The "on-sale" defense

What happens when a company starts to explore selling an invention before a U.S. patent application has been filed? That was the question before the Court of Appeals for the Federal Circuit (CAFC) in the recent case of Group One v. Hallmark. The court rejected Hallmark's "on-sale" defense and held that Group One's patents were not invalid for violating the grace period. It thus sent the case back to the district court for a full trial of Group One's charge of infringement     

Patents-how much do you need to know to sue?

How much does the owner of a method patent need to know about a competitor's manufacturing process before bringing a patent infringement suit? Not much-according to the Court of the Appeals for the Federal Circuit (CAFC) in the recent case of Hoffman-La Roche and Syntex (Roche) v. Invamed et al. The case involved the continuing battle between name-brand and generic drug manufacturers. Roche sued eight generic drug manufacturers who were coming out with generic versions of Roche's TICLID(R) brand anti-stroke medicine. The basic patent on TICLID(R) had expired but there were still patents on improved methods for making its active ingredient. Roche's problem was that it could not tell from the finished product whether its patented methods had been used or not     

The case of the unwritten patent license

What happens when one company actively induces another company to spend the money needed to develop and make a new product and then after the product becomes the industry standard, sues that company for patent infringement? Should a court enjoin the second company from making the product? That was the question before the court in the recent case of Wang Laboratories vs. Mitsubishi Electronics. The case goes back to 1983, the dawn of the personal computer age. One of Wang's scientists, James Clayton, invented what was to become the basic memory module, now known as a SIMM (single in-line memory module). The Wang case illustrates that patent licenses do not always have to be written. Sometimes, years after the fact, a court can find that a patent owner granted an implied license through its course of conduct. Although such a finding is the exception rather than the rule, purchasers and suppliers of products can avoid the uncertainty of such a court decision by clearly setting forth their positions regarding patents in writing at the beginning of their relationship     

Patents

What should happen when a business method patent covers steps performed by more than one company? Can the company that coordinates the overall system be found to infringe even though it does not perform all of the steps of the patent?s claims itself? That was the question before the Court of Appeals for the Federal Circuit (CAFC) in the recent case of BMC v. Paymentech.     

What is a reasonable royalty?

The work discusses the case Monsanto filed to the Court of Appeals for the Federal Circuit (CAFC) versus Ralph Brothers. The case closed another chapter in Monsanto's long series of patent battles involving genetically engineered seeds for agricultural crops. Monsanto had a rigorous licensing program in place for its genetically engineered seeds, reaching down to individual farmers who bought the seed. No farmer could use Monsanto's products without signing a technology agreement that limited the use of the seeds to a single season's planting and that explicitly forbid saving, replanting, or transferring seed. In violation of the technology agreement, Ralph Brothers actively engaged in an extensive seed-saving, -replanting, and -transfer program. Monsanto brought suit to stop this violation of rights and asked for one royalty for seed saving and replanting and another higher royalty for seed saving. The jury favored Monsanto and awarded royalties. Since the Ralph Brother's infringement had been willful, the trial court judge tripled the damages amount and added attorney fees and interest for a grand total of US$2.9 million. Ralph Brothers appealed to the CAFC arguing that the jury's award was plainly excessive. It based its case on the Patent Statute's provision that in an infringement suit, a patent owner is entitled to a reasonable royalty. The Federal Circuit did not buy the argument and affirmed the $2.9 million award in its entirety. The Ralph Brothers case illustrates the flexibility of a reasonable royalty determination, as well as the power of US patents.     

Patents [obvious to whom?]

One of the basic tenets of patent law is that an inventor is not entitled to a patent on an invention that would have been obvious to a person of ordinary skill in the art. But who is that person? That was the question before the Court of Appeals for the Federal Circuit (CAFC) in the recent case of Daiichi Pharmaceuticals. The case shows that the inquiry on who is the person of ordinary skill in the art does not necessarily stop with the claims of the patent in suit. Daiichi's claims were directed to first- line physicians, but in finding a way to help such physicians, it had relied on scientists with very different skills. Having named those scientists as its inventors, the CAFC had no trouble in deciding that they were the actual audience for Daiichi's patent and were the persons of ordinary skill in the art.     

The importance of having a non-disclosure agreement

One of the most common ways companies and individuals protect their intellectual property is through non-disclosure agreements (NDAs), hundreds of which are signed every day throughout the world. Compared to patents, litigated cases involving NDAs are relatively rare. However, as the recent case of Celeritas Technologies vs. Rockwell International illustrates, when litigated, an NDA can be of great value-even more valuable than a patent. The Celeritas case involved the hot area of wireless communication systems. If Celeritas had relied only on its patent, it would have received nothing because its patent was found invalid. With the NDA, it received millions for its creative work     

The case of the omitted inventor

What happens when an inventor who made a very small contribution to an invention is left off a patent? Can a company charged with infringement obtain a license from the omitted inventor and so scot free? That was the question before the court in the recent case of Ethicon v. U.S. Surgical. The answer the court gave was yes. The case involved surgical instruments, known as trocars, used to perform minimally invasive abdominal surgery. Ethicon obtained an exclusive license to a patent of Dr. InBae Yoon to an improved trocar (a “safety trocar”) that was less likely to damage internal organs during the initial puncturing of the abdominal wall. Ethicon sold more than $300 million worth of instruments covered by the patent and paid Yoon more than $15 million in royalties. In 1989, Ethicon sued Surgical for infringement of two of the 55 claims of Yoon's patent. As is standard, Surgical took Yoon's deposition and asked about the origin of the invention. In that process, the name of Mr. Choi came up, but Yoon denied that he was an inventor of any of the claims of the patent. Surgical contacted Choi and was told a different story; namely, that Choi was an inventor of at least some parts of the patent. Based on this representation, Surgical took a license from Choi retroactive to the date of issuance of the patent. Surgical paid Choi $300000 for the license and promised to pay an additional $1 million if Surgical prevailed over Ethicon in the lawsuit     

The U.S. patent that reached around the world (patent infringement)

The article presents the case filed before the Court of Appeals for the Federal Circuit (CAFC) in the recent case of Union Carbide v. Shell regarding US patent infringement by activities in a foreign country. The case involved a patented method for making the industrial chemical ethylene oxide using silver-based catalysts. The seven-year patent infringement suit that ensued saw the victory of Union Carbide after two jury trials. However, the trial judge had said that Union Carbide was not entitled to any damages for Shell's sales of catalysts to its foreign customers. Union Carbide felt that such damages were proper because the only use for Shell's catalysts was to practice Union Carbide's patented method. Both at trial and on appeal, Union Carbide based its claim on a section of the Patent Laws [Section 271(f)], which Congress had enacted in 1984 in response to another court fight about offshore infringement. This section, in relevant part, i.e., 271(f)(2), provides that it is an act of infringement to supply "any component of a patented invention" from the United States with the intent that the component will be employed (combined) outside the United States in a manner that would infringe if done in the United States, if the component is 1) especially adapted for use in the invention and 2) not a staple article or commodity of commerce suitable for a substantial noninfringing use. Before the Union Carbide case, Section 271(f)(2) had been limited to apparatus and composition patents. Union Carbide wanted to extend its scope to method patents. The Union Carbide case is another example of the shrinking size of the world. Courts respond to changing realities, and with the global marketplace and outsourcing, one can expect that offshore infringement will become an increasingly common issue faced by patent owners and the infringers they sue.     

De Forest and the first electrosurgical unit

In the United States, Lee De Forest, who patented the first triode vacuum tube (audion) in 1907 and 1908, was experimenting with a high-frequency spark-gap generator for use in surgery and filed a U.S. patent application describing his work on 10 February 1907, which was issued on 17 December 1907. This device was the first electrosurgical unit, and there are no better words than his own in his patent for describing it; he stated: Be it known that I, Lee De Forest, a citizen of the United States, and a resident of New York, in the county of New York and State of New York, have invented a new and useful improvement in Cauteries, of which the following is a specification. My invention relates to devices for producing burning effects by means of high-frequency electrical currents, and more particularly to cauteries employed in surgery. (A cautery is a heated rod used to cut and coagulate living tissue.) I have discovered that when a conductor is attached to any part of a high-frequency oscillating circuit, the high-frequency electrical current passing into a body, for example, a human body, will produce a heating or burning effect at the point of contact of the electrode conveying such currents to said body, and that the intensity of said heating or burning effect is inversely proportional to the terminal area of said electrode. If therefore the electrode ends in a fine point or cutting edge, or relatively small area of other shape, an extremely intense burning effect may be obtained.     

专利侵权判定浅析

我国改革开放以来,生产的产品面对过国外诸多的技术壁垒和专利障碍,同时国内新技术一面世即一窝锋而上,企业往往面临取证难、维权难等问题,严重影响企业的原创积极性。本文将从专利侵权判定标准入手,浅析如何在专利申报时规避侵权,以及自身专利受到侵犯时准确判定。     

Be careful of what you say (Gillette's MACH3 three-blade razor vs. Schick's QUATTRO four-blade razor)

This paper discusses the case which involved the battle between Gillette's MACH3 three-blade razor and Schick's QUATTRO four-blade razor. Gilette had sued Schick for patent infringement in its hometown of Boston. Gillette's patent had only one independent claim, and it called for a safety razor comprising a group of first, second, and third blades. Schick's position was simple its razor had four blades, not a group of three blades, Gillette's position was also simple - it said that its claim required at least three blades but was not limited to just three blades. The Boston court sided with Schick which concluded that Gillette's invention was limited to just three blades. Gillette appealed to the CAFC. There, it argued that its claim language should be read as open language permitting the incorporation of additional elements, including additional blades in the claimed razor. It relied on two words in its independent claim, which Gillette said signaled the claim's openness, namely, the word comprising and the word group. Schick, on the other hand, argued to the CAFC that the Boston court had been right and Gillette was elevating form over substance, since Gillette's patent was filled with references to three-blade razors but did not have a single specific mention of a four-, or more, blade razor. The CAFC struggled with the closeness of these competing arguments. In the end, the two-member majority agreed with Gillette's arguments regarding the use of the words comprising and group. This case serves as a lesson that one must be very careful about what one says about an adverse patent in a public forum.     

Depositional Control of Macroscopic Particles by High-Strength Electric-Field Propulsion

Trials have been carried out to determine the efficacy and practicability of an electrostatic method of dusting crops. Using an 80-kV electrostatic generator and a motor-powered knapsack-type duster, pesticide particles have been charged by ionic bombardment, and good deposition has been achieved. Subsequent attempts to reduce the complexity and cost of the apparatus have resulted in the development of a ``triboelectrogasdynamic gun'?a novel device for electrostatic powder deposition. (Patent specifications have been filed.) This very simple device has produced an output electrode potential of 200 kV and is capable of effecting greater control over the deposition of macroscopic particles than would be practicable with conventional electrostatic devices. Applications are foreseen in both agricultural and industrial operations, though this paper deals mainly with the agricultural case.     

Patents-the suit against future infringement

Can a patent owner sue a competitor who is about to bring out an infringing product? That was the question before the court in the recent case of Interdigital Technology Corp. v. OKI America Inc. and Qualcomm Inc. The case involved the burgeoning field of cellular telephones. Interdigital owned patents which it believed gave it control of all cellular telephones that would satisfy two of the industry-wide standards set by the Telecommunications Industry Association. The Interdigital case shows that a patent owner need not stand idly by while a competitor makes plans to enter the market. If the patent owner can show that the competitor has made meaningful preparations to enter the market and intends to go forward in spite of the patent owner's protest, a court will hear the issue immediately. This action can significantly shorten the time to an ultimate judgment and injunction against the competitor's activities. Moreover, in the meantime, the fact that a lawsuit is pending can substantially handicap a competitor in the market because many customers may not want to deal with a supplier that may be put out of business in the future     

燃料电池专利申请状况分析

为整体了解全球有关燃料电池的专利申请状况,并重点关注在中国的状况,对燃料电池的专利申请分别进行了检索,从年代分布、国别分布、领域分布和主要申请人分布分别进行了数据统计分析,对我国燃料电池的发展提出了强化专利意识、重视专利保护、加大投入扶持、提高专利质量、强化专业分工、加强交流合作、聚焦国外专利和重视预警维权的建议.     

我国环保型银氧化锡触头材料制备技术专利分析

从国内相关银氧化锡电触头材料制备领域的专利文献中获取发展动态。采集1986年5月13日至2013年6月25日期间的国内银氧化锡电触头工业技术专利文献,建立专利数据库。通过可视化的方式,从专利申请量、专利分布、专利技术和专利持有人、专利技术生命周期等方面等角度深入分析了银氧化锡电触头材料制备领域专利的整体申请概况和主要申请机构等情况。通过研究发现关于银氧化锡电触头材料的专利技术周期包括快速增长期、成熟期和衰退期,缺乏专利的萌芽期,这可能与我国触头材料行业大多采用参照国外已有技术进行产品试制有关。     

Software can be patented

Some have argued that it is futile to patent computer software. The software would be outmoded and of no commercial interest before a patent application can be examined and issued (e.g., two years). Of course it all depends upon how the patent claims are drafted-i.e., it depends upon what is patented. As with any technology, invented computer program algorithms can turn out to be basic discoveries. Algorithms are continually used and re-used once discovered (often in many different types of programs). If a patent claim is properly drafted to generically cover such a basic algorithm, its importance can last the entire 20 year life of the patent. Thus, the key is judiciously expending company resources on those basic and commercially important programs that can have a relatively long life. And, as with any other commercial product, one must guard against infringing the valid unexpired software patents of others     

The role of juries in patent cases

What should be the role of juries in patent cases? That was the question before the Court of Appeals for the Federal Circuit (CAFC) in two recent cases, Markman vs. Westview Instruments Inc. and Hilton Davis Chemical Co. vs. Warner-Jenkinson Co. As technology has become more complex, questions have been raised as to whether lay juries (or lay judges) are able to understand and make meaningful decisions in patent cases. The general wisdom has been that juries favor patent owners since they tend to have difficulty in seeing the technological importance of small differences, and that they also tend to be more reticent in overturning the original decision of the Patent and Trademark Office to grant a patent. The two cases described illustrate the fine line that sometimes must be drawn between what the judge does and what the jury does in a trial. Being a fine line, it should come as no surprise that neither of these cases was decided unanimously. The majority decisions, however, make it clear that juries will continue to play an important role in patent cases, albeit not as large as they did in the past     

电厂锅炉制粉系统塞煤问题的分析及解决

分析了锅炉煤仓塞煤的原因和对锅炉运行的影响,指出了现有的清堵方法和措施存在的实际问题。考虑到某些自备电厂采用煤仓疏松机取得的效果,在借鉴其成功经验的基础上,对这一设备加以改进和推广应用。以中速磨正压直吹制粉系统为例,通过引入锅炉负荷信号,采取提前预判的控制策略,配合一种专门解决煤仓塞煤问题的新型专利产品——煤仓疏松机,不仅能从根本上解决煤仓塞煤问题,而且能够保证调节系统的灵敏度及疏松器的安全强度。     

Patents: the inventor who claimed too much

How much right should an inventor have to control the future? That was the question decided by the United States Supreme Court in the famous 1853 case of Samuel Morse and his telegraph, and the answer the Court gave then is still the law today. This rule of law, now more than 140 years old, says that no matter how great an invention may be, there comes a point where a court will step in and say that the public's right supersedes the inventor's right. Fortunately for Morse, he was able to stop O'Reilly's infringement based on his narrower claims. Similarly, inventors seeking broad patent protection today include narrower claims in their patents to protect against the possibility that a court may find that they, too, have claimed too much