Fonar v. General Electric
Encyclopedia
Fonar v. General Electric was a case decided in 1997 by the United States Court of Appeals for the Federal Circuit
concerning source code
and the disclosure requirement for software patents.
over Fonar's patent on MRI technology. Fonar's founder, Raymond Damadian, was issued U.S. Patent 3,789,832 http://www.google.com/patents?id=--AZAAAAEBAJ for an "apparatus and method for detecting cancer in tissue" using the magnetic resonance of atoms. Damadian's patent was the first patent on an MRI machine issued in the United States http://inventors.about.com/od/mstartinventions/a/MRI.htm. Also at issue was a later patent, U.S. Patent 4,871,966 http://www.google.com/patents?id=Uws6AAAAEBAJ issued in 1989, covering a method for obtaining MRI images in a single scan. GE is a major manufacturer of MRI scanners, and Fonar sued GE for infringing these patents by producing its scanners as well as inducing others to infringe.
found that GE infringed patent 4,871,966 and awarded Fonar $110.5 million in damages (reduced on appeal to $103.4 million) http://www.rkmc.com/Fonar_v_General_Electric_Selected_Result.htm. GE appealed this verdict to the Federal Circuit. The District Court also granted GE's motion for judgment as a matter of law
that GE did not infringe patent 3,789,832, which Fonar cross-appealed to the Federal Circuit as well.
The Federal Circuit found for Fonar on both issues, upholding the jury's verdict and reversing the JMOL concerning patent 3,789,832. GE appealed to the United States Supreme Court, which denied certiorari. GE ultimately paid Fonar over $120 million in damages plus interest.
and In re Hayes
, holding that source code disclosure is not required for software patents. Fonar reiterated the doctrine from Sherwood and Hayes very clearly and emphasized the Federal Circuit's preference for a description of a software's function over the software's actual source code.
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
concerning source code
Source code
In computer science, source code is text written using the format and syntax of the programming language that it is being written in. Such a language is specially designed to facilitate the work of computer programmers, who specify the actions to be performed by a computer mostly by writing source...
and the disclosure requirement for software patents.
Factual background
Fonar was a dispute between medical device manufacturer Fonar Corporation and General ElectricGeneral Electric
General Electric Company , or GE, is an American multinational conglomerate corporation incorporated in Schenectady, New York and headquartered in Fairfield, Connecticut, United States...
over Fonar's patent on MRI technology. Fonar's founder, Raymond Damadian, was issued U.S. Patent 3,789,832 http://www.google.com/patents?id=--AZAAAAEBAJ for an "apparatus and method for detecting cancer in tissue" using the magnetic resonance of atoms. Damadian's patent was the first patent on an MRI machine issued in the United States http://inventors.about.com/od/mstartinventions/a/MRI.htm. Also at issue was a later patent, U.S. Patent 4,871,966 http://www.google.com/patents?id=Uws6AAAAEBAJ issued in 1989, covering a method for obtaining MRI images in a single scan. GE is a major manufacturer of MRI scanners, and Fonar sued GE for infringing these patents by producing its scanners as well as inducing others to infringe.
Procedural history
A jury in the United States District Court for the Eastern District of New YorkUnited States District Court for the Eastern District of New York
The United States District Court for the Eastern District of New York is the federal district court whose jurisdiction comprises the entirety of Long Island and Staten Island...
found that GE infringed patent 4,871,966 and awarded Fonar $110.5 million in damages (reduced on appeal to $103.4 million) http://www.rkmc.com/Fonar_v_General_Electric_Selected_Result.htm. GE appealed this verdict to the Federal Circuit. The District Court also granted GE's motion for judgment as a matter of law
Judgment as a matter of law
Judgment as a matter of law is a motion made by a party, during trial, claiming the opposing party has insufficient evidence to reasonably support its case. JMOL is also known as a directed verdict, which it has replaced in American Federal courts.JMOL is similar to judgment on the pleadings and...
that GE did not infringe patent 3,789,832, which Fonar cross-appealed to the Federal Circuit as well.
The Federal Circuit found for Fonar on both issues, upholding the jury's verdict and reversing the JMOL concerning patent 3,789,832. GE appealed to the United States Supreme Court, which denied certiorari. GE ultimately paid Fonar over $120 million in damages plus interest.
Issues
The core of GE's defense rest on its claim that Fonar failed to meet the best mode requirement in disclosing patent 4,871,966 because it failed to disclose the source code to two critical software routines. Fonar countered by arguing that its description of the function of the routines was sufficient disclosure and that source code was unnecessary to fulfill the best mode requirement.Holding
The court held that software patents generally do not need to include source code to satisfy the best mode requirement if the function of the software can be described by other means.Importance
Fonar represents a continuation of a line of Federal Circuit cases, particularly In re SherwoodIn re Sherwood
In re Sherwood was a case decided in 1980 by the United States Court of Customs and Patent Appeals. It dealt with a patent regarding the analysis of seismological data.-Background:...
and In re Hayes
In re Hayes
In re Hayes was a case decided in 1992 by the United States Court of Appeals for the Federal Circuit, the successor of the United States Court of Customs and Patent Appeals...
, holding that source code disclosure is not required for software patents. Fonar reiterated the doctrine from Sherwood and Hayes very clearly and emphasized the Federal Circuit's preference for a description of a software's function over the software's actual source code.