OFFER TO SELL IN ANOTHER COUNTRY MAY INFRINGE A PATENTED INVENTION UNDER 35 U.S.C. §271

Posted on August 25, 2010 by

Transocean Offshore Deepwater Drilling v. Maersk Contractors USA (Fed. Cir., August 18, 2010)

An offer made in another country to sell a product within the U.S. for delivery and use within the U.S. constitutes an offer to sell under 35 U.S.C. §271(a), according to the Federal Circuit.

Transocean accused Maersk USA’s drilling rig of infringing three of its U.S. patents that relate to an improved apparatus for conducting offshore drilling.

Maersk USA’a parent company Maersk A/S, which is a Danish company, contracted with Keppel FELS Ltd. to build the accused rig in Singapore.  Later, Maersk A/S negotiated with Statoil ASA (a Norwegian company) to Statoil’s use of the accused rig.  The companies came to an agreement for use of the rig and Maersk USA and Statoil Gulf of Mexico LLC (Statoil), a Texas Corporation, signed the contract in Norway.  The contract specified that the “Operating Area” for the rig was the U.S. Gulf of Mexico but that Statoil had the right to use the rig outside the Operating Area with certain limitations.

The contract also mentioned Transocean’s U.S. patents.  Maersk USA specifically retained the right to make “altercations” to the accused rig “in view of court or administrative determinations around the world.”  One of these “determinations” came when Transocean asserted the same patent claims against another competitor.  Transocean prevailed in that case and the district court required the competitor to make a design change to its rig to avoid infringement.  Thereafter, Maersk made the same design change.

The district court found, among other things, that the patents were not infringed.  More specifically, the district court found that there was no sale or offer to sell under 35 U.S.C §271(a).  The district court relied on the fact that the negotiation and signing of the contract took place outside of the U.S. and that the contract gave Maersk the option to alter the rig to avoid infringement.

The Federal Circuit disagreed.  Section 271(a) defines infringing conduct: “whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States . . . infringes the patent.”  An offer to sell is a distinct act of infringement separate from an actual sale.  An offer to sell differs from a sale in that an offer to sell need not be accepted to constitute an act of infringement.  There is no dispute that there was an offer to sell in this case.

In order for an offer to sell to constitute infringement, the offer must be to sell a patented invention within the United States.  The focus should not be on the location of the offer, but rather the location of the future sale that would occur pursuant to the offer.  Although it is the general rule under U.S. patent law that no infringement occurs when a patented product is made and sold in another country, the location of the contemplated sale controls whether there is an offer to sell within the United States.

The purpose of holding someone who offers to sell liable for infringement is to prevent generating interest in a potential infringing product to the commercial determent of the rightful patentee.  Accordingly, the Federal Circuit held that the district court erred because a contract between two U.S. companies for performance in the U.S. may constitute an offer to sell within the U.S. under 35 U.S.C. §271(a).

The parties further disputed whether the device sold in the contract was “the patented invention.”  Maersk USA argued that it was not an infringing sale because it reserved the right to alter the rig to avoid infringement and because the rig was not complete at the time of contracting.

The Federal Circuit held that a contract between two U.S. companies for the sale of the patented invention with delivery and performance in the U.S constitutes a sale under 35 U.S.C. §271(a) as a matter of law.  Maersk USA and Statoil signed a contract and the schematics that accompanied that contract could support a finding that the sale was of an infringing article under 35 U.S.C. §271(a).  The fact that Maersk USA, after execution of the contract, altered the rig in response to the lawsuit with the other competitor is irrelevant.  The potentially infringing article is the rig sold in the contract, not the altered rig that Maersk USA delivered to the U.S.

Posted in 35 U.S.C. §271, contract, Federal Circuit, infringement, patent | Tagged , , , , , , , , , | Leave a comment

FUNCTIONAL WORDS PRECEDING MEANS PLUS FUNCTION LANGUAGE MAY LIMIT CLAIM SCOPE

Posted on August 23, 2010 by

Baran v. Medical Device Technologies (Fed. Cir., August 12, 2010)

When a purely functional term precedes mean-plus-function language (i.e., “means for”), the functional term is not an idle description but a vital function to be performed by the means-plus-function element, according to the Federal Circuit.

Dr. Baran sued Medical Device Technologies alleging infringement of U.S. Pat. Nos. 5,025,797 and 5,400,798.  Both patents are directed to automated biopsy instruments.

With regard to the ‘797 patent, the district court granted summary judgment of noninfringement on the ground that the accused device failed to satisfy two limitations of claim 7.  Claim 7, the only asserted claim of the ‘797 patent, reads in pertinent part (emphasis added): “A biopsy instrument comprising . . . a manually operable charging member for moving the guide to the charged position against the urging of the coil spring, and a release means for retaining the guide in the charged position.”

The district court concluded that the accused device did not satisfy the “release means for retaining the guide in the charged position” limitation.  The court construed that limitation to be in means-plus-function format and to have two functions – (1) retaining the guide in the charged position and (2) releasing the guide from the charged position.  The court concluded that the accused device did not have both functions.

On appeal the Federal Circuit concluded that no reasonable juror could find that the accused device satisfies the means-plus-function limitation of “release means for retaining the guide in the charged position.”

In construing a means-plus-function claim, the court must first determine the claimed function and then identify the corresponding structure in the written description of the patent that performs the function.  In order to prove literal infringement of a means-plus-function claim, the plaintiff must show that the accused device performs the recited function through structure that is the same as or equivalent to the corresponding structure set forth in the specification.

Dr. Baran argued that the district court erred in construing the claim to require both a release function and a retention function.  However, the Federal Circuit agreed with the district court that the claim language requires both a release function and a retention function.

The Federal Circuit stated that “Dr. Baran’s argument regarding the placement of the term ‘release’ is unveiling.  The relevant inquiry is whether the term at issue is purely functional.”  When it is apparent that the element invokes purely functional terms, the claim element may be a means-plus-function element despite the lack of express means-plus-function language.  The term “release” is not an idle description but a vital function to be performed by the means-plus-function element.  The patent does not recite a biopsy instrument that retains indefinitely without release; rather, the contemplated function is to retain for the express purpose of producing a spring-loaded release on demand.  The claim language ties both functions to the same means-plus-function element, so it is appropriate that the element be construed accordingly.

The Federal Circuit concurred with the district court that the accused structure is substantially different from the disclosed structure and therefore does not infringe pursuant to section 112, paragraph 6.

Posted in 35 U.S.C. §112, 6th Paragraph, claim construction, Federal Circuit, means-plus-function, patent | Tagged , , , , , | Leave a comment

BROADEST REASONABLE INTERPRETATION MUST GIVE WEIGHT TO ALL TERMS IN CLAIM

Posted on August 23, 2010 by

Ex Parte Givens, Appeal 2009-003414 (BPAI, August 6, 2009)

Patent Examiners must give weight to all terms in claim language when determining its broadest reasonable interpretation according to the Board of Patent Appeals and Interferences.

The Appellant’s claimed invention is a method and apparatus for reducing noise associated with acoustic sensor outputs.  The invention uses a sub-band spectral subtraction mechanism to process a noise cancellation mechanism output signal, producing a reduced noise acoustic data signal.  Specifically, independent claim 1 recites:

1.     A method for sensor output signal noise reduction comprising the steps of:

introducing at least one sensor output signal into an LMS-based adaptive noise canceller, producing a noise canceller output signal; and

introducing said noise canceller output signal into a sub-band spectral subtractive routine external to said LMS-based adaptive noise canceller, producing a reduced noise signal.

The Examiner rejected claims 1-15 under 35 U.S.C. § 102(e) based upon the teachings of Lin (U.S. Pat. Pub. No. 2007/0090980 A1).  The Examiner alleged that Lin teaches an LMS adaptive noise canceller that includes a sub-band spectral routine.  The Examiner stated that the Appellant did not provide a specific definition of “sub-band spectral subtractive routine” and thus, giving the terms its broadest reasonable interpretation, the term can include any adaptive filter.

The BPAI disagreed with the Examiner’s assertion that because the Appellant did not provide a specific definition of “sub-band spectral subtractive routine,” its broadest reasonable interpretation can include any adaptive filter.

Specifically, the BPAI noted that Appellant’s specification states that “sub-band spectral subtraction algorithms are . . . known to those skilled in the art.”  Furthermore, the specification sets forth the sub-band spectral subtraction mechanism in para. 0023 and describes its function.

The BPAI stated that although the specification does not specifically define the term “sub-band spectral subtractive routine,” it is a specific claim term for a specific type of filtering.  Any interpretation that fails to give weight to “sub-band,” “spectral,” “subtractive,” and “routine” deprives the words in the claim of their normal meaning.  Thus, the “sub-band spectral subtractive routine” does not include any adaptive filter, but refers to a specific routine.  As such, because Lin does not disclose each and every element of the invention, Lin does not anticipate claims 1-15.

Posted in 35 U.S.C. §102, anticipation, BPAI, claim construction, patent | Tagged , , , , , | Leave a comment