Grinding Rocks & Gliding Banana Vacuums • 2011 09 12 GrindingRocksBananaVacuums
Sometimes the Federal Circuit decides that it has a better reason to get rid of a patent than the reason given by the U.S. Patent and Trademark Office (PTO). But when it uses a new ground for rejection, it shortcuts the process that allows a patent applicant an opportunity to respond to a rejection. In the Aoyama case, the court did it, again. Bad practice!

On a lighter note, have you ever wondered how many carpets a person has to clean to be considered a carpet-cleaning expert? Answer: none. Read on to learn how you too can obtain this credential.

In re Aoyama, No. 2010-1552 (Fed. Cir. Aug. 29, 2011) (Judges Newman, Gajarsa, and Linn)

This case shows how import it is to describe, in a patent, different ways in which claimed functions might be performed. This patent applicant doesn’t get his patent because the written description section of the application doesn’t identify parts that perform a data-transfer task.

It also shows that the Federal Circuit will sometimes use a new argument that was never discussed by the Board of Patent Appeals and Interferences (BPAI) to get rid of patent claims. I think this is a dangerous practice, and the court shouldn’t do it. Judge Newman agrees.

Shipping Supplies

The system claimed in the patent application seems pretty simple. Here’s one of the claims.

A system for supply chain management comprising:

an order controller system including reverse logistics means for generating transfer data; and

a warehouse system receiving the transfer data and generating shipping data.

The PTO rejected the claims because of another application that seems to contain everything this one is trying to cover. When determining what “reverse logistics means for generating transfer data” would cover, the PTO decided that this is a means-plus-function limitation and the specification does not provide any information about the structures or parts that would perform this function. So it considered the description associated with the generation of shipping data to understand generation of transfer data, and concluded the “reverse logistics means” should be interpreted broadly.

The Federal Circuit concluded, however, that the descriptions relating to generation of shipping data could not be used to understand other aspects of the claims. For means-plus-function claims involving computers, the patent must disclose enough of an algorithm to give sufficient structural information for the claims. This can be accomplished using a flow chart, computer code, or any other method that discloses sufficient structural information.

Here, the flowchart did not provide any structure relating to the generation of transfer data, only the desired results. A patent needs to show you how to achieve those results, so the court concluded that these claims are unpatentable because they are indefinite, and are not capable of being construed because critical information is missing from the application and claims.

This opinion is unusual because claims are rarely deemed indefinite. It’s also unusual because the court used a different statute to reject the claims on appeal. Like the controversial In re Comiskey 2007 decision, the court used a new argument it created to uphold the PTO’s decision, until the court acted en banc to pressure the panel to send this new rejection ground back to the PTO for consideration. Unlike Comiskey, here, the applicant gets the opportunity to amend the claims under the PTO’s procedures but the case isn’t going back to the PTO for an initial decision on this rejection. Weird result. Seems like the Federal Circuit is doing the PTO’s job, again.

Shifting Sands

Judge Newman took the majority to task for applying a new rejection to the patent application on appeal. The applicant never had the opportunity to respond to this new rejection, yet now is subject to a final judgment that he doesn’t get a patent on these claims. She would send the indefiniteness issue back to the BPAI, so that it can consider the issue first and the applicant can respond to the view that his claims are indefinite.

I’m with Judge Newman. The Federal Circuit should consider the grounds for rejection that are appealed to it. In this case, and in the Comiskey 2007 decision, it acted like the agency board, not an appellate court.

You can find the Aoyama case here.

AIA Engineering Ltd. v. Magotteaux International S/A, No. 2011-1058 (Fed. Cir. Aug. 31, 2011) (Chief Judge Rader, Judges Lourie and Bryson)

Magotteaux manufactures products for grinding rock and other similar materials and sells them to companies in the cement, mining, and recycling businesses. Magotteaux took its patent related to these products back to the PTO to broaden the claims (this is called a “reissue” proceeding). During that process, an anonymous party filed a paper called a protest with the PTO, and argued that certain changes to the claims improperly recaptured technology that was given up during prosecution of an earlier patent application in the same family. The examiner disagreed with the protestor, however, and allowed the revised claims.

After the PTO granted the reissue patent, AIA sued Magotteaux in Tennessee. AIA argued that it did not infringe this patent with its wear, corrosion, and abrasive-resistant products and services for the cement, mining, and thermal power industries. Magotteaux responded by bringing a subsidiary of AIA into the case and accusing it of infringing the patent.

The district court decided that Magotteaux was trying to cover technologies that it had given up during the claim-broadening process and the claims are therefore invalid under 35 U.S.C. § 251. The Federal Circuit disagreed—the district court mis-construed the term “solid solution” and that error led to its determination that the claims impermissibly recaptured technologies that were given up during prosecution. It also noted that the switch from the transitional phase “consisting of” to “comprising” during prosecution, though broadening, does not recapture technology that was previously surrendered during prosecution. (Note: the court also considered expert testimony and other “extrinsic evidence” to support its construction, which is unusual.)

The Federal Circuit reversed the invalidity ruling, and sent the case back to the district court. In an unusual move, it also awarded costs to the patent holder, Magotteaux.

You can find the AIA decision here.

Harari v. Lee, Nos. 2010-1075, -1076 (Fed. Cir. Sept. 1, 2011) (Judges Prost, Moore, and O’Malley)

This decision tackles the issue of whether an inventor can rely on the written description of a technology in a different (related) patent application to show that he invented something first.

A Serial Interferer

Harari asked the PTO to start two patent interferences with three patents owned by Micron Technology. The PTO holds patent inferences to determine who should have the rights to certain technologies that two or more applicants claim they invented first.

But Harari had a problem with his patent applications relating to reading, writing, and erasing computer memory. He needed to rely on certain language in another application in the same family (the ’579 application) to support his position that he was entitled to the invention covered by the Micron patents. Unfortunately, his applications involved in the interference do not cite to the ’579 application, they reference a different application.

This problem occurred because Harari’s interference applications are merely photocopies of earlier applications he had filed at the PTO, so the family relationships in the text of the documents has not been updated. This means that the description of the applications relied on and incorporated to support Harari’s claims involved in the interference is incorrect.

This is not the first time the Federal Circuit has considered Harari’s patent applications. Before this appeal, it decided that language in a related patent application adequately identified another one (again, the application reference problem), so the information in the second application could be used to support his position.

You Need the Support

Micron asked the BPAI to dismiss both interferences because Harari’s patent claims are not supported by the patent’s written description. Harari argued that he has incorporated the information in the ’579 application in his interference applications, and that information provides additional written description to support these claims.

The BPAI had a problem with Harari’s language that attempted to incorporate the ’579 application. The Federal Circuit didn’t. The Federal Circuit decided that he had incorporated the entire ’579 application, even though later in the same document, the patent application expressly incorporated only a portion of it. Nothing prevents a patent drafter from discussing incorporation of another application’s contents twice.

Micron also argued that Harari doesn’t get the benefit of the ’579 application’s content because under the correct claim construction, that application also fails to describe one aspect of the claims.  Specifically, Micron argued that the BPAI’s construction of the claim term “a bit line” as covering more than one bit line is wrong.

The Federal Circuit agreed that the BPAI mis-construed the claim term, and concluded that the claim requires that a single bit line activate several memory cells. This claim construction decision drives the written description conclusion, too. Since the ’579 application describes selecting a single memory cell and there is no disclosure of a single bit line activating multiple memory cells, it does not provide written description support for Harari’s claims in the first interference. This means that Micron wins and retains its patent claims involved in that interference.

The court returned the second interference to the BPAI. When confronted with the question of whether the ’579 application’s language supports Harari’s claims in the second interference, the court thought it needed more facts to make this determination.

You can read the Harari opinion here.

Mytee Products, Inc. v. Harris Research, Inc., Nos. 2010-1207, -1226, -1457 (Fed. Cir. Sept. 2, 2011) (Judges Bryson, Mayer, and Gajarsa) (nonprecedential)

Yes, even vacuums (and their appendages) can have funny names. This patent case focuses on the “Banana Glides” vacuum-head attachments.

The Banana Glides Difference

Harris owns a carpet cleaning franchise and sells vacuum heads with its patented technology to its franchisees. Its franchisees use these vacuum heads as their primary tool for cleaning carpets, and consider them a way to distinguish their services from the competition.

Mytee sued Harris, arguing that Harris’s patents covering these attachments are invalid and that Mytee’s vacuum attachments do not infringe them.

Mytee asked the Federal Circuit to consider the question of whether two documents disclose apertures, which are in the patent claims. It argued that these documents invalidate Harris’s patents because they disclose the entire invention. In this context, apertures are holes or openings that serve as liquid extraction nozzles. The Federal Circuit agreed with the district court that neither reference discloses a hole though which liquid was pulled. In fact, one of the documents discusses a vacuum head attachment that is used to clean dandruff or loose bits of hair from the scalp. Huh? What kind of vacuum is that? Sounds like one I don’t want to use when I clean my house.

So Mytee then argued that this scalp vacuum could pull fluid through the aperture (let’s pretend that you just shampooed your hair?), so it inherently meets that requirement. Still, no ball game. Mytee tried to apply a test used during the patent prosecution process to an issued patent that is being analyzed during litigation. Different tests are applied in these contexts. Also, the court decided that it walked away from this argument when it proposed a functional definition for the aperture limitation.

So if you make a strategic choice in the claim construction phase, you may be stuck with it later in the case.

How Many Carpet Cleanings Make You an Expert?

Next, Mytee asked the court to block a Harris expert from testifying or being relied on in support of its case. But the court decided that someone doesn’t need to have hands-on carpet cleaning experience to act as an expert on this technology. A person with a degree in electrical engineering and experience prosecuting patents on mechanical devices can qualify as an expert. (Note: Mytee had one of these experts too, and the court noted that fact when denying its request.)

The Federal Circuit also decided that Mytee’s obviousness case was properly kicked out early by the district court, because it failed to make more than conclusory assertions, gross generalities, and unsupported assumptions through counsel about the obviousness issue (no expert testimony supported its position).

Finally, Mytee tried to rid itself of the injunction that the district court imposed on it. It complained that the evidence that Harris would be irreparably harmed by its activities was insufficient to support that injunction. Mytee also argued that it does not directly compete with Harris, and Harris did not loose profits because of Mytee’s activities.

The Federal Circuit did not get rid of the injunction. Harris’s franchisees rely on its patented technology to get ahead in the market place, and that fact was good enough for the appellate court to stick with the injunction.

You can find the Mytee opinion here.