Patent Law Practice Center

CAFC Finds HFC Patent Valid: Honeywell Was Not “Another Inventor” under § 102(g)(2)

The following post comes from Scott Daniels, partner at Westerman,Hattori, Daniels & Adrian, LLP and Practice Center Contributor.

This Wednesday the CAFC held in Solvay v. Honeywell that Honeywell’s activities in the United States did not constitute prior art under 35 U.S.C. § 102(g)(2) against Solvay’s U.S. Patent No. 6,730,817.  The CAFC therefore reversed the trial court’s summary judgment that the patent was rendered invalid by Honeywell’s activities.  Solvay’s ‘817 patent claims a method for making hydrofluorocarbons (HFCs) that are used in refrigeration and aerosol systems, as environmentally-friendly alternatives to chlorofluorocarbons (CFCs).

Paragraph (g) is the so-called “interference provision” of Section 102, but it also defines prior art that may be used in infringement actions, as in the present Solvay case.  Section 102(g)(2) provides in relevant part that a person is entitled to a patent if  “before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it” (emphasis added).  The issue for the CAFC was whether Honeywell was “another inventor,” i.e., had it invented the claimed process.  The CAFC said no. (more…)

Goeddel V. Sugano: What’s The Difference Between “Envisioning” An Invention And Being “In Possession” Of The Invention?

The following post was written by Gerald M. Murphy, partner at Birch, Stewart, Kolasch & Birch, LLP and Practice Center Contributor.

In Goeddel v. Sugano, the Court of Appeals for the Federal Circuit (CAFC) has provided more guidance as to what is necessary for a sufficient “written description” of an invention, this time for a true “biotech” invention, in the context of a motion for benefit of priority in an interference.  This case involved two interferences; one directed to DNA encoding human fibroblast interferon (hFIF) unaccompanied by a hFIF presequence (mature hFIF) and one directed to a composition comprising  non-glycosylated hFIF.  Sugano filed a motion for benefit of its Japanese priority application (Sugano priority application) and was granted priority by the Board of Patent Appeals and Interferences (the Board) in both interferences.  Goeddel appealed that decision on the grounds that the Sugano priority application did not constitute a constructive reduction to practice because it did not enable the Counts and did not provide a sufficient written description of the Counts.  The Federal Circuit reversed on the ground that the Sugano priority application did not provide a sufficient written description of the Count because the inventors were not “in possession” of the invention. (more…)

Microsoft v. i4i: Amici Make Strong Argument for Supreme Court Review of Patent Invalidity Standard

The following post comes from one of our newest Practice Center Contributor’s Clement S. Roberts.  Mr. Roberts is a founding partner at Durie Tangri where his practice focuses on intellectual property litigation and on complex commercial cases with a high-technology component.

A broad spectrum of academics and industry lined up Friday to support Microsoft’s request for Supreme Court review of its ongoing patent litigation against i4i.  In the underlying litigation, i4i won a pile of money on a patent dealing with the idea of separately storing metacodes and text in a markup language document.    While the litigation has an interesting factual history, the issue on appeal is a purely legal one – namely the application of the “clear and convincing evidence” standard to questions of invalidity.

As most people reading this blog already know, in order to invalidate a patent, a defendant must prove that the patent is invalid by “clear and convincing” evidence.  Ostensibly, this rule exists in order to reflect deference to the fact that the patent has been examined and found valid by an expert at the Patent and Trademark Office.    See e.g. American Hoist & Derrick co. v. Sowa & Sons, Inc, 725 F.2d 1350 at 1359 (Fed. Cir. 1984) (taking note of “the deference that is due to a qualified government agency presumed to have properly done its job.”).

Especially when taken together, however, the amicus briefs in Microsoft v. i4i overwhelmingly show that this is an exceptionally bad rule – at least when applied (as it is now) to all questions of invalidity. (more…)

TiVo vs. Dish at the Federal Circuit: Examining TiVo’s Brief

Written by Gene Quinn ( of IPWatchdog and Practice Center Contributor)

Several weeks ago TiVo filed its brief in the matter of Tivo, Inc. v. EchoStar Corp., which will be hearden banc by the United States Court of Appeals for the Federal Circuit on Tuesday, November 9, 2010. The dispute between TiVo and EchoStar dates back to 2004 when TiVo sued EchoStar in the United States District Court for the Eastern District of Texas, alleging that its receivers infringe “hardware” claims (claims 1 and 32) and “software” claims (claims 31 and 61) of US Patent No. 6,233,389. The jury found there was willful infringement and the district court entered an injunction ordering EchoStar to cease infringing. It is this injunction that now is at the root of the dispute to be heard by the Federal Circuit. TiVo did not believe EchoStar lived up to the Order of the district court. The district court, seemingly out of an abundance of caution, decided not to utilize its summary contempt powers but held a year long proceeding to determine if infringement was ongoing. The district court found EchoStar was violating the injunction Order and acted accordingly. EchoStar appealed and argued that only a full patent infringement trial would suffice. The panel sided with TiVo over a strong dissent by Judge Rader, now Chief Judge of the Federal Circuit, who felt the summary proceedings were inadequate. For more see Looking Ahead to TiVo v. Dish at the Federal Circuit. So as the full Federal Circuit hears this case it is anticipated that the inherent powers of a district court to enforce their own Orders and administer justice will be front and center.

On September 10, 2010, TiVo, by and through their attorneys at Wilmer Cutler Pickering Hale & Dorr, filed their Brief for Rehearing En Banc with the Federal Circuit. The opening paragraph of the Introduction sets an ominous tone: (more…)

Pleading Intent to Deceive in False Marking: How much is enough?

Written by Scott Daniels (partner in Westerman Hattori Daniels & Adrian and Practice Center Contributor).

It is undisputed that a qui tam claim for false patent marking under 35 U.S.C. § 292 requires, in addition to marking an unpatented article, that the marking be done with intent to deceive the public.  Forest Group, Inc. v. Bon Tool Co., 590 F.3d 1295, 1300 (Fed. Cir. 2009).  But how specifically must the qui tam plaintiff plead “intent to deceive” to comply with the Rule 9(b) requirement that allegations of fraud be made with particularity?  Unfortunately, the CAFC declined to answer that question in Stauffer v. Brooks Brothers, Inc., decided last month.  Without guidance from the CAFC, the answer appears to depend upon the court in which the complaint is filed.

At the more lenient end of the spectrum is Judge Robert W. Gettleman who in Simonian v. Oreck, Case No. 1:10-cv-01224 (N.D. Ill, August 23, 2010) denied the Defendant Oreck’s motion under Rule 12(b)(6) to dismiss because of the failure of the complaint to make more than a general allegation of deceptive intent. Judge Gettleman applied the who-how-what-when-where standard that has been used by a number of courts.  He concluded that Plaintiff Simonian’s complaint adequately stated that Oreck (the who) had deliberately falsely marked (the how), the particular product (the what), the marking was current (the when), within the District and throughout the United States (the where).  He also found that the allegations, despite their generality, created a presumption: “By alleging that defendants had knowledge of their false marking and that the marks were false creates a rebuttable presumption of deceptive intent.” (more…)