Philip Brooks' Patent Infringement Updates

Modavox Pleased With New York District Court Markman Hearing Ruling

The following is excerpted from a March 27, 2009 Modavox press release at PR Newswire:

Modavox, Inc. (OTC Bulletin Board: MDVX), Internet broadcasting pioneer and holder of several patented technologies, today announced that a decision has been reached by Hon. Colleen McMahon in the Southern District Court of New York in its patent infringement lawsuit vs. Tacoda, Inc., filed on August 9, 2007 seeking injunctive relief and unspecified damages.

In patent litigation, Markman hearings are used for claim construction. Typically, the plaintiff and defendant set out a list of claim terms whose definitions are in dispute. To clarify the meaning of these terms (and subsequently the scope and validity of the patents), a judge weighs evidence and definitions as presented by the plaintiff and defendant and makes a ruling in the form of a Markman Order.

The five terms disputed within the claims construction and presented at the Markman Hearing have been ruled upon by the Court. Modavox is pleased with the Judge's analysis believing the results fully support the Company's infringement contentions while reinforcing its patent enforcement strategy. The judge has also provided additional time for the inclusion of expert testimony and introduction of extrinsic evidence regarding the term 'functionality'. Modavox is further pleased with this ruling in addition to the schedule put forth by the court. The Company is actively preparing its response in accordance with the Court's scheduling order and looks forward to having experts work with its counsel, Shaub & Williams LLP, to further support the remaining term definition.

See the full press release here.

Order Issued in Hydro-Quebec v. Valence Technology Case

Thanks to the reader who alerted me to the March 4, 2009 post by Lawrence Ebert at his IP Biz blog regarding a recent order in this case and schedule for the upcoming Markman hearing.

According to Judge Sparks' February 13, 2009 order [Download 102] posted on March 3, 2009:

This case is a patent infringement suit involving the technology behind rechargeable lithium iron phosphate-based batteries. According to the Plaintiffs, the technology was invented and patented by a University of Texas faculty member, Dr. Goodenough, and licensed to Plaintiff Hydro-Quebec.

Defendant moves to both dismiss all claims under the '640 patent for lack of subject matter jurisdiction and failure to state a claim under Federal Rules of Civil Procedure 12(b)(1) and (6) and for summary judgment on those same claims. Because the Defendant's arguments for dismissal and summary judgment are indistinguishable, and since the motion to dismiss relies on matters outside the pleadings such as the USPTO's decisions to date, the Court will address the Defendant's argument as a single motion for summary judgment.

The Defendant's argument is schizophrenic at best and a "heads I win, tails you lose" argument at worst. As the Plaintiffs point out, and as the Defendant itself recognizes, the USPTO's decision is not final until it issues a Certificate of Reexamination. 35 U.S.C. § 307(a); PIs.' Resp. to Def.'s Mot. for Sum. Judg. at 11; Def.'s Mot. to Dismiss at 5 ("The USPTO can reconsider an earlier action until the reexamination is complete and a reexamination certificate is issued."). Yet, the Defendant asks the Court to treat the Examiner's determination that certain claims are unpatentable as final and dismiss the Plaintiffs' claims on that basis while at the same time refusing to consider any amended claims which may be adopted when the Certificate of Reexamination is issued. The Defendant cites no precedent for dismissing claims based solely on a non-final USPTO decision. Because the USPTO's decision is not yet final, the Defendant has failed to establish the lack of a genuine issue of material fact or any other grounds for dismissal. The Court thus DENIES the Defendant's motion to dismiss and motion for summary judgment on the '640 patent claims, without prejudice to refiling after the Markman hearing.

See IP Biz post here and my previous post here.

OPTi v. Apple Claim Construction Order

Counsel for the plaintiff in the OPTi Inc. v. Apple, Inc. case mentioned in my Tuesday post filed the following yesterday, December 3, 2008:

Per this Court’s November 26, 2008 oral decision after hearing argument on all claim construction issues, the parties hereby submit the attached proposed order pursuant to the Court’s request.

The proposed Claim Construction Order states in its introduction:

This case came before the Court on November 26, 2008 for hearing on all claim construction issues pursuant to the Docket Control Order in this matter. The Court has reviewed the briefs of the parties and the argument had in open Court. Having carefully considered the parties arguments, the language of the claims in light of the specification and the pertinent portions of the prosecution history, and having evaluated the disputed claim terms in light of the principles of claim announced by the Federal Circuit, particularly as set forth in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Court rules as set forth below as to the claim terms in dispute between the parties and enters as its order the claim constructions agreed to by the parties.

Thanks to the reader who provided the information and the order.  Download the order [Download Txed-2-07-cv-00021-161-2] to see the agreed claim construction terms table.

Opti Inc. v. Apple Computer Markman Hearing

A reader wrote to me inquiring on where they might locate information on the November 26, 2008 Markman hearing in the Eastern District of Texas between Opti Inc. and Apple Computer Inc.  In the process of pointing him to Michael Smith's (a partner in the law firm of Siebman, Reynolds, Burg, Phillips & Smith, LLP) Eastern District of Texas Federal Court Practice blog, I realized I did not have this blog on my blogroll.  I have corrected this oversight.

Still looking for information on the Markman hearing, so if you know something, please post a comment here.

Active e.Digital Discussion at AGORACOM

A member going by the name, "sunpoop," provided a post on September 17, 2008 at AGORACOM discussing his take on a recent e.Digital shareholder meeting.  Much of the discussion, as well as other messages at this forum, focused on the status of the company's patent infringement litigation and its hopes for success.  The following is an excerpt:

1. EDig patents were filed 4 years BEFORE anyone started having interest in the "Flash Market" so there is no "prior art' to worry about and ABSOLUTELY no competition for EDig's filed patents. Proving infringers infringe is very simple, according to PN. (by the way EDig's patents and what infringers are being sued for is ONLY for removable flash memory that records and playsback audio, at least at this time.

The reason it is very simple to prove and the main reason DM is excited about their cases is the removing of the flash memory card/chip (whatever) and asking the infringer to play back the audio from his device. If he cannot because the audio is contained on the flash memory then he has infringed. EDig's patent 774 covers ALL voice recordings on flash memory...That's pretty big...

The second thing that was of interest to me in PN talks was a chart he brought out with (presumably) the names of all 174 infringers on it. All the names were blacked out EXCEPT those presently being sued by DM. There were 10 names on that chart that were NOT blacked.

RP throughout the meeting was (THIS IS FOR YOU LL) extremely "positive" about coming events regarding the IP lawsuits. He said he and PN had sat in on NUMEROUS meetings and "was positive settlements will be occuring long before Markman hearings take place.

See the full post and access the forum here.

Texas Court Issues Markman Ruling in Candela's Suit Against Palomar

The following is excerpted from an August 7, 2008 Candela press release available at Business Wire:

Candela Corporation (NASDAQ: CLZR), a global leader in the development and commercialization of advanced aesthetic laser and light-based systems, announced today that the United States District Court for the Eastern District of Texas, Lufkin Division issued the Markman ruling on August 6, 2008 in Candela’s patent lawsuit against Palomar Medical Technologies, Inc. (NASDAQ: PMTI).

In a Markman ruling, a district court hearing a patent infringement case interprets and rules on the scope and meaning of disputed patent claim language regarding the patents in suit. A Markman decision is often a significant factor in the progress and outcome of patent infringement litigation.

In the recently issued Markman Order, the Court adopted interpretations that Candela believes are favorable to Candela on all claim terms that were in dispute in the litigation.

On December 19, 2006, Candela filed a patent infringement complaint against Palomar Medical Technologies, Inc. (NASDAQ: PMTI) in the United States District Court for the Eastern District of Texas, Lufkin Division, asserting that Palomar’s Lux 1540™, Lux DeepIR™, Lux IR™, Lux G™, and Lux Y™ handpieces willfully infringe upon one or more of United States patents: 5,810,801, 6,659,999 and 6,120,497.

Read the full press release here.

Court of Appeals Rules on Disputed Terms from Markman Hearing in decisioning.com Case

The following is from a May 7, 2008 Affinity Technology Group, Inc. press release published at Business Wire:

Affinity Technology Group, Inc. (OTCBB: AFFI) today announced that the United States Court of Appeals for the Federal Circuit (the “Appeals Court”) has published its opinion in the cases of its subsidiary, decisioning.com versus Federated Department Stores, TD Ameritrade and HSBC Finance Corporation. The principal issues decided by the Appeals Court involved the definition of certain terms which were the basis for the summary judgment order issued by the United States District Court for the District of South Carolina in which the cases against Federated, TD Ameritrade and HSBC were dismissed in 2007. The terms in dispute were the result of a Markman hearing held in December 2006 and included the terms “remote interface,” “verify the applicant’s identity” and “compare…and….”

In its opinion, the Appeals Court unanimously overturned and revised the District Court’s definitions of all the disputed claim terms. The Appeals Court revised the terms “verify the applicant’s identity” and “compare…and…” in the exact manner requested by and favorable to decisioning.com. However, the Appeals Court in a split decision (2-1) revised the term “remote interface” in a manner unfavorable to decisioning.com. In summary, the Appeals Court ruled that a remote interface as used in U.S. Patent No. 6,105,007, decisioning.com’s patent which covers the automated establishment of financial accounts, does not include a personal computer owned by a consumer. Rather, the Appeals Court limited the term “remote interface” to those that are publicly accessible and specifically excluded consumer-owned personal computers from the definition. One Judge on the panel wrote a dissenting opinion construing remote interface in a manner consistent with the request of decisioning.com.

The Appeals Court affirmed the dismissal of the case against Federated and vacated in part and remanded the cases against TD Ameritrade and HSBC.

Read the full press release here.

Markman Hearings and Claim Construction in Patent Litigation 2008

The Practising Law Institute (PLI) is hosting the above titled conference in New York City on July 9, 2008.  The conference is also available via live webcast.  The conference is chaired by Thomas L. Creel of the Law Office of Thomas L. Creel P.C..

Companies and their patent lawyers anxious to resolve the ever-increasing number of costly patent disputes must deal with the 1994 Supreme Court case Markman v. Westview Instruments, which was supposed to add speed and predictability to patent cases. In Markman, the high court held that “judges, not jurors, are the better suited to find the acquired meaning of patent terms.” After Markman, trial court judges started holding separate proceedings away from the jury - so called Markman hearings - to determine the scope of a patent’s claims. Thus, Markman hearings play a key and crucial role in the outcome of patent litigation and also in the drafting and prosecution of patent applications. Because there is no intermediate appeal, Markman has added a whole new level of lawyering, cost, delay and, some say, uncertainty to patent litigation.

What You Will Learn

• Overview of Markman and its progeny; the promises and the realities of Markman in practice
• Claim construction hearing procedure, strategies and tactics
• New! How to prepare and prosecute patent applications to obtain appropriate claim construction
• Discovery, timing, alternatives and challenges in multi-patent and multi-party cases
• A demonstration of an actual hearing
• Evidentiary considerations and the use of demonstratives and other extrinsic evidence
• Use of experts, inventors and masters
• Claim construction from an appellate perspective
• After the Markman hearing - effect on further trial proceedings
• Special Feature! How judges from around the nation view Markman hearings and their suggestions for effective advocacy

More information and registration are available here.

More on Reexamination

As a follow-up to yesterday's post, I heard from Dale Carlson at Wiggin and Dana LLP on a more recent article he co-authored with Robert Migliorini titled, "Patent Reform at the Crossroads:  Experience in the Far East with Oppositions Suggests an Alternative Approach for the United States."  The article appears in NORTH CAROLINA JOURNAL OF LAW & TECHNOLOGY (VOLUME 7, ISSUE 2: SPRING 2006) and discusses reexamination in the context of a patent reform proposal called "post-grant opposition".  The article explains why we should work to improve the existing reexamination protocol rather than try to implement a new post-grant opposition regimen that has failed in other countries.

They write:

On September 1, 2005, Representative Lamar Smith introduced a “Coalition Print” version of a patent reform bill (Substitute bill H.R. 2795) into Congress. That bill included a post-grant opposition procedure not later than nine months after grant. On April 5, 2006, Representative Howard Berman introduced the “Patents Depend on Quality Act of 2006” (H.R. 5096 - the “PDQ Act”) into Congress. The proposed PDQ Act includes a so-called “second window” for bringing an opposition, namely within six months of the alleged infringer’s receiving notice of suit.

The concept of a post-grant review procedure has the support of the Director of the United States Patent and Trademark Office, Jon Dudas, and warrants consideration by the patent community at large. The authors submit that the form and substance of any such post-grant review procedure are critical elements to its success. The authors submit that the review procedure should not take the form of an “opposition” protocol, but rather should be woven into the existing inter partes reexamination procedure.

Read the full article here.  Mr. Carlson also suggested "What's Really Happening in Inter Partes Reexamination," by Joseph D. Cohen of Stoel Rives LLP. An updated version of 87 J. Pat. & Trademark Off. Soc. 207 (2005).

AMGEN V. HMR: A CASE FOR DEFERENCE IN CLAIM CONSTRUCTION

Andrew S. Brown, a 2008 Harvard Law School J.D. candidate, writes in the Spring 2007 issue of the Harvard Journal of Law & Technology:

In Amgen Inc. v. Hoechst Marion Roussel, Inc. (Amgen V), the Court of Appeals for the Federal Circuit was once again faced with the difficult question of the proper standard of review in claim construction appeals. The case went back and forth between the district court and the Federal Circuit multiple times before eventually narrowing on the construction of a single claim term. Ultimately, a petition for rehearing en banc was filed arguing that the Federal Circuit panel should have afforded more deference to the district court’s claim construction. The petition was denied, but a number of dissenting and concurring opinions underscored the conflict among the Federal Circuit judges. Subsequently, a petition for a writ of certiorari was filed.

The Markman-Cybor doctrine was contentious well before the denial of rehearing en banc in Amgen V, and the arguments presented against de novo review of claim construction are familiar. However, the denial of rehearing en banc serves as the most comprehensive display, to date, of the lines that are calcifying in the fight over review of claim construction. Consideration of the opposing and overlapping doctrinal blocs evident in the various dissenting and concurring opinions might be useful in forecasting the future of the standard of review in claim construction.

It is appropriate and advisable for the Supreme Court to grant certiorari to reconsider Cybor. As in Markman II, policy considerations should take center stage when allocating decisional power over an issue that is neither clearly law nor fact. Placing claim construction in the hands of district courts would benefit the patent system by lowering the reversal rate and increasing claim construction accuracy.

But as this May 25, 2007 post describes, the Supreme Court denied cert. in this case.  Where do you see review in claim construction heading?

I found it interesting that this article includes a footnote reference to a post by Dr. Kevin Noonan to Dennis Crouch's Patently-O blog.  Another sign that blogs are making it into mainstream publishing!