Fraud on the PTO Does Not Necessarily Make the Patent Unenforceable

Kemin Foods, L.C. v. Pigmentos Vegetales del Centro SA [05-1479, -1480] (Fed. Cir. 2006) [BRYSON, Newman, Mayer] The Federal Circuit affirmed the jury verdict that the patents in suit were not invalid, and were enforceable, affirmed non-infringement as to some claims, and remanded the infringement issue as to one claim.
SIGNIFICANCE: Even when a court finds that the patentee failed to disclose material information to the PTO and acted with deceptive intent, the court retains discretion to decide whether the patentee’s conduct is sufficiently culpable to render the patent unenforceable.

Inequitable Conduct Does Not Necessarily Mean the Patent is Unenforceable

Kemin Foods, L.C. v. Pigmentos Vegetales del Centro SA [05-1479, -1480] (Fed. Cir. 2006) [BRYSON, Newman, Mayer] The Federal Circuit affirmed the jury verdict that the patents in suit were not invalid, and were enforceable, affirmed non-infringement as to some claims, and remanded the infringement issue as to one claim.
SIGNIFICANCE: Even when a court finds that the patentee failed to disclose material information to the PTO and acted with deceptive intent, the court retains discretion to decide whether the patentee’s conduct is sufficiently culpable to render the patent unenforceable.

The PTO Can Exclude Practitioners Based on Disbarments Elsewhere

Sheinbein v. USPTO, [06-1161] (Fed. Cir. 2006) [LOURIE, Newman, Rader] The Federal Circuit affirmed the PTO's decision to exclude Sheinbein from practicing before the office, based upon disbarments in other juridictions.

Pro Se Patent Applicants Are Given No Quarter

Kim v. Conagra Foods, Inc. (Fed. Cir. 2006) The Federal Circuit affirmed JMOL that the claims were not infringed, and affirmed the jury verdict that the claims were not invalid.
SIGNIFICANCE: No Special Treatement of Pro Se Patent Applicants. Surrender for purposes of the Recapture Rule is based upon what an "objective observer" would conclude was the purpose of the amendment or argument. (Although pro se litigants are held to less stringent standards. See Forshey v. Principi, 284 F.3d 1335, 1357-8 (Fed. Cir. 2002)).
BRIEF: The Federal Ciruit affirmed the claim construction based on statements in the Background. The Federal Circuit said that claims must be read in view of the specification of which they are a part, adding that the specification is the single best guide to the meaning of disputed term. Thus the preamble of the claim "potassium bromate replacer" was found to require some proof of oxidizing effect. Since plaintiff offered no proof of oxidizing effect, simply assuming that the same ingredients had the same effect in the accused product as they did in the claimed composition, there was no proof of infringement. Also at issue with respect to infringement was wheter the accused product "consisted essentially of" the claimed composition. The defendant introduced evidence of other ingredients, and plaintiff offered only her own conclusory testimony that the additional ingredients would not have materially affect tehd pter pertinent characteristics, but did not suppor this determination with any examinations or tests of the actual accused products.
Regarding Recapture Rule, the Federal Circuit reiterated the purpose of the recapture rule: to prevent a patentee from regaining through reissue the subject matter surrendered to obtain allowance of the original claims. The Federal Circuti rejected plaintiff's position that a pro se patent applicant shoudl be treated differently from other patentees. However, the Federal Circuit found no surrender, identifying the proper inquiry as "whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee's amendment or argument was to overcome prior art and secure the patent."

Vague Terms Like Mechanism, Element, and Device Won't Avoide the Effect of §112, ¶6

The Massachusetts Institute Of Technology V. Abacus Software, [05-1142, -1161, -1162, -1163] (Fed. Cir. 2006) [DYK, Michel, Friedman] The Federal Circuit reversed a stipulated determination of non-infringement because the district court erred in construing the claims.
SIGNIFICANCE: The Federal Circuit believes that claim construction is better conducted with reference to the accused device. Nonce words like “mechanism”, “element”, and “device” won’t avoid §112, ¶6, but “circuitry” usually conveys sufficient structure
QUOTE: “The generic terms “mechanism,” “means,” “element,” and “device,” typically do not connote sufficiently definite structure [to avoid treatment under §112, ¶6].
BRIEF: The Federal Circuit complained that “the record does not disclose the nature of the accused devices, and our rulings on claim construction in this case unfortunately must be made without knowledge of the accused devices”. While it is understandable that knowledge of the accused device may help focus the claim construction inquiry – i.e. identify what terms need to be construed – is an accused device really necessary to claim construction? Does the meaning of the claims depend upon what the patentee accuses of infringement?
The Federal Circuit affirmed the district court’s construction that the term scanner in 1982, required relative movement between a scanning element and the object being scanned. COMMENT: This is a good lesson in focusing on what you want to do rather than how you do it in when writing a claim.
The Federal Circuit affirmed the district court’s construction of a colorant selection mechanism as a means plus function element. The phrase “colorant selection mechanism” is presumptively not subject to 112 ¶ 6 because it does not contain the term “means.” However, a limitation lacking the term “means” may overcome the presumption against means-plus-function treatment if it is shown that “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” : “The generic terms “mechanism,” “means,” “element,” and “device,” typically do not connote sufficiently definite structure [to avoid treatment under §112, ¶6]. Section 112 ¶ 6 does not apply to “a term that is simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for.’” The Federal Circuit observed that “colorant selection” which modified “mechanism was not defined in the specification, and had no established meaning in the art.
The Federal Circuit reversed the district court’s construction of ““aesthetic correction circuitry” based on the strong presumption that the absence of the word “means” avoids §112, ¶6, and the finding that “circuitry” its connotes structure. The Federal Circuit further concluded that the language was limited to hardware. The Federal Circuit reversed summary judgment of non-infringement and remanded the case.

The Federal Circuit Defends the Motivation Test as a Protection from Hindsight; Emphasizes its Flexible Nature

Alza Corporation v. Mylan Laboratories, Inc., [06-1019](Fed. Cir. 2006) [GAJARSA, Clevenger, Prost] The Federal Circuit affirmed the district court’s judgment of noninfringement and invalidity.
SIGNIFICANCE: Undoubetedly defensive about the Supreme Courts review of KSR, the Federal Circuit engaged in a length defense if its motivation test to ward off hingsight, and emphasized its flexible nature,
QUOTE: “To reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, there must be some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct.”
BRIEF: The Federal Circuit engaged in an extensive review of the motivation to combine requirement as a necessary guard against hindsight, and emphasized the flexibility of its obviousness jurisprudence.
A claimed invention is unpatentable if the differences between it and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” Obviousness is a question of law, reviewed de novo, based upon underlying factual questions which are reviewed for clear error following a bench trial. These “underlying factual inquiries includ[e]: (1) the scope and content of the prior art; (2) the level of ordinary skill in the prior art; (3) the differences between the claimed invention and the prior art; and (4) objective evidence of nonobviousness.” The presence or absence of a motivation to combine references in an obviousness determination is a pure question of fact, as is the presence or absence of a “reasonable expectation of success” from making such a combination.
The Federal Circuit said that in Graham the Court recognized the importance of guarding against hindsight, as is evident in its discussion of the role of secondary considerations as “serv[ing] to guard against slipping into use of hindsight and to resist the temptation to read into the prior art the teachings of the invention in issue.” The Federal Circuit explained that its, and its predecessor’s “motivation to combine” requirement likewise prevents statutorily proscribed hindsight reasoning when determining the obviousness of an invention. This requirement has been developed consistent with the Supreme Court’s obviousness jurisprudence as expressed in Graham and the text of the obviousness statute that directs us to conduct the obviousness inquiry “at the time the invention was made” 35 U.S.C. § 103. As we explained in Kahn, The motivation-suggestion-teaching test picks up where the analogous art test leaves off and informs the Graham analysis. To reach a non-hindsight driven conclusion as to whether a person having ordinary skill in the art at the time of the invention would have viewed the subject matter as a whole to have been obvious in view of multiple references, there must be some rationale, articulation, or reasoned basis to explain why the conclusion of obviousness is correct. At its core, our anti-hindsight jurisprudence is a test that rests on the unremarkable premise that legal determinations of obviousness, as with such determinations generally, should be based on evidence rather than on mere speculation or conjecture.
The Federal Circuit noted that the motivation may be found implicitly in the prior art, and disclaimed any rigid test that requires actual teaching to combine before concluding that one of ordinary skill in the art would know to combine references.