By The Federal Circuit Court of Appeals has overruled a 2005 decision which addressed the liability of exporters of components of patented inventions for infringement of method patents. Under 35 U.S.C. §271(f), anyone who exports a component of a patented invention that is combined outside the United States is an infringer. The Court of Appeals, in Union Carbide Chemicals & Plastics Technology Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005), held that §271(f) applied to method patents. In Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc. 2009 WL 2516346 (Fed. Cir. 2009), an en banc decision on August 19, 2009, the Court of Appeals reversed its holding in Union Carbide.Continue Reading Section 271(f) Does Not Apply to Method Patents
Patent Misconceptions
by Patent law is a complicated area of law governed by a confusing set of statutes and regulations that are interpreted by Patent and Trademark Office examiners and federal courts. Patents themselves are often almost unintelligible and, if intelligible, require many hours of reading and comparing drawings in order to understand. It is no wonder that clients (and non-patent attorneys) have a lot of misconceptions about patents. Here are a few of the most common ones. Continue Reading Patent Misconceptions
TransCore Case Changes Patent Licensing and Patent Settlements
By A recent decision from the Federal Circuit Court of Appeals has interpreted provisions in patent litigation settlement agreements that grant a covenant not to sue. The case is TransCore, LP v. Electronic Transaction Consultants Corp., 2009 WL 929033 (Fed. Cir. 2009).
In TransCore, the plaintiff,TransCore, LP, owned several patents covering automated toll collection systems. TransCore sued Mark IV Industries, a competitor, in 2000, for infringement of the patents. The parties settled the case. In the settlement, Mark IV paid TransCore $4.5 million and TransCore released all existing claims against Mark IV and agreed to an unconditional covenant not to sue for future infringement of the patents.
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Federal Circuit Revisits Comiskey
In another attempt to address the question of the patentability of business methods, the Federal Circuit Court of Appeals has vacated its September 2007 decision in In re Comiskey (499 F.3d 1365).
The patent application filed by Comiskey, in 1999, claimed a method for mandatory arbitration and a system, using a computer, for performing the method. The PTO examiner rejected both the method and system claims as obvious under § 103. Comiskey appealed to the Board of Patent Appeals and Interferences, who affirmed the rejections.
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Federal Circuit Clarifies Requirements for Anticipation of Patent Claims
In Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008), the Federal Circuit Court of Appeals clarified the test for anticipation under 35 U.S.C. §102(a).
The patents in the case covered systems for conducting credit card transactions over the internet. The existing systems involve four different entities: a customer, the issuing bank for the customer’s credit card, a merchant, and the merchant’s bank. The inventor developed his system in response to two problems with the existing systems. First, the existing systems required prospective purchasers to send their confidential credit card information to an unknown merchant over the Internet. Second, in the existing systems, the banks that had issued the customers’ credit cards imposed stringent requirements on merchants.
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