Friday, September 17, 2004

Appeal of Gemstar ITC case decided by CAFC

In Gemstar v. ITC, the CAFC went through a number of claim construction issues. As to an inventorship issue, there was a question of corroboration of testimony, somewhat like the corroboration issue in Finnigan v. Bruker as to the testimony of Keith Jefferts.

Gemstar cites to the Ewen case, one of my favorites (Ewen once was at Exxon [below]).

--> on disavowal of claim scope

**Gemstar wins

Gemstar’s statements in the prosecution history do not indicate a disavowal or disclaimer of claim scope, see ACTV, 346 F.3d at 1091, but merely provide an example to illustrate differences between the invention and the prior art. In essence, Gemstar stated only that the Kram reference was incapable of performing a certain type of search, not that the scope of the claimed invention was limited to that particular type of search.

**Gemstar loses
Gemstar’s comments in the prosecution history constitute a disclaimer of claim scope to distinguish the prior art. To avoid a rejection based on teletext prior art cited by the examiner, Gemstar explained the operation of its claimed invention as follows

-->more dictionaries (Texas Digital; Phillips)

The ITC correctly looked to dictionary definitions, including a definition of “criterion,” the singular form of “criteria,” from Webster’s Third New International Dictionary 538 (1993): “a standard on which a decision or judgment may be based.” From this definition, the ordinary meaning of “user selection criteria” is simply any parameter chosen by the user in selecting a program.

--> inventorship

The parties dispute whether Neil is an omitted co-inventor of the ’121 patent. Gemstar argues that the ITC erred by failing to construe the claims, instead determining that Neil made contributions to “key facets” or “foci” of the patent. Gemstar maintains that the ITC erred in finding that Neil presented facts supported by clear and convincing evidence corroborating his contribution to the claims of the ’121 patent. Scientific-Atlanta responds that the ITC specifically identified Neil’s inventive contributions, explained how those contributions appeared in particular claim limitations, and correctly concluded that Neil’s testimony was adequately corroborated under the “rule of reason” analysis.
A patent is invalid if more or fewer than the true inventors are named. Jamesbury Corp. v. United States, 518 F.2d 1384, 1395 (Ct. Cl. 1975). Because a patent is presumed valid under 35 U.S.C. § 282, there follows a presumption that the named inventors on a patent are the true and only inventors. See Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997). When two or more persons jointly invent, they must jointly apply for a patent. 35 U.S.C. § 116 (2000). Co-inventors must so apply “even though . . . they did not physically work together or at the same time, . . . each did not make the same type or amount of contribution, or . . . each did not make a contribution to the subject matter of every claim of the patent.” Id. § 116. Because conception is the touchstone of inventorship, each “joint inventor must contribute in some significant manner to the conception of the invention.” Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466, 1473 (Fed. Cir. 1997); see also Ethicon, 135 F.3d at 1460.

Whether the co-inventor’s testimony has been sufficiently corroborated is evaluated under a “rule of reason analysis,” which requires that an “evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the inventor’s story may be reached.” Price, 988 F.2d at 1195. Corroborating evidence may take many forms. Reliable corroboration preferably comes in the form of records made contemporaneously with the inventive process. Sandt Tech., Ltd. v. Rosco Metal & Plastics Corp., 264 F.3d 1344, 1350-51 (Fed. Cir. 2001). Circumstantial evidence of an independent nature may also corroborate. Trovan, 299 F.3d at 1303. Additionally, oral testimony from someone other than the alleged inventor may corroborate. Id.

Because Neil failed to present facts supported by clear and convincing evidence of his co-inventorship, the ITC erred in holding Neil to be an unnamed co-inventor of the ’121 patent.

--> John Ewen on Ewen:

I wanted to do academic research but my pedigree was not good enough to get a teaching position at a University. I therefore pursued employment in a long range oriented group at Exxon where I formulated some of my early research proposals. When Exxon eventually rejected some of my dearest ideas as impractical I moved on to be a plant chemist and pursued them as a hobby at night while working at Fina. What inspired me? Simple: The skepticism of those around me and the desire to succeed. I needed to be right and above the prejudices against my pedigree. The academic standards needed to be wrong. I would never quit. I needed to prove that my ideas were worthwhile.


"I am deeply honored to receive this recognition from the President of the United States," Ewen said. "It is gratifying to realize the benefit that has resulted in our daily lives as a result of metallocene technology -- creating thousands of jobs worldwide and enhancing everyday items such as golf balls, medical IV bags, CD oysters, food wrapping, luggage and automobile parts, clothing, and more."

The National Medal of Technology, which recognizes innovation and advancement of the nation's global competitiveness, was established by Congress in 1980 and is administered by the Department of Commerce.

[Exxon also let C60 ("buckyball") slip through its fingers. It published the discovery of C60 and a method of making it one year prior to the work of Smalley and Kroto.]

[Now read the Ewen case...]


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