April 8, 2015


In Apotex v. Daiichi Sankyo v. Mylan (CAFC 2014-1281, -1292), the CAFC grabs the litigation cudgel that a district court refused to pick up because it did not perceive a controversy meriting litigation. The CAFC reversed, as the parties involved had financial stakes in who first gets to make a generic version of a drug going off patent. The case illustrates the byzantine inanity that characterizes the U.S. drug patent system.

Posted by Patent Hawk at 3:09 AM | Case Law

November 23, 2014


Verstata asserted software patents against rival Callidus, which counterclaimed with its own patents. Callidus filed limited reexamination proceedings against the Verstata patents, and asked the court for a stay pending reexam. The district court denied the stay. The CAFC reversed that.

Continue reading "Stay"

Posted by Patent Hawk at 8:07 PM | Case Law

February 3, 2014

Senior Silence

The CAFC has a self-censoring rule that a senior judge may not dissent, or even join a dissent, in denying a rehearing en banc. What liberty can a country have when a judge is barred from expressing an opinion?! (Middleton v. Shinseki CAFC 2013-7014).

Posted by Patent Hawk at 3:07 PM | Case Law

December 27, 2013


The CAFC has declared the everyday antics of patent plaintiff lawyers to be exceptional. Vacating a district court judge's decision not to award attorneys fees under 35 U.S.C. § 285, an appeals court panel decreed that "litigation misconduct and unprofessional behavior may suffice." That specifically includes asserting infringement "despite an objectively low likelihood that it would prevail." Mind-reading is allowed in coming to this conclusion. (Kilopass Technology v. Sidense - CAFC 2013-1193)

Posted by Patent Hawk at 9:58 PM | Case Law

August 13, 2013

O2 Oops

Computer parts maker O2 Micro decided to play dirty in its patent assertion against rival Monolithic Power Systems and its customers, most notably falsifying the priority date of its asserted patents. The courts found "bad faith" along with "litigation misconduct and unprofessional behavior." The tab, upheld by the CAFC (12-1221), was $8.4 million in legal fees suffered by defendants. It hardly holds O2 liable for a massive fraud.

Posted by Patent Hawk at 3:36 PM | Case Law

July 8, 2013

Separation of Powers

Fresenius sought a DJ against Baxter that backfired, at least at first. The district court found the patent (5,247,434) valid and infringed. The CAFC affirmed. Meanwhile, in reexamination, the PTO found '434 invalid. The CAFC affirmed the PTO, even as the district court entered an infringement finding against Fresenius. To resolve the conundrum, the CAFC 2-1 sided with the PTO over its own court system. The dissent finds this a breach in the constitutional separation of powers.

Continue reading "Separation of Powers"

Posted by Patent Hawk at 3:15 PM | Case Law

May 26, 2013

Snow Plowed

Few federal judges are more than randomly competent, particularly with patent cases. Judges, never the brightest legal minds, mostly rely upon their instincts, trusting emotional bias, and in the finale wrapping legal window-dressing around their prejudicial rulings. Judge William M. Conley in the Western District of Wisconsin seems to fit the bill of the judicial collective. In Douglas Dynamics v. Buyers Products, he blew the claim construction, wrongly granted summary judgment of non-infringement on a claim, and denied a permanent injunction against a direct competitor (snow plow makers). The CAFC reversed (CAFC 2011-1291).

Posted by Patent Hawk at 9:30 PM | Case Law

February 11, 2013


Semiconductor Energy Laboratory (SEL) owns 6,900,463, which claims a certain semiconductor. Yujiro Nagata is the second-named of two inventors. "During prosecution in 1991, Nagata assigned his rights to applications and patents related to the '463 patent to SEL's founder Dr. Shunpei Yamazaki, and subsequently signed a substitute Declaration and Assignment of those applications and patents. From 2002 to 2003, Nagata assisted SEL in a patent infringement suit against another party and was paid for his cooperation and services relating to that litigation."

Continue reading "Assignment"

Posted by Patent Hawk at 1:32 PM | Case Law

December 17, 2012


Dumb judges have been dumped on the CAFC for decades. The few decent ones are fed up. Old saws Dyk and Clevenger are called out by a dissent from Judge Reyna, the penultimate member, over an anti-dumping appeal from a Chinese company.

Continue reading "Dumping"

Posted by Patent Hawk at 11:27 AM | Case Law

December 8, 2012

Low Mark

Highmark v Allcare (CAFC 2011-1219) hit a low mark for CAFC squabbling. There was an en banc ruckus over rehearing an exceptional case; specifically, to what degree deference is given to district court discretion on questions of law. The majority denied rehearing, while CAFC power mongers, including Chief Judge Rader, would give a district court "no deference." Such is the fractious fiction called "rule of law." Such petty disputes like this simmer for decades. This is a simple issue that should have been settled long ago.

Posted by Patent Hawk at 1:26 PM | Case Law

November 6, 2012


RE40,449 claims an unimaginative voting system. Voter Verified unsuccessfully asserted it against Premier Election Solutions and Diebold. The district court held claims 1-93 not infringed, and 94 invalidated. The CAFC affirmed (CAFC 2011-1553). Most notable was how crookedly the deal went down. Voter Verified cited 17 instances of district court abuse of discretion. These included letting the other side introduce disputed expert declarations, refusing to allow discovery, and disregarding the court's own case management procedures to issue summary judgment against Voter Verified. The CAFC would have none of it. "Voter Verified's contentions are wholly without merit." Code words for "we don't care." District court judges, with "considerable discretion," can do as they please.

Posted by Patent Hawk at 10:13 PM | Case Law

October 26, 2012

Cruel Hoax Reexamined

Under the current regime, a patent grant is always provisional. Most any patent can be invalidated by a competent party with deep pockets - deep enough to tear apart the slight edge of innovation that a patent claims; if not by fact, by confusion. With an erstwhile IBMer at its helm, the USPTO is open for business to help large corporations kill small-fry patents. Even if a patent determined valid by a court ruling can still be invalidated through reexamination at the PTO. Res judicata has a hollow ring.

Continue reading "Cruel Hoax Reexamined"

Posted by Patent Hawk at 4:59 PM | Case Law

October 23, 2012

Cruel Hoax

The concept behind rule of law is that the outcome of disputes may reasonably be expected to go a certain way. The upshot of such consistency is to limit legal action between parties, as the outcome, according to the law, is fairly clear. Conversely, patent law under the current court regime bears no resemblance to rule of law. Instead, conflicting precedents allow case-by-case bias to be exercised. A corrupt incompetence is pervasive. The failure of the CAFC to perform its basic function is highlighted in Flo Healthcare Solutions v. USPTO (CAFC 2011-1476). In sum, as a former USPTO commissioner put it, the patent system has become "a cruel hoax."

Continue reading "Cruel Hoax"

Posted by Patent Hawk at 9:23 PM | Case Law

October 9, 2012

Small Beer

The CAFC went tribal in Beer v. United States (2010-5012). The CAFC convened en banc to give judges within its purview cost-of-living pay increases, capped by long-winded rationalization. The gall was too much for Judges Dyk and Bryson, who dissented, observing that the ruling runs against both statute and Supreme Court precedence. "Under the Will's bright-line vesting rule [by SCOTUS], Congress was free to "abandon" a statutory formula and revoke a planned cost-of-living adjustment ("COLA"), as long as the revoking legislation was enacted into law before the COLA 'took effect.'" This same disregard for rule of law is regularly visited upon patent cases, which are routinely decided by bias.

Posted by Patent Hawk at 10:02 PM | Case Law

September 23, 2012

Litter Box

Outside The Box Innovations launched a DJ in North Georgia. A biased judge gave them much of what they asked for: invalidity, non-infringement, even inequitable conduct. A confused CAFC panel (CAFC 09-1171) muddled through reversing much of what the district court had ruled. The queen of dissent, Judge Newman, once again adroitly pointed out how idiotically incompetent her colleagues were, in ignoring or mangling statute, case law, and not-so-common sense. One gem from Judge Newman to illustrate: "It is highly unusual to construe routine patent claims so as to exclude the embodiments in the drawings, when there is no prosecution disclaimer. The purpose of patent drawings is to focus the subject matter on which a patent is sought." The nonsense never ends with the largely insensible CAFC.

Posted by Patent Hawk at 9:59 PM | Case Law

August 26, 2012

Double Patenting

The U.S. courts find favor with an American company over a foreign one again; the CAFC concocting corrupt case law to offend common sense. Teva (Israeli) asserted that Eli Lilly (American) got an extension for its chemotherapy patents by double patenting. The difference between the original patent and its extension would have been obvious. Ignoring the spirit and letter of patent law, expressly forbidding patent extensions, the CAFC declares: "The focus of the obviousness-type double patenting doctrine thus rests on preventing a patentee from claiming an obvious variant of what it has previously claimed, not what it has previously disclosed." (CAFC 2011-1561).

Posted by Patent Hawk at 9:05 PM | Case Law

August 15, 2012


The waste that typifies the U.S. patent system continues unabated. As this blog regularly documents, observations by parties entrenched in the processes reveal a badly broken system, chockablock with incompetence at the USPTO and corruption in the courts. Today's insight comes courtesy of CAFC Judge Dyk. In Meyer v. Bodum, over milk frothing patents, Meyer managed to obtain the favoritism of the district court judge (a common occurrence, as many Federal district court judges are logically challenged, to put it mildly, and rule by bias, as emotions readily sway the weak-minded), thus prohibiting Bodum from espousing its invalidity defense. A $50,000 infringement payout was capriciously topped off by the judge with enhanced damages and attorneys fees. On to appeal, where a very different froth was featured.

Continue reading "Froth"

Posted by Patent Hawk at 2:27 PM | Case Law

August 7, 2012


Highmark popped a declaratory judgment (DJ) action against Allcare's managed health care patent 5,301,105. Allcare's lawyers ran afoul of the district court judge, who "found that Allcare engaged in litigation misconduct by asserting a frivolous position based on res judicata and collateral estoppel, shifting its claim construction position throughout the course of the proceedings before the district court, and making misrepresentations... in connection with a motion to transfer venue." The case was ruled exceptional. Allcare's attorneys were slapped with Rule 11 sanctions. On appeal, the case became more exceptional.

Continue reading "Exceptional"

Posted by Patent Hawk at 8:31 PM | Case Law

May 18, 2012


In re Baxter (CAFC 2011-1073), a majority allow the USPTO to overturn in reexamination a decision of law made by the court. Only Judge Newman is perturbed. "The Patent and Trademark Office's Board of Patent Appeals and Interferences, on reexamination of a patent that had previously been litigated to final judgment in the district court and on appeal to the Federal Circuit, states that "the agency is not bound by the court's determination." My colleagues appear unperturbed by the agency's nullification of this court's final decision. Instead, the court itself ignores our own prior final decision, although it is the law of this case. Thus the court violates not only the constitutional plan, but also violates the rules of litigation repose as well as the rules of estoppel and preclusion - for the issue of validity, the evidence, and the parties in interest are the same in this agency reexamination as in the finally resolved litigation." Rule of law in the U.S. is nothing more than a random act.

Posted by Patent Hawk at 10:37 AM | Prosecution

May 4, 2012


It should come as no surprise, for those who are worldly wise, that most patent prosecutors are not adept. Take it as gospel from Patent Hawk, who reads dozens of patents a day. But that doesn't mean you can successfully sue prospecutors for malpractice. Bad for business. Case in point: Minkin v. Gibbons (CAFC 2011-1178), a state patent prosecution malpractice matter that ended up at the CAFC, because the federal courts now take any case concerning patents. Judge O'Malley objects, but she appears in a vast minority.

Posted by Patent Hawk at 6:11 PM | Case Law

April 23, 2012


Landmark Screens v. Morgan, Lewis & Bockius and Thomas D. Kohler tells of a sorry tale of alleged negligence, malpractice and fraud in a patent prosecution. The California state court was biased against Landmark, the company which had its patent filing ruined. Case dismissed. Landmark then sought recourse in federal district court, which tossed the case under pretext of statute of limitations. On appeal, the CAFC decided they had subject matter jurisdiction, even though admittedly "a fraud action, governed by state law, not patent law or patent practice."

Posted by Patent Hawk at 4:49 PM | Case Law

April 18, 2012

Drug Abuse

In Caraco v. Novo, a unanimous Supreme Court reversed the CAFC on abuse of patent: "A generic manufacturer may employ the counterclaim provision to force correction of a use code that inaccurately describes the brand's patent as covering a particular method of using a drug. The brand submits misleading patent information to the FDA, delaying or blocking approval of a generic drug that infringes no patent and thus, under the statute,should go to market." The CAFC had found "that Caraco lacked 'a statutory basis to assert a counterclaim.'"

Posted by Patent Hawk at 2:31 PM | Case Law

March 18, 2012

No Reexam Revival

Competitors Aspex Eyewear and Marchon Eyewear myopically pummeled each other with patent suits for over a decade. They eventually settled. Aspex navigated a reexam with new and amended claims of a patent subject to the settlement. Aspex nonetheless started a new spat, claiming it had newly loaded dice. Citing res judicata, the courts would have none of it.  "Claims that emerge from reexamination do not create a new cause of action that did not exist before." (CAFC 2011-1147)

Posted by Patent Hawk at 6:08 PM | Case Law

March 14, 2012


The courts have the trickiest part of protecting the interests of the State. Laws are designed to protect the government and its minions from liability, while maitaining a facile appearance of equity. Cracks in the pavement of protection that inevitably appear by sloppy legislation need patching by the courts. In Zoltek v. United States, 16 years down a road of judicial hand-wringing confusion, an en banc CAFC sua sponte reverses itself, deciding another decade or so needs to go by to settle the matter. Justice is swift and sure.

Continue reading "Condomization"

Posted by Patent Hawk at 1:16 PM | Case Law

February 10, 2012


6,436,135 typifies the extremities of the broken and corrupt U.S. patent system. Filed in 1974, '135 took 28 years to be allowed (2002). Owing to byzantine U.S. law, it was subject to an interference over who first invented what it claimed. Litigation followed allowance within months. Four years later, a jury found '135 "valid and willfully infringed by Gore." Thus, in slow motion, the travesty began.

Continue reading "Extreme"

Posted by Patent Hawk at 5:45 PM | Case Law

January 22, 2012

Power Balance

The tripartite balance of power between the President, Congress, and Supreme Court is only partly constitutionally enshrined. The courts were cut out of a clear share. The Supreme Court stole its power base fair and square in Marbury v. Madison (1803), when it unilaterally declared to have the authority to review acts of Congress and determine whether they are unconstitutional and therefore void. The bluff never got called. But that owes to the Supreme Court being very selective in punching its weight against the other branches. In Golan v. Holder (2012), SCOTUS 6-2 refused to call Congress on enacting copyright provisions retroactively. The new patent act has a slice of that same cheese, but any challenge is likely only to add to its ripening. The U.S. police state does as it pleases, the branches of government holding hands, velvet gloves over mailed fists.

Posted by Patent Hawk at 7:13 PM | Case Law

January 15, 2012

Blood Sample

New Jersey based Abbot sued competitor Epocal for infringing blood test patents 6,845,327 and 6,896,778, which it scurrilously claimed to own, though Epocal is the assignee. Epocal was founded by Dr. Imants Lauks. Lauks had done contractual work for Abbott's predecessors. The district court rightly found the contracts that might have given assignment to Abbott expired, as did the majority of a CAFC panel (CAFC 2011-1024). In dissent, Judge Bryson displayed his muddle-headed misunderstanding of contract law, or more simply his corrupt bias for Abbot, a U.S. corporation, up against a Canadian competitor, by arguing perpetual assignment.

Posted by Patent Hawk at 4:34 PM | Case Law

January 4, 2012

Senselessy Sassy

MarcTec sued Johnson & Johnson for infringing 7,128,753 & 7,217,290, which claim surgical implants. MarcTec sought a claim construction of "plain and ordinary meaning." That sassy remark cost $4.7 million. The plain meaning blithely ignored the specification and prosecution history of a narrowed lynchpin term ("bonded"). Plaintiff expert witness testimony was declared "junk science." After claim construction and a summary judgment finding of noninfringment, the judge found the case exceptional under 35 U.S.C. § 285, finding the assertion "baseless" and "frivolous," in "bad faith," and awarding J&J all expenses and attorneys fees. The CAFC affirmed (10-1285). The lawyers who devised and implemented the strategy went unmentioned.

Posted by Patent Hawk at 2:30 PM | Case Law

December 12, 2011

Stabilising Coat

The corrupt plutocratic governance in this country saves its skin from mass revolt by long-con shading: maintaining the appearance of playing it jake, while keeping the dice loaded for the money players when it matters. The courts in patent cases do this through nuanced rulings, with the assistance of double-speak case law. When a dumb judge steps over the line of indiscretion, it is checked by slicker fixers from above. Case in point:  New Jersey Judge William ("Little Willie") Martini, who likes his martini dry, but made a ruling that was all wet.

Continue reading "Stabilising Coat"

Posted by Patent Hawk at 1:28 PM | Case Law

December 8, 2011

Patent Debris

Construction Equipment Company (CEC) sued Powerscreen for infringing 5,234,564, which claims a construction site debris sifter. "The district court ruled that the '564 patent was valid, enforceable, and willfully infringed by Powerscreen, and entered final judgment... The Federal Circuit affirmed the district court's judgment. Constr. Equip. Co. v. Powerscreen Int'l Distrib. Ltd., 243 F.3d 559 (Fed. Cir. 2000), cert. denied, 531 U.S. 1148 (2001)." That should have been the end of it, but it was only the beginning. The USPTO and CAFC demonstrate an abject disregard for the law and the constitution, as the anti-patent juggernaught rolls on, leaving only debris from intellectual property.

Continue reading "Patent Debris"

Posted by Patent Hawk at 9:13 PM | Prior Art

November 23, 2011


Ricoh sued Synopsys for infringing 4,922,432. Synopsys got off the hook seven years later on a summary judgment motion for noninfringement. The wheels of injustice in this country turn slowly. Costs go to the prevailing party in civil litigation. Synopsis filed a bill of costs for $1.375 million. Ricoh objected, all the way to the CAFC, over document copying and translation costs, along with transcription and video costs. The appeals court precedentially ruled: pay up. (CAFC 2011-1199).

Posted by Patent Hawk at 11:20 AM | Case Law

October 14, 2011

Fair Game

Competitors Absolute Software and Stealth Signal couldn't come to a cross-licensing agreement over their patents, so they battled each other to summary judgment stalemate in court. At least the lawyers got a payday. A well-reasoned appeal tossed some bits back for factual determination. (CAFC 2010-1503, -1504). This precedential ruling, traipsing through claim construction and infringement analysis, has nothing new, but is a rarity for its adjudicative quality. If courts were consistently as even-handed as this, the illusion of justice in this country would be hard to dispel. Here's an exception that helps prove the rule of judicial corruption.

Posted by Patent Hawk at 10:54 PM | Case Law

October 5, 2011


That the USA is rife with corruption at every level is finally catching public attention. The so-called "Wall Street" protests are a widespread movement against the plutocracy. With an irony of namesake, the Wall Street Journal reports the realized knowledge of Emily Graham: "I'm basically sick of corporate greed. I'm frustrated that companies can pollute on a catastrophic level. They get all the tax breaks." They also get all the patent protection they need, at the expense of inventors. The Federal courts, from district court judges to the CAFC and Supreme Court, are thoroughly packed with incredibly corrupt judges who pervert the law, and decency, to serve corporate interests. The continuing conflicted contortions of CAFC case law bear stark witness to the depravity. New patent legislation just became law over the unanimous objections of universities, small businesses and individual inventors, at the behest of the largest corporations. As the rich get richer and the rest fall by the wayside, this country's prospects for the future also fall.

Posted by Patent Hawk at 8:35 PM | The Patent System

October 3, 2011

Sorry Slab

Bettcher sued Bunzl for infringing its electric meat-cutting knife patent - 7,000,325. The patent was invalid by Bettcher's own products. The district court judge was biased against Bunzl - inadequate claim construction and bum jury instructions were the result. That bias carried over to the CAFC. The result - more inconstancy in case law - another slab of double-talk that allows let courts justify their whims. The joke of patent jurisprudence continues.

Continue reading "Sorry Slab"

Posted by Patent Hawk at 7:37 PM | Prior Art

September 27, 2011

Improvising Intervening

Marine Polymer sued HemCon for infringing 6,864,245, which claims a biocompatible polymer. HemCon successfully requested reexam during district court proceedings. "The examiner initially adopted a different claim construction than the district court." Marine Polymer argued that the PTO ought to adopt the district court construction. Upon dropping some dependent claims, the patent reissued, after the district court had found the asserted claims infringed, granting Marine Polymer damages and an injunction. On appeal, a CAFC panel majority legislates from the bench to further damage patent protection.

Continue reading "Improvising Intervening"

Posted by Patent Hawk at 3:18 AM | Case Law

September 26, 2011

A Kodak Moment

Spread Spectrum Screening (S3) sued Eastman Kodak and a few of its customers for infringing 5,689,623. Judge Robert W. Gettleman of Northern Illinois severed the claims against Kodak from its customers, stayed the customer action, and transferred the Kodak case to the Western District of New York, Kodak's home turf. S3 appealed the stay. The CAFC wouldn't touch it - "because this appeal is not from a final judgment within the meaning of 28 U.S.C. § 1295(a)(1), and does not otherwise qualify as an appealable order." (CAFC 2011-1019; precedential) S3's arguments were waved off as misreading case law and otherwise meritless. Yet another case of blatant pro-corporate bias by all courts concerned.

Posted by Patent Hawk at 10:33 AM | Case Law

September 23, 2011

Meta Message

Cordance sued Amazon for infringing three patents for online transactions that use metadata: 5,862,325; 6,088,717; and 6,757,710. The jury found '710 infringed, but invalid; the others not infringed. Following the law, the district court judge lifted the jury's '710 invalidity finding JMOL. That would leave Amazon on the hook - a situation that the Corrupt Appeals for Corporations (CAFC) "corrected."

Continue reading "Meta Message"

Posted by Patent Hawk at 12:29 PM | Case Law

June 28, 2011


Serious body builders take a variety of supplements, not because they are serious about their health, but because they are serious about their ego. Brains and brawn seldom mix. And so it seems with at least one bodybuilder supplement maker. Creative Compounds filed a DJ against competitor Starmark Laboratories over 7,109,373. Starmark shot back, asserting infringement, and the comeuppance of Creative's 7,129,273 as invalid. Starmark found favor at district court: "summary judgment on all counts and denied Creative's motion to dismiss for lack of jurisdiction." The appeals court backed the district court on everything but subject matter jurisdiction. But the punch of that was moot, because Creative's '273 was effectively invalidated, and so can never be successfully asserted.

Continue reading "Dumbells"

Posted by Patent Hawk at 4:03 PM | Prior Art

June 13, 2011

Commercial Success

Spectralytics sued Cordis and Norman Noble for infringing 5,852,277, claiming a manufacturing technique for a coronary stent. A jury found the patent valid and willfully infringed, to the tune of a 5% royalty. Appeal covered judgment as a matter of law (JMOL), damages, obviousness, willfulness, and award of attorneys fees.

Continue reading "Commercial Success"

Posted by Patent Hawk at 7:58 PM | Prior Art

June 7, 2011


In the least significant Supreme Court patent decision in years, the majority ignores the cert issue posited to affirm the CAFC, while dissenters notice the elephant in the room. The only surprise, and a small one at that, is that the CAFC is affirmed without getting whacked upside the head, as they normally do by the bench above. The issues: inventorship assignment, and from that, standing.

Continue reading "Assignment"

Posted by Patent Hawk at 11:42 AM | Case Law

May 21, 2011


Rancid Rambus set itself on a warpath footing, preparing for an enforcement campaign against SDRAM makers for infringing its patent portfolio. Part of the preparation was destroying tons of relevant documents in a series of festive "shredding parties", the first in July 1998; only preserving potentially helpful documents, such as those establishing priority date. The noise woke the neighbors. In separate cases, Micron and Hynix beat Rambus to the courthouse, filing declaratory judgment motions. What ensued over the spoliation issue came to a head as a CAFC clusterus-coitus (a missing entry in Black's Law Dictionary), with the will to justice displayed by a single CAFC judge, Gajarsa. To those in the know, no surprises here, only disappointment at further disarray, at a CAFC that appears randomly dysfunctional in applying the law.

Continue reading "Spoliation"

Posted by Patent Hawk at 9:45 PM | Case Law

April 25, 2011

Jurisdiction Fiction

Personal jurisdiction can be a tricky issue. Radio Systems manufactures pet products, including a patented electronic pet door, the SmartDoor. Accession is a one-man show, a Mr. Sullivan, holder of 7,207,141, claiming a "a portable pet access door (the "Wedgit") that can be inserted into sliding glass doors." Mr. Sullivan unsuccessfully solicited Radio Systems about the Wedgit. Then, in a mighty show of brass, Accession's lawyer managed to talk an examiner into rescinding a notice of allowance for a patent application to the Smartdoor. In retaliation, Radio Systems filed a DJ at '141 in East Tennessee, its home turf. Accession got it dismissed for lack of personal jurisdiction, whereupon Accession filed an infringement action in New Jersey, its home turf. That got stayed pending appeal of the DJ dismissal.

Continue reading "Jurisdiction Fiction"

Posted by Patent Hawk at 10:30 PM | Case Law

April 20, 2011


TiVo bludgeoned EchoStar with 6,233,389, winning at trial in 2006 and on appeal in 2008. EchoStar wouldn't settle, and TiVo got a temporary injunction. EchoStar's supposed workaround "was not more than colorably different from the infringing software, and did continue to infringe the software claims." The district court, then an appeals panel, found contempt. The CAFC agreed to hear the issue en banc, to "clarify the standards governing contempt proceedings in patent infringement cases." With a roaring dissent, clarification was awfully noisy.

Continue reading "Busted"

Posted by Patent Hawk at 7:08 PM | Case Law

April 2, 2011

Confidentiality Cancer

Sanofi-Aventis sued Sun Pharmaceutical for its generic mimic of a cancer treatment drug, oxaliplatin. They supposedly settled, with a complex license agreement. But then it got complicated. And discreet. Too discreet. The ghost of Richard Nixon haunted the courtroom.

Continue reading "Confidentiality Cancer"

Posted by Patent Hawk at 10:58 PM | Case Law

March 30, 2011

Word Up

Some litigators have bigger egos than brains, failing to understand the basic communication tenet of signal to noise. And so proliferant pontification is preferred to on-point terse. And, like litigators' mother's milk, there is the irresistible psychopathic urge to try to game the proceedings. Judges display their acumen by intolerance of such. The CAFC won't have it.

Continue reading "Word Up"

Posted by Patent Hawk at 5:42 PM | Case Law

March 24, 2011

No Shopping, Please

It is a fundamental tenet that consumers shop for what they perceive as the best value. A few years ago, patent holders, seeking to consume justice, could do the same. Many district court judges, quite capable of adjudging criminals and contract disputes, are rum when it comes to patents, as appeals to the CAFC demonstrate. A handful of savvy judges in a few districts across the country put together programs to ferry patent cases, and in the process became patent litigation malls, where justice was dispensed like ice cream: cool and smooth. The malls are closed now.

Continue reading "No Shopping, Please"

Posted by Patent Hawk at 11:49 AM | Case Law

March 16, 2011

Not Reliable

Old Reliable Wholesale sued Cornell for infringing 5,069,950, which claims an insulated roof board. The district court found '950 invalid by prior art, which the CAFC affirmed. The district court found that Old Reliable hadn't lived up to its name, and so declared the case exceptional under §285, and awarded Cornell attorneys fees and expenses. The CAFC tucked under the roof what "exceptional" meant, and Old Reliable wasn't.

Continue reading "Not Reliable"

Posted by Patent Hawk at 11:31 PM | Case Law

March 14, 2011


The CAFC refused to correct its intrusion into state contract law, spurning an en banc rehearing petition of Abraxis Bioscience v. Navinta. Judge Newman, who dissented in the panel decision, did so again, joined by the newest member of the CAFC, Judge O'Malley, who penned the dissent this time. Welcome, Judge O'Malley.

Posted by Patent Hawk at 11:54 PM | Case Law

March 9, 2011

Lights On

Altair Engineering sued LEDdynamics for infringing 7,049,761, claiming an LED light fixture. The lights went out for Altair. "Closely-spaced" was hotly contested. Altair's position was shorted. Altair also had its plug pulled in asserting new claims, being judicially estopped. It took the CAFC to flip the switch.

Continue reading "Lights On"

Posted by Patent Hawk at 2:18 PM | Claim Construction

February 26, 2011

Damages Detector

Poistron emission tomography (PET) gives a partial snapshot of organs in its view. To get the snapshot, a patient consumes a dose of radioactive juice that decays, emitting positrons that the PET picks up. 4,958,080, owned by Siemens, claims a detector useful for PET scans. Siemens sued Saint-Gobain for infringement, winning a jury award of $52.3 million, reduced post-trial to $44.9. Saint-Gobain appealed with a set of arguments that were scanned for decay.

Continue reading "Damages Detector"

Posted by Patent Hawk at 3:47 PM | Damages

February 19, 2011

Bad Connection

Ronald A. Katz sued a crop of companies over his call processing patent portfolio in a variety of venues. Consolidation led to loss at district court. For the umpteenth time, a CAFC ruling demonstrates the random competence of all involved before the appeals panel. Patent litigation is a crap shoot because a lot of what comes out of lawyers, whether on the bench or belting it out, is crap. It helps when patent claims are largely crap, which is not at all unusual either. Once again, the CAFC proves its worth in sorting it all out.

Continue reading "Bad Connection"

Posted by Patent Hawk at 3:32 PM | § 112

December 24, 2010

Fine Print

Lazare Kaplan International owns patents claiming laser microinscribing of gemstones. Two of them, 6,476,351 and descendant 7,010,938, were asserted against PhotoScribe and others. Claim construction resulted in a summary judgment of literal noninfringement. But Lazare was allowed to argue the doctrine of equivalents to the jury. The jury found the patents not infringed, and not valid. In a bench trial that followed, the district court found inequitable conduct, for failing to disclose "the Gresser machine" to the USPTO. Under contract, Herbert Gresser created a nifty machine to air-cushion the inscriber for Lazare. '351 mentioned Gresser's work (and patent, 4,392,476, which Lazare also owns), but only in passing.

Continue reading "Fine Print"

Posted by Patent Hawk at 3:28 PM | Claim Construction

December 15, 2010


ColorQuick sued VistaPrint and OfficeMax for patent infringement in the Eastern District of Texas. Defendants wanted a transfer to Massachusetts. Denied. Petition to the CAFC for a writ of mandamus, to overturn, failed. "In sum, there are cases where to hold a trial court to a meaningful application of the § 1404(a) factors presents only one correct outcome. In those cases, mandamus may be appropriate. A case such as this, however, shows that a meaningful application of the factors often creates a reasonable range of choice. Under such circumstances, it is entirely within the district court's discretion to conclude that in a given case the § 1404(a) factors of public interest or judicial economy can be of "paramount consideration," Volkswagen II, 566 F.3d at 1351, and as long as there is plausible support of record for that conclusion we will not second guess such a determination, even if the convenience factors call for a different result." This, with an approving nod to EDT Judge Davis from his upstairs brethren: "the trial court performed a detailed analysis explaining that it is very familiar with the only asserted patent and the related technology, and where there is a co-pending litigation before the trial court involving the same patent-in-suit..." (CAFC 2010-m954o) precedential

Posted by Patent Hawk at 11:37 AM | Case Law

November 14, 2010

Jurisdictional Nuance

Nuance sued competitor Abbyy over its OCR scanning software patents. Finding out who the US subsidiary of Abbyy was owned by, Nuance amended its complaint to target the parent company in Cyprus, and the Russian subsidiary of Abbyy. Nuance served them both. Abbyy motioned to dismiss for lack of personal jurisdiction, and improper service of the foreign companies. The district court judge pitched the case over personal jurisdiction, as well as the service spat, including sua sponte determining that Nuance hadn't even properly served the US Abbyy. The judge also stopped further discovery. There was no nuance to reversal on appeal: it was loud and clear.

Continue reading "Jurisdictional Nuance"

Posted by Patent Hawk at 10:09 PM | Case Law | Comments (1)

September 10, 2010

Backbreaker Broken

Spine Solutions, Inc. (SSI) sued Medtronic for infringing 6,936,071, which claims a spinal implant, "used to replace discs between vertebrae in the spinal column that have degenerated or become diseased." Summary judgment of infringement for claims 1 and 2, and dismissal of "all of Medtronic's 35 U.S.C. § 112 defenses" led to stipulated capitulation by Medtronic, setting up a trial on damages and obviousness. SSI was going for lost profits even though it didn't sell or make any device covered by '071. But SSI's sister companies did. SSI was allowed to amend its complaint to include them. The jury found '071 not invalid, and willfully infringed, to the $5.7 million in lost profits, and an 18% reasonable royalty on $9.1 million in infringing sales. Whereupon the district court doubled the damages and awarded attorneys fees. Adding insult to injury, the court entered a permanent injunction. All that left Medtronic a lot to appeal. And some of it was appealing to the CAFC.

Continue reading "Backbreaker Broken"

Posted by Patent Hawk at 11:32 PM | Case Law | Comments (1)

September 2, 2010

On Tape

Funai Electric sued four Daewoo companies for infringing six US VCR patents. A tough battle to trial found two patents infringed for about $10 million in damages against two companies. Two defendants spontaneously pulled out, but the district court, applying "the law of South Korea as to successor liability," ruled that there was no goat to scape. In a multi-patent detailed analysis involving claim construction, prosecution estoppel (no estoppel on one amended claim, where the amendment was "merely tangential" to patentability), infringement (including doctrine of equivalents and willfulness), validity, and damages, the district court was affirmed by the CAFC, with one exception. The district court erred in applying Korean law to the US subsidiary - US law should have been applied there, which then raised the issue of which state. So, mostly affirmed, with reversal and remand regarding the US subsidiary that skipped. (CAFC 2009-1225, -1244) precedential.

Posted by Patent Hawk at 6:35 PM | Case Law

August 20, 2010

Deep Rig

Transocean Offshore Deepwater Drilling innovates so humans can drive around on the cheap until they pollute themselves out of existence. And, as anything that lives in the Gulf of Mexico would tell you (if it could talk), pollution begins at the wellhead. Transocean tried drilling rival Maersk for infringing 6,047,781, 6,068,069, and 6,085,851, in South Texas, where they love oil like cattle love grazing. But apparently not those patents, because the district court held the asserted claims invalid, not infringed, and Maersk not acting willfully. Transocean had to pitch its bit to the CAFC.

Continue reading "Deep Rig"

Posted by Patent Hawk at 2:35 PM | Prior Art

July 28, 2010


Eli Lilly markets cancer drug Gemzar®, the active ingredient of which is gemcitabine. 4,808,614 claims gemcitabine, and a method for treating viral infections using gemcitabine. 5,464,826 claims using gemcitabine to treat cancer. Both patents, in the same family, are owned by Lilly. Lilly did not file a terminal disclaimer for '826. That would become a terminal mistake.

Continue reading "Terminal"

Posted by Patent Hawk at 4:04 PM | Case Law

June 9, 2010


TriMed sued Stryker in 2006 for infringing 5,931,839, which claims "an implantable device used to set bone fractures." The district court granted summary judgment of noninfringement. Appeal reversed and remanded for an incorrect claim construction. Stryker then struck pay dirt with summary judgment invalidity. The appeals court was less than thrilled.

Continue reading "Fractured"

Posted by Patent Hawk at 10:13 PM | Prior Art | Comments (5)

June 4, 2010


Beginning its enforcement campaign with the beginning of the alphabet, Silicon Graphics sued ATI and AMD, ultimately for infringing 6,650,327, which claims pipelined floating point graphics calculations. Two other patents had been asserted, but summary judgment in favor of defendants wiped the litigation of those. Summary judgment of non-infringement, as well as a district court finding that a Microsoft license covered part of the action, wiped '327's assertion. But the counterclaim case proceeded to trial, where the patent was found not invalid. Then, naturally, appeal from both sides. Besides claim construction and infringement, a look herein at exhausting defenses and counterclaims.

Continue reading "Animated"

Posted by Patent Hawk at 1:06 PM | Claim Construction | Comments (9)

May 28, 2010

Custom Casket

In offering a license, Ablaise accused Dow Jones of infringing 6,961,737 & 6,295,530, claiming web page personalization. Dow Jones replied with a DJ. Realizing that validity was in jeopardy, Ablaise offered a covenant not to sue for '530 (not '737), which Dow Jones spurned, because Ablaise wouldn't extend the covenant to Dows' parent, News Corporation. In the issue of continuing subject matter jurisdiction, the district court waved the proffered covenant away, and kept the railroad running. The district court found the asserted claims obvious in light of Fishwrap, an MIT online newspaper, 5,675,507, a customizable fax viewer, and HTGrep, with optional views of search results. The CAFC took Ablaise's covenant offer more seriously.

Continue reading "Custom Casket"

Posted by Patent Hawk at 12:19 PM | Standing

May 25, 2010

Silence Not Golden

Aspex and Clariti litigation counsel know each other well. Aspex first sued Clariti over eyeglass frames patents in 1999. They settled the next year. In March 2003, Aspex sent nastygrams to Clariti over some other patents. Clariti responded by letter. Over three years later, in August 2006, Aspex rattled its paper saber again. Correspondence turned into complaint. Aspex sued in March 2007. Clariti got the district court judge to dismiss the case in summary judgment on equitable estoppel, legalese for sitting on the litigation duff a wee too long.

Continue reading "Silence Not Golden"

Posted by Patent Hawk at 9:04 PM | Case Law | Comments (1)

Flaming Claiming

Randall B. Carter was VP and General Manager of Acme Security from 1992 to 2006. While there, "he allegedly developed a high security locking assembly for a safe deposit box door on his own time and with his own resources." This led to patenting, listing Michael Hassebrock, Acme President at the time, and Carter as inventors. "Subsequently, Hassebrock allegedly demanded that Carter assign his patent rights to Acme Security. Carter refused, and Acme Security terminated his employment." So Carter sued: "nine claims purportedly based on federal law and six on state law."

Continue reading "Flaming Claiming"

Posted by Patent Hawk at 11:41 AM | Case Law | Comments (1)

May 10, 2010


Three recent cases before the CAFC went to challenges to patent term extension. Photocure challenged the PTO's denial of term extension in Photocure v. Kappos, and won. In Wyeth v. U.S., Wyeth unsuccessfully challenged the FDA's "determination of the date on which the approval phase of its phased regulatory review process begins for purposes of calculating patent term extensions." Lupin challenged the PTO's granting an extension to 5,053,407, "an enantiomer of a racemic compound that had previously been approved by the Food and Drug Administration (FDA)," to no avail.

Continue reading "Extension"

Posted by Patent Hawk at 10:26 AM | Case Law

May 3, 2010


Starting in 1998, Medtronic sued multiple parties over multiple surgical instruments patents, BrainLAB being one of them. Defendants summary judgment motions of noninfringement were denied. Before the case went to the jury, BrainLAB renewed its JMOL motions, which the district court again denied. Medtronic won. Post-trial, BrainLAB filed again. This time, the district court granted the motions. Medtronic appealed, and lost. Back at district court, BrainLAB succeeded in getting attorneys fees for litigation misconduct. Back to appeal.

Continue reading "Sanctioned"

Posted by Patent Hawk at 12:25 PM | Case Law

April 29, 2010

Dun In

Judson A. Bradford had some ideas for collapsible shipping containers. So he patented. 5,725,119 came first. Then 6,230,916, a divisional of '119. 6,540,096 was a CIP of '916. Enforcement went nowhere: noninfringement. But the CAFC revived Bradford's prospects owing to a too-narrow claim construction. Of particular interest in this case is that Bradford damned himself in the '096 CIP having benefit of the earlier '119 parent prior date.

Continue reading "Dun In"

Posted by Patent Hawk at 3:09 PM | Claim Construction | Comments (1)

April 22, 2010


Nissim sued ClearPlay for patent infringement. They settled by ClearPlay taking a license, paying ongoing royalties. Nissim got upset that ClearPlay wasn't playing it straight, so Nissim sued to enforce the agreement, as well as tattling to ClearPlay's customers. ClearPlay sued for tortious interference and other legal breaches of the licensing agreement. Nissim's suit went nowhere, having found that ClearPlay "had substantially complied with the agreement and was not in breach." Miffed, Nissim terminated the license agreement. Whereupon ClearPlay got a preliminary injunction to bar Nissim from doing so. Nissim appealed to the CAFC.

Continue reading "Unclear"

Posted by Patent Hawk at 9:54 AM | Case Law

April 15, 2010

Manipulative Practices

"In 2003, Congress enacted the counterclaim provision of the Hatch-Waxman Act in order to prevent manipulative practices by patent holders with respect to the Orange Book listings. These practices were designed to delay the onset of competition from generic drug manufacturers." Judge DYK, dissenting in Novo Nordisk v. Caraco. The Byzantine regulatory labyrinth over drugs coming off patent protection bounces like a ball on the roulette wheel of case law once more.

Continue reading "Manipulative Practices"

Posted by Patent Hawk at 10:19 AM | Case Law

April 13, 2010

Waving Goodbye

Anascape sued Nintendo and Microsoft over 6,906,700, which claims multiple controller input with tactile feedback. '700 is a CIP of 6,222,525. As such, '700's earliest possible priority date for its claims depends upon spec support within '525. And so '700's validity, as invalidating prior art lies between the '525 filing date and the '700 filing date. Thereupon hangs the patent's fate, upon whose reliance is an early priority date.

Continue reading "Waving Goodbye"

Posted by Patent Hawk at 9:26 AM | § 112 | Comments (12)

April 8, 2010

Inventor Hard On

Vanderbilt University was cocksure that it contributed to the patents behind Cialis®, the currency-squirting erectile energizer. So it sued ICOS, current owner of 5,859,006 and 6,140,329, under 35 U.S.C. § 256, to correct inventorship. The district court decreed that Vanderbilt was pumping dog water. The CAFC affirmed that Vanderbilt had shot its wad.

Continue reading "Inventor Hard On"

Posted by Patent Hawk at 4:21 PM | Case Law | Comments (3)

April 4, 2010


Hearing Components sued Shure over hearing aid patents 4,880,076; 5,002,151; and 5,401,920, technologies used in Shure's earphones. The district court outcome was invalidity by indefiniteness for '920 asserted claims, and noninfringement for a few claims of '076 and '151 for Shure's product that used a straight nozzle. A jury found the '076 and '151 patents "not invalid and infringed by Shure's products both with a barb and with a straight nozzle," and awarded $4.6 million in damages. Post-trial, the judge granted a portion of Shure's noninfringement motion, but left the patents valid. That went to appeal, as well as denying Shure noninfringement JMOL for its barbed nozzle earphones, and denying laches. Hearing Components wanted another hearing on the claim term "readily" turning its claims deaf to definiteness.

Continue reading "Readily"

Posted by Patent Hawk at 12:39 PM | § 112

March 31, 2010

Score Line

Pressure Products Medical Supplies invented a valve remover for an introducer, netting 5,125,904 & 5,312,355. Under a rolling claim construction, the patents were found valid and infringed by the jury, with Pressure Products awarded $1.1 million in damages. Appeal rolled back the score.

Continue reading "Score Line"

Posted by Patent Hawk at 12:58 PM | Claim Construction

December 22, 2009


i4i sued Microsoft for a pissant feature in Word: editing custom XML. But to i4i's business, the feature was puissant. A seven-day trial found Microsoft willfully infringing a valid patent, with a jury award of $200 million. "Although statutorily authorized to triple the jury's damages award because of Microsoft's willful infringement, the district court awarded only $40 million in additional damages. It also granted i4i's motion for a permanent injunction." The inevitable appeal, widely expected to go more Microsoft's way than not, did not. Procedural fumbling by supposedly the best lawyers money can buy sold Microsoft short. Herein, CAFC case law heavy on burden and sufficiency, in a case practically covering the gauntlet of patent enforcement.

Continue reading "Unpreserved"

Posted by Patent Hawk at 8:57 PM | Case Law | Comments (1)

December 13, 2009

So Unlike Concrete

In an extremely messy patent case involving claim construction (and correction), noninfringement, invalidity, laches, indefiniteness, trade secrets, and topped with several business torts, Ultimax Cement had its quick-set concrete patents crumble by a sledgehammer summary judgment at district court, and so Ultimax sought repair at the CAFC. The foundation of the patent problem: lack of careful proofreading by the prosecutor.

Continue reading "So Unlike Concrete"

Posted by Patent Hawk at 1:04 AM | Claim Construction | Comments (3)

November 3, 2009

License Crossed

Philips and 3M inked a patent cross license in 1995. The next year, 3M spun off Imation. The agreement, which granted license to subsidiaries, continued. In 2003, Imation formed a joint venture that created GDM. In 2006, Imation acquired Memorex. In 2007, Imation filed a declaratory judgment action seeking a finding that GDM and Memorex are licensed subsidiaries under the agreement. The district court ruled against Imation, and so Imation appealed.

Continue reading "License Crossed"

Posted by Patent Hawk at 2:05 PM | Case Law | Comments (2)

September 30, 2009


Advanced Software sued Federal Reserve banks and Fiserv in Federal district court for infringing process patents "for detecting fraudulent bank checks." The checks at issue were U.S. Treasury checks. 28 U.S.C. Section §1498(a), dating to 1910 and broadened as a World War I war powers act, limits patent infringement liability by the U.S. to compensation granted through the Court of Federal Claims. Otherwise, the government cocks a snoot at such a suit.

Continue reading "Fraudulent"

Posted by Patent Hawk at 10:43 PM | Case Law

September 20, 2009


Vita-Mix is a blender maker with 5,302,021. Vita-Mix sued competitor Basic for patent and trademark infringement. The district court let Basic off the hook in summary judgment. On appeal, the CAFC limited prosecution disclaimer, and found potential matters of fact that revived the issue of infringement.

Continue reading "Stirred"

Posted by Patent Hawk at 10:07 PM | Case Law

September 11, 2009

Form Fitting

In the salad days of personal computing, Ben Day came up with a "touch screen form entry system" while working at AT&T. 4,763,356 resulted. Current owner Lucent disingenuously sued Dell and Gateway over it, while Microsoft software was the real culprit. Microsoft indemnifies its big corporate customers, and so stepped in. And lost. To the tune of $358 million. Bad tune. So bad, the CAFC called it tone deaf. Herein, two teams of randomly competent lawyers dance bad ballroom.

Continue reading "Form Fitting"

Posted by Patent Hawk at 5:31 PM | Damages | Comments (1)

August 21, 2009


Cardiac Pacemakers sued St. Jude Medical for infringing 4,407,288, claiming an implantable cardiac defibrillator (ICD). On second appeal, while multiple issues get the ticker running quicker, what really pumps is excluding method claims from Section 271(f).

Continue reading "Ticker"

Posted by Patent Hawk at 11:56 PM | Case Law | Comments (5)

August 13, 2009

No Bites

Wedgetail sued Huddleston for infringing its fishing lure patent 6,857,220 B2 ('B2' being USPTO technical designation for "bait too"). After claim construction, Wedgetail concluded snagging Huddleston for infringement could be fishy. "Wedgetail thus filed a motion to dismiss all claims with prejudice, in which it granted Huddleston a covenant not to sue. Huddleston opposed solely on the ground that Wedgetail's proposed order of dismissal would deprive Huddleston of the opportunity to seek attorney fees as the prevailing party." Case dismissed with prejudice. Huddleston appealed to get its hook into getting paid attorneys' fees and costs, for the case being "exceptional."

Continue reading "No Bites"

Posted by Patent Hawk at 11:10 AM | Case Law

June 18, 2009

Combination of the Two

A combination of two patent blogs yields a well-worn path to researching patent case law. Michael Giles Sullivan's IP Law Outline & Analysis provides an excellent directory and synopses of precedents. The Patent Prospector provides the most extensive reportage of case law quotes of any blog, covering practically every precedential case from 2005 to date, as well a few historical Supreme Court cases. For ready topical patent research, there is no better combination.

Posted by Patent Hawk at 11:27 AM | Case Law

June 5, 2009


Wage slaves typically must assign their inventions to their employer as a condition of employment. Boat designer Borden Larson got uppity about it and sued his former employer Correct Craft, trying to get back a right he had signed away. Larson lashed out in state court. Correct Craft dragged it into federal court. Larson, with no cards to play, lost. Not one to get over it, Larson appealed. No surprise that the CAFC blew the matter off, albeit longwindedly, in a precedential decision (2008-1208), involving jurisdiction (28 U.S.C. § 1338(a)) and correction of inventorship (35 U.S.C. § 256), which didn't apply in this case.

Posted by Patent Hawk at 5:14 PM | Case Law

April 29, 2009

Corrected Vision

Revolution Eyewear myopically started a patent fight with competitors, including Contour Optik. Revolution's assertion went blind, but Contour saw 20/20 money with RE37,545. On appeal, "the only matter left in this lawsuit is Contour's '545 patent infringement action."

Continue reading "Corrected Vision"

Posted by Patent Hawk at 8:54 PM | § 112

April 27, 2009

Seeking Reversal

"A patent by its very nature is anticompetitive." So the CAFC remarked last October in allowing reverse payment by Bayer to generic drug makers, so that Bayer could keep its patented monopoly over antibacterial Cipro® for a bit longer. Stanford law professor Mark Lemley has penned a petition to the Supreme Court, to lay the burden of overturning reverse payments before the august body, this nation's numero uno woolly bully. Lemley thinks the CAFC ruling "contains fundamental errors of economic reasoning and would shield many anti-competitive agreements from the reach of antitrust law, causing great harm to competition."

Continue reading "Seeking Reversal"

Posted by Patent Hawk at 10:36 PM | Patents In Business

April 8, 2009

Toll Taken

"In 2000, TransCore sued a competitor, Mark IV Industries, for infringement of several TransCore patents. That action was resolved by a settlement agreement, in which Mark IV agreed to pay $4.5M in exchange for an unconditional covenant not to sue and a release of all existing claims." Then TransCore sued again.

Continue reading "Toll Taken"

Posted by Patent Hawk at 3:39 PM | Case Law | Comments (2)

April 1, 2009


Jack Bennett sold some patents and continuations to Vector Corrosion Technologies for $25,000. He listed them. He left a CIP out, 6,217,742. A competitor, Euclid Chemical, sought declaratory judgment that Vector didn't own '742. Slapdash Ohio district court Judge Boyko ruled that the contract assigned the whole family to Vector. Euclid appealed. Another CAFC 2-1 split decision, with Judge Newman right on, and her colleagues laughable fools.

Continue reading "Assigned?"

Posted by Patent Hawk at 8:18 PM | Case Law

March 24, 2009


Corruption is human nature, but that doesn't shoo the stink from especial weasels. Herein, another tale of litigant misconduct, omitting crucial discovery material that would have gone a long way in proving noninfringement. And, in an ongoing chronicle of feeble-mindedness at the CAFC, Judge Newman, by far the sharpest tack in the box, points out the fly in the ointment of the majority.

Continue reading "Wastewater"

Posted by Patent Hawk at 3:39 PM | Case Law | Comments (1)

March 22, 2009


E-Pass sued 3Com/Palm for infringing 5,276,311, claiming a multi-function card. E-Pass then went after Visa and PalmSource. The district court consolidated the cases, then granted summary judgment of non-infringement because E-Pass couldn't show all the claimed steps being practiced. E-Pass also got slapped for sloppy pre-filing investigations and "repeated misconduct throughout the litigation," awarding attorneys fees and sanctions. E-Pass appealed, compounding its trouble.

Continue reading "Frivolous"

Posted by Patent Hawk at 8:00 PM | Case Law

March 8, 2009


A co-inventor is no inventor who adds nothing to a patent but the prior art, so the CAFC ruled last week. Though precedential, the appeal panel ruling is nothing new either. This in a case where a vehicle parts maker, Natron, sued its suppliers for patent infringement over a car seat with massage effect.

Continue reading "Non-Contributor"

Posted by Patent Hawk at 12:43 PM | Case Law | Comments (1)

March 5, 2009


O2 Micro sued Monolithic Power Systems, Asustek, and Advanced Semiconductor Manufacturing over 6,396,722. '722 goes to efficiently powering computer laptop screens. The technology is intricate and complex. So complex that the district court judge declared: "On the technical issues here . . . I find this extremely difficult to understand. And the notion that a jury is going to understand it, to me, is foolishness." So, though O2 objected, the judge had the parties agree on an expert that "would essentially, I can't say decide the case, but would testify and [the jury] would be told 'This is the court's expert on these points.'"

Continue reading "Expert"

Posted by Patent Hawk at 1:08 PM | Case Law

February 25, 2009

Fire Away

Yesterday, the Supreme Court declined a petition to review the Singleton v. Volkswagen case, regarding transfer of venue under 28 U.S.C.§1404(a). That leaves the CAFC "transfer away" precedent of TS Tech standing. Also declined was review of declaratory judgment motions, in Forest Labs v. Caraco.

Posted by Patent Hawk at 4:45 PM | Case Law

February 24, 2009


Generic drug maker Teva has been working to cut into Eli Lilly's profits on its patented drug, Evista®, which treats postmenopausal osteoporosis, a disease exacerbated by poor lifestyle choices. Lilly sued. As is statutory, the judge slapped a stay, delaying Teva's FDA approval, pending trial. Teva fiddled with its formulation, requiring further discovery, so the judge extended the stay. Teva appealed the extension as an abuse of discretion by the judge.

Continue reading "Stay"

Posted by Patent Hawk at 11:13 PM | Case Law | Comments (3)

January 26, 2009


Hal Wegner:

In a procedurally bold opinion in In re Comiskey, __ F.3d __ (Fed. Cir. 2009)(Dyk, J.), a panel has repudiated controlling precedent of the court and indeed 180 years of practice since the Patent Act of 1839 that had established a strict proscription against a judicial reviewing body of Patent Office decisions playing de novo "examiner". Instead, the reviewing court has had a limited statutory role that focused upon the rejection that had been made by the Office.

Continue reading "Rogue"

Posted by Patent Hawk at 1:48 PM | Case Law | Comments (3)

January 19, 2009


Ivory-tower academic Doug Lichtman interviewed CAFC Chief Judge Michel. Michel displayed an impressive grasp of important facts and statistics, and a seasoned sense of reality, with interesting, albeit sometimes odd, views.

Continue reading "Perspectives"

Posted by Patent Hawk at 4:32 PM | Case Law | Comments (6)

December 29, 2008

Get Out of Town

Lear sued TS Tech for patent infringement in the Eastern District of Texas. Judge T. John Ward denied TS Tech's transfer motion. In a ruling of thin logic, failing to explain its reasoning beyond trivial convenience, Lear's interlocutory petition for writ of mandamus is granted by the CAFC. Is this the beginning of the end for efficient patent justice in this country?

Continue reading "Get Out of Town"

Posted by Patent Hawk at 11:51 AM | Case Law | Comments (3)

December 27, 2008

Not Blissed

Sundance sued DeMonte for infringing 5,026,109, claiming a retractable tarp. "Demonte's patent law expert, Daniel Bliss, opined that one of ordinary skill in the art would be motivated to combine" two prior art references to render '109 obvious. The jury bought it, but not the judge, who figured the prior art didn't cover it, even considering testimony from Bliss. On appeal, the CAFC was less than blissed with Bliss.

Continue reading "Not Blissed"

Posted by Patent Hawk at 12:46 AM | Case Law | Comments (12)

December 25, 2008


Ricoh sued Quanta for infringing four optical disc drive patents. 6,631,109 was stomped by Obzilla. 6,172,955, 5,063,552 and 6,661,755 were found not infringed. The appeals court thought Ricoh should have gotten a better shake on '522 and '755, particularly with contributory and inducing infringement. A 2-1 CAFC decision skating on thin ice by analogizing with copyrights in lieu of more properly digging into patent law.

Continue reading "Driving"

Posted by Patent Hawk at 1:52 PM | Case Law

December 21, 2008

Sour Grapes

6,673,064 claims a laser catheter. Dr. Peter Rentrop sicked '064 on Spectranetics, and copped a cool half million. Spectranetics, after sloppily stirring as much trouble for Rentrop as it could, appealed losing on obviousness, among other profundities. The appeals court reminded Spectranetics that they could have floated that boat, but didn't, and it's water under the bridge now.

Continue reading "Sour Grapes"

Posted by Patent Hawk at 2:28 PM | Prior Art | Comments (1)

December 18, 2008

Patent Law Outline

The best patent law blogs act as a ready reference for case law. The Patent Prospector attempts this by covering CAFC cases with copious quotation, the entries categorized. Michael G. Sullivan's The Power of the Outline takes a different, rather extraordinary approach, beguiling in its simplicity. In doing so, Mr. Sullivan has produced an invaluable resource: a taxonomic synopsis of patent cases.

Continue reading "Patent Law Outline"

Posted by Patent Hawk at 11:38 PM | Case Law | Comments (1)

October 7, 2008

Giving It A Rest

The Supreme Court has rejected a number of patent appeals recently, not altogether unexpectedly, so it appears the SCOTUS won't blow snot on us for the first time in several years. Recent pleas have been procedural rather than substantive issues. Not much of a rug to pee on. And peeing on the patent rug has been little SCOTTY's specialty in recent times, from obviousness (KSR), declaratory judgment (MedImmune), to injunctive relief (eBay), dramatically stacking the deck against patent holders.

Continue reading "Giving It A Rest"

Posted by Patent Hawk at 11:16 PM | Case Law

October 2, 2008

Rogue Outfit

In John Hopkins University v. Datascope, Judge Newman fingered the overbearing injudiciousness of the Court of Appeals panel in which she sat:

There is no sufficient ground for this court's independent appellate trial of the factual issues that were decided by the jury and sustained by the district court.

Continue reading "Rogue Outfit"

Posted by Patent Hawk at 3:41 PM | Case Law | Comments (3)

September 26, 2008

In the Fire

Broadcom and Qualcomm have a cell phone chip patent war going on. A major clash was appealed, with blood spilled.

Broadcom got a permanent injunction, even though it didn't practice the claimed invention. While the courts found it "generally in the public interest to uphold patent rights," an injunction would not have been granted if not for giving Qualcomm a "sunset provision" to wean itself from infringement. This ruling could be a roadmap for future injunctive relief.

Inducing infringement was rehashed. Unlike willfulness, where a clearing opinion means nothing, it can mean something when considering inducing infringement, which "may be established through circumstantial evidence," considering the totality of circumstances.

Further, the CAFC found obvious error with district court claim construction. Further evidence of a trial court system ill-equipped for patent cases. On appeal, Broadcom made one of the most bizarre claim construction arguments possible: that if a claim were properly construed, it would be prima facie invalid in light of cited prior art, ergo, could not construed that way. So what, the court ruled. It's invalid.

Continue reading "In the Fire"

Posted by Patent Hawk at 9:30 PM | Injunction

September 25, 2008

Sound & Fury

AT&T developed digital audio compression technology, for which it got patents. In 1988, to further the work, AT&T entered a joint development agreement with German company Fraunhofer Gesellschaft. The result was the MP-3 standard, as well as more patents covering the standard.

Continue reading "Sound & Fury"

Posted by Patent Hawk at 4:16 PM | Case Law

September 23, 2008

No Petty Bone

Electronic game machine maker Aristocrat sued International Game for infringing 7,056,215, a blemished patent. The blemish was to futz reviving the patent application after abandonment during prosecution. The district court turned the blemish to cancer, killing the patent. The appeals court was more patient.

Continue reading "No Petty Bone"

Posted by Patent Hawk at 10:19 PM | Case Law

September 11, 2008

On Display

Medical Solutions (MSI) sued C Change Surgical (CCS) for patent infringement "because CCS both "used" and "offered to sell" the allegedly infringing product at [a] trade show." MSI had sued CCS in D.C., where the trade show was. But neither company is based there. The district court pitched the case, because of lack of evidence that CCS had used, or offered to sell, the allegedly infringing product. The district court disallowed additional discovery. While jurisdiction was at issue here, more interesting was CAFC musing on what constituted "use" for patent infringement.

Continue reading "On Display"

Posted by Patent Hawk at 5:00 PM | Case Law | Comments (2)

August 31, 2008

Phoning It In

800 Adept successfully sued Targus for two patents routing 800 number calls to a local service location. A 24-day jury trial spat a $18 million patent infringement award, attorneys fees for it being an exceptional case, permanent injunction, and Targus "liable under state law for tortious interference with Adept's business relationships," worth $7 million. Found willful, the award ballooned to $49 million. Targus' 10 counterclaim patents, covering much the same territory, bit dust. Overturned on appeal on claim construction, and other trial court errors.

Continue reading "Phoning It In"

Posted by Patent Hawk at 3:14 PM | Claim Construction

August 20, 2008

Dead Cash Cow Still Milks

Astrazeneca sued Apotex and Impax for infringing patents of "pharmaceutical preparations containing omeprazole, the active ingredient in Prilosec." Filing ANDAs prompted the patent assertion. The patents expired, but that didn't moot the suit. Drug patent law provides an extra six months of exclusive sales to reap the profits of an expired patent. Also herein, CAFC confirmation that experimental use to reduce to practice is okay.

Continue reading "Dead Cash Cow Still Milks"

Posted by Patent Hawk at 6:58 PM | Prior Art

August 5, 2008


Proveris Scientific sued Innovasystems for infringing 6,785,400, claiming a device for evaluating drug delivery aerosol sprays. "As part of its defense, Innova invoked the safe harbor provision of the Hatch-Waxman Act." The district court had no safe harbor for Innova, finding infringement, no damages, but a permanent injunction. On appeal, the CAFC found a narrow safe harbor that excluded Innova.

Continue reading "Sprayed"

Posted by Patent Hawk at 5:10 PM | Case Law

July 14, 2008


With case law changing like a fashion model working the runway, Thomson had time on its side in slipping the surly bonds of patent infringement. Muniauction asserted 6,161,099, claiming auctions using a web browser. Thomson lost a jury trial, found willfully infringed, faced $77 million in damages and an injunction. On appeal, the auction patent action was retold, and the damage unsold.

Continue reading "Unsold"

Posted by Patent Hawk at 5:32 PM | Prior Art

July 9, 2008

No Reverse Spin

Apotex filed two ANDAs with the FDA to market generic formulations of eye inflammation treatment patented by Roche. Naturally, Roche sued, in two separate actions. The first case was decided in 2007, with Apotex infringing a valid patent. In the second case, more of the same bad news. The CAFC ruled "that the reverse doctrine of equivalents is inapplicable and that claim preclusion prohibits Apotex from raising other validity challenges." That KSR changed obviousness in the interim between the two cases made no difference.

Continue reading "No Reverse Spin"

Posted by Patent Hawk at 3:08 PM | Case Law

June 16, 2008


Innovation Technologies sued Splash! Medical Devices for infringing 5,830,197, which claims a method for irrigating wounds. Innovation got cold feet and backed out, giving Splash a pass. Splash moved for attorneys fees and expenses, a $144,350 tab. Granted. Vacated and remanded on appeal, because the district court judge didn't explain his reasoning.

Continue reading "Thrashed"

Posted by Patent Hawk at 10:53 PM | Case Law

June 3, 2008


Bancorp sued Metropolitan Life Insurance for infringing 5,926,792, claiming tracking the value of life insurance policies. Unsuccessfully in the first round, as the district court judge granted summary judgment of non-infringement, which failed on appeal, albeit on an affirmed claim construction, because of a "genuine issue of material fact." Not to mention the district court not affording Bancorp sufficient discovery.

Continue reading "Discovery"

Posted by Patent Hawk at 11:37 AM | Case Law | Comments (2)

May 21, 2008


Golden Bridge Technology hammered Nokia and Lucent for infringing 6,574,267, claiming a mobile communication system. The district court granted invalidity in summary judgment. Golden Bridge appealed with freshly minted arguments, which the CAFC refused to consider, deeming them too little too late.

Continue reading "Late"

Posted by Mr. Platinum at 10:21 AM | Case Law

May 14, 2008


DuPont sued MacDermid Printing for infringing 6,773,859, claiming digital thermal printing. '859 was based on a provisional application. The USPTO mistakenly issued the patent without reference to the provisional. DuPont had that corrected. MacDermid brewed a tempest in a teapot over priority date, confusing the district court judge, who refused a motion to issue a preliminary injunction. On appeal, the CAFC (2007-1568) ruled that DuPont had met the requirements for 35 U.S.C. § 119, and set the priority date to the provisional filing. Vacated the motion denial. Remanded.

Posted by Patent Hawk at 7:41 PM | Case Law

May 13, 2008

Another Nail

Acumed successfully went after Stryker for infringing 5,472,444. After discovery, Strkyer started selling what Acumed would later, in a second complaint, accuse as further infringement. The district court dismissed the second suit as old news. Acumed appealed.

Continue reading "Another Nail"

Posted by Patent Hawk at 5:10 PM | Case Law

April 28, 2008

Sleep Lite

LiteCubes sued Canada-based GlowProducts for infringing 6,416,198, as well as copyright infringement. '198 claims a light that looks like an ice cube. After found infringing, GlowProducts filed a motion to dismiss for lack of subject matter jurisdiction. On appeal, the CAFC unleashed a gratuitous stem-winder on jurisdiction. Simply, an allegation of patent infringement "creates a federal cause of action."

Continue reading "Sleep Lite"

Posted by Patent Hawk at 2:26 PM | Case Law | Comments (2)

April 24, 2008

Objectively Baseless

Dominant Semiconductors, being found to infringe a number of LED patents owned by OSRAM GmbH, filed suit against OSRAM alleging unfair competition, intentional interference with contractual relations, interference with prospective economic advantage, and trade libel arising from OSRAM's communication to customers regarding Dominant's possible infringement. Dominant, apparently forgetting that they lost the infringement battle, claimed OSRAM's communications regarding possible infringement were "objectively baseless". Turns out, the only thing objectively baseless was Dominant's suit. Summary judgment granted in favor of OSRAM. CAFC affirmed.

Continue reading "Objectively Baseless"

Posted by Mr. Platinum at 7:52 AM | Case Law

April 20, 2008

Beaming Down

Finisar sued DirecTV in East Texas for infringing 5,404,505, garnering from a jury a $78.9 million reasonable royalty damages award for willful infringement. The district court tacked on $25 million while denying injunctive relief. On appeal, a claim construction error vacated the verdict, as well as raising from the grave potentially invalidating prior art.

Continue reading "Beaming Down"

Posted by Patent Hawk at 12:31 AM | Prior Art

April 17, 2008

Hospital TV

Zenith has a couple patents (5,495,301; 5,502,513) for TV remote controls for hospital room use. Zenith sued PDI for infringement. PDI won a summary judgment of prior art invalidity on claim 1 of '301, and non-infringement on both patents. Zenith appealed. Herein reminders that: 1) practicing the prior art does not prove anticipation; 2) determining anticipation by public use doesn't require an enablement finding. "We must simply determine whether the public use related to a device that embodied the invention."

Continue reading "Hospital TV"

Posted by Patent Hawk at 2:49 AM | Prior Art

April 12, 2008


Hilgraeve Corporation, owner of computer virus detector patent 5,319,776, sued McAffee and lost on non-infringement. Next, it sued Symantec and lost again in district court, but had an unfavorable claim construction reversed on appeal. Symantec settled, buying the patent. In that process, Symantec picked up the lawsuit Hillgraeve had brought against Computer Associates (CA).

Continue reading "Viral"

Posted by Patent Hawk at 3:51 PM | Claim Construction

April 9, 2008


Ren Judkins sued HT Window Fashion for infringing window covering patent 7,182,120, which he had gotten via a circuitous route. HT counterclaimed unfair competition under the Lanham Act, and sought a preliminary injunction, because Judkins had sent letters to HT customers, warning of infringement. Denied. Appeal. HT argued that Judkins acted in bad faith because he knew that his patent was unenforceable.

Continue reading "Uncovered"

Posted by Patent Hawk at 1:19 AM | Case Law

April 7, 2008

Only If, Take 2

O2 enforced its DC-to-AC converter patents against Beyond Innovation and others. Construction of the claim term "only if" sparked a slight disagreement among defendants, but was only "two simple plain English words" to O2. The district court judge agreed with O2: no construction needed. The appeals court did not.

Continue reading "Only If, Take 2"

Posted by Patrick Anderson at 7:45 PM | Claim Construction

March 3, 2008

Grasp by Analogy

On the Supreme Court, Justice Antonin Scalia can't resist indulging in sarcasm as modus operandi. Contrast that with the poised maturity of persnickety Justice Ruth Bader Ginsberg, who revels in the devils in the details. Justice Stephen Breyer: "The point is to try to focus on a matter that is worrying me. Sometimes it's easier to do that with an example."

Continue reading "Grasp by Analogy"

Posted by Patent Hawk at 12:20 AM | Case Law | Comments (5)

January 17, 2008


Abbott had lousy lawyers defending it against Innogenetics patent 5,846,704. Abbott passed an opportunity to correct a court mistake, thus leaving it without expert testimony from one expert. Abbott farted around on invalidating the patent, not producing the ringer until the last day of discovery. And Abbott simply blew the chance to have the inventor of the anticipating art act as expert witness. For all its pains, its defense crumbled with a losing claim construction, Abbott suffered summary judgment of infringement, and ordered to pay Innogenetics attorneys' fees because its inequitable conduct charge was "exceptional" in its vacuity. In liability trial, Abbott's expert testimony was soiled because it "rested on an inaccurate understanding" of a key claim limitation. Abbott was dinged $7 million and its infringement found willful by jury; the willfulness charge lifted by the district court judge, who knew how high that bar had been raised In re Seagate. But Abbott then was pinned with a permanent injunction. Appeal gave Abbott another chance, which it largely threw away.

Continue reading "Oops!"

Posted by Patent Hawk at 1:18 PM | Case Law

January 1, 2008

On the Docket in 2008

After proving themselves randomly competent at best in 2007, the high courts will continue to define patent law as Congress dickers with wrong-headed "reform." Here are 2008 high court patent cases that may demonstrate that clown time is not over on the bench.

Continue reading "On the Docket in 2008"

Posted by Patent Hawk at 4:59 PM | Case Law | Comments (1)

December 25, 2007


Online auction house eBay and satellite virtual bank PayPal dodged errant bullets shot by Netcraft: 6,351,739 and 6,976,008. The claims go to "an Internet billing method." Summary judgment of non-infringement was granted because the claims required "providing a communications link through equipment of the third party;" in other words, an Internet service provider (ISP). eBay and Paypal don't do that.

Continue reading "Unlinked"

Posted by Patent Hawk at 12:06 AM | Case Law

November 7, 2007


Zenon Environmental sued US Filter for infringing water filter patents: 6,620,319; 6,245,239; 6,550,747. In district court, Zenon crapped out on claim construction, leading to a non-infringement decision, as did US Filter on invalidating '319. On appeal, '319 validity took center stage - a defective incorporation rendered the family parent anticipatory, offing its offspring.

Continue reading "Unincorporated"

Posted by Patent Hawk at 5:53 PM | Case Law

November 2, 2007

Illumination in Range

Mr. Rolfes, an employee of Phillips, sent a letter to Iwasaki Electric, offering to licensing 5,109,181, which claimed a particular halogen lamp. No reply; litigation disco. On appeal, some light shed on claimed ranges and the doctrine of equivalents.

Continue reading "Illumination in Range"

Posted by Patent Hawk at 2:26 PM | Case Law

November 1, 2007

Back from the Dead

Microtome was granted 5,734,823, claiming encrypted storage. The patent was then acquired by IPDN, who went bankrupt. Diego bought the patent, "as is," at the bankruptcy estate sale. The appeals court was riveted: "The facts of this case read like a novel in that they involve the resurrection of an inventor thought to be deceased." Ultimately a tale of 35 U.S.C. § 285, granting attorneys fees for exceptional cases.

Continue reading "Back from the Dead"

Posted by Patent Hawk at 10:09 PM | Case Law | Comments (1)

October 23, 2007

Sovereign Immunity

Biomedical Patent Management wants to sue the Department of Health Services (DHS) of the State of California for infringing 4,874,693, claiming screening for birth defects in pregnant women. DHS has intervened in a previous action against Kaiser, but this time sought a pass using the sovereign immunity defense, under the Eleventh Amendment. That's all it takes for the state to skip out; that the state involved itself previously in a related action makes no difference; it's not "the case at hand," i.e., the same case.  (CAFC 06-1515)

Continue reading "Sovereign Immunity"

Posted by Patent Hawk at 1:07 PM | Case Law

October 1, 2007

Defective Non-Assignment

IpVenture sallied forth to rake money off Prostar Computer and Midern Computer for infringing 6,216,235; Douglass Thomas, and his dad, Alan, inventors. The defendants got a squeamish district court to dismiss the case owing to lack of standing. The appeals court thought the lawsuit standing was copasetic.

Continue reading "Defective Non-Assignment"

Posted by Patent Hawk at 7:01 PM | Case Law

September 12, 2007

Death Certificate Reissue

The CAFC took the unusual step of reissuing its July 11 non-precedential obviousness wallop as a precedential decision, so it could be used to maintain the KSR fiction that the statutory "ordinary skill in the art" has an inventor's level of skill and education, as well as being omnificent.

Continue reading "Death Certificate Reissue"

Posted by Patent Hawk at 11:30 AM | Case Law

August 26, 2007

Pulling Teeth

Ormco asserted four orthodontic software and appliance patents in the same family against Align Technology (5,447,432; 5,683,243; 6,244,861 and 6,616,444). Align counterclaimed with 6,554,611 and 6,398,548. All asserted claims by both parties were found unenforceable. Ormco and Align appealed.

Continue reading "Pulling Teeth"

Posted by Patent Hawk at 8:47 PM | Claim Construction

August 24, 2007

Inventorship by Jury

Frank Shum is an optical engineer. In the late 1990s, Shum worked with Jean-Marc Verdiell. The relationship soured. Shum alleged that Verdiell fraudulently misappropriated technology developed by Shum. When Intel acquired Verdiell's company, and its patents, for $409 million in stock, Shum sued.

Continue reading "Inventorship by Jury"

Posted by Patent Hawk at 9:39 PM | Case Law

August 22, 2007

Waiving Under Willfulness

Seagate appeals an order to disclose what would ordinarily be privileged attorney-client communications between it and trial counsel. The springboard for waiving the privilege by the district court is a finding of willful patent infringement. The issue before the appeals court is proper scope of discovery when relying upon advice of counsel, and the advice sours. But the CAFC goes far beyond that: in a unanimous en banc reversal of its own precedent of waiving privilege, the appeals court gratuitously furthers the recent judicial trend in eviscerating patent enforcement, redefining willful infringement without provocation, an issue orthogonal to that which it put before itself.

Continue reading "Waiving Under Willfulness"

Posted by Patent Hawk at 1:48 PM | Case Law

July 27, 2007

Patent-Free Research

The waves unleashed by recent Supreme Court decisions have swelled a sea change of judicial attitude that continue to erode patent protection, furthered today by appeals court carelessness. Integra Lifesciences sued Merck, Scripps, and researcher Dr. David Cheresh for infringing five patents. The defendants invoked 35 U.S.C. §271(e)(1), which exempts genetic experiments for new drug research from patent infringement. At issue was the breadth of the exemption. Back to the CAFC after a SCOTUS decision broadening the exemption, the CAFC inadvertently includes research tools, a ruling which could, according to the dissent, "shift all control of research and the patented tools that facilitate research to the insular pharmaceutical industry."

Continue reading "Patent-Free Research"

Posted by Patent Hawk at 9:21 PM | Case Law | Comments (3)

May 7, 2007

Keeping the Software Down

In spite of the Supreme Court broadly opining in 1980 that "anything under the sun made by man is patentable," the SCOTUS ruling in Microsoft v. AT&T on April 30 was designed, from a patent standpoint, to maintain relegation of software as a second-class technology.

Continue reading "Keeping the Software Down"

Posted by Patent Hawk at 8:31 PM | Case Law

April 30, 2007


In its landmark decision of KSR v. Teleflex, reversing the appeals court, the Supreme Court has broadened the interpretive scope of 35 U.S.C. § 103(a), the obviousness clause. Patentable subject matter is thus constricted. In the large, in light of the ruling, a known combination of elements are only patentable if their combined functionality yields the unexpected. What was once impermissible hindsight is now permissible.

Continue reading "Obzilla"

Posted by Patent Hawk at 2:16 PM | Prior Art | Comments (2)

February 27, 2007

Filler Thriller 2

In its second appearance before the Court of Appeals (CAFC 2006-1407), Aquatex v. Technique Solutions, applying the doctrine of equivalents in light of prosecution estoppel, and functional equivalence, are the issues at hand. Can Aquatex have its 6,371,977 patent claims for fiberfill apply to non-synthetic material? A surprising conclusion of ineptitude.

Continue reading "Filler Thriller 2"

Posted by Patent Hawk at 1:04 PM | Case Law

February 21, 2007

Government Protection

Sevenson Environmental Services sued Shaw Environmental for infringing patents related to hazardous waste treatment. Shaw countered that it was immune under 28 U.S.C. § 1498 as a government contractor. District court summary judgment affirmed by the appeals court (CAFC 06-1391).

Continue reading "Government Protection"

Posted by Patent Hawk at 10:51 AM | Case Law

February 9, 2007

Deep Freeze

Dippin' Dots owns 5,126,156, which claims a process for making ice cream. "The Dippin’ Dots brand is known to patrons of amusement parks, stadiums, shopping malls, and the like." After Dippin's distributors turned competitors, Dippin' flipped into patent enforcement, suing left and right. Counterclaim included antitrust, on what defendants called a fraudulently acquired patent. Claim construction, infringement, prior art (including a newly minted definition of "obvious"), inequitable conduct; it's all in the dip. (CAFC 05-1330)

Continue reading "Deep Freeze"

Posted by Patent Hawk at 3:14 PM | Claim Construction

January 25, 2007


In a 2-1 split decision, the appeals court vacated and remanded a district court dismissals of a patent antitrust claim, where the patent was under a fog of accused fraud, and, separately argued, breach of contract related to patented technology. (CAFC 2006-1188).

Continue reading "Fitting"

Posted by Patent Hawk at 2:46 PM | Case Law

January 19, 2007

Terminal Disclaimer & Extension

Merck owns 4,797,413, a CIP of a CIP of a CIP, terminally disclaimed at the end of June, 2004, but granted a three-and-a-half year extension by the USPTO because it took the FDA almost six years to okay Merck's dorzolamide (trade name: Trusopt), the drug for glaucoma treatment claimed by the patent. Merck claims the extension rides on the tail of the terminal disclaimer, extending the patent to the end of 2007. Hi-Tech Pharmaceutical wants to market a generic version, and says there is no tail to a terminal disclaimer, at least in this instance. A New Jersey district court ruling favored Merck; a ruling Hi-Tech appealed. No appeals court decision yet, but the murky intersection between terminal disclaimer and patent extension may be plowed clear as a result.

Continue reading "Terminal Disclaimer & Extension"

Posted by Patent Hawk at 12:04 AM | Case Law

January 18, 2007

Privity & Judicial Estoppel

5,318,080 claims a device for changing automatic transmission fluid. Transclean is exclusive licensee. In October 1997, Transclean sued Bridgewood, a maker of transmission service equipment, for infringement, and won. Then Transclean went after Bridgewood's customers.

Continue reading "Privity & Judicial Estoppel"

Posted by Patent Hawk at 12:14 PM | Case Law

January 4, 2007

Federal Circus

fedcirc.us is a new blog dedicated to slow-roasted reviews of federal circuit decisions, hosted by inveterate patent law bloggers Matt Buchanan, Stephen Nipper, and Doug Sorocco. Welcome!

Continue reading "Federal Circus"

Posted by Patent Hawk at 1:57 PM | Case Law

December 15, 2006

Shields Up

Things are running hot between L&W and Shertech, manufacturers of heat shields for autos. Starting the fracas, L&W sought declaratory judgment of non-infringement against Shertech's 5,670,264, also arguing invalidity and inequitable conduct unenforceability. Shertech naturally counterclaimed infringement, which the district court granted in summary judgment. Then a jury trial on invalidity, where only claim 7 survived.

Continue reading "Shields Up"

Posted by Patent Hawk at 12:04 AM | Case Law

December 14, 2006


DSU Medical sued Japanese medical supply company JMS and SE Asian manufacturer ITL for direct, inducement, and contributory infringement of 5,112,311 and 5,266,072, which claim a guarded winged-needle device that reduces the risk of getting stuck with the needle. The defendants avoided getting stuck with claims 46-47 and 50-52 of '311 by proving invalidity, but JMS got jabbed $5 million for infringing '311 claims 49, 53-54. Though long-winded in doing so, the CAFC (04-1620) wholly concurred with the trial court.

Continue reading "Jabbed"

Posted by Patent Hawk at 11:09 AM | Claim Construction

October 29, 2006

Still Rising

As reported in the Patent Prospector last month, Ms. Yoon Ja Kim lost an appeal in enforcing her patent, RE36,355, against ConAgra. Ms. Kim's admirable spunk is displayed herein by her comments regarding her concerns.

Continue reading "Still Rising"

Posted by Patent Hawk at 1:19 PM | Case Law

October 27, 2006

International Evasion

The Supreme Court today granted certiorari for Microsoft in its appeal (from CAFC 04-1285) against patent infringement conviction of AT&T's RE 32,580. The issue is 35 U.S.C. § 271(f).

Continue reading "International Evasion"

Posted by Patent Hawk at 11:59 AM | Case Law

August 18, 2006

Tissue Issues

Cook Biotech, exclusive licensee, and Purdue Research Foundation, owner of 5,554,389, sued ACell for infringement. In the appeal (CAFC 05-1458), there was a significant issue of claim construction, an interesting insight into seeking damages, and an applied corollary to the "all limitations" rule in figuring infringement under the doctrine of equivalents.

Continue reading "Tissue Issues"

Posted by Patent Hawk at 12:33 PM | Case Law

August 10, 2006

State Immunity XI, Take 2

The University of Texas sued 48 cell phone companies in the Western District of Texas for infringing 4,674,112, which claims predictive typing. Tegic Communications, a Washington state company that sells the software for 39 of the 48 companies, filed for declaratory judgment in the Western District of Washington. The University sought to dismiss the case in Washington on several grounds, including state immunity from suit in federal courts under the 11th Amendment. Case dismissed. Upon appeal, same result (CAFC 05-1553).

Continue reading "State Immunity XI, Take 2"

Posted by Patent Hawk at 10:16 PM | Case Law

August 9, 2006

Protecting its Own

By the power of the XI Amendment to the Constitution, the United States indemnifies its states. Protected by the Constitution, a state may infringe a patent without practical remedy afforded the patent holder, the Federal Appeals Court affirmed today (05-1440).

Continue reading "Protecting its Own"

Posted by Patent Hawk at 11:57 AM | Case Law

June 19, 2006

Depressing No-Go

The Supreme Court turned away (05-489) an appeal by GlaxoSmithKline (v. Apotex) for the CAFC upholding an invalidity ruling on a GlaxoSmithKline patent for Paxil®, an antidepressant. The CAFC had ruled, "once a product is fully disclosed in the art, future claims to that same product are precluded, even if that product is claimed as made by a new process." The U.S. Solicitor General had declared the CAFC ruling correct.

Posted by Patent Hawk at 11:46 AM | Case Law

June 14, 2006

Game Call Totality

Primos sued Hunter's Specialties for infinging 5,520,567 & 5,415,578, for a product used by "outdoor enthusiasts" to deceive wildlife. Trial didn't go well for Hunter's: literal infringement, willfulness, inducement of infringement ('567), and infringement under the doctrine of equivalents ('578). The appeal didn't go well either. [CAFC 05-1001]

Continue reading "Game Call Totality"

Posted by Patent Hawk at 12:56 PM | Litigation

June 12, 2006

Contract Dispute

Panduit sued HellermannTyton for infringing 5,998,732. They settled. Then HellermannTyton pushed Panduit's button with a modestly revised design of the original infringing product.

Continue reading "Contract Dispute"

Posted by Patent Hawk at 11:10 PM | Litigation

June 7, 2006

Solicitor General Deflated

Tom Goldstein, representing Teleflex in the KSR v. Teleflex obviousness petition before the Supreme Court, filed a supplemental brief deflating the Solicitor General's (SG) certiorari recommendation as vacuous.

Continue reading "Solicitor General Deflated"

Posted by Patent Hawk at 1:18 PM | Case Law

June 1, 2006

Sludge Match

Liquid Dynamics (LD) sued Vaughan Company for infringing 5,458,414. In the first round, LD successfully appealed an erroneous claim construction. Upon remand, a district court trial found Vaughan willfully infringed, and then in a subsequent bench trial, trebled damages and awarded attorneys fees because of "Vaughan’s behavior as a litigant," as well as then issuing a permanent injunction. Naturally, Vaughan appealed (CAFC 05-1105).

Continue reading "Sludge Match"

Posted by Patent Hawk at 2:16 PM | Case Law

May 8, 2006

Privilege & Discovery

In the TiVo v. EchoStar case which TiVo recently won, the issues of document revelation with regard to opinion counsel & attorney-client privilege, and discovery of work-product documents, came into play. In a ruling May 4, the appeals court (Misc-803o) clarified: [1] if relying upon opinion counsel to avoid willful infringement, attorney-client privilege is completely waived for the relevant subject matter; [2] work-product discovery is limited to determining the "infringer's state of mind". The court stated: "The attorney-client privilege and the work-product doctrine, though related, are two distinct concepts and waiver of one does not necessarily waive the other." "[D]ocuments analyzing the law, facts, trial strategy, and so forth that reflect the attorney’s mental impressions but were not given to the client... [are] not discoverable."

Continue reading "Privilege & Discovery"

Posted by Patent Hawk at 11:22 PM | Case Law

January 24, 2006

Blunt Instrument

United States Surgical appealed a lower court patent infringement decision in favor of Applied Medical over 5,385,553, feeling a bit put out about the $64.5 million judgment for enhanced willful infringement damages, the vig (known as "interest" to you non-mafioso), and attorneys fees. Scalpel not in evidence, the CAFC (05-1149) used a blunt instrument.

Continue reading "Blunt Instrument"

Posted by Patent Hawk at 11:18 AM | Damages

January 10, 2006

Process Component

The CAFC turned down a request for an en banc hearing in Union Carbide v. Shell (CAFC 04-1475o) to consider whether § 271(f) applies to method/process inventions, having previously decided it does. The dissent made a lot of sense.

Continue reading "Process Component"

Posted by Patent Hawk at 10:45 AM | Case Law

January 9, 2006

SeaChange Downstream

nCube sued SeaChange for infringing 5,805,804. In a jury trial, SeaChange got nailed badly: SeaChange had to pay double the damages for willful infringement, and two-thirds of nCube's attorneys fees. So SeaChange asked for a new trial, was turned down, and so appealed (CAFC 03-1341); to no avail.

Continue reading "SeaChange Downstream"

Posted by Patent Hawk at 11:24 AM | Litigation

October 26, 2005

Shopping Carted

Dane Industries sued Ameritek Industries for infringement of two patents - 6,220,379 and 5,934,694, regarding a vehicle that retrieves shopping carts. Dane held the patents, but the inventor went to work for Ameritek.

Continue reading "Shopping Carted"

Posted by Patent Hawk at 10:36 AM | Case Law

September 7, 2005

Top Secret

5,286,129, owned by Crater Corp., claimed a conduit coupler for various uses, including electrical conduits and fluid flow systems. Lucent Technologies approached Crater to share trade secret information about the Crater coupler. The two companies coupled on the coupler, until the relationship came uncoupled.

Breaching the agreement with Crater, Lucent produced an infringing coupler, which it sold to the U.S. Navy. Protecting Lucent, the Navy had the whole business declared a state secret.

Continue reading "Top Secret"

Posted by Patent Hawk at 6:44 PM | Case Law

August 10, 2005

Trying To Tie With a Terminal Disclaimer

Par Pharmaceutical filed an application with the FDA to market a generic version of Xalatan, for treating glaucoma, a drug patented by Pharmacia (5,422,368 & 5,296,504). So Pharmacia sued for patent infringement. [ Pharmacia v. Par Pharmaceutical, Fed. Cir. 04-1478, August 10, 2005 ]

Continue reading "Trying To Tie With a Terminal Disclaimer"

Posted by Patent Hawk at 5:12 PM | Case Law | Comments (1)

July 5, 2005

Prosecution Estoppel - A Sea Change

Seachange sued C-COR for patent infringement (5,862,312) for a video server system. The district court found for Seachange, and the Appeals Court (CAFC) (04-1375), in a sea change finding of non-infringement, tilted for C-COR, based upon prosecution estoppel that significantly limited the scope of the asserted claim.

Continue reading "Prosecution Estoppel - A Sea Change"

Posted by Patent Hawk at 12:00 AM | Case Law