Amkor Technology, Inc. v. Int’l Trade Comm’n

In this § 102 case, Amkor Technology argued that Carsem, a foreign company, infringed on their ’277 patent for a smaller and more reliable integrated circuit package.  Carsem replied by arguing that another company, ASAT, had already invented the circuit package and had orally disclosed it to their agents in the United States before Amkor had begun their patent prosecution.  Therefore, Carsem argued, ASAT’s invention qualified as prior art and invalidated Amkor’s patents.

The question left to the Federal Circuit was whether a full disclosure of an invention in writing is required for a foreign invention to be deemed “made in this country” under § 102, or whether an oral disclosure is sufficient.

The Federal Circuit held that “ . . . a ‘communication’ may occur orally or in writing.” The Court rejected Amkor warnings that such a loose ruling would lead to a standard “where effectively any domestic disclosure would establish domestic conception.”  The Court stated that any proof of domestic disclosure, either written or oral, “must be specific enough to encompass the complete and operative invention.” Unfortunately, the Court failed to elaborate on this standard, or apply it in the instant case.  Instead, the Federal Circuit held that Carsem did not establish by clear and convicting evidence that ASAT’s circuit package was invented before Amkor’s, and remanded the case for further consideration.

[Full Citation: Amkor Technology, Inc. v. Int’l Trade Comm’n, __ F.3d __, No. 2010-1550  (Fed. Cir. Aug. 22, 2012).]

[Find the full opinion here]

[Association for Molecular Pathology v. U.S. Patent & Trademark Office (the Myriad case, on remand)]

Substantially reiterating its prior opinion, the Federal Circuit again decided Association for Molecular Pathology v. U.S. Patent and Trademark Office (the Myriad case) in favor of the USPTO, effectively holding that patents governing gene isolation are generally patentable subject matter.

When the Supreme Court recently decided that certain diagnostic method claims were unpatentable subject matter under 35 U.S.C. § 101 in Mayo Collaborative Services v. Prometheus Laboratories, Inc., it also remanded AMP v. USPTO (as well as the Wildtangent computer-implemented business methods case), asking the Federal Circuit to reanalyze the cases in light of their holding. Responding to their directive, the same panel—voting as they had before—held that 1) the court had jurisdiction to hear the case because at least one doctor had standing to challenge the patents’ validity; 2) the lower court incorrectly held the composition claims to isolated gene patents unpatentable; and 3) the method claims to isolating the genes were likewise patentable. They maintained, however, that method claims merely “comparing” or “analyzing” DNA sequences remained unpatentable.

[Full Citation: Ass’n for Molecular Pathology v. U.S. Patent & Trademark Office (the Myriad case), __ F.3d __, No. 2010-1406 (Fed. Cir. Aug. 13, 2012).]

[Find the full opinion here]

[In re Applied Materials, Inc.]

The now-renamed Board of Patent Appeals and Interferences affirmed an examiner’s rejection and separate ex parte reexamination of  U.S. Patents No. 5,921,855; No. 6,520,847; No. 6,699,115; and No. 6,824,455 (covering polishing pads for chemical mechanical polishing) under 25 U.S.C. § 103.

In so holding, the court introduced a presumption—the Court presumes all patented or published prior art introduced by examiners are enabled—because examiners do not have the ability or resources to test each patent application or prior art for enablement during examination proceedings.

Thus, the burden now falls on the patentee or applicant to prove that prior art references lack enablement, thus freeing the examiner from having to defend his or her prima facie case for rejection of the patent.

[Full Citation: In re Applied Materials, Inc., __ F.3d __, Nos. 2011-1461, -1462, -1463, -1464 (Fed. Cir. Aug. 22, 2012).]

[Find the full opinion here]

[Akamai Technologies, Inc. v. Limelight Networks, Inc.]

Reversing an earlier panel decision, the Federal Circuit held en banc that parties can be liable for induced infringement of a method claim, when the steps of the method are performed by different parties.

The closely divided en banc court held, 5-4, that Limelight had not directly infringed Akamai’s patented technology because it had not performed all of the steps of a method claim.  Limelight had, however, contracted to perform the steps of the patented method with other parties.  In holding Limelight responsible, the Court overturned a previous decision holding that, in order to be liable for induced infringement, a party must be liable for an underlying direct infringement.

The en banc Court held parties can still show induced infringement when both the inducer and the induced party each perform some of the steps of a method claim.  So applying the test, Limelight could be liable for induced infringement; the Court reversed and remanded the case for further proceedings.*

[Full Citation: Akamai Technologies, Inc. v. Limelight Networks, Inc., __ F.3d __,

2009-1372, -1380, -1416, -1417 (Fed. Cir. Aug. 31, 2012) (en banc).]

[Find the full opinion here]

[Greenliant Sys., Inc. v. Xicor LLC]

In this dispute, Xicor’s attempt to gain a reissuance of their patent to expand their claims on electronic memory devices fell flat. According to the prosecution history, Xicor’s original claim for a semi-conductor was rejected by the PTO examiner for obviousness in light of the prior art. To remedy this, Xicor added the use of a process, known as TEOS, to one of their claims. After their patent was granted,  Xicor attempted to gain a reissuance of that patent and expand their claims to remove the TEOS limitation. They argued that the TEOS limitation was unnecessary to distinguish their semi-conductor against the prior art. Therefore, Xicor had never surrendered any subject matter, and their semi-conductor was not subject to the rule of recapture. The Court disagreed, and found that the prosecution history clearly showed that Xicor’s claims included the TEOS limitation simply to avoid prior art and obtain the patent in the first place.

[Full Citation: Greenliant Sys., Inc. v. Xicor LLC, __ F.3d __, No. 2011-1514 (Fed. Cir. [Aug. 22, 2012]).]

[Find the full opinion here]

Mirror Worlds, LLC v. Apple Inc.

Mirror Worlds sued Apple for infringing their method for using a data steaming system for checking emails.  Mirror Worlds claimed that by using and supplying their searching and indexing system “Spotlight,” Apple directly induced all of their customers to infringe on Mirror Worlds’ method.  For evidence, Mirror Worlds pointed to Apple’s user manuals, which described the various features, software reviews, and methods, that Mirror World claimed were patented.

The Court held that, while user manuals can be evidence of infringement by third parties, they are “by themselves insufficient to show the predicate acts necessary for inducement of infringement.”  The Court further stated that Spotlight could be used in a non-infringing manner and that, without evidence that customers were actually infringing on Mirror Worlds’ patent rights, Mirror World could not maintain a claim for patent infringement.

[Full Citation: Mirror Worlds, LLC, __ F.3d __, No. 2011-1392  (Fed. Cir. [Sep. 4, 2012]).]

[Find the full opinion here]

*Akamai Technologies, Inc., was represented by Finnegan in the en banc appeal.  Mr. Stroud is a law clerk at Finnegan.  The observations and opinions in this writing are unrelated, and he has no direct knowledge and has not discussed the case with colleagues at the firm.

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