The Puget Patent Blog

Markman Hearing

Posted Friday, March 09, 2012.

I had the opportunity to attend a Markman Hearing today at the U.S. District Courthouse in downtown Seattle. The Markman Hearing was a portion of an ongoing patent infringement litigation.

A patent infringement case often turns on the meaning of the patent claims in the suit. Patent claims are the legal description of the invention. They are analogous to a legal description associated with a piece of real estate, and set out the “metes and bounds” of the intellectual property being protected by the patent.

The meaning of the terms used in the patent claims is critical in a patent infringement case. The meaning of the claim terms is supposed to be clear from the textual portion of the patent itself, but often the meaning is less than clear, or at least in dispute. Therefore, the exact meaning of the patent claims is often the most contentious issue in a patent case, because if the plaintiff’s meaning of a claim term is given effect, then the plaintiff likely prevails. Conversely, if the defendant’s meaning of a claim term is given effect, then the defendant probably didn’t infringe.

Until recently, claim construction was performed by the jury, meaning the parties presented evidence at trial as to the meaning of the claim terms, the jury settled upon what the claims actually meant, and then based on that finding decided whether infringement had occurred. That changed in 1996, when the U.S. Supreme Court ordered that claim construction be performed by the judge, not the jury. The Court explained:

The construction of written instruments is one of those things that judges often do and are likely to do better than jurors unburdened by training in exegesis. Patent construction in particular “is a special occupation, requiring, like all others, special training and practice. The judge, from his training and discipline, is more likely to give a proper interpretation to such instruments than a jury; and he is, therefore, more likely to be right, in performing such a duty, than a jury can be expected to be.

Markman v. Westview Instruments, Inc., 517 U.S. 370, 388-389 (1996).

Consequently, in a patent infringement case in which a jury trial has been requested, a pre-trial hearing called a Markman Hearing is usually held. At the Markman Hearing, the parties put forth their proposed construction of the claim terms at issue in the case. The parties conference prior to the Markman Hearing and stipulate to any agreed-upon claim term meanings, so that at the hearing the focus can be on the claim terms in dispute.

Turning to civil procedure for a minute, the Western District of Washington has local rules that apply specifically to patent cases (the “Supplemental Patent Rules”). In addition, several judges in the Federal judiciary have their own rules related to patent cases, in the form of a standing order for patent cases. The rules state that a Markman Hearing is to be held 180 days from the issuance of the case schedule order. That means the parties have 180 days to confer regarding the meaning of the claim terms, and then submit their briefs to the court.

In this hearing, the judge began the proceeding by reminding everyone that what was to come was “the only thing more painful than going to the dentist.” If you can imagine a hearing at which the issue was the precise meaning of the word “using,” for example, one can see this analogy probably has some merit.

It is possible that, depending on the result of the Markman Hearing and meaning of the claim term at issue in the case that there won’t even be a jury trial. Many Markman Hearings are dispositive of the case, because depending on the meaning of the claim terms, there may be no facts remaining for a jury if the claim term gets a narrow construction. Indeed, one of the parties in this case indicated that they intended to present a motion for summary judgment of non-infringement at the close of the Markman Hearing.

It was a good hearing for a patent practitioner to attend. As a patent prosecutor, it is always interesting to see what happens with patents once we get them issued for a client.

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Patent Drawings and Written Description

Posted Monday, March 05, 2012.

I wrote a guest blog post for my colleague Jim Ruttler recently regarding a February, 2012 appeal heard at the USPTO’s Board of Patent Appeals and Interferences (BPAI). In this appeal, Ex Parte Waide, a dependent claim had been rejected under 35 U.S.C. 112, first paragraph. The subject matter of the claim was a “controller” which could keep a rotor of a rotorcraft running even after a failure.

The patent examiner had rejected the claim because the inventor’s patent application did not discuss the “controller” in any depth, other than to say that one could be present. By pointing out that the controller was not described in detail, the examiner was saying that the patent application had an insufficient written description for the invention to be patentable.

You can read more about the appeal and the written description requirement here. A purpose of the written description requirement is to show the patent office that the inventor has actually invented something, and not just described a problem along with a wish for a solution. The term of art used is that the written description demonstrates that the inventor “had possession of the invention” at the time the application for a patent was filed. “Written description” also ensures that a third party who wants to be sure not to infringe can ascertain the scope of the boundaries of the invention by reading the patent document. The patent serves notice to the public of those boundaries, but can only do so when the invention is adequately described.

Written description issues often arise in two contexts. The first is during prosecution of a patent application, where a patent claim has been amended with new terms that the examiner believes is not supported by the application as it was originally filed. Claims can be amended during prosecution, but new matter is not allowed. Any claim amendments have to be consistent with the contents of the application as it was filed originally. Patent practitioners say that the amended claim has to be supported by the specification. In fact, the USPTO requires applicants when amending claims to directly point out where the support is in the specification for the amendment.

The second context is when a continuation application is filed which claims priority to a prior application. To have the same priority date as the original application, the patent claims in the continuation must be supported by the specification of the original.

What constitutes adequate support is a very simple question in theory but very challenging in fact. The theory is that the support for a claim term is adequate when one with skill in the art would recognize that the specification must necessarily disclose the subject matter claimed. (The blog post I referenced earlier discusses this in much more detail.)

An interesting wrinkle, however, is that patent drawings may actually provide support for a claim. It may be that the textual portion of the specification does not expressly recite structure corresponding to an element of a claim. However, drawings alone may provide that support. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991).
In that case, the inventor (Mahurkar) had first disclosed his invention in a design patent to save money. A design patent does not contain a textual description of the invention, but contains only drawings. Mahurkar later followed the design patent with an application for a utility patent which claimed priority to the design patent (in other words, the second context I mentioned earlier where a written description issue can arise). The patent was allowed, leveraging the priority date from the design patent.

In a subsequent infringement suit, the alleged infringer challenged the validity of the patent on the basis that it wasn’t entitled to the priority date of the design patent because the design patent did not adequately describe the invention ultimately claimed in the utility patent. The district court disagreed, finding a drawing alone could provide a sufficient written description. The Federal Circuit affirmed that holding. Id.

Consequently, Vas-Cath v. Mahurkar is best known among patent attorneys and patent agents for its holding that a drawing may provide adequate support for a patent claim, which may overcome a written description rejection.

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The Sheldon Patent

Posted Sunday, March 04, 2012.

My grandfather was named Harry Sheldon. He was a Professor of Dentistry at the Georgetown University Dental School. Having graduated from Georgetown, then serving in the Army and having a private dentistry practice, he returned to the school where he was Chair of the Department of Operative Dentistry. He taught at the school along with his good friend, Dr. Everett Cobb. Harry and Everett were neighbors, living down the street from one another, and our families were close when I was growing up.

Harry and Everett collaborated on an invention for which they received a patent in 1968. The patent, U.S. Patent No. 3,367,788, is titled “Substantially Radiopaque Tooth Lining Composition.”

The patent discloses a material that can be used when filling a cavity, and the material is subsequently detectible by X-ray. When filling a cavity, it was known to precede the filling with a compound like calcium hydroxide. The calcium hydroxide rested upon the pulp and promoted healing of the damaged pulp. After the cavity was lined with calcium hydroxide, dental amalgam was applied to complete the filling of the cavity.

The problem was that when the patient returned for a subsequent checkup and X-rays, the calcium hydroxide gave an appearance on the X-ray identical to tooth decay. Evidently, in such a situation, a dentist unaware of the previous work to fill the cavity might needlessly remove the filling, believing decay existed where there was actually only the calcium hydroxide compound. So Harry and Everett set about finding a way to change the appearance on the X-ray of the calcium hydroxide hidden beneath the dental amalgam comprising the remainder of the filling.

Their solution was to mix very small silver particles with the calcium hydroxide prior to lining the cavity with the compound. The silver caused the appearance of the calcium hydroxide layer to be visibly apparent during subsequent X-rays. The patent claims recite different proportions of calcium hydroxide to silver, but the broadest claim discloses a compound made of 40 to 50% of calcium hydroxide and 10 to 25% silver metal particles, with the remainder being thickening agent and water.

The patent was granted February 6, 1968 and would have expired in 1985, around the time I was a junior in high school. Harry and Everett assigned the patent to their employer, Georgetown University. While I was aware my grandfather had received numerous awards and honors related to his work, I don’t remember ever hearing about the patent. It would have been fun to have compared notes with him when I received my own patent, in 1999. Sadly, Harry Sheldon passed away in 1990 at the age of 70, so I never had the chance. Everett Cobb continued to teach and practice for years afterwards, but passed away in 2008. Their friends and families miss both of them.

You can view the Sheldon / Cobb patent here.

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Anticipation

Posted Monday, February 13, 2012.

For a U.S. patent to issue, the subject matter claimed in the application for a patent must be new, useful, nonobvious, and put forth in an enabling disclosure in the patent application.

Patents only issue for inventions that are new. If there is a prior invention that is identical to the invention claimed, then the claimed invention is not new. As a part of the examination process, the USPTO performs a search to see whether the claimed invention existed prior to the filing of the application.

If the USPTO finds a previous invention that is identical to the claimed invention, the USPTO will issue an Office Action rejecting the claims as being “anticipated” by the previous invention. The Office Action will contain information that describes how to find the previous invention, so that the inventor and the inventor’s patent attorney or patent agent can look it over to decide whether they agree that a case of anticipation has really been established.

Frequently the information about the other invention will be contained in a prior patent application or prior patent, but not always. Even if the inventor of the previous invention did not apply for a patent, it still existed, which means that the new invention isn’t truly new.

Consequently, if an examiner doesn’t find the same invention in a prior patent or patent application, the examiner might do a plain old Google search looking for the invention. Therefore, the rejection might contain “references” (where references are the documentation of the prior invention) that include patent documents but also links to Internet pages, or journal articles, or books. (I know a former patent examiner who used the Bible as a reference in a patent claim rejection.)

In some instances, the reference cited by the examiner contains a description of an invention that doesn’t perfectly match up with the invention for which we’ve newly applied for a patent. The examiner may assert that the reference anticipates our invention, but upon looking over the reference and considering the differences between the reference and our invention, we might conclude that a case of anticipation has not really been made out by the examiner. To know for sure, however, we have to turn to the technical definition of anticipation.

Court decisions from the Court of Appeals for the Federal Circuit tell us that anticipation means “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 U.S.P.Q.2d 1051, 1053 (Fed.Cir.1987). The reference that purportedly anticipates the invention must have every single element of our patent claim, in the order in which the elements are arranged in our patent claim.

If there’s an express recitation of the elements in the reference, there’s not a whole lot of argument to be had. Fortunately, it is very unusual for two people to describe something exactly the same way, so express recitations of the same elements in the reference as are in the patent application are rare. In that instance, what the examiner is relying upon is that the subject matter is “inherently” described by the reference. In other words, the reference doesn’t expressly put forth a particular claim element, but that one reading the reference who had skill in the art would understand that the reference must necessarily include the element even though it is not expressly listed.

Let’s say we filed an application for an airplane, comprising an airframe and a structure for providing lift. The examiner rejects our claim, and provides a reference that discloses an airplane. The reference doesn’t expressly recite a structure for providing lift. However, one with skill in the art would likely recognize that a structure for providing lift must necessarily be present in an airplane, because without a way to generate lift it would be hard to characterize the invention as an airplane! Therefore, the lift-producing structure could be said to be inherently present, and the examiner’s case of anticipation would be reasonable.

But the fact that the element might be present is not enough for anticipation. “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269, 20 U.S.P.Q.2d 1746, 1749 (Fed.Cir.1991). If one with skill in the art would recognize that the element wouldn’t have to be a necessary element of the reference, then a case of anticipation has not been made out by the examiner.

(Anticipation is one of the major rationales for rejections of patent claims by USPTO examiners. Another is obviousness. My colleague, Mike Cicero, has written a nice writeup on obviousness here.)

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Best Mode and the AIA

Posted Sunday, January 22, 2012.

An inventor with a novel and non-obvious invention may acquire a patent for that invention in exchange for an enabling disclosure. SeeThe Reason for Patents,” which I previously blogged about. The portion of U.S. patent law which codifies the particular content that must go into a patent application (35 U.S.C. §112) requires the inventor to disclose the “Best Mode” of implementing the invention.

Historically, should an inventor not disclose the best mode of the invention in the patent application, that inventor was vulnerable to having the patent invalidated in a patent litigation proceeding. Among the changes in the Leahy-Smith America Invents Act of 2011, the most significant revision to our patent laws since the 1952 act, is that failure to disclose best mode is no longer a cause for a patent to be invalidated. My colleague Mike Cicero has blogged about this revision here, and it’s an excellent read.

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