Articles Posted in Federal Circuit

In pursuing patents for their inventions, inventors need to make sure that earlier filed provisional patent applications filed by other inventors do not preclude the inventor’s patent application. The Federal Circuit’s decision in In re Giacomini, (Fed. Cir. July 7, 2010) affirmed a USPTO Board of Patent Appeal’s decision that found the patent examiner properly rejected certain claims of a pending application. The decision in Giacomini occurred because an earlier filed provisional application by another inventor disclosed the same invention. Because the inventor failed to challenge the written description of the earlier filed provisional application, the inventor waived his right to do so on appeal and lost his patent as a result.

The Federal Circuit began by noting that “an applicant is not entitled to a patent if another’s patent discloses the same invention, which was carried forward from an earlier U.S. provisional application or U.S. non-provisional application. Here, the inventor did not dispute that the earlier provisional application described the invention claimed in Giacomini’s application. As result, the Federal Circuit found that the provisional, which pre-dated Giacomini’s filing date, was the first U.S. application to describe the invention.
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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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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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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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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 Federal Circuit’s recent decisions on the assignment of future inventions have drawn a sharp distinction in what would appear to be minor difference in language that have major consequences and significance to ownership. The language turns on the difference in the phrase “agree to assign” and the phrase “do hereby assign.” Under the Federal Circuit’s interpretation, the former language (“agree to assign”) is only a mere promise to assign inventions that are created in the future and requires a subsequent assignment agreement, while the latter (“do hereby assign”) constitutes an immediate assignment when the invention is created in the future without the need of an additional assignment agreement. As reflected in recent Federal Circuit decisions, this difference in language can have severe consequences in determining who owns later issued patents.

For more on these decisions see this link: Analysis of Federal Court’s Ruling on Assignment Agreements in Abraxis Bioscience, Inc. v. Navinta LLC, Case No. 2009-1539 (Fed. Cir. Nov. 9, 2010) and others.

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On April 20, 2011, the Federal Circuit sitting en banc vacated a $110 million damage award against Dish Network Corp. and EchoStar Corp. The Court rejected its two-step test that had been used to determine infringement of a redesigned product in a contempt hearing and instead adopted a single-step test for determining infringement in a contempt hearing. The new single-step standard focuses solely on whether there is “more than a colorable difference” in a newly redesigned product from a product that was previously found to infringe.

The district court had previously found that defendants’ DVR products infringed a patent held by TiVo. After entering a judgment in favor of TiVo based on a jury verdict, the district court also entered a permanent injunction that required defendants to stop making products and to disable products it had already sold. Defendants redesigned their DVR products and TiVo, claiming that the redesigned products still infringed, moved for contempt. The district court found contempt based on continuing infringement and awarded $110 million to TiVo.

A Federal Circuit panel affirmed in a 2-1 decision and the Federal Circuit subsequently agreed to hear defendants’ petition for a rehearing. Sitting en banc, the Federal Circuit addressed its two-step analysis set out in the KSM Fastening Systems, Inc. v. H.A. Jones Co., KSM Fastening Systems, Inc. v. H.A. Jones Co., 776 F.2d 1522 (Fed. Cir. 1985) decision. KSM set forth a two-step analysis involving first whether there was “more than a colorable difference” between the redesigned product and the infringing product and, if not, a second step would determine whether the redesigned product still infringed the patent.

Due diligence is an important part of acquiring patents and intellectual property, but community property laws are often overlooked in this process. Companies, when acquiring inventions from inventors or from small, closely-held companies, should carefully review the ownership of the patents to determine whether a spouse or former spouse of an inventor has rights to the patent or invention based on applicable state law. Failure to examine these issues and analyze the applicable state law could have disastrous consequences, particularly in California where California’s community property laws provide spouses with rights to intellectual property under certain circumstances.

A recent case from the Federal Circuit highlights the importance that community property laws may play in determining who actually owns a patent. Enovsys LLC v. Nextel Communications, Inc., et al., 614 F.3d 1333 (Fed. Cir.

Read a detailed analysis of the case here: Do Not Overlook Community Property Laws When Acquiring Patents and Other Intellectual Property

On April 12, 2011, the Federal Circuit rejected McKesson Technologies Inc.’s suit for patent infringement against Epic Systems Corporation. McKesson Technologies Inc. v. Epic Systems. Corp., Case No. 2010-1291 (Fed. Cir. April 12, 2011). The Federal Circuit rejected McKesson’s claim for patent infringement because McKesson could not prove that one party (i.e., the Epic customers) performed all of the steps of the method claim recited in the patent.

McKesson’s patent is directed to an electronic method of communication between healthcare providers and patients involving personalized web pages for doctors and their patients. Epic is a software company that licenses software to healthcare providers and one of its products was accused of infringement, Epic’s MyChart software. Notably, Epic itself does not use the MyChart software and it was undisputed that Epic’s customers did not perform one of the steps required by the method claim, i.e., “initiating a communication,” nor did the customers exercise control or direction of another who performs this step. Based on this record, the district court granted Epic’s motion for summary judgment based on divided infringement in that no one person or entity performed all the steps of the method claim.

The Federal Circuit affirmed the decision of the district court, noting that McKesson had brought its claims against Epic on the theory of inducing infringement and to show inducing infringement McKesson was required to show that one person or entity performed every step of the method claim. The Federal Circuit also rejected any argument regarding joint infringement as it reiterated that this requires a showing of an agency relationship where a party is contractually obligated to perform a specific step of the method.

The assignment provisions in employment agreements have taken on added importance with recent case law from the Federal Circuit. The Federal Circuit’s decision in Stanford University v. Roche, 583 F.3d 832 (Fed. Cir. 2009), drew a sharp distinction between language in assignment provisions focusing on the difference between “agree to assign” and “do hereby assign,” with the former constituting a mere agreement to assign in the future, which is ineffective absent an additional agreement to assign intellectual property that is created in the future.

Read a more detailed description here: Protect Your Intellectual Property: Draft Employment Agreements Carefully.

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