Double Patenting

• Types of Double Patenting Rejections

nStatutory (35 U.S.C. 101) Double Patenting:

n Is There an Embodiment that Falls Within the Scope of One Claim, but Not the Other?

n   Could One Claim be Literally Infringed Without Literally Infringing the Other Claim?

--> If Examined claim and claim of potentially conflicting patent or application DO NOT exactly match in scope – DO NOT make a statutory (35 U.S.C. 101) double patenting rejection.

 

nNon-Statutory Double Patenting

nRejection based on obviousness analysis

nAnalogous to 35 U.S.C. 103 Analysis

nDetermine the Scope and Content of the Claims in the Conflicting Patent or Application

nAscertain the Differences Between the Claims in the Conflicting Patent or Application and the Claim in Issue

nResolve the Level of Ordinary Skill in the Art

nEvaluate Evidence of Secondary Considerations

nRejection based on anticipation analysis

nNon-Statutory Double Patenting Based Solely on Improper Timewise Extension of Patent Rights

* 35 U.S.C. 121 does not prohibit the rejection because xxx patent is a CIP of xxx patent.  If it is a divisional, a non-statutory DP rejection would not be proper.

Obviousness Analysis – Written Rejection

nAny Non-Statutory Double Patenting Rejection Based on an Obviousness Analysis Should Make Clear:

nThe differences between a claim in the examined application compared to a claim in the reference patent (or copending application)

nThe reasons for concluding that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent (or copending application)

How to Overcome a Proper Double Patenting Rejection

n Statutory (35 U.S.C. 101) Double Patenting

nAmend the claim(s)

nCancel the claim(s)

nA terminal disclaimer is NOT sufficient to overcome such a rejection

nDeclarations under 37 CFR 1.131 are NOT sufficient to overcome such a rejection

n Non-Statutory Double Patenting (All Types)

nAmend the claim(s)

nCancel the claim(s)

nFile a proper terminal disclaimer

nDeclarations under 37 CFR 1.131 are NOT sufficient to overcome such a rejection

"Based on" vs. "On the basis of"

The phrases based on and on the basis of are often used interchangeably but should not be, because based on is a participle (a verbal adjective), which can define a noun, pronoun and noun phrase (but not a verb) whereas on the basis of is a prepositional phrase, which can define a verb. Examples of the different information transmitted by their correct usage are [The administration sent a document based on your suggestion] and [The administration sent a document on the basis of your suggestion]. In the former, based on rightly describes the nearest noun (a document) and so tells us that you had something to do with the content of the document; in the latter, on the basis of describes the verb (to send) and tells us that the idea of sending the document (rather than perhaps taking it in person) was yours.


http://www.asiaandro.com/ec/EC4.pdf

MS Word shortcut - indent and others

• Ctrl+M / Ctrl+Shift+M :  increase / decrease indent

• Tab: Go to the ‘File’ tab, and click on ‘Options’. From the list on the left, choose ‘Proofing’. Now, under ‘AutoCorrect options’, click on the ‘AutoCorrect Options…’ button. In the window which appears, click on the ‘AutoFormat As You Type’ tab. Select the ‘Set left- and first-indent with tabs and backspaces’ checkbox. Press the ‘OK’ button twice, and you’re done!

•  For anyone who cares, to change list level up, ALT+SHIFT+Right Arrow. To change it down a level, ALT+SHIFT+Left Arrow.

Patent Damages

http://patent-damages.com

Essential Patent Blog

http://www.essentialpatentblog.com/

Admissibility of Settlement-Related Evidence at Trial

FRE 408

Market Share approach

State Industries v. Mor-Flo Indus.  Fed Cir 1989.

The prevailing method for calculating lost profits damages in patent infringement originated with State Industries v. Mor-Flo1 in the late 1980s.

That decision established both the “market share” rule for lost sales and use of the split award.2

 The market share rule considers that portion of the patent holder’s relevant market that has been captured by the infringing firm.3 In the simplest two-firm model the market share rule assumes that the patent holder would capture all the infringing revenue.4

 

When the market also includes non-infringing alternatives, the market share rule divides the infringing sales among the patent holder and the non-infringing firms in proportion to their respective market shares.5

The split award includes a reasonable royalty to the patent holder for the infringing sales allocated to the non-infringing firms (the split award is not used with a two-firm market).6  The logic of State Industries therefore treats each infringing sale in the relevant market as either a lost sale for the patent holder or a basis for a royalty payment.7

Case laws related patent damages calculation

1.  Presidio Components v. Am. Tech.  (Fed Cir)

2. Rite-Hite v. Kelley

3. Wechsler v. Macke Int’l Trade, Inc.

Two limitations on patent damages- Six Year and Notice

Subject: Two limitations on patent damages- Six Year and Notice

* The Six Year limitation

35 U.S.C. §286 provides that "no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action."

* The Notice limitation

35 U.S.C. §287(a) provides for notice to the public by marking the patented article. If the patentee fails to mark its patents, it cannot recover damages in any infringement action, unless “the infringer was notified of the infringement and continued to infringe thereafter[.]”  Filing an infringement action is such notice.

1) Process or Method claims

The marking provision of § 287(a) does not apply to patents claiming only processes or methods. See Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538 (Fed. Cir. 1993).  In cases where the patent claims are directed to only a method or process, there is nothing to mark. Id; see also Loral Fairchild Corp. v. Victor Co. of Japan, 906 F. Supp. 813, 816 (E.D.N.Y. 1995) (citing Bandag, Inc. v. Gerrard Tire Co., 704 F.2d 1578, 1581, 217 U.S.P.Q. 977, 979 (Fed. Cir. 1983)).

2) Apparatus and Method claims

When the patentee asserts both apparatus and method claims and to the extent that there is a tangible item to mark (i.e., a physical device produced by the claimed method), the notice provision applies.  Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523, 1538-39 (Fed. Cir. 1993).

ResQnet

http://www.tiplj.org/wp-content/uploads/Volumes/v20/v20p181.pdf

a) ResQNet
In ResQnet, ResQNet’s (the patentee) expert relied on seven prior licenses as a “starting point” in determining the reasonable
royalty.51 Five of the licenses were “re-bundling” licenses, permitting the licensees to re-brand the patentee’s software, *192
re-bundle it with the licensee’s own products, and resell the newly-bundled products.52 In addition, the licenses included
services such as technical support and training, and did not specifically mention the patent at issue in the lawsuit.53 ResQNet
failed to offer evidence that the software in these re-bundling licenses (or the users of the software) practiced the patented
method.54 These licenses had a large sliding-royalty rate (a rate that changed depending on various circumstances).55

The Federal Circuit contrasted the large royalty rates in the re-bundling licenses, which showed “no discernible link to the
claimed technology,” with the lower royalty rates in the remaining two licenses, which arose out of litigation.56 Without
evidence of the link, if any, between the re-bundling licenses and the patented method, those re-bundling licenses were
essentially useless as evidence of a reasonable royalty.57 The patent-in-suit dealt “with a method of communicating between
host computers and remote terminals--not training, marketing, and customer support services. The re-bundling licenses
simply ha[d] no place in this case.”58

According to the majority, ResQNet’s expert relied almost exclusively on the first Georgia-Pacific factor--prior licenses of
the patent-in-suit--in evaluating the reasonable royalty.59 Consequently, after the Federal Circuit held that the trial court
should have disregarded the re-bundling licenses, only the two litigation licenses remained as potential damages evidence.60
The court observed in dicta “that the most reliable license in this record arose out of litigation,” but also noted that “litigation
itself can skew the results of the hypothetical negotiation.”61 On remand, *193 the district court would have to reconsider the
reasonable royalty calculation, and it “should not rely on unrelated licenses to increase the reasonable royalty rate above rates
more clearly linked to the economic demand for the claimed technology.”62 In concluding, the Federal Circuit faulted the
district court for relying on the re-bundling licenses “without any factual findings that accounted for the technological and
economic differences between those licenses and the [patent-in-suit].”63 A district court “must consider licenses that are
commensurate with what the defendant has appropriated.”64

In dissent, Judge Newman accused the majority of “creat[ing] a new rule whereby no licenses involving the patented
technology can be considered . . . if the patents themselves are not directly licensed or if the licenses include subject matter in
addition to that which was infringed by the defendant here.”65 The district court recognized that none of the licenses in
evidence was “a perfect approximation of the hypothetical license between ResQNet and Lansa.”66 Judge Newman noted that
“it is not necessary that the identical situation existed in past transactions, for the trier of fact to determine the value of the
injury,”67 and he accused the majority of depriving the fact-finder of relevant information.68

The majority in ResQNet did not hold that a district court may never consider “any licenses involving the technology of [the
patents-in-suit] bundled with additional technologies, such as software code.”69 Rather, the majority took issue with the
district court’s “considering ResQNet’s re-bundling licenses to significantly adjust upward the reasonable royalty without any
factual findings that accounted for the technological and economic differences between those licenses and the [infringed
patent].”70 The majority in ResQNet noted that reasonable royalty damages must be “carefully tie[d] . . . to the claimed
invention’s footprint in the marketplace,”71 and “[a]ny evidence unrelated to the claimed invention does not support *194
compensation for infringement.”72 Where licenses are “radically different from the hypothetical agreement under
consideration,” they are generally not competent proof of damages.73

Micro Motion, Inc. v. Kane Steel Co., Inc., 894 F. 2d 1318 (Fed. Cir. 2003)

http://scholar.google.com/scholar_case?case=10790214856684669985&hl=en&as_sdt=6&as_vis=1&oi=scholarr

Micro Motion, Inc. v. Kane Steel Co., Inc., 894 F. 2d 1318 (Fed. Cir. 2003)

Patent Damages

A

If successful in an infringement suit, a patent owner may recover actual damages or at least a reasonable royalty. 35 U.S.C. § 284 (1982). Where the patentee produces or sells a product (or service) covered by the patent claims, the patentee may seek to recover damages based on a theory of lost profits because the amount is likely to be greater than reasonable royalties.

To recover damages on the theory of "lost profits", a patentee must show that, but for the infringement, it would have made the infringer's sales. King Instrument Corp. v. Otari Corp., 767 F.2d 853, 864, 226 USPQ 402, 409-10 (Fed.Cir.1985), cert. denied,475 U.S. 1016, 106 S.Ct. 1197, 89 L.Ed.2d 312 (1986). This requirement of causation implicates the patentee's manufacturing capacity and marketing capability, the desires of customers for the claimed invention, the relationship of the claimed invention to the product sold and other factors pertinent to the particular market or parties. Causation is most easily found where only two companies, the patentee and the infringer, are in the market. Kori Corp. v. Wilco Marsh Buggies & Draglines, Inc.,761 F.2d 649, 653, 225 USPQ 985, 987 (Fed.Cir.), cert. denied, 474 U.S. 902, 106 S.Ct. 230, 88 L.Ed.2d 229 (1985).

Where there is evidence of a third party competitor, the lost profits theory would appear to be nonviable inasmuch as the third party could have made the sale rather than the patentee. Under such circumstances, there appears to be no possible causation. However, such is not the law.

Patentees have successfully urged modifications to the basic damage theory so as to cover situations other than the simple two-supplier market. There is precedent for finding causation despite an alternative source of supply if that source is an infringer or puts out a noninfringing product that is an unacceptable alternative, or has insignificant sales. See, e.g., Bio-Rad Laboratories, Inc. v. Nicolet Instrument Corp.,739 F.2d 604, 222 USPQ 654 (Fed.Cir.) (proof of no acceptable substitutes), cert. denied, 469 U.S. 1038, 105 S.Ct. 516, 83 L.Ed.2d 405 (1984); Gyromat Corp. v. Champion Spark Plug Co., 735 F.2d 549, 222 USPQ 4 (Fed.Cir.1984) (no alternative competing source where only four or five machines sold); Central Soya Co. v. Geo. A. Hormel & Co., 723 F.2d 1573, 220 USPQ 490 (Fed.Cir.1983) (no acceptable alternatives because, inter alia, scale of operations of others was insignificant). Other litigants have been held entitled to lost profits damages calculated on a portion of an infringer's sales based on the patentee's market share. State Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 1577-78, 12 USPQ2d 1026, 1029 (Fed.Cir.1989), cert. denied, 493 U.S. 1022, 110 S.Ct. 725, 107 L.Ed.2d 744 (U.S.1990). These various theories are all invoked here to justify discovery from K-Flow of its products, comparative test results, sales figures, customers' names, and the like, to enable Micro Motion to determine which version or versions of the various lost profits damage theories to pursue.

While the Federal Rules of Civil Procedure unquestionably allow broad discovery, a right to discovery is not unlimited. Hickman v. Taylor, 329 U.S. 495, 507, 67 S.Ct. 385, 391, 91 L.Ed. 451 (1947). As a matter of procedure, to secure protection from discovery, a nonparty may invoke the inherent power of the court, see 5A J. Moore & J. Lucas, Moore's Federal Practice, § 45.05[3], at 37 (2d ed.1989), or Fed.R.Civ.P. 45(b), if appropriate, to quash a subpoena. Under Rule 45(d), a nonparty subpoenaed for testimony and production 1323*1323 of documents may move for a protective order under Fed.R.Civ.P. 26(c), including an order that discovery not be had. Confidential commercial information warrants special protection under Rule 26(c)(7). Smith & Wesson v. United States, 782 F.2d 1074, 1082 (1st Cir.1986). A nonparty also may merely object to production of documents and things. Fed.R.Civ.P. 45(d)(1). By merely objecting, such discovery is foreclosed except pursuant to an order of the court. Id. Also, Rule 26(d), which pertains to controlling the sequence and timing of discovery, may be invoked as a mechanism for accommodating the competing interests of those involved in the discovery process, for example, by delaying discovery on damages until liability is established. Cf. Sinclair Refining Co. v. Jenkins Petroleum Process Co., 289 U.S. 689, 53 S.Ct. 736, 77 L.Ed. 1449 (1933).

While the burdens may vary somewhat depending on which rule or procedure is invoked, the substantive considerations for denying a party discovery are generally the same and may be gleaned from Rule 26(b), (c) and (g). Truswal Sys. Corp. v. Hydro-Air Eng'g, Inc., 813 F.2d at 1210-11, 2 USPQ2d at 1036-37; American Standard, Inc. v. Pfizer Inc., 828 F.2d 734, 739-42, 3 USPQ2d 1817, 1820-23 (Fed.Cir.1987); Heat & Control, Inc. v. Hester Indus., Inc., 785 F.2d at 1023-26, 228 USPQ at 931-33. Discovery may not be had regarding a matter which is not "relevant to the subject matter involved in the pending action." Fed.R.Civ.P. 26(b)(1). Even if relevant, discovery is not permitted where no need is shown, or compliance would be unduly burdensome, or where harm to the person from whom discovery is sought outweighs the need of the person seeking discovery of the information. Fed.R.Civ.P. 26(b)(1); American Standard, Inc. v. Pfizer Inc., 828 F.2d at 739-42, 3 USPQ2d at 1820-23. Rule 26(g) specifically requires that the party or his attorney seeking discovery must certify that he has made a "reasonable inquiry" that the request is warranted. This "reasonable inquiry" is also imposed by Rule 11. See Fed.R.Civ.P. 11, Notes of Advisory Committee on Rules — 1983 Amendment ("Discovery motions, however, fall within the ambit of Rule 11."); see also Apex Oil Co. v. Belcher Co., 855 F.2d 1009, 1015 (2d Cir.1988) (noting that Rule 26(g) "imposes a more stringent certification requirement than Rule 11" because a discovery request usually pertains to more specific subject matter than that covered under Rule 11). Each of the requests here is improper under one or more of these protective grounds.