Author Archives: PSMN®

Are Human Genes Patentable?–Association for Molecular Pathology v. Myriad Genetics

Posted on April 16, 2013 | 2 comments

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Supreme CourtYesterday, the United States Supreme Court heard oral argument on a key patent issue—are human genes patentable subject matter? In the Association for Molecular Pathology v. Myriad Genetics, Inc., (No. 12-398), the Supreme Court granted certiorari to decide this issue, which will have a profound impact on the medical research and pharmaceutical industries. (For a complete list of the issues presented, see here). This post follows up on our earlier post discussing the Court’s decision to grant cert.

In this case, Myriad Genetics identified and isolated a human gene that could be used to help predict a patient’s genetic predisposition to breast and ovarian cancers. Myriad then obtained a patent on, among other things, cDNA molecules associated with the relevant genes, as well as the use of the molecule to  probe a patient’s DNA and to prime the production of the patient’s DNA in the laboratory. (The parties’ briefs explaining the details of the patented claims can be found here). Myriad then created a test that could be used on patients to help assess whether they were more likely to be predisposed to certain kinds of breast and ovarian cancers.

After creating the tests and obtaining the patent, Myriad sent letters to various researchers, informing them of the patent rights and requesting that they refrain from infringing. As a result, numerous researchers ceased working in this area. A number of researchers and institutions filed a declaratory judgment action, seeking a determination, among other things, that the patents were invalid.

The Federal Circuit, in a split decision with each Judge writing separately, held that human genes are patentable subject matter. The Association filed a writ of certiorari challenging this decision, which the Supreme Court granted. Oral arguments were held on April 15, 2013, and a transcript can be found here.

While it is always difficult to predict how the Supreme Court will rule, there are some aspects that appeared to concern the Court more than others.  First, the Justices probed the parties for where and how lines should be drawn about what is a product of nature that should not be patented and what is the result of human intervention. This is the heart of the question presented and what they were struggling to define. Ultimately, the Court seemed more inclined to uphold the patent claims associated with the cDNA, as they involved more human intervention, but we will have to wait to see what they actually do.

Second, the Court  questioned whether striking these kinds of patents  would eliminate the incentives for inventors to invest the time and money in developing these kinds of tests and treatments. There was some concern that eliminating these kinds of patents could hinder innovation. On the other hand, counsel for the Association argued that allowing these kinds of patents actually creates a disincentive, as many researchers and companies will not invest any time and money for fear of being sued (which is what happened here).

The transcript of the oral argument makes for a fascinating read. What will be more interesting is reading the ruling. We expect a decision sometime later this summer.

For more analysis on the oral arguments, see here.

 

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Federal Circuit to Reconsider De Novo Claim Construction Review–Lighting Ballast Control Order

Posted on March 25, 2013 | Comments Off on Federal Circuit to Reconsider De Novo Claim Construction Review–Lighting Ballast Control Order

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Federal CircuitOn March 15, 2013, the Federal Circuit issued an order in Lighting Ballast Control LLC v. Philips Electronics North America Corp, Case No. 2012-1014, -1015, stating that an en banc panel of the Court will consider whether and to what extent it should afford any deference to a district court’s patent claim construction. The Federal Circuit is determining whether it will overrule its prior decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998).

The Supreme Court, in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), determined that claim construction is a matter of law exclusively for the courts, and is not a factual matter for juries (although it did recognize that claim construction is somewhat of a “mongrel,” having aspects that are both legal and factual). In Cybor, the Federal Circuit considered what the implication of that finding would be on how it, as an appellate court, would review a trial court’s construction of the claims in a patent. It concluded that because claim construction is a matter of law, it would review a district court’s construction of the terms in a patent de novo, meaning without any deference to the lower court’s conclusion. This has been the state of the law for some time now.

The implications of the Cybor decision are significant to patent holders and those accused of infringement. As a practical matter, parties to a lawsuit have come to view a district court’s claim construction as a somewhat intermediate position. After all, if the Federal Circuit will give no deference to the district court’s conclusions, there is a significant possibility that those conclusions could be reversed on appeal. Fair or not, the perception of the Federal Circuit among some practitioners is that a trial court’s claim construction only has a 50/50 chance of being affirmed on appeal. (For some interesting studies of Federal Circuit reversal rates, see here, here, and here). Many have complained that this uncertainty discourages settlement, because the “losing” side on the claim construction issue often feels that it will be “vindicated” on appeal.

On the other hand, by having the Federal Circuit have the “final say” on claim construction, it promotes more consistency and, hopefully, better results, as the Federal Circuit is often far more familiar with claim construction issues than many district courts and they (and their clerks) are often better versed in the technologies described in these patents.

Patent holders are also fearful that if claim construction is not reviewed de novo, an unfavorable claim construction by a district court may be very difficult to overcome and could affect how a particular term is construed in other patents held by the patentee. If the Federal Circuit has the final say, a patentee has more options. For instance, it can appeal to the Federal Circuit a get a fresh look at the issue, or it can settle the case with a realistic hope that the Federal Circuit in a later case would not be particularly beholden to how a district court in a previous case construed a claim term.

Thus, this case will be particularly important for parties in patent litigation. It will be very interesting to listen to the oral argument in the Lighting Ballast case and see what the Federal Circuit ultimately decides. This may, in the end, be another issue that the Supreme Court will decide to weigh in on.

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Pennsylvania Adopts UIDDA as of December 24, 2012

Posted on February 8, 2013 | Comments Off on Pennsylvania Adopts UIDDA as of December 24, 2012

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. () and Jeffrey Ludwikowski, shareholder at Picadio Sneath Miller & Norton, P.C.

Previously, when out-of-state litigants attempt to serve subpoenas in Pennsylvania for discovery in out-of-state actions, they had to open a miscellaneous matter in Pennsylvania, which could be an involved and difficult process—NO MORE. Pennsylvania has adopted the Uniform Interstate Depositions and Discovery Act, which became effective on December 24, 2012. This will make out-of-state discovery in Pennsylvania easier and more efficient, by eliminating the potpourri of individualized county by county out-of-state discovery procedures across Pennsylvania.

On October 24, 2012, Governor Corbett signed Act 183 of 2012, which amends the Pennsylvania Judicial Code by adopting the Uniform Interstate Depositions and Discovery Act (the “UIDDA”). The UIDDA is a model uniform law that allows for out-of-state litigants to obtain third-party discovery in Pennsylvania. Because foreign subpoenas lose jurisdiction at the border of their issuing state, the subpoena must be “reissued” in Pennsylvania to be effective within the Commonwealth

The procedure under UIDDA is simple: foreign litigants present their foreign subpoena to the “in the jurisdiction in which the person who is the subject of the [subpoena] resides, is employed[,] or regularly transacts business in person.” After paying a fee (and complying with local rules) the prothonotary will issue the subpoena for service within its jurisdiction. The Pennsylvania subpoena must incorporate the terms of the foreign one and must contain contact information for all counsel of record and any pro se party. Requesting that a subpoena be issued in Pennsylvania under the UIDDA does not constitute a court appearance, so out-of-state attorneys need not worry about seeking admission pro hac vice.

The Pennsylvania Rules of Civil Procedure govern service and any motion practice related to the Pennsylvania subpoena or its enforcement (including protective orders). This procedure applies both to subpoenas for depositions and subpoenas for documents and things.

Here is the link to the Act as adopted in Pennsylvania.

While the UIDDA will ultimately make out-of-state discovery in Pennsylvania easier, it may take a while before the new process becomes streamlined and efficient. In fact, there have already been reports of difficulties in its implementation as attorneys and the various Prothonotaries across the state become familiar with this new process. However, we expect these issues to resolve themselves soon.

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Is Discovery Allowed in Inter Partes Re-examination? — Abbott Labs. v. Cordis Corp.

Posted on January 9, 2013 | Comments Off on Is Discovery Allowed in Inter Partes Re-examination? — Abbott Labs. v. Cordis Corp.

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Today, the Federal Circuit is hearing oral argument in Abbott Laboratories v. Cordis Corp. (12-1244) on an interesting issue of whether parties can subpoena documents or testimony in an inter partes re-examination proceeding before the USPTO under 35 U.S.C. § 24.

Federal CircuitCordis sued Abbott Labs and Boston Scientific alleging infringement of two patents. After the filing of the lawsuit, both defendants initiated separate inter partes  re-examination proceedings before the USPTO, which were merged. During this merged proceeding, Abbott Labs and Boston Scientific asserted that the patents were obvious and, therefore, invalid under 35 U.S.C. § 103(a). In support of this assertion, Abbott and Boston Scientific submitted affidavits from experts  supporting their position.

In response, Cordis attempted to serve subpoenas through the district court seeking evidence relevant to the question of obviousness. Cordis also filed a petition with the USPTO requesting that the Director of the USPTO clarify the USPTO’s rules with respect to the service of subpoenas under 35 U.S.C. § 24 in inter partes re-examinations.

Abbott Labs filed a motion to quash the subpoenas, arguing that (1) the inter partes re-examination procedures prohibit discovery, (2) 35 U.S.C. § 24 does not authorize the issuance of subpoenas because inter partes re-examinations are not “contested cases” within the meaning of the statute, (3) Cordis required USPTO permission before serving the subpoenas, and (4) the subpoenas were vexatious, untimely, and threatened to reveal confidential information.

Prior to oral argument on the motion to quash, the USPTO denied Cordis’s petition, concluding that no discovery is permitted in inter partes re-examinations. The district court then granted Abbott’s motion to quash, agreeing with the USPTO and finding that an inter partes re-examination is not a “contested case” for purposes of the statute. Cordis appealed to the Federal Circuit, which is hearing oral argument today on the issue.

It will be interesting to see how the Federal Circuit rules and whether it allows parties to inter partes re-examinations to engage in this form of limited discovery.

  • Copies of the parties’ briefs (along with the amicus brief of the United States) are available here.
  • An audio recording of the argument is generally posted within a day or so of the oral argument and can be found here when it is posted.

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Are Human Genes Patentable?–Supreme Court to Decide in Association for Molecular Pathology v. Myriad Genetics

Posted on December 14, 2012 | 3 comments

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

On November 30, 2012, the United States Supreme Court granted certiorari in Association for Molecular Pathology v. Myriad Genetics (No. 12-398) to decide whether human genes are patentable. The case arises out of a declaratory judgment action brought by various researchers and institutions that certain claims in patents held by Myriad Genetics relating to isolated genes associated with a predisposition to breast and ovarian cancer are invalid because the subject matter of the patents is not eligible to be patented under 35 U.S.C. § 101.

SupremeCourtImage_1What Subject Matter Can Be Patented?

The Patent Act provides that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . .” 35 U.S.C. § 101.

While this statement and scope is broad, it is not unlimited. The Supreme Court has held, most recently in Mayo Collaborative Services v. Prometheus, Inc., 132 S. Ct. 1289 (2012), that laws of nature, natural phenomena, and abstract ideas are not eligible to be patented, as are mental processes and products of nature.

The question in this case is whether human genes fall within the scope of Section 101, or whether they are natural phenomena that are ineligible to be patented.

Split Decision at the Federal Circuit

In deciding this issue, the Federal Circuit panel (comprised of Circuit Judges Lourie, Moore, and Bryson) each wrote separate opinions endorsing different rules to decide this issue. Judge Lourie (writing for the majority) found that human genes are patentable, reasoning that the isolated DNA molecules at issue in the claims of the patents are not found in that form in nature. Because they are different from natural materials and isolated through the product of human ingenuity, they are eligible to be patented.

Judge Moore agreed that the claims are patent eligible, but for a different reason. She noted that human genes have been patented for years and are specifically allowed by the US Patent Office. She also noted that if she was writing on a blank slate, she might reach a different conclusion.

Finally, Judge Bryson dissented, finding the claims were not patent eligible. He found that the isolated genes performed the same function as they do inside the full DNA sequence. Thus, there was no transformation, and the genes are nothing more than an extraction of a naturally-occurring phenomena.

The researchers and institutions petitioned the Supreme Court for a writ of certorari, which the Supreme Court granted on the limited question of “Are human genes patentable?”

Numerous Amici Have Weighed in

Given the importance of this issue, both to researchers and pharmaceutical companies, a number of parties have weighed in with the Supreme Court, urging that the standard for patent eligibility for human genes be clarified. Their briefs can be read here.

It will be interesting to follow this case and its briefing in the coming months to see how the Supreme Court decides this issue or whether it leaves it to Congress to decide.

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Hor v. Chu–Laches and Correcting Inventorship

Posted on November 16, 2012 | Comments Off on Hor v. Chu–Laches and Correcting Inventorship

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

This week, the Federal Circuit issued an opinion clarifying the time in which an individual who believes he or she is a co-inventor of an invention (but is not listed as an inventor) must act in order to correct the inventorship of a patent or patent application. Under 35 U.S.C. § 256, the Patent Office or the courts may correct any errors in the naming of the inventors in an issued patent. In Hor v. Chu, No. 2011-1540, the Federal Circuit determined that an individual who believes himself or herself to be an omitted inventor has six years from the date the patent issues to attempt to correct the inventorship, or the presumption of laches will apply. This is true even if the individual knows of the inventorship problem before the patent issues.

The patents at issue in this case involved high temperature superconductors and had a rather long history. The applications were filed in 1987 and 1989 by a professor from the University of Houston (Chu), but the patents did not issue until 2006 and 2010, respectively, due to a lengthy interference proceeding. A graduate student (Hor) and another scientist (Meng) who worked in Chu’s lab contended that they were co-inventors of the two patents. The patents listed Chu as the sole inventor, though. The trial court found that both Hor and Meng were aware (or should have been aware) that Chu applied for the patents without listing their names no later than the early 1990s. Hor did not file suit until 2008, and Meng did not move to intervene until 2010, however. Chu moved for summary judgment, arguing that Hor and Meng’s claims were barred by laches, which is a doctrine that can bar a claim if a plaintiff delays filing suit for more than six years after the claim accrues. Based on the trial court’s determination that Hor and Meng knew of the inventorship issue in the 1990s, the trial court found that their suit was barred by the doctrine of laches.

The Federal Circuit reversed, finding that the statute (35 U.S.C.§ 256) is quite clear that claim to correct inventorship requires that the patent issue first. Therefore, neither Hor nor Meng could have brought the § 256 claim until after the patents issued. Because laches cannot bar a claim before it accrues, the Federal Circuit held that Hor and Meng’s knowledge in the early 1990s could not bar their § 256 claims. Instead, the laches clock can only start on the day the patents issued. Because Hor and Meng filed suit within six years of these dates, the Federal Circuit held that the trial court erred in granting summary judgment on the basis of laches:

[T]he laches period for a § 256 correction of inventorship claim begins to run when “the omitted inventor knew or should have known of the issuance of the patent,” regardless of whether the omitted inventor knew or should have known of the omitted inventorship while the patent application was pending before the PTO.

While recognizing that this holding could create incentives for omitted inventors to wait to challenge their omission, the Federal Circuit felt it was bound by the statutory language and the case law regarding laches. In addition, the Federal Circuit noted that a different holding could create unnecessary work, given that claims are often narrowed or dropped during prosecution and who should be an inventor may not be clear until the patent actually issues.

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Who Will Inherit Your Digital Music–Bruce Willis to Sue Apple?

Posted on September 6, 2012 | Comments Off on Who Will Inherit Your Digital Music–Bruce Willis to Sue Apple?

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

Earlier this week, an interesting story emerged that Bruce Willis was considering suing Apple over whether his children could inherit his iTunes collection after his death. The story turned out to be a hoax, but the questions it raises regarding ownership and rights in this digital age are very interesting.

Decades ago, music, movies, and books were exclusively purchased in a tangible form—records or CDs, videotapes or DVDs, and paperback or hardback books. While these formats are still largely available, more and more people are purchasing this type of content in an intangible digital format through services like Apple’s iTunes and Amazon’s Kindle stores.

In the past, the purchase of a tangible product like a record or book made transferring the product easy. Under the first sale doctrine, one simply could give or sell the record or book to another without any constraints. Thus, inheriting the record or the book did not pose any problems from an intellectual property or legal perspective. (Whether anyone wanted grandma’s or grandpa’s record or book collection is another matter).

When one purchases a song from iTunes or a book for Amazon’s Kindle store, the issue gets more complicated. One is actually purchasing a limited license to listen to the song or read the book on a limited number of devices. No physical, tangible products are purchased. Normally, the license is limited to the purchaser and is arguably valid only during the lifetime of the purchaser (assuming there are no other restrictions, as there sometimes are with video “purchases”). Thus, there is nothing tangible to give to another. Indeed, the licenses often explicitly restrict the giving or selling of the product to another.

Getting back to the situation that Bruce Willis was supposedly concerned about—what would happen to all of the music he purchased after he died? Most of the time, families will likely not be particularly concerned about whether they inherit grandpa’s music collection, but not always. For instance, what if the father or mother dies prematurely, and everything that the family was listening to or watching on a regular basis was purchased through that person’s iTunes account? The shift to a digital medium could have a very real and expensive consequence (in addition to whatever emotional trauma the family has to deal with from the untimely death).

I think a more concerning issue is the potential effect on a family’s photographs and letters, which can be some of the most treasured possessions a family has. With the shift to storing photographs on-line and corresponding through e-mail rather than letters, we are moving some of our most prized possessions and memories from tangible forms that can easily be preserved and given to others to an intangible form that may have unexpected and unanticipated restrictions. For example, if an individual stores all of his or her photographs on-line, what happens when that person dies? Will the account be closed and all the files deleted once the annual payments stop? Even if it is not, who will be allowed to access it, especially if the passwords were never written down or are lost?

We are still in the infancy of the digital age in many respects and questions like these are only beginning to be considered, and many companies’ terms and conditions are simply not designed to deal with circumstances like these. So, what should one do?

Where possible and when the ability to transfer the item to your spouse, children, or others is important, then efforts should be made to make sure the item is in a tangible form or resides on a computer in a way that is accessible regardless of whether you are alive or whether you fail to make an annual payment to a particular cloud service. In the case of pictures, that could mean having them printed out or storing them in a folder on your hard drive (instead of in the cloud). The same is true of e-mails. If there are particularly important e-mails, make sure that they have been saved on your hard drive, instead of leaving them in the cloud, or print them out.

Finally, it is a good practice to leave instructions as to what important on-line accounts you have (e-mail, Facebook, iTunes, cloud storage, banking, etc.) and how to access them so that others can get access to these accounts where appropriate if you are no longer able to. Given the important nature of these accounts, you should only leave this information with people you trust or in a location that is secure (e.g., a bank box).

It will be interesting to see how companies respond to issues like the one that Bruce Willis supposedly raised (even though he didn’t actually). The cloud provides many great conveniences, but as is often true with new technologies and ways of doing things, there are many unexpected issues that emerge. Hopefully, people, companies, and the law will find solutions to preserve those family treasures without too many hassles.

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Patent or Trade Secret — Which One to Choose?

Posted on August 24, 2012 | 1 comment

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

There was an interesting article on CNBC yesterday that highlights a popular misconception people have regarding how to protect their ideas and innovations. While people often think of using patents to protect their ideas, the law provides a number of different mechanisms (such as trade secrets) that can often be far more useful and valuable than patents. The article highlights how some of the most valuable intellectual property in the world, such as the Dr. Pepper formula, KFC’s “Secret Recipe of 11 Herbs and Spices,” and the formula for WD-40, is not patented, but is instead protected as a trade secret.

Both patents and trade secrets provide important protections for an individual’s or company’s innovations, but they protect them in very different ways. Patents generally entitle an inventor to the exclusive right to make, use, and sell the invention described in the claims of the patent for a 20-year period from the date the patent application is filed. As part of the quid pro quo for obtaining this government-sanctioned exclusive right, the inventor must describe how to make or use his or her invention in sufficient detail that a person in that field would be able to make or use the invention without significant difficulties. Once that 20-year period expires, anyone is free to use that invention.

Trade secrets, on the other hand, potentially can last forever and the law will prevent others from improperly taking or using the invention, as long as the individual or company takes sufficient steps to keep the invention secret. Thus, a former employee who happens to know the secret will not be allowed to make the product in competition with the inventor, or a competing company cannot use industrial espionage to steal the secret. The law does not prevent another from using the secret if the person independently and lawfully discovers the same invention on his or her own, though. It only protects the inventor from others who have improperly discovered or used the secret.

From these brief descriptions, it is clear that patents better protect some kinds of inventions, while keeping the invention a trade secret may better protect others. For instance, it may make more sense to consider patenting the invention when the innovative aspect of an invention is readily seen simply by looking at a product (such as with a paper clip or a pop-top soda can).  The law will protect the inventor from anyone else making or selling the same invention for 20 years, even if that other inventor independently came up with the same idea. Trade secret protection is likely of little to no value in this case, because once the invention is sold, everyone knows what the invention actually is.

On the other hand, inventions such as the Dr. Pepper formula are not easy to determine, even when you have a can of Dr. Pepper in your hands. The precise ingredients and the process by which they are blended are not apparent. This kind of invention lends itself to being kept as a trade secret because the invention is not easily reversed engineered. If Dr. Pepper had chosen the patent route instead, it would only have had an exclusive right to make and sell the soda only for 20 years, after which everyone could make exactly the same product. By protecting it as a trade secret, it potentially can keep its invention a secret forever.

One of the keys with trade secrets is that the inventor must take reasonable and active steps to keep the invention secret. As the article mentions, many of these companies restrict knowledge of the complete formulas or processes to only a handful of individuals and take steps make sure that the products are manufactured in such a way that no one can determine what the recipes are. If an inventor does not take steps to keep his or her invention secret, the law will not do it for him or her.

Obviously, both patent and trade secret law are far more complex than what is discussed here. However, the basic principles are useful to understand so that the right questions can be asked and the right strategies considered when deciding how to protect your secrets and inventions.

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The Dangers of Misleading Press Releases

Posted on August 21, 2012 | Comments Off on The Dangers of Misleading Press Releases

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

When a patent holder sues a potential infringer, the question often comes up about what the patent holder can publicly say about the lawsuit, either to its customers or in press releases. A recent blog post by Scott Daniels in the Reexamination Alert Blog and cross-posted at IPWatchdog shows the problems one company found itself in when it issued press releases that the other side felt went too far.

Background

TASER International (which makes numerous products, such as the famous TASER stun gun) sued Stinger Systems for infringing some of TASER’s patents and for false advertising. While the false advertising claims were resolved by a joint stipulation, the court ultimately found that Stinger infringed one of TASER’s patents.

In response, Stinger filed its own lawsuit against TASER the week before TASER issued its quarterly earnings report, claiming that TASER engaged in false advertising, unfair competition, and injurious falsehood arising out of a study by the National Institute of Justice (“NIJ”) that TASER circulated. Stinger waited until the day of the earnings report to announce the lawsuit in a press release, but never actually served TASER. Later, Stinger voluntarily dismissed the lawsuit after receiving an order to show cause.

Contending that the press release and lawsuit were shams designed to harm TASER’s stock and business, TASER brought another lawsuit against Stinger—Taser International, Inc. v. Stinger Systems, Case No. 2:09-cv-289, in the United States District Court for the District of Nevada—alleging a number of claims, including violations of the Lanham Act. Judge Miranda Du issued an opinion on August 3, 2012 deciding the parties’ partial summary judgment motions on the Lanham Act claims (among other things).

In it, the Court refused to grant summary judgment in favor of Stinger on the claims related to Stinger’s press releases. The Court found that TASER had presented sufficient evidence that the allegations that the press releases were false and misleading could go to the jury.

In particular, the Court noted four issues of fact that prevented granting Stinger’s motion. First, Stinger claimed in its press release that it had served TASER with the lawsuit when it had not. Second, the press release did not adequately explain what the NIJ is and what its report contained. Third, there was evidence that suggested that Stinger “wanted to pursue misleading press releases as an avenue for devaluing TASER.” And, fourth, there were telephone recordings suggesting that the litigation was designed to be vexatious and to drive down TASER’s stock.

Take Aways

While this case is more extreme that most cases, it still serves as an important reminder that the filing of a lawsuit does not give a party a license to say anything it wants. Press releases need to foremost be truthful and provide sufficient context for the statements contained in them, especially those statements that might be viewed as impugning another.

As this case shows, courts will look sometimes look behind the statements to the motivations of the speakers in determining whether the statements are actionable or were intended to mislead others.

As tempting and satisfying as it may be to issue strong press releases, companies and individuals need to take care that the press releases do not themselves become the subject of additional litigation or distract from the legitimate claims an individual is trying to make.

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Full Scope Enablement — Magsil Corp. v. Hitachi Global Storage Techs., Inc.

Posted on August 15, 2012 | Comments Off on Full Scope Enablement — Magsil Corp. v. Hitachi Global Storage Techs., Inc.

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

An often-overlooked aspect of patent drafting is the requirement under 35 U.S.C. § 112, ¶ 1 that the entire scope of the claims must be enabled by the disclosures in the specification. As can be seen from the Federal Circuit’s recent decision in Magsil Corp. v. Hitachi Global Storage Technologies, Inc., Case No. 2011-1221, the failure to fully enable a claim can have grave consequences.

The case involved read-write sensors for computer hard disk drive storage systems. The inventors claimed a method of manufacturing a tri-layer junction and the junction itself. Information is stored by varying the magnetization of an electrode on the hard disk. In one orientation, the resistance is higher than the other, which can be measured to determine whether the electrode is in a “0” or “1” state. At issue was the phrase “causes a change in the resistance by at least 10% at room temperature.” Past inventions were unable to achieve this large of a change, peaking at only 2.7%.

The problem for the patentee was the open-ended language of “at least 10%,” which the Court noted could include changes from 10% to infinity. The specification only described how to achieve changes between 10.0–11.8%, and was silent on how to achieve changes larger than that. The district court granted summary judgment for the defendant, finding that the claims were not enabled and therefore invalid, and the Federal Circuit affirmed.

The Federal Circuit reviewed the history of the full scope enablement requirement, which serves two purposes—(1) to ensure that the patentee adequately discloses the claimed invention and (2) to prevent claims that are broader than what is disclosed. The Court noted that “a patentee chooses broad claim language at the peril of losing any claim that cannot be enabled across its full scope of coverage.” Therefore, in order to meet the enablement requirement, “[t]he specification must contain sufficient disclosure to enable an ordinary skilled artisan to make and use the entire scope of the claimed invention at the time of filing” without undue experimentation.

In this case, the Court found that the claim was invalid because the specification did not enable the full scope of the claims. There was nothing in the specification that described how to achieve changes of the magnitude encompassed by the open-ended claim. In fact, the inventor testified that even he did not know how to create changes greater than 20%. Because “[t]he ‘922 patent specification only enables an ordinarily skilled artisan to achieve a small subset of the claimed range,” the Federal Circuit affirmed the district court’s summary judgment of invalidity.

This case provides an important practice pointer when drafting claims. While one is generally interested in drafting broad claims, it is important that the specification fully supports the range of the claims; otherwise, the entire claim might be invalid. This further suggests that drafters consider using dependent claims to narrow ranges or using so-called “picture” claims, which are more tightly focused on any embodiments known to the inventors at the time of the application.

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