The scope of a disputed claim is a question of law. Markman held a patent on an inventory-tracking system for dry-cleaning establish- ments. Markman’s system used a computer to generate and track bar- coded tags, which remained attached to individual articles of clothing as they progressed through the dry-cleaning process. The infringe- ment dispute centered on whether “inventory,” in the sense used by Markman, necessitated the ability to track the locations of individual pieces of clothing. Markman wanted the question to be settled by a jury while Westview wanted it to be settled by the court. Reviewing the history of infringement suits, the Court found no pattern indicating that the construction of claims devolved upon the jury. The Court therefore upheld the lower court’s understanding of the term “invent- ory.”
Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc) [839]
In accordance with its status as an issue of law, claim construction is to be reviewed de novo on appeal. The court rejected the view that claim construction was a “mongrel practice” which entailed some defer- ence to the factual findings of the trial court. Dismissing this language as a mere “prefatory comment,” the court held that appellate courts had full discretion to review constructions of claims provided by lower courts.
Concurrence remarked that “with respect to certain aspects of the task [of claim construction], the distict court may be better situated than we [appellate courts] are . . . .”
The dissent criticized previous cases for setting up a hair-splitting dis- tinction between a trial judge’s “understanding” of disputed claims and
the judge’s “interpretation” of those claims. According to the dissent, the practical effect of treating claim construction as an issue of law was to defer decision-making to the Federal Circuit even though trial judges have better access to the facts.
BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) [S105]
Direct liability for infringement does not arise unless the infringer per- forms every step required to produce the patented process.
The Doctrine of Equivalents
Winans v. Denmead, 56 U.S. 330 (1854) [849]
A product that contains essentially the same limitations as a patented invention may infringe that patent despite falling outside the patent’s literal terms. Winans sought to enforce a patent on a railroad car for transporting coal. Unlike existing coal hoppers, Winan’s coal hopper was shaped like a cone. The shape of the coal hopper increased its load-bearing capacity and facilitated the unloading of the coal. Den- mead produced a similar coal hopper that had an octagonal cross-sec- tion rather than a circular one. Applying the doctrine of equivalents, the Court found Denmead’s hopper to infringe Winan’s patent. “[T]o copy the principle or mode of operation described [in the patent],” said the Court, “is an infringement, although such copy should be totally unlike the original in form or proportions.”
Warner-Jenkinson v. Hilton Davis Chemical Co., 520 U.S. 17 (1997) [856]
The prosecution history of a patent affects the enforcement of its claims through the doctrine of equivalents. Where the PTO has lim- ited the scope of an amended claim for a clear reason, then the pat- entee may not use the doctrine of equivalents to enlarge the scope of the claim. Where the PTO has not provided a clear reason for the lim- its of an amended claim, the patentee bears the burden of supplying a reason that comports with its interpretation of the claim.
Hilton Davis sought to enforce a patent on a filtration process (ultra- filtration) for removing impurities from dyes. The relevant claim stated that the filtration process was to be carried out at a pH range of
6.0 to 9.0. Hilton Davis apparently specified no limits on the pH when it first advanced the claim, adding the pH range only upon the insist- ence of the PTO. The reason for adding the upper limit of the range was clear—the addition was necessary to distinguish Hilton Davis’s process from a filtration process disclosed in another patent (the Booth patent). The reasons for adding the lower range, however, were un- clear. Finding that the lower courts did not adequately consider the prosecution history and all factors relevant to the interpretation of Hilton Davis’s claims, the Court remanded the case for further pro- ceedings.
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722 (2002) [867]
Amending any claim for the purpose of bringing that claim into compli- ance with a statutory requirement for patentability may place that claim within the reach of prosecution history estoppel. At the same time, prosecution history estoppel does not invariably bar the patentee from invoking the doctrine of equivalents against all equivalents what- soever. Festo sought to enforce a patent on a magnetic rodless cylinder (a piston-like device used in a wide variety of machinery). Shoketsu (called “SMC” throughout the opinion) made a similar device that differed from Festo’s design in several respects, so that Festo relied on the doctrine of equivalents to support its claim of infringement. SMC argued that Festo could not invoke the doctrine of equivalents because Festo had amended the relevant claims to comply with § 112. Broad- ening the rule of Hilton Davis, the Court held that prosecution history estoppel applies to any claim amended to comply with requirements of patentability. “Estoppel arises,” said the Court, “when an amendment is made to secure the patent and the amendment narrows the patent’s scope. . . . [I]f a § 112 amendment is necessary and narrows the pat- ent’s scope . . . estoppel may apply.” The Court, however, qualified the new rule by stating that “[t]here is no reason why a narrowing amend- ment should be deemed to relinquish equivalents unforeseeable at the time of the amendment and beyond a fair interpretation of what was surrendered.”
Indirect Infringement
Aro Manufacturing Co. v. Convertible Top Co., 377 U.S. 476 (1964) (Aro II) [909]
Contributory infringement exists where a party knowingly distributes a product desigend to repair a patented invention. Aro manufactured and sold fabric fabric tailored to replace the convertible tops of certain Ford cars. The design of the Ford tops, however, infringed a patent held by Convertible Top. Upon learning that Aro was manufacturing such replacement tops, Convertible notified Aro that Ford had no li- cense to use Convertible’s design. The Court found that any Aro tops manufactured after the notification date gave rise to contributory in- fringement.
C.R. Bard, Inc. v. Advanced Cardiovascular Systems, 911 F.2d 670 (Fed. Cir. 1990) [916]
A party may contribute to the infringement of a method patent by pro- ducing a device that allows users to practice the patented method. Ad- vanced Cardiovascular Systems (ACS) sought to enforce a method pat- ent on a technique for performing a coronary angioplasty. ACS argued that Bard’s perfusion catheter contributed to the infringement of the patent by allowing physicians to practice the patented technique. After analyzing the catheter’s design, the court found that the catheter did not invariably facilitate the practice of ACS’s patented method.
Brown v. Duchesne, 60 U.S. 183 (1856) [923]
A patent does not prohibit a foreign national from practicing the paten- ted invention. Brown sought to enforce a patent on a gaff (a structure for supporting the sails on a boat). Brown argued that Duchesne (a French national) had infringed the patent by installing a similar gaff on a French vessel. The Court declined to find infringement on the ground that American patent law could not restrict the practice of a patent outside the United States. “The power [ ] granted [by patent law] is domestic in its character,” said the Court. “It confers no power on Congress to regulate commerce, or the vehicles of commerce, which belong to a foreign nation, and occasionally visit our ports in their com- mercial pursuits.”
Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007) [926]
Only software associated with a medium for distribution constitutes a “component” under § 271(f). AT&T sought to enforce a patent on soft- ware for compressing recorded speech. Because the Windows operat- ing system made use of the patented software, AT&T argued that Mi- corsoft had infringed the patent by allowing Windows to be installed on computers in Europe. Microsoft, however, did not provide those copies of Windows itself. Rather, it shipped only a single master copy to a European computer-maker, which then made its own copies of Win- dows. The Court held that Microsoft did not supply any component of a patented invention within the meaning of § 271(f). “[A] copy of Win- dows, not Windows in the abstract,” said the Court, “qualifies as a ‘component’ under § 271(f).”
SEB v. Montgomery Ward, 594 F.3d 1360 (Fed. Cir. 2010) [assigned separately]
Deal with this later.
Willful Infringement
Panduit Corp. v. Stahlin Brothers Fibre Works, Inc., 575 F.2d 1152 (6th Cir. 1978) [969]
The court found that a “reasonable royalty” awarded as compensation for infringement must necessarily be higher than that attained in an actual negotiation between the patentee and licensee. Panduit ob- tained a patent on a covering duct into which wires could be snapped easily. Stahlin began to manufacture a competing duct of similar design. After years of litigation, Panduit obtained damages equal to a royalty of 2.5% on Stahlin’s sales of the infringing duct. Finding the award too low, the Sixth Circuit emphasized that any award of “reas- onable royalties” must be sufficiently costly to the infringer to deter that infringer from appropriating a patented invention and sorting out the legal ramifications later. If damages were not high enough, said the court, an infringer would actually profit from its infringement since the worst result from litigation would be an order to pay the royalties that would have resulted from ordinary negotiations. The result would allow a substantial fraction of infringers to escape the payment of roy- alties altogether.
Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir. 1995) (en banc) [985]
In infringing a patent, the infringer may become liable for damages arising from lost sales of products not covered by the patent. Rite-Hite made two types of hooks designed to hold vehicles against loading docks. The first type, the MDL-55, was covered by the infringed pat- ent. The second type, the ADL-100, was not covered by the patent. Kelley manufactured similar hooks, which infringed the MDL-55 pat- ent but which also ate away Rite-Hite’s sales of the ADL-100 hook. In upholding damages to compensate Rite-Hite for lost sales of the ADL- 100, the court applied a standard of proximate causation in determin- ing which damages were appropriate. Because Rite-Hite had shown that Kelley’s infringing product was the only substitute for the ADL- 100, one could reasonably conclude that Rite-Hite would have sold ad- ditional ADL-100 hooks in the absence of Kelley’s infringement.
The dissent criticized the majority for taking an overly broad view of the damages authorized by the patent statute.
Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed. Cir. 2004) (en banc) [1029]
Failure to consult counsel on the possibility of patent infringement and the refusal to disclose counsel’s opinions as to infringement are not grounds for imposing treble damages. Knorr-Bremse held a patent on a braking system for heavy trucks. Dana, collaborating with the Swedish company Haldex, produced a similar braking system. Knorr- Bremse notified Haldex that it believed Haldex was infringing its pat- ent, and Haldex forwarded this information to Dana. Haldex consulted counsel as to the issue of infringement but ultimately refused to dis- close its counsel’s opinion as to whether infringement had actually taken place. Dana did not consult counsel, apparently relying on the conclusion Haldex had drawn from its own consultations. Remanding the case for a redetermination of damages, the court found that a de- fendant may not be held liable merely for failing to consult counsel or for refusing to disclose its counsel’s opinion as to infringement. The opposite rule, said the court, would inhibit communication between counsel and client.
Soverain Software L.L.C. v. Amazon.com, Inc., 383 F.Supp.2d 904 (E.D.Tex. 2005) [1040]
A website can be marked for the purposes of the marking statute.
Administrative Correction and Reissue
Superior Fireplace Co. v. Majestic Products Co., 270 F.3d 1358 (Fed. Cir. 2001) [1075]
The Federal Circuit clarified the conditions that a patentee must meet in order to correct an error in an issued patent. Superior obtained a patent on a gas fireplace, one of whose claims stated that the firebox was to have rear walls as opposed to a rear wall. Superior apparently did not notice the typographical error until it sued another company for infringing the patent. Both parties to the suit agreed that no in- fringement would exist if the misspelled phrase were interpreted as-is. In disallowing Superior’s correction, the court noted that § 255 is de- signed to protect the public against typographical corrections that broaden the scope of claims. Because wall would allow Superior to sus- tain the suit for infringement whereas walls would not, Superior could not apply for the correction.
Mentor Corp. v. Coloplast Inc., 998 F.2d 992 (Fed. Cir. 1993) [1079]
A patentee may not seek to add new substantive claims to a reissue patent. Mentor held a patent on a condom catheter. As originally is- sued, the patent contained four claims directed to an adhesive that could be transferred from the outer surface of the catheter to the inner surface via rolling and unrolling of the sheath. In seeking the reissu- ance of the patent, Mentor sought to add four additional claims that did not address the adhesive. The court disallowed the reissue patent. A reissue patent, said the court, cannot give the patentee the power to prosecute the original patent de novo.
Seattle Box Co. v. Industrial Crating & Packing, Inc., 756 F.2d 1475 (Fed. Cir. 1985) [1086]
The Federal Circuit clarified the circumstances under which a reissue patent may “recapture” an invention from the public domain. Seattle Box originally obtained a patent on a packaging structure for oil pipes.
The relevant claims stated that the “spacer blocks” separating each layer of pipes from the layer above were to be higher than the diameter of the pipes. Industrial Crating and Packing designed around this lim- itation by making its own spacer blocks 1/16 of an inch shorter than the diameter of the pipes. Seattle Box subsequently obtained a reissue patent, which altered the height requirement to state that the spacer blocks need only be “substantially equal” in height to the diameter of the pipes. Applying the doctrine of the personal intervening right, the court allowed Industrial to continue producing the spacer blocks that did not fall under Seattle Box’s original patent.
The dissent characterized Industrial’s activities as bad-faith infringe- ment and concluded that Industrial should not be entitled to equitable relief.
Quantum Corp. v. Rodime, PLC, 65 F.3d 1577 (Fed. Cir. 1995) [1094]
A patentee may not broaden the scope of a claim during reexamina- tion. Rodime held a patent on a hard drive. As originally issued, the relevant claim covered “[a hard drive] having at least 600 concentric tracks per inch.” During reexamination, Rodime changed the claim to read “at least approximately 600 [tracks per inch].” The court invalid- ated the patent, finding the insertion of the word “approximately” to have broadened the claim in violation of § 305. “The addition,” said the court, “eliminates the precise lower limit of [the] range . . . [and] ex- tends the scope of the range.”
J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553 (Fed. Cir. 1984) [1106]
[Inequitable conduct] can be established by any of four tests: (1) objective “but for”; (2) subjective “but for”; (3) “but it may have been”; and (4) PTO rule 1.56(a), i.e., whether there is a substantial likelihood that a reason- able examiner would have considered the omitted refer- ence or false information important in deciding whether to allow the application to issue as a patent. The PTO standard is the appropriate starting point . . . . “Inequit- able conduct” also requires proof of a threshold intent. . . . Once the thresholds of materiality and intent are estab- lished, the court must balacne them and determine . . .
whether the scales tilt to a conclusion that inequitable conduct occurred.
Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253 (Fed. Cir. 1997) [1111]
The failure to disclose the pertinent claims in an existing patent may amount to inequitable conduct. Critikon held several patents covering the various features a safety catheter. During prosecution, Critikon failed to disclose an existing patent (the McDonald patent), which dis- closed a catheter with features similar to those claimed by Critikon. Finding intent and materiality, the court held that Critikon’s failure to mention the McDonald patent amounted to inequitable conduct. “Critikon was intimately familiar with McDonald patent,” said the court. “[T]he record indicates that Critikon’s counsel was repeatedly confronted with the McDonald patent . . . which substantially over- lapped the [patents held by Critikon].”
Kinsgdown Medical Consultants, Ltd. v. Hollister, Inc., 863 F.2d 867 (Fed. Cir. 1988) [1121]
Symbol Technologies, Inc. v. Lemelson Medical, 227 F.3d 1361 (Fed. Cir. 2002) [1130]
Antitrust and Patent Misuse
Brulotte v. Thys Co., 379 U.S. 29 (1964) [1262]
A patentee may not charge royalties for the practice of an expired pat- ent. Thys held several patents on an agricultural machine. Although the patents had expired, Thys continued to charge farmers a royalty for the use of the machine. The Court disallowed Thys’s licensing ar- rangements, finding them to violate the policy underlying patent law. “[The] rights [granted by a patent],” said the Court, “become public property once the [patent] expires.”
The dissent argued that the expiration of the patent eliminated only Thys’s right to exclude others from making similar machines, not from charging fees for the use of the particular machines already in exist- ence.
Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965) [1275]
Attempting to enforce a patent obtained by fraud may violate § 2 of the Sherman Act and give rise to treble damages under § 4 of the Clayton Act.
Lear, Inc. v. Adkins, 395 U.S. 653 (1969) [1284]
A licensee may not challenge the validity of patent if the terms of the license permitted the licensee obtain access to patent-related informa- tion that was not publicly available.
MedImmune, Inc. v. Genentech Inc., 127 S.Ct. 764 (2006) [1291]
Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220 (Fed. Cir. 1988) [1299]
Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) [S111]
After finding Microsoft to have infringed a patent issued to Lucent, the Federal Circuit discussed at length the method for calculating dam- ages.