Florida Patent Lawyer Blog

As a Florida Patent Attorney with a sizable docket of patent cases, I constantly worry about the effect my amendments have on the enforceability of the resulting patents. As you know, the doctrine of patent prosecution history estoppel limits the scope of a patentee's claims due to things that happened during patent prosecution. Last week, the Court of Appeals for the Federal Circuit issued an illuminating decision in Funai v. Daewoo on the doctrine of prosecution history estoppel and when it is applied.

At issue in this case was whether the patentee, Funai, lost its range of equivalents with regard to a claim term when Funai cancelled the relevant claim after it was rejected by the Patent Examiner. Does cancelling a claim after a rejection invoke prosecution history estoppel and lead to a loss of a range of equivalents?

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002) is the landmark case we consider when discussing prosecution history estoppel. Festo tells us that no estoppel exists with respect to a claim term if this aspect is unrelated to or "merely tangential" to the prosecution. In Festo, 535 U.S. at 741, the Court stated: "There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. . . . [T]he rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; . . . . In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence."

In the Funai case, the Federal Circuit reviewed the patentee's amendment and decided the following:
"It is apparent that the nature of the [claim term at issue] was not a factor in the allowance of claim 4, for this aspect was not at issue during prosecution. This limitation is in the category that the Court called "merely tangential" to the prosecution, as discussed in Festo. Thus the district court correctly held that the cancellation of claims 1 and 2 did not surrender access to equivalency with respect to the [claim term at issue]."

The moral of the story here is that prosecution history estoppel only applies to aspects of a claim that are directly related to prosecution. Aspects that are merely tangential or secondary to a main issue are not subject to prosecution history estoppel and do not lose their range of equivalents due to an amendment. As a practice tip, if you see this issue come up during patent prosecution, I would explicitly state in the Remarks section of an amendment whether you consider certain aspects of the claim tangential and not at at issue.

As a Miami Patent Lawyer specializing in intellectual property issues, I frequently host clients who tell me their patent is being infringed upon. What kinds of letters can I send out to infringers without worrying about a declaratory judgment action in their forum? The Federal Circuit chimed in on this issue this past December and it has (at least somewhat) changed the rules of the game.

Last week, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner's 35 U.S.C. 103(a) obviousness rejection of Datacard Corporation's key industry patent. As a practicing Miami Patent Lawyer who encounters 35 U.S.C. 103(a) obviousness rejections frequently, this case is interesting as it illustrates a significant practice pointer.

The decision of the BPAI involved a vital Datacard Corp. patent that had been asserted defensively in multiple patent infringement lawsuits against rival Card Tech. Corp. In order to call the patent into question, Card Tech. Corp. instituted a reexam of Datacard's patent, thereby staying the patent infringement litigation. Thus, a lot rested upon the outcome of the reexam of Datacard's patent.

Datacard appealed a 35 U.S.C. 103(a) obviousness rejection during the reexam of the Datacard patent, which resulted in the BPAI decision we discuss here. At issue was whether Datacard had shown reversible error in the Patent Examiner's assertion that one of ordinary skill in the art would have combined the two cited prior art references. The BPAI found that Datacard had shown reversible error. Of importance in this BPAI decision is the recitation of law that a prior art reference must be considered in its entirety, as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In fact, the BPAI found that one prior art reference had explicitly taught away from combining with the second prior art reference, and therefore the combination was not proper since one of ordinary skill in the art would NOT have combined the two cited prior art references. Thus, the Patent Examiner's 35 U.S.C. 103(a) obviousness rejection was reversed by the BPAI.

The practice pointer in this BPAI decision is that the savvy practitioner should always question the combination of two references in a 35 U.S.C. 103(a) obviousness rejection. Although there may be a subjective inclination to combine two prior art references, the presence of an explicit teaching away from a combination essentially kills the Patent Examiner's ability to combine the two references.

On Monday, Kodak and Samsung settled a long-running patent infringement dispute spanning several years and multiple continents. The settlement includes a patent license agreement wherein each side gains a patent license for the other's patents. The license agreement, which provides appreciable benefits to both parties, is royalty bearing to Kodak. Additional financial details were not disclosed. As a Florida patent lawyer that frequently deals with patent infringement disputes, this case illustrates various important aspects surrounding patent litigation.

This case illustrates how a legal dispute can easily escalate into a world-wide battle requiring enormous resources. This disagreement started as a simple request for another party to take a patent license and blossomed into a two-way, 26-month patent infringement litigation that was concurrently being heard in two separate district courts in the U.S., in a federal court in Germany and the U.S. International Trade Commission. The legal bills for both sides are easily calculated to be in the millions of U.S. dollars. The end result - a settlement agreement comprising a cross-license - was not proportional to the extent of the conflict. Tomes can be written about the psychology behind why parties don't settle. But the abject lesson here is that parties should push to settle as early as possible, especially in complex commercial litigation cases, such as a patent infringement case.

This case further illustrates a common settlement outcome in patent infringement cases - a cross-license. As I discussed in an earlier post about the uses of a patent, a savvy company with an intellectual property program will obtain patents on its core technologies not just for the purpose of asserting them against their competitors, but also for the purpose of using them as a shield in the face of a competitor's attack. This is exactly what transpired in the Kodak-Samsung dispute. What started out as a single patent infringement claim, ended up as a two-way fight where each party both asserted patent infringement claims and defended against the same. Counterclaiming for patent infringement can have a chilling effect on a patent plaintiff and can move the parties to settlement, since both parties have much to lose if they are beaten at trial. In this case, it took the parties quite a while to realize this, but ultimately it led to settlement.

This Friday, the U.S. International Trade Commission (ITC) issued a notice stating that Mitsubishi does not infringe GE's wind turbine patent, thereby ending a long-running legal dispute between the two companies at the ITC. The patent infringement dispute dates back to early 2008 when GE claimed that Mitsubishi infringed upon GE's wind turbine patents in a complaint filed with the ITC, in an effort to block the importation of Mitsubishi's wind turbine products into the U.S. The effort, however, backfired and exposed the weaknesses of using the ITC as a forum for a patent infringement dispute.

As a Florida patent attorney that handles patent infringement disputes, I'm often confronted with the question of where a patent infringement dispute should be heard. As I wrote on Jan. 2, 2010, the ITC is becoming a more popular route for patent owners attempting to halt infringers of their patents, due to: 1) lower litigation costs and 2) the reduced waiting time compared to litigation in a federal court. The biggest drawback of the ITC, however, is that theITC only has the power to stop the importation of infringing goods into the U.S. The ITC does not have the power to award damages, stop the selling of U.S. manufactured goods or force a royalty upon the infringing party.

The recent Mitsubishi-GE case, however, illustrates how a dispute at the ITC can actually take an extended period of time to resolve - more than 2 years in this case and it did not even go to trial. There has also been speculation as to expenses in this case. Due to the extended period of time and the amount of wrangling in this case, the fees may have been rather high. Again, this goes against the conventional thinking that the ITC is a less-expensive forum. Thus, this case challenges the assumption that the ITC is a cheaper, faster forum. As a patent practitioner, the practice pointer I've taken from this story is that the choice of forum for every patent dispute should be taken on a case-by-case basis. One should not rush to one forum or another based on assumptions. The case should be carefully reviewed and a practitioner who knows the forum well should be consulted on how that particular forum would fit the instant case.

In a move exhibiting clever gamesmanship, today Nokia one-upped Apple in the much-watched patent fight between the two behemoths. Here is a recap of the fight so far: Nokia files a patent infringement suit against Apple claiming the iPhone infringes 10 Nokia patents; Apple counter-sues for patent infringement claiming Nokia products infringed 13 Apple patents related to GSM; Nokia spurs the U.S. International Trade Commission to start an investigation of Apple in light of Apple's alleged violations. And now, in a final punch, today Nokia filed yet another lawsuit against Appled in Delaware claiming the iPhone infringes 10 additional Nokia patents.

All the legal wrangling will probably take at least a year to work out, since patent rocket dockets generally take about 12 months to a decision, assuming a settlement isn't reached before then. During the next year, however, Apple will have released at least one major revision to the iPhone, which begs the question of whether Apple will seek to design around the Nokia patents so as to render Nokia's lawsuit moot going forward. Another fact to note is that Nokia's share of the growing smartphone market has continued to decline with the rise of the iPhone. This has led some to characterize Nokia's lawsuits as the final throes of a smartphone player. The next 12 months will shed light on this question.

As a Florida patent lawyer that files a multitude of technology patent applications with the U.S. Patent Office each year, I follow patent enforcement proceedings such as these closely. This case illustrates that patents can be used both as a sword and as a shield. Apple fired back at Nokia with a patent infringement lawsuit of its own. This move puts Nokia at least partially on the defense, which allows Apple to potentially gain the initiative.

When asked about the value of patents, I always advise my clients that in addition to obtaining an exclusive right to stop others from making or using your technology, a patent is also a valuable tool for use against an adversary that asserts his patent rights against you. Companies know this and therefore having a patent portfolio can have a deterrent effect against intellectual property litigation. Much like the Cold War-era philosophy of Mutually Assured Destruction, a potential adversary may think twice about suing you for patent infringement if you have a portfolio of patents yourself, which can be used against him.

As a Florida patent attorney, I am frequently faced with situations where a company is infringing upon the intellectual property rights of a client. As I explore different approaches for enforcement with my client, we often discuss the various forums in which an intellectual property owner can have his grievances heard. A formerly little-known, but now an increasingly popular, venue is the U.S. International Trade Commission (ITC) in Washington, D.C. Faced with the duty to protect the rights of intellectual property owners in the course of international trade in the U.S., the ITC provides a forum for U.S. patent and trademark owners to stop copiers from importing their copies into the U.S. Yesterday's announcement by the ITC illustrates this process.

On the first day of 2010, the U.S. ITC decided to investigate claims of patent infringement by both Sharp and RIM. The complaint (click here) against Sharp was made by Samsung and alleges that certain televisions sold by Sharp in the U.S. infringe on Samsung's U.S. Patent Nos. 5,844,533, 6,888,585 and 7,436,479.

Interestingly, back in Nov. 2009, the ITC ruled on a similar television-related dispute between Sharp and Samsung. In that case, Sharp alleged Samsung infringed on Sharp television patents and the ITC ruled in favor of Sharp. Perhaps seeing they had curried favor with the ITC, Sharp filed the current complaint against Samsung last month.

The complaint (click here) against RIM was made by Prism Technologies of Nebraska and alleges that certain smart phones sold by RIM in the U.S. infringe on Prism's U.S. Patent No. 7,290,288). Prism, by the way, has been branded by some as a patent troll, seeing as they 1) do not actually manufacture any of the technologies covered by their patents and 2) their revenue comes solely from licensing their patents.

These two investigations illustrate how the ITC is becoming a more popular route for patent owners attempting to halt infringers of their patents. The main reason for this recent popularity is financial, since: 1) litigation before the ITC is less costly and 2) the amount of time necessary to achieve a final decision in an ITC case is highly reduced compared to litigation in a federal court. The biggest drawback of the ITC forum, however, is the reduced scope of power of the forum. The ITC only has the power to stop the importation of infringing goods into the U.S. The ITC does not have the power to award damages, stop the selling of U.S. manufactured goods or force a royalty upon the infringing party. If your client, however, is only interested in stopping the infringement, not a big damage award, and the infringer imports the accused products, then the ITC is a less-expensive and expedient avenue for having his case heard.

What options are available to a patent holder seeking to enforce his patent? When suing a company that infringes your patent, what can you hope to achieve? Can you really stop an infringer from infringing your patent? As a Florida patent attorney, I get these questions a lot. And just recently, the Court of Appeals for the Federal Circuit weighed in on these issues.

Last week, the Federal Circuit affirmed a lower court decision to permanently enjoin Microsoft from selling its flagship Microsoft Word product. The permanent injunction, effective January 11, 2010, prohibits Microsoft from selling, offering for sale, or importing its famous word processing software.
In addition to affirming the permanent injunction, the Federal Circuit upheld the lower court's finding of patent validity, willful patent infringement and an award of enhanced damages. Assuming that Microsoft's requests for rehearing en banc fail, Microsoft will eventually petition the U.S. Supreme Court to grant certiorari in this case.

This Federal Circuit case highlights the elements that must be met by an injunctive relief request in a patent infringement case, as recently defined by eBay Inc v. MercExchange, L.L.C., 547 U.S. 388 (2006):
(1) the Plaintiff has suffered an irreparable injury due to the infringement;
(2) monetary damages available at law are inadequate to compensate for that injury;
(3) a remedy in equity is warranted, considering the balance of hardships between the plaintiff and defendant; and
(4) the public interest would not be "disserved" by a permanent injunction.

This is a case of much interest to patent owners who've contemplated a patent infringement lawsuit against an infringer. The 2006 eBay case made it more difficult for patent holders to get an injunction against a patent infringer. Some pundits wondered if a patent holder would EVER be able to get an injunction post-eBay. But this case shows that careful adherence to the standard injunctive relief criteria can result in permanent injunctive relief against a defendant that infringes your patent.

This is good news for patent holders who figured that injunctive relief was no longer a realistic option after the eBay decision. Going forward, patent owners can be secure in knowing they continue to have the option of seeking injunctive relief, provided they can meet the criteria.

As a Miami patent attorney, my clients often ask me about their options when they encounter an infringer. Post eBay, I was unsure whether injunctive relief was still a realistic goal in patent infringement litigation. But after this recent Federal Circuit decision, I advise my clients that injunctive relief is still an option, though the criteria that must be met is more stringer than it was before the 2006 eBay decision.