Unnecesary Arguments Still Can Create an Estoppel

Pods, Inc. v, Porta Stor, Inc., [06-1504](April 27, 2007)[DYK, Lourie, O'Malley] The Federal Circuit reversed judgment of infringement of U.S. Patent No. 6,071,062 because of an error in claim construction, and prosecution history estoppel, which precluded infringement under the doctrine of equivalents.
SIGNIFICANCE: Claim terms have the same meaning throughout the claims, and even unnecessary arguments to distinguish the claims create an estoppel.
BRIEF: The claims at issued required positioning a carrier frame around a container, which the Trial Court interpreted to mean that "carrier frame" was not limited to a four-sided, rectangular shaped frame, and that "around" meant on all four sides or on less than all four sides, and granted JMOL of infringement. The Federal Circuit began its construction of claim 29 "with the words of the claims themselves." The Federal Circuit was not limited to the claim at issue, because other claims of the patent in question, both asserted and unasserted, are valuable sources of enlightenment as to the meaning of a claim term." Noting that its was agreed tha th term "carrier frame" in claim 1 meant a four-sided or rectangular frame, the Federal Circuit relied upon the presumption that the same terms appearin in different portions of the claims should be given the same meaning unless it is clear from the specification and prosecution history that the terms have different meanings at different portions of the claims. Based upon this construction the Federal Circuit found no literal infringement. Turning the infringement under the doctrine of equivalents, the Federal Circuit noted that when a patent applicant sets forth multiple bases to distinguish between its invention and the prior art, the separate arguments can create separate estoppels as long as the prior art was not distinguished based on the combination of these various grounds. However to invoke argument-based estoppel the prosecution history must evince a clear and unmistakable surrender of the subject matter. Examinng the prosecution history, the Federal Circuit found that each argument made by the patentee created a separate estoppel. The patentee argued that the arguments were not necessary to distinguish the prior art, but the Federal Circuit said that clear assertions made during prosecution in support of patentability, whether or not actually requied to secure allowance of the claim, amy also create an estoppel. In response to the argument that claim 32 was added after the limiting arguments, the Federal Circuit noted that one an argument is made regarding a claim term so as to create an estoppel, the estoppel will apply to that term in other claims.
CANONS: Claim terms are presumed to have the same meaning through the claims.
COMMENT: The Federal Circuit overlooked the fact that other language in claim 1, not present in claim 29, was responsible for the narrow meaning of the term in claim 1. Thus the rule that claims terms have the same meaning does not require that claim 29 be limited to a four sided or rectangular frame.

Inherent Anticipation

In re Omeprazole Patent Litigation, [04-1562, -1563, 1589](April 23, 2007)[RADER, Newman, Bryson] The Federal Circuit affirmed finding that claims of U.S> patent No. 6,013,281 were invalid for anticipation or obviousness.
SIGNIFICANCE: Inherent anticipation by prior art can occur even if those of ordinary skill in the art are unaware of the properties.
BRIEF: The Federal Circuit rejected the patentee's attempt to limit the claims to a temperature range disclosed in the specification, but not set forth in the claims. As to limitation of in situ formation of a barrier, the Federal Circuit recognized that a prior art reference without express reference to a claim limitation may nonetheless anticipate by inherency. Further, inherency is not coterminous with knowledge of those of ordinary skill int eh art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art. The recognition of an inherent attribute does not render the prior art patentable. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's function, does not render the old composition patentably new to the discoverer. Judge Newman dissented, complaining about a new principle of inherency.

Claim Differentiaion Prevents Importantion of Limitation in the Claim

Intamin Ltd. v. Magnetar Technologies, Corp., [05-1546, -1579](April 18, 2007)[RADER, Plager, Prost] The Federal Circuit vacated a finding of no infringement, and remanded the trial court's claim construction of U.S. Patent No. 6,062,350 on a braking system for amusement park rides, and affirmed the decision to vacate Rule 11 sanctions for frivolous filing of the Complaint for patent infringement.
BRIEF: At issue was whether Intamin's accused structure had intermediaries between adjacent pairs of magnets. Intamin's structure had magnets turned at 90 degrees in between the pairs of magnets, and argued that the intermediaries could not themselves be magnets.
The Federal Circuit said that to construe the claims, the court consults primarily the claims themselves in context, with much of that context supplied by the specification and the prosecution history. The Federal Circuit found that the claim does not require non-magnetic intermediaries. The Court noted that in context, a dependent claim specified that the intermediary was non magnetic. The Federal Circuit said that this shows both that the claim drafter perceived the difference between magnetic and non-magnetic and that claim 1 implied embraced non-magnetic intermediaries. Even without claim differentiation (which was not raised until a request for reconsideration) the Federal Circuit found the overall context showed that the claim was not limited to non-magnetic intermediaries. The Federal Circuit pointed to parts of the description where the patentee discussed a non-magnetic intermediary, and found that this did not limit the broader claim language, because the overall context of the patent does not specifically disavow magnetic intermediaries. In construing "length" Intamin argued that an interpretation would not cover some of the preferred embodiments. However, the Federal Circuit said that a claim need not cover all embodiments. The Federal Circuit also rejected Intamin's argument that the claim construction was wrong because it rendered dependent claim 10 invalid, but the Federal Circuit has no problem concluding that Claim 10 was an improper dependent claim.
CANONS: Claim differentiation shows that drafter specifically contemplated the difference, and the broader claim was not limited to the same scope as the dependent claim.

For Better or Worse, Lawyers Are Integral to Information Exchange About Legal Services

In Re Reed Elsevier Properties Inc., [06-1309](April 12, 2007)[MAYER, Schall, Bryson] The Federal Circuit affirmed the TTAB's decision denying Reed Elsevier registration of the mark LAWYERS.COM, because the term was generic.
BRIEF: The PTO may not register marks that are merely descriptive and incapable of designating source. LOF: Whether a mark is generic is a question of fact. The Federal Circuit noted that the PTO has the burden of proving genericness, and can do so with any competent source including purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers, and other publications. The Federal Circuit found it abundantly clear that LAWYERS.com is generic for the services in Reed Elsevier's application. The Federal Circuit rejected the argument that the term was not generic of the narrowed description of services, which was still law related, finding for better or worse, "lawyers are necessarily an integral part of the information exchange about legal services."

A Sound Claim Construction Does Always Purge All Ambiguity

Acumed LLC v. Stryker Corp., [06-1260, -1437](April 12, 2007)[GAJARSA, Linn, Moore] The Federal Circuit affirmed findings of infringement of U.S. Patent No. 5,472,444 on an orthopedic nail, and willfulness, but vacated the permanent injunction, and remanded for reconsideration in view of the Supreme Court's decision in eBay v. MercExchange.
SIGNIFICANCE: Some times claim construction is easy. Claim construction does not have to purge all ambiguity. Injunctions in patent cases are not automatic.
BRIEF: On claim construction the Federal Circuit started with the language of the claims, and noted that "The task of comprehending those words is not always a difficult one." In some cases the ordinary meaning of claim language as understood by a person of skill in the art may be readily apparent even to lay judges and claim construction in such cases involves little more than the application of widely accepted meaning of commonly understood words. The Federal Circuit found that "curved" was readily understood, and rejected a more technical meaning based on the specification as an attempt to read in limitations from the preferred embodiment. Claim differentiation also supported the broader construction, particularly where, as here, the only difference in the claim was the narrow limitation Stryker tried to import. Stryker also criticized the claim construction as indefinite, to which the Federal Circuit responded "a sound claim construction need not always purge every shred of ambiguity." The Federal Circuit also rejected Stryker's attempt to limit "transverse holes" to perpendicular holes as importing limitations from the specification. Regarding willfulness, the Federal Circuit agreed that proceeding forward with the FDA after concerns by patent counsel and before a opinion of non-infringement suggested willfulness. The Federal Circuit found that the district court applied the general rule in patent cases that in patent cases an injunction should issue absent exceptional circumstances, and thus vacated the injunction and remanded for reconsideration in view of eBay v. MercExchange.

Contempt Requires Infringement

Bass Pro Trademarks, LLC v. Cabela's, Inc., [06-1276](April 6, 2007)[NEWMAN, Clevenger, Dyk] The Federal Circuit vacated a contempt order and accompanying sanctions because Cabela's redesigned device could not reasonably be found to infringe Bass Pro's U.S. Patent No. 5,620,227 on a combination vest and folding seat.
BRIEF: In settling a prior infringement action the parties entered into a settlement agreement and consent judgement. Two years later Cabela's began selling a folding seat held by backpack-type straps. Bass Pro moved for contempt of the Consent Judgment. The Federal Circuit said that contempt requires infringement. Bass Pro argued that the term "vest" was a term in the preamble, and not a claim limitation, while Cabela's pointed out that the term "vest" was not merely a term in the preamble, and was added during prosecution. The Federal Circuit said that claims are construed to implement the invention described in the specification and prosecution history, within the confines of the prior art. The Federal Circuit that vest was a material limitation to the claim, and the claim cannot be found to be infringed.

A System with Tricks and Traps?

Korsinsky v. Dudas, [07-1029](April 5, 2007][PER CURIAM, Shall, Archer, Gajarsa] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment against Korinsky in his suit against the Patent Office to have his patent reinstated after failing to timely pay maintenance fees.
BRIEF: Korinsky failed to pay the first maintenance fee on his patent due in April 1992. In April 2004, Korinsky filed a petition to have the patent reinstated, which was denied because it failed to show that the delay was unavoidable, and because if failed to include payment of the second and third maintenance fees which had also become due. Korinsky filed his request for reconsideration late, and attributed the delay to the fact that all of his assets were under joint control with his wife who had refused to permit him to pay the fees. The Patent Office denied his request for reconsideration, so Korinsky sued the Patent Office, the District Court granted summary judgment that his petition to reinstate. On appeal, Korinsky argued that the Patent and Trademark Office had designed a system with trick and traps that duped him into disclosing his invention and paying substantial sums only to have his invention confiscated, and that the patent system fails to promote the progress of science and the useful arts as required by Article 1, Section 8, Clause 8. The Federal Circuit found that the Patent Office procedures do not conflict with the Constitution, and found no error in the Commissioner's decision.

Satisfaction of Judgement to Patentee Bars Claim by Licensee

Immersion Corp. v. Sony Computer Entertainment America, Inc., [05-1358](April 4, 2007)[PROST, Newman, Archer] The Federal Circuit affirmed dismissal of patent infringement claims by a third party defendant for lack of standing.
BRIEF: Immersion sued Sony for infringement of U.S. Patent Nos. 6,275,213 and 6,424,333. Before trial ISLLC wrote to Sony claiming to be an exclusive licensee under those patents and therefore alleging rights in the litigation. The Federal Circuit ducked the issue of whether ISLLC had standing because Sony had satisfied the judgment in favor or Immersion, concluding that ISLLC cannot recover from Sony based on the same alleged acts of infringement.

Certificate of Correction is Not A Cure All

Central Admixture Pharmacy Services, Inc. v. Advanced Cardiac Solutions, P.C., [06-1307](April 3,. 2007)[GAJARSA. Schall, and Prost] The Federal Circuit vacated a finding of wilful infringement because a certificate of correction amending the claim language was invalid.
BRIEF: Central obtained a certificate of correction changing the word "osmolarity" to "osmolality". Based upon the amended claims, summary judgment of willful infringement was entered against Advanced Cardiac. Advanced Cardiac challenged the validity of the certificate of correction because it broadened the claims. Invalidating a certificate of correction for impermissible broadening requires proof of two elements: (1) the corrected claims are broader than the original claims, and (2) the existence of an error, or how to correct the error, is evident to a person of ordinary skill in the art. LOF: Whether a claim has been broaden by a certificate of correction is a question of law. Because the corrected claims covered solutions not covered by the original claims, the Federal Circuit held that the claims had been broadened. The Federal Circuit also found that the error was not evident to a person of ordinary skill in the art. The Federal Circuit noted that all solutions have a measurable osmolarity, and the concentration specified in the the claims was not manifestly erroneous. The Federal Circuit was not impressed with the argument that osmolarity was not the most conventional or convenient, quipping: "Claims mean precisely what they say." Because the construction of the claims changed, the judgment of willful infringement was vacated.
The Federal Circuit went on to comment about claim construction, even though the words of the claims had changed as a result of its ruling. The Federal Circuit commented that construction is "basically the same" except for the substitution of units. The Federal Circuit placed weight on the presence of the term "about", finding that the word about extends the ranges to values that the intrinsic evidence showed were effective.