TiVo Wins Appeal: In 2004 TiVo sued EchoStar, which operates DISH Network satellite television, for infringing TiVo’s patents relating to its DVR hardware and software technology. The lower court found that EchoStar infringed TiVo’s patent claims directed to hardware and software. The jury awarded $73 million in damages, and the judge ordered a permanent injunction. A CAFC panel affirmed infringement with respect to the software claims, but found the claims directed to the hardware not infringed. However, the panel affirmed the damages award and noted that the permanent injunction against EchoStar will be reinstated when the appeal becomes final.

Lost Profits Awarded for Offers to Sell Infringing Product: In American Seating Co. v. USSC Group, Inc., the CAFC ruled that lost profits may be awarded based on offers to sell an infringing product even when a noninfringing product is actually delivered. In this case, USSC Group offered to sell its VPRo I wheelchair restraint system that was eventually determined to infringe American Seating’s patent related to a wheelchair restraint system. In the meantime, USSC notified its customers that orders for the VPRo I system would be filled with the VPRo II system, which did not infringe American Seating's patent. The jury awarded American Seating lost profit damages due to the sell of the VPRo II systems. The CAFC upheld the awarding of lost profits noting that the evidence was sufficient for the jury to conclude that "absent USSC’s offer to sell the VPRO I, the sales would have gone to American Seating."

Supreme Court Grants Cert to Decide Patent Exhaustion Case: LG Electronics licensed a portfolio of patents to Intel, but the license expressly excluded Intel’s customers and any non-Intel product made containing the licensed products. Subsequently, LG electronics sued a number of computer manufacturers that incorporated the licensed Intel chips in their computers. The computer manufacturers argued that Intel’s sale of chipsets were authorized under the LG license, and therefore, LG’s patent rights are exhausted. Under the principle of patent exhaustion, also known as the first sale doctrine, the first unrestricted sale of a patented item exhausts the patentee's control over that particular item. In this case, the lower court found that Intel’s sale of the licensed chips exhausted LG’s rights, but the CAFC reversed based on the express conditions placed on the use of Intel’s licensed chips. The U.S. Supreme Court has granted a writ of certiorari to decide the issue.

CAFC Reverses PTO Claim Construction: In In re Buszard, the CAFC overturned a decision by the Board of Patent Appeals and Interferences (BPAI) for improper claim construction. The USPTO found the applicant’s invention to be anticipated by a prior patent. Buszard’s application was directed to a flame retardant composition containing a flexible polyurethane foam. The specification and claims in Buszard’s application noted the specific requirement of a flexible foam. The cited prior art reference described only a rigid foam product formed from a rigid foam reaction mixture that could only be rendered flexible by mechanically crushing the rigid product. The CAFC noted that cited reference could not reasonably be construed to anticipate a flexible foam product formed from a flexible foam reaction mixture.

CAFC Overturns Long Standing Precedent: In a unanimous en banc decision (In re Seagate Technology), the CAFC changed the standard for proving willful patent infringement, which, if found, allows for enhanced damages. Under the court’s new ruling, proof of willful patent infringement will now require a showing of objective recklessness. The previous standard imposed an affirmative duty of care on those who received notice that they might be infringing a patent. Thus, the new standard announced by the CAFC is projected to make it much more difficult for plaintiffs to receive an enhanced damages award.

Evidence Rebutting Obviousness Must Be Considered: In In re Sullivan, the CAFC overturned a decision by the Board of Patent Appeals and Interferences (BPAI) for failing to consider rebuttal evidence offered by the patent applicant. The USPTO found the applicant’s invention to be obvious in light of the applicant’s own publications and other references. In rebutting the finding of obviousness, the applicant presented three declarations that tended to show that the invention was, in fact, not obvious. The BPAI affirmed the USPTO’s finding, but did not consider the applicant’s three declarations in reaching its decision. The CAFC reversed, noting that applicant’s evidence rebutting obviousness must be considered.

No Revival Allowed For “Unintentionally” Missed National Stage Filing Deadline: In Aristocrat Technologies Australia (ATA) v. International Gaming Technologies (IGT) (N.D.Cal. 2007), the court found that ATA’s national stage application could not be revived. ATA filed an Australian provisional application on July 8, 1997, and filed a PCT application on July 8, 1998. When the 30 month national stage entry deadline arrived, ATA filed a U.S. national stage application…the only problem was that it was filed one day late. The patent application was revived by the USPTO under the “unintentional” revival standard. However, during litigation IGT challenged the “unintentional” standard, arguing that the standard for revival of a national stage application should be “unavoidable.” The court agreed…application abandoned.

Grammatical Error Invalidates Patent: A patent held by Microstrategy, Inc. was found indefinite by a Federal Circuit panel due to a grammatical error. Several claims of Microstrategy’s U.S. Patent No. 6,658,432 used the phrase “the client system using and transmitting the retrieved information to the at least one web server.” The panel noted that the claims were indefinite because the word “using” did not have an object, and there was more than one way to correct the error (i.e., by simply adding an object or deleting the phrase “using and”). Invalidity affirmed.

Means-Plus-Function Element Found Indefinite: Under 35 USC 112 paragraph 6, a patent applicant may broadly claim a “means” for executing a specific function. However, the applicant must define some structure which performs the specified function. In Biomedino v. Waters Technology (Fed. Cir. 2007), a CAFC panel held that several of the claims in Biomedino’s U.S. Patent No. 6,602,502 were indefinite because the specification did not define any structure for the claim limitation “control means.” The specification merely stated that there were known methods for carrying out the specified control function, and that any of those methods would be acceptable. However, the court noted that “a bare statement that known techniques or methods can be used does not disclose structure.” Invalidity affirmed.

Inequitable Conduct Leaves Patent Unenforceable: In McKesson Information Solutions v. Bridge Medical (Fed. Cir. 2007), the CAFC affirmed the district court’s finding that the patent at issue was unenforceable due to inequitable conduct. The finding of inequitable conduct was based on three items deemed to be material to the prosecution of the application that the prosecuting attorney failed to disclose to the patent examiner. Specifically, the prosecuting attorney did not disclose a prior art reference, office actions, and the allowance of a co-pending, related application that the prosecuting attorney was handling at the same time. The CAFC affirmed the district court’s conclusion that each item was material to prosecution, and that intent to deceive could be inferred from the prosecuting attorney’s actions and inactions.

CAFC Vacates BPAI’s Priority Determination: In Henkel v. Procter & Gamble (Fed. Cir. 2007), the CAFC vacated and remanded the BPAI’s award of priority to Procter & Gamble (P&G) in an interference proceeding. An interference was declared between P&G’s patent and Henkel’s patent applications, each claiming dishwashing detergent tablets having two separate regions that dissolve at different rates. The BPAI concluded that Henkel did not show that its named inventors had “appreciate[d] that which [t]he[y] ha[d] invented” at the time of their conception and reduction to practice. The CAFC disagreed and held that the Henkel inventors only had to demonstrate an appreciation for the subject matter of the invention. The CAFC noted that the BPAI’s findings were sufficient to establish the fact that Henkel appreciated that it had produced dishwashing detergent tablets having two separate regions that dissolve at different rates.

U.S. Supreme Court Issues KSR v. Teleflex Opinion: The U.S. Supreme Court at long last handed down its opinion in the KSR v. Teleflex case on April 30, 2007. This case represents the Court’s seventh opinion regarding the patentability issue of obviousness. Many legal commentators have already begun to speculate on the impact of the case. Some commentators note that the opinion “does not radically change the notion of obviousness,” while others think there will be “a dramatic change to the method by which the Patent Office, the courts, and the bar conduct their obviousness analyses.” Regardless of the speculation, we will soon know the impact of this opinion when the Court of Appeals for the Federal Circuit and the district courts begin to apply its teachings.

35 USC Sect. 271(f) Does Not Cover Foreign Duplication of Software: In Microsoft v. AT&T (2007), the U.S. Supreme Court held that Section 271(f) of the Patent Act does not cover foreign duplication of software. The statutory provision at issue provides that infringement may be found when one “supplies . . . from the United States,” a patented invention’s components for “combination of such components outside of the United States….” Here, AT&T owns a patent covering a computer that encodes and compresses recorded speech. A computer installed with Microsoft’s Windows operating system potentially infringes AT&T’s patent. Microsoft was supplying master versions of Windows to foreign computer manufacturers who in turn made copies for installation on the foreign-made computers. The Court found that a copy of Windows qualifies as a “component” of the foreign-made computers, but since the “actual copies” are produced by the foreign manufacturers, Microsoft could not be found liable under Section 271(f).

Full Scope of Claim Must be Enabled: In Liebel-Flarsheim v. Medrad (Fed. Cir. 2007), the Court of Appeals for the Federal Circuit (CAFC) affirmed the district court’s invalidation of Liebel’s claims drawn to a front-loading fluid injector with a replaceable syringe. Liebel’s patent claims covered embodiments of an injector with or without a pressure jacket. However, the specification only discussed embodiments having a pressure jacket. The CAFC found that Liebel did not satisfy 35 USC Sect. 112, paragraph 1 because the specification failed to provide an enabling disclosure for injectors that did not have a pressure jacket.

Hatch-Waxman Term Extension Allowed:
In Merck v. HI-TECH (Fed. Cir. 2007), the Court of Appeals for the Federal Circuit (CAFC) held that term extensions provided under 35 USC Sect. 156 (Hatch-Waxman Term Extension) are applicable to terminally disclaimed patents. In fact, the court noted that if all the requisite conditions under 35 USC Sect. 156 are met the extension is mandatory, as evidenced by the statute’s “shall be extended” language.

Comprising the steps of” Does Not Make Each Step of a Process Claim Open-Ended: In Dippin’ Dots, Inc., et al. v. Mosey, et al. v. Esty, Jr., et al. (Fed. Cir. 2007), the Court of Appeals for the Federal Circuit (CAFC) was tasked with construing the transition phrase “comprising the steps of.” The claim at issue was directed to a process for making the well-known “Dippin’ Dots” ice cream product. The patentee claimed the process using the transition “comprising the steps of” followed by a recitation of six steps. One of the steps was directed to “freezing [the] composition into beads….” The patentee argued that because the open-ended transition “comprising” was used, the claim’s scope included processes that produced irregular shaped particles, as well as beads. The CAFC disagreed and noted that “the term ‘comprising’ does not reach into each of the six steps to render every word and phrase therein open-ended….” Instead, the transition “comprising” makes the process claim open-ended to the extent that later processes that include the six enumerated steps plus any additional steps would still infringe the original process.

Record Year for PCT Filings: The World Intellectual Property Organization (WIPO) recently announced that a record 145,300 PCT applications were filed in 2006. The United States led the way with just under 50,000 PCT applications filed, representing 34% of all PCT filings. Japanese applicants ranked second with 18.5% of the total applications, while Germany, the Republic of Korea and France rounded out the top five. The top applicants were Philips Electronics N.V. (Netherlands) (2,495 applications published), followed by Matsushita (Japan) (2,344), Siemens (Germany) (1,480), Nokia (Finland) (1,036), and Bosch (Germany) (962). The top technology areas for published PCT applications were telecommunications (10.5%), pharmaceuticals (10.4%), and information technology (10.4%).

USPTO Announces Patent Allowance Rate: Recently the U.S. Patent & Trademark Office announced its final numbers for fiscal year 2006. One interesting statistic was the patent allowance rate. The patent allowance rate is the percentage of applications reviewed by patent examiners that are approved to issue as a patent. For fiscal year 2006, the allowance rate was 54%, the lowest rate on record. The rate was much lower than many had previously estimated. Some had estimated an allowance rate as high as 90%, while others estimated a rate around 70%. This allowance rate may be an indication that the USPTO is toughening its examination of patent applications. However, the allowance rate at the USPTO is not nearly as low as the rate observed in the Japan Patent Office, which consistently remained around 30% for the past few years.

CAFC Interprets “About”: In the recent CAFC decision of Ortho-McNeil Pharm. v. Caraco Pharm., the court was tasked with construing the phrase “about 1:5.” Ortho’s patent was directed to a pain-relieving composition of tramadol and acetaminophen having a ratio of “about 1:5.” Caraco intended to make and sell the same composition, but at a ratio of 1:8.67. Ortho argued that Caraco’s ratio of 1:8.67 infringed it’s claimed “about 1:5” ratio. The CAFC disagreed. In construing the term “about 1:5,” the CAFC first looked at the intrinsic evidence. The court noted that the intrinsic evidence pointed to a narrow reading of the “about 1:5” limitation. Specifically, the court pointed out that the “about 1:5” limitation was “distinctly claimed and distinguished from other broader weight ratios in the patent.” In this case, the court reasoned that to give the distinctly claimed “about 1:5” ratio a broad interpretation could leave other claimed ratios meaningless. Furthermore, the court noted that the meaning of the term should be interpreted narrowly because Ortho “could easily have claimed a [broad] ratio range…but they did not.”

USPTO Statistics From FY 2006: The close of another fiscal year at the USPTO brings forth some interesting statistics. For instance, the number of new patent applications filed in FY 2006 rose to 443,652, up over 8% from the 409,532 applications filed in FY 2005. Despite the USPTO hiring over 1200 new patent examiners, the number of pending patent applications increased over 13% in the past year to 1,003, 884. According to the statistics, an applicant, on average, will not receive a first office action until nearly two years after their application is filed. Furthermore, the average total pendency of an application in the USPTO has risen to over two and a half years.

CAFC Clarifies Intent Requirement for Inducing Infringement:In DSU Medical Corp. v. JMS Co., LTD. (Fed. Cir. 2006), the CAFC, sitting en banc, addressed the intent required for inducing the specific acts that lead to patent infringement. Under 35 U.S.C. Section 271(b), “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” DSU argued that liability for inducing infringement attaches if it can be shown “that the inducer had knowledge of the acts alleged to constitute infringement.” The CAFC disagreed and held that inducement requires specific intent to encourage another’s infringement, or in other words, “that the alleged infringer’s actions induced infringing acts and that he knew or should have known his actions would induce actual infringements.”

"Secured” Does Not Mean "Permanently Secured": In Akeva v. Adidas-Salomon (Fed. Cir. 2006, Non-precedential), the CAFC upheld a district court’s claim construction that the term “secured” does not mean “permanently secured.” At issue were two patents, U.S. Patent Nos. 6,662,471 and 6,604,300, owned by Akeva directed to shoes having rotatable or detachable rear soles. Akeva sued Adidas for infringement of these patents based on Adidas’s shoes which have permanently fixed rear soles that do not rotate. The CAFC noted that the specifications of each patent disclose rear soles that are detachable or rotatable, but not permanently fixed. Thus, applying the rule of construction that claim terms are to be construed in light of the specification, the CAFC found that the term “secured,” as used in the ‘471 and ‘300 patents, could not be construed to mean “permanently secured.”

Newly Discovered Properties of Known Composition Are Not Patentable: In Abbott Labs v. Baxter Pharm. (Fed. Cir. 2006), the CAFC invoked the inherency doctrine to invalidate the asserted claims in Abbott’s U.S. Patent No. 5,990,176 (the ‘176 patent). Previously, Abbott had recalled its sevoflurane inhalation anesthetic due to degradation caused by the presence of Lewis acids. Subsequently, Abbott scientists found that a water-sevoflurane mixture would prevent the degradation reaction. This Lewis acid inhibiting composition was the subject of the ‘176 patent. Baxter argued that the ‘176 patent was anticipated by U.S. Patent No. 5,684,211 (the ‘211 patent), which disclosed a composition of water-saturated sevoflurane, but did not disclose that the composition would resist Lewis acid degradation. In its discussion, the CAFC noted that “[a] prior art reference may anticipate without disclosing a feature of the claimed invention if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Since a water-sevoflurane mixture has the property of resisting Lewis acid degradation, the composition of the ‘211 inherently possessed this property. Thus, the CAFC agreed with Baxter and found that the ‘176 patent was anticipated by the ‘211 patent.

CAFC Broadly Construes 35 U.S.C. Section 251: In Medrad v. Tyco (Fed. Cir. 2006), Medrad challenged the district court's interpretation of 35 U.S.C. Section 251 that led to a finding of invalidity of its '602 reissue patent. The relevant language of Section 251 provides that a patent may be reissued when "the patentee claim[s] more or less than he had a right to claim." Medrad failed to file a required supplemental reissue declaration in prosecuting its first reissue patent, which led to the filing of a second reissue application resulting in the '602 patent. Tyco argued that the basis for the second reissue was defective because the error did not occur in the actual claims of the patent, and therefore, the '602 patent was invalid. However, the CAFC interpreted the relevant language as "encompass[ing] any error that causes a patentee to claim more of less than he had a right to claim," with no requirement that the error has to appear in the claim language. Thus, the CAFC's interpretation of Section 251 seems to suggest that any error resulting in an invalid patent may be corrected through reissue.

CAFC Finds Double Recovery in Damages Award: Aero Products International, Inc. (Aero) owns a patent directed towards an inflation control for air mattresses that it markets under the "One Touch" registered trademark. Aero sued Intex Recreation Corp. (Intex), and others, for patent and trademark infringement. A jury found that defendants infringed Aero's patent and trademark, and the court awarded damages in the amount of $6.9 million, representing $5.9 million for patent infringement and $1 million for trademark infringement. On appeal, the CAFC vacated the trademark award based on double recovery for the same injury. Aero argued that infringement of its patent and trademark constituted two separate compensable wrongs. However, the CAFC noted that Aero did not provide any evidence to support its trademark damages other than sales of the infringing Intex mattresses, which were also used to prove patent infringement damages. The CAFC concluded that since Aero was fully compensated for defendant’s patent infringement based on the sales of the infringing mattresses, it could not also recover trademark damages based on those same sales.

Expert Testimony Provides Motivation to Combine References In Alza Corp. v. Mylan Labs., Inc. (Fed. Cir. 2006), the Court of Appeals for the Federal Circuit (CAFC) affirmed the district court's finding that Alza's patent (U.S. Patent No. 6,124,355) for an extended release formulation of the anti-incontinence drug oxybutynin was invalid on obviousness grounds. This case turned on whether a person having ordinary skill in the art would have been motivated to combine prior art references to arrive at the claimed invention and whether they would have had a reasonable expectation of success in doing so. Alza argued that back in 1995, there was no reasonable expectation that oxybutynin would be absorbed in the colon, and thus no motivation to produce the extended release formulation. Mylan presented evidence in the form of expert testimony that there was a general understanding in 1995 that oxybutynin would be absorbed in the colon based on its lipophilicity. The district court cited Mylan's expert's testimony in support of its conclusion that "a person of ordinary skill in the art in 1995 would reasonably expect oxybutynin to absorb in the colon [and] have a reasonable expectation of success of producing a 24 hour oxybutynin formulation meeting the claims of the '355 patent." Under a clear error standard, the CAFC agreed noting that the evidence, viewed as a whole, clearly demonstrated that one with skill in the art would have perceived a reasonable likelihood of success and would have been motivated to combine the prior art to achieve the claimed invention.

Reissue Recapture Rule Uses Objective Standard: In Kim v. ConAgra Foods, Inc. (Fed. Cir. 2006), the Court of Appeals for the Federal Circuit (CAFC) clarified the standard to be used when determining whether a patentee has violated the rule against recapture. The recapture rule provides that a reissue applicant cannot regain subject matter that he surrendered during prosecution of the original patent. A surrender of subject matter can occur by amendments or arguments made to overcome prior art rejections. Relying on previous CAFC case law, the district court in this case suggested that a "patentee's subjective intent should be evaluated in determining whether the patentee surrendered subject matter." The CAFC dismissed the district court's suggestion by noting that the standard to determine whether subject matter has been surrendered is an objective one, specifically "whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee's amendment or argument was to overcome prior art and secure the patent." The CAFC further noted that an objective standard is proper because it gives the public a better understanding of when they can rely on a patentee's admissions during patent prosecution.

Federal Circuit Invalidates Patent Under 35 U.S.C. 112, Paragraph 4: In Pfizer v. Ranbaxy (Fed. Cir. 2006), the Court of Appeals for the Federal Circuit (CAFC) for the first time invalidated a patent for failure to comply with 35 U.S.C. 112, Paragraph 4. At issue in the case were two of Pfizer's patents covering the world's largest selling drug, Lipitor ® (atorvastatin). The district court found that Pfizer's patents were valid and infringed by Ranbaxy. On appeal, however, the CAFC found that one of Pfizer's patents (the '995 patent) was invalid under Section 112, Paragraph 4. Under Paragraph 4, a dependent claim is required to incorporate by reference all the limitations of the parent claim to which it refers and also specify a further limitation. In this case, Pfizer only asserted claim 6 of the '995 patent. Claim 6 was directed to "the hemicalcium salt of the compound of claim 2." Claim 2 was dependent on claim 1, which recited the following compounds: (1) atorvastatin acid; or (2) atorvastatin lactone; or (3) pharmaceutically acceptable salts thereof. Claim 2, however, only recited atorvastatin acid. Thus, Ranbaxy argued that claim 6 did not satisfy Paragraph 4 because it did not import all of the limitations of claim 2 and specify a further limitation of the subject matter. The CAFC agreed with Ranbaxy.

Transitional Phrase "Consisting Of" Does Not Exclude Impurities: The Court of Appeals for the Federal Circuit (CAFC) affirmed a district court's finding that Energy & Environmental International (EEI) infringed two of Conoco's patents related to friction reducing agents that are introduced to oil and gas pipelines to make pumping operations more efficient. Conoco's '937 patent contained a "consisting of" transitional phrase that recited "water and water-alcohol mixtures" for use as suspending mediums. The transitional phrase "consisting of" is a term of art in patent law that restricts the claim by excluding any element, step, or ingredient not specified in the claim. However, the transition "consisting of" has been interpreted to include impurities ordinarily associated with the component. EEI argued that its accused process did not infringe Conoco's patent because its suspension medium included a non-alcohol, which avoids the key limitation. The district court found as a matter of fact that non-alcohol was an impurity that was normally associated with industrial alcohols to reduce tax liability. The CAFC, reviewing the case for clear error, found that there was substantial evidence to support the district court's findings.

Supreme Court to Address Patentability Obviousness Standard: Recently, the Supreme Court granted KSR's writ of certiorari and will address questions related to the obviousness standard for patentability. KSR petitioned the Supreme Court after the CAFC decided Teleflex v. KSR - holding that when combining two or more references in an obviousness finding, there must be a suggestion or motivation to combine the teachings. In KSR, the Supreme Court will answer the question of whether a claimed invention cannot be held "obvious," and thus unpatentable under 35 U.S.C. S 103(a), without proof of some "teaching, suggestion, or motivation" that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed. Obviousness issues are raised in nearly every patent case prosecuted before the USPTO, as well as during infringement litigation. Thus, the impact of the Supreme Court's decision in this case will be felt across all spectrums of patent practice.

Sale of Patented Device Does Not Exhaust Method Claims: In LG Electronics (LGE) v. BizCom (Fed. Cir. 2006), the Court of Appeals for the Federal Circuit (CAFC) reversed the trial court's holding that LGE's system claims were exhausted and affirmed the trial court's holding that the exhaustion doctrine did not apply to LGE's method claims. LGE sued various Intel customers for infringement of several of its patents related to personal computers. Under a licensing agreement, Intel was authorized to sell the LGE products subject to the condition that the products would not be combined with non-Intel products. Intel, in fact, informed the defendants that combining the licensed products with non-Intel products was not covered under its licensing agreement. The CAFC noted that "an unconditional sale of a patented device exhausts the patentee's right to control the purchaser's use of the device thereafter." In this case, however, there was a condition, i.e., Intel's licensed products were not to be combined with non-Intel products. Thus, since there was an express condition related to the licensing agreement, the exhaustion doctrine did not apply. The CAFC reiterated its position on the exhaustion doctrine as related to method claims: "the sale of a device does not exhaust a patentee's rights in its method claims."

Claims Lacking Antecedent Basis Not Automatically Subject To Indefiniteness Rejection: The Court of Appeals for the Federal Circuit (CAFC) in Energizer Holdings v. ITC(Fed. Cir. 2005) held that the failure to follow strict rules in drafting patent claims will not automatically render the claims invalid for indefiniteness under 35 U.S.C. §112 2. The International Trade Commission (ITC) previously found the claims of U.S. Patent No. 5,464,709 ('709) invalid on the ground that the claim term “said zinc anode” lacked antecedent basis in the claim, and that the claims were unclear or ambiguous. However, the CAFC reversed the ITC, emphasizing the point that claim definiteness is analyzed in light of the prior art, and as it would be interpreted by one possessing the ordinary level of skill in the pertinent art. In reversing the ITC, the CAFC held that "when the meaning of the claim would reasonably be understood by persons of ordinary skill when read in light of the specification, the claim is not subject to invalidity upon departure from the protocol of 'antecedent basis."

Blackberry Dispute Highlights Different Infringement Standards For Different Claims: The Supreme Court recently declined to review the Federal Circuit’s ruling that the Blackberry email device, produced in Canada, infringed a U.S. Patent held by NTP, Inc. Due to the Supreme Court’s refusal to hear this appeal, the law as it pertains to “system” claims practiced only partially within the U.S. remains the same. Therefore, a patent’s “system” claims can be infringed where only some components of the accused system are practiced within the United States. The Federal Circuit held that use of the claimed system under 35 U.S.C. § 271(a) is the location where beneficial use of the system is obtained. However, the Federal Circuit also highlighted the requirements to show infringement for “method” claims is different, holding that in order to infringe a “method” claim, the plaintiff must show that all steps for the claimed method are carried out within the United States.

No Inference of Deceptive Intent in Failure to Cite Reference: In Warner-Lambert Co. v. Teva Pharmaceuticals USA, Inc., a federal district court properly refused to infer an intent to deceive from the failure of the applicants to disclose to the patent examiner prior art showing a high degree of relevance to the materiality of the invention. In finding the district court’s decision of no inequitable conduct reasonable, Judge Alvin Shall wrote, “[D]etermining whether there was intent to deceive is still a contextual exercise, and materiality does not presume intent, which is a separate and essential component of inequitable conduct.”

Submission of Inaccurate Video Information is Inequitable Conduct: In Frazier, et al. v. Roessel Cine Photo Tech, Inc., et al. in which an applicant submitted video evidence of the invention during the prosecution of the patent, the patent was later held unenforceable. In the case, the applicant submitted video purportedly shot with the invented lens to show novelty, but in reality the video was shot by another lens. In order to find inequitable conduct, the court found materiality and an intent to deceive the USPTO.