Patent Related

Supreme Court / Fed. Cir. en banc Decisions

In Last 2 Decades

 

米国特許関係

最高裁判決およびCAFC大法廷判決

1994年〜2014年)

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昨今(特に今年の6ENDまで)、恐ろしいばかりの頻度で合衆国最高裁が特許関係の事件を取り上げています。私が判例を少し意識しだしたのが1994年です。 In re DonaldsonというCAFC大法廷判決(1994年)でMeans Plus Function形式の構成要素はUSPTOにおいても112条第6項に基づき限定的に解釈し審査するということを学びました。1997年にアクロン大学留学時代の友人(日本の文化に戻れずに豪州に逃避した鈴木君、今は某IT企業を立上げ大物です)がHPを試作で立ち上げてくれアップする記事を何にしようかというときにWarner-Jenkinson判決が出ましたので日本語に要約し、アップしました。その後も不定期ですが読者の皆さんの励ましがあり特許関係の大きな判決は概要をアップしてきました。1994年のDonadson判決から今年で20年になります。・・・ということで過去20年を振り返り特許関係の大きな判決(最高裁判決とCAFC大法廷判決)を以下にまとめてみました。 

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By Tatsuo YABE

August 25, 2014

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Case Names

Year

F/ (S)

Summary of Cases

1

In re Donadson

1994

F

Not just a court, but PTO examiners are also bound by interpretation of MPF claim under §112(6), i.e., what is disclosed in the spec and equivalents thereof.

2

Markman v. Westview

Markman I (Fed Cir)

1995

F

Claim construction is a question of law to be decided by a judge. The appeal court should review an interpretation of claim with de novo standard.

3

Markman v. Westview

Markman II

1996

(S)

Claim construction of a patent, including terms of art within a claim, is exclusively within the province of the court.  Did not directly address the issue of the proper standard of review by an appellate court.

4

Warner-Jenkinson v. Hilton Davis

1997

(S)

If no reason for amendment is given, the presumption arises that the amendment was done for the reason of patentability.  Then, P.H.E. (no DOE) arises.  However, if the patentee successfully rebut the presumption, then P.H.E. is not applied to the amended element (possibility of DOE application). 

5

Pfaff v. Wells Elecs.

 

1998

(S)

Offer for sale of an invented product that was not yet reduced to practice (if the information provided is sufficient enough for PHOSIA to understand that it can be manufactured) triggers on sale bar under §102(b).

6

Cybor Corp v. FAS Tech

1998

F

Claim construction should be reviewed by appellate court by de novo because it is a question of law. Judge Rader dissents, arguing that the Supreme Court’s language in Markman II repeatedly suggested that claim construction is not a pure issue of law.

7

Festo v. Shoketsu

 

2002

(S)

When narrowly amending a claimed element during the prosecution for the reason of patentability, the presumption arises that no D.O.E. applies to the narrowly amended element. The Festo presumption is, however, rebuttable (not complete bar).

8

Jonson & J. Assocs v. R.E. Serv

2002

F

Scope of D.O.E. coverage does not expand to the embodiment disclosed but not claimed.  Thus, disclosed in spec but non claimed subject matter is deemed as dedication to public.

9

Honeywell v. Hamilton

2004

F

Rewriting dependent claim in independent form creates a Festo presumption, i.e., no D.O.E. applies to dependent claim features.  Note that the Festo presumption is yet rebuttable.

10

Knorr-Bremse v. Dana

2004

F

Willful patent infringement may no longer be inferred either from the failure to seek legal advice of counsel or involving the attorney-client privilege.

11

Phillps v. AWH Corp.

2005

F

In interpretation of claim, intrinsic evidence (Spec/Dwgs/Prosecution History) should be the primary source and reliance on extrinsic evidence (such as dictionary) should be supplementary. 

12

DSU Med. v. JMS Co.

2006

F

In DSU Medical, the court made clear that the intent required for liability under § 271(b) “was stated in Manville Sales Corp.[:] ‘[t]he plaintiff has the burden of showing that the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce infringements.’”

13

eBay v. MercExchange

2006

(S)

4-Factor Test for a Permanent Injunction (in civil lawsuits) applies also in patent cases.

14

MedImmune v. Genentech

2007

(S)

For a licensee to commence a DJ action of patent invalidity, it does not require the licensee to break the license agreement.

15

In re Seagate Tech

2007

F

The willful infringement enhanced damages now requires “at least a showing of objective recklessness.” Accordingly, to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. 

16

KSR v. Teleflex

2007

(S)

No rigid application of TSM test to combine the references to invalid claims under §103.  Made it easier for the Examiner to issue 103 rejection and more difficult for Applicant to rebut the 103 rejections. However, made it easier to invalidate claims at USPTO and court proceeding by accused infringer.

17

Microsoft v. AT&T

2007

(S)

Supplying patented a master software that is copied abroad is not supplying a component under § 271(f). Microsoft was found not liable although all the limitations of claims of AT&T’s patent are read when the copies made in abroad were installed onto a computer in foreign country.

18

Tafas v. Doll

2009

F

The most unfit PTO director ever, Dudas, appointed by George Bush made unthinkable rules, limiting # of Continuation Applications, RCEs and claims in the spec, was partially found invalid. Thereafter, Kappos rescinded all the new rules made by Dudas.

19

Abott Lab v. Sandoz

2009

F

During the prosecution, no weight is given to process features recited in product by process claim.  However, the process features are deemed as limitations when determining the infringement of product by process claim.

20

Ariad Pharm v. Eli Lilly

2010

F

Witten-Description” under §112(1) is separate requirement from “enablement requirement” under §112(1). To satisfy W-D requirement, the spec should include disclosures (embodiments) such that PHOSIA understands that the inventor was in procession of the invention of its scope as claimed.

21

Bilski v. Kappos

2010

(S)

Method of hedging risk in commodities trading is an abstract idea and thus not patent eligible matter under § 101. Machine-or-transformation test is not the sole test for determining whether a process is patent-eligible.

22

Global-Tech v. SEB

2011

(S)

Induced infringement under § 271(b) requires knowledge that induced acts constitute patent infringement.

23

Stanford v. Roche

2011

(S)

Bayh-Dole Act does not automatically confer title in federally funded inventions in the contractor.

24

Microsoft v. i4i

2011

(S)

Invalidity based on the prior art must be proved by clear and convincing evidence regardless of the fact that the prior art was reviewed by the examiner during the prosecution.

25

Therasense v. Becton

2011

F

The new rule to prove a defense based on “an inequitable conduct (which leads to a patent unenforceable)” was established, that is, two elements (materiality and intent to deceive) must be proven individually by clear and convincing evidence.  The exception for the materiality is that when the applicant act(s) is deemed as an egregious conduct.

26

Mayo v. Prometheus

2012

(S)

Method for finding suitable personal dosage of medicine according to his/her metabolism is not patent eligible subject matter, despite “transformation” takes place because it essentially claims a law of nature. In order for such method claim to be patent eligible, claim as a whole must be significantly more than the law of nature.

27

Gunn v. Minton

2013

(S)

A legal malpractice claim against lawyer based on underlying patent matters does not deprive the state court’s subject matter jurisdiction over a state law.

28

Bowman v. Monsanto

2013

(S)

Patent Exhaustion Doctrine does not give green light to Bowman for his reproduction of subsequent generations of patented seeds.

29

AMP v. Myriad

2013

(S)

Isolated DNA (naturally existing) is not patent eligible subject matter; but cDNA is eligible subject matter.

30

Medtronic v. Boston Sci

2014

(S)

Even when a licensee w/o breaking license agreement files a declaratory judgment lawsuit of non-infringement, it is the patentee who bears the burden of persuasion on infringement.

31

Lighting Ballast v. Phillips

2014

F

Cybor decision (Fed. Cir. en banc 1998) was reviewed.  Fed. Cir. by 6:4 affirmed its own 1998 Cybor decision (claim construction is purely legal matter and “de novo” review is proper).

32

Octane Fitness v. Icon Health & Fitness

2014

(S)

In determining whether the cases are "exceptional" (deserve attorney’s fee shifting) under § 285, district court should consider totality of the circumstances rather thanrigid subjective bad faith / objectively baseless rule” issued by Fed. Cir..

33

Highmark v. Allcare

2014

(S)

District court was given discretionary power to decide if the case is “exceptional” under §285. Thus, district court's exceptional-case determination for fee-shifting should be reviewed by abuse of discretion standard.

34

Limelight v. Akamai

2014

(S)

No inducement liability under §271(b), when no directly infringement by a single entity under §271(a).

35

Nautlius v. Biosig

2014

(S)

Claims are invalid for indefiniteness under §112(2), if they fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention, in light of the specification and prosecution history.

36

Alice v. CLS Bank

2014

(S)

Merely adding a generic computer to the abstract idea of intermediated settlement does not make it patent eligible subject matter. Skill of claim drafter does not make non-patent eligible method claim into a patent eligible recording medium or system claim.

37

Teva v. Sandoz

2015

??

(S)

Issue: Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error. TO BE DECIDED…!

 

MPF: Means Plus Function;  DOE: Doctrine of Equivalents;  DJ action: Declaratory Judgment Action;  TSM: Teaching/Suggestion/Motivation;  PHOSIA: Person Having Ordinary Skill In the Art

 

 

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