SoCal IP Institute :: October 27, 2014 :: Divided Infringement of System Claims and Pleading Inequitable Conduct

Our weekly SoCal IP Institute meeting on Monday, October 27, 2014 will be a discussion of two older cases. The first is a 2011 Federal Circuit case regarding divided infringement of a system claim and the second is a district court case on the requirements of pleading inequitable conduct after Therasense.

Centillion Data Systems, LLC v. Qwest Corp. Int’l et al., No. 2010-1110, 01131 (Fed. Cir. Jan 20, 2011) (available here).  Here, Centillion appealed a decision finding that there was no direct infringement of a system claim by Qwest.  In particular, Centillion’s claims included “backend” and “frontend” computer components such that the claims relied upon user’s computers to cause the backend components (servers, etc.) to begin to function.

On appeal, while discussing “use” infringement under 271(a), the Federal Circuit held “that to ‘use’ a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.”  Qwest, as a matter of law, cannot use its own system that is reliant upon the personal computers of its users.  However, in this case, Qwest’s customers did use the system and were the direct infringers. However, Qwest did not vicariously infringe because “Qwest in no way directs its customers to perform nor do its customers act as its agents. While Qwest provides software and technical assistance, it is entirely the decision of the customer whether to install and operate this software on its personal computer data processing means.”

Cutsforth v. LEMM Liquidating, 2013 U.S. Dis. LEXIS 79385 (June 6, 2013) (available here).  Here, a defendant answered with a counterclaim of inequitable conduct and the plaintiff filed a motion to strike from the complaint.  The district court here found that LEMM Liquidating had adequately pled inequitable conduct where Cutsforth had previously asserted two patents during the pendency of a third and been presented with invalidity charts identifying several references that allegedly invalidated the patents.  That earlier case was soon thereafter dismissed prior to even an early meeting of counsel in the case.  Cutsforth submitted the references identified by that defendant in the then-pending patent, but did not provide the invalidity charts provided by that defendant to the PTO.  On that basis, the district court here found this withholding of the invalidity charts sufficient to meet the Therasense requirements at least at the pleading stage.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 27, 2014 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 Smith by 9 am Monday morning.

SoCal IP Institute :: April 9, 2012 :: Means-Plus-Function and Inequitable Conduct

We will be discussing a Federal Circuit case and a Northern District of California case during our weekly SoCal IP Institute meeting on Monday, April 9, 2012. Brief synopses are presented below:

Ergo Licensing, LLC. v. CareFusion 303, Inc., 2011-1229 (C.A.F.C. Mar. 26, 2012) (attached).

In a patent infringement case over a patent on an infusion system used to meter and simultaneously deliver fluids from multiple sources into a patient’s body, the Federal Circuit affirmed the district court ruling, which determined that the “control means” terms were indefinite under 35 U.S.C. § 112 (2).  The means-plus-function limitations were not supported by any corresponding structure disclosed in the specification.

35 U.S.C. § 112, paragraph 6: An element in a claim for a combination may be expressed as a means or step for performing a speci­fied function without the recital of structure, material, or acts in support thereof, and such claim shall be con­strued to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Therasense, Inc. v. Becton, Dickinson and Company (N.D. Cal. March 27, 2012) (attached).

Following the Federal Circuit’s remand in Therasense v. Becton Dickinson, the district court again concluded that the patent at issue is unenforceable due to inequitable conduct, even under the higher standards for intent and materiality articulated by the Federal Circuit. The judge found that the withheld briefs were material under the “but for” test for materiality outlined by the Federal Circuit.  The district court also determined that there is clear and convincing evidence that the plaintiff’s attorney and scientist knew of that but-for materiality, and that they possessed specific intent to deceive the Patent Office by withholding the omitted reference.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, March April 9, 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 Amanda Jones by 9 am Monday morning.