Patent Searching Software

Marvell Semiconductor had a $1.17 billion judgement against them for infringement of two patents held by Carnegie Mellon University.  Ambercite's prior art finder and their Amberscope patent analysis software were used to do the analysis below.  These services can be purchased starting at $300 per patent reviewed.

Marvel claimed that these patents were anticipated by US patent 6282251 to Seagate.  Whether the Seagate patent is valid prior art for two Canargie Mellon patents is a matter for the appeal for this case.

Citation links to Marvell Semiconductor

Carnegie would not have had to look far for suggestions that Marvell may need to take a license to their two patents.  

It is worth considering how the Marvel patents are connected to the Carnegie patents. The figure below shows an AmberScope network of the patents. 

You can also see the Marvel patents (green) are distributed mainly in the bottom right cluster, although some patents are found in the cluster on the left. This cluster of Marvel patents would suggest a number of patents filed for similar inventions by Marvel, which in turn suggests a technology investment by Marvel in this technology area. So an investigator in this area would be well advised to review this patents to see if they described a technology, which if being commercialised by the patent owner, may infringe other patents in this area.

Conclusions

AmberScope was used to identify some potential prior art, and provide some perspective on the relative value of these patents. Overall, notwithstanding the complexity of the technology and value of hard disc drives, this analysis has suggested that the billion dollar infringement cannot be supported by the relative dominance of the patents identified by our analysis.

Where can Prosecution History be found

Prosecution history is available to the public in the USPTO’s Patent Application Information Retrieval system (PAIR) http://portal.uspto.gov/pair/PublicPair PAIR accesses patent information held in the USPTO internal Patent Application Locating and Monitoring (PALM) system and presents it in two different web-based views: Public PAIR and Private PAIR. PAIR provides web-based access for pending patent information and eases the process of tracking patents, patent applications, and follow-on documents through the USPTO approval process. Public PAIR provides status and history information for issued patents and published applications. In Public pair you can search for application information using the Application number; the control number; a Patent number; a PCT number; or the publication number. Private PAIR provides controlled access to non-public patent information, and Private PAIR provides access to all public information.  There is an application process to gain access to Private PAIR.

In re Bogese, 303 F.3d 1362, 1369, 64 USPQ2d 1448, 1453 (Fed. Cir. 2002)

Applicant filed twelve continuation applications over an eight-year period and applicant did not advance prosecution when the PTO gave the applicant an opportunity to advance prosecution.  In Borgese the Federal Circuit ruled that applicant had forfeited their right to a patent under the doctrine of prosecution history laches for unreasonable and undue delay in prosecution.  Prosecution history laches is not a hard and fast rule but the court ruled that where “multiple examples of repetitive filings that demonstrate a pattern of unjustified delayed prosecution,” laches may apply. Symbol Tech. Inc. v. Lemelson Med., Educ., & Research Found., 422 F.3d 1378, 1385, 76 USPQ2d 1354, 1360 (Fed. Cir. 2005)

Precision Instrument Mfg. Co. v. Automotive Co. - 324 U.S. 806 (1945)

Precision applied for a patent that interfered with Automotive’s patent.  Precision falsified dates and information during the interference proceedings on their patent.  Automotive at least suspected Precision of fraud in their application.  Automotive brought this up to Precision’s attorney and Precision’s attorney withdrew.  The new counsel for Precision settled with Automotive and Automotive became the owner of the patents that came out of the interference proceeding. Relations between Automotive and Precision declined and Automotive sought to enforce the patent they obtained from Precision, against Precision.

When Automotive sued to enforce their patent the district court denied damages saying that because Automotive knew of the falsified dates and information that Automotive’s conduct was inequitable, and Automotive could not sue for damages.  The Appeals court reversed, and the Supreme court via a split decision, affirmed the district court’s determination that the patent was unenforceable due to inequitable conduct.

Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002)

The Doctrine of Equivalents says equivalents of the claimed elements in a patent claim can also cause infringement.  Judge Learned Hand said that courts "resort to the 'doctrine of equivalents' to temper unsparing logic and prevent an infringer from stealing the benefit of the invention.”  Royal Typewriter co. v. Remington Rand, Inc., 168 F.2d 691, 692 (2d Cir. 1948) One of the limits on the Doctrine of Equivalents is prosecution history estoppel. Prosecution history estoppel is the presumption that any narrowing limitation added to the claims during prosecution bars the doctrine of equivalents in defining scope of the amended claims.

After Festo began marketing its patented device, Shoketsu marketed a device that allegedly infringed Festo's patented device.  Festo charged infringement under the doctrine of equivalents.  Festo's claim had been amended during prosecution to fix a 35 U.S.C. §112 problem, and Shoketsu claimed that prosecution history estoppel should bar Festo from asserting equivalents.  The court decided that the prosecution history estoppel presumption is rebuttable where:

• the amendment cannot reasonably be viewed as surrendering a particular equivalent;

• the equivalent may have been unforeseeable at the time of the application;

• the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; 

• or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.  

Impermissible Recapture in a Reissue examination flowchart

Kingsdown Medical Consultants, Ltd. v. Hollister Inc., 863 F.2d 867 (federal circuit 1988),

Inequitable conduct during prosecution can invalidate a patent in later litigation. Inequitable conduct resides in failure to disclose material information, or submission of false material information, with an intent to deceive, and those two elements, materiality and intent, must be proven by clear and convincing evidence.

Kingsdown had a claim rejected and then Kingsdown renumbered the claim and told the examiner that the renumbered claim had the same wording as an already allowed claim.  The District court found that the amendment was material, because the amendment was made to overcome a rejection; the District court found that the amendment was deceitful because the amendment was at least grossly negligent; and the District court invalidated the patent on grounds of inequitable conduct.  The Federal Circuit found that the District court’s decision regarding inequitable conduct was clearly erroneous and reversed the decision and remanded the case.