Tuesday, May 16, 2006
No more automatic permaent injunction
In eBay v. MercExchange, the U.S. Supreme Court puts an end to the conventional rule that a finding of infringement automatically results in a permanent injunction.
From now on, it's the district court's discretion whether an injunction should issue.
From now on, it's the district court's discretion whether an injunction should issue.
Friday, May 12, 2006
Do not characterize your invention in the specification
Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., et al.
The issue in this case is whether the term “host interface” is properly construed by the district court. The district court limited the meaning of “host interface” to “a direct bus interface”.
CAFC relied on SciMed life and stated that “where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be construed broad enough to encompass the feature in question.”
In this case, the specification characterizes the direct bus interface as a “very important feature” of the invention, stating that a “direct” communication is necessary to provide “direct” access. Further, the prosecution history supports the above interpretation.
Thus, the interface requires direct parallel connection.
The issue in this case is whether the term “host interface” is properly construed by the district court. The district court limited the meaning of “host interface” to “a direct bus interface”.
CAFC relied on SciMed life and stated that “where the specification makes clear that the invention does not include a particular feature, that feature is deemed to be outside the reach of the claims of the patent, even though the language of the claims, read without reference to the specification, might be construed broad enough to encompass the feature in question.”
In this case, the specification characterizes the direct bus interface as a “very important feature” of the invention, stating that a “direct” communication is necessary to provide “direct” access. Further, the prosecution history supports the above interpretation.
Thus, the interface requires direct parallel connection.
Friday, January 27, 2006
Claim construction and Infringement
Minebea filed suit against Think Outside for infringement of U.S. Patent 4,433,225. Minebea Co, LTD. v. Think Outside, Inc., et al.
The '225 patent discloses a mechanism for preventing an "oddly-shaped" key top, such as an L-shaped keytop, on a computer keyboard from tilting and binding when it is pressed down on an area of the keytop surface that is not directly above the keyswitch. The mechanism consists of a pair of lever arms that are joined by a central pivot. The comparable part of Think Outside is used to prevent studs from sliding.
CAFC agrees with the district court's decision that the written description limits the scope of the claim term "pivot" to a structure that is fixed in position relative to the level arms, and thus excludes sliding motion.
Having construded the scope of "pivot", CAFC affirmed the district court's decision that "Think Outside's pin and slot do not literally meet that limitation because its pin and slot structure allowed for sliding motion, and thus was not a fixed pivot."
CAFC also concluded that the Think Outside's pin and slot did not meet the "pivot" limitation under the doctrine of equivalents. The court stated that "if one were to only replace the central pin and slot structure with a fixed central pivot, SPK (the comparable product of Think Outside) would not function."
The '225 patent discloses a mechanism for preventing an "oddly-shaped" key top, such as an L-shaped keytop, on a computer keyboard from tilting and binding when it is pressed down on an area of the keytop surface that is not directly above the keyswitch. The mechanism consists of a pair of lever arms that are joined by a central pivot. The comparable part of Think Outside is used to prevent studs from sliding.
CAFC agrees with the district court's decision that the written description limits the scope of the claim term "pivot" to a structure that is fixed in position relative to the level arms, and thus excludes sliding motion.
Having construded the scope of "pivot", CAFC affirmed the district court's decision that "Think Outside's pin and slot do not literally meet that limitation because its pin and slot structure allowed for sliding motion, and thus was not a fixed pivot."
CAFC also concluded that the Think Outside's pin and slot did not meet the "pivot" limitation under the doctrine of equivalents. The court stated that "if one were to only replace the central pin and slot structure with a fixed central pivot, SPK (the comparable product of Think Outside) would not function."
Wednesday, January 25, 2006
Lack of antecedent basis in claims
CAFC rules that Energizer's patent (US 5464709) is not invalid and complies with 35 USC 112. Energizer Holdings, Inc., et al. v. International Trade Commission, et al.
The '709 patent is for an electrolytic alkaline battery cell that is substantially free of mercury.
Claim 1 of '709 patent reads:
1. An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as an active cathode component, and an anode gel comprised of zinc as the active anode component, wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
ITC argues that there is no antecedent basis for "said zinc anode" in claim 1.
However, CAFC relies on Slimfold and states that "an antecedent basis can be presented by implication." Then CAFC concludes that "anode gel" is by implication the antecedent basis for "said" zinc anode.
I think the claim 1 can be amended by replacing "...said zinc anode has a gel expansion of less than..." with "...an expansion of the anode gel comprised of zinc is less than..." to avoid the antecedent basis issue. JWP
The '709 patent is for an electrolytic alkaline battery cell that is substantially free of mercury.
Claim 1 of '709 patent reads:
1. An electrochemical cell comprising an alkaline electrolyte, a cathode comprising manganese dioxide as an active cathode component, and an anode gel comprised of zinc as the active anode component, wherein the cell contains less than 50 parts of mercury per million parts by weight of the cell and said zinc anode has a gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.
ITC argues that there is no antecedent basis for "said zinc anode" in claim 1.
However, CAFC relies on Slimfold and states that "an antecedent basis can be presented by implication." Then CAFC concludes that "anode gel" is by implication the antecedent basis for "said" zinc anode.
I think the claim 1 can be amended by replacing "...said zinc anode has a gel expansion of less than..." with "...an expansion of the anode gel comprised of zinc is less than..." to avoid the antecedent basis issue. JWP
Tuesday, January 24, 2006
Redesigning to avoid willful infringement
CAFC found a willful infringement when the management did not give its engineers sufficient time to avoid an infringing design. Applied Medical Resources Corp. v. United States Surgical Corp. The management of RIM recently stated that its engineers developed a software to go around the NTP's patent. How long would be sufficient to satisfy the "sufficient time" requirement? JWP
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