january 22-27, 2007 phnom penh, cambodia . harold l. novick

Royal University of Law and Economics (RULE)

and Handong International Law School

(HILS) Conference on

Intellectual Property Day 2

January 22-27, 2007 Phnom Penh, Cambodia

. Harold L. Novick Adjunct Professor of Law, HILS & NATH LAW GROUP PLLC

Alexandria, Virginia, USA

Harold L. Novick, HILS / RULE-HILS IP CONFERENCE (Day 2) / Phnom Penh Jan.22-27, 2007 2

Harold L. [email protected]

Rules of the Road

A. JOBS

1. Your Job: Listen

2. My Job: Lecture

3. You finish 1st, tell me

B. Questions: Required, at any time, PLEASE

INTRODUCTION

informationTechnology

age

mailto:[email protected]


DAY 2: PATENT ENFORCEMENTAND IMPACT

(US AND INTERNATIONAL) A. Overall Discussion of Patents in the Business World B. Enforcement in General C. Infringement

– 1. Claim Interpretation– 2. Literal Infringement & Doctrine of Equivalents– 3. Types of Infringement

• a. Direct Infringement• b. Inducement & Contributory Infringement

D. Remedies– 1. Money Damages

• a. Actual Damages or Reasonable Royalty• b. Punitive Damages & Attorneys Fees

– 2. Injunctive Relief E. Defenses

– 1. Antitrust and Patent Misuse; and Inequitable Conduct F. Impact of Patents


PATENTS IN THE BUSINESS WORLD

Patents are used by businesses for many reasons. They are used of course to secure the position of a small company against a larger company (e.g. MicroSoft and Howmedica) by preventing the large company from competing against them. But they are also used to build up a portfolio that in turn can be used in negotiations to settle patent infringement claims by cross-licensing (done frequently in the telecommunications industries).

We shall explore today the enforcement of patents by one company against a competitor.


ENFORCEMENT

A. In the US, all enforcement of rights in any type of IP is done in the courts. There is no administrative type of private enforcement or IPR, although there is an administrative procedure to declare a patent invalid under restrictive reasons. Enforcement is similar for all types of protection and an example of the enforcement of a patent for a method of doing business over the Internet using computer software will be illustrated.

B. An example: In particular, we will use the now famous case of Amazon.com v. Barnesandnobel.com, The patent was for the business method of ordering products over the Internet using a single click of the mouse.


ENFORCEMENTThe Amazon example - 1

1. The Amazon.com patent, No. 5,960,411, is entitled, “Method and System for Placing a Purchase Order Via a Communications Network.” The invention is defined in the patent by a series of “claims” which appear at the end of the patent as a plurality of numbered paragraphs.

a. The Amazon.com patent has a total of 26 claims, two independent method claims and two independent system claims.

b. Claim 11 covers the famous single click ordering method:


ENFORCEMENTThe Amazon example - 2

Claim 11. A method for orderingmethod for ordering an item using a client system, the method comprising:

• 1. displaying information identifying displaying information identifying the itemthe item and displaying an indication of a single action that is to be performed to order the identified item; and

• 2. in responsein response to only the indicated single actionsingle action being performed, sendingsending to a server system a requesta request to order the identified item;

• whereby the item is orderedthe item is ordered independently of a shopping cart model and the order is fulfilled to complete a purchase of the item.


ENFORCEMENTFEDERAL COURT JURISDICTION

In the US, the federal district courts have exclusive subject matter jurisdiction to hear patent infringement cases.

However, a federal district court has limited personal jurisdiction over a defendant. Does a particular federal district court sitting in a particular state, such as California, have the power to impose its orders on the defendant?

3. In the United States there is no federal law providing for personal jurisdiction under the patent infringement laws, and thus personal jurisdiction must be considered on a state by state basis using state laws called “long-arm statutes”

Does the long arm of the court reach someone located outside the court’s territorial jurisdiction.


INFRINGEMENTDefined

A. Patent infringement of a patented product under U.S. law consists of:

1) making, 2) using,

3) selling,4) offering for sale, or 5) importing a patented product or product made by apatented process into the U.S.

B. Patent infringement of a patented method consists of:1) using, 2) selling, or

\ 3) offering for sale.

C. Other activities are too complicated to be discussed here (e.g. importing a product made outside the US by using a US patented method).


INFRINGEMENTCLAIMS ARE THE KEY

Infringement consists of activities on which the claims read. That is, you infringe a claim, not a patent disclosure.

Each element of the claim must be found in the accused device or method, either exactly or substantially for there to be an infringement.

More elements can however be present. For example, a claim to a bowling pin setting machine that claims 10 positioning tubes will read on a pin setting machine that has 11 positioning tubes.


INFRINGEMENTANALYSIS

“Analysis of patent infringement involves two steps: – (1) claim construction to determine what the

claims cover, i.e., their scope, followed by – (2) determination of whether the properly

construed claims encompass the accused structure.

Engel Industries v. Lockformer Company, 96 F. 3rd 1398 (Fed Cir 1996) (Engel)


INFRINGEMENT ANALYSISClaim construction

In a recent Supreme Court case, it was held that patent claim construction is for the finder of law, i.e. the Court, and not the finder of fact, e.g. the jury. Markman.

In a recent Fed. Cir. case, the court stated that the claim construction methodology must first use the intrinsic evidence of the original patent application and the arguments and concessions made during the patent prosecution. If further analysis still must be made, then extrinsic evidence such as expert testimony or dictionaries may be resorted to. Phillips v. AWH Corp., No. 03-1269, -1286, slip op. (Fed. Cir. July 12, 2005)


INFRINGEMENTLiteral Infringement

Literal infringement occurs when “every limitation recited in the claim is found in the accused device.” Engel Industries v. Lockformer Company 96 F. 3rd 1398 (Fed Cir 1996)

The patent included both apparatus and method claims directed toward a system for connecting the ends of sheet metal duct sections. Each independent claim does not read on Engel's accused TDF system. For example, Engel's TDF system does not literally meet the claim limitation that requires the distance between the second portion and end portion to substantially correspond to the width of an arm of a corner connector. In the TDF system, the distance between the second portion and end portion is larger than the width of an arm by at least the thickness of the return portion 26 plus the gap between the second portion and the return portion.


INFRINGEMENTLiteral Infringement (Claim 1)

1. In a system for connecting the ends [18, 20] of sheet metal ducts wherein a frame [at least the combination of 22 and 24] is provided for each duct end [18, 20], corner connectors [34] defining perpendicularly extending arms are associated with the frames, and means [40] are provided to interconnect the frames of adjacent duct ends [18, 20], the improvement wherein

the sheet metal used for the ducts is also employed for forming said frames, each said frame specifically comprising a roll-formed section consisting of an

integral part of a duct wall, – each said section comprising a first portion [22] extending perpendicularly

outwardly from a duct wall [10], and – a second portion [24] bent rearwardly into a position opposite an end portion

of the duct wall, • the distance between said [**10] second portion [24] and said end

portion substantially corresponding to the width of an arm of a corner connector,

– the side edges [36, 38] of each such arm being received in engagement with the respective surfaces of a [sic, said] second portion [24] and end portion whereby the corner connectors [34] are held in position relative to a [sic, said] frame, and including retainer means [30] defined by said second portion [24] for receiving a side edge of an arm for thereby securely holding the arm in position.


INFRINGEMENTLiteral Infringement (Claim 1)

It may seem simple that this spacing of the accused device was different from the claim language. But that only became so after the court interpreted the claim language of “the second portion” not to include the “return.” If the return had been included, then the claim would have read on the spacing of the accused device.


INFRINGEMENTDoctrine of Equivalents

Equitable doctrine used to find infringement where no literal infringement exists, but the offending product is merely an “insubstantial variation” from or is “interchangeable” with the claimed invention

This type of infringement is limited only to claim elements that have not been narrowed during prosecution. This limitation is called Prosecution History Estoppel, and it is an equitable doctrine whereby the patent holder is stopped from alleging patent infringement against a defendant in the situation whereby the patent holder gave up property by amending the wording of the claims during discussions at the patent office.


INFRINGEMENTTypes of Infringement

Under US patent law, there are the following types of infringement, each with different elements requiring proof, different defenses, and different remedies:– Direct Infringement

– Inducement of others to Infringe

– Contributory Infringement


INFRINGEMENTDirect Infringement

In categorizing an infringement as a direct infringement, or an inducement of infringement, or contributory infringement, the differences relate to the activities and position of the party being sued. In direct infringement, the party being sued is the actor who has made, used, or sold the patented product; Thus, in the case of a process patent where the use is by a farmer applying a herbicide, the manufacturer is not directly infringing the patent because it is not using the process.

In proving direct infringement, you must prove that the patent claims read directly on the activity of the defendant.


INFRINGEMENTInducement of others to Infringe

1) The law very simply states that: “Whoever actively induces infringement of a patent shall be liable as an infringer.” 35 U.S.C. §271(b).

2) There are two elements:– Proof of direct infringement and– An intent to cause the acts which constitute

the infringement.


INFRINGEMENTInducement of others to Infringe - 1

In Hewlett-Packard v. Bausch & Lomb, 909 F.2d 1464 (Fed Cir 1990 (Rich)) for a patent for an x-y plotter, used e.g. to create a chart on a piece of paper, in which the paper is moved in the Y or vertical direction and the pen is moved in the X or horizontal direction.

The court held in a complex fact pattern that there was no inducement to infringe because the defendant was only interested in selling a subsidiary not in encouraging an infringement. The purchase agreement with an indemnification of infringement could not be said to provide encouragement of the sold company to infringe because according to the court the sold company made many other types of plotters.



In another case, Water Tech. v. Calco Ltd, 850 F.2d

660 (Fed Cir 1988) the court held that the requisiteintent did exist based on the facts that the allegedinducer helped the direct infringer make theinfringing product and prepared “consumer useinstructions.” and “exerted control” over the directinfringer’s manufacture of the infringing product.



In summary, the courts have held that the inducement must be purposeful or intentional and not merely accidental or inadvertent and occurs when the inducer commits an act that encourages a direct infringement of a patent by another.


INFRINGEMENTContributory Infringement

In 35 USC 271, the law states that it is an act of patent infringement (in the words of the Federal Circuit) to sell a catheter for use in practicing a patented process, which use constitutes a material part of the invention knowing that the catheter is especially made or adapted for use in infringing the patent, and that the catheter is not a staple article or commodity of commerce suitable for substantial noninfringing use. C.R. Bard v. Advanced Cardiovascular Systems, 911 F.2d 670 (Fed Cir 1990).


REMEDIES

Money Damages– Patent infringement in the U.S. is a tort, and

the remedy in tort is to make the injured person whole.

Injunctive Relief– Recently the subject of a US Supreme Court

decision, it was held in • [case]


REMEDIESMoney Damages

Money damages has a number of component parts:– Actual damages– Or as a minimum, a Reasonable Royalty– Punitive Damages– Attorneys Fees– Court costs


REMEDIESReasonable Royalty

Under the US Statute, the minimum money damages that a patent holder can receive is the amount of a reasonable royalty

A reasonable Royalty is defined as the royalty that would result from a hypothetical negotiation between a willing licensor and a willing license. Fromson v. Western Litho Plate & Supply, 853 F.2d 1568 (Fed Cir 1988)

There are 15 factors that courts use as set forth in Georgia-Pacific v. US Plywood, 318 FS 1116 (SDNY 1970) divided into two groups: the specific and general market conditions in the pertinent industry; and the anticipated profitability of the product or process.


REMEDIESActual Damages

Money damages are to pay for compensatory damages. If the patent owner and the infringer compete, then the money damages are relatively easy to determine. It is the profit that a patent owner loses because of the infringement. If there is no competition, or if the infringer has not sold any infringing products, then the money damages have to be determined based on a reasonable royalty, or the market value of the right to exclude in a hypothetical world where the infringement never happened. Grain Processing.


REMEDIESPunitive Damages

Section 284 of the patent laws permits a court to “increase the damages up to three times the amount found or accessed.” The trial court has great discretion in the amount to award. The reasoning is to deter infringement activity. Usually such punitive damages are awarded if the actions of the infringer are willful, such as knowing about the patent and its infringement and still continuing to infringe, or once advised of the patent, not conducting a proper due diligence and investigation with an opinion preferably by an outside law firm.


REMEDIESAttorneys Fees and Court Costs

Attorney fees are awarded under Section 285 in exceptional cases. The requirements are that the case is exceptional; the fees are reasonable; and the fees may be awarded only to a prevailing party. An example would be the conduct of the infringer (willful infringement), or of the patentee. (inequitable conduct).

Court costs include the charges a court makes to hear the case, and the costs of depositions and expert witnesses if actually needed and used at trial.


REMEDIESInjunctive Relief

A recent Supreme Court case, Ebay v. MircExchange, has held that just because a court finds an infringement, it does not automatically follow that a permanent injunction will be granted preventing future infringing conduct. In the past, that had been the case.


REMEDIESInjunctive Relief

Now the traditional inquiries must be answered: A plaintiff must demonstrate:

(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary

damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and the defendant, a remedy in equity is warranted; and

(4) that the public interest would not be disserved by a permanent injunction.

Note that this may lead in the US to compulsory licensing, which in the past has been an anathema.


DEFENSES TO INFRINGEMENT Of course the absolute defense to infringement is the

substantive defense that there is no infringement. Another absolute substantive defense is that the patent is invalid. We essentially just covered the defense of no infringement. The validity of a patent was essentially covered yesterday, during the Day 1 part of Patent Law

The defenses of which I now speak relate to non substantive defenses: antitrust behavior of the patent owner (e.g. the patent is part of a scheme to monopolize an entire industry); misuse of the patent by the patent owner (e.g. attempting to enforce a known invalid patent); and improper conduct of the patent owner, usually during the process of patent prosecution (e.g. not disclosing a material piece of prior art, such as a reference or prior sale)


DEFENSES TO INFRINGEMENTAntitrust

Normally, any attempt by a person to monopolize or attempt to monopolize an industry of commerce, is illegal under the antitrust laws. An exception is the enforcement of a patent against an alleged infringer. That which is illegal without a patent, but is legal with one, becomes again illegal if that patent were obtained or used beyond the scope of the IPRs of the patent.

For example, it has been held that to tie the granting of a patent license to the sale of an unpatented article is a violation of the antitrust laws. It has also been held by the Supreme Court in Walker Process v. Food Machinery & Chemical (FMC), 382 US 172 (1965) that one must prove that the patentee obtained the patent by knowingly and willfully misrepresenting facts to the PTO and was aware of the fraud when bringing a law suit. In Walker the patentee submitted false declarations about the date of the invention and the identity of the inventor.


DEFENSES TO INFRINGEMENTPatent Misuse

Patent misuse is defined as the illegal extension of the scope of patent rights, such as in an infringement law suit or licensing, into improper areas. E.g. using a patent to require the purchase of of an unpatented product.

Patent misuse is related to anti-trust violations, but usually the intent to monopolize is missing.

In Dawson Chemical v. Rohm and Haas, 448 US 176 (1980) in a 5 to 4 decision, the majority held that an infringement law suit for contributory infringement by the sale of a non-staple chemical propanil used in a patented process to inhibit the growth of undesirable plants was not patent misuse, and the minority would have held that it was.


DEFENSES TO INFRINGEMENTInequitable Conduct-Intent - 1

This defense, originally and now sometimes called “fraud on the Patent Office,” results from the failure of the patent owner during prosecution of the application that matured into the patent to exercise due candor. It is a “failure to disclose material material information, or submission of false material information, with an intentintent to deceive, and these two elements, materiality and intent, must be proven by clear and convincing evidence.” Kingsdown Med. V. Hollister, 863 F.2d 867 (Fed Cir 1988).


DEFENSES TO INFRINGEMENTInequitable Conduct-Intent - 2

That case was an infringement action and the District Court held an entire patent unenforceable because of a mistake in copying one claim from a parent application to a subsequently filed continuation application. The copied version in the original case had been held unpatentable because it was indefinite in its language, and was presented to the patent examiner in the following case as being patentable.

The appellate court reversed the District Court’s holding that gross negligence was the same as an intent to deceive. The District Court was clearly erroneous.

Inequitable Conduct requires an intent to act inequitably, such as submitting false evidence or selected evidence from experiments or not citing a known invalidating reference to the Examiner.


DEFENSES TO INFRINGEMENTInequitable Conduct-Material

Materiality has been defined as being not cumulative to information already of record and it refutes, or is inconsistent with a position the applicant has taken in asserting an argument of patentability.

In a patent application for a catheter having a needle guard with a retaining member, a reference that shows a needle guard with an automatic releasing mechanism is material to a broadly claimed retaining means, even if it differs substantially in other respects. Also, the failure to disclose to the Patent Examiner that the patent was involved in a law suit (during the prosecution of the reissue application) is material. Critikon v. Becton Dickinson, 120 Fed 3rd 1253 (Fed Cir 1997).


IMPACT OF PATENTS - 1

Patent law in the US and EPO, but not in some Asian countries, only prohibit others from making and using and selling the patented invention. It does not give one the rights to make, use or sell it himself or herself. In some jurisdictions, such as Taiwan, according to my understanding, after a patent has been granted and published, if no one objects to the granting of the patent on the basis that they have an overlapping patent, then the patent owner does have the right to practice the invention, but not an exclusive right.

In return for that exclusive right of exclusion, the patent owner has the patent published for all others to read, learn, and even to some extent to use to experiment.



This knowledge element in patent intellectual property law is very different from the ownership concept where the owner of some personal property, a car for example, excludes everyone else from having that car. But the information and knowledge gained from patented inventions can be used non-exclusively by everyone.

But what of the economic effect in patents of the exclusive right to exclude others. Does this not have the effect of inefficiency; the effect of precluding competition that usually results in a lower price of the goods to consumers, and in some cases the effect on the availability of the goods to the less advantaged countries?

WHAT DO YOU THINK? TRUE? GOOD/BAD?



My answer is yes it does. But consider very carefully. Patent rights are granted for something that is new; for new ideas, ideas of people who have no obligation to disclose them. Being human beings, they need an incentive to disclose. They need protection to invest the time, effort and money to develop, market, promote and service the patented invention.

For example, in the US it is said that it takes over $100 Million dollars to test a new drug to get FDA approval and bring the product to the market. Why should anyone invest that money if others can get a free ride.


IMPACT OF PATENTS – 4

One comment is given in the book, Chisum et al., “Principles of Patent Law (3rd Ed. 2004):

“Economic research over the past sixty years has demonstrated the causal link between intellectual property and the growth of our national economy. Intellectual property is so increasingly critical component of US capital, technology transfer, and foreign trade, and some economic research has demonstrated that changes in intellectual property laws can be used deliberately to promote innovation and national economic development. This research relates back to the Nobel Prize winning work by Professor Robert Solow of MIT in which he demonstrated that most of the economic growth in the United States in the first half of the century could be explained by investments in research and development and education rather than by increases in capital and labor.



“…Professor Paul Romer of Stanford University, …argues that such investment in R&D and education is unlike other forms of investment in that it does not experience decreasing returns to scale. The more one puts in, the more one gets out [which] does not decrease as more and more buck is added. … Therefore, one can argue, IP law is really a public policy tool for promoting industrial growth.”


F. CONCLUSIONWe have discussed patent enforcement. That is the legal method to

prevent someone from making, using or selling the patented invention and collecting damages for such infringement.

The only reason that patents are very respected in the US is because

the Courts have made it clear that they will be enforced if valid and infringed and that infringing companies have a lot to fear if they tread further into the already hot waters. For example, Kodak was found to have infringed about 5 patents owned by Polaroid in the field of instant cameras. The District Court issued an injunction to stop the infringement on for example a Wednesday, an immediate appeal to stay the injunction was filed on Thursday, and it was denied on Friday. On Saturday, Kodak shut down a two billion dollar a year product, had to offer to buy back all sold cameras, and had to pay money damages to Polaroid that were reported to be over 1 Billion dollars.


THANK YOU FOR THE HONOR OF ALLOWING ME TO PARTICIPATE INTHIS MOST WONDERFUL, TIMELY AND FRUITFUL CONFERENCE.

january 22-27, 2007 phnom penh, cambodia . harold l. novick

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