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Fish Federal Circuit Summary Service: Issue #308

January 17, 2008

Newsletters

Fish Federal Circuit Summary Service: Issue #308

January 17, 2008

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Pre-Suit Letter Failing To Identify Patentee Was Still A 287(a) Notice If Assignment Information on The Face of The Patent Identified The Correct Owner; All Limitations Rule Inapplicable.
U.S. Philips Corp. v. Iwasaki Elec. Co. Ltd.
Click here to download the case
Date: November 2, 2007
Panel: Newman, Lourie, Linn
Author: Linn
District Court: S.D.N.Y.
Trial Judge Castel
Summary: Fed Cir reverses partial summary judgment denying pre-suit damages, affirms judgment of no literal infringement, and vacates partial summary judgment of noninfringement under the doctrine of equivalents. The patent-in-suit relates to high-pressure mercury vapor discharge lamps filled with a gaseous mixture in which “at least one of the halogens Cl, Br or I is present in a quantity between 10-6 and 10-4 µmol/mm3.”

Pre-suit damages: U.S. Philips did not mark its products. Before the filing of the suit, a patent portfolio manager working for Philips International (another company within U.S. Philips’s corporate family) sent the patent-in-suit and a pre-suit letter on Philips International’s letterhead to Iwasaki regarding potential infringement of the patent-in-suit, but failed to identify the patent owner. The Fed Cir provided two reasons for holding that such a letter constituted sufficient notice under 35 U.S.C. 287(a) notwithstanding Lans v. Digital Equipment Corp., 252 F.3d 1320 (Fed. Cir. 2001) (ruling that letter from inventor and sole shareholder of assignee was insufficient pre-suit notice because it was not sent by the patent owner). First, “[a]lthough the assignation printed on the face of a patent is not a conclusive indication of the patent’s current ownership, we hold that when the information printed on the patent is correct, it is enough to put an accused infringer on notice of the patentee’s identity.” Slip op. at 7. Second, while not the assignee of record, Philips International (the sender of the letter) was the party handling all licensing activities for U.S. Philips, and was thus the correct party with whom Iwasaki could informally resolve the dispute, discuss design changes to avoid infringement, and negotiate a valid license.

Literal Infringement: The Fed Cir rejected U.S. Philips’s argument that “between 10-6 and 10-4” encompassed the range of “3.2 × 10-7 to 3.2 × 10-4,” because “the overall phrase-‘a quantity between ____ and ____’-is a construction that ‘implies a specific range . . . . It does not imply a range between two values which are themselves ranges.’ The limitation does not refer to either bound as a range, an order of magnitude, or an approximation.” Slip op. at 8-9 (ellipsis in opinion). The Fed Cir declined to address whether Iwasaki’s product could literally infringe as a result of rounding, because U.S. Philips waived this issue when it failed to challenge in its opening brief the district court’s ruling regarding rounding.

Doctrine of equivalents: Iwasaki argued that the doctrines of vitiation and prosecution history estoppel precluded application of the doctrine of equivalents. Disagreeing with the claim of vitiation, the Fed Cir “conclude[d] that resort to the doctrine of equivalents is not foreclosed with respect to the claimed concentration range.” Slip op. at 12. The Fed Cir distinguished three of its vitiation cases as inapplicable here, because (i) in Moore U.S.A. [229 F.3d at 1106], the doctrine of equivalents would cover the “antithesis” of the claimed limitation; (ii) in Cooper Cameron [291 F.3d at 1319], application of the doctrine of equivalents would have eliminated a limitation describing the spatial relationship between recited structures; and (iii) in Elekta [214 F.3d at 1304], the claim used the word “only” and the court did not reach the question of infringement by equivalents. Moreover, while U.S. Philips specified the upper number of the claimed range to avoid the prior art, prosecution history estoppel did not apply where there was no narrowing amendment. Analyzing the issue under the “hypothetical claim” analysis of Wilson Sporting Goods, the Fed Cir ruled that the doctrine of equivalents may be applicable to these facts.

KEY WORDS:DAMAGES (YES), MARKING (NO), 287(A), PRE-SUIT NOTICE (YES), CLAIM CONSTRUCTION (BROAD), NUMERICAL RANGE, DOCTRINE OF EQUIVALENTS (YES), VITIATION (NO), HYPOTHETICAL CLAIM ANALYSIS

No Burden Shifting In Section 285 Motions For Attorney Fees; No Heightened Pre-Suit Investigation Requirement For Patents Sold “As Is”
Digeo, Inc. v. Audible, Inc.
Click here to download the case
Date: November 1, 2007
Panel: Michel, Moore, Cote (sitting by designation)
Author: Michel
District Court: W.D. Wash.
Trial Judge: Robart
Summary: Fed Cir affirms denial of motion for attorney fees under 35 U.S.C. 285 and denial of additional discovery to develop the section 285 claim. Digeo purchased the patent-in-suit “as is” during a bankruptcy sale without knowing that the named inventor was not deceased as suggested in the prosecution history and that the assignments were forgeries. Audible discovered these facts during litigation and secured a license from the named inventor, prompting a dismissal of the suit and a motion for attorney fees which the district court denied.

On appeal, the Fed Cir first ruled that the district court was within its discretion in determining that the case was not exceptional. Second, in response to Audible’s argument that the burden of proof should have shifted to Digeo, the Fed Cir held that, under Federal Circuit law, there is no burden-shifting as in FRCP 11 cases, so that the moving bears at all time the burden of showing by clear and convincing evidence that the case was exceptional. Third, the court of appeals rejected a heightened standard of pre-suit investigation for patents purchased “as is,” and ruled that there was evidence of negligence in Digeo’s failing to detect the title defect. Finally, applying regional circuit law, the Fed Cir determined that the district court was within its discretion in denying Audible’s request for additional discovery into Digeo’s pre-suit investigation, especially where Audible failed to make its motion diligently and only supported its motion with mere speculations.

KEYWORDS: ATTORNEY FEES (NO), EXCEPTIONAL CASE (NO), BURDEN SHIFTING (NO), RULE 11, SECTION 285, HEIGHTENED STANDARD (NO), PRE-SUIT INVESTIGATION

Priority To Foreign Application In Interference Focuses On Satisfaction of Section 112, Not On The Inventor’s Mental State
Frazer v. Schlegel
Click here to download the case
Date: August 20, 2007
Panel: Newman, Friedman, Rader
Author: Newman
District Court: BPAI
Summary: Fed Cir reverses and remands priority award to senior party Schlegel regarding a vaccine against human papillomavirus virus. Schegel filed his patent application in 1992, while Frazer’s 1994 U.S. application claimed ultimate priority back to an Australian application filed in 1991. Reasoning that Frazer did not accurately and fully understand the mechanism of the invention until after 1991, the PTO determined that Frazer did not conceive of the invention in 1991 and thus denied Frazer’s claim of priority. The Fed Cir disagreed with the PTO’s treatment of the priority issue as one of conception, viewing the issue as one of constructive reduction to practice: “Although the Board analyzed the Australian application in terms of ‘conception,’ when reliance is on a patent document already filed, the question is whether the document discloses the invention of the count by meeting the written description and enablement requirements of 35 U.S.C. § 112 ¶ 1, for a filed application serves as a constructive reduction to practice of its content.” Slip op. at 8. Frazer’s filing of the foreign application constituted constructive reduction to practice, which was enabling and which provided complete details of the subject of the interference count. Failure to appreciate certain aspect of the technology and an inventor’s acknowledgment of the complexities of science do not negate the enabling disclosure of the foreign application.

KEYWORDS: INTERFERENCE, PRIORITY, FOREIGN APPLICATION, CONSTRUCTIVE REDUCTION TO PRACTICE (YES), PRIORITY (YES)

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