Product Claims Can Be Limited to the Process by Which the Product is Made

AFG Industries, Inc. v. Cardinal IG Company, Inc., [05-1601](March 30, 2007)[NEWMAN, Mayer, Radar] NON-PRECEDENTIAL The Federal Circuit reversed in part a determination of infringement of U.S. Patent No. 4,859,532, and remanded for recalculation of damages.
BRIEF: In order to sustain the validity of the patent, AFG had narrowed the claims to products with a zinc oxide core produced in a single sputter deposition. The Federal Circuit noted that the process by which a product is produced can limit a product claim when, as here, the process is relied on for patentability and validity. Thus the Federal Circuit reversed the finding of infringement of Cardinal Products that were not made with the single sputter deposition process, and remanded for recalculation of damages.

All Circumstances Rule of Medimmune Gives ANDA Applicant Standing

Teva Pharmaceuticals v. Novaritis Pharmaceuticals Corp., [06-1181](March 30, 2007)[GAJARSA, Mayer, Friedman] The Federal Circuit reversed the trial court's determination that Teva failed to establish reasonable apprehension of suit, in view of the Supreme Court's decision in Medimmune.
BRIEF: Teva brought filed an ANDA with the FDA relating to tmake a generic version of Novaritis' Famvir drug. Novaritis sued Teva on one of the five patents covering Famvir, so Teva brought a declaratory judgment action on the remaining four patents. The district court dismissed the declaratory judgment action, but the Federal Circuit reversed. LOF: The determination of whether an actual controversy exists under the Declaratory Judgment Act in a patent case is a question of law" that is review de novo. The Federal Circuit said that the most determinative requirement for standing is injury-in-fact. The injury must be person, concrete and particularized, and actual or imminent. The Federal Circuit said that its two part test was overruled by Medimmune, and instead applied the Supreme Court's "all circumstances" test, and concluded under the all circumstances test, Teva did show an injury-in-fact.Article III standing requires a plaintiff to allege personal injury fairly traceable to the defendant's allegedly unlawful

Patent Term Extension Under Hatch-Waxman Applies to Patents with Terminal Disclaimers

Merck & Co., Inc. v. Hi-Tech Pharmacal Co., Inc., [06-1401](March 29,. 2007)[LINN, Friedman, Plager] The Federal Circuit held that patent term extension under Hatch-Waxman (35 USC 156) may be applied to a patent subject to a terminal disclaimer under 35 USC 253.
BRIEF: Merck sued Hi-Tech for infringement of U.S. Patent No. 4,797,413 on TRUSOPT, a glaucoma medication. Hi-Tech moved to dismiss, conceding that its products were covered by the patent, but alleging that the patent had expired, because the Hatch-Waxman term extension does not apply to patents subject to a terminal disclaimer. Noting, among other things, the imperative language of Hatch-Waxman (the patent term shall be extended), the Court found that statute unambiguous, and that the legislative history was consistent with the interpretation under the plain meaning of the statute.

Jurisdication Must be Conferred by Acts Prior to Filing (and After Dismissal of the Prior Action)

Citizen Electronics Company, Ltd. v. Osram GmbH, [06-1211](March 29, 2007)[MICHEL, Lourie, Bryson] NON-PRECEDENTIAL The Federal Circuit affirmed the dismissal of the declaratory judgment action brought by Citizen Electronics, on grounds of lack of subject matter jurisdiction.
BRIEF: Citizens brought a declaratory judgment action that its white LEDs do not infringe Osram's U.S. Patent Nos. 6,066,861, 6,245,259, 6,277,301, 6,576,930, 6,529,7870, 6,613,247 and 6,812,500. Subsequently Osram sued Citizens in Germany on corresponding patents. The trial court dismissed the declaratory judgment action for lack of standing, finding the German litigation irrelevant because it occurred after the filing of the declaratory judgment action. After this dismissal, Citizens brought a second declaratory judgment action, alleging new facts. The trial court dismissed the second action on grounds of res judicata, noting that the European Action was already considered in the prior action and found to be irrelevant. Because there was nothing subsequent to the first dismissal that conferred jurisdiction, the Federal Circuit affirmed the dismissal.

Post MedImmune: Assertion of Rights Against Ongoing or Planned Activity Confers Jurisdiction

SanDisk Corp. v. STMicroelectronics, Inc., [05-1300](March 26, 2007)[LINN, Bryson, Dyk] The Federal Circuit vacated and remanded the dismissal of SanDisk's declaratory judgment claims for lack of subject matter jurisdiction.
SIGNIFICANCE: Any assertion of rights against on-going or planned activity is sufficient to confer declaratory judgement subject matter jurisdiction.
BRIEF: After extensive exchanges and meetings between the parties, including ST's provision of a detailed infringement analysis of 14 of its patents, SanDisk sued ST for patent infringement and declaratory judgment of non-infringement of 14 of ST's patents. The district court found under the totality of the circumstances did not evince an actual controversy because ST had told SanDisk that it did not intend to sue SanDisk for infringement, and dismissed SanDisk's declaratory judgment actions. Stating that the Supreme Court's decision in MedImmune rejected the reasonable apprehension of suit test. While noting that in conduct prior to the existing of a license, declaratory judgment jurisdiction generally will not arise merely on the basis that a party learns of the existence of a patent owned by another, or even perceives such a patent to pose a risk of infringement without some affirmative act by the patentee. The Federal Circuit said, howeve,r that Article III jurisdiction may be met where the patentee takes a position that puts the declaratory judgment plaintiff in the position of either pursuing arguably illegal behavior, or abandoning that which he claims a right to do. The Federal Circuit declined the opportunity to define the outer boundaries of declaratory judgment jurisdiction, but held that "where a patentee asserts rights under a patent based upon certain identified ongoing or planned activity of another party, and where that party contents that it has a right t engage in the accused activity without a license, and Article III case and controversy will arise and the party need not risk a suit for infringement by engaging in the identified activity before seeking a declaration of its legal rights." The Federal Circuit held that SanDisk did establish sufficient Article III jurisdiction.

Be Careful When You Release An Infringer and Intend to Pursue Others

RFR Industries, Inc. v. Rex-Hide Industries, Inc., [05-1587](March 23, 2007)[PROST, Michel, Schall] NON-PRECEDENTIAL The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded the trial court decision.
BRIEF: The patentee settled a patent infringement suit against Century, a user of flangeway filler, expressly reserving the right to pursue the user's supplier. The Federal Circuit considered whether the released user had a duty to indemnify its supplier. The Federal Circuit found no error in the determination that the user did have to indemnify its supplier. The Federal Circuit also rejected the argument that the indemnity did not cover parts that were supplied, but only the entire system, but the Federal Circuit observed that parts don't infringe a patent by themselves. Finding that the released user had to indemnify the supplier, the Federal Circuit agreed that the patentee could not recover against the released user's suppliers.

No Single Case Lays Out All Facets of the Legal Test of Obviousness

Pfizer, Inc. v. Apotex, Inc., [06-1261](March 22, 2007)[MICHEL, Mayer, Linn] The Federal Circuit reversed the trial court's holding that Pfizer's U.S. Patent No. 4,879,303 on the hypertension drug Norvasc was valid.
BRIEF: In considering the obviousness the Federal Circuit noted that teaching, suggestion, or motivation "may be found in any number of source, including common knowledge, the prior art as a whole, or the nature of the problem itself." The Federal Circuit found motiviation from the prior art as a whole, bu also form the nature of the problem encoutered. The Federal Circuit was also persuaded by expert testimony supports the inference that one of skill in the art would have been encouraged, rather than discouraged, to make the claimed invention. Rather than an unlimited number of possible salts, the Federal Circuit found the choices limited to a limited number of pharmaceutically acceptable salts. The Federal Circuit found that the desirable property of besylate salts make their use obvious, despite the lack of similar besylate salt compounds. The Federal Circuit held found that unpredictability did not avoid obviousness, so long as there was a reasonable probability of success. Only a reasonable expectation of success, not a guarantee, is needed. The Federal Circuit said that to hva a reasonable expectation of success, one must be motivated to do more than merely vary all parameteres or try each of numerous possible choices until one possibly arrived at a successful result, where the prior art gve either no indication of which parameters were critical or no direction as to which of many possible choices is likely to be successful. The Federal CIrcuit tried to reconcile the truism is not "obvious to try", with the fact that absolute predictability is not required, by explaining that each case must be decided on its own facts. Quoting from Dystar the Federal Circuit said: "Obviousness is a complicated subject requiring sophisticated analysis, and no single case lays out all facets of the legal test." The Federal Circuit found that because of the limited number of parameters, a reasonable expectation of success, numerous references suggesting the particular salt, that a besylate salt was obvious from the maleate salt. The art did more that teach a general approach that seemed to be promising. Finally on the particular facts of the case, that the "invention" was the product of routine experimentation to verify properties (as opposed to identify new compounds) also suggested obviousness.

Be Careful What You Ask For in Claim Construction

Liebel-FLarsheim Co. v. Medrad, Inc., [06-1156, -1157](March 22, 2007)[LOURIE, Rader, Bryson] The Federal Circuit affirmed the trial courts holding of invalidity for lack of enablement.
SIGNIFICANCE: Although you only have to claim the invention, if you do not enable embodiments missing conventional elements, your failure to include conventional elements will invalidate your patent. Be careful when asking for a broad claim construction.
BRIEF: The claims in the patent did not specifically include a pressure jacket. Because the specification did not describe a jacketless embodiment the district court concluded that the patent lacked an adequate written description, and was invalid. NOTE: This was based in part on the inventor's testimony of the importance of the jacket. The Federal Circuit said that the enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation. The Federal Circuit then turned to the specification, noting that nowhere did the specification disclose a device without a pressure jacket. Furthermore, the Federal Circuit said that the specification taught away form devices without pressure jacket, because it noted that jacketless devices were too expensive to be practical. The Federal Circuit also noted that the testimonial evidence established that undue experimentation was needed to create a jacketless embodiment. The Federal Circuit rejected the patentee's argument that as long as the specification enabled one mode of making and using the invention, the enablement requirement was satisfied. The Federal Circuit found that the specification simply did not enable the invention to be practiced as broadly as it has been claimed, including without a pressure jacket. While the specification need not describe how to make and use every embodiment of the invention, because the artisan's knowledge and routine experimentation can fill in the gaps, if it does not enable the scope of the claimed invention without undue experimentation, it is invalid. The Federal Circuit pointed out the irony that Liebel was successful in construing its claims to cover jacketless systems, and then could not meet its burden to show that such broad claims were enabled, observing "The motto, 'beware of what one asks for,' might be applicable here.
To add insult to injury, the Federal Circuit went on to find that the patent was anticipated by prior art considered by the examiner during prosecution. Again the Federal Circuit noted the Pyrrhic victory of obtaining a broad construction of the claims, which allows the prior art anticipate the claims.
COMMENT: The statute says that the inventor only has to claim the invention. The inventor should not have to burden the claims and limit the scope with the recitation of conventional elements, but it appears that if the inventor omits a such an element from the claims, but does not enable the invention with the conventional element, the claims are invalid. So much for the statute.

Ready For Patenting Is A Question for Trial

Polypro, Inc. v. Addison, [06-1497](March 13, 2007)[LINN, Gajarsa, Moore] NON-PRECEDENTIAL The Federal Circuit reversed and remanded summary judgment of invalidity under the on-sale bar, because the question of whether the invention was "ready for patenting" depended upon disputed issues of material fact.
BRIEF: Ultra-Flex offered to sell plastic display bags before the critical date. Although the inventive display bags were conceived before the critical date, there were not shipped until after the critical date. An invention can be shown to be ready for patenting by proof of reduction to practice before the critical date, or proof that prior to the critical date the inventor had prepared drawings and other descriptions of the invention sufficient to enable a person skilled in the art to practice the invention. The Federal Circuit held that there was no proof that that the information available before the critical date was sufficient to enable a person of ordinary skill to practice the invention.

Conscious Choices Are Not Errors Correctable by Reissue

In re Serenkin, [06-1242](March 6, 2007)[LOURIE, Schall, Gajarsa] The Federal Circuit afrimed the Board's decision that reissue cannot correct a deliberate choice. Serenkin filed a PCT application claiming priority to a provisional application, but omitting the drawings. Serenkin chose to relinquish the claim priority, and accepted the date the drawings were finally submited as the international filing date. A U.S. patent eventually issued from the PCT application, and Serenkin tried to reissue it to claim the original provisional filing date, instead of the later PCT filing date. The Federal Circuit said that our case law holds that the deliberate action of an inventor or attorney during prosecution generally fails to qualify a a correctable error under Section 251.