Category: Judgments

False Marking Statute Decision: Fine is for Falsely Marking Articles with a Patent Number on a Per Article Basis

On December 28, 2009, the Federal Circuit finally construed the statutory fine for falsely marking an unpatented article with a U.S. Patent Number under 35 U.S.C. 292 (False Marking).  In particular, the Federal Circuit found that a party that falsely marks a product as “patent pending” or having a patent shall be liable up to $500 per each article manufactured.  As indicated in the Federal Circuit’s decision (see below), the court has the discretion of as to the amount of the penalty which could be “a fraction of a penny per article” for mass-produced articles.  35 U.S.C. 292 states the following:

35 U.S.C. 292 False Marking.

(a) Whoever, without the consent of the patentee, marks upon, or affixes to, or uses in advertising in connection with anything made, used, offered for sale, or sold by such person within the United States, or imported by the person into the United States, the name or any imitation of the name of the patentee, the patent number, or the words "patent," "patentee," or the like, with the intent of counterfeiting or imitating the mark of the patentee, or of deceiving the public and inducing them to believe that the thing was made, offered for sale, sold, or imported into the United States by or with the consent of the patentee; or Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article the word "patent" or any word or number importing the same is patented, for the purpose of deceiving the public; or Whoever marks upon, or affixes to, or uses in advertising in connection with any article the words "patent applied for," "patent pending," or any word importing that an application for patent has been made, when no application for patent has been made, or if made, is not pending, for the purpose of deceiving the public – Shall be fined not more than $500 for every such offense.

(b) Any person may sue for the penalty, in which event one-half shall go to the person suing and the other to the use of the United States.

See Court Decision: Forest Group, Inc. v. Bon Tool Co. 2009-1044 (Patent False Marking Case)

Ford Ordered to Pay $55.7 Million to Inventor (Krippelz v. Ford Motor Co.)

Krippelz v. Ford Motor Company, 2009 WL 3852466 (N.D.IL).

On November 18, 2009, Ford Motor was ordered to pay $55.7 million to an inventor (Jake Krippelz).  Back in December 2008, a Federal jury awarded the inventor $23 million in a patent infringement lawsuit against Ford Motor.  The inventor’s patent covered an automotive lighting system used in exterior rear view mirrors and was issued in 1991 (U.S. Patent No. 5,017,903). 

After a 10 year lawsuit, Ford Motor was found to have willfully infringed the ‘903 patent and the Court awarded double-damages to the inventor for the willfully infringing sales (an additional $21 Million for the inventor).

In the end, the inventor was awarded $55,703,357 ($23,000,000 in damages, $21,017,400 in enhanced damages for willful infringement and $11,685,957 in prejudgment interest).  The Court also granted the inventor his costs for the litigation which will be determined later.

RELATED DOCUMENTS:

– Court Order for $55.7 Million

– U.S. Patent No. 5017903

Google Books Settlement Receives Preliminary Approval

A New York judge has granted preliminary approval to a revised settlement agreement between Google Inc., the Authors Guild and the Association of American Publishers.  The revised agreement allows Google to distribute millions of copies of digital books online but narrows the number of books allowed.  Members of the public have until January 28 to file objections.  See the Wall Street Journal article:  Third Time a Charm for Google Books Hearing?

Appeal of Tafas v. Kappos Dismissed

On November 13th, an en banc Court of Appeals for the Federal Circuit granted the joint motion of all parties to dismiss the appeal of Tafas v. Kappos (the “continuation and claims rules” case).  Hence, the continuation and claims restrictions rules previously instituted by the USPTO are now officially gone.  The Federal Circuit refused to vacate the district court’s grant of summary judgment.

See the Tafas v. Kappos Dismissal.

Patent Owner Must Sue Contractor for U.S. Government in Court of Federal Claims

On September 30, the Federal Circuit upheld a District Court summary judgment ruling that Advanced Software Design Corporation must sue a contractor for the U.S. Government in the Court of Federal Claims and not in District Court where the claim was originally filed.  The Federal Circuit’s ruling was based on the fact that the acts of infringement by the contractor were “by or for the United States” pursuant to 28 U.S.C. 1498.  In particular, the U.S. Treasury Department gave “authorization and consent” for the manufacture by the U.S. Government.

See Federal Circuit Opinion.

USPTO Rescinds Controversial Proposed Patent Regulations

The USPTO filed a joint motion with GlaxoSmithKline to dismiss the lawsuit related to regulations affecting the ability to secure patent protection for inventions.  Director of the USPTO David Kappos stated:

The USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market.  These regulations have been highly unpopular from the outset and were not well received by the applicant community. In taking the actions we are announcing today, we hope to engage the applicant community more effectively on improvements that will help make the USPTO more efficient, responsive, and transparent to the public.  We are grateful to GlaxoSmithKline for working with us to file this joint motion to both dismiss the appeal and vacate the district court’s decision. This course of action represents the most efficient way to formally and permanently move on from these regulations and work with the IP community on new ways to take on the challenges these regulations were originally designed to address.

While the USPTO’s decision was expected based upon prior comments from the USPTO, this joint motion is excellent news for all patent applicants to avoid being severely limited in seeking patent protection on important technology.

LITIGATION HISTORY.  In August 2007, the USPTO published new rules intended to help improve examination efficiency and quality.  The proposed rules would have permitted a patent applicant to only file two (2) continuation applications and one (1) request for continued examination (RCE) per application family as a matter of right.  For a third or subsequent continuation application or RCE, the applicant would have had to make a case to the USPTO to show why the additional filing was needed.  In the fall of 2007, GlaxoSmithKline and Dr. Tafas filed a lawsuit against the USPTO in U.S. District Court of the Eastern District of Virginia seeking a preliminary injunction to stop the new rules.  In April 2008, the Court granted a permanent injunction against the new rules and the USPTO appealed to the U.S. Court of Appeals for the Federal Circuit which partially ruled in favor of the USPTO.  A rehearing was granted by the Federal Circuit with additional briefing to have started in the coming weeks.

Microsoft Ordered to Stop Selling MS Word

Along with $200 million in compensatory and $40 million in punitive damages, a Texas court has ordered Microsoft to stop selling Microsoft Word for violating i4i Ltd.’s U.S. Patent No. 5,787,449.  See U.S. Patent No. 5,787,449, the  Permanent Injunction and the Final Judgment.  Below is a portion of the Court Order:

In accordance with the Court’s contemporaneously issued memorandum opinion and order in this case, Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”) during the term of U.S. Patent No. 5,787,449:

  1. selling, offering to sell, and/or importing in or into the United States any Infringing and Future Word Products that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML;
  2. using any Infringing and Future Word Products to open an XML file containing custom XML;
  3. instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML;
  4. providing support or assistance to anyone that describes how to use any infringing and Future Word Products to open an XML file containing custom XML; and
  5. testing, demonstrating, or marketing the ability of the Infringing and Future Word Products to open an XML file containing custom XML.

This injunction does not apply to any of the above actions wherein the Infringing and Future Word Products open an XML file as plain text.

This injunction also does not apply to any of the above actions wherein any of the Infringing and Future Word Products, upon opening an XML file, applies a custom tranform that removes all custom XML elements.

This injunction further does not apply to Microsoft providing support or assistance to anyone that describes how to use any of the infringing products to open an XML file containing custom XML if that product was licensed or sold before the date this injunction takes effect.

This injunction becomes effective 60 days from the date of this order. 

In accordance with the Court’s contemporaneously issued memorandum opinion and order in this case, Microsoft Corporation is hereby permanently enjoined from performing the following actions with Microsoft Word 2003, Microsoft Word 2007, and Microsoft Word products not more than colorably different from Microsoft Word 2003 or Microsoft Word 2007 (collectively “Infringing and Future Word Products”) during the term of U.S. Patent No. 5,787,449:

1.      selling, offering to sell, and/or importing in or into the United States any Infringing and Future Word Products that have the capability of opening a .XML, .DOCX, or .DOCM file (“an XML file”) containing custom XML;

2.      using any Infringing and Future Word Products to open an XML file containing custom XML;

3.      instructing or encouraging anyone to use any Infringing and Future Word Products to open an XML file containing custom XML;

4.      providing support or assistance to anyone that describes how to use any infringing and Future Word Products to open an XML file containing custom XML; and

5.      testing, demonstrating, or marketing the ability of the Infringing and Future Word Products to open an XML file containing custom XML.

This injunction does not apply to any of the above actions wherein the Infringing and Future Word Products open an XML file as plain text.

This injunction also does not apply to any of the above actions wherein any of the Infringing and Future Word Products, upon opening an XML file, applies a custom tranform that removes all custom XML elements.

This injunction further does not apply to Microsoft providing support or assistance to anyone that describes how to use any of the infringing products to open an XML file containing custom XML if that product was licensed or sold before the date this injunction takes effect.

This injunction becomes effective 60 days from the date of this order.

Supreme Court to Review Bilski Case

The  Supreme Court has agreed to review the Bilski case which has been a controversial decision affecting business process and software patents.  Since the 1998 State Street ruling, software and business process patents have been widely accepted.  However, after the Bilski decision by the Federal Circuit last year, receiving (and enforcing) patents for business process and software inventions has been increasingly difficult.  Whether or not you are a fan of software patents, this will be an important decision for the patent attorneys and patent owners.