Tag: patent infringement

U.S. Supreme Court Makes It Easier To Avoid Method Patents Requiring Multiple Actors

Neal Gerber

On June 2, 2014, the United States Supreme Court unanimously held that a defendant was not liable for inducing infringement of a patented method where there is no direct infringement because the method steps are “divided” between the defendant and its customers. See Limelight Networks, Inc. v. Akamai Technologies, Inc., No. 12–786. The Court was reviewing a 6-5 en banc decision from the Court of Appeals for the Federal Circuit that held a party might be liable for inducing infringement under 35 USC 271(b) where a defendant carried out some steps and encouraged others (such as its customers) to carry out the remaining steps. In other words, the performance of the method steps was divided between a party and its customers, so the party could be liable for inducing the performance of the remaining steps it did not perform itself.  The Supreme Court reversed and remanded the judgment against Limelight, reasoning that there could be no liability for inducing infringement if no party directly infringed.

The Supreme Court relied on a prior decision by the Federal Circuit that there is no direct infringement of a method claim unless a single party performs every step of a claimed method or exercises “control or direction” over the entire process such that every step is attributable to that party. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2013). Muniauction held that there was no direct infringement of a patented method when its distinct steps were performed by “mere arms-length cooperation” between parties. In Limelight, the Supreme Court “assumed” that Muniauction’s holding was correct but observed that the Federal Circuit could revisit it when the Limelight decision was remanded.

Both Limelight and Muniauction involved client-server scenarios for web-based businesses and cloud-based application services, but this decision has broad implications across a variety of fields, such as personalized or precision medicine.  For example, a patented method directed to diagnosing and treating a disease would not be infringed where a laboratory provides the diagnosis and the treating physician does not exercise “control or direction” over the steps performed by the laboratory.

Until Muniauction is further defined, the Court has returned the law to its state prior to the Federal Circuit’s Akamai holding, where liability turned on whether a single infringer exhibited sufficient “control or direction” over steps performed by others; if not, no one is liable for patent infringement.  For would-be infringers, this potentially provides a useful defense.  For patent applicants, it is a reminder to draft method claims in a manner such that all actions can be taken by a single entity.

Article By:

Michael B. Harlin
James P. Muraff
Kevin A. O’Connor Ph.D.
Mike R. Turner
Of:
Neal, Gerber & Eisenberg LLP

Supreme Court Will Review Limelight and Nautilus Re: Patent Infringement Litigation

Schwegman Lundberg Woessner

 

Continuing its heightened interest in IP law, on Friday the Supreme Court granted petitions for cert. to review Limelight Networks, Inc. v. Akami Technologies, Inc., U.S., No 12-786 and Nautilus, Inc. v. Biosig Instruments, Inc., U.S., 13-339. The other two grants were in a (c) and TM and so of less interest to this patent attorney.

In Limelight, the Fed. Cir. held that a defendant could be found liable for inducing infringement under 271(b) even if no one party performed the acts necessary to meet the requirement that there be direct infringement of 271(a). In the biotech/pharma space, this question becomes relevant when a testing lab measures the level of a biomarker but a specialist draws the diagnostic conclusion required by the claim.

I had not commented on the Nautilus decision in the past because the Fed. Cir. “rule” holding that a claim term violated 112(2) only if it was “insolubly ambiguous” was favorable to patentees (and, indirectly, to prosecutors). This “rule” has been challenged as essentially too lenient to said ambiguous patent claims – and the Court may consider if the presumption of validity of an issued patent lowers the bar of the statutory requirement of particular and distinct patent claiming.

I don’t think that the Fed. Cir. has erred in attempting to preserve the validity of an issued claim by reading it in view of the specification, even including “inherent parameters”, but the Supreme Court seldom takes up a Fed. Cir. decision to give them praise for preserving patentees’ shrinking bundle of rights.

Article by:

Warren Woessner

Of:

Schwegman, Lundberg & Woessner, P.A.

Does Wireless Media Innovations Have a Lock on Tracking Shipping Containers in a Shipping Yard?

Womble Carlyle

Wireless Media Innovations, LLC (“Wireless”) asserts patent infringement of two patents against Flowers Foods, Inc. (“Flowers”) in a complaint filed in the Middle District of Georgia on November 19, 2013.  The patents cover monitoring methods and systems for containers.

Wireless claims United States Patent No. 6,148, 291 (the ‘291 Patent) and United States Patent No. 5,712,789 (the ‘789 Patent) have been directly infringed by Flowers by its use of “yard management systems and operative methods associated therewith to monitor the locations, movement, and load statuses of containers in at least one of [Flowers’] facilities.”  Literal infringement as well as infringement under the doctrine of equivalents is alleged.  Wireless asserts that the infringement has been willful (as Flowers has had knowledge of the patents of Wireless “at least as of the filing date of this Complaint.”

The complaint is fairly described as a “notice pleading” that does not delve into the nuances of the Flowers monitoring systems or the Wireless patent claims.  The ‘291 Patent is a combination of detailed specifics in the specifications and broadly written claims.  Pictured below is a composition of selected figures from the patent:

Wireless Media Innovations, patent infringement, litigation, intellectual property

Contrasting with the complexity of the drawings and the 948 lines describing the preferred and alternate embodiments within the 47 page patent is the relatively simple first and twenty-first claims – reprinted below:

Claim 1

A computerized system for monitoring and recording location and load status of shipping containers relative to a facility with an associated yard defined by a boundary within which containers are to be monitored by the system, and a controlled entry point to the boundary, the system comprising:

means for recording identification codes of containers which enter the boundary,

means for communicating and recording information on movements, location and load status of containers within the boundary in response to movement and changes in location and load status of containers made according to instructions received from the facility,

means for generating reports of recorded information on locations and load status of containers within the boundary, and

means for generating reports on container locations and load status relative to designated docks associated with a facility.

Claim 21

A method for using a computer to monitor usage of one or more docks associated with a facility, wherein the usage involves the presence or absence of a container at a dock, the method comprising the steps of:

(a)    recording the presence of an identified container at a particular identified dock,

(b)   recording the absence of an identified container at a particular identified dock,

(c)    producing a report which identifies monitored docks and identifies containers present at identified docks, and also identifies docks at which a container is absent.

The ‘789  Patent is similar in scope, but it does not require the use of a computer.

The case is Wireless Media Innovations, LLC v. Flower Foods, Inc.., No. 7:13-cv-00155-HL, filed 11/19/13 in the U.S. District Court for the Middle District of Georgia, Valdosta Division, assigned to U.S. District Judge Hugh Lawson.

Article by:

Kirk W. Watkins

Of:

Womble Carlyle Sandridge & Rice, PLLC

Lululemon and Calvin Klein Settle Yoga Pants Design Litigation

The National Law Review recently published an article, Lululemon and Calvin Klein Settle Yoga Pants Design Litigation, written by Susan Neuberger Weller of Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.:

 

As we reported  previously, Lululemon, an exercise apparel company, filed suit against Calvin Klein and its supplier G-III Apparel Group for infringement of three Lululemon design patents for yoga pants. On November 20, 2012, Lululemon filed a notice of voluntary dismissal in the Delaware proceeding based upon a settlement that would dismiss the suit with prejudice. The terms of the settlement are confidential, according to a Lululemon, which released a statement asserting that “Lululemon values its products and related IP rights and takes the necessary steps to protect its assets when we see attempts to mirror our products.” The lawsuit was somewhat unique in that it involved a designer seeking to assert IP protection in articles of clothing through patent rights.

©1994-2012 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.

A Sticky Situation—Secondary Considerations Require NEXUS to the Claimed Invention

Addressing issues of invalidity and non-infringement of patents asserted between direct competitors in the chewing gum market, the U.S. Court of Appeals for the Federal Circuit explained that in order to be entitled to rely on evidence of unexpected results commercial success or copying, the evidence of secondary translations must be tied to the claimed invention, i.e., the so-called nexus requirement. WM Wrigley Jr. Co. v. Cadbury Adams USA LLC, Case Nos. 2011-1140, 1150 (Fed. Cir., June 22, 2012) (Bryson, J.) (Newman, J. concurring-in-part and dissenting-in-part).

Wrigley and Cadbury cross-alleged patent infringement of patents directed to chewing gum that provides a cooling sensation when chewed.  The Wrigley patent was directed to chewing gum containing a combination of menthol and WS-23 coolant, while the Cadbury patent was directed to a chewing gum containing a combination of menthol and WS-3 coolant.

The district court found that one claim of Wrigley’s patent was invalid as anticipated by a patent to Shahidi and another was invalid as obvious in view of a patent to Luo and a publication by Parrish.  The lower court rejected Wrigley’s evidence of unexpected results, commercial success and copying.  The district court also found that Cadbury’s patent was not infringed, either literally or under the doctrine of equivalents.  Wrigley appealed.

The Federal Circuit affirmed the lower court’s finding of obviousness as to Wrigley’s patent, concluding that Wrigley failed to demonstrate that the combination of menthol and WS-23, as claimed, resulted in an unexpected benefit beyond what was already known in the art.  The Court stated that prior art teaches that the combination of menthol and WS-3 yields “enhanced breath freshening effects” and that it was known that WS-3 and WS-23 share similar characteristics.  The Federal Circuit dismissed Wrigley’s evidence of unexpected results because there was no clear showing that the claimed invention resulted in the alleged unexpected benefits that were attributable to the claimed components and not to other factors, including sweetener levels, higher gum base and filler levels and more expensive ingredients.  Likewise, the Court dismissed Wrigley’s evidence of commercial success and copying for a lack of a nexus to the claimed invention.

The Federal Circuit also affirmed the lower court’s finding of anticipation based on Shahidi. The Federal Circuit found that Shahidi disclosed a number of different combinations of cooling and flavoring agents, one of which was the claimed combination of menthol, which Shahidi identified as one of the most suitable flavoring agents, and WS-23, which Shahidi listed among a group of other flavoring agents.

Regarding Cadbury’s patent, the Federal Circuit found that Cadbury could not prove infringement under the doctrine of equivalents because it had chosen to limit its claimed chewing gum composition to a certain species and not to the broader genus, despite knowing at the time of filing its application that WS-23 and WS-3 were interchangeable.  Cadbury’s decision to narrowly recite claim N-substituted-p-menthane carboxamides, which excludes WS-23, was detrimental to its infringement case.

In her dissent, Judge Newman pointed out that Shahidi, the purportedly anticipatory reference, “does not show the claimed combination at all, but merely presents the ingredients on lists” which can be combined in more than a million possible combinations.  Judge Newman also disagreed with the majority’s finding on obviousness, stating the record was “rife” with evidence demonstrating a nexus between Wrigley’s success of chewing gum combinations with menthol and WS-23, including Cadbury’s own internal records and marketing materials stressing the cooling effect of its reformulated chewing gum.

© 2012 McDermott Will & Emery

Trial Court’s New Role in Willful Patent Infringement Decisions

Matthew J. Kreutzer of Armstrong Teasdale recently had an article regarding Patent Infringements published in The National Law Review:

The United States Court of Appeals for the Federal Circuit appears to have made it more difficult to prove willful infringement of a patent. Such a verdict could lead to an award of treble damages and attorneys’ fees. In a case that focuses on that portion of the willfulness test that requires a finding of an objectively high likelihood of patent infringement, the appellate court held that the trial court, not the jury, should make that determination.

In Bard Peripheral Vascular, Inc. v. W.L. Gore & Assoc., Inc., on rehearing en banc, the Federal Circuit considered the nature of the objective inquiry of the test for determining willful infringement. To establish willful infringement a patentee must prove two elements: (1) the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent and if that threshold standard is satisfied; (2) that the objectively-defined risk was either known or so obvious that it should have been known to the accused infringer. It is the first element of that test that was at issue in the case noted herein.

The objective prong of the test is generally not met if the accused infringer relies on a reasonable defense of invalidity or non-infringement. Determining the reasonableness of the defenses can involve both questions of law and fact. The Federal Circuit concluded that the court, not the jury, is in the best position for making this reasonableness determination. This determination will be subject to de novo review on appeal, which means that the trial court’s decision will receive no deference from the Federal Circuit.

While each case is different, it would not be unexpected for the trial court and/or the Federal Circuit to determine that an accused infringer was not unreasonable if it believed the subject patent was not infringed or was invalid. Even if the accused infringer was wrong in the belief, the reasonableness inquiry offers more room to defend the willfulness of the actions taken. How trial courts handle this inquiry remains an open question, but it would not be unexpected for there to be separate proceedings to aid the court in its required determination. Because the trial court’s decision will receive no deference on appeal, trial courts may be more reluctant to find willfulness out of fear of being reversed.

© Copyright 2012 Armstrong Teasdale LLP