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Assignee Information Printed on Face of Patent Provided Sufficient Identification of Patentee for Purposes of Notice Under 35 U.S.C. § 287(a)

November 02, 2007

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Last Month at the Federal Circuit - December 2007

Judges: Newman, Lourie, Linn (author)

[Appealed from: S.D.N.Y., Judge Castel]

In U.S. Philips Corp. v. Iwasaki Electric Co., No. 07-1117 (Fed. Cir. Nov. 2, 2007), the Federal Circuit reversed a district court’s decision to limit U.S. Philips Corporation’s (“U.S. Philips”) right of recovery to acts of infringement after the complaint was filed because notice of the patent-in-suit was inadequate. Further, the Federal Circuit affirmed the district court’s claim construction and entry of partial SJ of no literal infringement, but vacated its entry of partial SJ of noninfringement under the DOE.

U.S. Philips is the assignee of U.S. Patent No. 5,109,181 (“the ’181 patent”), which is directed to high-pressure mercury vapor discharge lamps. On June 7, 2000, Mr. Rolfes, an employee of Philips International B.V., Corporate Intellectual Property, sent Iwasaki Electric Company Ltd. (“Iwasaki”) a letter on Philips International B.V. letterhead. That letter notified Iwasaki of infringement of at least four patents, including the ’181 patent, a copy of which was enclosed. The letter did not identify U.S. Philips as the patent owner or disclose the corporate relationship between U.S. Philips and Philips International B.V.

U.S. Philips filed suit against Iwasaki on January 8, 2003, alleging infringement of claim 1 of the ’181 patent. In an opinion granting partial SJ, the district court decided that the Rolfes letter did not provide adequate notice within the meaning of 35 U.S.C. § 287(a) because the letter did not identify U.S. Philips as the owner of the ’181 patent and did not purport to speak for U.S. Philips. Because U.S. Philips did not mark its lamps and because the district court found that the Rolfes letter did not provide adequate notice, the district court limited Iwasaki’s liability to infringement since January 8, 2003, the date U.S. Philips filed its complaint.

The district court then granted SJ of noninfringement both as to literal infringement and infringement under the DOE. It did so because it found that Iwasaki manufactured or sold no lamps after January 8, 2003, that infringed claim 1 under the district court’s construction of the claim phrase “a quantity between 10-6 and 10-4 μmol/mm3.” U.S. Philips appealed the district court’s limitation of liability to acts of infringement after the complaint was filed, its claim construction, and its entry of SJ as to infringement by equivalents.

On appeal, the Federal Circuit first reversed the district court on the notice issue. In so doing, the Court applied the standard for actual notice set forth in Amsted Industries Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 187 (Fed. Cir. 1994). In that case, the Court held that actual notice under § 287(a) “requires the affirmative communication of a specific charge of infringement by a specific accused product or device.” Slip op. at 6. The Court concluded the Rolfes letter met that standard. The Court then distinguished the Rolfes letter from the letter in Lans v. Digital Equipment Corp., 252 F.3d 1320 (Fed. Cir. 2001). In Lans, a letter sent by the inventor of the patent-in-suit, and the sole shareholder and managing director of the assignee company, was insufficient to create notice because it was not sent by the patent owner. In so finding, the Court in Lans stated that the actual notice requirement of § 287(a) demands notice of “the patentee’s identity” and that the notice must arise by “an affirmative act on the part of the patentee which informs the defendant of infringement.” Slip op. at 6-7 (quoting Lans, 252 F.3d at 1327-28).

Iwasaki argued that the Rolfes letter was deficient under Lans because it was not sent by, and did not reference, the patent owner, U.S. Philips. In distinguishing the Rolfes letter from the Lans letter, the Court noted that the front page of the ’181 patent, which was enclosed with the Rolfes letter, identified U.S. Philips as the assignee. Further, the Court found that Philips International B.V. had ultimate responsibility for licensing and enforcement of the ’181 patent and was the party to contact regarding the contents of the letter. For these reasons, the Court concluded that the Rolfes letter constituted notice under § 287(a) and Iwasaki was liable for any acts of infringement that took place after June 7, 2000, the date of the letter.

Turning to the question of claim construction, U.S. Philips argued that the phrase “a quantity between 10-6 and 10-4 μmol/mm3,” as it relates to halogen concentrations, should be construed as approximately 3.2 x 10-7 to 3.2 x 10-4 μmol/mm3 because the phrase refers to orders of magnitude rather than precise numbers. Specifically, U.S. Philips contended that one of ordinary skill in the art of lamp chemistry would understand “10-4” to mean something less precise than “1 x 10-4” because of the absence of a coefficient (“1”). The Court disagreed, finding no reason to treat the numbers “as anything other than the ordinary numbers that they are.” Id. at 8. The Court found support for its construction in the specification, which suggests that 10-5 is used as a synonym for 1 x 10-5. Accordingly, the Court affirmed the district court’s construction.

The Court declined to consider whether and how to round numbers when applying its construction to the accused lamps after concluding that U.S. Philips waived the rounding arguments it made in the district court when U.S. Philips failed to raise them on appeal. The Court also rejected Iwasaki’s argument that “10-x” should be construed to mean 1.0 x 10-x, expressing a quantity with greater precision than 1 x 10-x due to the recitation of a significant digit following the decimal point of the coefficient. The Court concluded that the claim language provided no basis for inferring any level of precision beyond the single digit “1.”

The final issue on appeal was whether the DOE is available to extend the claimed construction range beyond its literal scope. The Federal Circuit disagreed with the district court that the claim language expressed boundaries so precisely that resorting to the DOE would “vitiate” the end points of the stated range and, therefore, was precluded. In its analysis, the Court relied on its statement in Abbott Laboratories v. Dey, L.P., 287 F.3d 1097, 1107-08 (Fed. Cir. 2002), that “the fact that a claim recites numeric ranges does not, by itself, preclude . . . [reliance] on the doctrine of equivalents.” Slip op. at 12 (alteration in original). The Court found the disputed claim language of the ’181 patent more analogous to the numeric ranges claimed in Abbott Laboratories and Warner Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997), than the claim language in cases cited by Iwasaki.

The Court also rejected Iwasaki’s argument that U.S. Philips included the upper concentration limit in its claim to avoid a prior art German patent (“Holmes reference”) that disclosed lamps with a halogen concentration of 5 x 10-4 and 5 x 10-2 μmol/mm3, and thus U.S. Philips must demonstrate that it has not “surrendered” particular equivalents. The Court found Iwasaki’s analogy to prosecution history estoppel improper because there had been no narrowing amendment to the claim at issue and Iwasaki had not asserted prosecution history estoppel in the case. Rather, to determine the permissible range of equivalents, the Court, again citing Abbott Laboratories, asked whether “a ‘hypothetical claim’ that literally recites the range of equivalents asserted to infringe . . . could have been allowed by the PTO over the prior art.” Slip op. at 16 (alteration in original). The Court found that the asserted equivalents have halogen concentrations that lie below the range disclosed by the Holmes reference and that Iwasaki had not shown that the Holmes reference anticipates or renders obvious the claimed lamps. Thus, the Court concluded that the Holmes reference does not foreclose the application of the DOE to lamps with halogen concentrations between 1 x 10-4 and 5 x 10-4 μmol/mm3.