District Court Properly Followed Mandate from Prior Appeal

Designing Health, Inc. v. Erasmus, [06-1244](February 26, 2007)[SCHALL, Michel, Rader] NON-PRECEDENTIAL The Federal Circuit affirmed the trial court's execution of the mandate from the previous appeal.
BRIEF: On the previous appeal the Federal Circuit reversed the denial of JMOL on the grant that the record evidence was insufficient as a matter of law to support the jury's fraud and breach of fiduciary duty damage awards. On remand, the trial court granted Erasmus' renewed motion for JMOL, and denied Designing Health's motion for a new trial on damages. The Federal Circuit found that the trial court complied with the mandate.

Disclaimer in the Parent Application Affect Different Words in Continuation Applications Without Sufficiently Clear Warning to Examiner

Hakim v. Cannon Avent Group, PLC, [05-1398](February 23, 2007)[NEWMAN, Michel, Rader] The Federal Circuit affirmed summary judgment that U.S. Patent No. 6,321,931 is not infringed, and that U.S. Patent No. 6,357,620 is invalid.
SIGNIFICANCE: Different words in the same family of patents may have the same meaning, without a clear indication that different scope is intended. When pursuing broader claims after prosecuting a parent application, the applicant must provide a signal to the Patent Office when attempting to avoid affects of prosecution disclaimer.
BRIEF: After receiving a notice of allowance on a patent application on a no-spill drinking cup having a membrane with a slit, Hakim filed a continuation application using the term "opening" instead of "slit". This amendment was accompanied by a letter explaining that Hakim was broadening the claims. In construing the claims in the continuation patent, the district court held Hakim to his arguments in the parent application that the invention includes the presence of a slit in the flexible material because Hakim did not retract any of the arguments he made distinguishing the prior art in the abandoned parent application. While acknowledging that Hakim had the right to pursue broader claims in a continuation application, when rescinding a disclaimer made during prosecution, "the prosecution history must be sufficiently clear to inform the examiner that the previous disclaimer, and the prior art it was made to avoid, may need to be revisited." The Federal Circuit cited the public notice function of patent and its prosecution history requires that a patentee be held to what he declares during the prosecution of his patent. The trial court held that the '620 patent was invalid for anticipation. On appeal Hakim argued that it was improper to hold a claim invalid without first construing it. The Federal Circuit said that construction is not always necessary, where there is not dispute as to the meaning of a term that could affect the disputed issues of the litigation.

The Specification Relating to the Claimed Embodiment Defines Coined Terms

Mymail, Ltd. v. America Online, Inc., [06-1147, -1172](February 20, 2007)[BRYSON, Newman, Schall] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 6,571,290.
BRIEF: The Federal Circuit had to construe the term "NSP" which the parties agreed was a coined term. The issue was whether the NSP or the ASP performed authentication The Federal Circuit turned to the specification, which described "the process of the present invention", and concluded that the NSP had to perform the authentication function. Mymail argued that the specification disclosed embodiments where the ASP performed the authentication, but the Federal Circuit observed that these embodiments were part of an unclaimed invention. The Federal Circuit also found that Mymail had agreed before the trial court that the NSP had to perform the authentication, and cannot chainge its construction merely because it resulted in an adverse summary judgment. Mymail the argued that the NSP did perform the authentication, but the Federal Circuit found that based on the defintion of authentication the ASP, not the NSP performed the authentication.

Court Rejects Attempts to Add Limitations Regarding How the Claimed Device is Made

Colassi v. Cybex International, Inc., [2006-1231](February 14, 2007) NON-PRECEDENTIAL The Federal Circuit affirmed the district court's claim construction, order precluding Cybex from arguing the reverse doctrine of equivalaents, and denial of Cybex's motion for judgement as a matter of law on Colassi's claim for infringement of U.S. Patent No. 6,123,646 on a Treadmill Belt Support Deck.
BRIEF: The Federal Circuit rejected Cybex's claim construction required that the planar member, anchor means and hinge be "structurally separate" because the preferred embodiment disclosed three separate parts permanently joined together. The Federal Circuit found no basis to introduce a limitation on how the device was constructed into the claim. The Federal Circuit also rejected Cybex's position that the hinge had to absorb "horizontal shock" based on a statement that the hinge was "preferably" located in a position where it could absorb horizontal shock. The Federal Circuit rejected Cybex's arguments about the means plus function language because the basis for their complaint was unclear and apparently not preserved. Finally, the Federal Circuit found no basis in the record for determining that the Doctrine of Reverse Equivalents applied, so it could find no error in the district court's refusal to allow Cybex to argue reverse equivalents.

Comprising is Not a Weasel Word that Abrogates Claim Limitations

Dippin' Dots, Inc. v. Mosey, [05-1330, -1582](February 9, 2007) [GAJARSA, Mayer, Rader] The Federal Circtui affirmed judgments of non-infringement, invalidity for obviousness, and unenforceability, of U.S. Patent No. 5,126,156, but reversed judgement of violation of the antitrust laws.
BRIEF: Dippin' Dots first challenged the construction of the term "beads" as requiring a smooth, spherical appearance, and excluded the accused process which produced a mixture of smooth and irregular particles. The Federal Circuit found no error in claim construction, noting that the specification specifically describes beads as having a "smooth, spherical appearance". Dippin' Dots argued that the claim transition "comprising" left the the claim open. The Federal Circuit rejected this argument, noting "comprising is not a weasel words with which to abrogate claim limitations". While comprising opens the claim to additional steps, each of the recited steps must be performed. The word comprising does not reach into each of the recited steps and render every word or phrase therein open ended. Regarding obviousness, the Federal Circuit found substantial evidence to support the conclusion of non-obviousness. The patentee's sale of a precursor product was primarily for market testing, and thus did not qualify as an experimental use. Furthermore the Federal Circuit held that evidence of commercial success had to be attributable to the features of the invention not avaialable in the prior art: "The assertion of commercial success of the product must bed due to the merits of the claimed invention beyond what was readily available."

Specification Must Support Claim Scope

Medtronic Navigation, Inc. v. Brainlaw Medizinische Computersysteme GmbH, [06-1289](February 5, 2007)[LOURIE, Newman, and Bryson] NON-PRECEDENTIAL The Federal Circuit affirmed the district court’s judgment as a matter of law of non-infringement.
SIGNIFICANCE: Brief, non-enabling reference is not sufficient to expand claim scope
BRIEF: The Federal Circuit agreed with the district court that the claims to “reference means” did not extend to optical sensors because there was no reference to optical sensors in the specification except one brief, non enabling statement, which the Federal Circuit concluded was an attempt to preempt the future before it has arrived. The Federal Circuit further agreed that Medtronic was estopped from pursuing infringement under the Doctrine of Equivalents. As to remaining patents in suit, the Federal Circuit found an absence of evidence of Equivalents, and affirmed the judgment as a matter of law.

This is Not the Place (to Litigate Foreign Patent Infringement)

Voda v. Cordis Corporation, [05-1238](February 1, 2007)[GAJARSA, Newman, Prost] The Federal Circuit vacated and remanded the district court’s exercise of supplemental jurisdiction pursuant to 28 U.S.C. §1367 to hear foreign patent infringement claims.
SIGNIFICANCE: The U.S. in not the place to litigate foreign patent claims
BRIEF: LOF: Jurisdiction is a question of law that the Federal Circuit review de novo. Jurisdiction depends upon (1) whether 1367 authorizes supplement jurisdiction, and (2) whether such exercise is within the court’s discretion. The Federal Circuit found that supplemental jurisdiction appears to include foreign law claims, which raised the question of whether there was a common nucleus of fact. After a brief and inconclusive discussion, the Federal Circuit ducked the question, chosing instead to rely upon its finding that the district court abused its discretion under 1367(c). The Federal Circuit found that considerations of comity, judicial economy, convenience, fairness, and other exceptional circumstances constitute compelling reasons to decline jurisdiction under 1367(c). Among other things, the Federal Circuit considered the Paris Convention, which although not expressly stripping jurisdiction, mandates that patents of each country are independent. Likewise, the Federal Circuit noted, the PCT and WTO also maintain the independence of each countries patents. The Federal Circuit concluded that exercise of supplemental jurisdiction could undermine the U.S.’s obligations under these treaties. The Federal Circuit also concluded that comity considerations do not support the exercise of jurisdiction. Analogizing patent infringement to trespass, the Federal Circuit found that the territorial limits of the rights conferred by patents made it incongruous that the sovereign patent of one could be infringed or limited by another’s extension of jurisdiction. Finding that the spirit of cooperation could be undermined, and that considerations of comity were hindered, the Federal Circuit decided that “infringement claims should be left to the sovereigns that create the property rights in the first instance.” The Federal Circuit found a number of factors that compelled declining supplemental jurisdiction, and an absence of any analysis of those factors by the district court, accepting supplemental jurisdiction was an abuse of discretion.