Welcome to Winston & Strawn’s Federal Circuit Patent Decision Summaries. This bulletin provides a short summary of, and links to, the precedential patent cases decided by the Federal Circuit last week. We hope that these summaries are useful in keeping you updated on the Federal Circuit’s patent decisions.

A district court must analyze whether an alleged infringer is liable for indirect infringement by inducement even when no other entity is liable for direct infringement.

Move, Inc. v. Real Estate Alliance Ltd., No. 2012-1342 (Fed. Cir. Mar. 4, 2013).

The patentee appealed the district court’s grant of summary judgment in favor of the alleged infringer. The patent at issue covered a method for locating available real estate properties using a zoom-enabled map on a computer. The alleged infringer operates websites that allow users to locate available properties within a map display.

The alleged infringer initially sought a declaratory judgment that the patentee’s patent was invalid and not infringed. After the district court’s claim construction, the parties stipulated to non-infringement. The patentee appealed. The Federal Circuit then held that the district court erred in its claim construction, and construed the claim term “selecting an area” to mean “the user or a computer chooses an area having boundaries, not when the computer updates certain display variables to reflect the selected area.”

On remand, the district court held that the alleged infringer was not liable for direct infringement because its websites do not “select an area.” It found that the website users perform the selecting step, and that the alleged infringer “merely updates the display variables to reflect the user’s selected data.” It “also concluded that [the alleged infringer’s] systems were not liable for joint infringement because [the alleged infringer] did not exert direction or control over users who may have performed the selecting steps.”

The Federal Circuit vacated and remanded again. While the court agreed that the alleged infringer was not liable for direct infringement, it found that the district court erred by not considering indirect infringement by inducement. The district court should have analyzed whether all claim steps had been performed, either by the alleged infringer or by other parties, and whether the alleged infringer knew of the patentee’s patent and knowingly “induced users to perform the claim steps that [the alleged infringer] did not itself perform.”

A copy of the opinion can be found here. 

Named inventors appealed from the Board of Patent Appeals and Interferences rejection of their application for obviousness-type double patenting over another patent having two inventors in common, but different ownership. Affirming the Board, the Federal Circuit held that common ownership over the application and patent was “immaterial to the policy of preventing harassment by multiple assignees” and that the named inventors were not entitled to a terminal disclaimer.

In re Hubbell, Schense, Zisch, & Hall, No. 2011-1547 (Fed. Cir. Mar. 7, 2013).

Four named inventors from a university appealed the examiner’s rejection of their patent application (’509). The patent application had been abandoned but later continued. While the ’509 application was pending, two of the named inventors moved to another university and were named inventors on a different patent (’685) that was issued. The examiner rejected the ’509 application based on obviousness-type double patenting over the ’685 patent. The Board of Patent Appeals and Interferences held that the ’685 patent claims anticipated the representative claim of the ’509 patent application, and affirmed the rejection of the ’509 application based on obviousness-type double patenting.

Although the ’509 application and ’685 patent had two inventors in common, they did not have identical inventive entities, common owners, or assignees. The inventors argued that common ownership was a requirement for obviousness-type double patenting and that the ’509 application and ’685 patent shared two common inventors but did not have identical inventive entities or common ownership.

The Federal Circuit affirmed the Board, holding that “whether the application and patent were ever commonly owned is immaterial to the policy of preventing harassment by multiple assignees” and took judicial notice of the Manual of Patent Examining Procedure, which provides that “[d]ouble patenting may exist between an issued patent and an application filed by the same inventive entity, or by a different inventive entity having a common inventor.” Also, prior case law regarding obviousness-type double patenting recognized “a ’concern over potential harassment of an infringer by multiple assignees asserting essentially the same patented invention,’ even where there was no common ownership.”

The named inventors were not entitled to a terminal disclaimer because “[a]s a general rule, a terminal disclaimer filed to overcome an obviousness-type double patenting rejection is effective only where the application and conflicting patent are commonly owned.” In addition, the named inventors were not entitled to a two-way obviousness analysis because they admitted partial responsibility for the delay, by abandoning the ’509 application, which allowed the ’685 patent claims to issue first.

The dissent (Newman, J.) argued that the law of double patenting “never departed from the requirement of either common inventorship or common ownership, and never departed from the available remedy of terminal disclaimer for obviousness-type double patenting.” Therefore, double patenting should not apply because the ’509 application and ’685 patent were never commonly owned.

A copy of the opinion can be found here.   

If you have questions about the summaries that appeared in this bulletin, or would like to learn more about any of these cases, please contact one of the litigation partners listed here. If you have questions or comments about Winston & Strawn’s Federal Circuit Patent Decision Summaries or would like to be added to the mailing list, please contact one of the editors: Kathleen Barry at (312) 558-8046, Mike Brody at (312) 558-6385, Jim Hurst at (312) 558-5230, or Scott Blackman at (202) 282-5795.

Follow us on Twitter: twitter.com/winstonlaw

Text Winston to 21534 from your mobile phone to receive a message with a video about Winston & Strawn LLP. Includes link that functions only if your phone has internet access. Msg&Data rates may apply. Text STOP to 21534 to stop (conf. Msg will be sent) or email us. Text HELP to 21534 for help. Terms and Conditions.