Category: Patent

Posted on

Burstein on Determining Relevant Article of Manufacture for Design Patent Damages

The US Government proposed, and the Apple v. Samsung trial court adopted, a four factor test to determine the “article of manufacture” for calculating total profit damages for design patent infringement. But, Professor Sarah Burstein says the four factor approach “is built on a legally and logically flawed foundation and … [the] proposed test–like any other multi-factor, factual inquiry–will increase the cost and complexity of design patent litigation without being likely to produce more just or more predictable outcomes.”

Instead, Burstein proposes an alternative method of determining the relevant article in her paper titled, The “Article of Manufacture” Today. There she makes the case that courts should adopt a historical definition of “article of manufacture.” After reviewing the history of the term she concludes:

…for a design patent claiming a design for surface ornamentation, the relevant article should be deemed to be whatever article the design was printed, painted, cast, or otherwise placed on or worked into. For a design patent that claims a design for a configuration or a combination of both configuration and surface ornamentation, the relevant article should be deemed to be the article whose shape is dictated by the claimed design.

She explains an article of manufacture should be “interpreted to refer to a tangible item made by humans that has a unitary structure and is complete in itself for use or for sale….” She also asserts that, historically, machines and compositions of matter should excluded from “articles of manufacture.”

She further says that if courts feel “compelled to include machines in the category of ‘articles of manufacture,’ they should treat the exterior housings or shells of the machines as the relevant article because it is manufactured and could be sold separately.”

Burstein’s approach will be easier and cheaper to apply than the four factor test. And, Burstein argues the awards will “better reflect the designer’s actual contribution without providing too much of a windfall to the most design patentees.”

Posted on

Four Factor Test for Determining the Article for Total Profit Damages in Apple v. Samsung

USD0618677_fig1In a 2016 decision in Samsung v. Apple, the Supreme Court determined that the relevant “article of manufacture” for calculating total profits damages for design patent infringement could be either (1) the product (e.g. the Samsung phone) sold to a customer or (2) a component of that product.

Previously, the “article of manufacture” for calculating total profits damages for design patent infringement was the entire product sold to a customer. The profits to the entire product are usually likely to be greater than profits to a component of the entire product.

The case was sent back to the trial court and a new trial was ordered on damages. In October 2017, the trial court ruled that a four factor test would be used to determine what is the article of manufacture for the purposes of damages under 35 USC 289. The four factors are:

  1. The scope of the design claimed in the plaintiff’s patent, including the drawing and written description;
  2. The relative prominence of the design within the product as a whole;
  3. Whether the design is conceptually distinct from the product as a whole; and
  4. The physical relationship between the patented design and the rest of the product, including whether the design pertains to a component that a user or seller can physically separate from the product as a whole, and whether the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately.

Under this test, it is possible that a jury could conclude that the article of manufacture is the entire Samsung phone and not just a component of it. If so, the result could be largely the same as before the Supreme Court decision.

Both Apple and Samsung at certain times in the case supported the four factor test. This means that each saw or sees a way to win under the test. If a jury determines the article is the whole infringing phone, Apple is a winner. If a jury determines the article is less than the whole phone, Samsung may succeed in reducing the damages awarded.

There are three design patents at issue: D593,087 is directed to primarily the front face of the iPhone and the beveled edge, D618,677 is primarily directed to the black “infinity pool” face of the iPhone, and D604,305 is directed to the home screen user interface. Representative figures from the each patent, respectively, is shown below.

USD0593087_Fig1USD0618677_fig1

USD0604305_Fig1

Even if Apple can’t show, with respect to each patent, that the “article” is the whole infringing phone, these three patents cover the home screen user interface and the exterior of the device, except for the back. These features are arguably a large part of the visual appeal of the device. But, these patents do not cover the side profile of the device, or as mentioned, the back. We will see how close Apple gets to the original damage award of $399 million, which was the entire profit Samsung made from its sale of the infringing smartphones.

Citation: Apple Inc. v. Samsung Electronics Co., no. 11-CV-01846, 2017 U.S. Dist. LEXIS 177199; 2017 WL 4776443 (N.D.Cal. Oct. 22, 2017).

Posted on

Total Profit Damages on Entire Product or Component for Design Patent Infringement

USD0593087_Fig1In 2007, Apple released its first generation iPhone. After Apple released its iPhone, Samsung released as series of smartphones “that resembled the iPhone.” In 2011, Apples sued Samsung alleging various infringement claims, including that Samsung’s smartphones infringed Apple’s D593,087, D618,677, and D604,305 design patents. A jury awarded Apple $399 million in damages for design patent infringement, the entire profit Samsung made from its sale of the infringing smartphones.

Samsung appealed arguing “that the profits awarded should have been limited to the infringing ‘article of manufacture’–for example, the screen or case of the smartphone–’not the entire infringing product’–the smartphone.” The court of appeals rejected that argument reasoning that “’limit[ing] the dam- ages’ award was not required because the ‘innards of Samsung’s smartphones were not sold separately from their shells as distinct articles of manufacture to ordinary purchasers.'”

The applicable statute at 35 USC 289 provides that a design patent infringer “…shall be liable to the owner to the extent of his total profit, but not less than $250….”

But the Supreme Court reversed holding that in the case of a multi-component product, the relevant “article of manufacture” for calculating total profits damages could be either (1) the product sold to a customer or (2) a component of that product, whether sold separately or not.

The court did not provide a test for determining whether, in a given case, “article of manufacture” for calculating profits should be the product sold to a customer or a component of that product.

The profits to the entire product will be greater than profits to a component of the entire product. Therefore, this decision has the potential to reduce the profits damages available to design patent holders and therefore to reduce the value of design patents.

Case citation: Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429 (2016).

Posted on

Lack of Capitalization of “internet protocol” in Claim Contributes to Invalidity Over Prior Art

US07269247_Fig1The importance of the wording of a patent claim is paramount. And, even the capitalization of the words of the claims can matter as shown in the case of AIP Acquisition LLC v. Cisco Systems, Inc., No. 2016-2371 (Fed. Cir. 2017).

Cisco Systems challenged the validity of U.S. Patent No. 7,269,247, owned by AIP Acquisition. The patent is directed to systems and methods for interconnecting otherwise incompatible telephone networks using the Internet, for example, for the purpose of placing a phone call through various networks including the “Internet or other data networks.”

A disputed portion of claim 1 provided “the second format being internet protocol” and a disputed portion of claim 16 provided “wherein said second format is Internet protocol.”

In order to distinguish the prior art and save the validity of the claims, AIP argued that “internet protocol” and “Internet protocol” of claims 1 and 16 meant only “Internet Protocol of TCP/IP.”

But the Court said the patent applicant/owner:

“…could have claimed a specific protocol, such as the IP of TCP/IP, perhaps by capitalizing the ‘i’ in ‘internet’ and the ‘p’ in ‘protocol’ in both claims or, more definitively, by reciting the ‘Internet Protocol of TCP/IP.’ It did not, however, and the use of lowercase letters suggests that ‘I/internet protocol’ is not confined to any particular protocol.”

The court concluded that the prior art invalidated the challenged claims given the broader scope of the term “internet protocol.”

The lack of capitalization was not the only thing that the court relied on to conclude the term should be given a broader interpretation. However, this case demonstrates that beyond the words themselves, even the capitalization of words in the claim can have an impact on the way the words are interpreted as well as the ultimate scope and validity of the claims.

This is not to say that the use of lowercase “internet protocol” was necessarily an oversight by the patent drafter. It could be that at the time the application was written and prosecuted the patent applicant wanted a broad interpretation. But later when it became apparent that the claims was or might not be valid with the broad interpretation, the patent owner changed positions on the meaning of the claim.

On the other hand, it could also be that all along the patent owner intended the claim words to mean the narrower “Internet Protocol of TCP/IP” but the language chosen did not achieve that intent.

Posted on

Can Benefit to Provisional Patent Application be Restored When the One Year Deadline to File a Nonprovisional is Missed?

A provisional patent application is not examined by USPTO and will not result in a patent. In order to gain the benefit of the provisional application, a non-provisional application must be filed within one year of the filing date of the provisional application and must claim priority to the provisional application. But what if you fail to file the non provisional application within one year of the provisional filing date? Is all benefit of the provisional application lost? Maybe not.

The law provides a two month window after the one year deadline where the benefit of the provisional application can be restored. 35 USC 119(e), 37 CFR 1.78(b), MPEP 211.01(a)(II). But there are important limitations on the option to restore the benefit of the provisional application.

The first limitation is that the delay in filing the nonprovisional application beyond the one year deadline must be unintentional. Therefore if you intended not to file by the one year deadline but then later changed your mind, the delay was probably not unintentional.

The second limitation is that you must file a petition requesting that the benefit of the provision application be restored and pay a big fee.

Currently the fee for this petition is $850 for micro entities and small entities. The petition fee is in addition to the other USPTO filing fees. Generally the USPTO filing fees for a non-provisional application are about $400 for micro entities and $740 for small entities.

Therefore, filing within the two month window where the benefit can be restored effectively more than triples the total USPTO fees to file the application for a micro entity and more than doubles the total fees to file for a small entity.

Posted on

Don’t Admit that A Human Can Manually Perform the Claimed Process to Help Avoid Abstractness

US7757298_Fig1Intellectual Ventures I sued Erie Indemnity Company for infringing U.S. Patent No. 7,757,298 (the ‘298 patent). The ‘298 patent is directed to a method and apparatus for identifying and characterizing errant electronic files. It seeks to improve the prior art by providing a method and apparatus to detect “undesirable files” (such as copyrighted music files) “stored on computer storage devices” “according to pre-set criteria.”

Claim 1 provided three section criteria, “any one of which may be used to identify errant files, with selection based on: (1) size, i.e., ‘whether an aggregate size of plural identically-sized files exceeds a predetermined threshold,’ … (2) content, i.e., ‘whether content . . . matches a [certain] file type,’… and (3) naming convention, i.e., ‘whether the file comprises data beyond an end of data marker.'”

The court found that the claims of the ‘298 patent were invalid as being directed to an abstract idea under 35 USC 101. Intellectual Ventures I LLC v. Erie Indemnity Company, No. 2017-1147 (Fed. Cir. 2017).

One factor the court considers in determining whether a claim is directed to an abstract idea is whether the claim “could be performed in the human mind or by a human using a pen and paper.” Here, the ‘298 patent described that a human could manually perform the first two selection criteria claimed for identifying errant files. The court used this admission in concluding that the claim was abstract.

It would have been better if the ‘298 patent did not describe that any of the selection criteria could be performed manually by a human. Generally it is good to describe alternative versions and ways of implementing your invention in the patent application. This can help broaden the scope of protection offered under the patent claims.

However, when the invention is computer implemented, describing that any of the steps could be done manually or have in the past been done manually by a person, could be used against you in a patent eligibility challenge,

 

Posted on

Teaching Away Requires Clear Discouragement to Counter Obviousness

US6673532_Fig1Presense Persuasion Sensing petitioned the USPTO to reexamine (invalidate) certain claims of U.S. Patent 6,673,532 (the ‘532 patent) directed to methods of measuring parameters in a cell culture. The USPTO rejected the challenged claims of the ‘532 patent as obvious in view of a combination of two references, which I will refer to as “Bamboo” and “Weigl.”

University of Maryland Biotechnology Institute (Maryland), which owns the ‘532 patent, argued that Bamboo and Weigl should not be combined because Weigl teaches away from the claimed invention. Maryland  alleged that Weigl taught away because “(1) Weigl’s carbon dioxide sensor is unstable; (2) each of Weigl’s flow-through units has only one sensor, not multiple sensors; (3) Weigl’s various outlets are inconsistent with the claimed invention’s ‘continuous volume’ limitation; and (4) Weigl’s device is “invasive” because it requires extra-vessel sensors.”

The court rejected these arguments on appeal. University of Maryland Biotechnology Institute v. Presens Precision Sensing GMBH, Nos. 2016-2745, 2017-1075 (Fed. Cir. 2017). The court found that Maryland’s teaching away arguments focused too narrowly on Weigl’s physical arrangement.

The court said, the “mere disclosure of alternative designs does not teach away.” Instead, “teaching away requires ‘clear discouragement’ from implementing the technical feature.” And the court found no clear discouragement.

When a reference teaches away from the proposed combination, such a teaching would discourage one skilled in the art from making the combination.

Therefore, teaching away is a good argument for defending against an obviousness claim. However, usually the teaching away needs to be quite explicit in the reference for the argument to have traction.

Posted on

Applying Computer and Internet Technology to Replace Older Electronics is Commonplace, Fed. Cir. Says

US20060218618A1_Fig 1Joseph Lorkovic filed a patent application directed to a home entertainment content delivery system for interactive content dissemination over the internet. The USPTO rejected Lorkovic’s claims as obvious based on a combination of U.S. Patent 5,918,012 (“Astiz”) in view of U.S. Publication 2005/0229233 (“Zimmerman”). Lorkovic claimed Astiz and Zimmerman could not be combined because the web browsing functionality in Astiz was not compatible with the analog based Zimmerman device.

The appeals court rejected this argument in In Re Lorkovic, No. 2017-1678 (Fed. Cir. 2017). The court stated, “We have previously observed that ‘applying computer and internet technology to replace older electronics has been commonplace in recent years’ and found obviousness in reliance on that observation.” citing W. Union Co. v. MoneyGram Payment Sys., Inc., 626 F.3d 1361, 1370 (Fed. Cir. 2010).

Obviousness determinations are hard to predict. However, when considering the patentability of an invention, it is important not to think too narrowly about whether prior art devices would be compatible or physically combine-able. But rather consider what would one skilled in the art would understand from the prior art device or disclosure in light of current state of the art at the time of application filing.

Posted on

The Wright Brothers on Taking Risks

“The man who wishes to keep at the problem long enough to really learn anything positively must not take dangerous risks. Carelessness and overconfidence are usually more dangerous than deliberately accepted risks,” said Wilbur Wright.

WrightBrothersThe process of inventing the airplane and testing it carried risks. However, as David McCullough writes in his book The Wright Brothers, “caution and close attention to all advanced preparations were to be the rule for the brothers.”

He continued, “They would take risks when necessary, but they were not daredevils out to perform stunts and they never would be.” In addition to the brothers’ study of flight attempts of others and the manner that birds fly, the brothers took many cautious steps in preparation for their first flight experiences.

The brothers realized that their home town of Dayton, Ohio was not ideal for flight experiments. Instead, they sought a location with consistent winds and soft sand to test their machine.

Wilbur first inquired with Octave Chanute, an engineer, for advice on where to conduct flying experiments. But the locations in California and Florida that Octave knew of were “deficient in sand hills” for soft landings. Instead, Octave suggested the coasts of South Carolina or Georgia might be better.

Wilbur Wright inquired with the United States Weather Bureau about the prevailing winds around the country. The Bureau responded with records of monthly wind velocities of more than one hundred weather stations around the country. A spot called Kitty Hawk on the Outer Banks of North Carolina stood out.

But Wilber would not rely on the weather data alone, he wanted confirmation from someone there at Kitty Hawk. Wilbur wrote to the head of the Weather Bureau at Kitty Hawk. A reply confirmed that there was “a stretch of sandy land one mile by five with a bare hill in center 80 feet high, not a tree or bush anywhere to break the evenness of the wind” and the “winds were always steady, generally from 10 to 20 miles velocity per hour.”

Having settled on a suitable location, the brothers would not start out with a powered plane, but an unpowered version. They could use the wind at the sand hill to test the equilibrium and control of the plane before adding engine power. Wilbur said:

“I have my machine nearly finished. It is not to have a motor and is not expected to fly in any true sense of the word. My idea is merely to experiment and practice with a view to solving the problem of equilibrium. I have plans which I hope to find much in advance of the methods tried by previous experimenters. When once a machine is under proper control under all conditions, the motor problem will be quickly solved. A failure of a motor will then mean simply a slow descent and safe landing instead of a disastrous fall.”

McCullough recounts that Wilbur stressed to his father that Wilbur “did not intend to raise many feet from the ground, and on the chance that he were ‘upset,’ there was nothing but soft sand on which to land.” Wilbur further said “The man who wishes to keep at the problem long enough to really learn anything positively must not take dangerous risks. Carelessness and overconfidence are usually more dangerous than deliberately accepted risks.”

Wilbur even went so far as to assure his father that he was taking “every precaution” about his drinking water in the Outer Banks.

Read more about the ups and downs of the Wright Brothers’ work in McCullough’s book, which is a worthy read.

 

 

 

 

Posted on

US Supreme Court Restricts where Patent Suits Can be Filed

The U.S. Supreme Court interpreted the patent venue statute, 28 USC 1400(b), narrowly to restrict the places were patent suits may be filed in the case of TC Heartland LLC v. Kraft Foods Group Brands, LLC, No. 16-341 (May 22, 2017).

Previously, the Federal Circuitdetermined that section 1400(b) incorporated the broader definition of “residence” contained in 28 USC 1391(c). That broader definition provided that a defendant corporation resides in any judicial district in which the defendant is subject to the court’s personal jurisdiction. The Supreme Court determined that the resident definition section does not apply to section 1400(b) and that a defendant resides, for the purposes of section 1400(b), only in the state where it is incorporated.

Since many corporations are incorporated in Delaware, this ruling is expected to increase the number of patent suits filed there and to reduce the number of patent cases filed in the Eastern District of Texas, which has been a popular patent plaintiffs’ venue.

In addition to the place where the defendant resides, Section 1400(b) also provides that venue is proper where the defendant has committed acts of infringement and has a regular and established place of business. Therefore this second clause of section 1400(b) will likely now get more action. And, courts will have occasion to define the boundaries of what is a “regular and established place of business,” which was not a widely relied upon clause previously.

IPWatchdog and IAM have additional coverage on this ruling.