Friday, February 18, 2011

Katz patents, again

The CAFC addressed a Katz case and observed:

In this multi-district litigation patent case, the plain-
tiff Ronald A. Katz Technology Licensing LP (“Katz”)
appeals from final judgments entered by the United
States District Court for the Central District of California
in a group of consolidated cases. The judgments held
numerous claims from Katz’s patent portfolio either
invalid or not infand remand.

Katz lost on due process:

We reject Katz’s due process argument. Katz has not
shown that the claim selection procedure the district court
employed was inadequate to protect Katz’s rights with
respect to the unasserted claims.6 To make out a due
process claim, Katz must demonstrate that the district
court’s claim selection procedure risked erroneously
depriving it of its rights and that the risk outweighed the
added costs associated with a substitute procedure. See
Mathews v. Eldridge, 424 U.S. 319, 335 (1976).

As to other theories:

Turning to Katz’s other arguments, we hold that the
court did not violate the statutory presumption that each
claim is independently presumed valid, see 35 U.S.C.
§ 282, or the “rebuttable presumption that different
claims are of different scope,” Amgen Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1326 (Fed. Cir.
2003). While different claims are presumed to be of
different scope, that does not mean that they necessarily
present different questions of validity or infringement.
And the court only required Katz to demonstrate that new
claims presented unique questions of validity or infringe-
ment. The court explained that with respect to infringe-
ment, Katz “should be prepared to show that a non-
infringement defense raised by a specific defendant group
to a currently asserted claim does not apply in substan-
tially the same manner to a newly asserted claim.”

WMS Gaming arose:

The court invalidated those
claims pursuant to the analysis set forth in WMS Gam-
ing, Inc. v. International Game Technology, 184 F.3d 1339
(Fed. Cir. 1999), and Aristocrat Technologies Australia Pty
Ltd v. International Game Technology, 521 F.3d 1328
(Fed. Cir. 2008), because the specifications of each of the
patents at issue disclosed only general purpose processors
and did not disclose the algorithms that those processors
used to perform the recited functions.


Several of Katz’s claims are clearly indefinite under
the principles of WMS Gaming, Aristocrat, and Harris.

But Katz had some victories:

We reach a different conclusion with respect to the
district court’s analysis of claims 96, 98, and 99 of the ’863
patent, claims 11 and 18 of the ’547 patent, claim 19 of
the ’551 patent, and claim 61 of the ’285 patent. As to
those claims, we conclude that the district court inter-
preted the principles of WMS Gaming, Aristocrat, and
Harris too broadly, so we vacate the court’s indefiniteness
ruling and remand to the district court for claim construc-
tion and application of the correct rule.


The appellees contend that the district court’s broad
rule of indefiniteness is supported by language from Net
MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir.
2008). In that case, this court stated that “a means-plus-
function claim element for which the only disclosed struc-
ture is a general purpose computer is invalid if the speci-
fication fails to disclose an algorithm for performing the
claimed function.” Id. at 1367, citing WMS Gaming, 184
F.3d at 1337-38. When viewed in context, it is clear that
the quoted language applied only to computer-
implemented means-plus-function claims in which the
computer would be specially programmed to perform the
recited function. As authority, the court cited WMS
Gaming, which was limited to a computer implementing a
specific function. And the claim at issue in Net MoneyIN
recited a particular function not disclosed simply by a
reference to a general purpose computer. That claim
involved a credit card authorization system with a “means
for generating an authorization indicia in response to
queries containing a customer account number and
amount.” Net MoneyIN, 545 F.3d at 1365.

IPXL comes up:

The district court held that Statistical Interface
claims 1, 2, and 83 of the ’893 patent are indefinite under
IPXL Holdings, L.L.C. v., Inc., 430 F.3d
1377, 1384 (Fed. Cir. 2005), because they claim both an
apparatus and a method of use. In IPXL, this court
addressed a claim that covered a system with “an input
means” and required a user to use the input means. This
court held that the claim was indefinite because it was
unclear “whether infringement . . . occurs when one
creates a system that allows the user [to use the input
means], or whether infringement occurs when the user
actually uses the input means.” Id.

Written description comes up:

Written description is a factual inquiry. Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc). “[T]he test requires an objective
inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art. Based
on that inquiry, the specification must describe an inven-
tion understandable to that skilled artisan and show that
the inventor actually invented the invention claimed.” Id.
The purpose of the written description requirement “is to
ensure that the scope of the right to exclude, as set forth
in the claims, does not overreach the scope of the inven-
tor's contribution to the field of art as described in the
patent specification." Reiffin v. Microsoft Corp., 214 F.3d
1342, 1345 (Fed. Cir. 2000).

Priority issues come up:

Once an accused infringer
establishes obviousness by clear and convincing evidence,
the burden shifts to the patentee to prove priority over the
invalidating prior art. See PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008). To be
entitled to the priority date of an earlier application, the
patentee must show that “the application necessarily
discloses that particular device.” Hyatt v. Boone, 146 F.3d
1348, 1354 (Fed. Cir. 1998) (internal quotation omitted).
Therefore, in order for the claims to have priority over
Szlam, the parent application needed to disclose the
invention of those claims: receiving caller-entered signals,
looking up data corresponding to that caller in a file, and
displaying the located data.

KSR is mentioned:

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(“[I]f a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way,
using the technique is obvious unless its actual applica-
tion is beyond his or her skill.”).


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