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The written description requirement is of heightened importance in determining the priority date for continuation patent applications. Without a sufficient written description that supports and details the claims of the patent, the priority date of the parent patent may be lost for the continuation application. This issue was recently addressed by the Federal Circuit in the Anascape, LTD. v. Nintendo of America, Inc., 601 F.3d 1333 (Fed. Cir. 2010) decision and the decision is useful to review to understand the consequences of failing to have sufficient support in the written description for claims in a continuation patent.

Click here for a more detailed discussion: Anascape, LTD. v. Nintendo of America, Inc.

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The district court determined that plaintiff had waived the attorney-client privilege because the plaintiff’s in-house counsel revealed too much information in answering questions during a deposition. The defendants raised the waiver issue in the context of a motion to compel by contending that the plaintiff’s in-house counsel’s answers during a deposition revealed attorney-client communications and therefore waived the privilege regarding the plaintiff’s motivation in seeking the reissuance of its patent.

The district court found that the in-house counsel “expanded on the statements to the PTO, revealing that because of the issue of the different effective filing dates, there was a specific concern that the mixed subject matter claims were technically anticipated by” another published application. The in-house counsel also explained that there were additional communications between himself and other in-house and outside counsel that led to this concern. The district court found that these types of statements were sufficient to waive the attorney-client privilege.
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In another decision involving sanctions for defendants failure to provide discovery, the district court for the Western District of Michigan granted plaintiff’s motion for default judgment. The default was granted because the defendant had not participated in discovery. As the district court stated, “Defendants have not participated in discovery, but rather have refused to provide depositions or responses to [plaintiff’s] written discovery requests.”

The district court went on to note that defendants’ conduct was willful in that the defendants had ignored discovery deadlines and previous orders from the district court. “Defendants have ignored discovery deadlines and other obligations imposed both by the Rules of Civil Procedure and explicit orders of the Court.”
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In a recent case in the Eastern District of Texas, the district court addressed the admissibility of a consumer survey to show demand for the patented features in accused products. The district court rejected plaintiff’s consumer surveys and granted the defendants’ motion to exclude plaintiff’s survey experts because the surveys did not measure the purported advantages of plaintiff’s technology.

The surveys measured whether consumers valued incorporating internal antennas in cell phones in place of external antennas. The problem with these surveys, however, was that plaintiff did not invent–and the patents did not claim–internal antennas for cell phones. Instead, the patents were directed only to one type of internal antenna that had increase advantages over other internal antennas and external antennas because of multiband functionality and reduced size. Thus, the surveys did not measure the value of plaintiff’s technology. “While Plaintiff claims that its experts contend that the patents-in-suit are ‘fundamental’ to internal antennas, the surveys are not tied to the alleged advantageous technical characteristics of the patents-in-suit. Put another way, the surveys do not measure how consumers value the purported advantages provided by Plaintiff’s technology.”
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It is well settled law that all inventors who contribute to an invention must be named on the patent application. Nonetheless, where there are many inventors who contribute to the conceptions and reduction to practice of an invention, it can be difficult to determine who should be listed as the inventors on the patent application. But taking the time to do this right is also critical. Because the failure to name all co-inventors can render the patent unenforceable, particularly if one or more of the named inventors intended to deceive the patent office, it is very important to thoroughly analyze who should be named on the patent application. In addition, listing people who are not inventors as inventors can have the same dire consequences–the inability to enforce the patent. The recent case of Advanced Magnetic Closures, Inc. v. Rome Fasteners Corp., 607 F.3d 817 (Fed. Cir. 2010) illustrates what can happen when an inventor misleads the patent office on the issue of who invented the invention covered by the patent.

Click here for a more detailed discussion of Advanced Magnetic Closures, Inc. v. Rome Fasteners Corp.

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After a serious delay by the defendant in providing discovery, the district court granted plaintiff’s motion to strike the defendant’s answer and enter a default judgment. The district court found that the defendant continually mislead the plaintiff and the court regarding its discovery obligations and caused the case to be delayed for several years by doing so. “This Court gave [defendant] numerous opportunities to provide the requested documents, yet it chose to produce incomplete responses. . . . [Defendant] and [its counsel] affirmatively misled Plaintiffs — and more importantly, this Court — as to the production of documents and compliance with Court orders. . . . By failing to provide the discovery as ordered, [defendant] has prevented Plaintiffs from pursuing their claims and delayed this litigation for nearly seven years.”
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In a recent decision from the Federal Circuit, In Re Mostafazadeh, Case No. 2010-1260 (Fed. Cir. May 3, 2011), the Federal Circuit affirmed the Board of Patent Appeals and Interferences’ (the “Board”) decision upholding the patent examiner’s rejection of certain claims of a reissue patent application. The Federal Circuit affirmed the Board because the reissue application impermissibly attempted to recapture subject matter surrendered during prosecution of the original patent application.

The patent at issue, U.S. Patent Number 6,034,423 (the “‘423 patent”), is directed to lead frame based semiconductor packaging. The ‘423 patent describes two embodiments, a pin-type package and a bottom-surface-mount package. The originally filed claims were rejected as either anticipated or obvious. The independent claims were then amended to add the requirement of “circular attachment pads,” and the applicant argued that “circular attachment pads” were novel. As a result of the amendment, the ‘423 patent issued as amended.
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In yet another multi-defendant case, a district court has severed defendants from a patent infringement suit brought by a plaintiff against many defendants. In this case, the plaintiff brought suit against eleven defendants for infringing the same four patents. The district court granted defendants’ motion to sever because the plaintiff did not allege that the defendants were engaged in the same transaction or occurrence.

The court began by noting a number of decisions that granted severance under Ninth Circuit precedent and it sharply distinguished cases from the Eastern District of Texas that denied motions to sever because those cases followed a different rule than what the Ninth Circuit employs. Based on Ninth Circuit law, the court found that the motion to sever should be granted because the defendants had not engaged in the same transaction or occurrence or series of transactions or occurrences. The fact that the defendants were allegedly infringing the patents in a similar way was not sufficient. The court stated: “”Plaintiff has not alleged that the Defendants have engaged in the same transaction or occurrence or series of transactions or occurrences. Rather, Defendants are accused of infringing the patents in similar ways, but not as part of the same transaction or occurrence or series of transactions or occurrences.
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Creating a circuit split with the Ninth and Tenth Circuits, the Federal Circuit drew a distinction between efforts directed toward commercialization of a patent and those efforts directed toward enforcement of a patent. The former contacts were held to be irrelevant to the personal jurisdiction analysis, while the latter contacts can confer personal jurisdiction but only if there are sufficient patent enforcement activities beyond the mere sending of a cease and desist letter. Radio Systems Corp. v. Accession, Inc., Case No. 2010-1390 (Fed. Cir. April 25, 2011).

The Radio Systems decision follows other Federal Circuit decisions in holding that sending enforcement letters or cease and desist letters to a potential infringer are insufficient to confer personal jurisdiction in the forum where the letters were sent. What makes the decision different, however, is that the patent holder in this case undertook substantial efforts with Radio Systems to commercialize the invention in the forum state before sending the enforcement letter. Indeed, it was undisputed that there were numerous contacts, including at least one in person meeting, in the forum state to discuss potential commercialization and a nondisclosure agreement (with a choice of venue provision for the forum state) was also signed. The pending patent application was also discussed by the patent holder in the forum state.
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The multitude of multiple defendants in patent infringement suits continue to increase on a daily basis. But some district courts are putting a stop to the practice, at least in certain circumstances, by severing defendants that are misjoined. In a recent case in the Central District of California, the court granted a motion to dismiss for misjoinder when a plaintiff filed a patent infringement action against three unrelated companies for dissimilar products.

The court found that dismissal of all but the first named defendant was appropriate to eliminate the prejudice to the other defendants, i.e., by allowing each defendant to prepare their own defense instead of requiring them to jointly defend an action that involves very different products. The court also found that “dismissal will remedy the burden resulting from one judge presiding over a single action that consists of three separate and distinct cases.”
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