion of said twister member.”  Appellant Plasmart filed for inter partes reexam, where the examiner rejected the claims as obvious over the prior art.  The prior art includes two Chinese patent applications.  The first reference discloses a tricycle with two safety wheels that are mounted off the ground and attached to the body base.  The second reference discloses a scooter similar to the TwistCar, but without any safety wheels.  On appeal to the BPAI, the Board reversed and found several of the claims patentable.

Plasmart appealed to the Federal Circuit which found that the patent was obvious. The Court stated that the Board’s factual findings are reviewed for substantial evidence and the Board’s legal conclusions are reviewed de novo.  The Court stated that it has a large amount of analysis/discretion in determining whether the factual findings lead to a conclusion of obviousness.

The Federal Circuit accepted all of the BPAI’s factual findings regarding the scope and content of the prior art; the level of skill in the art; and the differences between the claimed invention and the prior art. However, the court rejected the BPAI’s ultimate conclusion on obviousness, holding that the “minor distinctions” identified by the Board were insufficient to distinguish the claimed invention from the prior art.  The Court stated that the modification in Appellee’s patent “is nothing more than a predictable use of prior art elements (universal wheels in contact with the ground in front of the twister member) to address a known problem (stability), and would thus have been obvious.”

Mintz v. Dietz & Watson, Case No. 2010-1341 (Fed. Cir. May 30, 2012) (attached).

The Mintzes own Patent No. 5,413,148 toward a casing structure for meat products that permits the meat to bulge between netting strands while avoiding the more complex stuffing process associated with prior knitted meat encasements. Package Concepts & Materials, Inc. (PCM), a former distributor of Mintz products, filed a declaratory judgment action against Mintz and Mintz filed a separate patent infringement action against PCM.  The cases were consolidated and the district court granted summary judgment to PCM, holding that the patent was invalid because of obviousness.

On appeal, the Federal Circuit reversed the holding of invalidity. In its opinion, the Federal Circuit discussed the need to avoid hindsight bias when analyzing obviousness.  The Court provided guidance on ways to avoid hindsight bias: by requiring that use of the “common sense” obviousness argument be supported; by avoiding the use of the patent itself in defining the problem the invention solves; and by emphasizing the need to analyze the objective indicia of nonobviousness.

The district court had relied on a common sense argument to conclude that it would have been “obvious to try” an element of the claimed invention.  The Federal Circuit held that more is required than simply stating that the invention was a result of “common sense”.  The Court indicated that further evidence was required, such as record support showing that the knowledge would have resided in the ordinarily skilled artisan.

The Federal Circuit also found that the district court erred by using the invention to define the problem that the invention solves.  The Court stated that it may be the problem itself that is the inventive contribution, even if the solution to the problem is known.

The Federal Circuit emphasized the importance of considering the objective indicia of nonobviousness in order to avoid hindsight bias. Mintz had provided evidence including unexpected results, expert skepticism, copying, commercial success, praise by others, failure by others and long-felt need.  The district court had failed to give substantive consideration to the objective evidence of nonobviousness.

Accordingly, the Federal Circuit reversed the district court holding of obviousness.  However, the Federal Circuit affirmed the district court’s summary judgment of noninfringement of the patent.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, June 4, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Attalla by 9 am Monday morning.