PATENT LAW
Randy Canis
CLASS 12
Infringement pt. 2
1
Review from Last Week
Let’s start with a review from last
week to get us up to limitations on the
doctrine of equivalents
2
Infringement
•
•
•
•
A patent grants to patent owner rights of
exclusion, i.e., to prevent infringement,
by
excluding others from making
excluding others from using
excluding others from selling
excluding others from offering for sale in
the United States or importing into U.S.
3
§ 271. Infringement of
patent:
(a) Except as otherwise provided in
this title, whoever without authority
makes, uses, offers to sell, or sells
any patented invention, within the
United States or imports into the
United States any patented invention
during the term of the patent therefor,
infringes the patent.
4
Infringement can be:
•
•
•
•
making without selling or using, or
using without making or selling, or
selling without making or using, or
offering for sale without making or
selling
5
Infringement cannot occur if:
•
•
•
•
patent is expired (20 yr. fm FD)
patent is not being maintained
patent claims subject to
terminal disclaimer (earlier patent
expired?)
•
patent is not valid
•
claims were fraudulently obtained
by inequitable conduct
6
Infringement does not occur
• If product or process made or used w/o
authority for experimental or other
nonprofit purposes (EXCEPTION: Filing NDA
is infringement, discussed later)
• as long as activity is NOT carried out for a
commercial purpose
• or where no intent to profit or to do
business based upon experiment
• or for purpose of getting data for FDA
application? See Intermedics case
• if excluded by Sec.271(e)(1), infra.
7
Infringement does not occur
when:
• Use of a patented product is on a
vessel, aircraft or vehicle temporarily
present in the United States.
• Example: fish processing aboard
ship using a patented process
• Example: patented device travels
and/or is used in foreign aircraft flown
to and from U.S.
8
Infringement may not occur
• Of a foreign patent by making, using
or selling in the United States
• A publication (e.g., foreign or intl.
published patent) is copied in U.S.
• Exception: Omnibus Reform Act:
published US applications can be
held to be infringed subject to later
issuance of patent
9
Infringement does not occur
when:
• One who purchases a patented
product from one with authority to sell
it for use in the United States uses
that product or sells that product
• Example: Patented electric motor
bought from motor maker or
distributor then used in solar-powered
car
10
Infringement does not occur
when:
• One who purchases a patented
product from one with authority to sell
it for use in the United States:
• purchaser makes repairs on the
product
necessary for continued use BUT
• purchaser may NOT reconstruct a
completely spent product (Infringes!)
11
Infringement Defenses
• Plaintiff is not a proper party to bring suit
• Plaintiff is not the patent owner or
exclusive licensee of the patent owner and
authorized by owner to bring suit
• Patent or patent term has expired
• Patent has lapsed for failure to pay
maintenance fees
• Defendant has not performed the acts
alleged
12
Infringement Defenses
• Defendant was not a party to the acts of
infringement alleged
• Defendant was authorized to perform the
acts alleged to be infringing:
– By agreement with patent owner or owner's
agent
– Acting under a plaintiff’s license to another
party
• No claim of patent reads on allegedly
infringing item
13
Infringement Defenses
• Even where no literal infringement, no
claim of patent can be construed to cover
allegedly infringing item under doctrine of
equivalents
• Patent is invalid because
–
–
–
–
It claims unpatentable subject matter
Named inventor is not the true inventor
Inventor made false material statement
Inventor/others violated duty of candor, e.g. in
failing to disclose material prior art
14
Infringement Defenses
• Invention was anticipated by prior art (i.e.
was not novel in view of the prior art)
• Invention is obvious over prior art to
PHOSITA at the time of the invention
(PHOSITA: Person having ordinary skill in
the art of the invention)
15
Infringement Defenses
Standards
• Prior art is determined in reference to
the effective filing date, taking into
account claims of priority.
• Patent “is born valid” so-• Burden is on accused infringer to
introduce pertinent prior art or false
statement and to demonstrate its
materiality.
16
Infringement from use?
• Chiefly an issue of method or process
• Issue of “use'' of invention rarely arises
except in patented method or process
• Mere possession of pat’d device n.i.
• But sales demos/displays may infringe
• Whether sales demos or displays are
“uses'' not so relevant because since
1996, “offer to sell'' is an infringement
17
Infringement Under the Doctrine
Equivalents
• First Inquiry - Does a device or
method literally infringe one or more
claims of a patent?
• Second Inquiry - Does a device or
method infringe one or more claims
of a patent under the doctrine of
equivalents (DOE)?
18
Direct Infringement
• Graver Tanks v. Linde Air Products Co.
– “The essence of the doctrine [of
equivalents] is that one may not practice a
fraud on the patent. …
– “What constitutes equivalency must be
determined against the context of the
patent, the prior art, and the particular
circumstances of the case. …
– “A finding of equivalence is a determination
of fact. …”
19
What is direct infringement?
• Graver Tank & Mfg. Co. v. Linde Air
Products Co., 339 U.S. 605, 85 USPQ 328
(1950), said "In determining whether an
accused device or composition infringes a
valid patent, resort must be had in the first
instance to the words of the claim. If
accused matter falls clearly within the
claim, infringement is made out and that is
the end of it.''
20
What if not literal infringement?
• Graver Tank: "But courts have also
recognized that to permit imitation of
a patented invention which does not
copy every literal detail would be to
convert the protection of the patent
grant into a hollow and useless
thing... . Outright and forthright
duplication is a dull and very rare
type of infringement.”
21
Graver Tank
Said the Supreme Court: "To prohibit
no other would place the inventor at the
mercy of verbalism and would be
subordinating substance to form. It
would deprive him of the benefit of his
invention and would foster concealment
rather than disclosure of inventions,
which is one of the primary purposes of
the patent system.”
22
Doctrine of Equivalents
Graver Tank: "The doctrine of
equivalents evolved in response to
this experience. The essence of the
doctrine is that one may not practice
a fraud on a patent... .”
23
If not literally the same, is accused
device equivalent?
Graver Tank: "What constitutes
equivalency must be determined
against the context of the patent, the
prior art, and the particular
circumstances of the case."
24
Graver test for equivalence:
FUNCTION-WAY-RESULT*
Graver Tank: "If two devices do the
same work in substantially the same
way, and accomplish substantially
the same result, they are the same,
even though they differ in name, form
or shape.”
*FWR
25
A more recent test for
equivalence
• To the Graver Tank v. Linde Air
Products FWR test was added:
• test of “substantial differences”
by U.S. Supreme Court in
• Warner-Jenkinson Co. v. Hilton Davis
Chemical Co., 520 U.S. 17, 37, 41
USPQ2d 1865, 1874 (1997).
26
Warner-Jenkinson Company v. Hilton
Davis Chemical Co.
• Procedural Background
• Factual Background
• Issue:
– How did the ’52 Patent Act change the
Doctrine of Equivalents? Clarifying the
proper scope of the doctrine of
equivalents.
27
Warner-Jenkinson Company v. Hilton
Davis Chemical Co.
• Let’s talk about…
– What is the doctrine of equivalents?
– Why do we have the doctrine of
equivalents?
28
Warner-Jenkinson Company v. Hilton
Davis Chemical Co.
• The Doctrine of Equivalents
– “… [A] product or process that does not
literally infringe upon the express terms
of a patent claim may nonetheless be
found to infringe if there is ‘equivalence’
between the elements of the accused
product or process and the claimed
elements of the patented invention.”
29
Warner-Jenkinson Co. v. Hilton Davis
• Supreme Court said:
“The trial court used the threepronged function-way-result test
(FWR) in Graver Tank for its doctrine
of equivalents analysis. This court
has recently clarified en banc the
proper application and context for this
test. ...
30
Warner-Jenkinson Co. v. Hilton Davis
• “Hilton Davis says it goes too far to
describe that the function-way-result
test as `the test' for equivalents. ...
Evidence beyond function, way, and
result informs application of the
doctrine, which focuses on the
substantiality of changes from the
claims in the accused device. ...
31
Warner-Jenkinson Co. v. Hilton Davis
• “One of ordinary skill in the relevant
art provides the perspective for
assessing the substantiality of
differences between the claims and
the accused device. ... `The test is
objective with proof of the
substantiality of the differences
resting on objective evidence.' …”
32
Warner-Jenkinson Co. v. Hilton Davis
• In considering whether there is
equivalency, determination must be
made on an element-by-element
basis.
• That is, the differences between the
claims asserted and the accused
construction (or method) must be
considered element by element.
33
Warner-Jenkinson Company v. Hilton
Davis Chemical Co.
• From Graver Tank
– “"What constitutes equivalency must be determined
against the context of the patent, the prior art, and the
particular circumstances of the case. Equivalence, in the
patent law, is not the prisoner of a formula and is not an
absolute to be considered in a vacuum. It does not
require complete identity for every purpose and in every
respect. In determining equivalents, things equal to the
same thing may not be equal to each other and, by the
same token, things for most purposes different may
sometimes be equivalents. Consideration must be given
to the purpose for which an ingredient is used in a
patent, the qualities it has when combined with the other
ingredients, and the function which it is intended to
perform. An important factor is whether persons
reasonably skilled in the art would have known of the
interchangeability of an ingredient not contained in the
patent with one that was."
34
Warner-Jenkinson Company v. Hilton
Davis Chemical Co.
• “Each element contained in a patent
claim is deemed material to defining
the scope of the patented invention,
and thus the doctrine of equivalents
must be applied to individual
elements of the claim, not to the
invention as a whole.”
35
Warner-Jenkinson Company v. Hilton
Davis Chemical Co.
• What is “prosecution history estoppel” and “file wrapper
estoppel?
– You can’t claim that something is covered by the doctrine of
equivalents if it was given up during patent prosecution.
– “In our view, holding that certain reasons for a claim
amendment may avoid the application of prosecution history
estoppel is not tantamount to holding that the absence of a
reason for an amendment may similarly avoid such an
estoppel. Mindful that claims do indeed serve both a
definitional and a notice function, we think the better rule is to
place the burden on the patent holder to establish the reason
for an amendment required during patent prosecution.”
• Does the intent of the potential infringer matter when
considering the scope of the doctrine of equivalents?
36
Warner-Jenkinson Company v. Hilton
Davis Chemical Co.
• “The determination of equivalence should be
applied as an objective inquiry on an element by
element basis. …
• Prosecution history estoppel continues to be
available as a defense to infringement, but if the
patent holder demonstrates that an amendment
required during prosecution had a purpose
unrelated to patentability, a court must consider
that purpose in order to decide whether an
estoppel is precluded. Where the patent holder is
unable to establish such a purpose, a court
should presume that the purpose behind the
required amendment is such that prosecution
history estoppel would apply.
37
Where no direct infringement, is
doctrine of equivalents safe haven
for the patentee?
• The limitation on this doctrine of
equivalents is prosecution history
estoppel: patent owner may not
claim equivalents infringement by
device or method that includes a
feature or step surrendered by
amendment to the patent claim
during prosecution.
38
Limitations on DOE
Chapter 11.3
• In what ways might the Doctrine of
Equivalents be limited?
– “All Elements” rule
– Prosecution History Estoppel
– Scope of Prior Art
39
“All Elements” Rule
• “[T]he doctrine of equivalents can
only apply to an accused product or
process that contains each limitation
of a claim, either literally or
equivalently.”
• How is the “all elements” rule
applied?
40
Pennwalt Corp v. Durand-Wayland
• “[I]n applying the doctrine of equivalents,
each limitation must be viewed in the
context of the entire claim… ‘It is … well
settled that each element of a claim is
material and essential, and that in order for
a court to find infringement, the plaintiff
must show the presence of every element
or its substantial equivalent in accused
device.’ Lemelson v. United States, 752
F.2d 1538…”
41
Corning Glass Works v. Sumitomo Electrical USA,
Inc.
• What is the invention?
– Optical waveguide fibers (i.e., a fiber
optic cable with a low signal attenuation
rate)
• Who are the parties?
– Corning – assignee of the three patents
– SEI and its subsidiaries
• On what grounds did the district court
find infringement?
42
Corning Glass Works v. Sumitomo Electrical USA,
Inc.
• “Although each claim limitation may
not literally be found in the accused
structure, the ‘substantially the same
way’ prong of the Graver Tank test is
met if an equivalent of a recited
limitation has been substituted in the
accused device.”
43
Corning Glass Works v. Sumitomo Electrical USA,
Inc.
• “‘Element’ may be used to mean a single
limitation, but it has also been used to
mean a series of limitations which, taken
together, make up a component of the
claimed invention. In the All Elements
rule, ‘element’ is used in the sense of a
limitation of a claim. … An equivalent must
be found for every limitation of the claim
somewhere in an accused device, but not
necessarily in a corresponding component,
although that is generally the case.”
44
Corning Glass Works v. Sumitomo Electrical USA,
Inc.
• “Although each claim limitation may
not literally be found in the accused
structure, the “substantially the same
way” prong of the Graver Tank test is
met if an equivalent of a recited
limitation has been substituted in the
accused device.”
45
Corning Glass Works v. Sumitomo Electrical
USA, Inc.
• Ruling
– Affirmed.
• Holding
• Dicta
46
Prosecution History Estoppel
• What range of equivalents are you entitled
to when you amend claims during
prosecution?
• Hilton Davis decision added a stronger
prosecution history estoppel rule. Under
the new rule, where the record does not
reveal the reason for a claim amendment
made during prosecution, a rebuttable
presumption arises that the amendment
was made "for reasons of patentability.”
47
Festo Corp. v. Shoketsu
Kinzoku
• Federal Circuit C.A. in Festo
Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co. considered
charges that Festo's patents on
"magnetically coupled rodless
cylinders" were infringed under
the doctrine of equivalents.
48
Festo Corp. v. Shoketsu
Kinzoku
• Court considered whether to
apply prosecution history
estoppel under its previous
"flexible bar," even if such
charges were barred for the preamended claims (that is, before
making the amendment during
prosecution).
49
Festo Corp. v. Shoketsu
Kinzoku
• In an 8-4 ruling, the en banc Federal
Circuit abandoned its flexible bar and
adopted a complete bar against
equivalents infringement for the
amended claims in the issued patent.
50
Festo Corp. v. Shoketsu
Kinzoku
• The Federal Circuit court in also
held 11-1 that prosecution history
estoppel applies to any
amendment that narrows the
scope of a claim for any reason
related to patentability, not just to
avoid prior art.
51
Festo Corp. v. Shoketsu
Kinzoku
• In June 2001, the Supreme Court
granted Festo's petition for
certiorari, which presented the
following questions:
52
Festo Corp. v. Shoketsu
Kinzoku
Issue #1 on Appeal at Supreme Court
• Whether every claim-narrowing
amendment designed to comply with
any provision of the Patent Act-including those provisions not related
to prior art--automatically creates
prosecution history estoppel
regardless of the reason for the
amendment; and
53
Festo Corp. v. Shoketsu
Kinzoku
Issue #2 on Appeal at Supreme Court
• Whether the finding of prosecution
history estoppel completely bars the
application of the doctrine of
equivalents.
54
Festo Corp. v. Shoketsu
Kinzoku
• “Prosecution history estoppel requires that the
claims of a patent be interpreted in light of the
proceedings in the PTO during the application
process. Estoppel is a ‘rule of patent
construction’ that ensures that claims are
interpreted by a reference to those ‘that have
been cancelled or rejected.’ … The doctrine of
equivalents allows the patentee to claim those
insubstantial alterations that were not
captured in drafting the original patent claim
but which could be created through trivial
changes.”
55
Festo Corp. v. Shoketsu
Kinzoku
• “When, however, the patentee
originally claimed the subject matter
alleged to infringe but then narrowed
the claim in response to a rejection,
he may not argue that the
surrendered territory comprised
unforeseen subject matter that should
be deemed equivalent to the literal
claims of the issued patent…”
56
Festo Corp. v. Shoketsu
Kinzoku
• “A rejection indicates that the patent
examiner does not believe the
original claim could be patented.
While the patentee has the right to
appeal, his decision to forgo an
appeal and submit an amended claim
is taken as a concession that the
invention as patented does not reach
as far as the original claim.”
57
Festo Corp. v. Shoketsu
Kinzoku
Holding on Issue #1
• “… [A] narrowing amendment made to satisfy any
requirement of the Patent Act may give rise to an
estoppel.”
• A patentee who narrows a claim as a condition for
obtaining a patent disavows his claim to the
broader subject matter, whether the amendment
was made to avoid the prior art (not for other
reasons tangential to patentability). In either
event ... estoppel can apply as to elements
narrowed by amendment.
58
Festo Corp. v. Shoketsu Kinzoku
Holding on Issue #2
• Prosecution history estoppel is not a
complete bar to assertion of the doctrine of
equivalents. … “Warner-Jenkinson held that
the patentee bears the burden of proving that an
amendment was not made for a reasons that
would give rise to estoppel, we hold here that the
patentee should bear the burden of showing that
the amendment does not surrender the particular
equivalent in question.”
59
Festo remanded to Federal
Circuit - what happened there?
Sept. 26, 2003, Fed. Cir. concluded
that a patentee failed in part to
overcome prosecution history
estoppel, and sent the case back to
the trial court for further fact findings
on whether the accused equivalent
was foreseeable at the time of the
claim amendment.
60
Federal Circuit decision in Festo
The en banc court elaborated the
procedure for rebutting the
presumption that a narrowing
amendment surrendered subject
matter for purposes of prosecution
history. Festo Corp. v. Shoketsu
Kinzoku Kogyo Kabushiki Co., Ltd.,
Fed. Cir., No. 95-1066, 9/26/03.
61
Federal Circuit decision in Festo
Court spelled out three circumstances in
which presumption could be rebutted:
(1) where the accused equivalent was
unforeseeable at the time of amdt.
(2) where amdt. bore no more than a
“tangential relation” to accused equiv.,or
(3) where “some other reason” prevented
patentee from describing accused
equivalent in the patent appl.
62
Federal Circuit decision in Festo
• The court also held that, despite factual
issues relating to the skill in the art, the
rebuttal of the presumption is a question of
law to be determined by the court (I.e. the
judge), not by a jury
– and the Fed. Cir. Sent case back to trial
court to determine if the amendments in
question were foreseeable.
63
“Foreseeability” in Festo
Whether presumption against finding of
infringement under doctrine of equivalents
can be rebutted depends on the
forseeability of the narrowing patent
amendment at the time of the amendment,
not at the time of the application. Amgen
Inc. v. Hoechst Marion Roussel Inc., D.
Mass., No. 97-10814-WGY, 10/30/03,
(Young, C.J.)
64
The Effects of Festo ...
• Patent owners may breathe an audible
sigh of relief that a doctrine of
equivalents exists and it has some
flexibility BUT . . .
• It is now much more important to
develop and clearly understand prior
art BEFORE filing of application by
careful searching.
• WHY?
65
The Effects of Festo ...
PREPARATION OF SPECIFICATION
• Application must be prepared with even
greater care to be sure to describe
every conceivable variation and
alternative and substitute for the
preferred.
• Inventors must help make that true by
suggesting alternatives, substitutes,
modification, conceivable improvements
and different routes to achieve inventive
results and advantages.
66
The Effects of Festo ...
PREPARATION OF CLAIMS
• Care should be taken to avoid presenting
claim errors that will require amendments.
• Draft claims in paragraph form to separate
elements as much as possible.
• Claims of various scope, form and type can
be advantageous, and claim in various
different ways, so as to be able to avoid
amendments which may destroy doctrine of
equivalents.
67
The Effects of Festo ...
PREPARATION OF CLAIMS
• Different types of claims:
apparatus & method; means plus
function
• If claims of different scope in
application they can be allowed
or rejected without requiring they
be amended.
68
The Effects of Festo ...
•
•
•
•
PROSECUTION
Avoid narrowing amendments, as by
substituting new claims.
Conduct examiner interview(s) to consider
with examiner what may be acceptable.
Consider filing continuation or CIP appl.
Explain purpose of amending, such as for
clarity or purpose other than avoiding prior art,
to reduce chances that amendment will be
seen as overcoming prior art.
69
Another Effect of Festo?
Although Supreme Court lifted complete bar to
use of doct. of equivalents imposed by Fed. Cir.,
where an amdt. relating to patent-ability is made,
Fed. Cir. has not make it easy for patent owners
to avoid prosecution history estoppel. Because
foreseeability is test at the time claims are
narrowed by amendment, concern that inft.
defendant will produce "hypothetical claims"
literally covering accused device, drafted to make
difficult for the patentee to explain why they were
not included in the issued patent?
70
Other problems after Festo?
Dedication Rule: A judicially created
doctrine that limits scope of equivalents.
How? Where subject matter disclosed in
specification of application, but is outside
literal scope of claims (left unclaimed), it is
deemed dedicated to the public. Even
doctrine of equivalents may not capture.
See PSC Computer Prod., Inc. v. Foxconn
Intern'l, Inc., 355 F.3d 1353 [Fed. Cir.
2004] .
71
Wilson Sporting Goods Co. v. David
Geoffrey & Associates
• 1990 Federal Circuit Decision
• Invention
– Configuration of Dimples on a Golf Ball
72
Wilson Sporting Goods Co. v. David
Geoffrey & Associates
• “[A] patentee should not be able to
obtain, under the doctrine of
equivalents, coverage which he could
not lawfully have obtained from the
PTO by literal claims.”
73
Wilson Sporting Goods Co. v. David
Geoffrey & Associates
• “[S]ince prior art always limits what
an inventor could have claimed, it
limits the range of permissible
equivalents of a claim.”
74
The Reverse DOE
• Starting point - If you are practicing
the prior art, the claims that cover the
accused product or process are
invalid for obviousness or
anticipation.
75
Tate Access Floors v. Interface Architectural
Resources
• Question - If literal infringement is
found, will a DOE be considered to
determine if the claims are invalid
because they are covered by the
prior art?
76
Experimental Use
• How does the experimental use
exception work?
77
No Infringement
• 35 USC 271 (e) (1): It shall not be an act of infringement to
make, use, offer to sell, or sell within the United States or
import into the United States a patented invention (other
than a new animal drug or veterinary biological product (as
those terms are used in the Federal Food, Drug, and
Cosmetic Act and the Act of March 4, 1913) which is
primarily manufactured using recombinant DNA,
recombinant RNA, hybridoma technology, or other
processes involving site specific genetic manipulation
techniques) solely for uses reasonably related to the
development and submission of information under a Federal
law which regulates the manufacture, use, or sale of drugs
or veterinary biological products.
78
Infringement under
Sec. 271(e)(2)
• (2) It shall be an act of infringement
to submit-(A) an application under section
505(j) of the Federal Food, Drug, and
Cosmetic Act (j)] or described in
section 505(b)(2) of such Act (b)(2)]
for a drug claimed in a patent or the
use of which is claimed in a patent, or
...
79
Infringement under
Sec. 271(e)(2), con’d:
• (B) an application under section 512 of
such Act or under the Act of March 4, 1913
for a drug or veterinary biological product
which is not primarily manufactured using
recombinant DNA, recombinant RNA,
hybridoma technology, or other processes
involving site specific genetic manipulation
techniques and which is claimed in a
patent or the use of which is claimed in a
patent, if
80
Infringement under
Sec. 271(e)(2)(B), con’d:
• If . . . the purpose of such submission is
to obtain approval under such Act to
engage in the commercial manufacture,
use, or sale of a drug or veterinary
biological product claimed in a patent or
the use of which is claimed in a patent
before the expiration of such patent.
• I.e., an NDA or ANDA
81
NDA/ANDA as infringement
under Sec. 271(e)(2)(B)
GLAXO GROUP v. APOTEX, INC., No.
03-1575 (Fed Cir. July 27, 2004)
In a patent dispute, US District Court
determined that dfdt Apotex’s abbreviated
new drug application (ANDA) infringed
patents of plaintiff; district found that
defendant's ANDA filing was willful
infringement is reversed. Fed. Cir. Court
of Appeals held that ANDA was NOT willful
infringement. (So, no attys’ fees to Glaxo.)
82
Merck KGaA v. Integra LifeSciences I,
LTD
• “This case presents the question
whether uses of patented inventions
in preclinical research, the results of
which are not ultimately included in a
submission to the Food and Drug
Administration (FDA), are exempted
from infringement by 35 U. S. C.
§271(e)(1).”
83
Merck KGaA v. Integra LifeSciences I,
LTD
• “[Congress] exempted from
infringement all uses of patented
compounds ‘reasonably related’ to
the process of developing information
for submission under any federal law
regulating the manufacture, use, or
distribution of drugs.”
84
Merck KGaA v. Integra LifeSciences I,
LTD
• “At least where a drugmaker has a
reasonable basis for believing that a
patented compound may work, through a
particular biological process, to produce
a particular physiological effect, and
uses the compound in research that, if
successful, would be appropriate to
include in a submission to the FDA, that
use is ‘reasonably related’ to the
‘development
and
submission
of
information under . . . Federal law.’
§271(e)(1).”
85
NTP, Inc. v. Research In Motion,
LTD
• District Court (E.D.VA)
• Blackberry device by RIM infringed
various NTP patents
• Awarded NTP $53,704,322.69 in
damages
• Enjoined further infringement by RIM,
stayed the injunction pending Fed.
Cir. appeal
86
NTP, Inc. v. Research In Motion,
LTD
• Fed Cir – Review D.C. ruling and stated
D.C.:
– erred in construing the claim for the “originating
processor”;
– correctly found infringement under 271(a);
– correctly denied RIM’s motion for judgment as
a matter of law (JMOL)
– didn’t abused its discretion in evidentiary rules
– remanded case to district court
87
NTP, Inc. v. Research In Motion,
LTD
• NTP alleged over forty system and method
claims had been infringed by the
Blackberry system
• The court construed thirty-one disputed
claim terms
• RIM asked for summary judgment of both
non-infringement and invalidity
– The asserted claims, properly construed, did not
read on the accused RIM system
– The physical location of the “relay” component put
RIM’s allegedly infringing conduct outside the
reach 271
88
NTP, Inc. v. Research In Motion,
LTD
• “The district court agreed with NTP, holding that ‘no
genuine issue of material fact’ existed as to
infringement of four claims.” …
• “The case proceeded to trial on fourteen claims. …
• “On every issue presented, the jury found in favor of
the plaintiff , NTP. The jury found direct, induced, and
contributory infringement by RIM on all asserted
claims of the patents-in-suit. The jury also found that
the infringement was willful. It rejected every defense
proposed by RIM. Adopting a reasonable royalty rate
of 5.7%, the jury awarded damages to NTP in the
amount of approximately $23 million.”
89
NTP, Inc. v. Research In Motion,
LTD
• D.C. awarded
–
–
–
–
$33 million in compensatory damages,
$4 million in attorneys’ fees
$2 million prejudgment interest
$14 million enhanced damages
• DC entered a permanent injunction
against RIM, enjoining it from further
manufacture, use, importation, and/or
sale of all accused BlackBerry systems,
software and handhelds.
90
NTP, Inc. v. Research In Motion,
LTD
• What happened with dispute terms of
claim construction?
91
NTP, Inc. v. Research In Motion,
LTD
• The meat of why this case really
matters…
• 271(a) – “Except as otherwise provided
in this title, whoever without authority
makes, uses, offers to sell, or sells any
patented invention, within the United
States, or imports into the United States
any patented invention during the term of
the patent therefor, infringes the patent.”
92
NTP, Inc. v. Research In Motion,
LTD
• “The territorial reach of a patent right is
limited, so that section 271(a) is only
actionable against patent infringement that
occurs within the United States.”
• “This case presents an added degree of
complexity, however in that: (1) the ‘patented
invention’ is not one single device, but rather
a system comprising multiple distinct
components or a method with multiple distinct
steps; and (2) the nature of those components
permits their function and use to be separated
from their physical location.”
93
NTP, Inc. v. Research In Motion,
LTD
• “According to RIM, the statutory requirement
that all steps of the allegedly infringing activity
take place ‘within the United States’ was not
satisfied because the BlackBerry Relay
component of the accused system was
located in Canada.”
• “[The court] … found that ‘the fact that the
BlackBerry relay is located in Canada is not a
bar to infringement in this matter.’ The court
therefore instructed the jury that the ‘location
of RIM’s Relay in Canada does not preclude
infringement.’”
94
NTP, Inc. v. Research In Motion,
LTD
• “… RIM’s position is that if a claim
limitation of a patented system would
only be met by a component of the
accused system, or a step of the accused
method, located outside the United
States, then the entire system or method
is beyond the reach of Section 271(a),
even if the use and function of the whole
system in operation occur in the United
States.”
95
NTP, Inc. v. Research In Motion,
LTD
• “The question before us is whether
the location of a component of an
accused system abroad, where that
component facilitates operation of the
accused system in the United States,
prevents the application of section
271(a) to that system.”
96
NTP, Inc. v. Research In Motion,
LTD
• In Deepsouth, the Supreme Court held
that the export of of unassembled
components of an invention could not
infringe a patent under 271(a).
• As a result, Congress enacted 271(f)
to extend infringement to cover the
export of elements of patented
inventions.
97
NTP, Inc. v. Research In Motion,
LTD
• “The key premise in Deepsouth was that
Deepsouth was not using the machines in
the United States as a ‘whole operable
system assembly’ because Deepsouth did
not combine the components for use in the
United States.”
• “The case before us can be distinguished
from Deepsouth in that ‘the location of
the infringement is within United States
territory, not abroad as in Deepsouth.”
98
NTP, Inc. v. Research In Motion,
LTD
• “Even though one of the accused
components in RIM’s BlackBerry
system may not be physically located
in the United States, it is beyond
dispute that the location of the
beneficial use and function of the
whole operable system assembly is
the United States.”
99
NTP, Inc. v. Research In Motion,
LTD
• “The claims are directed to systems and methods
for sending email messages between two
subscribers; the transmission is made between an
originating processor and destination processor.
Although RIM’s relay, which is located in Canada
is the only component that satisfies the ‘interface’
of the ‘interface switch’ limitation is the asserted
claims, because all of the other components of
RIM’s accused system are located in the United
States, and control and beneficial use of RIM’s
system occur in the United States, we conclude
that the situs of the “use” of RIM’s system for
purposes of 271(a) is the United States.”
100
Practice Tip
• Make sure to include a system claim
to support extraterritorial application
101
AT&T v. Microsoft
• Ordinarily to infringe, the acts of
infringement must all occur in the United
States.
• Issue – When computer software that is
recorded onto a golden master disk and
sent abroad, and the software infringes
within the United States, does the act of
infringement also occur Outside of the
United States?
• Answer – No.
102
Finding Direct Infringement
• Do you have to show that a user actually used a
product for a finding of direct infringement?
• Moleculon Research Corp. v. CBS, Inc., 793 F.2d
1261 (Fed. Cir. 1986)
– circumstantial evidence of extensive puzzle
sales, dissemination of an instruction sheet
teaching the method of restoring the
preselected pattern with each puzzle, and the
availability of a solution booklet on how to
solve the puzzle was sufficient
103
Damages from Contributory
Infringement
104
Lucent Technologies v.
Gateway, Inc.
• “Here, the infringing feature for completing the
forms, i.e., the date-picker tool, is suitable only for
an infringing use. Inclusion of the date-picker
feature within a larger program does not change
the date-picker’s ability to infringe. Because
Microsoft included the date-picker tool in Outlook,
the jury could reasonably conclude, based on the
evidence presented, that Microsoft intended
computer users to use the tool—perhaps not
frequently—and the only intended use of the tool
infringed the Day patent.”
105
Divided/Joint Infringement
106
Divided/Joint Infringement Basics
• Must a single party perform all actions to infringe?
• What if a first party performs almost all steps, and
the first party contracts with a second party to
perform one or two of the steps, should the first
party (or the second party) still infringe? If so,
under what circumstances?
• General rule – if the second party engaged with
the first party to perform actions at an arms length
transaction, the first party (and the second party
do not infringe)
107
BMC Res., Inc. v. Paymentech, L.P
“Courts faced with a divided
infringement theory have also
generally refused to find liability
where one party did not control or
direct each step of the patented
process.”
BMC Res., Inc. v. Paymentech,
L.P., 498 F.3d 1373 (Fed. Cir.
2007)
108
BMC Res., Inc. v. Paymentech, L.P
• Where the actions of multiple parties
combine to perform every step of a
claimed method, the claim is directly
infringed only if one party exercises
"control or direction" over the entire
process such that every step is
attributable to the controlling party,
i.e., the "mastermind."
• At the other end of this multi-party
spectrum, mere "arms-length
cooperation" will not give rise to
direct infringement by any party.
109
Muniauction, Inc. v. Thomson Corp.
• “[T]he control or direction standard is
satisfied in situations where the law
would traditionally hold the accused
direct infringer vicariously liable for
the acts committed by another party
that are required to complete
performance of a claimed method.”
• Muniauction, Inc. v. Thomson Corp.,
532 F.3d 1318 (Fed. Cir. 2008)
110
Recent Case Law
• Akamai Technologies, Inc. v.
Limelight Networks, Inc. (Fed. Cir.
2010)
• McKesson Technologies, Inc. v. Epic
Systems, Corp. (Fed. Cir. 2011)
• Centillion Data Systems, LLC v.
Qwest Communications International,
Inc. (Fed. Cir. 2011)
111
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• Fed. Cir. Panel Decision
• From D.C. JMOL overturned jury
verdict of infringement and award of
$41.5 million dollars
112
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• Patents at Issue
– 7,103,645
– 6,553,413
– 6,108,703
– The patents at issue have the same
specification and disclose a system for
allowing a content provider to outsource the
storage and delivery of discrete portions of its
website content.
113
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• 19. A content delivery service, comprising:
• area network of content servers managed by a domain other
than a content provider domain;
• for a given page normally served from the content provider
domain, tagging the embedded objects of the page so that
requests for the page objects resolve to the domain instead
of the content provider domain;
• responsive to a request for the given page received at the
content provider domain, serving the given page from the
content provider domain; and
• serving at least one embedded object of the given page
from a given content server in the do-main instead of from
the content provider domain.
114
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
•
•
•
•
•
•
34. A content delivery method, comprising:
distributing a set of page objects across a network of content servers
managed by a domain other than a content provider domain, wherein the
network of content servers are organized into a set of regions;
for a given page normally served from the content provider domain, tagging
at least some of the embedded objects of the page so that requests for the
objects resolve to the domain instead of the content provider domain;
in response to a client request for an embedded object of the page:
resolving the client request as a function of a location of the client machine
making the request and current Internet traffic conditions to identify a given
region; and
returning to the client an IP address of a given one of the content servers
within the given region that is likely to host the embedded object and that is
not overloaded.
115
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• Limelight does not perform every step
of the claims
• The content providers of Limelight
perform the tagging step
• Akamai presented a theory of joint
liability in that Limelight controls or
directs the activities of another
116
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• Direct infringement of a method claim
requires that a single party perform
each of the steps of the claimed
method
• No infringement unless “one party
exercises ‘control or direction’ over
the entire process such that every
step is attributable to the controlling
party.”
117
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• “The performance of a method step
may be attributed to an accused
infringer when the relationship
between the accused infringer and
another party performing a method
step is that of principal and agent,
applying generally accepted
principles of the law of agency…”
118
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• Holding
• “[T]here can only be joint
infringement when there is an agency
relationship between the parties who
perform the method steps or when
one party is contractually obligated to
the other to perform the steps.”
119
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• Court suggests
– Proper claim drafting in the first place
– Seek reissue patents to correct the error
120
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• Ruling
– “Limelight did not perform all of the
steps of the asserted method claims,
and the record contains no basis on
which to attribute to Limelight the
actions of its customers who carried out
the other steps, [therefore] this court
affirms the finding of noninfringement
…”
121
Akamai Technologies, Inc. v.
Limelight Networks, Inc.
• Order
– Signed April 20, 2011
– En banc consideration
– Previous decision is vacated
122
McKesson Technologies, Inc.
v. Epic Systems, Corp.
• Fed. Cir. Panel Decision
• From D.C. finding of summary
judgment of noninfringement
– Inducement of infringement
123
McKesson Technologies, Inc.
v. Epic Systems, Corp.
• Patent at Issue
– 6,757,898
– The patent at issue relates to “an electronic
method of communication between healthcare
providers and patients involving personalized
web pages for doctors and their patients.”
124
McKesson Technologies, Inc.
v. Epic Systems, Corp.
•
•
•
•
•
•
•
1. A method of automatically and electronically communicating
between at least one health-care provider and a plurality of users
serviced by the health-care provider, said method comprising the
steps of:
initiating a communication by one of the plurality of users to the
provider for information, wherein the provider has established a
preexisting medical record for each user;
enabling communication by transporting the communication . . . ;
electronically comparing content of the communication . . . ;
returning the response to the communication automatically . . . ;
said provider/patient interface providing a fully automated
mechanism for generating a personalized page or area within the
provider’s Web site for each user serviced by the provider; and
said patient-provider interface service center for dynamically
assembling and delivering customer content to said user.
125
McKesson Technologies, Inc.
v. Epic Systems, Corp.
• Epic argued that because its customers neither
directly perform the “initiating a communication”
step of the asserted method claims nor exercise
control or direction over another who performs
this step, McKesson failed to demonstrate that a
single party directly infringes the ’898 patent and,
accordingly, could not have succeeded on its
claim of indirect infringement. The district court
agreed and granted [the motion of summary
judgment of noninfrigement].
126
McKesson Technologies, Inc.
v. Epic Systems, Corp.
• Issue on appeal – can the initiating a
communication step be attributed to the
MyChart providers?
– MyChart users are not performing any of the
claimed method steps as agents for the MyChart
providers.
– No agency relationship…
– MyChart users are not contractually obligated to
perform the method steps on behalf of the MyChart
providers
127
McKesson Technologies, Inc.
v. Epic Systems, Corp.
• Order
– Signed May 26, 2011
– En banc consideration
– Previous decision is vacated
128
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
• Fed. Cir. Panel Decision
• From D.C. finding of summary
judgment of noninfringement
129
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
• Patent at Issue
– 5,287,270
– The patent at issue relates to “a system for
collecting, processing, and delivering
information from a service provider, such as a
telephone company, to a customer.”
130
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
•
•
•
•
•
1. A system for presenting information concerning the actual cost
of a service provided to a user by a service provider, said system
comprising:
storage means for storing individual transaction records prepared
by said service provider, said transaction records relating to
individual service transactions for one or more service customers
including said user, and the exact charges actually billed to said
user by said service provider for each said service transaction;
data processing means comprising respective computation
hardware means and respective software programming means for
directing the activities of said computation hardware means;
means for transferring at least a part of said individual transaction
records from said storage means to said data processing means;
(cont’d on next page)
131
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
•
•
•
said data processing means generating preprocessed summary
reports as specified by the user from said individual transaction
records transferred from said storage means and organizing said
summary reports into a format for storage, manipulation and
display on a personal computer data processing means;
means for transferring said individual transaction records including
said summary reports from said data processing means to said
personal computer data processing means; and
said personal computer data processing means being adapted to
perform additional processing on said individual transaction
records which have been at least in part preprocessed by said data
processing means utilizing said summary reports for expedited
retrieval of data, to present a subset of said selected records
including said exact charges actually billed to said user.
132
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
• Centillion concedes that the claim
includes both a “back-end” system
maintained by the service provider
(claim elements 1, 2, and 3) and a
“front-end” system maintained by an
end user (claim element 4).
133
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
• D.C. determined that no single party
practices all of the limitations of the
asserted claims.
134
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
• Use under 271(a)
• “[T]o “use” a system for purposes of
infringement, a party must put the
invention into service, i.e., control the
system as a whole and obtain benefit
from it.”
135
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
• “[D]irect infringement by ‘use’ of a
system claim ‘requires a party . . . to
use each and every . . . element of a
claimed [system].’ In order to ‘put the
system into service,’ the end user
must be using all portions of the
claimed invention.”
136
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
• “The on-demand operation is a ‘use’ of the system as
a matter of law. The customer puts the system as a
whole into service, … By causing the system as a
whole to perform this processing and obtaining the
benefit of the result, the customer has ‘used’ the
system under § 271(a). It makes no difference that the
back-end processing is physically possessed by
Qwest. The customer is a single ‘user’ of the system
and because there is a single user, there is no need
for the vicarious liability analysis from BMC or Cross
Medical.”
137
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
• “We also hold that the standard operation is a
‘use’ as a matter of law. The standard operation
allows users to subscribe to receive electronic
billing information on a monthly basis. … [I]t is the
customer initiated demand for the service which
causes the back-end system to generate the
requisite reports. This is ‘use’ because, but for the
customer’s actions, the entire system would never
have been put into service. This is sufficient
control over the system under NTP, and the
customer clearly benefits from this function.”
138
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
• Qwest as a direct infringer?
– “To ‘use the system, Qwest must put the
claimed invention into service, i.e., control the
system and obtain benefit from it.”
– “While Qwest may make the back-end
processing elements, it never ‘uses’ the entire
claimed system because it never puts into
service the personal computer data processing
means. Supplying the software for the
customer to use is not the same as using the
system.”
139
Centillion Data Systems, LLC v.
Qwest Communications Intl, Inc.
• “The only way that Centillion can establish ‘use’ by
Qwest is if Qwest is vicariously liable for the actions of
its customers such that use’ by the customers may be
attributed to Qwest.”
• “[W]e conclude, as a matter of law, that Qwest is not
vicariously liable for the actions of its customers.
Qwest in no way directs its customers to perform nor
do its customers act as its agents. While Qwest
provides software and technical assistance, it is
entirely the decision of the customer whether to install
and operate this software on its personal computer
data processing means.”
140
Divided/Joint Infringement
Conclusions
• Always draft claims from a single
party perspective when possible
• Include system claims
– Write system claims that can be “used”
by a single party
141
Program
Completed
All course materials - Copyright 2002-12 Randy L. Canis, Esq.
142