DO NOT APPEAL A NON-FINAL JUDGMENT

International Electronic Technology Corp. v. Hughes Aircraft Company, [2006-1368](January 26, 2007)[GAJARSA, Moore, and Jordan] The Federal Circuit dismissed an appeal because of a lack of final judgment, and warned counsel in the future that they will be sanctioned for appealing a non-final judgment.

Arguments Create Disclaimers, Even if Made in the Alternative

Anderson Corp. v. Fiber Composites, LLC., [05-1434, 06-1009](January 26, 2007)[BRYSON, Prost, Saris] The Federal Circuit affirmed the construction of a group of four patents, and reversed the construction of a second group of two patents.
SIGNIFICANCE: An applicant's argument can serve as a disclaimer of claim scope, even if the applicant distinguishes the reference on other grounds as well.
BRIEF: The Federal Circuit noted that while nothing on the face of the asserted claims in the first group of patents limited "composite construction" to a particular form, the specification makes clear that the term, as used in the group 1 patents, mus be construed in a limited manner. The Federal Circuit noted that this was not a case where the claims were limited to the preferred embodiment, rather they were limited to how the term "composite construction" was used in the specification. The Federal Circuit quoted from the Field of the Invention, the Abstract, and other parts of the specification. The Federal Circuit said that these statements "are not descriptions of particular embodiments, but are characterizations directed to the invention as a whole." The Federal Circuit rejected arguments to the contrary based upon claim differentiation: "the written description and prosecution history overcome any presumption arising from the doctrine of claim differentiation." The doctrine of claim differentiation can not broaden claims beyond their correct scope, determined in light of the specification and the prosecution history and any relevant extrinsic evidence. "Claims that are written in different words may ultimately cover substantially the same subject matter." The Federal Circuit also pointed out that the claims weren't otherwise identical.
Regarding the second group of claims, the Federal Circuit also found that based upon the specification the claims were limited similarly to the first group. While the patentee argued that the specification was merely describing a preferred embodiment, the Federal Circuit found that the specification used language of requirement, not preference. Recognizing that it has warned against importing limitations form the specification into the claims, the Federal Circuit acknowledged the case would have been a close one, except for the prosecution history, in which the Federal Circuit found clear evidence of disclaimer. The Federal Circuit rejected the argument that there was no disclaimer because the prior art was distinguished on multiple grounds. "An applicant's invocation of multiple grounds for distinguishing a prior are reference does not immunize each of the form being used to construe the claim language. Rather, as we have made clear, an applicant's argument that a prior art referee is distinguishable on a particular ground can serve a disclaimer of claim scope even if the applicant distinguishes the reference on other grounds aw well." has

Prosecution History of Parent Affects the Child

Adrain v. TTS, Inc., [2006-1376](January 25, 2007)[MICHEL, Dyk, Prost] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of non-infringement of two claims directed to “an improvement in a vehicle”, and invalidity of a third claim.
SIGNIFICANCE: Prosecution of parent application is used to contrue the claims in a patent.
BRIEF: The Federal Circuit agreed with the district court’s interpretation of the “in a vehicle” language in the preamble as requiring that the accused apparatus for modifying an engine control module remain part of the vehicle once attached. The Federal Circuit relied upon the prosecution history of a parent application, saying “The prosecution history of an earlier patent in the same family ‘applies with equal force to subsequently issued patents that contain the same claim limitation.’ Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 980 (Fed. Cir. 1999).” The Federal Circuit noted that in the parent application applicant amended the preamble from “an improvement in an apparatus” to “an improvement in a vehicle”, and concluded that the amended preamble requires a module that becomes part of the vehicle and is intended to remain part of the vehicle during use. The Federal Circuit thus affirmed the judgment of non-infringement. The Federal Circuit also affirmed summary judgment of invalidity, finding that while the prior art “preferably” operated in a different manner than the claimed invention, the reference disclosed the claimed method.

Hydril Company LP v. Grant Pridco LP, [06-1188](January 25, 2007)[FRIEDMAN, Mayer, Bryson] The Federal Circuit reversed the dismissal of plaintiff’s Walker Process antitrust claim, and the dismissal of plaintiff’s patent infringement claim, and vacated the dismissal of plaintiff’s state law claim.
SIGNIFICANCE: Threat of enforcement against customers is sufficient to give rise to Walker Process claim
BRIEF: The Federal Circuit held that a valid Walker Process claim may be brought based on the threat of enforcement against customers, and thus there was sufficient threat of enforcement to give rise to a Walker Process claim. The Federal Circuit also held that a contract between the parties waiving remedies for a laundry list of claims including “tort” was not sufficient to constitute a waiver of a claim for patent infringement, and in any event had been terminated for breach, and concluded there was no bar to plaintiff’s claim for patent infringement.

Parfticipation in Interference Waives Sovereign Immunity

Vas-Cath. Inc. v. Curators of the University of Missouri, [2006-1100](January 23, 2007)[NEWMAN, Lourie, and Rader] The Federal Circuit held that the University of Missouri’s participation in a Patent Interference waived its sovereign immunity when the decision of the Board of Patent Appeals and Interferences was appealed, and reversed the dismissal of the district court appeal.

It's About TIme

Ortho-McNeil Pharmaceutical, Inc. v. Caraco Pharmaceutical Laboratories, Ltd., [06-1102](January 19, 2007)[MCKINNEY, Schall, Gajarsa] The Federal Circuit affirmed the grant of Caraco’s motion for summary judgment of non-infringement.
SIGNIFICANCE: The Federal Circuit brought some claritiy to the construction of "about" in patent claims.
BRIEF: At issue was the meaning of “about 1:5” in the claim relative to Caraco’s formula which had an average ratio of 1: 8.67 and a minimum ration of 1:7.5. Caraco argued that the proper construction is approximately 1:5, subject to error of 5 or 10%. Ortho argued that about 1.5 meant approximately 1.5, encompassing a range of rations of at least 1:3.6 to 1:7.1. The Federal Circuit noted that the parties agreed that “about” means “approximately”, but disagreed on the numerical limits. The Federal Circuit instructed:
[T]he word “about does not have a universal meaning in patent claims, . . . the meaning depends upon the technological facts of the particular case.

The use of the word “about,” avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technological and stylistic context. We thus consider how the term . . . was used in the patent specification, the prosecution history, and other claims. It is appropriate to consider the effects of varying that parameter, for the inventor’s intended meaning is relevant. Extrinsic evidence of meaning and usage in the art may be helpful in determining the criticality of the parameter . . .

The Federal Circuit said the extrinsic evidence pointed to a narrow interpretation of 1:5 because this ratio was distinctly claimed (as opposed to other broader ranges in the patent. Additional intrinsic evidence if the narrowness of 1.5 was the fact that other ratio close to 1.5, such as 1.1 were also specifically claimed, and a broad interpretation of 1.5 would render these specific limitations meaningless. The presence of a broad range of about 1:1 to about 1:1600 while at the same time specific ratios 1:1 and 1:5 suggests to a person of ordinary skill that the inventors intended a range when they claimed one, and something more precise when the did not. This conclusion what bolstered by the data points in the examples, 1:1, 1:3, 1:5, 1:5.7 and 1:15, yet only 1:1 and 1:5 were claimed, rather than a range. The Federal Circuit agreed with the district court’s adoption of Ortho’s claim construction that about 1.5 encompassed 1:3.6 to 1.7.1.
However on infringement the Federal Circuit agreed with the district court and Caraco that interpreting about 1:7.1 to extend to Caraco’s minimum ration of 1:7.5 would vitiate the claim limitation. The Federal Circuit said stretching the bounds of the 1:5 limitation beyond the 95% confidence levels specifically taught in the patent conflicts the the patents express claims to the 1:1 and 1:5 ratios. Under these circumstances, it makes no difference whether the response at other ratios was “statistically different” the intrinsic evidence points to the desirability, and thus the criticality, of the 1:5 ratio as opposed to other ratios. The Federal Circuit said “having so distinctly claimed the about 1:5 ratio, Ortho cannot argue through the doctrine of equivalents that the parameter is broad enough to cover ratios outside the confidence intervals expressly identified in the patent – to do so would eviscerate the limitation.

Claim Against Joint Infringer Barred by Prior Suit Against Other Infringer

Transclean Corp. v. Jiffy Lube International, Inc., [06-1077](January 18, 2007)[PLAGER,Michel and Bryson] The Federal Circuit affirmed summary judgment of for Jiffy Lube on the issue of claim preclusion, that a prior judgement against the maker and user of the accused equipment barred action against Jiffy Lube, the user of accused equipment.
SIGNIFICANCE: Sue joint infringers at the same time.
BRIEF: Transclean successfully sued Bridgewood for infringement of its patent on a system for servicing a transmission, although Transclean never collected the damages it was awarded. Transclean then sued Bridgewood’s customers for a royalty. The Federal Circuit distinguished the full compensation rule which operates to implied license a device when the patentee receives full compensation, from claim preclusion, which prevents the patentee from bringing the same claim twice. A plaintiff who chooses to bring two separate actions against two tortfeasors who are jointly responsible for the same injury runs the risk that the court will find the parties sufficiently related that the second action is barred by claim preclusion. While Transclean argued that the present case was different from the earlier case against Bridgewood, the Federal Circuit noted that the same patent and the exact same devices were involved. The Federal Circuit said that the issue of claim preclusion turned on whether the current defendants and the prior defendant were so close that they were in privity. On this point, Transclean had argued that the parties were in privity in its unsuccessful attempt to bind the defendants to the prior holdings of validity and infringement. The Federal Circuit held that Transclean should be bound by its claim of privity under the doctrine of judicial estoppel.

Ordinary Meaning Carries the Day

E-Pass Technologies, Inc. v. 3-Com Corporation, [2006-1356, -1357, -1358](January 12, 2007)[LINN, Michel, and Prost]
BRIEF: E-Pass appealed from summary judgment of non-infringement of a patent on a single electronic card for replacing a plurality of credit cards. The Federal Circuit previously remanded the case because the district court’s construction of card as “having the width and outer dimensions of a standard credit card” was too narrow. On remand the district court granted summary judgment that Palm’s electronic devices do not fall within the ordinary meaning of “card”. The Federal Circuit agreed with the district court decision on literal infringement, as to the doctrine of equivalents, the Federal Circuit found the district court’s conclusion too summary. The Federal Circuit noted that under the all elements rule, the doctrine of equivalents must be applied to individual elements of the claim, not to the invention as a whole. And that the all elements rule may foreclose resort to equivalents where the evidence is such that no reasonable jury could conclude that tan element of an accused device is equivalent to an element called for in the claim. However the Federal Circuit said that the it did not have to decide equivalents because E-Pass failed to prove that the claimed method had actually been performed.

No Error of Claim Construction

Shanghai Meihao Electric, Inc. v. Leviton Manufacturing Company, Inc., [2006-1272, -1488](January 10, 2007)[CLEVENGER, Newman, and Dyk] Leviton appealed summary judgment of non-infringement, and the entry of an injunction against Leviton. The Federal Circuit affirmed in part and reversed in part. At issue was the district court’s construction of “operational” and “reset lock-out” in Leviton’s patents on ground fault circuit interrupters (“GFCIs”). The Federal Circuit found no error in the claim construction, and thus affirmed summary judgment. The Federal Circuit reversed an injunction against Leviton from accusing Meihao’s products of infringement, finding no showing of necessity.

Use in the United States Can Support an Opposition

First Niagara Insurance Brokers, Inc. v. First Niagara Financial Group, Inc., [06-1202] (January 9, 2006)[CLEVENGER, Rader, and Prost) The Federal Circuit reversed and remanded a TTAB decision rejecting First Niagara Insurance Broker’s opposition on the grounds that its use of the FIRST NIAGARA was not in the type of commerce regulable by Congress.
SIGNIFICANCE: Use in the United States, not Use in Commerce, is all that is needed to support an opposition.
BRIEF: The Federal Circuit observed that Section 2(d) prohibits registration that is confusing similar to a mark or trade name used in the United States, but the TTAB proceeded as if the opposer had to prove use in connection with services renderee in commerce lawfully regulated by Congress. Thus the Federal Circuit held that “a foreign opposer can present its opposition on the merits by showing only use of its mark in the United States."

Design Patents on the Rebound

Amini Innovation Corp. v. Anthony California, Inc., [06-1096, -1129](January 8, 2007)[SCHALL, Lourie, and Rader] The Federal Circuit reversed summary judgment of non-infringement and remanded the case.
SIGNIFICANCE: Design patent infringement is determined as a whole, and not piece by piece.
BRIEF: A design patent protects the non-functional aspects of an ornamental design as seen as a whole and as shown in the patent. The district court concluded that Amini could not show infringement under the ordinary observer test because three specific features were lacking from Anthony’s accused product. In doing so, the Federal Circuit found error in analyzing each design element individually, instead of analyzing the design as a whole from the perspective of the ordinary observer. The Federal Circuit also found that photographs of the accused device could be sufficient proof of infringement. Lastly, the Federal Circuit found clear error in the district court finding of lack of novelty. The Federal Circuit said that a design could be influenced by an existing design style yet still be a novel interpretation of that style. As an example, the district court found novelty in Amini’s design with a five-toed lion’s foot because lions have five toes, but the Federal Circuit pointed out that prior furniture designs only had three and four toe designs.

VItiation Vitiated?

Abbott Laboratories v. Andrx Pharmaceuticals, Inc., [06-1101] (January 5, 2007)[PROST, Michel, Ellis]
BRIEF: Andrx appealed the grant of a preliminary injunction against infringement of three patents, and the Federal Circuit. “To overturn the grant of a preliminary injunction, we must find that the district court made a clear error of judgment in weighing the relevant factors or based its exercise of discretion on an error of law or on clearly erroneous factual findings.” Andrx argued that Abbott was collaterally estopped from asserting the patents against it because preliminary injunctions were denied by the same against Teva and Ranbaxy because the patents in-suit were likely to be shown to be invalid or unenforceable. Applying the law of the local (Seventh) circuit on a procedural issue not unique to patent law, the Federal Circuit considered whether collateral estoppel applied. The Federal Circuit said that Blonder-Tongue permitted the use of defensive collateral estoppel when the accused infringer shows (1) that a patent was found invalid in a prior case that had proceed through final judgment and in which all procedural opportunities were available to the patentee; (2) that the issues litigated were identical; and (3) that the party against whom estoppel is applied had a full and fair opportunity to litigate. The Federal Circuit noted that on occasion the Seventh Circuit had treated a finding in a preliminary injunction hearing as a final judgment, but concluded that the preliminary injunction proceedings against Teva and Ranbaxy were not “full litigation and decision on the merits for purposes of issue preclusion.”
The Federal Circuit also construed the term “pharmaceutically acceptable polymer” which was described in the specification: “The pharmaceutically acceptable polymer is a water-soluble hydrophilic polymer selected from the group consisting of . . .”. The Federal Circuit rejected the application of Ex Parte Markush to the interpretation of the written description, and relieved the patentee from its unfortunate choice of words, finding that this did not amount to an express definition, nor was it necessarily limiting on the scope of pharmaceutically acceptable polymer.
Andrx argued that the district court’s finding of infringement under the Doctrine of Equivalents violated the specific exclusion principle, and in any event vitiated the missing claim element. The Federal Circuit rejected the arguments based on the specific exclusion principle because under the broader construction reached by the Federal Circuit, the accused equivalent was no longer “specifically excluded.” Regarding vitiation, the Federal Circuit reminded that “[a] claim element is not vitiated merely because it does not literally exist in the accused product – “such an interpretation of the ‘all elements’ rule would swallow the doctrine of equivalents entirely.” In the end the Federal Circuit could not fine error in the District Court’s determination that Abbot was likely to prevail.

Corresponding Structure Varies with Function in Means Plus Function Claims

DESA IP, LLC v. EML Technologies, LLC, [06-1168](January 4, 2007)[MICHEL, Plager and Rader]
BRIEF: DESA appeals from a stipulated judgment of non-infringement, and the Federal Circuit reversed and remanded because of errors in claim construction. The Federal Circuit agrees that “sensor means” and “control circuit means” were means plus function claims under 35 U.S.C. §112, but rejected the district courts determination of the corresponding structure. The Federal Circuit found that the specification specifically identified the sensors, and indicates that the additional structure included by the district court was part of the detector circuit, not the sensor. The Federal Circuit rejected appellee’s argument that control circuit means had to include a pulse counting feature because the patentee distinguished certain prior art because of this feature. Instead, the Federal Circuit said that the corresponding structure varied from claim to claim with the recited function. Finally the Federal Circuit corrected the district court’s interpretation of “switching means” which include structure for actuating the switching means. Thus the Federal Circuit remanded for proceedings consistent with the corrected claim construction.

The Grant of a Right to Sue, Doesn't Mean You Can Sue

Propat International Corp. v. Rpost, Inc., [2006-1222, -1223, -1270] (January 4, 2007)[BRYSON, Newman, Mayer]
BRIEF: Propat appealed the dismissal of its patent infringement suit for lack of standing. The Federal Circuit said that the governing principes of standing in patent cases are now “reasonably clear.” The Patent Act provides that a patent is entitled to bring a civil action for patent infringement, and the term patentee includes not only the patentee to who the patent was issued but also the successors in title to the patentee. The provisions of the patent action have been interpreted to require that a suit for infringement of patent rights ordinarily be brought by a party holding legal title to the patent. Even if the patentee does not transfer formal legal title, the patentee may effect a transfer of ownership for standing purposes if it conveys all substantial rights in the patent to the transferee. The Federal Circuit said whether Propat has standing turns on the agreement between Propat and Authentix. The district court found that Propat “was not transferred all substantial rights, and as such, has not standing to sue on its own behalf” and the Federal Circuit agreed. Among other things, Authentix retained a right to approve certain actions by Propat, the right to pursue additional patents, a veto right over licensing and enforcement, a right to terminate the agreement, and the duty to maintain the patent. The Federal Circuit said “a ‘right to sue’ clause in a contract, unaccompanied by the transfer of other incidents of ownership does not constitute an assignment of the patent rights that entitle the transferee to sue in its own name.
Propat also argued that the district court should have granted its motion to add Authentix, rather than dismissing the action, but the district reasoned that Propat had no right to participate in the infringement action, and that dismissal was proper. The Federal Circuit found that the case fell between the situation of an exclusive licensee, which does have standing, and a mere licensee, who does not, but found that Propat was closer to the mere licensee, and agreed with the district court that Propat.
The Federal Circuit affirmed the denial of attorneys’ fees, finding that failure to join the patent owner was not so reckless as to warrant sanctioning, and that the conduct of both sides “fell far short of a model of prosecution and defense of a patent action.”