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— 2017-04-19目次はこちら
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$$ The fins 33 are each in contact with the walls of the vessel 3, and in at least thermal contact with each other along axis 35. (USP5931005)
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Continue Reading ...目次はこちら
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$$ The fins 33 are each in contact with the walls of the vessel 3, and in at least thermal contact with each other along axis 35. (USP5931005)
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Continue Reading ...Author: Yoonhee Kim Editor: Esther H. Lim In Comcast IP Holdings I LLC v. Sprint Communications Co., L.P., No. 2015-1992 (Fed. Cir. Mar. 7, 2017), the Federal Circuit affirmed a jury verdict that Sprint infringed patents owned by Comcast and a $7.5 million damages award with prejudgment interest. One patent-in-suit claims the use of domain […]
Continue Reading ...Rembrandt Wireless v. Samsung (Fed. Cir. 2017) A jury found for Rembrandt and awarded $15.7 million in damages. On appeal, the Federal Circuit has affirmed on infringement and validity – but rejected the lower court’s finding that the patent had been properly marked. Back-damages for patent infringement is a bit interesting. The marking statute creates a constructive […]
Continue Reading ...The case The Medicines Company v. Mylan, 2017 U.S. App. LEXIS 5947, is unusual in several respects. Although a counterclaim of invalidity had been lodged, the question of invalidity was not reached, even though there were significant questions of indefiniteness and functional claiming.
For example claim 1 of the ‘727 patent had a “wherein” clause, which amounted to claiming a result, without utilizing means for language:
1. Pharmaceutical batches of a drug product comprising bivalirudin . . . wherein the batches have a pH adjusted by a base, said pH is about 5-6 when reconstituted in an aqueous solution for injection, and wherein the batches have a maximum impurity level of Asp9-bivalirudin that does not exceed about 0.6% as measured by HPLC.
Of functional, result-defined claiming, the CAFC wrote:
Although functional limitations in patent claims are not per se objectionable even when the means-plus-function format is not invoked,6 they cannot be “so broad that [they] cause[] the claim to have a potential scope of protection beyond that which is justified by the specification disclosure.” In re Swinehart, 439 F.2d 210, 213, 58 C.C.P.A. 1027 (C.C.P.A. 1971). Here, Medicines’ construction would [*23] expand the scope of “efficient mixing” to cover any way of mixing that achieves a compounding solution having an Asp9 level of less than 0.6 percent. The patentee’s construction of “efficient mixing” thus attempts to claim all solutions to the identified “impurities” problem, without describing the entire range of solutions to that problem. Medicines’ construction is therefore not permissible. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352-53 (Fed. Cir. 2010) (en banc) (“Such claims merely recite a description of the problem to be solved while claiming all solutions to it and . . . cover any [solution] later actually invented and determined to fall within the claim’s functional boundaries—leaving it to [others] to complete an unfinished invention.”); see also Bayer Crop Science AG v. Dow AgroSciences LLC, 728 F.3d 1324, 1330-31 (Fed. Cir. 2013). Rather, efficient mixing must be defined in terms of the particular process or processes identified in the specification.
Footnote 6 is not about case law on functional claiming without means plus function language, but RATHER:
There is no contention here that the claims are means-plus-function claims governed by 35 U.S.C. § 112(f) (formerly 35 U.S.C. § 112 ¶ 6).
** A law review by KEVIN EMERSON COLLINS in 90 Wash. U. L. Rev. 1399 (2013) suggests that the discussion of the CAFC on functional claiming might not be completely accurate:
In the first half of the twentieth century, the Supreme Court made explicit its objection to functional claims. The Court invalidated a series of patent claims on the grounds that the claims were overbroad because they only recited the functional properties of technology that an inventor had produced and thus were not limited to an inventor’s actual invention. n109 As [*1428] a mid-twentieth-century patent treatise noted: “It is possible that a claim for all means of arriving at a desired result would be broad enough to cover later discovered means wholly independent of the first means for arriving at the same final result. In that case, the inventor would be over-protected.” n110 In this passage, “means” is code for a technology with particular structural properties, and “a desired result” is a functional property.
In Holland Furniture Co. v. Perkins Glue Co., n111 an inventor developed a starch-based glue that was useful for wood veneering because, among its properties, it had the low water content that previously had only been attainable in glue made from animal substances. n112 The inventor obtained a functional claim to any starch-based glue “having substantially the properties of animal glue.” n113 Claim scope was thus delineated “not in terms of [the invention’s] own physical characteristics or chemical properties … but wholly in terms of the manner of use of the product.” n114 The Su-preme Court invalidated the claim because it employed only functional limitations. “A claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch” with different chemical compositions. n115
In General Electric Co. v. Wabash Appliance Corp., n116 an inventor obtained a functional claim that encompassed tungsten filaments “made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial sagging and offsetting during a normal or commercially useful life for … a lamp or other device.” n117 The Supreme Court held the claim “invalid on its face” because of its functional language. n118 “The claim … falls within the condemnation of the doctrine that a patentee may not broaden his product claims by describing the [*1429] product in terms of function” and “vividly illustrates the vice of a description in terms of function” in a claim. n119
Similarly, in Halliburton Oil Well Cementing Co. v. Walker, an inventor made an improvement in a device that records the echoes of sound waves sent into an oil well in order to measure well depth. n120 The inventor limited the scope of his claim with reference to a “means … for tuning [an echo-recording device] to the frequency of echoes … to clearly distinguish the echoes … from … each other.” n121 The Court invalidated the claim, noting that the claim de-scribed the invention “in terms of what it will do rather than in terms of its own physical characteristics” and opining that the claim illustrated the “overhanging threat of the functional claim.” n122
The Supreme Court cases barring purely functional claims because of overbreadth remain good law today, but Congress has softened their impact. Describing the full scope of an invention without using functional limitations is sometimes difficult, and invalidating any claim with a functional limitation might leave inventors without effective patent protection. Therefore, Congress responded to Halliburton by enacting what is now section 112(f) as part of the 1952 Patent Act:
[p. 1430]
An element in a claim … may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. n123
** As to Cardinal Chemical, the latitude for not entertaining invalidity questions is narrow, and not consistent with the facts of Mylan, wherein invalidity was the bigger issue.
In Liebel Flarsheim, the district court [2002 U.S. Dist. LEXIS 8891, later reversed in 358 F.3d 898 ] wrote of Cardinal Chemical:
Having found non-infringement in favor of Medrad, L-F argues that the Court should dismiss Medrad’s invalidity and unenforceability counterclaims as moot. (Doc. No. 276, p.9). Medrad, on the other hand, argues that this Court does not have the authority to dismiss its invalidity and unenforceability counterclaims as moot because, according to Medrad, the United States Supreme Court has held that a finding of non-infringement does not moot an invalidity counterclaim. See Cardinal Chemical Co. v. Morton Int’l., Inc., 508 U.S. 83, 124 L. Ed. 2d 1, 113 S. Ct. 1967 (1993). (Doc. No. 274).
In Cardinal Chemical, the Supreme Court rejected the Federal Circuit’s practice of routinely vacating declaratory judgments of invalidity as moot when it affirmed a district court’s determination of non-infringement. 508 U.S. at 102-03. The Court concluded that an appellate court’s affirmation of a district court’s non-infringement ruling did not affect the appellate court’s power to review the invalidity issue. 508 U.S. at 98. Furthermore, the Court observed that there were strong public policy and practical reasons for addressing the issue of invalidity regardless of the outcome of the question of infringement. 508 U.S. at 102-01. Thus, the Court ruled that HN1Go to this Headnote in the case.the Federal Circuit should not automatically vacate a district court’s ruling of invalidity as moot based solely on a finding of non-infringement. 508 U.S. at 103-04.
While Cardinal Chemical is instructive, it is not dispositive of the issue currently before this Court — whether a district court has the discretion to dismiss an invalidity counterclaim as moot in light of a finding of non-infringement. The Cardinal Chemical court specifically limited its holding to “the jurisdiction of an intermediate appellate court — not the jurisdiction of either a trial court or [the Supreme] Court”). 508 U.S. at 95. Furthermore, while indicating a preference for resolving validity questions, the Cardinal Chemical court did not establish a per se rule that an invalidity counterclaim could never be mooted by a finding of non-infringement. Rather, the Court held that declaring an invalidity counterclaim moot based solely on a finding of non-infringement was an abuse of discretion on the part of an appellate court:
In rejecting the Federal Circuit’s practice we acknowledge that factors in an unusual case might justify that court’s refusal to reach the merits of a validity determination — a determination which it might therefore be appropriate to vacate. A finding of non-infringement alone, however, does not justify such a result. Nor does anything else in the record of this case. The two patents at issue here have been the subject of three separate lawsuits, and both parties have urged the Federal Circuit to resolve their ongoing dispute over the issue of validity; it would be an abuse of discretion not to decide that question in this case.
508 U.S. at 102-03 (emphasis added). Thus, the Court left open the possibility that even an appellate court could refuse to reach to merits of an invalidity [*8] question if other factors, in addition to a finding of non-infringement, weighed in favor of finding the invalidity question moot. 3
Footnote 3
3 Confusion over the ultimate holding of Cardinal Chemical stems, in part, from the following statement that appears in the case: “[the invalidity counterclaim] did not become moot when [the appellate] court affirmed the finding of non-infringement”. Cardinal Chemical, 508 U.S. 98, 124 L. Ed. 2d 1, 113 S. Ct. 1967. This statement’s meaning, however, is only apparent when read in the context of the entire opinion. The statement appears in the section of the opinion in which the Court concludes that a controversy continues to exist for the purpose of establishing jurisdiction until a court is made aware of a change in circumstances that eliminates the controversy. Id. Because no such change of circumstances had occurred in Cardinal Chemical, the Court concluded that the appellate court had the power (i.e., jurisdiction) to review the invalidity issue. Id. The statement’s inclusion in a discussion of jurisdiction indicates that the Court was referring to jurisdictional mootness. See Morton Int’l, Inc. v. Cardinal Chemical Co., 967 F.2d 1571, 1574 (Fed. Cir. 1992)(Nies, C.J. dissenting)(“‘Mootness’ is jurisdictional when the dispute between the parties, or at least an issue in the case, no longer exists. That is, the issue no longer presents an actual case or controversy. If an issue is moot in this sense, a court has no discretion but must dismiss for lack of jurisdiction. (citations omitted)”).
The ultimate holding of the Cardinal Chemical case was that in the case.dismissing an invalidity counterclaim as moot based a finding of non-infringement alone and in the absence of any other factors justifying the refusal to reach the merits of a validity determination was an abuse of discretion, implying that if appropriate factors exist, an invalidity counterclaim may be moot. Cardinal Chemical, 508 U.S. at 102-03. This type of mootness is referred to as prudential mootness. See Morton, 967 F.2d at 1574. (“An issue is also said to be ‘mooted’ when a court, having decided one dispositive issue, chooses not to address another equally dispositive issue. In this sense, mootness means only that a decision on another issue would have no practical significance. This type of mootness results from prudential, not jurisdictional, considerations.” (citations omitted)).
End Footnote 3 here
The issue of whether a district court, versus an appellate court, may dismiss an invalidity counterclaim as moot following a finding of non-infringement was addressed in Phonometrics, Inc. v. Northern Telecom Inc., 133 F.3d 1459 (Fed. Cir. 1998). In that case, the plaintiff patent owner brought an action against various manufacturers and sellers of telephone equipment alleging infringement of its patent. Id. at 1461-63. The defendants counterclaimed seeking a declaratory judgment for non-infringement, invalidity, and unenforceability of the patent. Id. The district court ruled in favor of the defendants on the issue of non-infringement and dismissed their invalidity and unenforceability counterclaims as moot. The plaintiff appealed both the finding of non-infringement and the dismissal of the defendants’ counterclaims, arguing it had a “general interest in a judicial determination of its patent’s validity.” Id. at 1468.
With respect to the dismissal of the counterclaim for invalidity, the appellate court concluded that it was within a district court’s discretion to dismiss the counterclaims as moot where it makes a finding of [*10] non-infringement:
We have previously held that a district court has discretion to dismiss a counterclaim alleging that a patent is invalid as moot where it finds no infringement. See Nestier Corp. v. Menasha Corp.-Lewisystems Div., 739 F.2d 1576, 1580-81, 222 USPQ 747, 751 (Fed. Cir. 1984)(“There was no reversible error or abuse of discretion . . . in the District Court’s withholding of judgment on the issues related to the . . . patent’s validity — despite the jury’s having found the patent not invalid — in light of the jury’s finding of non-infringement.”); see also Leesona Corp. v. United States, 208 Ct.Cl. 871, 530 F.2d 896, 906 n. 9, 185 USPQ 156, 163 n. 9 (adopted as opinion of Court of Claims at 208 Ct.Cl. 871, 530 F.2d 896, 192 USPQ 672 (1976))(“While the better practice is to treat both the validity and infringement issues . . . it is not always necessary to do so. Where, as here, noninfringement is clear and invalidity is not plainly evident it is appropriate to treat only the infringement issue.” (citations omitted)).
Id. The court concluded that the Cardinal Chemical case was distinguishable because [*11] it involved the authority of an intermediate appellate court rather than a district court:
The Supreme Court’s decision in Cardinal Chemical Co. v. Morton International, 508 U.S. 83, 113 S. Ct. 1967, 124 L. Ed. 2d 1, 26 USPQ2d 1721 (1993), does not preclude this discretionary action by the district court. Cardinal Chemical simply prohibits us, as an intermediate appellate court, from vacating a judgment of invalidity when we conclude that a patent has not been infringed, and therefore has no bearing on the district court’s actions in this case.
Id. 4
Footnote 1 of The Medicines Company v. Mylan, 2017 U.S. App. LEXIS 5947, includes the text:
Under Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U.S. 83, 99, 113 S. Ct. 1967, 124 L. Ed. 2d 1 (1993), a finding of noninfringement cannot moot a counterclaim of invalidity, but we retain the discretion to limit the grounds upon which appeals are decided. Here, because Mylan has agreed that a judgment of noninfringement with respect to both patents in suit “would be tantamount to the relief sought on the merits” and that we need not reach the invalidity issues, we decline to reach the merits of Mylan’s invalidity contentions. See Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 1318 n.2 (Fed. Cir. 2006).
In the Mylan case, the CAFC discussed INVALIDITY issues, and even cited a CAFC decision in Cardinal Chemical:
A claim is indefinite if its legal scope is not clear enough that a person of ordinary skill in the art could determine whether a particular composition infringes or not.”); Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993) (“[C]laims. . . [must be] sufficiently precise to permit a [*16] potential competitor to determine whether or not he is infringing.”).
But the Mylan case is manifestly about infringement/not validity.
The Mylan decision talks about the written description of the ‘727 patent:
We conclude that one of ordinary skill in the art would rely on Example 5 to ascertain the metes and bounds of “efficiently mixing.” As the only embodiment of efficient mixing, Example 5 is “highly indicative of the scope of the claims.” Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1355 (Fed. Cir. 1998).8 Example 5, however, is not merely the only disclosed embodiment of efficient mixing—it is the only description of efficient mixing in the patents in suit that casts light on what efficient mixing is and that enables one of ordinary skill in the art to achieve the objects of the claimed invention. Although the specification provides that Example 5 is “non-limiting,” e.g., ‘727 patent, col. 16 l. 6, no other part of the patents’ written description sufficiently teaches the affirmative steps that constitute efficient mixing. In this circumstance, we think it entirely appropriate to limit the term “efficiently mixing” to the sole portion of the specification that adequately discloses “efficient mixing” to the public. See Alloc, Inc. v. ITC, 342 F.3d 1361, 1370 (Fed. Cir. 2003); SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1344-45 (Fed. Cir. 2001).
The cited Alloc case had noted:
this court recognizes that in the case.it must interpret the claims in light of the specification, Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370, 134 L. Ed. 2d 577, 116 S. Ct. 1384 (1996), yet avoid impermissibly importing limitations from the specification. Comark Communications v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998). That balance turns on how the specification characterizes the claimed invention. Sunrace Roots Enter. Co., LTD v. SRAM Corp., 336 F.3d 1298, 1305 (Fed. Cir. 2003). In this respect, this court looks to whether the specification refers to a limitation only as a part of less than all possible embodiments or whether the specification read as a whole suggests that the very character of the invention requires the limitation be a part of every embodiment. For example, it is impermissible to read the one and only disclosed embodiment into a claim without other indicia that the patentee so intended to limit the invention. [**20] Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327 (Fed. Cir. 2002). On the other hand, where the specification makes clear at various points that the claimed invention is narrower than the claim language might imply, it is entirely permissible and proper to limit the claims. SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1345 (Fed. Cir. 2001).
After a lengthy discussion of what “efficient mixing” is limited to, the CAFC quickly disposes of infringement issues:
The net effect of our claim construction is that to infringe either the ‘727 patent or the ‘343 patent, infringing batches must be compounded using a process that employs the efficient mixing conditions of Example 5. See Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1291-95 (Fed. Cir. 2009) (en banc). Under this claim construction, Mylan’s ANDA does not infringe the asserted claims since is undisputed that, for example, Mylan does not use multiple mixing devices as required by Example 5.
One wonders if what happened in the Mylan case, as referenced to the Alloc case, is simply the “reverse doctrine of equivalents” masquerading under a different name. Without invoking the narrowed claim construction, one says simply that Mylan obtained the Asp9-bivalirudin level in a different way than taught by the patentee.
Separately, lurking in the background, is the problem that it might seem the CAFC limited the ‘727 claim to preserve its validity as to a written description/enablement attack. BUT the court will not re-write claims in order to preserve their validity. See Pfizer, Inc. v. Ranbaxy Laboratories Ltd., 457 F.3d 1284, 1292 (Fed. Cir. 2006).
“Preserving validity” does not permit the Court to re-write the claims in a manner inconsistent with the intrinsic record in order to preserve validity of the claims. McCarty v. Lehigh Valley R.R. Co., 160 U.S. 110, 116, 40 L. Ed. 358, 16 S. Ct. 240, 1895 Dec. Comm’r Pat. 721 (1895); Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357 (Fed. Cir. 1999) (“We must construe the claims based on the patentee’s version of the claim as he himself drafted it.”); Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1584 (Fed. Cir. 1995) (“Although we construe claims, if possible, so as to sustain their validity, it is well settled that no matter how great the temptations of fairness or policy making, courts do not redraft claims.”); Becton Dickinson & Co. v. C.R. Bard Inc., 922 F.2d 792, 799 n.6 (Fed. Cir. 1990) (“Nothing in any precedent permits judicial redrafting of claims. At most there are admonitions to construe words in claims narrowly, if possible, so as to sustain their validity.”)
On the record, it might seem patentee intended a broad scope for “efficient mixing.” And, validity was not at issue in the Mylan case, as decided.
**In passing, see also
http://www.patenthawk.com/blog/2005/11/clonetech_gets_clobbered.html
**And from blawgsearch, on 18 April 2017:
Continue Reading ...It is probably fair to say that Matt Levy’s views are contrary to mine with respect to many patent related matters, but particularly so with respect to software patents… One of the things I have always liked about Levy is that while we do disagree about much, we do so in a way that is not disagreeable. I also greatly appreciate how he always tries to work with me to figure out at what point in our analysis we go separate ways, which leads to some very interesting and lively conversations (as…
Continue Reading ...Eight in ten C-level executives believe trademark infringement of their marks is on the rise… Despite their feeling that trademark infringement is on the rise, 66% of organizations stated they had plans to launch new marks within the next year, and 80% said they would likely launch even greater numbers if the trademark clearance process were simpler… Clearance has always mattered, but it matters a lot in today’s rapidly evolving trademark ecosystem. Not only are brand owners increasingly…
Continue Reading ...by Dennis Crouch Phil-Insul Corp. (IntegraSpec) v. Airlite Plastics (Fed. Cir. 2017) [IntegraSpec]. IntegraSpec’s U.S. Patent No. 5,428,933 covers an insulated concrete form (Styrofoam molds) used in building construction. Back in 2011, IntegraSpec sued Reward Wall and Nudura Corp. for infringing the ‘933 patent. In that case, the district court sided with the defendants – finding no infringement. That […]
Continue Reading ...The Ninth Circuit issued its opinion in Fox Television Stations, Inc. v. AEREOKILLER, LLC, No. 15-56420 (9th Cir. Mar. 21, 2017) last month. You can watch the oral argument of this copyright appeal below. Listen carefully and you can hear mention of the Charming Betsy case. The court’s decision is available [here].
Here is a link to […]
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97. When talking about FRAND economists refer to the idea that the FRAND rate represents the rate which would be agreed “ex ante”, in other words before the patented invention is adopted into the standard. This is another way of saying that the rate seeks to eliminate hold up and to that extent is uncontroversial. In the concurrent evidence session Prof Neven explained that he did not regard FRAND as a scheme which meant the patentee could not appropriate some of the value that is associated with the inclusion of his technology into the standard and the value of the products that are using those standards. Dr Niels agreed with that. Neither side disputed this and to the extent it is a matter for the economists, I accept their evidence. The economists’ opinions show that it is not necessary to deprive the patentee of its fair share of those two sources of value in order to eliminate hold up and fulfil the purpose of FRAND. To that extent I may be differing from certain parts of the decisions in Innovatio IP Venturesand Ericsson v D-Link in the US but it is not necessary to look into that any further since neither side before me took the point.
146. Standing back I recognise that the enforceability of the FRAND undertaking in French law is not a clear cut question. Prof Libchaber stated that there remains widespread uncertainty about the issue of whether the doctrine of “stipulation pour autrui” can be applied to ETSI. In my judgment it can be applied in that way and should be. The reason it should be applied is because the FRAND undertaking is an important aspect of technology standardisation. Holders of essential IPR are not compelled to give a FRAND undertaking but it serves the public interest that they make it clear whether or not they are doing so, and it serves the public interest that if they do, the undertaking is public, irrevocable and enforceable. To avoid hold up, implementers need to know that they can hold SEP owners to a FRAND obligation.
166. A patentee who refuses to accept those terms would be in breach of its FRAND undertaking. Even if a court cannot go as far as directly enforcing the FRAND undertaking by compelling a patentee to make an offer in those terms (see the section on French law), I think an English court would at least refuse to grant a patentee an injunction if it refused to accept FRAND terms. That would be a proper exercise of the court’s equitable jurisdiction to grant or refuse an injunction.
167. A defendant who had already been found to infringe a valid patent cannot be compelled to accept an offer of a licence but a defendant with no licence, who had refused to accept terms on offer which had been found to be FRAND, would not be entitled to the protection from injunctions provided for by the patentee’s FRAND undertaking. An injunction would follow and to grant it would be a proper exercise of the court’s equitable jurisdiction. The only coercion in that case would be to enter into a licence on FRAND terms. It would apply to both sides with equal force.
182. There was ample evidence before me that . . . parties negotiating SEP licences in fact use methods which are based on patent counting. That is evidence which supports a finding that a FRAND approach to assessing a royalty rate is to engage in some kind of patent counting. Indeed when one thinks about it some sort of patent counting is the only practical approach at least for a portfolio of any size. Trying to evaluate the importance of individual inventions becomes disproportionate very quickly.
183. It may be that other technology standards are different but I am not surprised that patent counting is the approach taken for GSM, UMTS and LTE telecommunications standards. Each standard defines a system with a large number of different parts all of which have to interact with each other. The interactions and interdependencies are complicated. To make a coherent system which works at all, let alone one which delivers the performance demanded of these systems, is difficult and demands insight and creativity on the part of the engineers involved. It is unsurprising that many inventions (and therefore many patents and SEPs) will be involved. Short of the disproportionate task of evaluating every single patent thoroughly in order to compare each one with all the others, one can only ever hope to analyse SEPs in broad categories and it is not meaningful to attempt to weigh the value of individual patents within these categories against one another.
184. I suppose in some cases it may be possible to identify a patent as an exceptional sort of keystone invention underpinning the entire technical approach on which a standard is based but that is not this case. There was unchallenged evidence that Unwired Planet’s patents made an “average” contribution to the standards. I am satisfied that none of the Unwired Planet patents are in the exceptional keystone category. . . .
186. The patent counting approach works in the following way. Starting from a portfolio of declared SEPs the first task is to derive a number representing the Relevant SEPs. “Relevant SEPs” is my term, coined after the trial had finished and intended to avoid language used in the case which can be confusing such as “truly essential patents” or “deemed”. Both sides’ approaches require making an assessment of the Relevant SEPs somehow. The parties do not agree how it should be done but one way or another a number is produced. Armed with that information it is possible to scale one company’s rates relative to another to derive the factor R or to find the share of the total and derive S. . . .
197. In order to determine what the values E, R and S are in this case two tasks need to be performed. To determine S (Unwired Planet’s share of the total) and R (the relative value of Unwired Planet’s portfolio to Ericsson’s) it is necessary to count Relevant SEPs. To determine E (the rate for Ericsson’s portfolio) it is necessary to consider the comparable licences. At the same time the Unwired Planet comparables and other evidence on rates can be addressed.
On April 12th, the Federal Circuit, in a per curiam order, denied SHzoom’s motion to make the Trading Technologies opinion precedential. The order of course gave no reasons for the decision. Even so, the underlying decision is still a good one for patentees and applicants. While not binding on the USPTO, it can nonetheless be argued as persuasive authority to examiners where the facts in the application "uniquely match" those in the case. Prosecutors should consider arguing this case to examiners where they have specifically claimed graphical elements that provide specific functionality. The case is noteworthy because it is the…
Continue Reading ...When comparing the per-asset price to the asking price for packages, we found that per-asset pricing is relatively constant in the pricing brackets from $250,000 to $2 million, with the low being $180,000 per asset and the high being $234,000 per asset (Figure 9). We observed a slight premium on asking prices in the $4 million to $10 million range – $323,000 – which was not seen in 2015. However, the $10 million to $20 million range per asset prices dropped significantly, from $356,000 to…
Continue Reading ...Many employers allow employees to use email, but have policies that state that the employer is free to monitor email. Many cases have held that, depending on the facts, the employee cannot assert privilege under those circumstances: both in claims between employee and the employer and between the employee and a third party. This doctrine bit […]
Continue Reading ...Politico reports today that PTO Director Michelle Lee is “in the running to head up the White House Office of Science and Technology Policy” known as OSTP. [LINK] Lee’s Obama-Holdover status suggests to me that OSTP’s policy-making role will be substantially downgraded under President Trump as compared to that of the Obama Administration when the office […]
Continue Reading ...Two seminal cases illustrate the techniques of analyzing definiteness in a post-Nautilus world. One case followed Nautilus and the other preceded it, but that case demonstrates what stands of the old rationale. The first decision, Ethicon Endo-Surgery, Inc. v. Covidien, Inc., dealt with ultrasonicshears for cutting and sealing a blood vessel… A clear difference between the new “reasonable clarity” standard and the Federal Circuit’s “insolubly ambiguous” formulation is that the latter calls…
Continue Reading ...In The Medicines Co. v. Mylan, Inc., the Federal Circuit construed composition claims of two Angiomax patents as requiring the recited “batches” to be made by a specific “efficient mixing” process illustrated in one of the examples. While doing so may have preserved the validity of the patents, it required reversal of the district court’s … Continue reading this entry
Continue Reading ...By John Cravero — About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Reckitt Benckiser LLC v. Ansell Healthcare Products LLC PTAB Petition: IPR2017-00063; filed October 12, 2016….
Continue Reading ...Google’s Waymo claims Uber, an app-based taxi service, stole technology for a critical component for driverless cars, as the one of the world’s most-powerful tech titans wages a fierce legal battle to protect its intellectual property in an emerging area of the automotive industry.
Continue Reading ...Drafting a patent application can be a daunting task, particularly today where virtually every commercially valuable patent will likely be challenged at the Patent Trial and Appeal Board (PTAB). Join me for a free webinar discussion – Optimizing Patent Applications: Drafting to Withstand Challenge – on April 19, 2017, at 2pm ET. Joining me will be Joseph Root, author of Rules of Patent Drafting: Guidelines from Federal Circuit Case Law. In addition to taking as many questions as possible from…
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