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Tag Archives: Therasense

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.

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SoCal IP Institute :: October 6, 2014 :: Inequitable Conduct and Acquired Distinctiveness in the TTAB

Our weekly SoCal IP Institute meeting on Monday, October 6, 2014 will be a discussion of a recent inequitable conduct case and a TTAB decision on acquired distinctiveness of trade dress. Brief synopses of the cases appear below.

American CalCar, Inc. v. Honda, No. 2013-1061 (Fed. Cir. Sept. 26, 2014) (available here).  Calcar appealed from a decision of the Southern District of California that the asserted three patents, related to in-car navigation systems, were unenforceable for inequitable conduct before the U.S. Patent and Trademark Office.  In short, the inventor, who also prepared the patent applications, failed to disclose that he had seen and photographed a Honda-created navigation system before filing.  Honda alleged that the details that he had seen in the Honda system were exactly those details that he eventually claimed in the asserted patents.  The case proceeded to trial.  After trial, the court found the two otherwise-valid patents unenforceable for inequitable conduct.

During the appeal process, the Therasense case was decided, altering the standard for finding equitable conduct.  The case was remanded for additional briefing on “materiality” and the district court still found that “but for” the withholding of the information, the patent would not have issued and that the inventor had specific intent to deceive the Patent Office.  This case is somewhat strange because the district court found that a particular limitation related to the interface was not disclosed in the Honda prior-art system, but still found the “but for” causation.  That is, the prior art did not expressly disclose one of the limitations, but was still sufficient for a finding of materiality because what it did disclose would “perform the same function” as the claim limitation that was not otherwise shown. As to intent, the inventor disclosed the existence of the earlier system, but did not disclose his photographs and other notes regarding the system.  Thus, he acted with the specific intent required and the district court’s decision finding all three of the asserted patents unenforceable for his inequitable conduct was affirmed.

In re Koninklijke Philips Electronics N.V., Ser. No. 85092079 (Sept. 26, 2014) (available here). Philips sought to register the “base assembly” of its electric toothbrushes on the Principal Register as trade dress.  It has a series of indentations around the base of the head of the toothbrush.  After a refusal to register, the TTAB affirmed finding that 10 years of continuous use, without “look-for” advertising, and in spite of voluminous sales was insufficient to demonstrate that the product had obtained “acquired distinctiveness” such that the consuming public associated the base assembly with the Philips brand.  The examining attorney’s refusal to register was affirmed.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 6, 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 :: October 1, 2012 :: Inequitable Conduct and Judgment as a Matter of Law

We will be discussing two Federal Circuit cases during our weekly SoCal IP Institute meeting on Monday, October 1, 2012. Brief synopses are presented below.

Outside the Box Innovations, LLC. v. Travel Caddy, Inc., Case No. 2009-1171 (Fed. Cir. September 21, 2012) (attached).

Travel Caddy brought suit against Outside the Box Innovations claiming infringement of two of their patents, U.S. Pat. No. 6,823,992 and its continuation, U.S. Pat. No. 6,991,104 both directed to tool carrying cases.  The district court held that the patents were unenforceable based on inequitable conduct during the prosecution of the patents.  Travel Caddy had failed to inform the patent examiner of the existence of litigation in the parent patent prior to the issuance of the ‘104 patent.  Travel Caddy also incorrectly claimed small entity status.  Travel Caddy clearly met the small entity status requirements in having fewer than 500 employees, but Travel Caddy had a commercial arrangement with its distributor and seller, The Rooster Group, who was a large entity of over 500 employees.

On appeal, the Federal Circuit reversed the decision of unenforceability for incorrectly claiming small entity status.  The Court reversed not on the ground of materiality, but on the basis of a lack of intent.  The Court held that  the requirements of Therasense were not met because “there was no clear and convincing evidence of intent to deceive the PTO.”

Regarding the holding of unenforceability for not disclosing the litigation in the parent patent, the Federal Circuit reversed the district court’s pre-Therasense finding of both materiality and intent. On materiality, the Federal Circuit ruled that the failure to disclose the existence of a litigation when there was no citation of prior art, nor any pleading of invalidity or unpatentability in the complaint of the litigation as it existed during pendency of the continuation application, did not constitute clear and convincing evidence of materiality.  On intent, the Court held that there is no evidence that the withholding of the information concerning the litigation could have deceived the examiner and no suggestion of deliberate action to withhold it in order to deceive the examiner.

Mirror Worlds, LLC. v. Apple, Inc., Case No. 2011-1392 (Fed. Cir. September 4, 2012) (attached).

Mirror Worlds owns three patents at issue in this case: US Patents 6,006,227; US Patent 6,638,313; and US Patent 6,725,427.   Mirror Worlds brought a patent infringement action in the District Court for the Eastern District of Texas against Apple claiming that Apple’s Spotlight, Time Machine and Cover Flow features in their Mac operating system infringe the patents.  Cover Flow lets users scroll through album cover art when browsing for music in their iTunes libraries. The feature also works for documents, pictures and other material stored in a computer. Spotlight searches the computer’s hard drive while Time Machine automatically saves copies of files.  Mirror Worlds asserted claims of both direct infringement and induced infringement.

The district court granted Apple’s oral motion for judgment as a matter of law that Apple did not induce infringement of any of the patents.  The district court stated that Mirror Worlds failed to introduce substantial evidence to show that defendant itself induced its customers to infringe the disputed patent’s method claims. The issue of direct infringement by Apple was submitted to the jury, wherein the jury found Apple liable for willfully infringing all three asserted patents and awarded $208.5 million in damages. However, the district court granted Apple’s motion for judgment as a matter of law and vacated the jury verdict.

The Federal Circuit affirmed, concluding that Mirror Worlds failed to present substantial evidence of direct infringement and damages.  The district court had concluded that Mirror Worlds did not establish infringement under the doctrine of equivalents because Mirror Worlds did not provide substantial evidence to show that the accused products have an equivalent for the “cursor or pointer” limitation.  The Federal Circuit also agreed that the evidence presented at trial was not sufficient to support the damages awarded by the jury.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, October 1, 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 :: August 1, 2011

We will be discussing the following two cases in our weekly meeting on Monday, August 1, 2011. Brief synopses of the two cases are presented below.

TrafficSchool.com, Inc. v. EDriver Inc. (9th Cir. 7/28/2011) (attached)

In an action arising from a very close imitation of the state DMV’s website by a private, commercial website and alleging unfair competition and false advertising, judgment of the district court is affirmed in part and reversed in part where the court held that defendants violated section 43(a) of the Lanham Act, 15 U.S.C. section 1125(a), but rejected plaintiff’s state unfair competition claims with an injunction ordering the defendants to publish a disclaimer on its website, while denying plaintiffs’ monetary relief and attorney’s fees.

General Protecht Gp. (Zh. Dongzheng) v. Leviton Mfg. (Fed. Cir. 7/8/2011) (attached)

In a dispute arising from the grant of a preliminary injunction to enforce a forum selection clause in a settlement agreement, judgment of the district court is affirmed where it correctly determined that the forum selection clause applies to the case and did not abuse its discretion in granting the preliminary injunction.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 1, 2011 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.

SoCal IP Institute :: July 25, 2011 :: Exceptional Cases Under 35 U.S.C. 285 and The USPTO’s Proposed Changes to 37 C.F.R. 1.56(b)

We will be discussing one district court case awarding attorney’s fees under 35 U.S.C. 285 in a patent suit and the USPTO’s proposed new rule 1.56(b) after Therasense.  We will discuss the case and proposed rule in our weekly SoCal IP Institute meeting on Monday, July 25, 2011.  Brief synopses are presented below.

Precision Links, Inc. v. USA Product Group, Inc., Case No. 3:08cv576 (W.D.N.C. July 13, 2011) (attached). This is a district court decision from a district court we do not typically follow closely, but the decision implicates patent plaintiff’s potential liability for bringing a patent suit without an adequate pre-filing investigation.  In the case, Precision Links brought suit for infringement of a patent related to a tie-down strap used to hold cargo in place as it is transported.  After the defendants succeeded on a motion for summary judgment of noninfringement, they moved for an award of attorneys’ fees and costs under 35 U.S.C. 285.  The primary basis for the assertion that the case was “exceptional” was that the case was instituted in bad faith and objectively unreasonable.

The court agreed with the defendants who argued that the claim construction for the phrase “dimensioned for the passage therethrough” was completely lacking in support and was, therefore frivolous.  The court also agreed that the opinion of counsel sought by the plaintiff prior to bringing suit failed to follow the canons of claim construction, included no citations to the specification or prosecution history, and provided no analysis as to how the counsel chose to construe the patent claims.  Accordingly, the opinion relied upon by the plaintiff before bringing suit was unreasonable.  As a result, the court concluded that the case was exception under 35 U.S.C. 285 and awarded attorneys’ fees and costs.

Proposed Amendment to 37 C.F.R  1.56(b) (attached).  This is the USPTO’s revision to 37 C.F.R.  1.56(b) in response to the Therasense Federal Circuit inequitable conduct decision.

The proposed amendment, now open for comment, is as follows:

(b) Information is material to patentability if it is material under the standard set forth in Therasense, Inc. v. Becton, Dickinson & Co., ___ F.3d ___ (Fed. Cir. 2011). Information is material to patentability under Therasense if:

  1. The Office would not allow a claim if it were aware of the information, applying the preponderance of the evidence standard and giving the claim its broadest reasonable construction; or
  2. The applicant engages in affirmative egregious misconduct before the Office as to the information.

The proposed change mirrors the language of the Therasense decision.  This change lowers the bar on the duty of disclosure.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, July 25, 2011 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.