SoCal IP Law Group

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Monthly Archives: December 2012

SoCal IP Institute :: December 17, 2012 :: Withdrawing Terminal Disclaimers and Rule 11 Sanctions

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, December 17, 2012. Brief synopses are presented below.

In Re Yamazaki, Case No. 2012-1086 (Fed. Cir. December 6, 2012) (attached).

During the prosecution of U.S. Patent 6,180,991, Applicant Yamazaki filed a terminal disclaimer to overcome an obviousness-type double patenting rejection based on his earlier issued U.S. Patent 4,581,476.  Yamazaki later amended each independent claim of the application such that he believed the claims were now patentably distinct over the prior ’476 patent.

Accordingly, Yamazaki filed a petition request to withdraw the terminal disclaimer. Unfortunately, the PTO did not act on the petition for some time.  The examiner issued a Notice of Allowance and Yamazaki paid the issue fee while the petition to withdraw was still pending.  The ‘991 patent issued on January 30, 2001.  The PTO eventually dismissed the petition based upon its conclusion that a terminal disclaimer cannot be nullified after issuance.

On January 16, 2002 Yamazaki filed a reissue application seeking to rescind the terminal disclaimer.  The PTO did not act on the reissue until 2004, which is after the ’991 patent with the terminal disclaimer had expired. After an in-person interview in 2005, the examiner agreed in writing that a Reissue application could be used to correct a terminal disclaimer. However, the PTO delayed further action for more than two more before issuing another non-final office action rejecting the reissue application as premised on a defective basis for reissue.

Yamazaki then appealed to the BPAI on September 24, 2007.  The BPAI did not issue its initial decision until January 11, 2011, where they held that the PTO could not reissue the ’991 patent to remove the terminal disclaimer under 35 USC § 251 because the statute (1) prohibits reissuing an expired patent, and (2) precludes expanding a reissued patent’s term beyond that set when the original patent issued.

On appeal, the Federal Circuit affirmed, holding that the plain language of § 251 along with § 253 prohibit using a reissue to expand a patent’s term.

Raylon LLC. v. Complus Data Innovations, Inc., Case No. 2011-1355 (Fed. Cir. December 7, 2012) (attached).

Raylon owns U.S. Patent No. 6,655,589, directed to a hand-held identification investigating and ticket issuing system.  The object of the invention is to provide an affordable, durable system that reduces the amount of time a user spends identifying and issuing tickets and allows the user to maintain visual contact with the individual throughout the process. The system has a housing with an input assembly for entering data, an elongated slot for receiving identification forms that have a magnetic tape, an elongated aperture for access to the housing’s interior, a transceiver assembly to communicate remotely with a computer, a printer assembly for printing tickets, and a display, pivotally mounted on the housing.

Raylon filed three suits in the US District Court for the Eastern District of Texas against software integrators and product component manufacturers of various ticket-writing and enforcement handheld devices, alleging direct infringement literally and under the doctrine of equivalents, induced infringement and contributory infringement. The defendants filed motions in each suit for Rule 11 sanctions, stating that Raylon’s complaints violated Rule 11(b)(2) and Rule 11(b)(3) because, inter alia, Raylon’s claim construction positions were unsupportable by intrinsic evidence and its infringement positions with regards to the display, magnetic strip reader, and printer elements of the asserted claims were unreasonable.

The district court granted summary judgment in favor of the defendants, denied their motions for Rule 11 sanctions, and denied attorneys’ fees and costs under 35 U.S.C. 285, citing its Rule 11 decision.

The Federal Circuit reversed as to Rule 11, stating that the district court erroneously evaluated Raylon’s damages model and early settlements to determine whether it brought its suits in good faith or merely to obtain nuisance value settlements.   The Court stated that the district court should not have evaluated what Raylon’s motives were in bringing the litigation, rather should have conducted an objective inquiry.  “The district court denied Rule 11 sanctions through the lens of an erroneous view of the law, and thus abused its discretion.”  The Court also vacated as to the denial of attorneys’ fees because the court’s evaluation of section 285 relied on its Rule 11 analysis.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, December 17, 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 :: December 10, 2012 :: Administrative Procedures Act and Claim Construction

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, December 10, 2012. Brief synopses are presented below.

Pregis v. Kappos, Case No. 2010-1492, -1532 (Fed. Cir. December 6, 2012) (attached).

In 2009, Pregis sued Free-Flow for declaratory judgment of invalidity and non-infringement of Free-Flow’s Patent Nos. 7,325,377, 7,526,904 and 7,536,837.  These patents relate to air-filled packaging technology used for shipping boxes.  In the same lawsuit, Pregis also sued the USPTO alleging that the  issuance of the patents by the PTO was arbitrary, capricious, an abuse of discretion or otherwise not in accordance with the law.  Pregis sought to hold unlawful and set aside the actions of the PTO in issuing two of the patents at issue. Pregis argued that under the Administrative Procedures Act (APA), the issuance of the patents should be nullified by the court.

The district court for the Eastern District of Virginia rejected Pregis’ claims for lack of subject matter jurisdiction, holding that “the Patent Act and its own scheme clearly expresses Congress’ intent to preclude putative third party infringers from seeking judicial review” under the APA of PTO decisions to issue patents.

On appeal, the Federal Circuit affirmed the dismissal. The Court held that a potential infringer cannot sue the PTO under the APA to attack the validity of an issued patent. The Court stated that judicial review of PTO decisions to issue patents may be precluded when Congressional intent to do so is “fairly discernible in the statutory scheme.”

The APA authorizes judicial review only where the agency action is “made reviewable by statute” or where there is a “final agency action for which there is no other adequate remedy in a court.”  The Court stated that third parties have an “adequate remedy in a court” for challenging an issued patent, such as inter partes reexamination or suits in court.

John Deere v. Bush Hog, Case No. 2011-1629, -1630, -1631 (Fed. Cir. December 4, 2012) (attached).

John Deere sued Bush Hog for infringing its U.S. Patent No. 6,052,980, which is toward an “easy clean dual wall deck” for rotary cutters.   A rotary cutter is a device pulled behind a tractor and used to mow wide swaths of ground.

One of the claim limitations in the patent was for upper deck walls that sloped downwardly “into engagement with, and being secured to” the lower deck wall.   The district court ruled that the “into engagement with” limitation required direct contact and since in Bush Hog’s accused device the upper deck wall does not directly contact the lower deck wall, there was no literal infringement of the claim.

On appeal, the Federal Circuit reversed the district court’s decision as erroneously construing the term “into engagement with” to require direct contact.  The Court looked to the specification of the patent which illustrated that “engagement” included indirect contact between the upper and lower deck walls. For example, the patent discloses a filler plate (blue) that provides the engagement between the upper deck (yellow) and the lower deck (red).

rotary cutter

The Federal Circuit also reversed the district court’s determination that John Deere could not assert the doctrine of equivalents.  The district court had held that because they construed “contact” to mean “direct contact,” allowing no direct contact under the doctrine of equivalents would vitiate the court’s construction.  In reversing, the Federal Circuit stated that a reasonable jury could find that a small spacer connecting the upper and lower deck walls represents an insubstantial difference from direct contact.  Thus, the trial court had erred by invoking the vitiation exclusion in this context.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, December 10, 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.