Federal Circuit Review | November 2014
Japan Airlines Activities For US Government Cannot Infringe
In IRIS CORP. v. JAPAN AIRLINES CORP., Appeal No. 2010-1051, the Federal Circuit affirmed a decision to dismiss due to a conflict of laws.
IRIS owns a patent claiming methods for making a secure identification document containing an embedded computer chip that stores biographical or biometric data. IRIS sued JAL for patent infringement, alleging that JAL infringed IRIS’s patent by using electronic passports covered by IRIS’s patent in the processing or boarding of passengers. The district court granted JAL’s motion to dismiss because the patent law on which IRIS relied conflicted with federal laws governing the examination of passports. Therefore, the district court held that IRIS’s exclusive remedy was an action against the United States and that JAL was exempt from infringement liability under 28 U.S.C. § 1498(a).
On appeal, the Federal Circuit affirmed JAL’s motion to dismiss. The Federal Circuit held that the United States has assumed liability as JAL’s activities were (1) conducted “for the Government” and (2) conducted “with the authorization or consent of the Government” under 28 U.S.C. § 1498(a). Specifically, JAL’s actions were “for the Government” because JAL’s examination of passports improves the detection of fraudulent passports and reduces demands on government resources. Also, JAL’s actions were conducted “with the authorization or consent of the Government,” as JAL cannot comply with its legal obligations without engaging in the allegedly infringing activities.
Sale Negotiations Inside US Does Not Trigger Infringement
In HALO ELECTRONICS, INC. v. PULSE ELECTRONICS, INC., Appeal Nos. 2013-1472 & -1656, the Federal Circuit affirmed the district court’s finding of no direct infringement and no willful infringement for products sold outside of the United States.
Halo alleged that Pulse infringed three patents. Pulse moved for summary judgment that it did not directly infringe the Halo patents by selling or offering to sell products manufactured, shipped, and delivered outside the United States. The district court granted Pulse’s motion. The remaining issues were decided by the jury, which found that Pulse directly infringed with respect to products shipped within the United States and induced others to infringe. The jury also found it was highly probable that the infringement was willful and that the patents were not invalid for obviousness. Pulse raised a post-trial motion of no willfulness. The district court granted the motion and held that Pulse’s infringement was not willful because Pulse reasonably relied on at least its obviousness defense, which was not objectively baseless.
On appeal, Halo argued that the granting of summary judgment regarding the products sold outside the United States was improper because the contracts were negotiated inside the United States. The Federal Circuit affirmed the district court because, regardless of the location of negotiations, the fact remained that the products were not sold or offered for sale inside the United States. The Federal Circuit noted that adopting Halo’s logic would improperly broaden 35 U.S.C. § 271(a) and could confer a worldwide exclusive right on U.S. patent holders. Halo also argued that the district court erred in ruling the objective prong of the willfulness inquiry was not met simply because Pulse raised a non-frivolous obviousness defense. The Federal Circuit affirmed the ruling. Even though Pulse was ultimately unsuccessful in challenging the validity, the record supported that Pulse did raise a substantial question as to the obviousness of the Halo patents and thus the defense was not objectively unreasonable.
“Program Recognition Device” Claim Term Invokes §112, Sixth Paragraph
In ROBERT BOSCH, LLC v. SNAP-ON INC., Appeal No. 2014-1040, the Federal Circuit agreed that certain claim terms invoked 35 U.S.C. § 112, sixth paragraph, and affirmed that the claims were indefinite because the specification did not disclose corresponding structure for these terms.
Bosch sued Snap-On for patent infringement. Snap-On asserted that two claim terms, “program loading device” and “program recognition device,” are means-plus-function terms under 35 U.S.C. § 112, sixth paragraph and are indefinite. The district court presumed that “program recognition device” invoked § 112, sixth paragraph, because claim 1 recited the phrase “by means of,” and found this claim term indefinite. As for “program loading device,” the district court presumed that it did not invoke §112, sixth paragraph, based on the lack of the word “means,” but still found it was an indefinite means-plus-function term.
The Federal Circuit affirmed the district court’s judgment of invalidity based on indefiniteness, but held that the district court had erred in applying the presumption that “program recognition device” is a means-plus-function term. The Federal Circuit found no precedent holding that the presumption in favor of §112, sixth paragraph is triggered by a claim’s use of the expression “by means of.” Nevertheless, the error was harmless because, even without a presumption, the term “program recognition device” invokes §112, sixth paragraph. Because the patent’s disclosures are solely functional, one of ordinary skill in the art could not find in the specification any disclosure of a particular structure.
