IP Compromise Remains Elusive at WTO Ministerial Meeting

Compromise on intellectual property issues remains elusive at this week’s World Trade Organization ministerial meeting.

An initial statement by the European Union initially identified GIs as a "poltical must have," along with agriculture, non-agricultural market access, and services. However, the US later announced that it does not intend to engage in negotiations on GI extension. "These TRIPS issues are important to many members, but we think it's vital to keep the focus of this meeting on agriculture, (manufactured goods), services. This meeting is not the time to create new mandates on the TRIPS issues," a spokesperson for US Trade Representative Susan Schwab reportedly said at a press briefing on 22 July.

Norwegian Foreign Minister Jonas Støre is continuing informal consultations on three intellectual property issues: 1) the multilateral register for wines’ and spirits’ geographical indications (GIs), 2) extending geographical indications protection beyond wines and spirits (“GI extension”), and 3) proposals to require patent applicants to disclose the origin of genetic material and traditional knowledge. Støre told Intellectual Property Watch late Thursday that movement on these issues would depend on progress on agriculture and non-agricultural market access.

The WTO's goal for this so-called "July 2008 package" was to agree on “modalities” in agriculture and non-agricultural market access (NAMA) — ie, the formulas and other methods to be used to cut tariffs and agricultural subsidies, and a range of related provisions — and to look at the next steps in concluding the Doha round of negotiations.

Europe Ties WTO Negotiations to Protection for Geographical Indications

According to William New and Kaitlin Mara writing for Intellectual Property Watch on July 21, 2008, the outcome of this week's World Trade Organization mini-ministerial (about 40 of the WTO’s 153 members) will be tied to addressing demands from the European Union, Switzerland, Brazil, India, and others on issues related to intellectual property and trade:

In an informal meeting of the WTO Trade Negotiations Committee (TNC), European Union insisted that GIs and Peru insisted that CBD issues are critical to being able to accept an outcome on the other issues.

“On the European side, as on others, there are some political 'must-haves'. In agriculture, NAMA, services and GIs," Peter Mandelson, European Union trade commissioner, said in his statement. "We are prepared to offer more than others in this round, but everyone must understand that we need something in return."

Mandelson explained that the EU “will be the major net loser” in any deal on agriculture, that the region is bringing a “groundbreaking reform of agricultural support,” and that on NAMA Europe will “cut every tariff line, without flexibilities” for entry into “the most valuable market in the world.”

But Europe is only willing to do this if “others also step up to the plate.” This must, Mandelson said, “include moves on questions such as geographical indications.” He added: “They are a form of intellectual property, entitled to effective legal protection.”

The immediate goal of these "July 2008 package" meetings is to agree on “modalities” in agriculture and non-agricultural market access (NAMA) — ie, the formulas and other methods to be used to cut tariffs and agricultural subsidies, and a range of related provisions — and to look at the next steps in concluding the Doha round of negotiations.

United States Trade Representative Susan Schwab told reporters on Tuesday that the United States does not plan to negotiate this week on the extension of high-level protections on product names associated with locations to products other than wines and spirits.

FTC Proposes Compulsory License to Allow Acquisition to Proceed

In the Matter of Flow International Corporation, the U.S. Federal Trade Commission is seeking public comment on the terms of a proposed consent order that would allow Flow International Corporation’s (Flow) proposed $109 million acquisition of rival waterjet manufacturer OMAX Corporation (OMAX) where Flow will be required to grant to any firm a royalty-free license to two OMAX patents relating to the controllers used in waterjet cutting systems.

According to a press release from the FTC, "Since other aspects of Flow and OMAX’s businesses can easily be duplicated by competitors, requiring Flow to grant these licenses will ensure that other firms are able to replace the competition that would otherwise have been eliminated by the proposed acquisition."

The Commission vote to accept the complaint and consent order was 4-0. The complaint, consent order, and an analysis to aid public comment can be found on the Commission’s Web site at http://www.ftc.gov/os/caselist/0810079/index.shtm. The agreement will be subject to public comment for 30 days, beginning today and continuing through August 8, 2008, after which the Commission will decide whether to make it final.

What Tiffany Spent to Combat Counterfeiting

According to Judge Sullivan in Tiffany (NJ) Inc. v. eBay (July 14, 2008),

Notwithstanding the significance of the online counterfeiting problem, it is clear that Tiffany invested relatively modest resources to combat the problem. In fiscal year 2003, Tiffany budgeted approximately $763,000 to the issue, representing less than 0.05 percent of its net sales for that year. (Def.’s Ex. 200; Tr. 94:11-14.) Tiffany’s CEO, Michael Kowalski, testified that over the past five years, Tiffany has budgeted $14 million to anti-counterfeiting efforts — of which approximately $3-5 million was spent in litigating the instant action. (Tr. 825:121-826:21.)

. . . More specifically, Tiffany’s time dedicated to monitoring the eBay website and preparing Notices of Claimed Infringement was limited. . . . [T]he equivalent of anywhere between 1.15 to 1.6 full-time employees per month dedicated to monitoring the eBay website.

"There is a wide gap between what is expected of eBay in France and in the United States," notes Border Measures. "On 30 June the Commercial Court of Paris found eBay Inc and eBay AG (“eBay”) jointly guilty of allowing the online sale of counterfeit items as alleged by Louis Vuitton Malletier, Christian Dior Couture and four perfumeries of the LVMH Group, and ordered eBay to pay damages of 39 million euros."

Peer-to-Patent Program Expands to Business Methods; Shortened Examination Times for Submitted Applications

The US Patent and Trademark Office has announced the extension of the Peer-to-Patent pilot for another year as well as its expansion to include pending patent applications for Business Methods (Class 705).

The pilot was initially restricted to patent applications in the computer-related arts (those classified in Technology Center 2100). Technical experts in the computer and business methods-related arts registering with the peertopatent.org Web site may now eventually be able to review and submit information for up to 400 published patent applications, up from 250 as originally announced. No more than 25 separate applications will be allowed from any one person or organization, up from 15 in the original announcement. There are currently only 21 published applications available for review.

According to the USPTO,

Applicants agree to have their patent applications posted for up to four months (but no less than three months) on the http://www.uspto.gov/cgi-bin/exitconf/internet_exitconf.pl?target=www.peertopatent.org Web site. Expert volunteers from the public then discuss the applications and submit prior art they think might be relevant to determining if an invention is new and non-obvious. The prior art submission is limited to 10 references.

So far, the pilot’s first 31 applications have been examined. More than half of the examiners who examined an application in the Peer Review Pilot so far thought the prior art submitted by the peers was helpful during examination. More than one-third of the examiners used peer-supplied prior art in the first action on the merits. Nearly 75 percent of the participating examiners said they believed the program would be useful if it were incorporated into regular Office practice.

For this pilot, applications are assigned to an examiner for examination as soon as a submission is received from the peertopatent.org Web site. This shortens considerably the time it normally takes from filing an application to a first action on the merits in the areas where the pilot is occurring.

For further information on the program and to review the Official Gazette notice, visit http://www.uspto.gov/web/patents/peerpriorartpilot/ [which as of this writing has yet to be updated with the latest notice].

According to the USPTO's Official Gazette for July 15, 2008, the average filing date for applications receiving a first Office Action during the last three months in Technology Center 3620 for Electronic Commerce was July 28, 2003, almost five years ago. Last year's pendency to first action in Class 705 was 44 months, with pendency to issue/abandonment being 54 months. Allowance rates were only 20%.

"Triway" USPTO, EPO, JPO Patent Worksharing Pilot Starts July 28

On July 28, 2008 the Trilateral Patent Offices of Europe, Japan, and the U.S. will undertake a limited "Triway" worksharing pilot program that will be limited to 100 applications of diverse technologies, where the USPTO is the Office of first filing (OFF). The USPTO will accept 15 requests for participation in the Triway pilot program for U.S. applications assigned to each Technology Center.

Under the new program, each Office will conduct searches on corresponding applications filed under the Paris Convention in each of the Offices in a sufficiently early time period. The search results from each of the Offices would then be shared among the Offices in order to reduce the search and examination workload in each of the Offices.

In order to be eligible to participate in the Triway pilot program, the following conditions must be met:

1. A complete utility application (not subject to a secrecy order) must be filed or have recently been filed in the USPTO as the OFF.
2. A complete corresponding application claiming priority to the U.S. application must be filed in the EPO and JPO as the Offices of second filing (OSF) under the Paris Convention within four (4) months from the filing of the application in the USPTO.
3. The U.S., EP and JP applications must be limited to a single invention and the claims of each the 3 applications must sufficiently correspond. Claims will be considered to sufficiently correspond where, accounting for differences due to translations and claim format requirements, the claims are of the same or similar scope. EPO and JPO may determine whether the claims in the corresponding application filed in its respective office sufficiently correspond to the claims in the U.S. priority application when deciding whether to accept the request to participate in the Triway pilot program filed in its respective office.
4. Applicant must file a request for participation in the Triway pilot program and a petition to make the U.S. application special under the Triway pilot program. A sample request/petition form (PTO/SB/12) will be available from the USPTO’s Internet Web site at http://www.uspto.gov/ on July 28, 2008. A petition fee under 37 CFR 1.17(h) for the petition to make special under 37 CFR 1.102(d) is required and must be submitted.
5. The request for participation in the Triway pilot program must be faxed to:T he Office of the Commissioner for Patents at 571-273-0125, directed to the attention of Magdalen Greenlief.

Once the request for participation in the Triway pilot program and special status have been granted to the U.S. application, the USPTO will notify the EPO and JPO of the corresponding applications (by application number and filing date) filed in each of their Offices.

The USPTO will perform a search of the U.S. application and will issue a search report including search history recordation. The report will be in the form of a PCT/ISA/210 form (e.g., including X, Y, A designations) or equivalent thereof. To the extent practicable, the USPTO will fax a copy of the search report to the applicant within six (6) months after the filing of the U.S. application.

Upon receipt of the USPTO search report by the applicant, applicant must promptly file a copy of the USPTO search report in the corresponding EP application and the Applicant must request participation in the Triway pilot program in the EPO. Information regarding the Triway pilot program in the EPO is available on the EPO’s Internet Web site at http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20080716.html.

The EPO will conduct its Extended European Search Report (EESR) process and consider the art cited in the USPTO search report. The EPO will issue an EESR. Upon receipt of the EESR by the applicant, applicant must promptly file a copy of the EESR in the corresponding U.S. application. For the U.S. application, applicant must list the art cited in the EESR on an information disclosure statement (IDS) complying with 37 CFR 1.98. A copy of the EESR and the IDS must be faxed to the Office of the Commissioner for Patents at 571-273-0125, directed to the attention of Magdalen Greenlief.

Applicant must file a request for examination, a request for accelerated examination, including the statement of participation in the Triway pilot program in the JPO, as well as providing copies of the USPTO search report and the EESR. Information regarding the Triway pilot program in the JPO is available on the JPO’s Internet Web site at http://www.jpo.go.jp/torikumi_e/t_torikumi_e/triway_e.htm.

Upon granting the request for accelerated examination for the JP corresponding application, the JPO will conduct search and examination of the JP corresponding application. The JPO will consider the art cited in the USPTO search report and the EESR. The JPO will issue an office action for the JP corresponding application.

Upon receipt of the JP office action, applicant must promptly file a copy of the JP office action in the corresponding EP and U.S. applications. For the U.S. application, an English translation of the JP office action along with a statement that the English translation is accurate must also be submitted. In addition, applicant must list the art cited in the JP office action on an IDS complying with 37 CFR 1.98. A copy of the JP office action, an English translation thereof, an accuracy statement, and the IDS must be faxed to the Office of the Commissioner for Patents at 571-273-0125, directed to the attention of Magdalen Greenlief.

At this point, each of the corresponding applications will contain the search results from all three Offices (plus an examination result in the JPO). Since special status has been granted to the U.S. application, the U.S. application will be taken up for examination as special by the U.S. examiner. The U.S. examiner will consider the search results of all three Offices in the examination of the U.S. application.

Any inquiries concerning the program notice may be directed to Magdalen Greenlief, Office of the Deputy Commissioner for Patent Examination Policy at 571-272-8800 or at magdalen.greenlief@uspto.gov.

No Patent Protectionism at the USITC

In "Patently Protectionist? An Empirical Analysis of Patent Cases at the International Trade Commission" (June, 24 2008), Colleen V. Chien argues that the data fail to support two major criticisms that have been levied against the ITC, that it is anti-defendant and that it is anti-foreigner:

ITC cases involve domestic defendants as often as they do foreign defendants, and 72% of the time in combination. Thus, U.S. companies are thus just as likely to be named in ITC actions as defendants as are foreigners. When cases were adjudicated, plaintiffs at the ITC were more likely to win than plaintiffs in district court (58% v. 35%). However, when cases filed in both venues were compared, most of this difference disappeared (54% v. 50%), cutting against claims of an anti-defendant bias. The data, however, provide some support for the third contention. The ITC takes about half as much time to decide cases, is four times more likely to adjudicate a case (44% v. 11%), and more readily awards injunctions to prevailing patentees (100% v. 79%) than district court. However, the ITC cannot award damages, and its decisions do not bind district courts. The relief provided is thus neither complete nor final. This creates incentives for litigants to file in both venues, which is done 65% of the time and creates the possibility of duplicative litigation and inconsistent results.

Sixty five percent of the time cases are being filed in both venues, yet their outcomes and remedies can be different with a lack of res judicata of ITC decisions and different standards for granting injunctions. Professor Chien concludes with several suggestions for addressing the increase in parallel litigation and concurrent risk of judicial inefficiency, including (1) limiting patent jurisdiction at the ITC to cases that otherwise could not be heard in a U.S. district court, and (2) reducing the incentive for cases to be filed in both venues by harmonizing their rules and remedies.

No "Joint Infringement" Without Proof of Vicarious Liability

In Muniauction, Inc. v. Thomson Corp. (July 14, 2008), the Federal Circuit held that Thomson's control of access to its system and instructinons to bidders on its use was not sufficient
to incur liability for direct infringement by the combined actions of multiple parties for a method claim directed to

an "integrated system on a single server” that allows issuers to run the auction
and bidders to prepare and submit bids using a conventional web browser, without
the use of other separate software. Id. at col.5 ll.13–28. The system of the ’099 patent also allows issuers to monitor the progress of the auction and allows bidders to monitor their bid vis-à-vis the current best bid. Id. at col.12 l.60 to col.13 l.60.

According to the opinion by Circuit Judge Gajarsa, the issue of infringement in this case turned on whether Thomson sufficiently controls or directs other parties (e.g., the bidder) such that
Thomson itself can be said to have performed every step of the asserted claims:

Under BMC v. PaymenTech, the control or direction standard is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method. 498 F.3d at 1379; accord Int’l Rectifier v. Samsung Elecs. Co., 361 F.3d 1355, 1361 (Fed. Cir. 2004) (reversing district court’s ruling that Samsung violated a permanent injunction prohibiting infringement in the United States on the grounds that Samsung did not control or participate in the extraterritorial
activities of a third party such that the acts of the third party were not attributable to Samsung). In this case, Thomson neither performed every step of the claimed methods nor had another party perform steps on its behalf, and Muniauction has identified no legal theory under which Thomson might be vicariously liable for the actions of the bidders. Therefore, Thomson does not infringe the asserted claims as a matter of law.

No Patent DJ Jurisdiction Based Upon Suits of Unrelated Persons

Thanks to PatRacer for posting a copy of PanaVise v. National Products CD/CA 8-cv-1300 (May 30, 3008) in which Judge Collins dismissed a Declaratory Judgment action for patent infringement where the patent owner had merely sued others for infringement without a further communications or acts against the plaintiff:

Having reviewed the case law, it is clear that no case or controversy can exist in a patent action for declaratory relief in the absence of an act by the defendant. For example, in Sandisk, the court stated that “declaratory judgment jurisdiction generally will not arise merely on the basis that a party learns of the existence of a patent owned by another or even perceives such a patent to pose a risk of infringement, without some affirmative act by the patentee.” Sandisk, 480 F.3d at 1380-1381 (emphasis added). That is exactly the situation here: Plaintiff merely learned that Defendant owns a patent and is concerned that its own device may infringe Defendant’s patent, but Defendant has taken no affirmative act in relation to Plaintiff’s device; indeed, Defendant did not know of Plaintiff’s device and has yet to see it. Sandisk further states that “Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in a position of either pursuing arguably illegal behavior or abandoning that which he claims a right to do,” id. (emphasis added), thereby reinforcing the notion that no case or controversy can exist where the defendant has taken no position. It is undisputed that Defendant has taken no position with respect to Plaintiff and/or the 811 series
device.

That Defendant has sued other unrelated persons for infringement of the ‘420 patent does not constitute action toward this plaintiff and the 811 series device, and therefore does not contribute to the existence of a case or controversy between these parties Without Defendant even knowing about Plaintiff’s device, it is not apparent that the parties have “adverse legal interest[s]” and that the dispute is “definite and concrete.” Rather, Plaintiff is seeking what MedImmune forbids: “an opinion advising what the law would be upon a hypothetical state of facts.” MedImmune, 127 S.Ct. at 77. Indeed, the cases Plaintiff cites in support of its position all involve a defendant
communicating with the plaintiff about plaintiff’s device. Plaintiff has directed the Court to no case in which a case or controversy was found in the absence of any act by the defendant directed toward the plaintiff and/or plaintiff’s device.

The absence of any communication or conduct by Defendant towards Plaintiff about the 811 series device is dispositive of the jurisdictional question: there is no actual case or controversy upon which the Court’s subject matter jurisdiction may rest.

According the "Patent Appeal Tracer," these "allegations are similar to those in 2008-1373 Impax Labs v. Medicis Pharmaceutical, where a DJ was attempted based on the patentee's history of public threats and litigation, although not specifically or explicitly directed at the DJ plaintiff. At least to me, the case for jurisdiction seems stronger in Impax where the history of threats more readily implicate the DJ plaintiff and its product."

New ITC Section 337 Regulations Effective August 6, 2008 (and a New ALJ)

On July 7, 2008 the U.S. International Trade Commission amended its rules of practice and procedure for Unfair Import Inventigations to, among other things, permit administrative law judges to set a schedule of sixteen months without Commission review. The new rules become effective August 6, 2008.

In other ITC news, ALJ Paul Luckern was named Chief Administrative Law Judge on July 3, and Robert K. Rodgers was named the newest Administrative Law Judge on July 7.

As Chief Administrative Law Judge, "Luckern will provide administrative guidance and leadership to assure a thorough, yet expeditious, processing of the agency's section 337 investigation caseload. He will continue to preside in section 337 investigations as well."

Rogers served as a Supervisory Administrative Law Judge at the Office of Medicare Hearings and Appeals in Irvine, CA, from April 2007 until his ITC appointment. He previously served as an Administrative Law Judge at the Federal Energy Regulatory Commission in Washington, DC, from 2005 to 2007 and at the Office of Hearings and Appeals with the Social Security Administration in Sacramento, CA, from 1994 to 2005. Prior to that, Rogers served as an Assistant City Attorney for the City of Thousand Oaks, CA, from 1992 to 1995. From 1986 to 1992, he was in private practice as an attorney in Auburn, CA. He served as a City Attorney with the City of South San Francisco from 1980 to 1986. Rogers holds a juris doctor degree from Brigham Young University's Clark Law School and a bachelor degree from San Diego State University. He is a member of the State Bar of California.

U.S. Copyright Office Offers Online Registrations

Beginning July 1, 2008, the Copyright Office is offering online registration of claims to copyright. Online registration through the electronic Copyright Office (eCO) is the preferred way to register basic claims for literary works; visual arts works; performing arts works, including motion pictures; sound recordings; and single serials. Advantages of online filing include a lower filing fee; the fastest processing time; online status tracking of your claim; secure payment by credit or debit card, electronic check, or Copyright Office deposit account; and the ability to upload certain categories of deposits directly into eCO as electronic files. To register your claim electronically, go to the Copyright Office website at http://www.copyright.gov/ and click on the eCO logo.

Simulatenous Invention Obviousness Defense

According to "Secondary Considerations of Obviousness in a Patent Case: The Seldom-Used Simultaneous Invention Factor" by Brent Yamashita, simultameous independent invention is an often overlooked obviousness argument for accused infringers, especially where the invention occurs shortly after an enabling technology is introduced:

The Federal Circuit has stated that, "[T]he possibility of near simultaneous invention by two or more equally talented inventors working independently,… may or may not be an indication of obviousness when considered in light of all the circumstances." Ecolochem, 227 F.3d at 1379 (quoting Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452, 1460 (Fed. Cir. 1984)). In other words, the fact that another person simultaneously and independently created the same invention claimed in the patent-in-suit can serve as an indication that the invention was obvious.

Every accused infringer should consider this often-overlooked secondary consideration in preparing its obviousness defense. This factor can be particularly useful in a situation where the simultaneous inventions occurred shortly after an enabling technology was introduced. Some inventions only become possible—or relevant—once a foundational technology becomes known. For example, tires could not have been invented before the wheel and would have been meaningless before the wheel. An enabling technology can serve as a chronological starting point for the simultaneous inventions that follow, which can be useful in gauging obviousness of the invention.

. . . the simultaneous invention factor properly recognizes the fact that in some instances inventions do not occur after years and years of toiling in a laboratory, but rather, after a minimal effort (executed by others independently and simultaneously) after a breakthrough in an enabling technology that is not itself the subject of the invention.

Historian Thomas P. Hughes was the first to apply this notion of common "reverse salients" for identifying enabling technologies that may lead to simultaneous invention. As noted by Nicholas G. Carr,

That odd term has its origins in descriptions of warfare, where it refers to a section of an advancing military force that has fallen behind the rest of the front. This section is typically the point of weakness in an attack, the lagging element that prevents the rest of the force from accomplishing its mission. Until the reverse salient is corrected, an army’s progress comes to a halt.

Hughes described in his book Networks of Power: Electrification in Western Society, 1880–1930 (Johns Hopkins University Press, 1983), a reverse salient often forms as a complex technological system advances: “As the system evolves toward a goal, some components fall behind or out of line. As a result of the reverse salient, growth of the entire enterprise is hampered, or thwarted, and thus remedial action is required.” In technological advance as in warfare, the reverse salient is the weak link that impedes progress.

Method Claim with Specific Preamble Structure Not Indefinite

Citing William Shakeseare in Microprocessor Enhancement Corp. v. Texas Instruments Inc. (April 1, 2008), the the U.S. Court of Appeals for the Federal Circuit held that a method claim was not invalid for indefiniteness even though it included specific structural features in the preamble of the form

1. A method of executing instructions in a pipelined processor comprising:
[extensive structural limitations of the pipelined processor];
the method further comprising:
[method steps implemented in the pipelined processor].

because it did not impermissibly claim mixed classes of subject matter. According to the opinion by Circuit Judge Gajarsa,

Although this seeming preamble within a preamble structure is unconventional,
its effect on the definiteness of claim 1 lacks the conclusiveness with which
King Claudius’s guilt is established by his reaction to Hamlet’s play within a
play. See William Shakespeare, Hamlet act 3, sc. 2. Method claim preambles often
recite the physical structures of a system in which the claimed method is
practiced, and claim 1 is no different. The conclusion of IPXL Holdings was
based on the lack of clarity as to when the mixed subject matter claim would be
infringed. 430 F.3d at 1384 ("[I]t is unclear whether infringement of claim 25
occurs when one creates a system that allows the user to [practice the claimed
method step], or whether infringement occurs when the user actually [practices
the method step]."). There is no similar ambiguity in claim 1 of the ’593
patent. Direct infringement of claim 1 is clearly limited to practicing the
claimed method in a pipelined processor possessing the requisite structure.

As the Bard of Avon himself might have quipped "Why may not that be the skull of a lawyer? Where be his quiddities now, his quillets, his cases, his tenures, and his tricks?"

Reverse Doctrine of Equivalents Still Dead

In Roche Palo Alto LLC v. Apotex Inc. (June 9, 2008) the Federal Circuit confirmed that the reverse doctrine of equivalents is still dead in the U.S.:

The reverse doctrine of equivalents is an equitable doctrine designed “to prevent unwarranted extension of the claims beyond a fair scope of the patentee’s invention.”
Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1581 (Fed. Cir.
2008). According to the Supreme Court: "[W]here a device is so far changed in principle from a patented article that it performs the same or similar function in a
substantially different way, but nevertheless falls within the literal words of the claim, the [reverse] doctrine of equivalents may be used to restrict the claim and defeat the patentee’s action for infringement." Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608-609 (1950) (emphases added). While the patentee bears the burden of proving infringement, if the patentee establishes literal infringement, the burden shifts to the accused infringer to set forth a prima facie case of non-infringement under the reverse doctrine of equivalents. SRI Int’l, 775 F.2d at 1123-24. If the accused infringer is successful in making a prima facie case, the patentee must then rebut that prima facie case. Id. at 1124. The reverse doctrine of equivalents is rarely applied, and this court has never affirmed a finding of non-infringement under the reverse doctrine of equivalents. Tate Access Floors, Inc. v. Interface Architectural Res., Inc., 279 F.3d 1357, 1368 (Fed. Cir. 2002).

Apotex asserted that the concentration of O-40 in the formulation is far below the concentration required to form micelles. Instead, NaCl acted to ionically shield KT and BAC, preventing them from interacting. Thus, Apotex asserted, the formulation was stabilized by a completely different ingredient and mechanism, and functions in a “substantially different way” from the formulation claimed in the ’493 patent.

According to the opinion by Circuit Judge Prost,

We agree with the district court that Apotex has failed to set forth a prima facie case of non-infringement under the reverse doctrine of equivalents because it does not properly establish the principle of the ’493 patent. The “principle” or “equitable scope of the claims” of the patented invention is determined in light of the specification, prosecution history, and the prior art. Scripps Clinic, 927 F.2d at 1581. Here, however, Apotex relies exclusively on the declaration of its expert, Dr. Mitra.

As the district court noted, there is no mention of “micelle” in the claims, specification, or prosecution history of the ’493 patent. Further, we previously held that there was no error in the district court’s construction of claim 1 of the ’493 patent to regard “stabilizing amount” not as a claim limitation, but as an intended result, given that the claim expressly sets forth a concentration range for O-40. Syntex II, 407 F.3d at 1378. Thus, there is no support in the claims or specification for micelle formation or for robust stabilization of the formulation by prevention of KT/BAC interactions. The prosecution history is not in evidence in this case and was not relied on by Apotex before the district court in establishing the principle of the invention. Nonetheless, there is no indication that the examiner, in allowing the claims, attributed the unexpected results of O40 to its superiority in forming micelles. The intrinsic evidence is therefore inconsistent with Apotex’s proffered “principle” of the ’493 invention.

. . . For these reasons, we agree with the district court that Apotex did not properly support its alleged “principle” of the patented invention and consequently failed to make out a prima facie case of non-infringement under the reverse doctrine of equivalents. Roche, therefore, was not required to rebut the prima facie case. Accordingly, we find no error by the district court in rejecting Apotex’s defense under the reverse doctrine of equivalents and in granting summary judgment of literal infringement of the claims of the ’493 patent by the ANDA-2 formulation.

The Federal Circuit was also unepersuaded by Apotex's assertion that "given the change in the law of obviousness following the Supreme Court’s opinion in KSR," principles of fairness should prevent application of claim preclusion for a second formulation with merely colorable differences from the first such that the two formulations are “essentially the same.”

. . . In essence, Apotex argues that claim preclusion is not absolute and that this is a case where an exception to the finality rule should apply.

The district court, however, correctly recognized that there is no “change of law”
or fairness exception to prevent application of claim preclusion. Federated Dep’t
Stores, Inc. v. Moitie, 452 U.S. 394, 398 (1981); see also Clifton v. Att’y Gen. of Cal., 997 F.2d 660, 663 (9th Cir. 1993) (“For us to conclude, under the facts of this case, that the district court’s order has become an ‘instrument of wrong’ merely because it rests on a since repudiated rationale would be to nullify the doctrine of res judicata.”); Wilson v. Lynaugh, 878 F.2d 846, 850-51 (5th Cir. 1989); Precision Air Parts, Inc. v. Avco Corp., 2008-1021 13 736 F.2d 1499, 1503 (11th Cir. 1984) (“The general rule . . . throughout the nation, is that changes in the law after a final judgment do not prevent the application of res judicata and collateral estoppel, even though the grounds on which the decision was based are subsequently overruled.”); Hardison v. Alexander, 655 F.2d 1281, 1288-89 (D.C. Cir. 1981). Although there may be a rare exception in cases involving “momentus changes in important, fundamental constitutional rights,” Precision Air Parts, 736 F.2d at 1504, no such right is involved here.

Free Chinese Patent Machine Translation (CPMT) Service

The CPMT service is integrated with an English search interface and can be used for obtaining the English full text (including claims and specification) from a searched result (by previous human translation). See the screenshots at http://www.cnpat.com.cn/430homepage/guidehome.html and then start by choosing “Patent Search and Machine Translation” from the homepage of China Patent Information Center (CPIC) at http://www.cnpat.com.cn/.

Free Japanese Patent Machine Translation Service

You can obtain English machine-translations for Japanese patent and utility model documents from 1993 onwards on the Japan Patent Office's free-of-charge "IPDL" (Industrial Property Digital Library) internet service at http://www.ipdl.inpit.go.jp/homepg_e.ipdl.

From the IPDL homepage, choose the "Patent & Utility Model Gazette DB" link. A simple number search will - as a first search result – return the PAJ English abstract, where available. Clicking the "Detail" button on the top of the result screen will start the machine-translation of the original Japanese unexamined application. Alternatively, clicking the "Japanese" button will display the original Japanese document. In cases where no PAJ English abstracts exist you will immediately get the machine-translation from the Japanese.

See the screenshots at http://www.jpo.go.jp/torikumi_e/hiroba_e/paj_15.htm

You can also try Yahoo! Babel Fish - Text Translation and Web Page Translation

LexisNexis offers a fee-based English machine translation service of Japanese patent documents "in minutes" at $39 per translated document (regardless of length).

USPTO Suggestions for Effectively Reducing the Application Backlog

Greg Aharonian's Internet Patent News Service has posted a copy of the USPTO's response to twenty questions of the Congressional Subcommittee on the Courts, Internet, and Intellectual Property following the subcommittee hearing on February 27, 2008.

The answer to question 5 details the PTOs current "suggestions for effectively reducing the application backlog:"

1. Applicant Quality Submissions
2. Worksharing
3. Increase Capacity (through Telework, a University Certificate in Patent Examination, and Utilizing Retirees), and
4. Deferred Examination