Patent Potpourri

Avid “Jeopardy!” watchers (like me) might remember the “Potpourri” category, where the clues could be on any subject. This blog post is kind of like that. The remaining 3 Federal Circuit cases from last week tackled a spectrum of topics, so it’s a great grab bag of patent-related issues.

Supersize Me

Did you know that McDonald’s® largest hamburger patty is 500 times larger today than the original 1955 hamburger patty? If you order a regular hamburger, though, you don’t expect to get something the size of a Big Mac®. But, they’re both still hamburgers, right? Substitute “microelectrode” for “hamburger,” and you’ve got the main question in this case.

Roche Diagnostics Operations, Inc. v. Lifescan Inc., Nos. 2010-1439, -1539 (Fed. Cir. Jan. 25, 2012) (Judges Bryson, Clevenger, and Prost) (nonprecedential)

The patents involved in the case cover test strips that people with diabetes can use to test blood glucose levels. Here’s how they work: when blood mixes with enzymes on the strip, electric charges are released. These charges flow back and forth between electrodes on the strip, creating an electric current. The higher the glucose levels, the higher the electric current.

The main issue is about the size of the electrodes. At first, Roche said that its patent covers two types of electrodes: “micro” electrodes that are up to 100 micrometers wide and “macro” electrodes that are up to 1000 micrometers wide. Lifescan agreed with the size limits but argued that the patent only covers microelectrodes. The district court agreed with Lifescan and construed “electrode” as “microelectrode having a width of 15 micrometers up to approximately 100 micrometers.”

Then Roche asked the district court to reconsider, taking a different approach. Roche conceded that the patent only covered microelectrodes, but said microelectrodes can actually be up to 1000 micrometers wide. That’s kind of like saying a regular McDonald’s® hamburger can be the same size as a Big Mac® but still be on the dollar menu. The district court didn’t bite into the new argument, saying, “It will be interesting to see what [the Federal Circuit has to] say [about it].” (See Roche opinion at 7.)

The Federal Circuit didn’t have anything to say – yet. The court said that, since this is a new argument, the record is too thin to allow it to address this argument for the first time on appeal. So, the Federal Circuit kicked the case back to the district court to decide what, if any, evidence should be added to fatten up this argument. We’ll stay tuned.

Feel free to read the Roche opinion.

Don’t You Forget About Me

Did you watch the Super Bowl on Sunday on a big LCD TV? If so, it might be nice to take a moment to think about the inventors who developed the technology that makes your crystal clear display possible—all of the inventors. That’s what Dr. Falana wanted in this lawsuit: recognition.

Falana v. Kent State University, No. 2011-1198 (Fed. Cir. Jan. 23, 2012) (Judges Linn, Prost, and Reyna)

In 1997, Dr. Doane at Kent Displays, Inc (KDI), Kent State’s spin-off technology company, hired a professor, Dr. Seed, to develop chiral additives (chemical compounds that improve the clarity, contrast, brightness, and other features of LCD TVs) that were not affected by temperature changes. Dr. Seed had several obligations, so he hired Dr. Falana to work on the project as well. As part of this project, Dr. Falana developed a process for synthesizing chemicals that created a new type of compounds. Using this process, Dr. Falana developed a chemical compound called “Compound 7,” which was a major step in KDI’s development of temperature-independent chiral additives. In September 1999, Dr. Falana resigned to take another position.

Dr. Seed then used Dr. Falana’s process to develop “Compound 9,” which is also within the new type of compounds that Dr. Falana’s synthesis protocol created. Compound 9 had greater temperature independence than Compound 7 and met the goals of the project. On June 9, 2000, KDI and Kent State filed a patent application for Compound 9 that listed Drs. Doane, Seed, and Kahn (who had conducted the testing of the compounds), but not Dr. Falana. The patent specification includes the protocol that Dr. Falana developed, and it’s the only method used to make the compounds claimed in the patent. The district court believed that Dr. Falana’s contributions in developing the protocol justifies adding him as a joint inventor.

The Federal Circuit agreed. According to the court, even though Dr. Falana didn’t develop Compound 9 itself, Compound 9 couldn’t have been made without Dr. Falana’s protocol. The takeaway holding from the court is that “a putative inventor who envisioned the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus.” Stated more simply, in the chemical realm, inventors get inventorship credit for figuring out how to make a new type of chemical compound.

In another interesting note, the Federal Circuit, like the district court, took the other inventors’ statements into account to determine if Dr. Falana went above and beyond ordinary skill in the art (basic chemistry) when he came up with the synthesis process. Dr. Doane described Dr. Falana’s “outstanding performance” as leading to “a patent we are currently preparing” in a letter to Immigration and Naturalization Services. KDI also called Compound 7 a “great improvement.” The court didn’t buy the inventors’ later comments during litigation that the protocol was “old chemistry.”

Ultimately, the Federal Circuit thought that even if Dr. Falana didn’t play the whole game, he should still get credit for helping the team get to the Super Bowl (which you can watch on your high-definition LCD screen).

Here’s the Falana opinion, if you’re interested.

Shed a Little Light

Mr. Krippelz cruised away from the district court with a $56 million judgment, but the Federal Circuit brought him to a screeching halt by declaring his patent invalid.

Krippelz v. Ford Motor Co., No. 2011-1103 (Fed. Cir. Jan. 27, 2012) (Judges Newman, Prost, and O’Malley)

The patents in this case cover lights that are attached to the bottom of side view mirrors. The lights shine downward and are designed to reflect water and dust without distracting drivers. Mr. Krippelz got a patent for these lamps in 1991. He tried to license the technology to Ford, but Ford wasn’t interested. Then, in 1997, Ford began putting “puddle lights,” similar to Mr. Krippelz’s patented lights, on several of its cars. Mr. Krippelz sued for patent infringement.

Ford presented a 1953 French patent (“DuBois”) that wasn’t included in the prosecution of Mr. Krippelz’s patent and, according to Ford, invalidated Mr. Krippelz’s patent. After a long and winding road of procedural history at the U.S. Patent and Trademark Office (PTO) and the district court, a jury found Mr. Krippelz’s patent valid and infringed. Ford asked the district court to overrule the jury and grant judgment as a matter of law (JMOL) that the DuBois patent anticipates Mr. Krippelz’s invention. The district court denied that request, saying that DuBois didn’t include two elements that are critical to the Krippelz lamp: (1) a conical beam of light, which is (2) adjacent to the window.

The Federal Circuit told the district court to turn the car around. In the Federal Circuit’s view, the district court interpreted DuBois too literally. First, the court rejected Krippelz’s expert’s testimony that a conical beam of light couldn’t illuminate a rectangle, and the DuBois patent references a rectangle. The second element is based on this image from the DuBois patent (keep in mind, that patent is from 1953):

Figure Example in Patent Potpourri

The district court sided with Mr. Krippelz’s expert, who said the pictures only show that the lamps “might be” adjacent to the side window, but they weren’t “clearly” adjacent.

The Federal Circuit, however, said that someone looking at these pictures would understand that the lamps were adjacent to the window. Since the district court didn’t have enough evidentiary gas to get Mr. Krippelz to a valid patent, the Federal Circuit reversed the district court’s conclusion.

This is a fairly surprising result, since both the Board of Patent Appeals and Interferences (BPAI) (in a reexamination proceeding) and a jury found the patent valid. Patents are presumed valid. This means that the party accused of infringement has to prove that that the patent is not valid by “clear and convincing evidence.” The clear and convincing standard is in between “preponderance of the evidence”—the typical standard in civil law suits —and “beyond a reasonable doubt,” which, as all you “Law & Order” watchers know, is the standard for most criminal cases. Put another way: if a preponderance means the judge or jury is 50.1 % sure, and beyond a reasonable doubt is 99+% sure, then clear and convincing is somewhere in the middle, around 75% sure.

Why did the Federal Circuit take a U-turn? Well, a couple of factors might have influenced the court. First, the DuBois reference didn’t come up in the original patent prosecution or the reexamination. So, neither the examiner nor the BPAI had the chance to consider Krippelz’s invention in light of DuBois. Second, the district court’s order denying JMOL put a lot of focus on statements from Mr. Krippelz’s expert. The Federal Circuit, however, didn’t think that the expert’s statements had any proof to back them up. Based on its own assessment of the patent, the panel didn’t believe that any reasonable juror could find that Krippelz’s patent is valid.

Does this mean the members of the Krippelz jury weren’t reasonable? Read the Krippelz opinion, if you like, and decide if you think the Federal Circuit swerved too hard with its abrupt turnaround.