Posts Tagged ‘theresa Stadheim’

Will Copyright Law Put Us on a Path to International Patent Exhaustion?

Tuesday, February 2nd, 2016

This is a guest post from Theresa Stadheim of Schwegman Lundberg & Woessner.

This article was first published by the American Intellectual Property Law (AIPLA) Patent Law Committee in its January 2016 newsletter.  For membership in AIPLA, visit here


Will Copyright Law Put Us on a Path to International Patent Exhaustion? Lexmark v. Impression Products

Under the doctrine of patent exhaustion, once a patented product is sold in a sale authorized by the patent holder, patent rights in that product are exhausted.  Domestic patent exhaustion (i.e., patent exhaustion upon a domestic sale) is a common law doctrine in the United States, as well as being generally accepted worldwide.  However, the current Lexmark v. Impression Products litigation has raised the issue of whether international sales should also lead to exhaustion of patent rights.

The Lexmark v. Impression Products litigation

Lexmark manufactures printers and toner cartridges used in those printers.  In Lexmark Int’l, Inc. v. Ink Techs. Printer Supplies, LLC, plaintiff Lexmark alleged that it first sold the patented inkjet cartridges at issue outside of the United States, and that these cartridges were later acquired and remanufactured by defendants, including Impression Products, thereby infringing Lexmark’s patent.[i]


In re Cuozzo – Still no changes for the claim interpretation standard during inter partes review proceedings

Monday, July 13th, 2015

iStock_000040556240_SmallA guest post from Theresa Stadheim, attorney at Schwegman Lundberg & Woessner.

In In re: Cuozzo Speed Technologies, LLC, Appeal No. 2014-1301 (Fed. Cir. July 8, 2015, decision by Dyk), the Federal Circuit decided not to review the Patent Trial and Appeal Board (the “Board”) practice of construing patents under the broadest reasonable interpretation (BRI) standard.

Garmin petitioned the Board for inter partes review (IPR) of claims 10, 14 and 17 of Cuozzo’s U.S. Patent No. 6,778,074 (the ‘074 patent). Garmin contended that claim 10 was invalid as anticipated under 35 U.S.C. § 102(e) or as obvious under 35 U.S.C. § 103(a) and that claims 14 and 17 were obvious under § 103(a). Claim 10 recited:

A speed limit indicator comprising:
a global positioning system receiver;
a display controller connected to said global positioning system receiver, wherein said display controller adjusts a colored display in response to signals from said global positioning system receiver to continuously update the delineation of which speed readings are in violation of the speed limit at a vehicle’s present location; and
a speedometer integrally attached to said colored display.


Federal Court Affirms BPAI in Dawson v. Dawson and Bowman

Wednesday, March 27th, 2013

This is a guest post from Theresa Stadheim of Schwegman Lundberg & Woessner

In Chandler Dawson v. Chandler Dawson and Lyle Bowman, Appeal Nos. 2012-1214,-1215,-1216, -1217 (Fed. Cir. March 25, 2013) (a copy can be found at the end of this post), the Federal Circuit affirmed a Board of Patent Appeals and Interferences (BPAI) interference decision that Chandler Dawson was not the sole inventor of the inventions covered by U.S. Patent No. 6,239,113 (“the ‘113 patent”) and U.S. patent No. 6,569,443 (“the ‘443 patent”).

Chandler Dawson was an employee of UCSF in the summer of 1997 when he gave a presentation to the World Health Organization (WHO) about topical use of an antibiotic for treating eye infections.  During the presentation and during subsequent presentations and discussions about the antibiotic, Dawson stated that he was having trouble formulating a delivery mechanism for the eye drug.  After a delivery mechanism was created, without the assistance of Dawson, Dawson and another party, Dr. Lyle Bowman, filed patent applications assigned to InSite that later issued as the ‘113 patent and the ‘443 patent.  UCSF then filed a patent application, essentially copying the ‘113 and ‘443 patent specification and claims and naming Dawson as the sole inventor, to provoke an interference proceeding.  The issue in the interference proceedings came down to a determination of who conceived of the inventions, and when they conceived of the inventions.


In Re Hubbell

Wednesday, March 20th, 2013

Guest post by Theresa Stadheim of Schwegman Lundberg & Woessner)

In In Re Jeffrey Hubbell, Jason Schense, Andreas Zisch, and Heike Hall, Appeal No. 2011-1547 (Fed. Cir. March 7, 2013) (a copy can be found at the end of this post), the Federal Circuit affirmed a Board of Patent Appeals and Interferences (BPAI) decision that claims of U.S. Patent Application No. 10/650,509 (the ‘509 application”) were obvious under the doctrine of obviousness-type double patenting.

The invention disclosed in the ‘509 application was based on research by Jeffrey Hubbell and Jason Schense while they were employed at California Institute of Technology (“CalTech”).  The ‘509 application was assigned to CalTech.  Hubbell left CalTech and joined the faculty of Eidgenossische Technische Hochschule Zurich (“ETHZ”) five years before the ‘509 application was filed.  An application that later issued as patent number 7,601,685 (“the ‘685 patent”) was based on research by Hubbell and Schense at ETHZ.  The ‘695 patent was assigned to ETHZ and Universitat Zurich.  The ‘509 application was rejected by the Examiner for obviousness-type double patenting over the ‘685 patent and other patents.  (A copy of the ‘509 application as published and the ‘685 patent can be found at the end of this post).  The BPAI affirmed the rejection, rejecting Hubbell’s argument that common ownership is required for obviousness-type double patenting.