California Patent Attorney® Blog

September 2012 Archives

Federal Circuit Breathes New Life Into Abbott Glucose Monitor Patents

September 29, 2012,

glucose.jpgCalifornia - The Federal Circuit on Friday resurrected two Abbott Diabetes Care Inc. patents for a diabetes-related glucose monitoring system, ruling that the U.S. Patent and Trademark Office's rejection of the patents was based on unreasonable claim constructions.

Abbott had appealed from ex parte reexamination proceedings in which the Board of Patent Appeals and Interferences rejected numerous claims of U.S. Patent Numbers 6,175,752 and 6,565,509.

"The board's construction of 'electrochemical sensor' and its modified construction of 'substantially fixed' are unreasonable and inconsistent with the specification," the Federal Circuit ruled.

The appeals court vacated the board's decisions as to the patentability of Abbott's independent claims at issue and remanded the case for the board to apply the correct claim constructions.

Both the '752 patent and the '509 patent share a common specification that describes methods and devices "for the in vivo monitoring of an analyte using an electrochemical sensor to provide information to a patient about the level of the analyte" in the bloodstream. In particular, the patent specification describes methods and devices for monitoring glucose levels for diabetics.

The specification describes the claimed "electrochemical sensor" at issue as "a device configured to detect the presence and/or measure the level of an analyte in a sample via electrochemical oxidation and reduction reactions on the sensor."
The PTO granted third-party requests for ex parte reexamination of Abbott's patents in March 2006, in relation to consolidated infringement litigation involving Abbott and DexCom Inc., which remains pending.

During reexamination, the examiner finally rejected all of the claims subject to the reexamination as being indefinite, anticipated, or obvious over several combinations of prior art references.

In reviewing the examiner's rejections, the board first had to determine the correct construction of "electrochemical sensor," namely, whether "the transcutaneous electrochemical sensor recited in the claims includes wires and cables," according to the Federal Circuit. The board ultimately concluded that the sensor did have to include wires and cables.

The board also construed the proper construction of the term "substantially fixed" to allow some movement of the sensor relative to the position of the sensor control unit.
Relying on those claim constructions, the board ruled that Abbott's claimed invention was not patentable. Abbott filed requests for rehearing, which the board denied, and from there appealed to the Federal Circuit.

Federal Circuit Rules "Death Care" Co. Can't Head Off Cremation Patent Claims

September 26, 2012,

courthouse.jpgCalifornia - The Federal Circuit on Tuesday shut the door on a patent infringement dispute between two companies over a means of cremating human remains without incinerating them, ruling that Matthews International Corp. could not obtain a declaratory judgment that it did not infringe Biosafe Engineering LLC's patents.

The district court correctly determined that Matthews' claims lacked "sufficient immediacy and reality" to support the exercise of declaratory judgment jurisdiction, the Federal Circuit ruled.

Matthews is a leader in the "death care" industry, according to the Federal Circuit. It manufactures cremation equipment, caskets and bronze memorials and sells them to funeral homes.

Matthews is currently marketing a product called Bio Cremation, which uses an alkaline hydrolysis process, rather than incineration, to cremate human remains. According to Matthews, the Bio Cremation equipment offers an "environmentally friendly" alternative to traditional flame-based cremation.

Resomation Ltd. is a Scottish company that manufactures and licenses equipment that employs an alkaline hydrolysis process to dispose of human remains. Resomation has granted Matthews an exclusive license to market and sell its alkaline hydrolysis equipment in the United States.

Biosafe, meanwhile, acquired several patents related to the application of alkaline hydrolysis to the disposal of various types of waste, such as medical waste, infectious agents, and hazardous materials.

In February 2011, Matthews sued Biosafe seeking a declaratory judgment of non-infringement, invalidity, and unenforceability of the patents. By the time it filed an amended complaint in May 2011, Matthews had sold three Bio Cremation units, but none of these units had been installed in customers' facilities.
Matthews alleged that Biosafe had wrongly accused it of patent infringement, and had made false accusations about Matthews to Matthews' customers, potential customers, and employees.

Biosafe also "launched a bad faith whispering campaign in the funeral home marketplace, by making accusations and veiled threats to potential customers" that Matthews' Bio Cremation equipment infringed Biosafe's patents, according to Matthews.
The district court granted Biosafe's motion to dismiss in September 2011, finding that Matthews had not made "meaningful preparation" to conduct potentially infringing activity.

Because the potentially infringing features of the Bio Cremation system were "fluid and indeterminate," Matthews' claim lacked the necessary reality to satisfy the constitutional requirements for declaratory judgment jurisdiction, the district court ruled.

The Federal Circuit agreed, ruling that Matthews' dispute with Biosafe lacks immediacy because there is no evidence as to when, if ever, the Bio Cremation equipment will be used in a manner that could potentially infringe the Biosafe patents.

"A party may not obtain a declaratory judgment merely because it would like an advisory opinion on whether it would be liable for patent infringement if it were to initiate some merely contemplated activity," the appeals court said.

Apple Wants Extra $707M On Top Of $1B Samsung Patent Verdict

September 24, 2012,

iphone-ipad.jpgCalifornia -- Apple Inc. asked a California federal judge Friday to grant it an additional $707 million in enhanced and supplemental damages and interest in the iPad and iPhone patent infringement case that recently yielded a $1 billion verdict against Samsung Electronics Co.

Samsung infringed Apple's patents willfully, tried to conceal its misconduct and did not act in good faith, Apple told Judge Lucy Koh of the Northern District of California in a motion for a permanent injunction and damage enhancements that requested $535 million in enhanced damages under the Lanham Act and Patent Act.
Apple also separately asked for another $172 million in a motion for judgment as a matter of law and amended judgment Friday.

"Samsung made a calculated business decision to copy the industrial designs, graphical user interfaces, and touchscreen navigation technology of the iPhone and iPad," Apple's motion for enhanced damages said. "Samsung has reaped extraordinary rewards from its wrongful sale of iPhone and iPad clones by taking market share, revenues, and profits from Apple."

In the first six months of 2012 alone, Samsung received over $1.5 billion in revenue from the 26 products that the jury found infringed or diluted Apple's patents and trade dresses, according to Apple.

"Samsung's misuse of Apple's intellectual property has caused severe, long-term and irreparable harm to Apple in a market where customer loyalty is critical and at a time when many consumers are making their first smartphone purchases," the motion says.
Samsung has engaged in its wrongful conduct willfully, ignoring repeated warnings from Apple, the California federal court and the Federal Circuit regarding the validity and infringement of Apple's patents and the dilution of its trade dresses, as well as from the press and various carriers that pointed out Samsung's obvious copying, Apple says.
"Samsung bet that the benefits of using Apple's intellectual property would far outweigh any damage award that might result from litigation," the motion says "Even the substantial damages awarded by the jury are dwarfed by the profits Samsung has reaped and will continue to reap from its unlawful conduct. This court can and should take further action."

ITC Says It Will Act On Motorola's Patent Infringement Complaint V. Apple

September 18, 2012,

iphone-apps.jpg California - The U.S. International Trade Commission on Tuesday decided to institute an investigation of Apple Inc.'s iPhones, iPods, iPads and Apple personal computers for potential patent infringement in response to a Section 337 complaint Motorola Mobility LLC filed with the agency a month earlier.

Motorola's complaint against Apple alleges violations of Section 337 of the Tariff Act of 1930 in the importation into the United States and sale of certain wireless communication devices, portable music and data processing devices, computers, and components that infringe Motorola's asserted patents. The company is requesting that the ITC issue an exclusion order and a cease and desist order.

"By instituting this investigation, the USITC has not yet made any decision on the merits of the case," the ITC said Tuesday. The Commission's Chief Administrative Law Judge will assign the case to one of the ITC's six administrative law judges, who will schedule and hold an evidentiary hearing.

The ALJ will make an initial determination as to whether there is a violation of section 337, which is then subject to the Commission's review.

"The USITC will make a final determination in the investigation at the earliest practicable time," the Commission said. A target date will be set for completing the investigation within 45 days after the investigation's institution, it said.

The products at issue include the iPod Touch, iPhone 3GS, iPhone 4, iPhone 4S, iPad 2 and the new iPad, as well as the Mac Pro, iMac, Mac mini, MacBook Pro and MacBook Air.

The specific patents Motorola cites in the complaint include U.S. Patent Numbers 5,883,580, 5,922,047, 6,425,002, 6,983,370, 6,493,673, 7,007,064 and 7,383,983.

The '580 patent generally relates to messaging devices, the '047 patent relates to communication and control systems for multimedia, the '002 patent and '673 patent relate to communication devices, and the '370 patent relates to communications systems for messaging clients. The '064 patent relates to wireless communications systems providing content to wireless communication devices, while the '983 patent relates to managing content between devices.

Citrix Slapped With Extra $5M On Top Of $10M SSL Patent Verdict

September 17, 2012,

citrix.jpg California - A Texas federal judge hit Citrix Systems Inc. Monday with an additional $5 million in enhanced damages to cap a $10 million jury verdict finding the company liable for infringing an SSL Services LLC patent for virtual private networking software.

SSL filed the action against Citrix in 2008 asserting infringement of U.S. Patent Number 6,061,796, and in May 2009 amended its complaint to add claims of infringement of U.S. Patent Number 6,158,011.

In June, following a five day trial, the jury returned a unanimous verdict finding Citrix did not infringe the '796 patent, but did infringe several claims of the '011 patent. The jury also found that the '011 patent was not invalid and that Citrix's infringement is willful, and handed down lump-sum damages of $10 million.

Judge Rodney Gilstrap of the Eastern District of Texas noted that he had the authority to treble the jury's damage award given the circumstances of the case, but opted for a lesser enhancement of $5 million instead.

"The court believes that trebling the damages is not appropriate in this case," the judge said. "However, some lesser but meaningful enhancement is warranted in light of Citrix's willful infringement and its failure to investigate the '011 patent, despite having actual knowledge of the '011 patent . . . since 2000."

Enhanced damages are a punitive measure taken by a court to penalize a willful infringer for his or her increased culpability, but a court must refrain from awarding damages based on the weight of the evidence supporting willfulness and the closeness of the issues at trial, Judge Gilstrap said.

Citrix's failure to investigate the '011 patent year after year -- and after it became aware of the patent -- far outweighs any good-faith belief that it may have formed when it finally did investigate the patent and initiated the reexamination proceedings, he said.

ITC Rules For Apple In Samsung IPhone, IPad Patent Challenge

September 14, 2012,

samsung.jpg California -- Apple Inc.'s iPhones and iPads do not infringe on any Samsung Electronics Co. patents, a U.S. International Trade Commission judge said Friday, marking another win for Apple in its global patent war with its South Korean rival.

Samsung initiated the Section 337 investigation with the ITC last year, alleging Apple has been importing into the U.S. electronic devices including wireless communication devices, portable music and data devices and tablet computers, namely the iPhone and iPad, that infringe Samsung's patents.

ITC Administrative Law Judge James Gildea's initial determination in the case found no violations of Section 337 in the importation of Apple's devices as they relate to any of Samsung's asserted patents, U.S. Patent Numbers 7,706,348, 7,486,644, 6,771,980 and 7,450,114.

The ruling places one more victory in Apple's column in its battle with Samsung. In the biggest salvo of that battle yet, a $1 billion jury verdict handed down in August against Samsung in the Northern District of California sent shockwaves through the smartphone industry and the greater technology sector at large.

Samsung has also scored several wins for itself in other countries, though, including recent favorable court decisions in Japan and its home of South Korea.

Samsung's Galaxy S III phone and 20 other products came under attack from Apple Inc. in a new amended complaint filed in California federal court earlier in September.

Zillow Accuses Rival Trulia Of Home Value Estimate Patent Infringement

September 13, 2012,

brick_house.jpg California - Real estate information website operator Zillow Inc. sued its rival Trulia Inc. in Seattle federal court Wednesday accusing Trulia of infringing its patent for an automated method of determining a home's value based on user input.

"Trulia's blatant and ongoing copying of Zillow's innovative approach to
home valuation infringes Zillow's patent and Zillow is entitled to damages and an injunction against further infringement," Zillow's complaint in the Western District of Washington says. launched in 2006, "revolutionizing the industry" by offering users the patented Zestimate home valuation service, according to the complaint.

The Zillow Zestimate allows home owners and real estate professionals to update automatic valuations of homes with additional home facts and information to refine the valuation. Over 33 million homes have been valued in this way, out of Zillow's database of over 100 million homes, which makes the Zillow database substantially more useful and accurate for users, Zillow says.

Zillow applied for a patent in February 2006 for its process for using users' data input to refine its automatic home valuations. U.S. Patent Number 7,970,674 issued in June 2011, titled "Automatically determining a current value for a real estate property, such as a home, that is tailored to input from a human user, such as its owner."

Trulia runs another real estate information website,, and offers mobile applications for smartphones and tablets, all of which compete with Zillow for web traffic and revenue, according to Zillow.

In September 2011 Trulia announced that it would start providing automatic home valuations using homeowner input to refine those valuations, calling its product "Trulia Estimates."

Like Zestimates, Trulia Estimates provide automatic valuations of properties based on recent sales of similar homes and home facts like number of bedrooms and bathrooms, square footage, and other factors. Trulia Estimates also permits and relies on homeowners to claim their home and provide additional information about their properties to refine the automatic valuations.

When Trulia first launched Trulia Estimates, it was obvious to commentators that Trulia was merely copying Zillow, Zillow claims. Commentators accused Trulia of being a "copycat" of Zillow's Zestimate service and predicted that Trulia's copycat version might "ding" Zillow's web traffic, the company said.

J&J Birth Control Patent Upheld In Infringement Suit V. Lupin

September 12, 2012,

pills.jpg California -- Johnson & Johnson unit Janssen Pharmaceuticals Inc. was vindicated Tuesday in its efforts to prevent Lupin Pharmaceuticals Inc. from making and marketing a generic version of J&J's popular birth control drug Ortho Tri-Cyclen Lo, as a New Jersey federal judge ruled that the underlying patent is valid.

J&J sued Lupin for patent infringement in 2008 after the generic drug maker filed an Abbreviated New Drug Application with the U.S. Food and Drug Administration for an unbranded version of Ortho Tri-Cyclen Lo. Lupin filed an accompanying certification asserting that U.S. Patent Number 6,214,815 is anticipated, obvious and invalid.

Based on the evidence presented at a bench trial earlier this year on Lupin's patent invalidity defenses to infringement, Judge Stanley R. Chesler ruled Tuesday that Lupin failed to prove the asserted claims of the '815 patent are invalid.

In 2010 the court entered a consent order in which J&J and Lupin stipulated that the filing of the ANDA constitutes an act of infringement, should the patent be found valid. Accordingly, Tuesday's ruling effectively counts as an infringement finding against Lupin.

"In making their anticipation case, defendants rely on a key unsupported proposition: if a prior art reference discloses a genus containing a large number of species, a challenger may reduce the size of the genus by asking which species would have 'stood out' to the skilled artisan," Judge Chesler said. "Defendants' anticipation case turns entirely on this proposition, and they have shown no legal support for it."

As far as obviousness is concerned, Lupin did not lay an adequate legal foundation for the proposition that the failure to provide scientifically valid evidence that Ortho Tri-Cyclen Lo exhibits unexpected results should lead the court to find the patent invalid as obvious, the judge said.

"In short, for any number of reasons, defendants' attack on the scientific validity of the evidence of unexpected results fails to show this court any basis to find the '815 patent invalid as obvious," he said.

Federal Circuit Revives Some Santarus Generic Zegerid Patent Claims V. Par

September 5, 2012,

pills-tablets.jpgCalifornia - The Federal Circuit on Tuesday gave Santarus Inc. another chance to prove that its patents for the heartburn drug Zegerid are valid and that Par Pharmaceuticals Inc.'s proposed generic version would infringe those patents.

The district court erred by holding that some of the thirty-six asserted claims would have been obvious over the prior art, the Federal Circuit said in support of its partial reversal of a district judge's ruling. The appeals court affirmed the remainder of the lower court's rulings.

Santarus is the exclusive licensee of patents on specified formulations of benzimidazole proton pump inhibitors, which constitute a class of chemical compounds that inhibit gastric acid secretion and help prevent and treat stomach acid-related diseases and disorders.

U.S. Patent Numbers 6,489,346, 7,399,772, 6,780,882, 6,699,885 and 6,645,988 are for the inventions of Dr. Jeffrey Phillips, and are assigned to the University of Missouri. Santarus provides the PPI product omeprazole in the formulations covered by the Phillips patents, with the brand name Zegerid.

Par filed an Abbreviated New Drug Application for U.S. Food and Drug Administration approval to sell a generic counterpart of the Zegerid products. The district court found that Par's ANDA products infringe the Phillips patents, but held all of the asserted claims invalid on the ground of obviousness.

The district court also held certain claims invalid on the ground of inadequate written description. On the defense of unenforceability, it held that there was no inequitable conduct by Dr. Phillips, the University of Missouri, or their counsel in procuring the patents. Each side subsequently appealed the ruling against it.

The Federal Circuit reversed district court's ruling that the asserted claims of the '772 patent and two claims of the '882 patent would have been obvious, and the district court's holding that the claims of the '772 patent are invalid for lack of written description.

The appeals court affirmed the district court's ruling that Par failed to establish inequitable conduct, as well as the lower court's determination that several claims of the of the '882, '885, '346 and '988 patents would have been obvious over the prior art.

Circuit Judge Pauline Newman dissented in part from the majority ruling, saying while she agreed that there was no inequitable conduct, the appeals court made three major errors that misconstrue the established law.

The court created a new "written description" requirement for limitations in claims, a requirement with important consequences for patent content and prosecution, and that will taint large numbers of issued patents, she said.

The panel majority also held that the disclosure in a parent patent is a reference against the common disclosure in a continuation-in-part patent, again tainting many properly granted patents, according to Judge Newman.

Finally, the majority incorrectly held that most of the claims in suit are invalid on the ground of obviousness over references that explicitly teach away from the inventions in the Phillips patents, she said.

"The court's new rulings are contrary to statute, precedent, and common sense," Judge Newman said. "They simply add to the unreliability of duly granted patents, in new and unacceptable ways."

Apple Nets Patents For Multi-Touch Screen, Carbon Fiber Housing, More

September 4, 2012,

iPad.jpgCalifornia - Apple Inc. secured over two dozen new patents on Tuesday covering technology that includes a liquid crystal display capable of multi-touch functionality and a process for molding carbon fiber that could lead to future MacBook casings made of the material.

U.S. Patent Number 8,259,078, titled "Touch screen liquid crystal display," discloses LCD touch screens that integrate the touch sensing elements with the display circuitry.

Touch sensing elements can be completely implemented within the LCD stackup but not between the color filter plate and the array plate, under the patent. Alternatively, some touch sensing elements can be between the color filter and array plates with other touch sensing elements not between the plates.

In another alternative, all touch sensing elements can be between the color filter and array plates, which can encompass both conventional and "in-plane-switching" LCDs. In some forms, one or more display structures can also have a touch sensing function.

Techniques for manufacturing and operating such displays, as well as various devices embodying such displays are also covered by the patent.

The invention is credited to Steve Porter Hotelling of Los Gatos, California, Wei Chen of Palo Alto, California, Christoph Horst Krah of Los Altos, California, John Greer Elias of Townsend, Delaware, Wei Hsin Yao of Fremont, California, John Z. Zhong of Cupertino, California, Andrew Bert Hodge of Palto Alto, California, Brian Richards Land of Redwood City, California and Willem den Boer of Brighton, Michigan. The application for the invention was filed in June 2007.

U.S. Patent Number 8,257,075, meanwhile, titled "Carbon composite mold design," covers a mold assembly or system that includes a moldbase that holds mold inserts and has embedded fluid lines to facilitate cooling during part formation. The carbon molding technology could be applied to build sturdier housings for Apple's MacBooks and other computers.

"While many designs and methods of manufacture for providing composite molded parts and components have generally worked well in the past, there is always a desire to provide new and improved designs and processes that result in functional and aesthetically pleasing composite parts that can be mass produced," the patent description says. "In particular, it is desirable to provide a carbon composite molding apparatus and process that allows for a more automated mass production of consistent carbon composite parts, such as for computer housings and the like."

Paul Choiniere of Livermore, California, Glenn Aune of Bellingham, Washington, John DiFonzo of Emerald Hills, California, Daniel Hong of Cupertino, California and Kevin Kenney of San Jose, California filed the application for the carbon molding patent in November 2009.