Philip Brooks' Patent Infringement Updates

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!

Preparing for a Markman Hearing

On November 19, 2007 The Chartered Institute of Patent Attorneys is hosting a seminar in London titled, "Preparing for a Markman Hearing - and its impact, including the European perspective."  The program is led by Andrew Piatnicia and Richard Willoughby of Howrey LLP.

"It is at the Markman hearing that parties to U.S. patent litigation can argue their views on the proper construction of limitations of patent claims."

Topics:

• Markman timetable
• Claim construction discovery and depositions
• Attempts to compromise
• Dealing with the judge
• The Markman hearing
• The Ruling
• Post Ruling: summary judgment, trial or appeal?
• The European perspective

Program and registration details are available here.

Standards of Review Applied by the U.S. Court of Appeals for the Federal Circuit in Patent-Related Matters

Lawrence M. Sung, Ph.D. wrote in the American Law Review (Volume 48) in 1999 an article titled, "Echos of Scientific Truth in the Halls of Justice: The Standards of Review Applied by the United States Court of Appeals for the Federal Circuit in Patent-Related Matters."

In his introduction, Dr. Sung writes:

The interplay between science and the law finds its reflection in many aspects of legal practice. Testing the limits of our scientific understanding is not an effort unique to patent law. Yet, perhaps no other area besides patent law involves the consideration of the legal rights to which science itself may be entitled. In this sense, patent law stands alone in governing science. This result, however, is neither the intended focus of patent law, nor the mission of the United States Court of Appeals for the Federal Circuit (“Federal Circuit”).

The goal of the U.S. patent system is to promote innovation to foster the continued global competitiveness of domestic industries. That science may be called into question during the application of the patent laws is a natural by-product of the determination whether a technology event rises to the level of innovation that merits government protection. Innocent victim or not, science often captures the spotlight in such patent considerations.

This Article addresses the difficulty at times in finding justice in the patent law decisions of the Federal Circuit in the face of apparent misapplications, or seemingly intentional ignorance, of otherwise accepted scientific or engineering principles. Part I discusses the confusion the casual observer might encounter when studying such decisions without an appreciation of the standards of review that dictate the Federal Circuit’s resolution of an appeal. In Part II, the Article considers several significant cases, including Dickinson v. Zurko, in which the Federal Circuit struggles with questions about the appropriate standard of review. The Article concludes in Part III with a survey of the applicable standards of review by the Federal Circuit on various specific patent law issues. Through this review, the Article seeks to facilitate a more balanced consideration of the patent law decisions of the Federal Circuit in hopes of reaching a better understanding of otherwise suspect holdings from a scientific validity perspective.

Read the full article here.

TPL Group Files Appeal to Reverse Markman Claim Construction for MMP Patent

TMCnet reported today, September 27, 2007, the following:

As planned, the TPL Group today announced it has filed an appeal to reverse the June 18, 2007 Markman ruling regarding the "instruction groups" claim construction for US Patent 5,784,584 (US '584) in the Moore Microprocessor Patent(TM) (MMP) Portfolio. The appeal closely follows the stipulation proposed by TPL for a judgment of non-infringement of US '584. TPL urged entry of the judgment in order to simplify and streamline the MMP Portfolio infringement trial in the US District Court in the Eastern District of Texas scheduled to take place in January 2008, and to enable an immediate appeal of the narrowly adverse Markman ruling regarding the single US '584 claim construction.

As a result of the stipulation requested by TPL, the Texas Court infringement trial will focus on only two US patents in the MMP Portfolio, the 5,809,336 and the 6,598,148. TPL asserts that the June 18th Markman ruling broadly confirmed the strength of MMP claims including the very significant affirmation of US 5,809,336 as applied to both modern PLL-based and non PLL-based systems.

Read the full article here.

District Court's Markman Ruling Has No Preclusive Effect On PTO Reexam

An August 24, 2007 Intellectual Property Bullet Analysis from James McKeown and Scott Bittman of Crowell & Moring states:

The Federal Circuit, in In Re Trans Texas Holdings Corp., (No. 2006-1559, -1600, Aug. 22, 2007), affirms a Board's Reexamination decision that found that each of the claims of two related patents were invalid under 35 U.S.C. § 103(a) as obvious over the prior art. The Court rejects the appellant's argument that the Board should have given preclusive effect to a district court's Markman order, which had construed the claims in their favor in a prior litigation. The Court holds that issue preclusion is not warranted because the PTO was not a party to the earlier litigation, and as a result, did not have a "full and fair opportunity" to litigate the claim construction issues.

A link to the opinion is available here.

Markman Hearing Ruling in Blackboard Case

Michael Feldstein writes at his e-Literate blog:

According to D2L’s patent blog, the judge in the patent case just ruled the first 35 of the 44 claims in Blackboard’s current patent invalid:

The more significant, immediate result is that the Court found the “Means for assigning a level of access to and control of each data file based on a user of the system’s predetermined role in a course,” a “means-plus-function” term, to be indefinite. See pages 16-17 of the Memorandum Opinion. Because that phrase is indefinite, all of Claim 1 is rendered invalid because of indefiniteness. Further, all dependent claims that rely on Claim 1 (in our case, Claims 2 through 35) are similarly invalid.

There’s more to the ruling, too. The Court agreed with  D2L’s definitions of certain terms in the patent, which could impact the way the surviving pieces of the patent are litigated at trial. If you’ve been following the legal maneuverings closely, you may want to check out the whole post.

Note that this development is completely unrelated to either of the pending re-examinations or, apparently, to the Supreme Court’s ruling on the nature of “obviousness” in the patent law. It was something that came out of the Markman Hearing, which is the part of the trial in which the court determines literally what the patent means for the purposes of the trial. It sounds from this post as if the court may have found that the first claim doesn’t have a specific enough meaning to be patentable, and that the 34 claims that depend on that first claim therefore are also not patentable.

This appears to be a pretty significant victory for D2L.

Comments and related posts are available here.

Patriot Scientific Markman Hearing Ruling

Today I received a copy of the June 15, 2007 Markman Hearing Ruling in the Technology Properties Ltd. and Patriot Scientific Corp. v. Matsushita Electric Industrial Co., Ltd. et al. case from a reader.

Below are excerpts from Judge Ward's ruling in the United States District Court for the Eastern District of Texas Marshall Division:

I. Introduction

Plaintiffs Technology Properties Limited (“TPL”) and Patriot Scientific Corp. accuse multiple defendants of infringing United States Patent Nos. 5,809,336 (“the ‘336 patent”) entitled “High Performance Microprocessor Having Variable Speed System Clock,” 6,598,148 (“the ‘148 patent”) entitled “High Performance Microprocessor Having Variable Speed System Clock,” and 5,784,584 (“the ‘584 patent”) entitled “High Performance Microprocessor Using Instructions that Operate within Instruction Groups.” This opinion resolves the parties’ various claim construction disputes.

II. Background of the Technology

The ‘336 patent discloses a mechanism to improve the speed of microprocessor operations.  First, a variable speed clock circuit is fabricated on the same chip as the microprocessor. By placing the clock circuitry on the microprocessor, the clock will be subject to the same variations in operating conditions as the microprocessor. Second, the slower input/output clock is separated from the system clock. The ‘148 patent also discloses a mechanism to improve the speed of the microprocessor. In addition to the on-chip clock described in the ‘336 patent, the microprocessor of the ‘148 patent includes memory on a majority of the microprocessor substrate. The ‘584 patent addresses a bottleneck problem where the computing speed of the microprocessor depends on how quickly instructions can be loaded from memory into the instruction register of the microprocessor.

III. General Principles Governing Claim Construction

“A claim in a patent provides the metes and bounds of the right which the patent confers on the patentee to exclude others from making, using or selling the protected invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999). Claim construction is an issue of law for the court to decide. Markman v. Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). To ascertain the meaning of claims, the court looks to three primary sources: the claims, the specification, and the prosecution history. Markman, 52 F.3d at 979. Under the patent law, the specification must contain a written description of the invention that enables one of ordinary skill in the art to make and use the invention. A patent’s claims must be read in view of the specification, of which they are a part. Id. For claim construction purposes, the description may act as a sort of  dictionary, which explains the invention and may define terms used in the claims. Id. “One purpose for examining the specification is to determine if the patentee has limited the scope of the claims.” Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000). Nonetheless, it is the function of the claims, not the specification, to set forth the limits of the patentee’s claims. Otherwise, there would be no need for claims.

V. Conclusion

The Court adopts the constructions set forth in this opinion for the disputed terms of the ‘336 patent, the ‘148 patent, and the ‘584 patent. The parties are ordered that they may not refer, directly or indirectly, to each other’s claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain from mentioning any portion of this opinion, other than the actual definitions adopted by the Court, in the presence of the jury. Any reference to claim construction proceedings is limited to informing the jury of the definitions adopted by the Court.

Attached is the full ruling for the details of the Court's construction of each of the disputed claims (Download markman_hearing_ruling_on_6152007.doc).