top ten patent cases - gray on claims - a claim

Top Ten Patent Cases

Harold C. Wegner

New Format! Top Ten Patent Cases List (see page 2)

New! No. (3) WildTangent § 101 Patent-Eligibility: Certiorari petition where

claimed Method is keyed to use of the Internet. See pp. 8-11.

Certiorari decision May 21, 2012: A GVR to Send Case back to the Federal Circuit?

Whither No. (1) Myriad, Understanding Precedent: The outcome of Myriad on

remand may well be determined based upon whether there is a proper

understanding of Supreme Court precedent that is basis for current dicta. See p. 7.

Briefs due (both parties and any amici) June 15, 2012

Oral Argument July 20, 2012

Justice Department CVSG in No. (8) Saint-Gobain: The Solicitor General has

now filed a brief amicus curiae recommending AGAINST grant of certiorari. The

brief reflects a deeper understanding of patent law than many of the previous amici

efforts of the Department of Justice in recent years. See pp. 17-20

Gunn v. Minton –Federal Jurisdiction in State Law Case: Do the Federal

courts (including the Federal Circuit at the appellate level) have exclusive

jurisdiction over state law malpractice claims implicating patent law? The case

raises the same issue as in the likely petition yet to be filed in No. (10) Byrne v.

Wood. See pp. 23-25.

Supreme Court Calendars

October 2011 Term (see page 3)

October 2012 Term (see page 4)

Supreme Court Scoreboard

cases during the October 2011 Term (see page 5)

Updated May3, 2012.

Hal

Rectangle

Wegner’s Top Ten Patent Cases [May 3, 2012]

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TOP TEN PATENT CASES*

Supreme Court in Blue Federal Circuit in Red Rank Case Name Issue Status

1 AMP v. Myriad § 101 DNA

Patent-Eligibility

Briefing due June 15

Argument July 20

2 Kirstsaeng v. Wiley International Exhaustion Merits briefing

Argument Fall 2012

3 WildTangent § 101 Patent-Eligibility Certiorari decision

May 21st: A “GVR”?

4 Akamai/McKesson “All Elements” Rule Awaiting decision

5 Laser Dynamics “Quanta II” Exhaustion Awaiting decision

6 Taniguchi Taxing Translation Costs Awaiting decision

7 Bowman v. Monsanto Patent Exhaustion Awaiting CVSG Brief

8 Saint-Gobain Equivalents; Evidentiary Std. Awaiting Conference

(CVSG Brief Filed)

9 GSK v. Classen § 271(e)(1) “Safe Harbor” Cert. decision May 14

10 Byrne v. Wood et al. Federal Circuit Jurisdiction Cert. pet. due June 20

Gunn v. Minton Federal Circuit Jurisdiction Response due May 12

In re Youman Recapture Rule Awaiting decision

Soverain v. Newegg “All Elements” Awaiting decision

Minkin v. Gibbons Malpractice (Claim Scope) Awaiting decision

* Harold C. Wegner is solely responsible for this list. The author is a former Professor of Law at the George Washington University Law School and is currently a partner in the international law firm of Foley & Lardner LLP. Any opinions or characterizations expressed in this paper represent the personal viewpoint of the author and do not necessarily reflect the viewpoint of any colleague, organization or client thereof. The writer acknowledges participation as counsel for amicus Alnylam on its brief at the Federal Circuit in No. (1) Myriad.


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Supreme Court Calendar

October 2011 Term (May-June 2012 sessions)

“Red Day” Sessions (arguments): The next “red” argument sessions are in the October 2012

Term (see page 4). No further arguments are scheduled for the October 2011 Term.

“Blue Day” Sessions: After April, the only sessions of the court this Term will be for the

purpose of issuing opinions (the “blue days”). Several additional blue days will undoubtedly be

added in June that will be announced shortly before such sessions.

Conferences (“Green Days”): The on line docket sheet of the Court indicates when a petition is

scheduled for Conference (which is closed to the public). Here, the Court votes whether to grant

certiorari, the decision is usually made public at the next session at 10:00 AM as part of the

Orders List.

Supreme Court Calendar

October 2012 Term (through June 2013) see page 4 sees


4


5

Supreme Court Scoreboard

cases argued and decided during the October 2011 Term*

Decided Cases are Summarized at the end of this Paper

Oct. Nov. Dec. Jan. February March Ap.

Cases

Argued

12 12 12 11 9 7 6

Golan

v.

Holder

Caraco

Mayo v.

Prometh

Kappos

v.

Hyatt

Taniguchi

Cases

Disposed

12 12 9 7 3 1 0

Golan

v.

Holder

Mayo v.

Prometh

Caraco

Kappos

v. Hyatt

Golan v. Holder decided Jan. 18, 2012

Mayo v. Prometheus decided March 20, 2012

Caraco v. Novo Nordisk decided April 17, 2012

Kappos v. Hyatt decided April 18, 2012

Taniguchi Awaiting decision

*Statistics are taken from Scotusblog, April 24, 2012 HCW


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Three Patent IP Exhaustion Issues

In the wake of Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617

(2008), patent exhaustion issues are a topic of discussion in the patent community

based upon three pending cases, No. (2) Kirtsaeng v. John Wiley & Sons,Inc.,

Supreme Court No. 11-697, No. (5) Laser Dynamics v. Quanta Computer, Inc.,

Federal Circuit 2011-1440 and No. (7) Bowman v. Monsanto Co., Supreme Court

No. 11-796.

No. (2) Kirtsaeng – “Costco II” International Copyright Exhaustion:

In Kirtsaeng v. John Wiley, the Court has granted certiorari and in the coming

October 2012 Term will reconsider the same issue of international copyright

exhaustion as in Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir.

2008)(Smith, Jr., J.), where the Court accepted review but then left the issue in the

air with a 4-4 tie vote affirmance, Costco Wholesale Corp. v. Omega, S.A., 131

S.Ct. 565 (2010)(per curiam without opinion).

No. (5) Laser Dynamics v. Quanta: “Quanta II” Int’l Patent Exhaustion:

In Laser Dynamics v. Quanta, Quanta challenges the Jazz Photo denial of

international exhaustion which could answer an issue left open in Quanta: Does

the sale of a product protected by a United States patent “exhaust” the patent right

where the sale is made offshore? See Wegner, Post-Quanta, Post-Sale Patentee

Controls, § IV-C, Post-Quanta International Patent Exhaustion, 7 J. Marshall Rev.

Intell. Prop. L. 682, 698 (2008)(discussing Boesch v. Graff), available at

http://www.jmripl.com.php5-10.dfw1-2.websitetestlink.com/issues/article/173.

No. (7) Bowman v. Monsanto: Seed Patent Exhaustion: In Bowman v.

Monsanto, proceedings below, Monsanto Co. v. Bowman, 657 F.3d 1341 (Fed.

Cir. 2011)(Linn, J.), Petitioner challenges the denial of “patent exhaustion” as to

harvested seeds produced from patented plant technology. The case is awaiting an

amicus brief from the Solicitor General presenting the views of the United States

whether to grant certiorari.

http://www.jmripl.com.php5-10.dfw1-2.websitetestlink.com/issues/article/173


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(1) AMP v. Myriad – § 101 Patent-Eligibility

The Myriad case, Association for Molecular Pathology v. Myriad Genetics, Inc.,

Supreme Court No. 11-725, has returned to the Federal Circuit through a

simultaneous grant, vacation and remand (GVR) to permit the appellate court to

provide a new opinion that takes into account the recent Mayo v. Prometheus

decision. The GVR wipes the slate clean, vacating the prior panel opinion, , 653

F.3d 1329 (Fed. Cir. 2011)(Lourie, J.), and returns the patentee to the position of

appellant.

Status: On April 30, 2012, the Federal Circuit vacated its prior decision and set

the case for argument on July 20, 2012. Briefing (including amici briefing which

will be admitted without requests for assent from the parties) is due June 15, 2012,

limited to 15 pages, addressing the following issue:

“What is the applicability of the Supreme Court’s decision in Mayo to Myriad’s

isolated DNA claims and to method claim 20 of the ’282 patent?

Deeper Understanding of Supreme Court Precedent: A major flaw in the recent

Supreme Court case law on Section 101 may be attributed to the absence of a fuller

understanding of the actual holdings in precedent, particularly in the briefing of

these cases. This is the topic of an extensive study by this writer, Mayo v.

Prometheus: Implications for “Composition[s] of Matter” (April 27, 2012),

available at www.GrayOnClaims.com/hal.

(2) Kirtsaeng v. John Wiley: International Exhaustion

Kirtsaeng v. John Wiley & Sons, Inc., Supreme Court No. 11-697, opinion below,

654 F.3d 210 (2d Cir. 2011)(Cabranes, J.), has the same denial of international

exhaustion as in Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir.

2008)(Smith, Jr., J.), where the Court accepted review but then left the issue in the

air with a 4-4 tie vote affirmance, Costco Wholesale Corp. v. Omega, S.A., 131

S.Ct. 565 (2010)(per curiam without opinion).

Also note the pendency of No. (7) Bowman v. Monsanto, a domestic patent

exhaustion case.


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Status: Certiorari was granted April 16th. Briefing will take place over the

summer; argument is expected late Fall 2012 with a decision before the end of the

Term ending June 2013.

Question Presented: “This case presents the issue that recently divided this Court,

4-4, in Costco Wholesale Corp. v. Omega, S.A., 131 S. Ct. 565 (2010). Under

§ 602(a)(1) of the Copyright Act, it is impermissible to import a work ‘without the

authority of the owner’ of the copyright. But the first-sale doctrine, codified at

§ 109(a), allows the owner of a copy ‘lawfully made under this title’ to sell or

otherwise dispose of the copy without the copyright owner's permission.

“The question presented is how these provisions apply to a copy that was made and

legally acquired abroad and then imported into the United States. Can such a

foreign-made product never be resold within the United States without the

copyright owner's permission, as the Second Circuit held in this case? Can such a

foreign-made product sometimes be resold within the United States without

permission, but only after the owner approves an earlier sale in this country, as the

Ninth Circuit held in Costco? Or can such a product always be resold without

permission within the United States, so long as the copyright owner authorized the

first sale abroad, as the Third Circuit has indicated?”

(3) WildTangent – “Abstract” Method

In WildTangent, Inc. v. Ultramercial, LLC, Supreme Court No. 11-962, opinion

below, Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323 (Fed. Cir. 2011)(Rader,

C.J.), petitioner challenges patent-eligibility under 35 USC § 101 of an internet

method patent.

Status: The case has been set for the Conference of May 17, 2012; a decision

whether to grant certiorari – and possibly return the case to the Federal Circuit

through a GVR – is expected May 21, 2012.

Question Presented: “Whether, or in what circumstances, a patent's general and

indeterminate references to ‘over the Internet’ or at ‘an Internet website’ are

sufficient to transform an unpatentable abstract idea into a patentable process for

purposes of 35 U.S.C. § 101.”


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A GVR? Subsequent to the initial petition, the merits decision was handed down

in Mayo v. Prometheus and a GVR was issued in Myriad; the panel opinions of the

appellate court in both cases had been relied upon in the decision below. In

WildTangent, the appellate court has said:

“[T]his court detects no limitations or conditions on subject matter eligibility

expressed in statutory language. See, e.g., Ass'n for Molecular Pathology v. U.S.

Patent & Trademark Office, 653 F.3d 1329, 1348 (Fed.Cir.2011) (patent-ineligible

categories of subject matter are “judicially created exceptions”); Prometheus Labs.,

Inc. v. Mayo Collaborative Servs., 628 F.3d 1347, 1353 (Fed.Cir.2010), cert.

granted, 130 S.Ct. 3543 (2010)(patent-ineligible categories are “not compelled by

the statutory text”)****.”

Ultramercial, 657 F.3d at 1326. It is therefore conceivable that the Court may use

the vehicle of a GVR to simply send the case back to the Federal Circuit for further

consideration in light of Mayo v. Prometheus.

Petitioner’s View on Mayo v. Prometheus and a GVR: This Court's intervening

decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. bears

directly on this case and underscores the flaws in the Federal Circuit's conclusion

that the patent at issue passes 35 U.S.C. § 101. In Mayo, the Court took a broad-

based look at the scope of § 101's subject-matter eligibility requirement for

patentability and this Court's prior case law on the scope of § 101, and held that the

patent claims at issue failed because they did not ‘do significantly more than

simply describe [an unpatentable concept].” Slip op. 8. Among other things, the

Court emphasized that “simply appending conventional steps, specified at a high

level of generality, to … abstract ideas cannot make those … ideas patentable.’ Id.

at 14. Similarly, the Court observed that simply implementing an abstract idea ‘on

a … computer, [is] not a patentable application of that principle.’ Id. at 16.

“Mayo directly impacts the court of appeals' decision in this case in several

material respects. First, the Court's decision in Mayo is based on a fundamentally

different conception of § 101 than the decision below. Whereas Mayo makes clear

that § 101 performs an essential “screening function” independent of other

substantive requirements of the Patent Act like §§ 102, 103, and 112 (Slip op. 20-

21), the court of appeals' decision is based on the premise that § 101 provides “

‘no more than a “course eligibility filter” ’ ” and that the Act's other requirements

should do the real work in weeding out ineligible claims (Pet. App. 5a-6a (citation

omitted)). Second, whereas the Court in Mayo rejected a process patent that simply


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appended a “well-understood, routine, conventional” ( i.e., not “inventive”) series

of steps to an otherwise unpatentable concept (Slip op. 4), the court of appeals here

held that an otherwise unpatentable abstract concept ( i.e., using advertisements as

currency) may become patentable merely by describing it as a series of

conventional steps performed “ ‘on an Internet website’ ” (Pet. App. 11a (quoting

patent)). Third, whereas the Court in Mayo confirmed that the machine-or-

transformation test remains an “ ‘ important … clue’ ” to patentability (Slip op. 19

(citation omitted)), the court of appeals' decision dismissed it as a relic in the

Information Age (Pet. App. 7a).

“Mayo at least necessitates a GVR order. But the decision also underscores that

plenary review - or even summary reversal - is appropriate in light of the conflict

between the decision below and this Court's decisions in Bilski v. Kappos, 130 S.

Ct. 3218 (2010), Parker v. Flook, 437 U.S. 584 (1978), and Gottschalk v. Benson,

409 U.S. 63 (1972). Mayo revisits each of those cases and emphasizes that an

abstract idea does not become patentable merely by appending “well-known” steps

or by limiting it to a particular field of use or “ ‘technological environment’ ” (such

as on a computer). Slip op. 4, 9 (citation omitted); id. at 15-16. In contrast, the

court of appeals held that an abstract idea may become patentable merely by

breaking it into conventional steps and limiting it to an increasingly ubiquitous

field like the Internet. Pet. App. 10a-11a. In a similar vein, the court of appeals

disregarded the important screening function that § 101 plays and the useful role of

the machine-or-transformation test in making that inquiry, as confirmed by Bilski

and this Court's other precedents. Indeed, in effect, under the decision below, all

the patent holder in Bilski had to do was add a step saying “over the Internet,” and

the patent would have survived.

Patentee-Respondent’s View of Mayo v. Prometheus and a GVR: “[Mayo

Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012),] reaffirmed

the test for patentability under § 101. First, [Mayo v.] Prometheus confirmed that

laws of nature, natural phenomena, and abstract ideas fall outside the scope of §

101. Id. at 1293. Second, [Mayo v.] Prometheus agreed that ‘too broad an

interpretation’ of the exclusions for laws of nature, natural phenomena, and

abstract ideas ‘could eviscerate patent law’ because ‘all inventions at some level

embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or

abstract ideas.’ Id. Accordingly, [Mayo v.] Prometheus affirmed ‘that ‘an

application of a law of nature or mathematical formula to a known structure or

process may well be deserving of patent protection.’’ Id. at 1293-94 (quoting

Diehr, 450 U.S. at 187) (emphasis in original). Finally, Prometheus stated that

patentability under § 101 ultimately ‘rests upon an examination of the particular


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claims . . . in light of the Court’s precedents.’ Id. at 1294.

“Applying these principles, this Court held non-patentable the claimed process for

optimizing therapeutic efficacy for treatment of an immune-mediated

gastrointestinal disorder by administering a thiopurine drug and determining

whether the dosage is too high or low for the patient by measuring the

concentrations of certain metabolites in blood. Id. In reaching this decision, this

Court found that the claimed relationship between concentrations of metabolites in

human blood and the likelihood that a dosage of a thiopurine drug will prove

ineffective or cause harm to be an unpatentable law of nature. Id. at 1296.

“Additionally, the Court held that an ‘administering’ step, a ‘determining’ step,

and a ‘wherein’ step were not sufficient to make the claim more than a law of

nature. Id. at 1297-98. For example, while the first ‘administering’ step defined

the relevant audience, unpatentable subject matter ‘cannot be circumvented by

attempting to limit the use . . . to a particular technological environment.’ Id. at

1297 (internal citations omitted). Similarly, the ‘determining’ step only described

‘well understood, routine, conventional activity,’ which does not suffice ‘to

transform an unpatentable law of nature into a patent eligible application of such a

law.’ Id. at 1298 (citing Flook, 437 U.S. at 590). Finally, the ‘wherein’ step simply

described the non-patentable law of nature. Id. at 1297. Accordingly, the Court

found these steps insufficient to ‘transform unpatentable natural correlations into

patentable applications of those regularities.’ Id. at 1298.

“In sum, [Mayo v.] Prometheus addressed non-patentable laws of nature in the

context of a patent on administering drugs. It did not concern patent-eligible

subject matter in the context of computer-related inventions and did not address the

issue of potentially abstract subject matter. On the other hand, Prometheus

confirmed the approach that lower courts must take in determining whether a

process at issue claims patent-eligible subject matter, which is the exact approach

that the Federal Circuit followed in its decision below. Thus, the Prometheus

decision provides no basis for granting the Petition for Certiorari in this case, or

reversing or remanding the Federal Circuit’s decision below.”


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(4) Akamai/McKesson “All Elements” Rule

In Akamai Technologies, Inc. v. Limelight Networks, Inc., Fed. Cir. 2009-1372, and

McKesson Technologies Inc. v. Epic Systems Corp., App. No. 2010-1291, the

Court will hear en banc arguments in each case to seek to better define the

situations where infringement liability attaches where a multi-step process claim is

performed by different parties. The vacated panel opinions are Akamai, 629 F.3d

1311 (Fed. Cir. 2010), and McKesson, __ F.3d__, 2011 WL 1365548 (Fed. Cir.

2011), both following BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373

(Fed. Cir. 2007), that denies the existence of infringement of a multi-step process

claim where different independent parties collectively perform all steps but there is

not one single direct infringer who performs and/or directs all steps of the process.

Status: Awaiting decisions in each case (en banc arguments were held November

18, 2011).

A Tale of Two Different Approaches at the Oral Arguments: Appellant in each

of the en banc arguments took decidedly different approaches. Going first in the

Akamai appeal, Donald R. Dunner boldly, frontally assaulted the viability of BMC

v. Paymentech based upon pre-1952 case law.

In McKesson, former Principal Deputy Solicitor General Daryl Joseffer accepted

the "single actor" rule of BMC v. Paymentech, but instead sought a broadening of

the narrow scope of acts of third parties deemed under the direction and control of

the "single actor": Under this theory, steps performed by third parties could be

deemed to have been performed under the direction and control of the single actor

to find infringement.

"Wordsmithing": The Akamai Bench Returns to the Original Petition: While

appellant in Akamai at the argument launched a frontal assault on BMC v.

Paymentech, the bench redirected counsel’s attention to the issue of

"wordsmithing" that was at the heart of the original petition for rehearing en banc.

This aspect is considered in this writer’s paper, Wordsmithing, Akamai and the "All

Elements Rule", includes this writer’s views of the Akamai case insofar as it relates

to last Friday’s bench questions concerning "wordsmithing", which is found at

§ VII, Akamai, Failure to Define a Single Direct Infringer (pp. 15-19). (The paper

is available at www.GrayOnClaims.com/hal.)


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A Problem Recognized for at Least the Past Ten Years: The issue was

thoroughly aired at an experts’ conference a decade ago where it was difficult if

not impossible to see a situation where claims could not be fashioned focused upon

the acts of a single actor as part of a multiparty transaction. See Softic Symposium

2001: Information Distribution and Legal Protection in Cyberspace – In search of a

New System, § C, Patent Infringement Suits in Global Network Age, pp. 82-93,

http://www.softic.or.jp/en/symposium/proceedings.htm.

The underlying case law and solutions to provide single actor claims was explained

in Wegner, E-Business Patent Infringement: Quest for a Direct Infringement

Claim Model, SOFTIC Symposium (2001),

http://www.softic.or.jp/symposium/open_materials/10th/index-en.htm.

(5) Laser Dynamics v. Quanta: “Quanta II” International Patent Exhaustion

In Laser Dynamics, Inc. v. Quanta Computer, Inc., Federal Circuit 2011-1440,

defendant-cross appellant Quanta challenges the Jazz Photo denial of international

exhaustion in a case having a significant chance of reaching the Supreme Court as

“Quanta II”, which could answer an issue left open in in Quanta Computer, Inc. v.

LG Electronics, Inc., 553 U.S. 617 (2008): Does the sale of a product protected by

a United States patent “exhaust” the patent right where the sale is made offshore?

See Wegner, Post-Quanta, Post-Sale Patentee Controls, § IV-C, Post-Quanta

International Patent Exhaustion, 7 J. Marshall Rev. Intell. Prop. L. 682, 698

(2008)(discussing Boesch v. Graff), available at http://www.jmripl.com.php5-

10.dfw1-2.websitetestlink.com/issues/article/173.

Status: Awaiting decision (argued March 9 2012; Dyk, Clevenger, Reyna, JJ.)

Discussion: Absent en banc review or a decision affirming the trial court on some

other ground, the hands of the panel appear bound by prior precedent of the

Fedreal Circuit including Jazz Photo and Ninestar Technology. Jazz Photo Corp.

v. U.S. Int'l Trade Comm'n, 264 F.3d 1094 (Fed.Cir.2001)(Newman, J.); Ninestar

Technology Co., Ltd. v. International Trade Com'n, 667 F.3d 1373 (Fed. Cir. 2012)

(Newman, J.).

The author of Ninestar Technology relies upon her earlier panel opinion in Jazz

Photo to deny the existence of international patent exhaustion:

http://www.softic.or.jp/en/symposium/proceedings.htm

http://www.softic.or.jp/symposium/open_materials/10th/index-en.htm




14

“As stated in Jazz Photo, ‘United States patent rights are not exhausted by products

of foreign provenance. To invoke the protection of the first sale doctrine, the

authorized first sale must have occurred under the United States patent.’ [Jazz

Photo Corp. v. U.S. Int'l Trade Comm'n, 264 F.3d 1094, 1105 (Fed.Cir.2001)].

[Appellant] states that this case and the precedent on which it relied were

incorrectly decided, and were overruled by the Supreme Court in Quanta

Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 632 n. 6 (2008). However, neither

the facts nor the law in Quanta Computer concerned the issue of importation into

the United States of a product not made or sold under a United States patent. In

Fujifilm Corp. v. Benun, 605 F.3d 1366, 1371 (Fed.Cir.2010), the court remarked

that ‘Quanta Computer, Inc. v. LG Electronics, Inc. did not eliminate the first sale

rule's territoriality requirement.’” Ninestar Technology, 667 F.3d at 1378).

Jazz Photo is Keyed to Case Law having nothing to do with Exhaustion: The

sole basis for the Federal Circuit denial of international exhaustion is its panel

opinion in Jazz Photo which is entirely keyed to Boesch v. Graff, 133 U.S. 697

(1890). The Court parenthetically summarizes the case in twenty-five words as

holding that “a lawful foreign purchase does not obviate the need for license from

the United States patentee before importation into and sale in the United States.”

Jazz Photo, 264 F.3d at 1105.

But, Boesch v. Graff had absolutely nothing to do with exhaustion of a patent right

because it is a condition precedent for exhaustion to exist that the patent owner

receives compensation for sale of his patented product: This is the very essence of

how the patent owner “exhausts” his patent right. But, the patentee in that case had

nothing to do with the sale of the German-made burners. The sale in that case was

by the patentee’s competitor without any royalty or other compensation to the

patentee. Nothing right was “exhausted”.

Thus, for exhaustion to take place, the patentee must have gained a reward for his

first sale of the product, whereupon the issue of exhaustion first enters the picture.

In Boesch v. Graff there was a sale of a patented burner in Germany by a

competitor of the patentee who did not operate under the patent so there clearly

was no issue of “exhaustion” of any kind. That there was no exhaustion of any

kind was explained by the trial judge:

“Hecht, the man who has a right to manufacture in Germany [who sold the

patented burners to the accused infringer], did not get his right from the patentee.

He does not claim under the patent. * * * Hecht did not get his right from the


15

patentee at all. He got it wholly independent of him, so that, even if the same

invention is patented in this country, he got no right from the patentee in either

country.****”

Graff v. Boesch, 33 F. 279, 280 (C.C. Cal. 1887), aff’d sub nom Boesch v. Graff,

133 U.S. 697 (1890).

(6) Taniguchi –Translation Costs

In Taniguchi v. Kan Pacific Saipan, Ltd., Supreme Court No. 10-1472, opinion

below, 633 F.3d 1218 (9th Cir. 2011)(Rawlinson, J.), the Court is asked to resolve

an inter-circuit conflict as to whether a federal court may tax document translation

costs under 28 USC § 1920(6), a matter of interest in patent litigation involving

overseas parties and international discovery.

Status: Awaiting decision. (Argued February 21, 2012.)

Question Presented: “Section 1920 of 28 U.S.C. sets out the categories of costs

that may be awarded to the prevailing party in a federal lawsuit. One of the listed

categories is ‘compensation of interpreters.’ Id. § 1920(6).

“The question presented is whether costs incurred in translating written documents

are ‘compensation of interpreters’ for purposes of section 1920(6).”

Discussion: The res of this suit is the cost of translations following grant of a

motion for summary judgment by property owner Marianas Resort and Spa (Kan

Pacific Saipan, Ltd.) in Japanese basketball player Kouichi Taniguchi 's personal

injury action.

Patent Litigation Costs: While patents are not a focus of this case, Petitioner cites

two patent cases, Chore-Time Equip., Inc. v. Cumberland Corp., 713 F.2d 774, 782

(Fed. Cir. 1983)(cited for the proposition that “[t]he award of costs for translation

of a German patent … was appropriate under 28 U.S.C. § 1920(6).”); and

Studiengesellschaft Kohle mbH v. Eastman Kodak Co., 713 F.2d 128, 133 (5th Cir.

1983) (cited as “affirming award of translation expenses as taxable costs”).

Federal Circuit Relies on Taniguchi: Although the Federal Circuit Chore-Time

opinion, supra, is directly on point, the Federal Circuit recently in In re Ricoh Co.,

Ltd. Patent Litig., __ F.3d __ (Fed. Cir. 2011)(Dyk, J.), has reached the same

conclusion but with reliance on the Ninth Circuit opinion now on review at the


16

Supreme Court: “[T]he district court taxed Ricoh for all depositions taken in the

case. … Because translation was necessary in connection with a number of these

depositions, those costs are taxable under section 1920 as well. See Taniguchi v.

Kan Pac. Saipan, Ltd., 633 F.3d 1218, 1221–22 (9th Cir. 2011).”

The Ricoh opinion does not mention that the Taniguchi case is now on appeal at

the Supreme Court.

(7) Bowman v. Monsanto – Patent Exhaustion

In Bowman v. Monsanto Co., Supreme Court No. 11-796, proceedings below,

Monsanto Co. v. Bowman, 657 F.3d 1341 (Fed. Cir. 2011)(Linn, J.), Petitioner

challenges the denial of “patent exhaustion” as to harvested seeds produced from

patented plant technology, an issue discussed in Wegner, Post-Quanta, Post-Sale

Patentee Controls, § IV-B-1, Restrictions on Reproduced Bio-Products: The

Quanta Loophole, 7 J. Marshall Rev. Intell. Prop. L. 682, 695-98 (2008), available

at http://www.jmripl.com.php5-10.dfw1-2.websitetestlink.com/issues/article/173.

Status: Awaiting amicus brief from the Solicitor General asking for the views of

the United States whether to grant certiorari. (Order was issued April 2, 2012)

2012.)

Question Presented: “Patent exhaustion delimits rights of patent holders by

eliminating the right to control or prohibit use of the invention after an authorized

sale. In this case, the Federal Circuit refused to find exhaustion where a farmer

used seeds purchased in an authorized sale for their natural and foreseeable

purpose - namely, for planting. The question presented is:

“Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in

patented seeds even after an authorized sale and by (2) creating an exception to the

doctrine of patent exhaustion for self-replicating technologies?”

Judicial Interest in “Exhaustion”: The Court has shown an interest in the issue

of intellectual property “exhaustion” in No. (2) Kirtsaeng v. John Wiley & Sons,

which involves an issue of international copyright exhaustion.



17

(8) Saint–Gobain v. Siemens – Doctrine of Equivalents

In Saint–Gobain Ceramics & Plastics, Inc. v. Siemens Medical Solutions USA,

Inc., Supreme Court No. 11-301, opinion below, Siemens Medical Solutions USA,

Inc. v. Saint–Gobain Ceramics & Plastics, Inc. 647 F.3d 1373 (Fed Cir.

2011)(Lourie, J.), reh’g den, 647 F.3d 1373 (2011), the Supreme Court has asked

the Solicitor General for the views of the United States whether to grant certiorari

in a case involving standards for establishing the doctrine of equivalents.

On April 25, 2012, the Solicior General has filed his brief recommending

AGAINST grant of certiorari. But, with four separate opinions supporting or

opposing denial of rehearing en banc, such an intra-circuit split in an appellate

court handling virtually all patent appeals nevertheless presents an inviting

challenge for grant of review.

Status: A decision whether to grant certiorari is expected before the current Term

is finished by the end of June.

Questions Presented (per Petitioner): “The [PTO] determines whether the

standards governing patentability are met, including whether a claimed invention is

non-obvious over prior art. 35 USC § 103. Where the PTO finds that these

standards are satisfied, the resulting patent (and the patentability determinations

underlying it) are presumed valid, id. § 282, and that presumption can be overcome

only by clear and convincing evidence. Microsoft Corp. v. i4i. Ltd. P'ship, 131 S.

Ct. 2238 (2011). In light of this scheme, the questions presented are:

“1. Whether the PTO's presumptively valid finding that an invention is not obvious

and is thus patentable over a prior art patent is impermissibly nullified or

undermined when a jury is allowed to find, by a mere preponderance of the

evidence, that the patented invention is ‘insubstantially different’ from the very

same prior art patent, and thus infringes that prior art patent under the ‘doctrine of

equivalents.’

“2. Whether, as the dissent below warned, the Federal Circuit's failure to impose a

heightened evidentiary standard to ensure that juries do not use the doctrine of

equivalents to override the PTO's presumptively valid non-obvious determinations

undermines the reasonable reliance of competitors and investors on such PTO

determinations, thereby intolerably increasing uncertainty over claim scope,


18

fostering litigation, ‘deter[ring] innovation and hamper[ing] legitimate

competition.’ App. 89a (Dyk, J., dissenting from the denial of rehearing en banc).”

Questions Presented (per Respondent): “For over 120 years, patent holders have

been required to prove claims of infringement by a preponderance of the evidence.

Bene v. Jeantet, 129 U.S. 683 (1889). When the claim of infringement is brought

under the doctrine of equivalents and there is evidence that the accused product is

covered by a second patent, courts have consistently held that the second patent is

simply relevant evidence to the claim of infringement, but neither alters the

standard of proof nor creates a presumption of noninfringement.

“The petition presents the following questions:

“1. Whether the trial court and the court of appeals both correctly declined to re-

write the standard for proving infringement under the doctrine of equivalents to

require heightened, clear-and-convincing, proof of infringement for the first time

in U.S. history.

“2. Whether, in a case in which no party raised a claim or defense of invalidity, the

trial court properly declined to instruct the jury that the second patent - presented

only for evidentiary purposes was presumptively valid.”

Rader, C.J., in support of denial of rehearing en banc: “The jury properly

reached, and the district judge properly upheld, the doctrine of equivalents verdict

in this case. A major, if not the primary, purpose of the doctrine of equivalents is to

protect inventions from infringement by after-arising technology.

At its heart, the patent system incentivizes improvements to patented technology.

Indeed the Patent Act itself provides patent protection to inventions and

discoveries, then specifically extends that protection to ‘improvement[s] thereof.’

35 U.S.C. § 101. Inventing an improvement to patented inventions, however, does

not entitle such an inventor to infringe the underlying patented technology. The

doctrine of equivalents ensures that both the basic inventor and the inventive

improver obtain their deserved protection.

“Without the doctrine of equivalents, improving technology could deprive basic

inventors of their rights under the patent system. This court examined those

principles in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd.:

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“‘A primary justification for the doctrine of equivalents is to accommodate after-

arising technology. Without a doctrine of equivalents, any claim drafted in current

technological terms could be easily circumvented after the advent of an advance in

technology. A claim using the terms ‘anode’ and ‘cathode’ from tube technology

would lack the ‘collectors’ and ‘emitters’ of transistor technology that emerged in

1948. Thus, without a doctrine of equivalents, infringers in 1949 would have

unfettered license to appropriate all patented technology using the out-dated terms

‘cathode’ and ‘anode’. Fortunately, the doctrine of equivalents accommodates that

unforeseeable dilemma for claim drafters. Indeed, in Warner–Jenkinson Co., Inc.

v. Hilton Davis Chemical Co., 520 U.S. 17, 37 (1997), the Supreme Court

acknowledged the doctrine's role in accommodating after-arising technology.’

“234 F.3d 558, 619 (Fed.Cir.2000)(en banc) (Rader, J., concurring).

“Of course, if an equivalent was foreseeable as available technology at the time of

filing, the applicant has an obligation to claim that technology. If the applicant

discloses, but does not claim, foreseeable technology, that subject matter enters the

public domain. Johnson & Johnston Assocs. Inc. v. R.E. Serv. Co., Inc., 285 F.3d

1046 (Fed.Cir.2002) (en banc) (per curiam). ‘[A]n equivalent is foreseeable if the

equivalent was generally known to those skilled in the art at the time of

amendment as available in the field of the invention as defined by the pre-

amendment claim scope.’ Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,

Ltd., 493 F.3d 1368, 1380 (Fed.Cir.2007); Sage Prods. Inc. v. Devon Indus., Inc.,

126 F.3d 1420, 1424 (Fed.Cir.1997); Johnson, 285 F.3d at 1056–59. In other

words, ‘[t]he applicant is charged with surrender of foreseeable equivalents known

before the amendment, not equivalents known after the amendment.’ Festo, 493

F.3d at 1380 (emphasis added). Thus, the doctrine of equivalents allows patent

owners to cover after-arising technology.

“In sum, this court in Siemens Med. Solutions USA, Inc. v. Saint–Gobain Ceramics

& Plastics, Inc., 637 F.3d 1269 (Fed.Cir.2011), correctly applied the doctrine of

equivalents to after-arising technology and correctly maintained the proper

evidentiary burden for the infringement inquiry.” Siemens Medical Solutions, 647

F.3d at 1375-76 (Rader, C.J., joined by Newman, Lourie, Linn, JJ., concurring in

den. of pet. for reh’g en banc).


20

Dyk, J., in dissent from denial of rehearing en banc: “[W]here the purported

equivalent is embodied in a subsequent patent, the finder of fact should afford a

presumption of validity to the subsequent patent. Contrary to the panel majority's

suggestion, the Supreme Court did not hold to the contrary in Sanitary Refrigerator

Co. v. Winters, 280 U.S. 30 (1929). There, the Court found a patent infringed under

the doctrine of equivalents even though the accused device was claimed in a

subsequent patent. Id. at 43; see Siemens, 637 F.3d at 1280. But the Court found

that the equivalent was ‘merely a colorable departure from the [claimed] structure’

and was a ‘close copy which [sought] to use the substance of the invention ... [to]

perform precisely the same offices with no change in principle.’ Sanitary

Refrigerator, 280 U.S. at 41–42. The Court's only reference to the subsequent

patent was a single sentence stating: ‘Nor is the infringement avoided, under the

controlling weight of the undisputed facts, by any presumptive validity that may

attach to the [subsequent] patent by reason of its issuance after the [asserted]

patent.’ Id. at 43 (emphasis added). Evidently, the Court found that the ‘controlling

weight of the undisputed facts’ overcame the subsequent patent's presumption of

validity, not that the presumption of validity was irrelevant.

“In short, a purported equivalent cannot be both insubstantially different and

nonobvious, and in no event should the doctrine of equivalents permit a patent to

capture another's subsequent invention that is novel and nonobvious. The

majority's contrary approach will deter innovation and hamper legitimate

competition.” Siemens Medical Solutions, 647 F.3d at 1379-80 (Dyk, J, joined by

Gajarsa, Prost, JJ., dissenting from den. of pet. for reh’g en banc)(footnotes

omitted).

A Deeply Divided En Banc Federal Circuit: What greatly enhances the chance

for grant of review is the presence of multiple opinions in connection with the

denial of rehearing en banc which manifests a major intra-circuit split within the

court that handles patent appeals. In addition to the two opinions quoted above

supporting and dissenting from denial of rehearing en banc, additional opinions

were filed in connection with the denial of rehearing en banc, there were two

further opinions, Siemens Medical Solutions, 647 F.3d at 1374 (Lourie, J., joined

by Rader, C.J., Newman, Linn, Moore, O’Malley, JJ., concurring in den. of pet. for

reh’g en banc); Siemens Medical Solutions, 647 F.3d at 1376 (Newman, J., joined

by Rader, C.J., Lourie, J., concurring in den. of pet. for reh’g en banc).


21

(9) GSK v. Classen – § 271(e)(1) “Safe Harbor”

In GlaxoSmithKline v. Classen Immunotherapies, Supreme Court No. 11-1057,

proceedings below sub nom Classen Immunotherapies, Inc. v. Biogen IDEC, 659

F.3d 1057 (Fed. Cir. 2011)(Newman, J.), on remand from the Supreme Court upon

Order granting, vacating and remanding in light of Bilski, 130 S.Ct. 3541 (2010),

earlier Federal Circuit opinion, 304 Fed.Appx. 866 (Fed. Cir. 2008)(Moore, J.),

petitioner questions the scope of the “safe harbor” of 35 USC § 271(e)(1).

Status: Distributed for conference on May 10, 2012; a decision whether to grant

certiorari is anticipated for May 14, 2012.

Question Presented: “Congress has created a statutory safe harbor from patent-

infringement liability for otherwise-infringing conduct that is ‘reasonably related to

the development and submission of information under a Federal law which

regulates the manufacture, use, or sale of drugs.’ 35 U.S.C. § 271(e)(1). In this

case, the Federal Circuit concluded that this safe harbor ‘is limited to activities

conducted to obtain pre-marketing approval of generic counterparts.’ … The

question presented is:

“Whether the Federal Circuit's interpretation of § 271(e)(1), which arbitrarily

restricts the safe harbor to preapproval activities, is faithful to statutory text that

contains no such limitation, and decisions of this Court rejecting similar efforts to

impose extra-textual limitations on the statute.”

A GVR? It would not be surprising for the Court grant, vacate and remand (GVR)

in light of Prometheus – as the Court did in No. (1) Myriad.

(10) Byrne v. Wood, Herron & Evans – Federal Circuit Jurisdiction

In Byrne v. Wood, Herron & Evans, LLP, a certiorari petition is expected from the

denial of rehearing en banc by the Federal Circuit, __ F.3d __, 2012 WL 1020277

(Fed. Cir. 2012) )(Order denying reh’g en banc), where the Court maintained its

broad jurisdiction over state claims implicating a patent matter.

The same issue is present in Gunn v. Minton, Supreme Court No. 11-1118 (the next

case in Top Ten Patent Cases, infra), which is a petition from the Texas Supreme


22

Court decision which is the discussed in the dissent in Byrne v. Wood, Herron &

Evans.

Status: Unless the time is extended, a petition for certiorari is due June 20, 2012.

Discussion: Arguments directed to the Supreme Court are found in the dissent in a

dissent:

“ It is time we stop exercising jurisdiction over state law malpractice claims. I

dissent from the court's refusal to consider this matter en banc so that the case law

through which we have expanded the scope of our jurisdiction to these purely state

law matters can be reconsidered and revamped.

This court has justified expanding the reach of our jurisdiction to cover state law

malpractice claims by reading Christianson v. Colt Industries Operating Corp.,

486 U.S. 800 (1988), to authorize our doing so. Specifically, our case law

concludes that, whenever a patent law issue is raised in the context of a state law

claim and must be resolved in the course of that otherwise state law inquiry,

federal jurisdiction will lie, as will exclusive appellate jurisdiction in this court.

That reading of Christianson is wrong, however. Supreme Court precedent permits

federal courts to exercise federal question jurisdiction over state law claims only in

the rare case where a federal issue is ‘actually disputed and substantial,’ and where

doing so will not upset ‘any congressionally approved balance of federal and state

judicial responsibilities.’ Grable & Sons Metal Prods., Inc. v. Darue Eng'g & Mfg.,

545 U.S. 308, 314 (2005). ‘[T]he mere presence of a federal issue in a state cause

of action does not automatically confer federal-question jurisdiction.’ Merrell Dow

Pharm. Inc. v. Thompson, 478 U.S. 804, 813 (1986). Rather, courts must undertake

a four-step inquiry as to whether: (1) a federal issue is a necessary element of a

state law claim; (2) a federal issue is actually disputed; (3) a federal issue is

substantial; and (4) exercising federal jurisdiction will disturb the balance of

federal and state judicial responsibihties. Grable, 545 U.S. at 314. In choosing to

exercise jurisdiction over malpractice claims arising out of patent matters, we have

ignored the latter two parts of the inquiry.”

Byrne, __ F.3d at __(O’Malley, J., joined by Wallach, J., dissenting from denial of

the petition for reh’g en banc).

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“Uncabined” Jurisdiction, Voices from the Texas Supreme Court: Further

ammunition is provided in an even more recent concurring opinion:

“This case exemplifies the mischief our jurisdictional over-reaching has caused in

situations where a state law claim involves an underlying patent issue. Indeed, in

objecting to a state court dismissal of a state law malpractice claim based on our

case law, three dissenting Texas Supreme Court justices identified this very case as

emblematic of the problems created by this court's case law. Minton v. Gunn, 355

S.W.3d 634, 653 (Tex.2011) (Guzman, J., dissenting) (‘[T]he Supreme Court's

fears have already been realized in USPPS .... ‘[T] he reach of the Federal Circuit's

section 1338 reasoning is uncabined, and can potentially sweep any state law case

that touches on substantive patent law (or, for that matter, the other areas of law

covered by section 1338, such as copyright and trademarks) irrevocably into

federal court.’).”

USPPS, Ltd. v. Avery Dennison Corp., __ F.3d __, __, 2012 WL 1292886 (Fed.

Cir. 2012)(O’Malley, J., joined by Mayer, J., concurring).

Intra-Circuit Dispute: Four members of the Federal Circuit have written or joined

opinions rebutting the dissent: One member flatly rejects the view that the Federal

Circuit practice conflicts with the Supreme Court precedent: “[I am not]

persuaded by Judge O'Malley's arguments that our case law contradicts Supreme

Court precedent.” USPPS, __ F.3d at __ (Prost, J., concurring). In this regard, she

is echoing her agreement with a concurrence in Byrne, __ F.3d at __ (Dyk, J.,

joined by Newman, Lourie, JJ., concurring in the denial of the petition for

rehearing en banc).

Gunn v. Minton – Federal Circuit Jurisdiction

In Gunn v. Minton, Supreme Court No. 11-1118, opinion below, Minton v. Gunn,

355 S.W.3d 634, 55 Tex. Sup. Ct. J. 196 (2011), Petitioner raises the same issue of

exclusive Federal Circuit jurisdiction as in Top Ten No. (10) Byrne v. Wood, Herron & Evans, LLP.

Status: A vote on whether to grant certiorari is expected before the Court finishes

the current Term at the end of June. (Currently, a Response to the Petition is due

May 12, 2012.)

Question Presented: “Did the Federal Circuit depart from the standard this Court

articulated in Grable & Sons Metal Products, Inc. v. Darue Eng'g & Mfg., 545


24

U.S. 308 (2005), for “arising under” jurisdiction of the federal courts under 28

U.S.C. § 1338, when it held that state law legal malpractice claims against trial

lawyers for their handling of underlying patent matters come within the exclusive

jurisdiction of the federal courts? Because the Federal Circuit has exclusive

jurisdiction over appeals involving patents, are state courts and federal courts

strictly following the Federal Circuit's mistaken standard, thereby magnifying its

jurisdictional error and sweeping broad swaths of state law claims - which involve

no actual patents and have no impact on actual patent rights - into the federal

courts?”

Discussion: There is no conflict to resolve between the Texas Supreme Court and

the Federal Circuit. Rather, the dissent in Byrne v. Wood, Herron & Evans relies

upon the dissent in the Texas Supreme Court opinion to show why the Federal

Circuit majority is wrong.

The petition in Gunn v. Minton is reviewed by Professor Dennis Crouch, Federal

Jurisdiction over Patent Malpractice Cases – Supreme Court Shows Interest in Gunn v. Minton, Patently O (April 27, 2012).

Focus on Byrne v. Wood, Herron & Evans, L.L.P.: A supplemental brief was

filed focusing upon this Federal Circuit case decided after the petition was filed:

“In Byrne the Federal Circuit denied rehearing en banc on the issue of whether the

court should revisit its jurisdictional rule that state law legal malpractice claims

arising out of patent matters come within the federal courts' “arising under”

jurisdiction. Two judges of the court dissented from the court's decision to deny

rehearing en banc on the jurisdiction issue, because ‘it is time we stop exercising

jurisdiction over state law malpractice claims.’

“The Federal Circuit, which created the jurisdictional morass at issue in this case,

is … split within itself regarding whether to abandon the misguided and overly-

broad jurisdictional standard it articulated in Air Measurement Tech., Inc. v. Akin

Gump Strauss Hauer & Feld, L.L.P., 504 F.3d 1262 (Fed. Cir. 2007) and

Immunocept, L.L.C. v. Fulbright & Jaworski, L.L.P., 504 F.3d 1281 (Fed. Cir.

2007). Ten judges on the Federal Circuit voted to deny rehearing en banc and leave

the court's jurisdictional standard in place, while two judges dissented.

“The Byrne case thus illustrates two significant reasons why this Court should

grant the petition in this case. First, the Federal Circuit is not going to correct the


25

problem itself. The court's 10-2 split illustrates that the misguided Air

Measurement standard will remain in place and continue to wreak havoc until this

Court corrects it. Second, the dissenting opinion explains very starkly that the five

years since Air Measurement was decided have proved just how misguided the

Federal Circuit's jurisdiction standard is:

‘Ultimately, even if it was unclear in 2007 that our case law would sweep an entire

class of state law malpractice actions into federal court, our recent experience

renders no doubts about that point. And extending jurisdiction over these cases has

done little, if anything, to promote uniformity in patent law.’”

In re Youman – Recapture Rule

In In re Youman, Fed. Cir. 2011-1136, appellant challenges the recapture rule.

Status: Awaiting decision (argued December 9, 2011 (Lourie, Schall, Prost, JJ.))

Issues (Per Appellant): “1. Did the Board of Appeals and Patent Interferences err

as a matter of law in affirming the Examiner's decision rejecting Appellants'

reissue claims for violating the Recapture Rule, where the reissue claims modify a

limitation that was added during the original prosecution to overcome prior art but

do not entirely eliminate that limitation, such that the limitation continues to

materially narrow the reissue claims relative to the surrendered subject matter so

that the surrendered subject matter has not crept into the reissue claim?

“2. Did the Board of Appeals and Patent Interferences err as a matter of law in

affirming the Examiner's decision rejecting Appellants' reissue claims for violating

the Recapture Rule, by applying a per se rule requiring the rejection of any reissue

claim that omits, or broadens in any way, any limitation that was added or argued

during the original prosecution to overcome a prior art rejection, where such a rule

conflicts with settled case law of this Court?”

Issues (Per Appellee PTO): “…The issue raised in this appeal is whether, by

amending the claims in the original application to require a means for cycling

forward and/or backward through alphanumeric characters, Youman surrendered to

the public other means for changing the characters.”

Soverain v. Newegg – “All Elements” (Centillion)


26

Soverain Software LLC v. Newegg Inc., Fed. Cir. No. 2011-1009, as one of the

several issues on appeal, questions an infringement judgment of a “systems” claim,

raising issues following Centillion Data Systems, LLC v. Qwest Communications

Intern., Inc., 631 F.3d 1279 (Fed. Cir. 2011)(Moore, J.).

Status: Awaiting decision; argument August 4, 2011 (Newman, Prost, Reyna, JJ.)

Issue as Phrased by Appellant: “Did the district court misapply the all-elements

rule by… refusing to enter judgment as a matter of law that Newegg did not induce

infringement of the system claims …, given that Newegg and its customers

separately owned and controlled distinct components of the accused system…?

Discussion: This case presents a challenge to a District Court decision finding

infringement of a system claim that now finds support from the Federal Circuit’s

recent panel opinion, Centillion Data Systems, LLC v. Qwest Communications

International, Inc., 631 F.3d 1279, 1284 (Fed.Cir.2011)(Moore, J.)(“NTP [, Inc. v.

Research in Motion, Ltd., 418 F.3d 1282, 1317 (Fed.Cir.2005),] … interpreted the

definition of ‘use’ under § 271(a). We hold that to ‘use’ a system for purposes of

infringement, a party must put the invention into service, i.e., control the system as

a whole and obtain benefit from it.”).

Minkin v. Gibbons, P.C. – Malpractice (Narrow Claims)

In Minkin v. Gibbons, P.C., Fed. Cir. No. 2011-1178, appellant-inventor charges

malpractice against the firm that successfully prosecuted his patent application but

(per appellant) failed to gain sufficiently broad coverage to block its competitor.

Status: Awaiting decision; arg. Sept. 9, 2011. (Rader, C.J., O’Malley, Reyna, JJ.).

Issues (per plaintiff-appellant): “1. Plaintiffs …allege that defendant Gibbons,

P.C., committed legal malpractice in prosecuting Minkin's United States patent

application …for a tool known as extended reach pliers …[which] plaintiffs

successfully marketed … for a period of time until their largest customer began

manufacturing it on its own, as the [ ] Patent had been drafted so narrowly as to

provide no meaningful patent protection….Plaintiffs maintain that the District

Court erred in requiring plaintiffs to present on a summary judgment motion a

patentability analysis similar to that required in an invalidity trial, contrary to

Davis v. Brouse McDowell, L.P.A., 596 F.3d 1355 (Fed. Cir. 2010).


27

“2. In the District Court proceeding, through their expert, plaintiffs provided

alternate claims language which they maintained could have been employed in

defendant's application for a patent for the ERP, and would have provided

meaningful patent protection to the ERP, which was lacking in the '363 Patent.

Plaintiffs maintained that their expert's proposed claims language would have led

to the issuance of a patent by PTO no less readily than did that drafted by

defendant and incorporated into the '363 Patent. Plaintiffs provided two expert's

reports, the second of which consisted solely of distinguishing plaintiffs' proposed

claims language from the prior art. Plaintiffs maintain that the District Court erred

in concluding that those expert proofs failed to satisfy plaintiffs' burden of making

a prima facie case of non-obviousness of their proposed claims language.

“3. In this legal malpractice action, the parties and the lower court concurred that a

‘case within a case’ analysis was appropriate. Plaintiffs maintain that where such

an analysis is employed in a legal malpractice action concerning an issued patent,

and where the plaintiff must prove causation of loss through alternate claims

language, the aspects of the underlying application process which are unaffected

by the proposed alternate claims language should not require separate expert proofs

in order for patentability to be established. Additionally, the procedural

developments which actually occurred in the application process should be

accorded relevance in assessing the outcome of the patent application in the

absence of the defendant's negligence.”

Defendant-Appellee’s Statement of the Issues: “1. The issue on this appeal is

whether the District Court correctly ruled that plaintiffs failed to demonstrate a

genuine issue of fact for trial on the causation element of their case. More

specifically, in this legal malpractice case, the question is whether the opinions of

plaintiffs' proposed expert witness… present a triable question of case-within-a-

case causation under New Jersey law.

“2. Plaintiffs' Statement of Issues No. 3 reprises a non-issue that was thoroughly

vetted and correctly rejected below. There is no principle of law or patent

examination procedure that provides for an assumption or inference that a finding

of non-obviousness as to a set of patented claims, such as those in plaintiffs'[ ]

patent at issue, is somehow transferable to “alternate” claims pertaining to the

same device….


28

“3. Plaintiffs' Statement of the Issues No. 1 derives from an incorrect interpretation

and analysis of this Court's decision in Davis v. Brouse McDowell, L.P.A., 596 F.

3d 1355 (Fed. Cir. 2010).”


29

Supreme Court Cases Decided this Term

Golan v. Holder: Art. I, § 8, cl. 8 Constitutional Challenge Denied

In Golan v. Holder, 565 U.S. ___ (January 18, 2012)(Ginsburg, J.), the Supreme

Court denied a Constitutional challenge to the retroactive extension of the terms of

certain expired copyrights which had been challenged on two grounds, including

the Patent and Copyright Clause, Art. I, § 8, clause 8, which sanctions legislation

to “Promote the Progress of Science and the Useful Arts….”.

In its 6-2 affirmance of the Circuit Court denial of the Constitutional challenge, the

Court sustained the statute following the rationale of its earlier decision in Eldred

v. Ashcroft, 537 U.S. 186 (2003)(Ginsburg, J.). (Breyer, J., joined by Alito, J.,

dissented, while Kagan, J., was recused.)

“First Inventor to File” Constitutional Challenge, an Uphill Battle: In

arguments leading up to the enactment of the Leahy Smith America Invents Act,

Public Law 112-29 (September 16, 2011), voices were heard that the “first

inventor to file” provision of the new law would be challenged as contrary to the

Patent and Copyright Clause.

As in Eldred v. Ashcroft, the Court in Golan v. Holder showed great deference to

Congress as to how a statute should be drafted to implement the goals of the

Constitution:

“In Eldred, we rejected an argument nearly identical to the one petitioners

rehearse. * * * [W]e explained, the Clause ‘empowers Congress to determine the

intellectual property regimes that, overall, in that body’s judgment, will serve the

ends of the Clause.’ [Eldred v. Ashcroft, 537 U.S. at 222.]”

The Court stated that “[g]iven the authority we hold Congress has, we will not

second-guess the political choice Congress made….”

Since the “first inventor to file” provision of the new law mandates that the patent

should be given to an inventor who is first to file (consistent with the wording of

the Clause), it is difficult to see the Supreme Court second guessing a new

statutory regime that implements the Patent and Copyright Clause and is consistent

with the literal wording of the Constitutional provision.


30

Mayo v. Prometheus – “Metabolite déjà vu”

In Mayo Collaborative Services v. Prometheus Laboratories, Inc., __ U.S. __

(March 20, 2012), – “Metabolite déjà vu” – the Court overturned Prometheus

Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347 (Fed. Cir.

2010)(Lourie, J.). The Court determined that a personalized medicine diagnostic

method lacks patent-eligibility under 35 USC § 101.

Caraco v. Novo Nordisk – ANDA Defendant’s Counterclaim

In Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S, __ U.S. __

(April 17, 2012)(Kagan, J.), the Court reversed the Federal Circuit decision in

Novo Nordisk A/S v. Caraco Pharmaceutical Laboratories, Ltd., 601 F.3d 1359

(Fed. Cir. 2010)(Fed. Cir. 2010)(Rader, J.), reh’g den, 615 F.3d 1374 (2010).

Petitioner -ANDA defendant successfully challenged the Federal Circuit’s denial

of its counterclaim under Section 355(j)(5)(C)(ii)(I) that alleges that the brand-

name manufacturer's patent information does not accurately and precisely describe

the method of use claimed by its patent:

“When the Food and Drug Administration (FDA) evaluates an application to

market a generic drug, it considers whether the proposed drug would infringe a

patent held by the manufacturer of the brand-name version. To assess that matter,

the FDA requires brand manufacturers to submit descriptions of the scope of their

patents, known as use codes. The FDA does not attempt to determine if that

information is accurate. * * *

“[W]e consider whether Congress has authorized a generic company to challenge a

use code’s accuracy by bringing a counterclaim against the brand manufacturer in

a patent infringement suit. The relevant statute provides that a generic company

“may assert a counterclaim seeking an order requiring the [brand manufacturer] to

correct or delete the patent information [it] submitted . . . under [two statutory

subsections] on the ground that the patent does not claim . . . an approved method

of using the drug.” 117 Stat. 2452, 21 U. S. C. §355(j)(5)(C)(ii)(I). We hold that a

generic manufacturer may employ this provision to force correction of a use code

that inaccurately describes the brand’s patent as covering a particular method of

using the drug in question.”


31

Kappos v. Hyatt: § 145 De Novo Review Standard

In Kappos v. Hyatt, __ U.S. __ (2012)(Thomas, J.), a unanimous Supreme Court

affirmed the decision below, Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010)(en

banc), sustaining the de novo nature of a civil action under35 USC § 145:

“The Patent Act of 1952… grants a patent applicant whose claims are denied by

the Patent and Trademark Office (PTO) the opportunity to challenge the PTO’s

decision by filing a civil action against the Director of the PTO in federal district

court. In such a proceeding, the applicant may present evidence to the district

court that he did not present to the PTO. This case requires us to consider two

questions. First, we must decide whether there are any limitations on the appli-

cant’s ability to introduce new evidence before the district court. For the reasons

set forth below, we conclude that there are no evidentiary restrictions beyond those

already imposed by the Federal Rules of Evidence and the Federal Rules of Civil

Procedure. Second, we must determine what standard of review the district court

should apply when considering new evidence. On this question, we hold that the

district court must make a de novo finding when new evidence is presented on a

disputed question of fact.

“In deciding what weight to afford that evidence, the district court may, however,

consider whether the applicant had an opportunity to present the evidence to the

PTO.”

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