Ken Kula: Welcome to an introduction to patent law by Quimbee. My name is Ken Kula. This presentation includes a number of course materials, including today's slides, complete with detailed presenter notes and two recent cases that address rather obscure patent law doctrines, patent misuse, and co-inventor ship. You may follow along with those slides or simply sit back and enjoy our presentation on patent law. In the end, it will provide you a unique overview of patent law, including an analysis of two cases that provide an understanding of two doctrines, rarely touched upon in other CLE programs.

  One case comes from the United States District Court from the Eastern District of New York, which addresses the frequently misunderstood doctrine of patent misuse. The other case comes from the Eastern District of Wisconsin, and it discusses the issue of joint or co-inventorship and how it can be used as a defense to patent infringement litigation. With that basic overview of what we're going to cover, let's get started with the introduction to patent law. Let's talk about applying and ultimately protecting the patent. We will talk about searching for a patent, applying for a patent, and then protecting a patent through litigation.

  Focusing the most on the last subject. A client's patents may be its most important asset. The patents that a company has can both protect its own products and attack a competitor's products. Just think of Apple, Sony, or Google and how vociferously and tenaciously it defends its patents and goes against others when it believes its patents are being infringed. Let's talk about searching to determine whether there is a patent in existence. Searching for patents is extremely important. A good search increases efficiency and decreases the potential for error.

  The process one goes through to search for patents should be thorough and painstaking. Thus, one should set up specific procedures and schedules for patent searches. To maximize effectiveness, they should be well organized, thorough and repetitive. The following top three search pointers should help with preparing for any patent searches. One, prepare for at least an hour-long patent search session. Just like you would prepare for any meeting with a client, witness, expert or another attorney. Write down ahead of time the five Ws of the applicable patent search elements for that session.

  The who, are we talking about the inventor or an assignee? The what, are talking about the technology, the invention at issue? The when, write down the critical date, the issuance date, any other dates that are important. The where, are we talking about searching through the PTO, through district court or online? And the why. What's your goal for searching? Are you looking for a patent? Are you looking for prior art? Are you looking for some reason to try and prove infringement or invalidity? Second, take detailed notes of your search results.

  Make sure to list the topic, the website address, the date of your visit and your ultimate finding. Three, if your notes are handwritten, make sure you scan your notes and electronically file them so that you have a ready source to assess your past findings and your future leads. I don't know how many times, especially with older attorneys, the search notes are handwritten down and then lost in one of those many yellow legal pads. But if one follows above three describes step pre patent search procedure, one will that the next two step actual patent search much more efficient and effective leading to better results.

  One, first conduct a Google patent search. If the search uncovers a patent similar to the invention at issue, then the patent search process is over. Next, go to the PTO website, www.uspto.gov, but before you use the PTO search engine, think about how one would define the invention, ask yourself, how has the in inventor described the invention? How would average people outside the industry describe the invention? Then conduct a thorough patent search using the PTO's seven step us patent search strategy guide. It's on the website, www.uspto.gov and it is a godsend.

  Of course, if expenses are not an issue, you can skip all the preliminary searches and free internet resources and simply hire a third party entity to conduct your patent search for a fee. That is always a wise decision. Let's talk about applying for a patent in the field of study just very briefly. I will not devote much time to this issue because it is beyond the scope of an introduction to patent law case. I will simply state that a client has two basic options when it comes to applying for a patent. First, he can spend the several thousand dollars to make sure it is done right and professionally.

  Second, the client can choose on having an in-house non-patent prosecuting attorney apply for the patent. If the client chooses the latter, then at least instruct the client as follows, to obtain a patent, the client will need to, one, make sure your invention qualifies for a patent. Make sure that the subject matter is patent eligible. Make sure that it is already not in the public domain. And two, be able to describe all aspects of your invention and describe them in detail and in an understandable way. These aren't legal skills and by taking the process one step at a time, your client can acquire a patent.

  The actual application process is fairly easy when you use www.uspto.gov as your guide. For another resource, check out generally www.nolo.com/legal-encyclopedia/getting-patent,yourself-2943.html. That's a good general source for how to acquire your patent by yourself. According to this commentator, there are really only five steps to filing a patent application. One, keeping careful records of the invention. Two, making sure that the invention qualifies for patent protection. Three, ensuring that the commercial potential of the invention is worth the cost of patenting it.

  Four, conducting a thorough patent search, which we've already talked about, and five, preparing for and filing an application with the US patent and trademark office. As you can see, the five above reference steps are very general and thus of limited value. Consequently, I reiterate my admonition that any client who wants to apply for a patent should be advised to engage a professional, experienced practitioner who is educated, licensed and well versed in this area. Let's move on to the meat and potatoes of this presentation, protecting a patent through litigation.

  Because patent rights come from Article 1 Section 8 Clause 8 of the United States constitution, which states that, "Congress shall have the "power" to promote the progress of science and useful arts by securing for limited times through authors and inventors, the exclusive right to the respective writings and discoveries, federal courts have exclusive subject matter jurisdiction over patent infringement actions." The first key issue in any patent infringement action is where should the case be filed? That requires an assessment of both personal jurisdiction and venue.

  The first consideration personal jurisdiction is not much of a hurdle. The second one venue can be. Let's talk about personal jurisdiction. Obviously, the district court in which the plaintiff chooses to file its action must have personal jurisdiction over the alleged infringer. This can result from the typically addressed minimum contacts from the forum state. This comes from the famous International Shoe Company v. Washington case 326, U.S. 310 in 1945.

  As with just about any commercial litigation case, such minimum contacts can be established through a variety of mechanisms, including the defendant alleged infringers purposeful direction of business activities towards the state or the placement of allegedly infringing products in the stream of commerce that reaches the state. Personal jurisdiction in patent cases is no different than personal jurisdiction in other cases. Let's talk about venue. Establishing proper venue has become more difficult for the plaintiff patentee since the 2017 US Supreme Court case of TC Heartland v. Craft Foods.

  That can be found at 137 Supreme Court, 1514. Again, it's a 2017 case. In that case, the Supreme Court significantly narrowed the venue options for plaintiff patentees to locations in which the alleged infringer resides or has committed acts of infringement and has a regular and established place of business. This is a significant narrowing in the proper venue because businesses are deemed to "reside" and "only" in the state of their incorporation. That makes venue very limited and a little more difficult. Let's talk about some other things about patents that make it unique.

  Let's talk about local patent rules, judge specific patent procedures, and other typical patent litigation requirements that you may not find in other general litigation. Once the personal jurisdiction and venue hurdles are cleared, patent infringement litigation is faced with additional hurdles that other complex commercial litigation does not face. In particular, many jurisdictions have local patent rules or the judges in specific jurisdictions may have his or her own procedures that impose requirements that differentiate patent litigation from other types of litigation.

  For example, in the Eastern District of Texas and the Northern District of California to federal district court hotbeds for patent and litigation, the plaintiff patentee must make an early decision regarding which claims of its patents are infringed. And the plaintiff patentee must provide detailed infringement contentions, which typically consists of a claim chart that contains each claim element of each asserted claim in the left column and the evidence of infringement in the right column. In addition, and as discussed more later, these contentions must specify which type of infringement is at issue.

  Direct infringement, indirect infringement, induced infringement, or possibly contributory infringement. We'll talk about each of those later on. The plaintiff patentee is not alone in these additional patent litigation burdens or requirements. After the plaintiff patentee serves its infringement contentions, the accused infringer must provide detailed invalidity contentions if it wishes to challenge the validity of the plaintiff's patent. Remember all issued patents are presumed valid because they've come out of the US PTO.

  As will be discussed later, patents can be invalidated for any of the reasons they could have been denied at their initial application stage, including anticipation by prior art, obviousness based on a combination of prior art references, the improper listing of inventors, or a lack of subject matter eligibility. Again, we'll talk about each of those in a little bit. Similar to the additional requirements on the plaintiff patentee, the accused infringers in validity, contentions must specify the grounds for invalidity.

  And if he or she is claiming invalidity based on anticipation or obviousness, the accused infringer must provide a claim chart showing where each element of each asserted claim is found in the prior art. Let's talk about other unique aspects of patent litigation. Namely, the Markman hearing. Patent law is often described as a combination of contract law and property law, where the meets and bounds of your intellectual property.

  The invention disclosed in the patent is determined by the specific meaning of the terms of the contract the patents claims all of which constitute a contract that the patentee makes with the US government for a limited monopoly to exclude others from using his or her invention. As such patent litigation often turns on the meaning of the words used to describe the invention in asserted claim of the patent-in-suit. When the parties cannot agree as to the meaning of a particular term or claim the judge presiding over the case determines the meaning of the disputed terms.

  This is done at what has become known as a Markman hearing, named after the now famous US Supreme Court case of Markman V. Westview Instruments. It can be found at 116, Supreme Court, 1384, and it came out in 1996. During this hearing, the parties described the technology to the District Court judge and argue for their respective construction for certain terms at issue. Ultimately the court will construe the claims based first on all the intrinsic evidence, the patent in the prosecution history, and if necessary, certain extrinsic evidence.

  Like dictionary definitions, learned treatises and expert testimony. Generally, the terms in the patent-in- suit are to be given their ordinary and customary meaning as understood by a person of ordinary skill in the art, in the context of the specification and prosecution history of the particular patent being asserted. The exception is when the patentee chose to depart from this ordinary and customary meaning, and instead chose to give a term and unique meaning in such a situation. However, it is said that the patentee is allowed to act as his own lexicographer.

  To be his or her own lexicographer, however, the patentee must clearly set forth his or her definition of the term at issue in the patent's written description. Typically, a few months after the Markman hearing is held, the court will hand down its claim construction order or Markman order. It will identify each asserted claim, the meaning of each term either is agreed to by the parties or construed by the court and provide other important information to move on to the next stage in a typical patent infringement litigation. Let's talk about how one proves patent infringement.

  Once a case has progressed past discovery, both fact and expert, and the court has issued its claim construction order, there's actually a little more to be done before patent infringement can be determined. In theory, the patent infringement analysis is a rather simple process. It involves a mere two steps. "The court first determines as a matter of law, the correct claim scope vis-a-vis, the Markman hearing, and then compares the properly construed claim to the accused device to determine as a matter of fact, whether all of the claim limitations are present either literally or by a substantial equivalent in the accused device."

  That comes from Johnson Worldwide Associates v. Zebco Corporation. And it can be found at 175, F.3d, 985, the Federal Circuit case of 1999. For the plaintiff patentee to prove literal patent infringement, every limitation, everyone set forth in a claim must be found in an accused product or process. I direct you to the case of Becton Dickinson and Company v. Cr Bard at 922 F.2d 792, a 1990 Federal Circuit case to discuss literal infringement. And it is well settled then accused device that sometimes, but not always embodies a claim, nonetheless infringes.

  That is a very important note to make. You can find that at Broadcom Corp. v. Emulex Corp. 732 F.3d 1325, a 2013 Federal Circuit case. Let's continue with literal infringement. Literal infringement is the way that most cases are litigated. However, literal infringement is not the only way to establish infringement. One can also prove infringement pursuant to the doctrine of equivalents.

  "Under the doctrine of equivalents, a product or process that does not literally infringe a patent claim may nevertheless be held to infringe if it performs substantially the same function in substantially the same way to obtain the same result." That language comes from the Graver Tank & Manufacturing Company v. Linde Air Products. Supreme Court case found at 339, U.S. 605. And it was in the Duncan Parking Tech's case at 914 F.3d 1347, a 2019 Federal Circuit case.

  But the doctrine of equivalence applies only in exceptional cases and it is not simply the second prong of every infringement charge regularly available to extend protection beyond the scope of the claims. Furthermore, more recent cases have applied an "insubstantial differences" test for the doctrine of equivalence. Unlike the function way result test that I just described this insubstantial differences test provides that the entire accused product must be substantially similar to the product described in the patent of claim to infringe under the doctrine of equivalence.

  Regardless of the test proving infringement under the doctrine equivalence is the exception, not the norm. Let's talk about the other forms of infringement than direct infringement. Although direct infringement is, as I stated, the most common type of infringement litigated, proven when the defendant infringer makes use or sells a patent invention within the United States or imports a patented invention into the United States, there are other forms of infringement. In particular, one can indirectly infringe a patent.

  Indirect infringement is when one induces another to directly infringe a patent or contributes to the direct infringement of a patent. The two types of indirect infringement, inducement and contributory are similar, but distinct. Induced infringement results when someone knowingly assists in the direct infringement by another. This comes directly out of 35 United States Code Section 271B. This requires that the party doing the inducing knows that his or her induced acts constitute patent infringement.

  Take a look at Global-Tech Appliances v. SEB at 563 U.S. 754, a 2011 Supreme Court case that talks more about induced infringement. Thus, the inducer must know that the patent-in-suit existed or must have been willfully blind to its existence, meaning that it could have known if it would've just looked. For example, suppose a Chinese manufacturer obtains a product marked with the US patent number, copies that product, and then ships it back to America to have it sold by an American company in America, even though the Chinese manufacturer did not itself directly infringed the patent-in-suit in the United States.

  It could be held liable for induced infringement if the American company is found liable for direct infringement. Let's talk about the other form of indirect infringement. Contributory infringement. Contributory infringement is another form of indirect infringement. It occurs when a party provides a component of a patented combination that constitutes a material part of the invention, knowing that the component was made or can be adapted for use in the infringement of the patent-in-suit.

  The famous case with regarding contributory infringement is Medtronic v. Mirowski Family Ventures 571 U.S. 191, a 2014 Supreme Court case. Similar to the requirement in induced infringement, there is a requirement in contributory infringement that the accused infringer must have prior knowledge of the patent-in-suit. Importantly, however, contributory infringement does not apply when the component at issue is a staple article of commerce suitable for non-infringing use.

  For example, a Chinese semiconductor manufacturer that specifically sells Android specialized chips for Samsung's Galaxy smartphones could be liable for contributory infringement of a patent claiming a mobile phone with those chips, but a similar Chinese manufacturer of simple double A batteries would not be liable for contributory infringement of a patent that requires a battery. Let's talk about the most common defenses to a patent infringement claim. The three most commonly raised defenses to a patent infringement claim fall into three separate categories.

  Non-infringement, invalidity, and unenforceability. Each is obviously different and each can be broken down into subcategories. I will only give a broad overview of each. Let's talk about non-infringement under 35 United States Code Section 271. Obviously non-infringement is the opposite of infringement. To infringe the defendant, alleged infringer must be making, using, offering to sell or selling the patented dimension in the United States or importing into the United States the patented invention during its patent term without authority.

  Thus, if the alleged infringer can establish that it does not do one of those acts does not make, does not use, does not sell, etc. It can avoid infringement. In addition, and as discussed earlier to prove infringement, the plaintiff patentee must show that each and every element of a patent claim is present literally or through the doctrine of equivalents in the accused product, method, processor system. Consequently, if the accused infringer can show that its product is missing just one element, just one of a claim in the patent-in-suit, it can avoid a finding of infringement.

  Let's move on to invalidity, and in particular, we'll talk about invalidity of the patent under Sections 101, 102, 103 and 112 of the patent act. First ineligible subject matter under 35 United States Code Section 101, the claimed subject matter of a patent must be patent eligible subject matter under the patent act. In particular, the claimed invention must be a process machine manufacturer or composition of matter. An inventor cannot claim a patent on a law of nature, a natural phenomena or an abstract idea.

  Thus, if the alleged infringer can show that the patent-in-suit claims one of these latter items, a law of nature, natural phenomena or abstract idea, the patent-in-suit is invalid because it attempts to claim ineligible patent subject matter. This comes up most frequently nowadays as what they call Alice Challenges, where someone is trying to get an invention on a simple process, that all the difference is, is that it uses a computer to do the process. That's an abstract idea that's trying to be patented and is ineligible.

  Moving on to anticipation under 35 United States Code Section 102, the patent-in-suit’s claim subject matter must be novel, meaning it cannot have been anticipated by prior art or things that have come before it. Anticipation is a difficult defense to prove because the defendant alleged infringer must prove that each and every element of an asserted claim is described either expressly or inherently in a single prior art reference, which can be a written publication or a previously existing product. This most often happens when you can find a patent on the technology at issue that preceded the patent that you're being sued upon.

  That's why patent searching is such an important process. Let's move on to obviousness under 35 United States Code Section 103, which is somewhat related to anticipation. Similarly, the patent-in-suit’s claim subject matter must be non-obvious, anticipation was that it was novel obviousness is that it be non-obvious, a claimed invention is considered obvious "If the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole, would've been obvious at the time the invention was made to a person having ordinary skill in the art."

  This comes again directly out of 35 United States Code Section 103. Unlike anticipation, which requires a single reference, obviousness can be shown by combining references that are logically related. Obviousness prevents people from piggybacking on other patents by just making minor little changes to a patented invention, and then trying to claim it as a new invention. Let's talk, lastly, about lack of written description under 35 United States Code Section 112.

  Finally, the patent-in-suit’s claims subject matter must fulfill the written description and enablement requirements under the patent act, which requires the description of the claimed invention to be sufficiently detailed and accurate, such that a person of ordinary skill in that particular art can understand, make and use the invention without having to engage and undo experimentation.

  One must remember that the basis of the patent is that the US government is basically saying, "Tell us how you did this and we will allow you a monopoly for the next 20 years so that you can exclude other people from doing it. But you have to tell us how you did it so at the end of the 20 years, other people can join the party." And so, the written description requirement says you can't hide the ball to get the monopoly. It has to be sufficiently detailed and accurate such that person of ordinary skill and that particular arc can understand, make and use the invention without having to engage in undo experimentation.

  Now, let's talk about unenforceability of a patented suit. This is different than invalidity and often gets confused or lumped into it. "A breach of the Duty of Candour early in the prosecution may render unenforceable all claims, which eventually issue from the same or a related application." This comes from Fox Industries v. Structural Preservation Systems. A 1990 Federal Circuit case found at 922 F.2d 801. This is one form of unenforceability and it's based upon a lack of duty of candour during the prosecution. We'll talk about patent misuse, which also results in unenforceability, but it's after prosecution.

  But let's talk about this topic first. Importantly, the inequitable conduct that we're talking about here may render unenforceable, not only claims of the patented issue that's being applied for, but all patent claims in other patents that have "An immediate and necessary relation" to that conduct. That comes from Keystone Driller v. General Excavator 290 U.S. 240, a 1933 case. This doctrine has been called or dubbed the doctrine of infectious unenforceability.

  As indicated, it holds that when a defendant alleged infringer establishes sufficient facts to allow a court to conclude that the plaintiff patentee alleged misconduct during the prosecution of a patent has an immediate and necessary relation to the claims of other patents. Then all the patents are deemed unenforceable. Unlike invalidity, however, unenforceability can be cured or purged, which would render the patent once again, enforceable, as we will see shortly, when we talk about a case in particular unenforceability can be cured in various ways.

  But typically it is accomplished by performing a mea culpa before the United States Patent and Trademark office. In particular, one needs to make the PTO aware of the misconduct, provide the PTO with the truth and show that the patent is still valid and the invention still patentable on the basis of the corrected record. That is an important distinction between unenforceability and invalidity. It now should be clear that although patent infringement analysis is a mere two step process, once the typical defenses to infringement are considered, it can be rather complex and protracted.

  It is clearly not something that is determinable by merely following a simple checklist. Now that we have the basics of patent litigation, let's talk about two rather obscure doctrines that I touched upon above and earlier that come forward in some cases on a limited basis. Let's talk about a current case on patent misuse. We will discuss Nationwide Sales & Sales Inc. v. Steel City Vacuum Co. It's a 2021 case Westlaw 982867 out of the Eastern District of Wisconsin. And it was just decided on February 16th, 2021. You should have that case available to you.

  And let's talk a little bit about that case. Plaintiff, as I indicated is Nationwide. It's bringing a lawsuit against Steel City. Steel City later asserted counterclaims, including patent misuse against Nationwide. Now, the basis for the lawsuit that Nationwide is bringing against Steel City is that Nationwide sold product to Steel City, Steel City then sold it on and Nationwide was suing it for infringement. Nationwide commence the action.

  It alleged that Steel City was infringing two patents, the 270 and the 127 by importing certain vacuum cleaner components into the United States and then selling or causing to be sold and offering for sale those same components. And as I indicated, Steel City not only said, "Hey, I don't infringe, but I believe your patents are unenforceable because you're engaging in patent misuse." Well, very important to this particular case, Steel City brought a motion for summary judgment during the litigation of non-infringement and at the summary judgment phase of the litigation.

  The court granted Steel City's motion for summary judgment in all respects. In fact, the final judgment in favor Steel City on all Nationwide claims of infringement was entered and importantly, the party stipulated to the dismissal of Steel City's counterclaim for declaratory judgment of non-infringement because there was a finding based upon the summary judgment motion. Now, Nationwide seeks dismissal of Steel City's two counterclaims for unenforceability due to patent misuse.

  Basically Nationwide is saying, "Okay, you won, nomos, let's call it off. Okay. I brought this infringement claim against you. You proved you don't infringe, so we've dismissed that, you dismissed your declaratory judgment action on non-infringement because the court has already ruled in your favor on non-infringement, so you need to dismiss your patent misuse case." Steel City says, "Nay, nay. Not quite." Nationwide offers three arguments as to why Steel City's misuse count owner claims fail as a matter of law and therefore should be dismissed. They first claim that patent misuse cannot be alleged as affirmative claim for damages.

  Second, Nationwide claims that its commencement of this action, the simple commencement of a patent infringement suit not constitute patent misuse. And then third, it claims that Steel City's claims are moot because any alleged misuse has been purged. Let's address each of those arguments in turn. Nationwide first argues that patent misuse is merely a defense and does not create an affirmative claim for damages. Well, Steel City responds, "You're right, but we're not seeking damages for patent misuse." "Well, if that's the case, then that's very important to know."

  And the Federal Circuit has specifically identified patent misuse as an extension of the equitable doctrine of unclean hands whereby a court of equity will not lend its support to enforcement of a patent that has been misused. It really hinges on whether the patent he has impermissibly brought in the physical or temporal scope of the patent grant with anti-competitive effect. But in this case, Steel City confirms that it's not seeking damages. And so, it says the court ruled accordingly.

  It would be inappropriate to dismiss Steel City's misuse counterclaims on the grounds that they are brought in pursuit of damages remedy when Steel City's not seeking damages. That argument goes by the wayside. The second argument. Nationwide asserts that filing a lawsuit for patent infringement per se, cannot be patent misuse. Steel City argued that Nationwide's infringement claims were actually outside the scope of the patent rights. And so, it's different. You're not just filing a lawsuit based upon your patent rights, you actually filed a lawsuit outside your patent rights, so it is misuse.

  Well, the court said, made clear under 35 United States Code Section 271 D3, "No patent owner, otherwise entitled to relief for infringement or contributory infringement of a patent shall be denied relief or deemed guilty of misuse or illegal extension of patent right by reason of his having sought to enforce his patent rights against infringement or contributory infringement." On a basic level, you're right, you cannot be found to be engaging in patent misuse simply because you filed a patent infringement claim.

  Otherwise every person that lost a patent infringement case that was brought would then be accused of patent misuse. But the court also said it is not patent misuse to bring suit, to enforce patent rights, not fraudulently obtained. And so the key inquiry under the patent misuse doctrine is whether patentee has impermissively broadened the scope of his patent grant. You have to remember that the facts of this case state that Nationwide sold product to Steel City and then Steel City sold that exact product to someone else and then got slapped with a patent infringement case.

  Remember also that the Supreme Court, the court points out has stated that a patentee "May not by virtue of his patent control the use or disposition of the product after ownership passes to the purchaser, the sale terminates all patent rights to that item." That is key. That is the key to this case. And so here, the counterclaims that Steel City brings state that it does not infringe the patents through the sale of products purchased from Nationwide. And that Nationwide knew or should have known that Steel City did not infringe because of the Supreme Court ruling that you can't infringe products that you own.

  This court has already noted that Steel City presented undisputed evidence that the subject products were directly sold by Nationwide to Steel City prior to this litigation. The court stated in substance Steel City's counterclaims contend that in bringing its infringement suit Nationwide broaden the scope of its patent rights to encompass products, to which its patent rights have already been extinguished through sale. This is different than alleging Nationwide committed misuse by enforcing its patent rights.

  This actually has some teeth. Courts have permitted misuse allegations to proceed against plaintiffs whose patent infringement suits were claimed to exceeded the scope of the patent rights. Typically, however, it's more in the case where the defendant alleged plaintiff was enforcing a patent it knew was invalid or that it knew it was enforceable or that it knew it wasn't infringed. Couldn't be infringed. You got a patent on a car and you're bringing it against a TV set or something so different that it's impossible to be infringed. Those are the typical cases.

  But the court said here based the fact that the products were sold from Nationwide to Steel City and then Steel City sold them and Nationwide brought a patent infringement claim based upon the foregoing Steel City's counterclaims do not fail simply because they alleged Nationwide's filing of its infringed constitutes misuse. Couldn't dismiss it on that ground. Then we get to the third argument. Nationwide's third argument is that because the court dismissed the claims of patent infringement at summary judgment, any possible misuse has been purged in the claim is moot.

  This is important. Nationwide brought the claim, court dismissed the claim, Nationwide says, "Nothing left to decide here." Steel City, importantly, doesn't dispute this. "Yeah, we want a summary judgment." They think that there's really not an argument that can be made except possibly this may result in an exceptional case. And so, maybe we should keep this patent misuse claim alive. Steel City averse that Nationwide committed misuse when it made an assertion of patent infringement, even though it knew or should have known that the products at issue do not infringe any claim of the patents.

  And that's perfectly accurate, but Steel City didn't identify any other act of Nationwide's misuse and the court already granted summary judgment on Nationwide's patent infringement claims in favor of Steel City. Steel City didn't argue that there was any other alleged misuse. And so the court ruled that given the foregoing any alleged misuse, i.e. the fact that Nationwide brought a claim for infringement, that it knew exceeded the bounds of its patent has already been purged and Steel City's claims for unenforceability, no longer provide grounds for relief.

  And so, the court recommended that Nationwide's motion for judgment on the pleadings be granted and Steel City's misuse counterclaims be dismissed and it all stems from the fact that Nationwide brought a claim for infringement that exceeded the scope of their patents, which allows for a counterclaim of patent misuse. But once the court dismissed the claims for infringement, the patent misuse claim goes away because the misuse has been purged or cured, purged in this case.

  That's an important case when it comes to patent misuse and I direct you to read it and understand it because patent misuse is an interesting doctrine that gets very little attention. The next case that we're going to talk about in-depth is another case that deals with something that is very rarely dealt with and it is co-inventorship. And it's interesting and can be used in litigation and should be used in litigation more as a defense than it is given the right set of facts. This is Raffel Systems v. Man Wah Holdings. It's a 2021 Westlaw case at 1102-164 out of the Eastern District, Wisconsin, and was decided in March of 2021.

  Typically, the co-inventorship defense is a situation where something is being built either in-house among a number of people or in collaboration between a couple companies and then either an employee leaves the company that was building the product or one of the companies no longer has a relationship with the other company, and somehow someone is getting sued for infringement and the defense comes, "Wait a minute. You can't sue me for infringement because I'm a co-inventor and I can't infringe my own product."

  And so, in this system, we have a number of actors and a couple companies to keep in mind. I'm going to go through them rather quickly. There's Michael Burwell. Burwell graduated from college in 2002 with a bachelor's degree in electrical engineering. He joined the Raffel product development as a technician in the engineering department. He wasn't a real full blown engineer. He joined the company and he sold massage chairs and motion controls for furniture and did repairs and maintenance. Although he worked as an engineer, he didn't actually design the chairs per se.

  Now, Burwell testified that Howman, who we'll talk about in a minute, wanted to take the company in a different direction and he was seeking to sell completed massage chairs and other retail products such as memory foam pillows. And so, they eventually incorporated a lighted cupholder in the chair, which is the subject of the invention. Burwell's job duties and responsibilities centered primarily on writing manuals for technicians and to repair the chairs. Howman imported from China and working with people over the phone to repair the chairs at issue.

  Burwell was the only electrical technician named at Raffel's comfort science place. Now, Burwell saw a sample of, and we will hear about this guy Albert’s lighted cupholder and described it as follows. It was a plastic cupholder with a Plexiglas or a clear acrylic disc that in the bottom with some LEDs underneath it. And then Burwell claims he suggested that the light at the bottom of the cupholder needed to spread around more and that they needed to use a light pipe to accomplish this. That is his claim to the inventorship. He's claiming that he's a co-inventor based upon that suggestion there.

  That's Burwell, he's the most important person for the defendant claiming co-inventorship. The next guy that's important is the Howman that we referenced. Howman took over the Raffel company and he's the one that moved it into selling different directions. He testified that he could not specifically recall where they were sitting or what they were doing when another guy Seidl brought up the idea of a lighted cupholder, but he stated that he could not recall Burwell participating in the discussion.

  Howman further testified that he could not recall one way or the other, whether Burwell made any suggestions regarding use of a photo cell using a main secondary configuration or using a touch sensor. However, he believed Burwell did not make these suggestions because he would not have been involved. Now, at this point, I want to remind you that again, patents come out of the US patent office presume to be valid and they presume to be accurate.

  And so, it's presumed that the correct inventors are named on there and you have to have clear and convincing evidence to prove that someone was either left off or someone on there wasn't really truly an inventor. And most importantly, for this case, you need corroborating evidence, meaning a person just can't come in and testify that he was a co-inventor and just based upon that testimony, the court could decide in his favor. The next actor that we need to discuss is the Dave Albert

  Albert testified that his company Global Product Solutions work predominantly on five or six products with Raffel, the variety of cupholders for Varell and Albert testified that it was he that came up with the idea of the battery operated light cupholder. Again, it... So far we got Burwell and we got everyone against them. Albert testified that he and another guy Canales conceived of the cupholder designed with a flange containing switches for massage functionality. And he testified the idea was conceived either right before he signed an agreement in 2005 or right after it.

  And regarding the patented issue, Alpert testified that he was either responsible for each claim or the claim was a collaborative effort between himself, Canales and Schmidt of GPS, and Seidl and Howman of Raffel, but definitely not Burwell.  Now, interesting enough, we got Seidl, Seidl began working at Raffel in 1993 and during Seidl's deposition, he testified that he first conceived the idea of a lighted cupholder after attending a high point furniture market in October, 2005.

  He also stated that Burwell did not contribute to the product or the drawing. He said that he came up with it. Now, during his deposition, he testified a little bit and ambiguously regarding what Burwell's contribution was. And Albert testified that it was possible Burwell could have been working on developing some functionality and some control boards to control the functionality, but he didn't come up with the ideas for the product. And he testified that Burwell did work on circuit boards in this general idea. Now, during trial Seidl explained what led to the conception of the lighted cupholder.

  And he explained how he was the driving force in this. But again, Seidl testified at his deposition that Burwell had more involvement than anyone else had testified. And so Burwell was claiming Seidl's testimony is my corroboration that I was an inventor, but Seidl explained at trial, the conflict between his previous deposition testimony and his trial testimony by stating that during his deposition, he was guessing as to the timeframe of events and after his deposition, he reviewed his backline folder and realized a correct timeline of events.

  And so, he basically retracted his contention that Burwell was possibly an inventor. The court went over the legal standard, said patent issue, creates a presumption that the named inventors are true and accurate, indicated that there's a way to cure a missing inventor if need be. But that it's a very difficult process. You need corroborating evidence, you need clear and convincing evidence.

  And then the court said that basically the bottom line question is whether "The picture painted by all the evidence taken collectively gives the court an abiding conviction that the alleged inventor's assertion of prior conception is highly probable." The court then went through a blown analysis describing each claim that Burwell claims that he invented, looked at each bit of corroborating evidence that he presented to the court, and one by one, the court just knocked it down.

  Said photo cell, now he might had a contribution, but it was peripheral to the actual invention or there isn't corroborating evidence that it was time of conception and there's no indication that you contributed significantly to the light pipe or the photo cell or the primary and secondary arrangement during the time of conception.

  And so, the court goes through painstaking details of co-inventorship and joint inventorship of all the different things and all the different possible inventions and pointed out that Burwell could not pinpoint when he allegedly conceived of any of these designs with enough specificity and corroboration, to prove that he is actually a co-inventor. And so, for all those reasons, the court found that Man Wah has failed to meet its burden of establishing by clear and convincing evidence that Burwell is a joint inventor of the utility patents asserted by Raffel in this case.

  As such the court would not order Raffel to obtain a certificate of correction, naming Burwell a joint inventor. Now, the tactical issue that was at play here was that Man Wah who was being accused of infringement actually had Burwell who had assigned an assignment of any of his inventions that he ever had created to Man Wah. So if they found Burwell was a co-inventor, Burwell had already assigned any interest he had to Man Wah, Man Wah being the defendant, as I indicated earlier, would then become a co-inventor of the patent or a patentee, co-patentee.

  And you can't be held to infringe your own patent. It was a tactical move by Man Wah to try and get Burwell to be found a co-inventor. And it didn’t at least it didn't hurt Burwell's testimony that Man Wah paid him $60,000 for that assignment. It may have hurt some of the credibility factors, but it's a very important case and I highly encourage you to read it in depth because it's very interesting too.

  Well, that concludes our one-hour long introduction patent law from Quimbee. I hope it has provided you with the background you'll need to perform your role in protecting your client's patents, defending the client against claims of infringement, and most importantly gave you some unique insight into a couple of the lesser known patent related doctrines, namely patent misuse, and joint or co-inventorship. Thank you very much.