1 patent law randy canis class 10 prosecution pt. 1; infringement pt. 2; st: interviewing patent...

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PATENT LAW

Randy Canis

CLASS 10

Prosecution pt. 1;Infringement pt. 2;

ST: Interviewing Patent Applications

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Prosecution

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What is Prosecution?• Negotiation by inventors or their

representatives as by patent counsel or patent agent with a patent examiner & other PTO officials administratively in procedures involving the patent application, examination, amendment, continuing procedures and patent grant.

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General Prosecution Overview

• Step 0 – Prepare an invention disclosure form• Step 1 – Identifying person to draft (and likely prosecute) patent

application– Applicant– Patent attorney or agent

• Step 2 – Prior Art search– Not required… but highly recommended

• Step 3 – Determine whether an application should be filed– Provisional– Nonprovisional

• Step 4 – Prepare and file the application• Step 5 – Prosecution (including possible appeal(s))• Step 6 – Allowance or Abandonment• Step 7 – Continuation Applications (prior to issuance or

abandonment)?

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Examination and Office Actions

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Pre-Examination by Administrator at the PTO

• For formal requirements• Required inventor(s) declaration• Necessary fees• All necessary parts & papers• A description and at least one claim• Drawings meet specific requirements

– No drawings sometimes in chemical cases

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Examination of non-provisional applications steps at PTO:

• A patent application is classified and assigned to an art unit

• A SPE from the art unit assigns the patent application to an Examiner

• The assigned patent examiner takes up the application in order from a queue of cases– The order in which the application is dependent

on a few different factors• Examiner begins an examination of the application

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Examiner conducts search of the prior art

• Search Locations– In classes and subclasses considered

pertinent plus key word searchings– Patents and patent applications both

domestic and foreign– Technical publications, journals, and

texts available to examiner to a limited degree

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Examiner’s review of application

• Examiner considers whether application (with its claims) meets requirements of Patent Laws

• Examiner considers whether claims of application meet certain requirements

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Examiner considers whether claims of application--

• Define patentable inventions (35 USC 101)• Define inventions that are novel (35 USC 102) over

prior art• Define inventions that are unobvious (35 USC 103)

over prior art• The patent application meets 112 requirements

including written description and definiteness• Examiner then writes a summary of the examination

called an “Office Action”• Office Action is mailed (electronically or in paper) to

applicant

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Office Action

Summarizes the findings of examiner

• As to each claim specifically – each claim is rejected, allowed, objected to

indicating allowable if rewritten in independent form

• Any objections to the drawings, specification, title, or abstract are included

• The office action could also include a double patenting rejection

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Office Action date & response

Has a date of mailing and from that date

sets a date for response by applicant:• Typically 3 mo. for substantive rejections or• Shorter (e.g., 1 or 2 mo.) for informal

requirements such as requiring applicant to elect between different species of claimed inventions regarded by examiner as independent (e.g., method and apparatus)

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Response by Applicant to Office Action

• Must address each point of rejection.• May argue that rejection was improper.• May present amendments to overcome

rejections.• May amend claims, as by limiting them to

avoid prior art.• Must be submitted within period allowed.• Extensions (with fees) permitted but with

risk of shortening statutory term of patent.

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Further Office Action possible

• Might be a Notice of Allowability.

• Might allow some claims.

• Might apply other rejections or objections, as based on a further search.

• Might be a final rejection.

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• Could put some other claims into allowable condition.

• Could provide further arguments and/or amendments.

• Cannot add additional claims.• May not raise new issues.• Could be valuable even if not successful

(“not entered”) by opening the possibility of amendments in a continuing application.

• Filing an RCE restarts the process.

Response to Final Rejection

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If further response by applicant successful--

• Notice of Allowability and Issue Fee Due will follow

• Issue Fee and Publication Fee will be due and payable by a date certain

• Patent will then issue typically some time (e.g., ~2 mo.) after payment of issue fee.

Discussion of Example Prosecution

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Types of Applications

• Nonprovisional Patent Applications

• Provisional Patent Applications

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NonProvisional Patent Applications

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Types of NonProvisional Applications

Five Types of Applications

• Original

• Continuation

• Continuation-in-Part (CIP)

• Divisional

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Transco Products Inc. v. Performance Contracting, Inc.

• “An applicant may file a continuation, divisional, or a continuation-in-part (CIP) application of a prior application.”

• These are all “continuing” applications under 35 U.S.C. 120.

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Continuation Possibilities

• Continuation – might claim other aspects disclosed but not claimed, or claimed in the same way as rejected claims

• Request for Continuing Examination (RCE) – removes finality of the office action (e.g., pay to play)

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Provisional Patent Applications

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Provisional versus Nonprovisional

Provisional• Less preparation time• Can not amend• No claims required• Not examined• Informal• Valid for only 1 year;

must timely file nonprovisional claiming priority

Nonprovisional• More preparation time

• Amendments are possible

• Must have at least 1 claim

• Examined

• More formal

• Application valid until abandoned or patent issued

• New fee schedule as of 1/1/14 is here http://www.uspto.gov/web/offices/ac/qs/ope/fee010114.htm

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Provisional applications -- steps at PTO

• Application receives a filing date and serial number

• Application is considered only for identification of names and addresses of inventors, and for payment of fee

• Application will not be examined• Application drawings may be informal• Application need not include claims• No substantive prosecution

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Selecting the type of patent application

• Provisional Patent Application (“PPA”)– a simplified set of requirements

versus

• Non-provisional (Utility) Patent Application (“UPA” or “NPA”)

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Provisional applications -- tips:• Suggestion: include full scope of disclosure even

though there is no examination• Representative claims, broad to narrow, are useful • Why? Application serves as a priority in U.S. • Provides priority also for foreign applications• If foreign filing planned, provisional is priority• Caution: Provisional will be scrutinized by opponent if

non-provisional results in patent asserted against opponent; don’t be shoddy

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Continuing Applications and Appeals

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Other Continuation Possibilities

• Divisional Application (CPA)– To prosecute claims on independent invention– Examiner restricted cls. to independent

invention

• Continuation-in-Part (CIP) Applicant– To add matter not present in earlier application– Where part or all of earlier application is present

• Timing of Filing of Continuation(s)– Before termination of proceedings in parent– Before payment of issue fee in parent

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Choices other than continuation(s)

• Petition the Assistant Commissioner of Patents– Petition based on contended examiner

error – Petition when examiner procedural error

in question– Further appeal possible to U.S. District

Court (District of Virginia after AIA)

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Choices Other Than Continuation(s)

• Appeal to Patent Trial and Appeal Board (PTAB)– Appeal is statutory (35 USC 134)– Issues re examiner's rejection of claims when level

of invention &/or interp. of art in question – Tribunal is three senior examiners; considers:

• Applicant’s Brief on Appeal• Examiner’s Brief on Appeal

– Decides/remands to exam’r for further exam’n – Further appeal possible to Fed. Cir. Ct. of Appeals– http://www.uspto.gov/ip/boards/bpai/index.jsp

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Publication

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Publication of patent applications• 18 months after filing unless applicant requests

otherwise upon filing & certifies has not & won’t be subject of an application filed in a foreign country

• Provisional rights available to patentees to obtain reasonable royalties if others make, use, sell, or import invention in the period between publication and grant

• Applicant can consider if foreign counterparts will be sought after all, after non-publication request (NPR).

• If applicant then files for foreign patent, must notify PTO in US application within 60 days & withdraw NPR. Application then is published ASAP

• PRIOR ART effect for published applications --Sec.102(e)

• http://www.uspto.gov/web/offices/pac/mpep/s1120.html

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Double Patenting

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Double Patenting

Sec. 101 of Patent Statutes permits "a"[ read "single"] patent for any new and useful invention

Can arise when multiple patent applications are submitted by same entity on closely related inventions

Statutory v. Nonstatutory-Type http://www.uspto.gov/web/offices/pac/mpep/

s804.html

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Non-Statutory Double Patenting

In such instances issues of double patenting often overcome by use of terminal disclaimer:

Term of second patent after expiration of first patent is disclaimed.

Both patent then expire on the same date.

Both patents must remain commonly owned.

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Patent Term

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Term of Patent• Patent will issue to be in effect 20 years from:

– Date of first filing of this or parent application– Or as limited by delays of applicant during

prosecution– E.g., extensions of time required by applicant– Or as limited by the lapse of a parent application– Or where terminal disclaimer was submitted to

overcome a double patenting rejection• Patent is subject to maintenance fees payable 3.5, 7.5

& 11.5 years after issuance

Term of Patent

• Continuing applications– 20 years from earliest filing date for which a benefit is

claimed

• Based off of an international application– 20 years from filing date of international application—not

the US application (unless priority dates back to original US nonprovisional application)

• Foreign priority– Not considered in term

• Provisional application– Not considered in term

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Term of Patent

• 35 U.S.C. 154 – Term Guarantees

• GUARANTEE OF PROMPT PATENT AND TRADEMARK OFFICE RESPONSES

• GUARANTEE OF NO MORE THAN 3-YEAR APPLICATION PENDENCY.

• GUARANTEE OR ADJUSTMENTS FOR DELAYS DUE TO INTERFERENCES, SECRECY ORDERS, AND APPEALS.

• http://www.uspto.gov/web/offices/pac/mpep/mpep-9015-appx-l.html#d0e303482

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Duty of Disclosure/Inequitable Conduct

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Citation of Material to the USPTO• Each individual associated with the

filing and prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section.

• 37 C.F.R. § 1.56(a)

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Duty of Disclosure

• Persons that are under the Duty of Disclosure include: Inventors Applicant Attorneys

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Duty of Disclosure

Types of Materials to be Disclosed: Known Prior Art Prior Art in Related US Matters Prior Art in Related Foreign Matters Advise PTO of related matters

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Current Method of Disclosure

• Applicants submit one or more information disclosure statements (IDS) during prosecution to make the USPTO aware of any prior art that an examiner would consider material.

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Timely IDS Submission

• Before a first office action: may be submitted without certification or fee

• After a first office action: may be submitted with a timeliness certification or a fee

• After allowance: may be submitted with a timeliness certification and a fee

• After payment of issue fee: may be withdrawn from issue, admission of unpatentability of at least one claim, and an amendment with explanation giving reasons why claim(s) patentable

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Failure to Disclose

• Failing to disclosure known prior art may result in a finding of inequitable conduct. An inequitable conduct finding makes a unenforceable even if the patent would otherwise be valid. In addition, an inequitable conduct finding may result in the patent attorney being liable for malpractice.

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Duty of Candor

• Patent Rule 56 [37 CFR 1.56]: . . . Each individual associated with the filing and

prosecution of a patent application has a duty of candor and good faith in dealing with the Office, which includes a duty to disclose to the Office all information known to that individual to be material to patentability as defined in this section. The duty to disclose information exists with respect to each pending claim until the claim is cancelled or withdrawn from consideration, or the application becomes abandoned. . . .

[Emphasis added]

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Duty of Candor

• Patent Rule 56 [37 CFR 1.56] (continued): . . . The duty to disclose all information known to

be material to patentability is deemed to be satisfied if all information known to be material to patentability of any claim issued in a patent was cited by the Office or submitted to the Office in the manner prescribed by §§ 1.97(b)-(d) and 1.98. However, no patent will be granted on an application in connection with which fraud on the Office was practiced or attempted or the duty of disclosure was violated through bad faith or intentional misconduct. . . .

[Emphasis added]

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Does PTO enforce Rule 56?

No, except in interferences (2 or >2 parties) Not able as practical matter to enforce PTO does not investigate & no way to do so PTO puts the burden on applicants in most

instances to comply with Rule 56 Duty of candor continues thru prosecution Patent infringement action, opponent focus! High probability Rule 56 will be an issue. Lack of candor can be fatal to patent.

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Critical points about candor & inequitable conduct

• Inequitable conduct even as to a single claim renders entire patent invalid & unenforceable

• Fruit of the poisonous tree• Inequitable conduct can create antitrust

liability where patent should have been denied or is invalid from inequitable conduct

• But inequitable conduct can be purged by appropriate handling

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PTO relies on voluntary disclosure of information by an applicant, who has an uncompromising duty to disclose material facts bearing on the "patentability" of the claimed invention in order to ensure that a patent issues free from fraud or inequitable conduct.

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Candor and duty to disclose are at the heart of our U.S. patent system. The applicant has a duty to disclose material information bearing on patentability. All persons substantively involved in the patent application, preparation or prosecution must disclose to the PTO any "material" prior patents or publications of which they are aware.

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If the duty of disclosure is violated with respect to any claim of a patent, then entire patent becomes unenforceable.And others patents derived from it will also be UNENFORCEABLE !!!

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McKesson Information Solutions v. Bridge Medical

The case relates to non-disclosure to the PTO of three items during prosecution of a patent application.

At the district court, a determination was made the items were material and that the disclosures were made with deceptive intent.

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• First application – Attorney argued “[n]one of the references either singularly or in combination teach or suggest the claimed invention. In addition to numerous other differences, none of the references teach the three node approach to communications as provided in the claimed invention.”

• Second application Co-pending with the first application Same initial citation of prior art The attorney had disclosed the existence of the first

application, but did not disclose the rejection of the claims in the office action received in the first case.

Attorney disclosed and had an interview regarding a new prior art reference for the second application but not the first application.

Attorney did not make the first Examiner aware of the allowance of the second application.

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• Omissions Deemed Material Failure to disclosure a patent

considered relevant by PTO in a similar application

Rejection of claims in a similar application

Allowance of claims in a similar application

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• Unenforceability "A patent may be rendered unenforceable

for inequitable conduct if an applicant, with intent to mislead or deceive the examiner, fails to disclose material information or submits materially false information to the PTO during prosecution." Digital Control Inc. v. Charles Mach. Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006)

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Judgment is based on a reasonable examiner standard

Would an examiner consider the materials important or cumulative?

MPEP 2106

Therasense, Inc. v. Becton, Dickinson & Co.

• Case History– D.C. – unenforceable due to inequitable

conduct– En Banc Federal Circuit – vacates and

remands

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• Invention– Disposable blood glucose test strips for

diabetes management

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Therasense, Inc. v. Becton, Dickinson & Co.Claim 1

A single use disposable electrode strip for attachment to the signal readout circuitry of a sensor to detect a current representative of the concentration of a compound in a drop of a whole blood sample comprising:

a) an elongated support having a substantially flat, planar surface, adapted for releasable attachment to said readout circuitry;

b) a first conductor extending along said surface and comprising a conductive element for connection to said readout circuitry;

c) an active electrode on said strip in electrical contact with said first conductor and positioned to contact said whole blood sample;

d) a second conductor extending along said surface comprising a conductive element for connection to said read out circuitry; and

e) a reference counterelectrode in electrical contact with said second conductor and positioned to contact said whole blood sample,

wherein said active electrode is configured to be exposed to said whole blood sample without an intervening membrane or other whole blood filtering member . . . .

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• After problems during prosecution, new claims were presented to the Examiner based on a new sensor that did not require a protective membrane for whole blood.

• The Examiner required an affidavit that, at the time of the invention, the prior art required a membrane for whole blood

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• US patent counsel– “optionally, but preferably” language is patent

phraseology and not a technical teaching

• European counsel– “It is submitted that this disclosure is unequivocally

clear. The protective membrane is optional, however, it is preferred when used on live blood in order to prevent the larger constituents of the blood, in particular erythrocytes from interfering with the electrode sensor.”

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• D.C. – ‘551 patent unenforceable “for inequitable conduct because Abbott did not disclose to the PTO its briefs to the EPO filed on January 12, 1994 and May 23, 1995.”

• DC also found invalidity and nonfringement for the ‘551 patent and another patent at suit

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• Panel on Fed. Cir – upheld with a dissent

• “Recognizing the problems created by the expansion and overuse of the inequitable conduct doctrine, this court granted Abbott’s petition for rehearing en banc and vacated the judgment of the panel.”

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• Effect of Inequitable Conduct– Defense to patent infringement– Bars enforcement of a patent when found

• Historical Inequitable Conduct– “egregious misconduct, including perjury, the

manufacture of false evidence, and the suppression of evidence.”

– “deliberately planned and carefully executed scheme[s] to defraud” not only the PTO but also the courts.

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• Evolution of Inequitable Conduct– “[E]mbrace[d] a broader scope of

misconduct, including not only egregious affirmative acts of misconduct intended to deceive both the PTO and the courts but also the mere nondisclosure of information to the PTO.”

– “[U]nenforceability of the entire patent rather than mere dismissal of the instant suit.”

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• “[I]nequitable conduct came to require a finding of both intent to deceive and materiality.”

• “In the past, this court has espoused low standards for meeting the intent requirement, finding it satisfied based on gross negligence or even negligence.”

• “This court has also previously adopted a broad view of materiality, using a ‘reasonable examiner’ standard based on the PTO’s 1977 amendment to Rule 56.”

• Sliding scale approach

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• Effects– Full disclosure– “[I]nequitable conduct has become a

significant litigation strategy. A charge of inequitable conduct conveniently expands discovery into corporate practices before patent filing and disqualifies the prosecuting attorney from the patentee’s litigation team.”

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• “Unlike other deficiencies, inequitable conduct cannot be cured by reissue”

• “[T]he taint of a finding of inequitable conduct can spread from a single patent to render unenforceable other related patents and applications in the same technology family.”

• “With [] far-reaching consequences, it is no wonder that charging inequitable conduct has become a common litigation tactic.”

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• “With inequitable conduct casting the shadow of a hangman’s noose, it is unsurprising that patent prosecutors regularly bury PTO examiners with a deluge of prior art references, most of which have marginal value.”

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• “This court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.”

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• “To prevail on a claim of inequitable conduct, the accused infringer must prove that the patentee acted with the specific intent to deceive the PTO. …A finding that the misrepresentation or omission amounts to gross negligence or negligence under a ‘should have known’ standard does not satisfy this intent requirement.”

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• “[T]he accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.”

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• “[T]he materiality required to establish inequitable conduct is but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Hence, in assessing the materiality of a withheld reference, the court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference.”

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Walker Process Claim

• Fraud on the patent office

• Antitrust liability = treble damages

• “To demonstrate Walker Process fraud, a claimant must make higher threshold showings of both materiality and intent than are required to show inequitable conduct.”

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Infringement

E. The Experimental Use “Exception”

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Experimental Use

• What is covered under the common law and statutory experimental use exception?

Common Law Exception

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Madey v. Duke

• 2002 Federal Circuit Panel Decision

• Invention– Laser technology

• Issue– How is the experimental use defense

applied?

Madey v. Duke

• What was/is the relationship between Madey and Duke?– Madey professor with a laser research

program– Madey had sole ownership of two

patents– Madey removed as director of lab

Madey v. Duke

• What are the three primary errors asserted by Madey?

1) Improper shift of burden to Madey

2) D.C. applied an overly broad version of the defense

3) No support for defense in this case

Madey v. Duke

Experimental Use Defense

• The accused infringer has the burden of establishing the defense

• The defense is very narrow and limited to actions performed “for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.”

Madey v. Duke

• “[U]se does not qualify for the experimental use defense when it is undertaken in the ‘guise of scientific inquiry” but has ‘definite, cognizable, and not insubstantial commercial purposes.’”

• “[U]se is disqualified from the defense if its has the ‘slightest commercial implication.’”

Madey v. Duke

• “In short, regardless of whether a particular institution or entity is engaged in an endeavor for commercial gain, so long as the act is in furtherance of the alleged infringer’s legitimate business and is not solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry, the act does not qualify for the very narrow and strictly limited experimental use defense. Moreover, the profit or non-profit status of the user is not determinative.”

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Statutory Exception

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No Infringement• 35 USC 271 (e) (1): It shall not be an act of infringement to

make, use, offer to sell, or sell within the United States or import into the United States a patented invention (other than a new animal drug or veterinary biological product (as those terms are used in the Federal Food, Drug, and Cosmetic Act and the Act of March 4, 1913) which is primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques) solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs or veterinary biological products.

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Infringement under Sec. 271(e)(2)

• (2) It shall be an act of infringement to submit-- (A) an application under section 505(j) of the Federal Food, Drug, and Cosmetic Act (j)] or described in section 505(b)(2) of such Act (b)(2)] for a drug claimed in a patent or the use of which is claimed in a patent, or ...

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Infringement under Sec. 271(e)(2), con’d:

• (B) an application under section 512 of such Act or under the Act of March 4, 1913 for a drug or veterinary biological product which is not primarily manufactured using recombinant DNA, recombinant RNA, hybridoma technology, or other processes involving site specific genetic manipulation techniques and which is claimed in a patent or the use of which is claimed in a patent, if

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Infringement under Sec. 271(e)(2)(B), con’d:

• If . . . the purpose of such submission is to obtain approval under such Act to engage in the commercial manufacture, use, or sale of a drug or veterinary biological product claimed in a patent or the use of which is claimed in a patent before the expiration of such patent.

• I.e., an NDA or ANDA

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Merck KGaA v. Integra LifeSciences I, LTD

• “This case presents the question whether uses of patented inventions in preclinical research, the results of which are not ultimately included in a submission to the Food and Drug Administration (FDA), are exempted from infringement by 35 U. S. C. §271(e)(1).”

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• “[Congress] exempted from infringement all uses of patented compounds ‘reasonably related’ to the process of developing information for submission under any federal law regulating the manufacture, use, or distribution of drugs.”

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• “At least where a drugmaker has a reasonable basis for believing that a patented compound may work, through a particular biological process, to produce a particular physiological effect, and uses the compound in research that, if successful, would be appropriate to include in a submission to the FDA, that use is ‘reasonably related’ to the ‘development and submission of information under . . . Federal law.’ §271(e)(1).”

Reasonably Related

• “Congress did not limit § 271(e)(1)’s safe harbor to the development of information for inclusion in a submission to the FDA … . Rather, it exempted from infringement all uses of patented compounds ‘reasonably related’ to the process of developing information for submission under any federal law regulating the manufacture, use, or distribution of drugs.”

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G. Indirect Infringement

Basis

• “[Indirect infringement” exists to protect patent rights from subversion by those who, without directly infringing the patent themselves, engage in acts designed to facilitate infringement by others.”

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Pre-1952 Act Basis

• “’[C]ontributory infringement,’ [] was any other activity where, although not technically making, using or selling, the defendant displayed sufficient culpability to be held liable as an infringer. Such liability was under a theory of joint tortfeasance, wherein one who intentionally caused, or aided and abetted, the commission of a tort by another was jointly and severally liable with the primary tortfeasor.”

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Beyond Direct Infringement

INDIRECT INFRINGEMENT• Active Inducement (§271(b))

– “Whoever actively induces infringement of a patent shall be liable as an infringer.”

• Contributory Infringement (§271(c))– “Whoever offers to sell or sells within the United States or

imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.”

271 (b) V (c)

• “Section 271(c) applies only where a person has (1) sold, offered for sale or imported (2) nonstaple articles especially made or adapted for infringing a patent. Section 271(b) covers every other kind of behavior.”

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C.R. Bard, Inc. v. Advanced Cardiovascular Systems

• “A person induces infringement under § 271(b) by actively and knowingly aiding and abetting another’s direct infringement.”

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DSU Medical Corporation v. JMS Company, LTD.

• “The plaintiff has the burden of showing that the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce actual infringements.”

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DSU Medical Corporation v. JMS Company, LTD.

• “[I]nducement requires evidence of culpable conduct, directed to encouraging another’s infringement, not merely that the inducer had knowledge of the direct infringer’s activities.”

Global-Tech Appliances, Inv. V. SEB S.A.

• “[I]nduced infringement under § 271(b) requires knowledge that the induced acts constitute patent infringement.”

• “[P]ersons who know enough to blind themselves to direct proof of critical facts in effect have actual knowledge of those facts.”

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Aro Manufacturing Co. v. Convertible Top Co.

• “[T]here can be no contributory infringement in the absence of a direct infringement.”

• “[W]here one makes and sells one element of a combination covered by a patent with the intention and for the purpose of bringing about its use in such a combination he is guilty of contributory infringement and is equally liable to the patentee with him who in fact organizes the complete combination.”

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Process Patents

Chapter 15.7

• Let’s look at an application of 271(g)…

H. Infringement and Foreign Activity

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NTP, Inc. v. Research In Motion, LTD

• District Court (E.D.VA)• Blackberry device by RIM infringed

various NTP patents• Awarded NTP $53,704,322.69 in

damages• Enjoined further infringement by RIM,

stayed the injunction pending Fed. Cir. appeal

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• Fed Cir – Review D.C. ruling and stated D.C.:– erred in construing the claim for the “originating

processor”;– correctly found infringement under 271(a);– correctly denied RIM’s motion for judgment as a

matter of law (JMOL)– didn’t abused its discretion in evidentiary rules– remanded case to district court

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• NTP alleged over forty system and method claims had been infringed by the Blackberry system

• The court construed thirty-one disputed claim terms

• RIM asked for summary judgment of both non-infringement and invalidity– The asserted claims, properly construed, did not read on

the accused RIM system– The physical location of the “relay” component put RIM’s

allegedly infringing conduct outside the reach 271

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• “The district court agreed with NTP, holding that ‘no genuine issue of material fact’ existed as to infringement of four claims.” …

• “The case proceeded to trial on fourteen claims. …• “On every issue presented, the jury found in favor of the

plaintiff , NTP. The jury found direct, induced, and contributory infringement by RIM on all asserted claims of the patents-in-suit. The jury also found that the infringement was willful. It rejected every defense proposed by RIM. Adopting a reasonable royalty rate of 5.7%, the jury awarded damages to NTP in the amount of approximately $23 million.”

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• D.C. awarded– $33 million in compensatory damages,– $4 million in attorneys’ fees– $2 million prejudgment interest– $14 million enhanced damages

• DC entered a permanent injunction against RIM, enjoining it from further manufacture, use, importation, and/or sale of all accused BlackBerry systems, software and handhelds.

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• What happened with dispute terms of claim construction?

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• The meat of why this case really matters…

• 271(a) – “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States, or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

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• “The territorial reach of a patent right is limited, so that section 271(a) is only actionable against patent infringement that occurs within the United States.”

• “This case presents an added degree of complexity, however in that: (1) the ‘patented invention’ is not one single device, but rather a system comprising multiple distinct components or a method with multiple distinct steps; and (2) the nature of those components permits their function and use to be separated from their physical location.”

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• “According to RIM, the statutory requirement that all steps of the allegedly infringing activity take place ‘within the United States’ was not satisfied because the BlackBerry Relay component of the accused system was located in Canada.”

• “[The court] … found that ‘the fact that the BlackBerry relay is located in Canada is not a bar to infringement in this matter.’ The court therefore instructed the jury that the ‘location of RIM’s Relay in Canada does not preclude infringement.’”

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• “… RIM’s position is that if a claim limitation of a patented system would only be met by a component of the accused system, or a step of the accused method, located outside the United States, then the entire system or method is beyond the reach of Section 271(a), even if the use and function of the whole system in operation occur in the United States.”

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• “The question before us is whether the location of a component of an accused system abroad, where that component facilitates operation of the accused system in the United States, prevents the application of section 271(a) to that system.”

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• In Deepsouth, the Supreme Court held that the export of of unassembled components of an invention could not infringe a patent under 271(a).

• As a result, Congress enacted 271(f) to extend infringement to cover the export of elements of patented inventions.

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• “The key premise in Deepsouth was that Deepsouth was not using the machines in the United States as a ‘whole operable system assembly’ because Deepsouth did not combine the components for use in the United States.”

• “The case before us can be distinguished from Deepsouth in that ‘the location of the infringement is within United States territory, not abroad as in Deepsouth.”

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• “Even though one of the accused components in RIM’s BlackBerry system may not be physically located in the United States, it is beyond dispute that the location of the beneficial use and function of the whole operable system assembly is the United States.”

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• “The claims are directed to systems and methods for sending email messages between two subscribers; the transmission is made between an originating processor and destination processor. Although RIM’s relay, which is located in Canada is the only component that satisfies the ‘interface’ of the ‘interface switch’ limitation is the asserted claims, because all of the other components of RIM’s accused system are located in the United States, and control and beneficial use of RIM’s system occur in the United States, we conclude that the situs of the “use” of RIM’s system for purposes of 271(a) is the United States.”

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Practice Tip

• Make sure to include a system claim to support extraterritorial application

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AT&T v. Microsoft

• Ordinarily to infringe, the acts of infringement must all occur in the United States.

• Issue – When computer software that is recorded onto a golden master disk and sent abroad, and the software infringes within the United States, does the act of infringement also occur Outside of the United States?

• Answer – No.

Finding Direct Infringement

• Do you have to show that a user actually used a product for a finding of direct infringement?

• Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986)– circumstantial evidence of extensive puzzle

sales, dissemination of an instruction sheet teaching the method of restoring the preselected pattern with each puzzle, and the availability of a solution booklet on how to solve the puzzle was sufficient

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Eli Lilly & Co. v. American Cyanamid Co.

• “Prior to the enactment of the 1988 statute, a patentee holding a process patent could sue for infringement if others used the process in this country, but had no cause of action if such persons used the patented process abroad to manufacture products, and then imported, used, or sold the products in this country. In that setting, the process patent owner's only legal recourse was to seek an exclusion order for such products from the International Trade Commission … By enacting the Process Patent Amendments Act, the principal portion of which is codified as 35 U.S.C. § 271(g), Congress changed the law by making it an act of infringement to import into the United States, or to sell or use within the United States ‘a product which is made by a process patented in the United States . . . if the importation, sale, or use of the product occurs during the term of such process patent.’”

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• “A concern raised during Congress's consideration of the process patent legislation was whether and to what extent the new legislation would affect products other than the direct and unaltered products of patented processes -- that is, whether the new statute would apply when a product was produced abroad by a patented process but then modified or incorporated into other products before being imported into this country.”

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• “Congress … [provided] that a product that is ‘made by’ a patented process within the meaning of the statute ‘will . . . not be considered to be so made after -- (1) it is materially changed by subsequent processes; or (2) it becomes a trivial and nonessential component of another product.’ 35 U.S.C. § 271(g).”

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• “We cannot accept the argument that the question whether one compound is ‘materially changed’ in the course of its conversion into another depends on whether there are other products of the first compound that have economic value. We therefore do not adopt Lilly's proposed construction of section 271(g). We look instead to the substantiality of the change between the product of the patented process and the product that is being imported.”

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• “In the chemical context, a ‘material’ change in a compound is most naturally viewed as a significant change in the compound's structure and properties. Without attempting to define with precision what classes of changes would be material and what would not, we share the district court's view that a change in chemical structure and properties as significant as the change between compound 6 and cefaclor cannot lightly be dismissed as immaterial.”

Interviewing Patent Applications

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Interviews with the Patent Office

• § 1.133 Interviews.• (a)(1)Interviews with examiners concerning applications

and other matters pending before the Office must be conducted on Office premises and R-95 Rev. 8, July 2010 within Office hours, as the respective examiners may designate. Interviews will not be permitted at any other time or place without the authority of the Director.

• (2)An interview for the discussion of the patentability of a pending application will not occur before the first Office action, unless the application is a continuing or substitute application or the examiner determines that such an interview would advance prosecution of the application.

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Interviews with the Patent Office

• (3)The examiner may require that an interview be scheduled in advance.

• (b)In every instance where reconsideration is requested in view of an interview with an examiner, a complete written statement of the reasons presented at the interview as warranting favorable action must be filed by the applicant. An interview does not remove the necessity for reply to Office actions as specified in §§ 1.111 and 1.135.

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Interviews – When Conducted

• What can you do and when can you do it?– Pre-Examination

• At Examiner’s Discretion– First Action Interview Pilot Program

• http://www.uspto.gov/patents/init_events/faipp_landing.jsp

– Prior to a Final Action– After Final

• Examiners may grant one interview after final rejection. See MPEP § 713.09.

• After Final Consideration Pilot 2.0 (through 12/14/13)• http://www.uspto.gov/patents/init_events/afcp.jsp

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• Point of interview for Applicant– Facilitate prosecution– Provide details not otherwise contained

in written submissions– Better understand Examiner’s point of

view and focus of rejection– Work with the Examiner towards an

allowance

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• How conducted– In-Person in Washington, D.C.

– Telephonically

• Time allotted– 30 or 60 minutes

• Who is present– Attorney

– Examiner that prepared the office action

– Supervising Examiner?

– Interview or client representative?

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Program

Completed

All course materials - Copyright 2002-14 Randy L. Canis, Esq.

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