Patentee’s Arguments in Reexamination Create Intervening Rights, Erasing $29.4 Million Verdict
Scott Daniels | September 27, 2011
The CAFC panel decision yesterday in Marine Polymer Techs. v. HemCon will do more to popularize reexamination than all the proselytizing by all the reexamination lawyers and bloggers ever could. The Court held that an argument made by the patentee traversing a rejection in reexamination constituted a disclaimer of patented subject matter; this disclaimer triggered absolute intervening rights for the accused infringer under 35 U.S.C. §§ 252 and 307(b), thereby eliminating all damages for the period before the issuance of the reexamination certificate. The Court also suggested that the accused infringer might also be protected by equitable intervening rights for the period after issuance of the reexamination certificate and sent the case back to the trial court for further fact-finding.
Marine had sued HemCon for infringement of the patent. The trial judge issued summary judgment of literal infringement. At trial last September, the jury found that the patent was valid and awarded damages of $29.4 million for past infringement, and the trial judge issued a permanent injunction barring future infringement. A year before the trial started, however, HemCon requested reexamination. Though Marine’s patent ultimately emerged from the reexamination without cancelation or even amendment of the independent claims, Marine was forced to make an argument in the reexamination that resulted in the jury’s verdict and the judge’s injunction being vacated by the CAFC.
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Rambus ‘918 Patent Healthy Despite Loss at PTO Board
Scott Daniels | January 14, 2011
Despite a suggestion in the blogosphere that Rambus has been “tripped up” in reexamination, its U.S. Patent No. 6,034,918 for a method of operation of a semiconductor device remains commercially strong. Vigorously litigated patents are often tested on several fronts: in multiple District Courts cases, at the U.S. ITC, in reexamination at the PTO, and ultimately at the Federal Circuit. To assess a patent’s strength, its status in each forum must be considered.
On Wednesday, the PTO Board affirmed the reexamination examiner’s rejection of independent claim 18 as being invalid over the prior art. The examiner had already confirmed the validity, however, of the other two claims in reexamination, dependent claims 24 and 33. The reexamination had been requested by Hynix whom Rambus had sued for infringement of the ‘918 patent in the Northern District of California. In that case, Judge Ronald Whyte issued a judgment last March that claims 24 and 33 of the ‘918 patent, along with a number of claims from other Rambus patents, were valid and infringed. Thus, Wednesday’s Board decision, though favorable to Hynix, does not undermine Rambus’ position vis-a-vis Hynix.
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CAFC Finds HFC Patent Valid because Honeywell was not “Another Inventor” under § 102(g)(2)
Scott Daniels | October 15, 2010
This Wednesday the CAFC held in Solvay v. Honeywell that Honeywell’s activities in the United States did not constitute prior art under 35 U.S.C. § 102(g)(2) against Solvay’s U.S. Patent No. 6,730,817. The CAFC therefore reversed the trial court’s summary judgment that the patent was rendered invalid by Honeywell’s activities. Solvay’s ‘817 patent claims a method for making hydrofluorocarbons (HFCs) that are used in refrigeration and aerosol systems, as environmentally-friendly alternatives to chlorofluorocarbons (CFCs).
Paragraph (g) is the so-called “interference provision” of Section 102, but it also defines prior art that may be used in infringement actions, as in the present Solvay case. Section 102(g)(2) provides in relevant part that a person is entitled to a patent if “before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it” (emphasis added). The issue for the CAFC was whether Honeywell was “another inventor,” i.e., had it invented the claimed process. The CAFC said no.
Thankfully, the facts were not in dispute.
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Surviving Reexamination May Help Patentee Prove Willful Infringement
Scott Daniels | October 6, 2010
The CAFC’s 2007 decision In re Seagate contains a passage suggesting that a patentee must successfully move for a preliminary injunction in order to show that the defendant’s infringement, after the filing date of the complaint, was willful. In dicta, the Court stated that a “patentee who does not attempt to stop an accused infringer’s activities in this manner [by seeking a preliminary injunction] should not be allowed to accrue enhanced damages based solely on the infringer’s post-filing conduct”).
Since Seagate numerous trial courts have considered this question of whether the patentee must seek preliminary relief. The consensus appears to be that there is no per se rule – whether post-complaint acts of infringement were willful depends on the facts of the individual case. Of special interest to us is the holding of the trial court in St. Clair Intellectual Prop. Consultants, Inc. v. Palm, Inc., specifically that when a patent has emerged from reexamination without narrowing amendment of the claims, the patentee had thereby established sufficient likelihood that the defendant infringed a valid patent, so that the patentee could assert willful infringement without first seeking a preliminary injunction.
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Judge Robinson Reluctantly Waits for CAFC Ruling on PTO’s Rejection of Claims in Reexamination
Scott Daniels | July 28, 2010
Last week Judge James Cohn of the Southern District of Florida withdrew a permanent injunction, deferring to a PTO advisory action finding that the patent in reexamination was invalid. On Monday, Judge Sue Robinson – in Sigram v. Cisco, 2010 U.S. Dist. LEXIS 74948 (D. Del. July 26, 2010) – with great reluctance, deferred her decision on patent validity until the CAFC determines whether the PTO correctly rejected the patent claims in two reexamination proceedings.
Sigram (SSBG) had sued Cisco in Delaware for infringement of U.S. Patent Nos. 6,954,453, 7,145,902 and 7,483,431, each related to voice over internet protocols (VoIP). Cisco replied by requesting reexamination of the ‘453 and ‘902 patents. (No request was filed against the ‘431 patent). The claims were subsequently rejected and final rejections are currently on appeal at the PTO Board. Cisco has now moved for summary judgment of invalidity, citing the same combinations of prior art that it had presented in its reexamination requests.
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特許庁再審査のアドバイザリーアクションに基づく、裁判官による差し止めの解除
Scott Daniels and Yoshiya Nakamura | July 26, 2010
English Language Version (via IPWatchdog)
In re Swansonでの一連の出来事は周知であろう。本件では、陪審員は特許は有効かつ侵害されていると評決し、CAFCはその評決に基づく地裁判決を容認した。その後、侵害被疑者は米国特許庁に特許の再審査請求を行ったところ、米国特許庁は特許クレームを拒絶した。そして、すでに特許は有効であると判断されているにもかかわらず、CAFCは特許庁の拒絶判断を維持した。CAFCは、有効性は特許庁と裁判所とで異なる争点であると述べ、明らかに相反する結果を容認したのである。これはSwansonで示された注目すべき結論を踏襲するものであり、侵害被疑者の間で再審査がそれほどよく利用されるようになった理由の一つである。
フロリダ州南地区地方裁判所のJames Cohn判事は、Swansonのアプローチをさらに一歩進め、本件Flexiteek Americas v. PlasTEAK (Case No. 08-60996-civ-Cohn/Seltzer)において、問題の特許が無効であると判断した再審査のアドバイザリーアクションに基づき、本案差し止め命令を取り下げた。
Flexiteekは、PlasTEAKが合成チーク材の板張りに関する米国特許第6,895,881号を侵害しているとして提訴した。公判前、Cohn判事は、新規性および自明性の争点においてPlasTEAKはそれらにつき積極的抗弁の基礎をまったく主張しなかったとして、PlasTEAKを退ける略式判決（サマリージャッジメント）を出した。2009年6月の公判で陪審はPlasTEAKが‘881特許を文言侵害していると判断した。
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Mid-July Developments
Scott Daniels | July 22, 2010
1. Board Reverses Rejection of Breed Airbag Patent
David Breed and Automotive Technologies International (ATI) won a victory yesterday at the PTO Board. In a reexamination of their U.S. Patent No. 6,712,352 for an “arrangement for controlling deployment of a side airbag,” Breed and ATI substantially amended their claims to distinguish over certain prior art. In doing so, however, they included claim wording that the examiner found to lack written description support in the ‘352 specification. Although original claims under reexamination are not checked for compliance with 35 U.S.C. § 112, amendments to original claims and new claims are, and the examiner therefore rejected the pending claims.
The Board has now reversed the examiner, finding that the ‘352 specification is “sufficiently clear that the inventors possessed the claimed subject matter as evidenced by explicit identification of the problem of side airbag deployment causing injury to a child when the child’s head is against the airbag module, and statements indicating that the described invention addresses this identified problem.”
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Practice Note on Reissue Applications
Scott Daniels | July 14, 2010
People who follow the CAFC will undoubtedly recall the decision Pfizer v. Ranbaxy in which the CAFC found that claim 6 was invalid as an improper dependent claim under 35 U.S.C. § 112, ¶ 4 because it covered embodiments outside the scope of the claim on which it depended. 457 F.3d 1284, 1291 (Fed. Cir. 2006). The loss was especially painful for Pfizer because the patent – U.S. Patent No. 5,273,995 – claimed its extremely successful cholesterol-controlling composition, Lipitor®.
Pfizer sought to overcome its problem with claim 6 by filing a reissue application where it corrected claim 6 and added two new claims, and by later filing a second reissue application (as a continuation of Pfizer’s first reissue application) where it deleted claim 6 altogether and added one new claim. In March 2009, the PTO allowed Pfizer’s first reissue application as the ‘667 reissue patent in which claim 6 was rewritten in independent form. Pfizer’s second reissue application is still pending at the PTO.
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Tessera Defends ITC Exclusion Order at CAFC
Scott Daniels | June 10, 2010
Last week I described the interesting issue raised in Tessera’s ITC case involving semiconductor packaging: whether the public interest is harmed if the ITC issues an exclusion order based on infringement of a patent that has been rejected as invalid in a copending but unfinished reexamination proceeding.
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Challenge at the CAFC to ITC Exclusion Order Based on Claims Rejected in Reexamination
Scott Daniels | June 2, 2010
Tessera’s ITC case involving computer chip packaging is of considerable commercial significance to the semiconductor industry. But it also raises the fascinating legal question of whether the Commission should issue an exclusion order against infringing imported products where the patent claims have been rejected in copending reexamination proceedings. Where the ITC finds violation of Section 337, the statute requires it to issue an exclusion order and/or a cease & desist order to protect the domestic industry, unless such relief would harm the public interest. Is the public interest harmed by the enforcement of patent claims currently under rejection at the PTO?
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