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Fresh From the Bench: Recent Patent Cases From the Supreme Court ‎and the Federal Circuit

June 2, 2014


Nautilus v. Biosig - The Supreme Court reverses the Federal Circuit's holding ‎that a claim meets the dictates of 35 USC 112 as long as it is not "insolubly ‎ambiguous," unanimously rejecting the Circuit's standard, which "tolerates some ‎ambiguous claims but not others."

Limelight v. Akamai - The Supreme Court also reverses the Circuit's en banc ruling that a defendant who ‎‎performed some steps of a method patent and encouraged others to ‎perform the ‎rest could be liable for inducement of infringement even ‎if no one was liable for ‎direct infringement.

Suffolk -The Circuit affirms summary judgment of anticipation based on a post by a college student despite the patentee's argument that the post would not have been accessible to those with ordinary skill in the art.

K/S – A split panel of the Circuit affirms an obviousness finding of the PTO Board in a ruling that in some respects seems inconsistent with the KSR's dictate that "common sense" is to be considered in obviousness rulings.

Nautilus, Inc. v. Biosig Instruments, Inc., Supreme Court (June 2, 2014)

This morning the Supreme Court reversed the Federal Circuit case holding that a claim meets the dictates of 35 USC 112 as long as it is not "insolubly ambiguous," unanimously rejecting the Circuit's standard, which "tolerates some ambiguous claims but not others."

According to the Supreme Court, section 112's definiteness requirement must take into account the ‎inherent limitations of language. See Festo Corp. v. Shoketsu Kinzo-‎ku Kogyo Kabushiki Co., 535 U. S. 722, 731. On the one hand, some modicum of uncertainty is the "price of ensuring the appropriate incentives for innovation," and patents are "not addressed to ‎lawyers, or even to the public generally," but to those skilled in the ‎relevant art. At the same time, a patent must be precise enough to afford ‎clear notice of what is claimed, thereby "‘appris[ing] the public of ‎what is still open to them,' " Markman v. Westview Instruments, Inc.,‎ 517 U. S. 370, 373, in a manner that avoids "[a] zone of uncertainty ‎which enterprise and experimentation may enter only at the risk of ‎infringement claims," The standard adopted here mandates clarity, while ‎recognizing that absolute precision is unattainable. It also accords with opinions of this Court stating that "the certainty which the law ‎requires in patents is not greater than is reasonable, having regard ‎to their subject-matter." ‎

According to the opinion by Justice Ginsburg, the Court of Appeals inquired whether the ‎claims were "amenable to construction" or "insolubly ambiguous," but ‎such formulations lack the precision §112, ¶2 demands. To tolerate ‎imprecision just short of that rendering a claim "insolubly ambiguous" would diminish the definiteness requirement's public-notice ‎function and foster the innovation-discouraging "zone of uncertainty," ‎United Carbon, 317 U. S., at 236, against which this Court has warned. While some of the Federal Circuit's fuller explications of the ‎term "insolubly ambiguous" may come closer to tracking the statutory prescription, this Court must ensure that the Federal Circuit's test ‎is at least "probative of the essential inquiry." Warner-Jenkinson Co. ‎v. Hilton Davis Chemical Co., 520 U. S. 17, 40. The expressions "insolubly ambiguous" and "amenable to construction," which permeate ‎the Federal Circuit's recent decisions concerning §112, ¶2, fall short ‎in this regard and can leave courts and the patent bar at sea without a ‎reliable compass.

Limelight Networks, Inc. v. Akamai Technologies, Inc., Supreme Court (June 2, 2014)‎

‎The Supreme Court also reversed the Circuit's en banc ruling that a defendant who ‎performed some steps of a method patent and encouraged others to ‎perform the rest could be liable for inducement of infringement even ‎if no one was liable for direct infringement.

According to Justice Alito, writing for a unanimous court, liability for inducement must be predicated on direct infringement. ‎Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U. S.‎ ‎336, 341. Assuming that Muniauction's holding is correct (Muniauction, Inc. v. Thomson Corp., 532 F. 3d 1318), respondents' method has not been infringed because the performance of all of ‎its steps is not attributable to any one person. Since direct infringement has not occurred, there can be no inducement of infringement ‎under §271(b). The Federal Circuit's contrary view would deprive ‎§271(b) of ascertainable standards and require the courts to develop ‎two parallel bodies of infringement law.

This Court's reading of‎ §271(b) is reinforced by §271(f)(1), which illustrates that Congress knows how to impose inducement liability predicated on non- ‎infringing conduct when it wishes to do so. The notion that conduct ‎which would be infringing in altered circumstances can form the basis for contributory infringement has been rejected, see Deepsouth ‎Packing Co. v. Laitram Corp., 406 U. S. 518, 526–527, and there is no ‎reason to apply a different rule for inducement. ‎

Suffolk Technologies, LLC v. AOL Inc. and Google Inc., Fed. Cir. Case 2013-1392 (May 27, 2014)

The Circuit affirms claim construction and summary judgment of invalidity based on anticipation of a patent directed to systems for controlling a server that supplies files to computers rendering web pages. The claimed invention was determined to be anticipated by a newsgroup post of a college student who answered a posted question about how to solve the problem that was later addressed in the patent. The panel rejected Suffolk's argument that the post was not a printed publication because it was not easily accessible to those with ordinary skill, ruling that under the circumstances summary judgment of invalidity was appropriate.

The panel first looked to claim construction and affirmed the district court's determination that the phrase "generating said supplied file" meant ‎"creating or tailoring a file, as distinct from selecting an existing file, in dependence upon the received ‎identification signal." Suffolk's position had been that the generated file could depend on the content of the requesting ‎web page and not just the received identification signal.‎ The panel rejected Suffolk's argument that the claim language and the specification did not support this construction, and that the court's construction effectively excludes the preferred embodiment.

The panel then turned to defendants' evidence that the claimed invention was anticipated by the newsgroup post that was dated nine months prior to the priority date. Specifically, the following was posted by Marshall Yount to the ‎comp.infosystems.www.authoring.cgi newsgroup:

How to tell which page called the script? ‎‎

I am a newbie at this CGI [common gateway interface] stuff, so this question might seem ridiculous (I did look in the FAQ and on some web pages). I have this script that will be called from ‎one of 18 pages. Depending on which page it was ‎called from, the output will be different. Is there ‎any environment variable that will tell me this, or ‎do I have to externally pass information to the ‎script?

A college student named Shishir Gundavaram replied ‎with the following post:‎

Look at the CGI environment variable ‎HTTP_REFERER. In Perl, you can do something ‎like this:‎


‎$referer = $ENV{‘HTTP_REFERER'}; ‎print "Content-type: text/plain", "\n\n"; ‎if ($referer =~ /abc\.html/) {‎

print "A link in abc.html called this document.", "\n";‎

‎} elsif ($referer =~ /efg\.html/) {‎

print "A link in efg.html called this document.", "\n"; }‎

else {‎

print "A link in ", $referer, " called this document.", "\n";‎‎}‎


Thankfully, an understanding of the case does not require an understanding of the foregoing. In any event, Suffolk contended that the district court erred by holding that the newsroom post is a printed publication because (1) the post's audience was not those of ordinary skill in the art and (2) locating the post would be too difficult.

As to the first argument, Suffolk contends that the Usenet newsgroup was populated mostly by "beginners," not those of ordinary skill in the art. Suffolk bases this claim on Yount's comment that he was a "newbie" and that "this question might seem ridiculous." According to the panel, Suffolk misunderstands the level of ordinary skill in the art at that time. According to Gundavaram, there were no courses or books concerning CGI at the time of the post in 1995, and he learned about CGI through self-study. Second, the record indicates that those of ordinary skill in the art actually were using such newsgroups. Suffolk's own validity expert used newsgroups, and Gundavaram clearly used the newsgroup here.

As to the second ground, Suffolk argues that the post was not sufficiently publically accessible to be considered a printed publication. Suffolk points out that the post was non-indexed and non-searchable. And although the newsgroup posts did have titles, they could only be sorted by date. According to the panel, this argument overstates the difficulty in locating the post. Usenet newsgroups were organized in a hierarchical manner, as evidenced by the name of the newsgroup at issue— comp.infosystems.www.authoring.cgi. Thus, someone interested in CGI could easily locate a list of posts in this newsgroup. Second, a printed publication need not be easily searchable if it was sufficiently disseminated at the time of its publication. The panel held that the post was sufficiently disseminated, the facts being similar to cases holding sufficient dissemination occurred. For example, in In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004) the Circuit held a poster board presentation displayed for several days at an industry association meeting to be sufficiently disseminated to be "publically accessible." Similarly, in Massachusetts Institutes of Technology v. AB Fortia, 774 F.2d 1104 (Fed. Cir. 1985), the Circuit held that a paper delivered orally at a conference, where at least six copies of the paper were distributed, was a printed publication. This case is not analogous to SRI Int'l,‎ Inc. v. Internet Sec. Sys., Inc., 511 F.3d 1186 (Fed. Cir. 2008)‎ where a server was technically open to the public but the file was not publicized or placed in front of the interested public. ‎Here, dialogue with the intended audience was the entire purpose of the newsgroup postings, and the post elicited at least six responses over the week following its publication discussing the efficacy of Gundavaram's proposal. Many more people may have viewed the posts without posting anything themselves.

Thus, the panel concluded that the post was sufficiently disseminated to those of ordinary skill in the art to be considered publically accessible and therefore a printed publication under 35 USC section § 102.

The panel also rejected Suffolk's arguments that summary judgment was inappropriate because questions undermining the reliability and accuracy of the Gundavaram post should have been submitted to the jury. According to the panel, Suffolk presented no affirmative evidence challenging the post's material facts, and Gundavaram himself authenticated the post, testifying that he recognized "the style of my writing," "certain stylistic things in the code," and "certainly the e-mail address that I wrote from."

The panel also determined that the court did not abuse its discretion in excluding testimony from Suffolk's expert since the expert did not opine as to anticipation of certain claims at issue until after the court issued its claim construction. This was significant because it left Suffolk's related arguments as just that – attorney argument – which of course does not constitute evidence.

The panel thus affirmed the summary judgment ruling in all respects.

K/S Himpp v. Hear-Wear Technologies, LLC, Fed. Cir. Case 2913-1549 (May 27, 2014)

A split panel affirmed the Board of Patent Appeals and Interferences' determination that claims were obvious, over a dissent contending that this ruling ignores the "common sense" dictates of KSR.

The patent claims at issue are directed to a hearing aid with three main parts: a behind-the-ear audio processing module, an in-the-canal module, and a connector between the modules. The patent was issued but the PTO granted a third party request by HIMPP for inter partes reexamination of the ‎‎'512 patent. The AIA amended the inter partes reexamination provisions but those amendments do not apply here because the request for inter partes reexamination was filed before the September 15, 20111 enactment of the AIA.

During prosecution of the '512 patent, the Examiner initially rejected some of the claims as being obvious, the Examiner finding that "providing a plurality of prongs for the electrical connections or for the plugs is known in the art," but the claims were subsequently allowed. In the reexamination HIMPP also argued that modifying the Shennib published application to include detachable connections for a signal cable "would have been no more than the predictable use of prior art elements according to their established functions." The CRU Examiner refused to adopt HIMPP's proposed rejection because HIMPP failed to provide evidence in support of that contention. HIMPP appealed that refusal.

The panel reviewed the Board's legal conclusions de novo, and the Board's factual findings underlying those determinations for substantial evidence. HIMPP argues that the CRU Examiner and the Board failed to consider the knowledge of a person having ordinary skill in the art solely because HIMPP did not provide documentary evidence to prove purportedly well-known facts. HIMPP asserts that refusing to consider the knowledge of a person having ordinary skill in the art because of a lack of record evidentiary support is contrary to the Supreme Court's supposed admonishment in KSR against the overemphasis on the importance of published articles and the content of issued patents. KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).‎

The majority of the panel disagreed with HIMPP, and ruled that the Board was correct to require record evidence to support an assertion that the structural features of the claims were known prior art elements. The patentability of the limitation "a plurality of prongs that provide a detachable mechanical and electrical connection" presents more than a peripheral issue. The determination of patentability of claims with this limitation therefore requires a core factual finding, and as such, requires more than a conclusory statement from either HIMPP or the Board. HIMPP must instead "point to some concrete evidence in the record in support of these findings." Id.

The majority recognized that the Board has subject matter expertise, but the Board cannot accept general conclusions about what is "basic knowledge" or "common sense" as a replacement for documentary evidence for core factual findings in a determination of patentability. To hold otherwise would be to embark down a slippery slope which would permit the examining process to deviate from the well-established and time-honored requirement that rejections be supported by evidence. It would also ultimately "render the process of appellate review for substantial evidence on the record a meaningless exercise." Because HIMPP failed to cite any evidence on the record to support its contention that the claims set forth known prior art elements, we affirm the Board's decision to refuse to adopt HIMPP's obviousness contention.

Alternatively, HIMPP asked the court to take judicial notice: that use of a multi-pronged plug to form a detachable mechanical and electrical connection at the end of an insulated wire would have been known to a person having ordinary skill in the art at the time of the invention. The majority declined to exercise its discretion to take judicial notice of any "multi-pronged plug" knowledge for the same reasons mentioned above that it was reasonable for the Board and Examiner to decline to take official notice.

Judge Dyk dissented, noting that this should be an easy case, reversing the quite odd decision of the PTO that it could not consider whether multi-pronged electrical connections were well known in the prior art. In his view "this case raises important questions regarding the role of the PTO in making obviousness determinations."

The majority holds that patent examiners, in addressing questions of obviousness, may not rely on their expert knowledge and common sense about what is well known in the art except "in narrow circumstances" involving peripheral issues. The narrowness of this exception is illustrated by the holding in this case. Although the claim limitation—a plurality of prongs that provide a detachable mechanical and electrical connection—was well known as of the patent's 2001 priority date, the majority holds that the examiner could not resort to the common knowledge of one skilled in the art, but rather was confined to considering only the evidence of record.

In Judge Dyk's view, the majority's holding is inconsistent with Supreme Court's decision in KSR, and will have substantial adverse effects on the examination process. The majority adopts a "[r]igid preventative rule that den[ies] factfinders recourse to common sense" even though the Court held such rules "neither necessary under our case law nor consistent with it." Precluding examiners from using their knowledge and common sense significantly impairs their ability to review applications adequately and undermines the purpose of post-grant agency review.


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