If any law student out there is looking for a note topic, divided infringement and contract illegality might make for an interesting topic. Namely, to the extent that a party argues that a contract obligates another party to commit an act that results in patent infringement via divided infringement, is that contract provision unenforceable for producing an illegal result, i.e., patent infringement. And, if the contract provision is unenforceable for producing an illegal result, can direction and control for divided infringement be established by the unenforceable contract provision?
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Divided Infringement and Contract Illegality
Thursday, June 10th, 2010Swearing-In Ceremonies
Tuesday, June 8th, 2010The judges of the Federal Circuit from time to time will swear-in to the Federal Circuit bar their judicial law clerks. One of the nice aspects of this is that you can tell the genuine appreciation that the judges have for the work by their law clerks. It just so happened that one such swearing-in ceremony was one of Chief Judge Rader’s official acts as the new Chief Judge. [Listen].
Judge Rader on Judicial Confirmation Hearings
Wednesday, May 26th, 2010With the nominations of Judge Kathleen O’Malley and Edward DuMont to the Federal Circuit as well as Solicitor General Elena Kagan to the United States Supreme Court, I thought that this C-Span video from way back in 1994 of Judge Randall Rader discussing confirmation hearings before the Senate Judiciary Committee might be of interest:
Riding Circuit
Tuesday, May 25th, 2010Chief Judge Michel reported in his State of the Court address on May 20, 2010 that the Federal Circuit will be sitting in Atlanta, Georgia this November. The Federal Circuit usually makes at least one visit outside of D.C. each year. If you are curious when the last time was that the Federal Circuit sat in your city, you can view the list here: [Link].
Does Wall Street Follow Oral Arguments?
Sunday, May 23rd, 2010
Tivo 5-Year Stock Price
I’ve been curious whether there is any indication that institutional investors follow the oral arguments of patent cases at the Federal Circuit. The litigation between Tivo and Echostar finally presented an opportunity to explore this further.
As you can see from the chart above and the following court events in the Tivo/Echostar litigation, the price of Tivo’s stock has reacted quite significantly to the Tivo/Echostar litigation:
A: August 17, 2006, Judge Folsom issues an injunction against Echostar.
B: October 4, 2007, the Federal Circuit hears oral argument in the appeal of the injunction.
C: January 31, 2008, the Federal Circuit reverses-in-part (hardware infringement) and affirms-in-part (software infringement, damages, injunction) Judge Folsom’s decision.
D: June 2, 2009, Judge Folsom issues a contempt ruling in regard to Echostar’s design around design.
E: November 2, 2009, the Federal Circuit hears oral argument in the appeal of the contempt ruling.
F: March 4, 2010, a three member panel affirms the contempt ruling.
G: May 14, 2010, the Federal Circuit grants en banc review of contempt ruling.
A better graphic would show that Tivo’s stock price reacted significantly following events A, C, D, F, and G. It did not appear to react significantly in response to the oral arguments. Obviously, this offers just a couple of data points; but, it may indicate that institutional investors are not taking full advantage of their opportunities to evaluate patent litigation.
Regardless of the outcome of the Tivo/Echostar litigation, Tivo’s stock performance is a strong reminder that some investors value the power of patents.
(For the record, none of the above should be considered investment advice.)
The First Patent Related to Software
Wednesday, May 19th, 2010I’ve been reading the new book “Patent Law for Computer Scientists: Steps to Protect Computer Implemented Inventions” (Springer publishing 2010) which was written by European Patent Examiners Daniel Closa, Alex Gardiner, Falk Giemsa, and Jörg Machek. One of the interesting observations that they make in the book is that the first patent ever granted that related to software is GB1039141 granted in 1966 and titled “A Computer Arranged for the Automatic Solution of Linear Programming Problems.” The assignee — British Petroleum Company.
Details of AIPLA Electronics and Computer Law Road Show
Monday, May 17th, 2010The AIPLA has posted its list of speakers for the Electronics and Computer Law Road Show in Denver, CO on June 24th. Judge Linn will be speaking along with some of my favorite speakers in Steve Kunin, Tom Irving, David Hricik, Carl Moy, and others.
Details of the program are available here: [Brochure].
Federal Circuit Nominees’ Public Questionnaires
Friday, May 14th, 2010As part of the confirmation process, judicial nominees submit a public questionnaire to the Senate Judiciary Committee.
This is a link to the public questionnaire for Judge Kathleen O’Malley’s nomination to the Federal Circuit: [Link].
This is a link to the public questionnaire for Edward C. DuMont’s nomination to the Federal Circuit: [Link].
No dates have been set yet for Judge O’Malley’s or Mr. DuMont’s hearings before the Senate Judiciary Committee.
Wikipedia and the Federal Circuit
Tuesday, May 11th, 2010
The magnetic field around an infinite Halbach array of cube magnets
The Law.com website recently ran an article about the case of United States v. Bari, 09-1074-cr (2d. Cir March 22, 2010) in which the defendant in a criminal case challenged the district court judge’s decision as being in violation of Rule 605 of the Federal Rules of Evidence. The district court judge had apparently conducted a Google search to confirm his intuition on a “matter of common knowledge” (i.e., how many rain hats were available in the marketplace).
The judges of the Federal Circuit have been known to remark on the use of the internet. For example, some have been heard to reference Google searches, Dictionary.com, and Wikipedia. In Intamin Ltd. v. Magnetar Technologies, Inc., 483 F.3d 1328 (2007), Judge Rader references Wikipedia as teaching the basic operation of a Halbach array. [Listen]
You can read the Intamin decision from 2007 and learn more about Halbach arrays here: [Read].
You can read the U.S. v. Bari decision here: [Read].
Divided Infringement Standard Still Evolving
Monday, May 3rd, 2010In the oral argument of SiRF Technology v. ITC, 2009-1262 (Fed. Cir. April 12, 2010), there was an interesting discussion of the evolving standard for divided infringement. Despite the court’s earlier decisions in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), one gets the impression that some of the judges feel that divided infringement is still an evolving doctrine and that there is some flexibility for de minimis involvement of an unrelated third party in a method claim. Judge Dyk remarks in the following sound bite: “[A]s a matter of patent policy, why shouldn’t somebody be able to draft a claim that includes as one of the steps ‘here’s all the available information’ and the last step is turning the machine on and that’s done by somebody else . . . . ” He followed up by asking: “Assuming that the earlier cases don’t answer this particular question, where is the appropriate place to draw the line?” In addition, Judge Clevenger remarks that control of a third party analogous to principles of respondeat superior is one test for determining whether a third party was under the direction and control of a joint infringer, but it might not be the only test: [Listen].
The panel was able to avoid the issue in this case because the panel determined that by virtue of its claim construction that there was no third party involvement — rather, SiRF was deemed to have performed all the limitations of the method. The panel said:
Appellants contend that the Commission erred in concluding that SiRF directly infringes claims 1 and 2 of the ’651 patent7 and claims 1, 2, and 5 of the ’000 patent.8 The resolution of this issue depends in part on claim construction, which is an issue of law and is subject to de novo review. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).
Appellants argue that the claims are only infringed when actions are taken by SiRF’s customers and by the end users of the GPS devices; that SiRF accordingly can infringe the patents only when it is a joint infringer together with the customers and the end users; and that the requirements for joint infringement are not satisfied because SiRF does not control or direct the customers or end users. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008). The Commission found joint infringement. We do not reach the question of joint infringement because we do not read the relevant claims as requiring that any of the specified actions be taken by SiRF’s customers or by the end users of the GPS devices. This is not a situation where a method claim specifies performance of a step by a third party, or in which a third party actually performs some of the designated steps, and thus control or direction of the performance of that step by the accused infringer is required.9 Rather, the method claims at issue here are drawn to actions which can be performed and are performed by a single party. As they do not require that any of the steps be performed here by the customers or the end users, and the disputed steps are not in fact performed by third parties, we conclude that SiRF directly infringes.
First, at issue are the second, “communicati[ng]” step of claim 1 of the ’651 patent and the third, “transmitting” step of the ’000 patent. The second step of claim 1 of the ’651 patent provides for “communication [sic] the satellite ephemeris to a mobile GPS receiver at a second location.” ’651 patent col.10 ll.64-65. The third step of claim 1 of the ’000 patent provides for “transmitting the formatted data to a remote receiver.” ’000 patent col.6 l.47. Appellants argue that the performance of these steps necessarily involves actions by SiRF’s customers and by the end users of the GPS devices. They argue that in order for the data to be “communicat[ed]” or “transmit[ed]” to the GPS receiver, the data must travel first from SiRF’s server to the servers of its customers (the intermediate distributors and GPS product manufacturers). Then, SiRF’s customers must forward this data to the mobile GPS receivers, and the end users of the GPS devices must download the data from the customers’ servers.
Neither the claim language nor the patent specification requires that the communication/transmission be direct. In fact, indirect communication is specifically contemplated. See ’651 patent col.3 ll.42-48 (“The link may be a landline, or other direct communications path . . . . Alternatively, this link may have several parts . . . .”) (label numbers omitted). Therefore, we construe these limitations as encompassing “communicating, whether direct or indirect” and “transmitting, whether direct or indirect.”
With respect to infringement, under this construction it is clear that SiRF performs the step of communicating/transmitting the files to the end users’ devices because SiRF initiates the process of transmitting and communicating, and the files are actually transmitted to the end users. The entire “end-to-end service,” as SiRF’s marketing describes it, J.A. 16,206, was designed by SiRF so that the EE files would be transmitted to end-user GPS devices containing SiRF chips and software. Indeed, the EE files generated by SiRF only work in the end-user devices of those devices containing SiRF chips and SiRF software. Here, it is true that the “communicati[ng]” or “transmitting” can only occur if the customer forwards the data to the end user and the end user downloads the data. However, the actions of “forwarding” or “downloading” are not required by the claims, and, therefore, the fact that other parties perform these actions does not preclude a finding of direct infringement. By analogy, if a claim for a method of making a telephone call included the limitation: “placing a telephone call to a telephone at a second location,” the fact that the call must first be routed through a switched telephone network, and then eventually to the eventual recipient, would not prevent this claim limitation from being satisfied. Therefore, we conclude SiRF indirectly transmits or communicates the files to the GPS receivers and thereby meets these claim limitations.
Second, at issue are the third step of claim 1 of the ’651 patent, which requires “processing [the] satellite signals received at the mobile GPS receiver,” ’651 patent col.10 ll.66-67 and the fourth step of claim 1 of the ’000 patent, which requires “representing [the] formatted data in a second format supported by the remote receiver,” ’000 patent col.6 ll.48-49. With respect to the ’651 patent, the ALJ noted that the processing “occurs at the mobile GPS receiver.” Initial Determination, slip op. at 140-42. With respect to the ’000 patent, the ALJ noted that “[t]he parties are in agreement that [this limitation] is to be construed as ‘converting the data received in the first format to a second format supported by the remote receiver.’” Id. at 125-26. The parties agree that the “processing” and “representing” steps must take place in the mobile GPS device.
Appellants argue that SiRF does not perform this step because though the GPS receivers employ SiRF chips and InstantFix software, end users must actually initiate the process of downloading the EE data by connecting the device to the Internet and activating the InstantFix functionality. Then, the end user must either enable the “auto update” feature or enable the “manual update” feature in order for EE files to be transmitted to the receiver. Appellants argue that this action by an end user negates performance by SiRF of the “processing” or “representing” claim limitations.
Appellants’ argument misreads the claim limitations. There exists no method step in any of the disputed claims that requires “enabling” or “activating” the devices that perform these claim limitations. Nor is there a step which requires “downloading” the data into the GPS receiver. Appellants, in essence, ask us to read such limitations into the claims. We decline to do so. See, e.g., Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340-41 (Fed. Cir. 1999). We therefore construe the “processing” and “representing” steps of the asserted claims as taking place in a GPS receiver that is enabled and ready to process data.
When properly construed, it is clear that SiRF infringes as its devices and software dictate the performance of the “processing” and “representing” steps. Once the technology is enabled, SiRF’s SiRFstarIII chip and software, designed and built by SiRF, automatically perform the disputed steps of the claims at issue because the SiRFstarIII chips are programmed by SiRF to use the InstantFix ephemeris data automatically if it has been transmitted to the remote device. Neither SiRF’s customers (the equipment manufacturers and software developers) nor the end users of the GPS receivers can modify the use of the EE files by SiRF’s software or the functionality of the SiRFstarIII chip. Once the GPS receiver is enabled and ready to process the data, only SiRF’s actions are involved in “processing” or “representing” the data.
SiRF performs all of the claim limitations of claim 1 of the ’651 patent and claim 1 of the ’000 patent, and therefore directly infringes the asserted claims.
7 Claim 1 of the ’651 patent reads as follows:
1. A method of receiving global positioning system (GPS) satellite signals comprising:
receiving satellite ephemeris at a first location;
communication [sic] the satellite ephemeris to a mobile GPS receiver at a second location; and
processing satellite signals received at the mobile GPS receiver using the ephemeris to reduce code and frequency uncertainty in the mobile GPS receiver to improve acquisition sensitivity of the mobile GPS receiver.
8 Claim 1 of the ’000 patent reads as follows:
1. A method of creating and distributing compact satellite orbit models comprising:
receiving satellite signals from at least one satellite and at least one receiving station;
extracting at least a portion of the satellite tracking data from said satellite signal, representing said data in a first format;
transmitting the formatted data to a remote receiver; and
at the remote receiver, representing said formatted data in a second format supported by the remote receiver.
9 For example, in Muniauction, the method at issue required actions to be taken by both a “bidder” and an “issuer.” See 532 F.3d at 1322. In BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed. Cir. 2007), the parties “agree[d] [that] Paymentech [the accused infringer] does not perform every step of the method at issue in this case.”
You can listen to the entire oral argument here: [Listen].
You can read the decision here: [Read].
Beauregard claims
Thursday, April 29th, 2010I thought it might be of interest to prosecutors who write software patent applications that one of the claims at issue in yesterday’s Oracle v. Parallel Networks, 2009-1183 (Fed. Cir. April 28, 2010) decision concerned a Beauregard claim. Perhaps the Federal Circuit has had a chance to review other Beauregard claims; but, other than in Ariba v. Emptoris, 2009-1230 (Fed. Cir. Jan. 8, 2010) this is the only one that I’ve noticed.
While method, apparatus, and Beauregard (article of manufacture) claims were at issue, the court selected the Beauregard claim as the representative claim in its opinion. Judge Rader wrote:
Parallel Networks asserts that certain Oracle products infringe claims 1–5 and 7–11 of the ’554 patent and claims 2 and 16 of the ’335 patent. Claim 11 of the ’554 patent is representative:
A machine readable medium having stored thereon data representing sequences of instructions, which when executed by a computer system, cause said computer system to perform the steps of:
routing a dynamic web page generation request from a Web server to a page server, said page server receiving said request and releasing said Web server to process other requests wherein said routing step further includes the steps of intercepting said request at said Web server, routing said request from said Web server to a dispatcher, and dispatching said request to said page server;
processing said request, said processing being performed by said page server while said Web server concurrently processes said other requests; and
dynamically generating a Web page, said Web page including data retrieved from one or more data sources.
’554 patent col.10 ll.24–41 (emphases added). All asserted claims have the “releasing” limitation, the “intercepting” limitation, and the “dispatching” limitation.
The link to the court’s opinion is available here: [Link].
The “Befuddled Examiner” standard
Sunday, April 25th, 2010In Harari v. Hollmer, 2009-1406 (Fed. Cir. April 19, 2010) decided this past week, the Federal Circuit introduced a new standard, the “befuddled examiner” standard, in assessing whether an applicant’s actions were appropriate. The case concerned incorporation by reference language to a co-filed application in the primogenitor application and whether it was appropriate to amend the specification of the great-great-grandchild application to insert the assigned serial number for the incorporated by reference application many years after-the-fact. The court stated:
In addition to failing to compare the preliminary amendment to the initial parent disclosure, the Board appears to have applied the wrong standard in determining that the incorporation language was confusing. The disputed continuation application is at the initial filing stage, where the examiner is first presented with an original disclosure and a preliminary amendment. The proper standard by which to evaluate the sufficiency of incorporation by reference language, at this stage of the proceedings, is whether the identity of the incorporated reference is clear to a reasonable examiner in light of the documents presented.2 In other words, the relevant inquiry is whether a reasonable examiner would be so befuddled by the language of the original disclosure, despite the explanation provided in the transmittal and preliminary amendment, that he could not determine what document was intended to be incorporated by reference. See In re Fouche, 439 F.2d 1237, 1239 (CCPA 1971); see also 37 C.F.R. § 1.57(g)(2).
During oral argument, the panel also discussed the “befuddlement” or lack thereof by the examiner: [Listen].
I think the “befuddled examiner” is probably the correct choice for this new standard. As I look at my thesaurus, other possible choices just don’t seem to have the exactitude required for a legal standard, for example:
“the confused examiner”
“the perplexed examiner”
“the confounded examiner”
“the discombobulated examiner”
“the bedeviled examiner”
“the bewildered examiner”
“the flummoxed examiner”
“the baffled examiner”
“the mystified examiner”
“the puzzled examiner.”
You can read the court’s opinion here: [Read].
You can listen to the entire oral argument here: [Listen].
This day in history at 717 Madison Place
Wednesday, April 14th, 2010
17 Madison Place
On April 14th, 1865, John Wilkes Booth shot and fatally wounded Abraham Lincoln. That same evening, a co-conspirator of Booth’s attempted to assassinate Lincoln’s Secretary of State, William H. Seward. Seward was living at the time in a house (now demolished) at 17 Madison Place. That address would later be re-designated as 717 Madison Place, where the building for the Court of Appeals for the Federal Circuit now resides.
Seward’s attacker was Lewis Powell. Powell gained access to the house under the ruse of delivering medicine to Seward who was recovering from a carriage accident. After first struggling with Seward’s son and critically injuring him, Powell stabbed Seward several times with his Bowie knife before fleeing the house. It is thought that Seward’s jaw splint from his carriage accident prevented a fatal blow during the attack.
Powell was apprehended the following day and later executed along with other Lincoln assassination conspirators.
Seward recovered from his wounds and would later successfully negotiate the purchase of Alaska from Russia for $7.2 million on March 30, 1867.
Disrupting settled expectations
Monday, April 5th, 2010In the recent en banc decision in Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 2008-1248 (Fed. Cir. Mar. 22, 2010), the majority opinion contains the following statement about not disrupting settled expectations of the inventing community:
In addition to the statutory language and Supreme Court precedent supporting the existence of a written description requirement separate from enablement, stare decisis impels us to uphold it now. Ariad acknowledges that this has been the law for over forty years, see Appellee Br. 24, and to change course now would disrupt the settled expectations of the inventing community, which has relied on it in drafting and prosecuting patents, concluding licensing agreements, and rendering validity and infringement opinions. As the Supreme Court stated in admonishing this court, we “must be cautious before adopting changes that disrupt the settled expectations of the inventing community.” Festo, 535 U.S. at 739; see also Watson v. United States, 552 U.S. 74, 82 (2007) (“A difference of opinion within the Court . . . does not keep the door open for another try at statutory construction, where stare decisis has special force [since] the legislative power is implicated, and Congress remains free to alter what we have done.” (internal quotations omitted)). If the law of written description is to be changed, contrary to sound policy and the uniform holdings of this court, the settled expectations of the inventing and investing communities, and PTO practice, such a decision would require good reason and would rest with Congress.
While it is reassuring to know that the en banc panel of the Federal Circuit appreciates the importance of not disrupting the settled expectations of the inventing community, one wonders if this is more sizzle than steak.
(1) Take for example the cases of Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358 (Fed. Cir. 2003) and McKesson Info. Solutions, Inc. v. Bridge Med., Inc., 487 F.3d 897 (Fed. Cir. 2007) in which the Federal Circuit seemingly failed to appreciate the long-accepted practice by the inventing community of not citing office actions from related patent applications back to the Patent Office (the same Patent Office that issued the office actions in the first place). In those cases, the Federal Circuit certainly disrupted the settled expectations of the inventing community by casting a cloud over the validity of many issued U.S. patents. As a kicker, the U.S. Patent Office, already struggling with a massive backlog, has been burdened with processing additional IDS filings that waste the Patent Office’s resources and applicants’ money.
(2) As another example, consider the use of patent abstracts by the Federal Circuit to construe claim language. Prior to the amendment of 37 CFR §1.72 this past decade, 37 CFR §1.72 expressly stated that the abstract of a patent “shall not be used for interpreting the scope of the claims.” Abstracts are required by the PTO to assist the PTO and the public generally in determining quickly from a cursory inspection of a patent application or issued patent the nature and gist of the technical disclosure.
In Hill-Rom Co., Inc. v. Kinetic Concepts, Inc., 209 F.3d 1337 (Fed. Cir. 2000), the court stated:
Citing 37 C.F.R. § 1.72(b), which provides that the abstract of the patent “shall not be used for interpreting the scope of the claims,” Hill-Rom argues that it would be improper for us to consider the abstract in determining whether the district court correctly construed the claims of the ‘346 patent. Section 1.72(b), however, is a rule of the Patent and Trademark Office that governs the conduct of patent examiners in examining patent applications; it does not address the process by which courts construe claims in infringement actions. We have frequently looked to the abstract to determine the scope of the invention, see, e.g., United States Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1560, 41 USPQ2d 1225, 1230 (Fed. Cir. 1997); Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409, 1412, 40 USPQ2d 1065, 1066 (Fed. Cir. 1996); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1269, 229 USPQ 805, 810 (Fed. Cir. 1986), and we are aware of no legal principle that would require us to disregard that potentially helpful source of intrinsic evidence as to the meaning of claims.
The selective acknowledgement of Patent Office regulations by the Federal Circuit certainly does not indicate a respect for the settled expectations of the inventing community.
(3) Perhaps the strongest trend these days is for the Federal Circuit to rely heavily on the language “the invention” or “the present invention” when construing a claim. Such language has been used for aeons in patents. Nevertheless, in the last decade or so, the court has been relying on this language with increasing frequency to read limitations into a claim. In doing so, it failed to take into account the long-settled expectations of the inventing community as well as the significant effect on the construction of claim language in issued patents written as many as twenty years earlier.
Citizen Lawyer
Thursday, April 1st, 2010Please pardon the brief digression; but, it is that time of the year when your local Science Fair is scrambling for judges. Science Fair judging is a great opportunity for patent lawyers to use their skill sets to give back to the community in a small way.