World Health Organization member states’ first reactions to the secretariat-proposed draft work programme for the next five years were mixed this morning. Although many praised the effort and the vision of the programme of work, in particular its alignment with the United Nations Sustainable Development Goals, a number of countries found the programme ambitious without the needed financial backing, and sometimes straying from the core function of the organisation.Continue Reading ...
SNF Holding Co. v. BASF Corp. (Federal Circuit 2017) Important petition for en banc rehearing filed by the Duffy-Dabney team (Hughes Hubbard) with three questions presented: Whether 35 U.S.C. § 144 requires this Court to issue an opinion when exercising original jurisdiction under 35 U.S.C. §§ 141–144. Whether 35 U.S.C. § 316 authorizes the USPTO to change an […]Continue Reading ...
The 9th Circuit affirmed the title ‘Empire’ was speech protected under the First Amendment and did not infringe trademarks owned by Empire Distribution… The panel instead determined that the title Empire supported both the themes and the geographic setting of the work. The panel also found the the use of the “Empire” mark was not explicitly to mislead customers; the panel noted that the show Empire made no overt claims to Empire Distribution.
The post Twentieth Century Fox Television Wins…
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Cozen O’Connor Welcomes IP Litigator Hugh J. Marbury — a seasoned, first-chair IP litigator with experience representing domestic/international clients in contentious, bet the company financial and commercial disputes—has joined its Intellectual Property Department as a member. A former partner at DLA Piper, Marbury will serve as a lead trial lawyer overseeing IP and commercial litigation matters in Cozen O’Connor’s Washington D.C. office.
The post Cozen O’Connor Welcomes IP Litigator Hugh…
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By Andrew Williams — Last week, we provided a preview of the Supreme Court case Oil States Energy Services, LLC. v. Greene’s Energy Group, LLC. that will be argued on November 27, 2017. The underlying case has received a lot of attention, so it is not…Continue Reading ...
Presidio filed suit against American Technical Ceramics
Corp. (“ATC”) for patent infringement in the District
Court for the Southern District of California. After separate
jury and bench trials, the district court held the
asserted claims were infringed and not invalid, and
granted a permanent injunction. The district court limited
damages due to intervening rights.
We affirm the district court’s holdings that the claims
are not indefinite and that ATC is entitled to absolute
intervening rights because a substantive amendment was
made during reexamination. We conclude that the evidence
does not support an award of lost profits and,
therefore, reverse the award of lost profits and remand for
determination of a reasonable royalty. We conclude that
the district court did not abuse its discretion in declining
to award enhanced damages. We vacate the permanent
injunction, and remand for further proceedings with
respect to the injunction.
Presidio’s suit against ATC, filed on September 2,
2014, alleged infringement of U.S. Patent No. 6,816,356
(“the ’356 patent”). The ’356 patent claims a multilayer
capacitor design and teaches a multilayer integrated
network of capacitors electrically connected in series and
As to indefiniteness:
Here, the patent discloses a method of measuring capacitance
called insertion loss testing.
While it was established that insertion loss testing
could be used to measure overall performance of capacitors,
it was not well known as a method to measure the
comparative contributions from different capacitances
within the multilayer capacitor
Under our post-Nautilus cases, a claim is not indefinite
if a person of skill in the art would know how to
utilize a standard measurement method, such as insertion
loss, to make the necessary measurement. A patent need
not explicitly include information that is already well
known in the art. Nautilus, 134 S. Ct. at 2127; see also
Dow Chem. Co. v. Nova Chem. Corp., 809 F.3d 1223, 1225
(Fed. Cir. 2015) (Moore, J., concurring in the denial of the
petition for rehearing en banc) (citing Wellman, Inc. v.
Eastman Chem. Co., 642 F.3d 1355, 1367 (Fed. Cir.
2011)). “[I]f a skilled person would choose an established
method of measurement, that may be sufficient to defeat
a claim of indefiniteness, even if that method is not set
forth in haec verba in the patent itself.” Dow, 809 F.3d at
1224 (Prost, C.J., Dyk & Wallach, JJ., concurring in the
denial of the petition for rehearing en banc). For example,
in Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d
1312, 1316 (Fed. Cir. 2015), claims covered surgical
shears for cutting and sealing blood vessels that required
a clamping pressure within a specified range.
Even assuming that ATC is correct that an entirely
new method could in some circumstances render the
claims indefinite, this is not such a situation. Here, as we
earlier noted, the insertion loss testing method was well
established and referenced in the patent. Although the
specific steps performed by Dr. Huebner had not been
published in any industry publications or peer-reviewed
articles, the general approach of making modifications to
a capacitor to isolate the impact of discrete capacitances
was within the knowledge of someone skilled in the art.
Based on this record, the district court could properly
conclude that such measurement was within the skill of a
skilled artisan based on an established method.
As to lost profits:
The third issue is whether the district court correctly
awarded lost profits. The district court held that the jury
verdict awarding lost profits was supported by substantial
evidence and denied judgment as a matter of law. The
question is whether Presidio established its right to
recover lost profits for its sales of the BB capacitors,
which Presidio claimed were adversely affected by the
sale of ATC’s infringing 550 line of capacitors.
To recover lost profits, the patentee bears the burden
of proof to show a “reasonable probability that, ‘but for’
infringement, it would have made the sales that were
made by the infringer.” Crystal Seminconductor Corp. v.
TriTech Microelecs. Int’l, Inc., 246 F.3d 1336, 1353 (Fed.
Cir. 2001); BIC Leisure Prods, Inc. v. Windsurfing, Int’l,
Inc., 1 F.3d 1214, 1218 (Fed. Cir. 1993). “But-for” causation
can be proven using the test given in Panduit Corp. v.
Stahlin Bros. Fibre Works, Inc., 575 F.2d 1156 (6th Cir.
1978). See Versata Software, Inc. v. SAP Am., Inc., 717
F.3d 1255, 1264 (Fed. Cir. 2013). The four-factor Panduit
test requires the patentee to show: (1) demand for the
patented product; (2) an absence of acceptable, noninfringing
substitutes; (3) manufacturing and marketing
capability to exploit the demand; and (4) the amount of
profit that would have been made. Panduit, 575 F.2d at
The district court’s analysis and Presidio’s argument
were flawed. The correct inquiry under Panduit is whether
a non-infringing alternative would be acceptable compared
to the patent owner’s product, not whether it is a
substitute for the infringing product. “The ‘but for’ inquiry
therefore requires a reconstruction of the market, as it
would have developed absent the infringing product, to
determine what [sales] the patentee ‘would . . . have
made.’” Grain Processing, 185 F.3d at 1350. The district
court erred by relying on evidence about sales of the 560L
capacitor in competition with the currently infringing
product, rather than comparing the 560L capacitor to
Presidio’s BB capacitor in a hypothetical market without
the infringing 550 capacitor. There was not substantial
evidence in the record upon which a jury could conclude
that the 560L was not an acceptable, noninfringing alternative
for Presidio’s BB capacitors. Undisputed evidence
showed that the 560L capacitor was less expensive than
Presidio’s BB capacitor and also had lower insertion loss
for at least some frequencies, which indicates better
On the matter of the injunction:
A district court abuses its discretionContinue Reading ...
when it makes “a clear error of judgment in weighing
relevant factors or exercise[s] its discretion based upon an
error of law or clearly erroneous factual findings.” Innogenetics,
N.V. v. Abbott Labs., 512 F.3d 1363, 1379
(Fed. Cir. 2008).
The district court
then based its conclusion as to irreparable injury on the
jury’s lost profits award. The district court reasoned that
“[t]he jury’s lost profits award also supports a finding of
irreparable injury” because “the jury necessarily found
ATC’s  capacitor sales caused Presidio to lose BB
capacitor sales.” J.A. 87. In light of our reversal of the lost
profits award for lack of proof of past lost sales, we must
vacate the injunction.
As to patents
The Naxon bean cooker was the predecessor to the “crock pot.” “Sunday Morning” noted:
Irving Naxon’s electric bean cooker, the Beanery, was inspired by his Lithuanian Jewish mother’s stories of her childhood. “On Friday afternoons, as the ovens were being turned off for the Sabbath, they would put the crock in the ovens,” recalled Irving Naxon’s daughter, Lenore. “And then, when shabbat was over Saturday night, they would have their Saturday evening dinner.”
The Beanery was one of over 200 inventions Naxon patented before eventually selling his company to Rival.
The topic of patents also arose in the story of catsup: “The 4707 has actually been patented by Heinz, the result of years of research and development. “
In the “Today’s Special” component, Susan Spencer talked about pumpkin pie spice, an invention of sorts:
Pumpkin Pie Spice is a blend of four spices: cinnamon, allspice, ginger, and nutmeg.
McCormick started the magic back in 1934. Jill Pratt, VP of marketing at McCormick: “Pumpkin pie spice was originally created to make great-tasting pumpkin pies.”
The shift to “wisdom of the crowd” was seen in the story on the Black Swan restaurant, owing its fame to ranking on Trip Advisor. The Black Swan was named the Best Restaurant in the World by Trip Advisor.
The impact of the Trip Advisor credential was noticeable:
“In terms of business, it’s just a game-changer,” chef Tommy Banks said. “We’re fully booked. We release bookings three months in advance. And people sit online at midnight and snap them bookings up. So it’s amazing. You don’t even have to answer the phone. Because by the time you wake up in the morning, all the bookings have gone!”
The word “innovation” arose:
What’s the attraction? Innovative cooking using local products. Really innovative.
The Black Swan’s signature dish, based on the previously humble beet root, treated more like a steak, with exotic toppings.
“Kind of a braised meat,” Banks said, “on top of it you got horseradish and the goat’s curd. And beef and horseradish is, like, the most classic English [dish].”
“So, where did that idea come from? How did you decide, ‘Hmm, beet root’?”
“Well, when you got about 10,000 beet root in a field, you have to come up with a pretty original idea of something to do with it!”
Martha Stewart came up with a few trademark-worthy remarks:
I understand how oprah feels
Good for the brand
As to the topic of “multicookers,” seeContinue Reading ...
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$$ Alternatively, the complexes between CRP and PCHPC may be less stable than those formed by SAP and CPHPC. / 一方、ＣＲＰとＰＣ…
by Dennis Crouch BASF v. Johnson Matthey (Fed. Cir. 2017) BASF’s catalytic conversion system patent claims includes the functional limitations that the system is “effective for catalyzing”/”effective to catalyze” NH3 oxidation. In the infringement litigation, the district court sided with the accused infringer – holding that the functional language was unduly indefinite – rendering the claim […]Continue Reading ...
PRESIDIO COMPONENTS V. AMERICAN TECHNICAL CERAMICS: Nov. 21, 2017. Before Dyk, Moore, and Taranto. Takeaway: The Federal Circuit held that, with respect to patent claims covering multilayer capacitors with a fringe-effect capacitance capable of being determined by measurement, the claims are not indefinite because a well-known method for determining capacitance …
The post Claims Requiring a Fringe-Effect Capacitance Capable of Being Determined by Measurement Held Not Indefinite appeared first on CAFC Blog .Continue Reading ...
The World Health Organization is presenting its draft work program for 2019-2023 for consideration by member states this week.Continue Reading ...
This week several committees in the European Parliament voted on a pile of copyright-related dossiers, and in some instances the steps taken were really small. But the issues include controversial aspects in the legislative drafts on copyright review, …Continue Reading ...
by Dennis Crouch Presidio Components v. American Technical Ceramics (Fed. Cir. 2017) Intervening Rights: When issued claims are substantially amended — whether during reissue, reexamination, or AIA-Trial — an accused defendant will have “intervening rights.” In particular, the defendant will not pay back-damages for any infringement prior to completion of the post-issuance action. Section 252 explains that the question is whether […]Continue Reading ...
By Stuart Meyer I was reminded of this question, often posed by my dad to remind me not to become a slave to statistics, by two dramatic things that happened last week. On the one hand, at the IAM 2017 Patent Law and Policy conference in Washington DC, investors spoke about waning interest in the U.S. market given the increasing frequency of patent invalidations. On the other hand, the Nasdaq composite index (consisting of 86% U.S. companies) hit record closing and intraday highs. Whom are we to believe: those who say weak patent coverage is threatening our economy or those…Continue Reading ...
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