A P R I L 2 0 0 5 Last The Federal Circuit month at Month at a Glance § 271(F)(1) PERMITS PATENTEE TO INCLUDE IMPROPER TO IMPOSE NUMERICAL MICROSOFT’S FOREIGN SALES IN ROYALTY CONSTRAINT ON CLAIM TERM AWARD “SUBSTANTIALLY” The language and history of § 271(f)(1) as well as Claim term “substantially flattened surfaces” is precedent protecting software inventions supports not ambiguous, and Court does not require a holding that § 271(f)(1) “components” include expert testimony to construe it. Playtex Prods., software code on golden master disks used to Inc. v. Procter & Gamble Co. , No. 04-1200 manufacture abroad. Eolas Techs., Inc. v. (Fed. Cir. Mar. 7, 2005) . . . . . . . . . . . . . . . . . .6 Microsoft Corp. , No. 04-1234 (Fed. Cir. Mar. 2, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1 RIVETS ARE NOT “RELEASABLE FASTENERS” Rivets used on in-line roller skates could not be VALIDITY OF CERTAIN BUSINESS-METHOD easily removed and replaced and, therefore, PATENTS AFFIRMED do not serve as claimed releasable fasteners. On-line purchase procedures found to infringe. V-Formation, Inc. v. Benetton Group SpA , MercExchange, L.L.C. v. eBay, Inc. , No 03-1600 No. 03-1408 (Fed. Cir. Mar. 15, 2005) . . . . . . .7 (Fed. Cir. Mar. 16, 2005) . . . . . . . . . . . . . . . . .2 SEMICONDUCTOR-PROCESS PATENTS NOT COURT ORDERS NEW TRIAL AS SANCTION INFRINGED FOR LITIGATION FRAUD Statements by expert, inventor, and Chief Washington, DC Plaintiff’s and attorney’s failure to disclose assign- Technology Officer all support court’s claim 202.408.4000 ment of patent during litigation leads to sanction construction. ASM Am., Inc. v. Genus, Inc. , of vacated judgment of infringement and new No. 04-1211 (Fed. Cir. Mar. 16, 2005) . . . . . . .8 trial. Schreiber Foods, Inc. v. Beatrice Cheese, Inc. , Atlanta, GA 404.653.6400 No. 04-1279 (Fed. Cir. Mar. 22, 2005) . . . . . . .3 MATERIAL FACTS EXIST CONCERNING PRESENCE OF CLAIMED MEANS-PLUS- DISPUTE OVER TNF-BP PROTEIN CONTINUES FUNCTION LIMITATION IN ACCUSED SYSTEM Cambridge, MA Questions of inventorship and ownership require “All elements rule” and “specific exclusion” 617.452.1600 remand after SJ. Israel Bio-Eng’g Project v. principle do not permit an unmounted Amgen Inc. , No. 04-1153 (Fed. Cir. Mar. 15, microcomputer to be equivalent to a Palo Alto, CA 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4 mounted one. Asyst Techs., Inc. v. Emtrak, Inc. , 650.849.6600 No. 04-1048 (Fed. Cir. Mar. 22, 2005) . . . . . . .9 UNADJUDICATED COUNTERCLAIM “PAUSES” APPEAL COURT’S CLAIM CONSTRUCTION LEAVES MRI Reston, VA Unadjudicated invalidity counterclaim after SJ PATENT CLAIMS INVALID 571.203.2700 of noninfringement leaves Federal Circuit with It is entirely proper to consider the functions of an no jurisdiction. Pause Tech. LLC v. TiVo, Inc. , invention in seeking to determine the meaning of Brussels No. 04-1263 (Fed. Cir. Mar. 14, particular claim language. Medrad, Inc. v. MRI + 32 2 646 0353 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5 Devices Corp. , No. 04-1134 (Fed. Cir. Mar. 16, 2005) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .9 PROSECUTION HISTORY RESTRICTS CLAIM Taipei + 886 2 2712 7001 SCOPE COURT CLARIFIES CLAIM CONSTRUCTIONS Arguments distinguishing prior art restricts claim FOR HIP-JOINT PROSTHESIS PATENT term “single unitary part” from including multiple Court finds that phrase “transverse section Tokyo pieces joined together. Sentry Prot. Prods., dimensions” is not indefinite. Howmedica + 03 3431 6943 Inc. v. Eagle Mfg. Co. , No. 04-1392 (Fed. Cir. Osteonics Corp. v. Tranquil Prospects, Ltd. , Mar. 11, 2005) . . . . . . . . . . . . . . . . . . . . . . . .6 No. 04-1302 (Fed. Cir. Mar. 28, 2005) . . . . . .10 EDITED BY VINCE KOVALICK This publication brings you a synopsis of patent cases decided last month by the United States Court of Appeals for the Federal Circuit based on slip opinions received from the court. You can review and download the full text of each opinion by visiting our website at www.finnegan.com
L A S T M O N T H A T T H E F E D E R A L C I R C U I T § 271(f)(1) Permits Patentee to Microsoft moved in limine to prevent Eolas from seeking damages based on foreign sales under Include Microsoft’s Foreign Sales in § 271(f). Microsoft exports a limited number of Royalty Award golden master disks containing software code for the Windows operating system to manufacturers Vince Kovalick abroad who use the disk to replicate the code onto computer hard drives for sales outside of the [Judges: Rader (author), Friedman, and Plager] U.S. The district court determined that the code on the golden master disk constitutes “compo- In Eolas Technologies, Inc. v. Microsoft Corp. , nents” of an infringing product for combination No. 04-1234 (Fed. Cir. Mar. 2, 2005), the Federal outside of the U.S. under § 271(f). Circuit vacated a district court’s JMOL in Eolas On appeal, the Federal Circuit found that the Technologies, Inc.’s (“Eolas”) favor based on district court had erred in finding that Wei had Microsoft Corporation’s (“Microsoft”) anticipation, abandoned, suppressed, or concealed the Viola obviousness, and inequitable-conduct defenses code such that it did not qualify as prior art. The and remanded for a new trial on these issues. The record contains no evidence that Wei either inten- Federal Circuit also affirmed certain claim con- tionally withheld Viola from the public or unrea- structions. Finally, the Court affirmed the district sonably delayed a patent application or public dis- court’s holding that “components,” according to closure. In contrast, the evidence shows that Wei 35 U.S.C. § 271(f)(1), includes software code on demonstrated the code to Sun’s engineers without golden master disks. a confidentiality agreement and then posted an page 01 The jury had found that Microsoft infringed improved version of the code on a publicly acces- claims 1 and 6 of U.S. Patent No. 5,838,906 (“the sible Internet site. Accordingly, the Court vacated ‘906 patent”) and actively induced U.S. users of this part of the district court’s judgment and Internet Explorer to infringe claim 1. The ‘906 remanded for further proceedings on considera- patent allows a user to use a Web browser in a tion of the applicability of the Viola prior art with fully interactive environment and specifically calls regard to the validity of the ‘906 patent. The for a browser located in a “distributed hypermedia Federal Circuit also ruled that the district court environment.” had erred in linking its § 102(g) abandonment At trial, Microsoft presented evidence that the finding to its § 102(b) public-use finding. Viola Web browser (“Viola”) was in public use Similarly, the Federal Circuit vacated the district more than one year before Eolas’s invention. The court’s decision on equitable conduct based on its Viola inventor, Pie-Yuan Wei, testified at trial that ruling that Viola could constitute prior art. he had written code for Viola in May 1993 and The Court then took on the question of demonstrated its capability to Sun Microsystem’s whether software code made in the U.S. and (“Sun”) engineers at that time. His testimony was exported abroad is a “component” of a patented corroborated with code dated from that time invention under § 271(f). The Court observed period. The district court found that Wei had that exact duplicates of the software code on the abandoned, suppressed, or concealed the code golden master disks are incorporated as an operat- because he disclosed it only to Sun’s engineers ing element of the ultimate device. Thus, accord- and then changed it. The district court applied ing to the Court, the software code on the golden this ruling to the application of the Viola prior art master disk is not only a component, it is probably under §§ 102(g) and 102(b). the key part of the patented invention. The Court Microsoft also argued that one of the inven- rejected Microsoft’s argument that § 271(f) “com- tors of the ‘906 patent, Michael Doyle, knew of ponents” are limited to physical machines because Viola yet did not disclose it to the PTO. Because neither the statute, the legislative history, nor the district court determined that Viola was not precedent contains such a limitation. Accordingly, prior art, it concluded that this knowledge was the Federal Circuit affirmed the district court’s rul- not material and, hence, there was no inequitable ing that “components,” according to § 271(f)(1), conduct. includes software code on golden master disks. Eolas claimed damages for both foreign and domestic sales of Windows with Internet Explorer. L L P . F I N N E G A N H E N D E R S O N F A R A B O W G A R R E T T D U N N E R
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