St. Clair Intellectual Property Consultants, Inc. v. Canon Inc., Nos. 2009-1052, 2010-1137, −1140 (Fed. Cir. Jan. 10, 2011)
An interesting precedential opinion on claim construction for four patents with a common specification that was originally filed in 1990. Plaintiff sued camera manufacturers for infringement on the basis that users could save in different file formats. The majority limited the language of the claims to the invention described in the specification, which addressed the problem of saving on different computer architectures, i.e., PC vs. Apple computers. Although the spec did differentiate file formats, in context the formats were machine-specific, and that’s what the Court latched onto. Judge Moore, in dissent, would have given the claims at issue their (broader) plain meaning.
Author’s note: We often forget just how different Apples and PCs were back in the early 1990’s, because there’s little trouble now transferring files back and forth between Macs and PCs. I actually worked on a project at the time porting software from a Mac to Windows 3.0. Because Motorola processors and Intel processors stored numbers differently (big endian vs. little endian if you’re interested), in order to make old data usable, we had to write a routine to read in two-byte numbers from the Mac file and reverse the order of the bytes before writing them back out. Those were the days…
Read the original opinion here.
Ilor, LLC v. Google, Inc., Nos. 2010-1117, 1172 (Fed. Cir. Jan. 11, 2011)
“[S]imply being wrong about claim construction should not subject a party to sanctions where the construction is not objectively baseless.” (Slip op. at 14.)
The plaintiff sued Google for allegedly infringing a method of “adding a user selectable function to a hyperlink” with its Google Notebook product. In Google’s product, a right click on a hyperlink brought up a context menu with an option to save the URL for later. On motion for preliminary injunction, the meaning of the claim term “the toolbar being displayable based on a location of a cursor in relation to a hyperlink” was disputed. Google said “being displayable” only applied to toolbars that popped up automatically when the hyperlink was moused over, not toolbars that appeared in response to a mouse click. The District Court and the Federal Circuit agreed.
On remand, the District Court awarded Google attorneys’ fees under 35 U.S.C. § 285, holding that Ilor’s original claim construction position was objectively baseless and taken in bad faith.
The Federal Circuit reversed, holding that Ilor’s construction, while wrong, wasn’t unreasonable. In pointing out that neither the specification nor the prosecution history precluded Ilor’s construction, the Court noted that, “As with many cases, this suit presents a routine question of claim construction in which the issues are often complex and the resolutions not always predictable. As this court has recognized, patent claim construction can be difficult. . .” (Slip op. at 13.)
Author’s note: I can definitely agree with that sentiment.
Read the original opinion here.
Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C., No. 2010-1091 (Fed. Cir. Jan. 11, 2011)
A case on federal jurisdiction under section 1338.
Warrior Sports sued its former patent attorney for malpractice in the Eastern District of Michigan. It seems that in an earlier patent infringement suit, the defendant accused the attorney of inequitable conduct, and the plaintiff ended up settling the case. In a federal malpractice claim, the plaintiff alleged that its former attorney’s conduct that led to the inequitable conduct defense forced it to settle its infringement case. The District Court dismissed for lack of subject matter jurisdiction, holding that the malpractice claim arose only under state law.
The Federal Circuit reversed, holding that the case did arise under patent law. The Court found that in order to show malpractice, the plaintiff would need to show that it would have won its infringement case. (That is, if the plaintiff would have lost anyway, the inequitable conduct defense caused no injury.) That implicated patent law, meaning that the case arose under federal law.
Author’s note: It’s tough to know what to make of the inequitable conduct charge, but, according to the opinion, the attorney failed to pay a maintenance fee for the patent during the litigation attempting to enforce it. Generally speaking, that’s a bad idea.
Read the original opinion here.
Pupols v. U.S. Patent & Trademark Office, No. 2010-1245 (Fed. Cir. Jan. 12, 2011)
A per curiam affirmance of the dismissal of a pro se complaint against “the USPTO, Topco Sales, Incorporated (‘Topco’), ‘Martian Tucker Sr. formerly in the USA now in China Republic,’ and China.” In his amended complaint, he “requested the ‘Supreme Court & Senate Judicial Oversight Committee to resolve any error in oversight the USPTO Agents may have had during review of their careers & Plaintiffs Patent Application.’” He was suing for 7.5 billion dollars.
Read the original opinion here.