Order of Steps Generally Not Critical

Frazier v. Layne Christensen Co., [06-1584](June 29, 2007)[BRYSON, Schall, Linn] NON-PRECEDENTIAL The Federal Circuit affirmed JMOL that U.S. Patent No. 5,579,845 was invalid for obviousness.
BRIEF: The Federal Circuit rejected the patentee's attack on JMOL because it failed to identify the specific prior art, finding that the district court did identify specific prior art. While the patentee argued that the prior art did not show adjustment of a waveform generator while the generator was in a well bore, the Federal Circuit found that the claims did not specifically claim this, rather the patentee was relying on the order of steps, which the Federal Circuit said was not critical: "Ordinarily, the order of the steps of a method claim need not be performed in the order in which they are recited."

Evidence Showed that Claimed Compound was Not Obvious To Try

Takeda Chemical Industries, Ltd. v. Alphapharm Pty., Ltd., [06-1329] (June 28, 2007) [LOURIE, Bryson, Dyk] The Federal Circuit affirmed the district court's determination that the claims of U.S. Patent No. 4,687,777 were not invalid for obviousness.
BRIEF: A prima facie case of obviousness of a chemical compound is made by showing a similarity in structure and that the prior art would have suggested making the specific molecular modifications necessary to achieve the claimed invention. The Federal Circuit said that in cases involving new chemical compounds, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound. The Federal Circuit agreed with the district court that the starting compound proposed by Alphapharm would not have been selected by one of ordinary skill in the art, because a person of ordinary skill in the art would avoid the known undesirable side effects. The Federal Circuit said that this case fails to present the type of situation contemplated by the Supreme Court in KSR when its stated that an invention may be deemed obvious if its was "obvious to try" because the evidence showed that it was not obvious to try. Even if the starting compound was obvious, the Federal Circuit agreed that defendant did not show that the modifications to the starting compound to make the claimed compound were obvious. First, at the time, homologation and ring-walking were not obvious at the time, second, there was no reason to focus only on the methyl groups, and finally, there was not indication that modification would affect toxicity or otherwise effect beneficial changes.

Claim Differentiation in Continuation Application Supports Broader Construction

The Saunders Group, Inc. v. Comfortrac, Inc., [2006-1576](June 27, 2007)[BRYSON, Michel, and Dyk] The Federal Circuit reversed the grant of summary judgment of non-infringement of U.S. Patent No. 6,899,690 on a lightweight cervical traction device because the district court's claim construction was erroneous.
SIGNIFICANCE: (1) Claim differentiation in continuation application supports broader construction for claims without claim term. (2) Arguments in a parent application about claim language that is missing from the continuation appliaction do not affect the scope of the continuation application. (3) Validity concerns are not a basis to restrict the interpretation of claims from their proper construction.
BRIEF: The district court construed the term "pneumatic cylinder" to include at least one pressure activated seal, even though a pressure activated seal was specifically recited in some of the claims and not recited in other of the claims. The Federal Circuit observed that claim terms are generally given the meaning those terms would have to a person of ordinary skill in the art, and found that it was not disputed that "pneumatic cylinder" does not require "pressure activated seals". The Federal Circuit said that claims can be assigned a narrower scope only if there is an indication in the patent or the prosecution history, and the Federal Circuit found no such indication. In fact, because a dependent claim included a pressure activated seal, the Federal Circuit found that the doctrine of claim differentiation supported the inference that claim 1 encompasses cylinders without a pressure activated seal, because otherwise the claims would have identical scope. The Federal Circuit rejected the argument that additional language in the dependent claim provided meaningful difference in scope, finding that it was simply definitional language. The Federal Circuit also found that the prosecution history supported the broader interpretation of the claims, noting that when the patentees filed the continuation application, the omitted the limitation from some but not all of the new claims. The Federal Circuit said that had they omitted the limitation from all of the claims, there might have been be an argument that the limitation was assumed to be present and need not be recited, but by making the change to only some of the claims, there is a strong indication that the claims without the pressure seal limitation to not include it. The Federal Circuit also found support in the Petition to Make Special, which only identified the claims without the pressure seal as covering defendant's product without a pressure seal, as indicating the intentional difference in claim scope.
In response to defendant's argument that the claims must be limited to embodiments with pressure activated seals because not other embodiments were described, the Federal Circuit said that the patent nowhere indicated that the pressure activated seal is the only way to maintain the needed traction force. The Federal Circuit seems to have skirted the enablement question. The Federal Circuit also rejected the argument based upon the prosecution history of the parent application, because all of the claims in the parent application had the requirement of the pressure activated seal, unlike the claims in the patent in suit. "When the purported disclaimers are directed to specific claim terms that have been omitted or materially altered in subsequent applications (rather than to the invention itself), those disclaimers do not apply."
The Federal Circuit rejected the use of avoiding invalidity as a claim construction tool.
The Federal Circuit concluded with a commentary on the difficulty of claim construction, and reversed the district court's construction.

Good Vibrations: Compare Marks As a Whole

China Healthways Institute, Inc. v. Wang, [06-1464](June 22, 2007)[NEWMAN, Friedman, Rader] The Federal Circuit reversed the TTAB's decision denying China Healthways opposition to Wang's application to register CHI PLUS on electric massagers on that ground that the mark was not confusingly similar to China Healthway's prior registered mark CHI (AND DESIGN).
SIGNIFICANCE: It is incorrect to compare marks by eliminating portions and simply comparing the residue.
BRIEF: LOF: The determination of likelihood of confusion is a question of law based upon underlying facts. The Federal Circuit found that the TTAB erred when it ignored the term CHI in the parties marks because it was "at least highly suggestive" and instead focused on the other components of the parties' marks. The Federal Circuit said that "The marks must be compared in their entirety, at least when the overall commercial impression is reasonably based on the entirety of the marks." The Federal Circuit said "It is incorrect to compare marks by eliminating portions thereof and then simply comparing the residue" and concluded that the word CHI is an integral part of both marks and must be given appropriate weight. The Federal Circuit then engaged in a detailed analysis of the marks noting that CHI was a major part of both marks, and set forth in heavy letters in each. The Federal Circuit discounted the fact that in Wang's mark only the "C" was capitalized as "unlikely to suggest different source of the product." The Federal Circuit likewise discounted the word "plus" in Wang's mark noting that it "ordinarily connotes a related superior product, not one from a different source." Finally, the use of a square dot for the "i" in Wang's mark was also found "unlikely to prevent customer confusion." Viewing the marks in their entireties, the Federal Circuit concluded that confusion was likely.

Aiding an Invention Promotion Company is Not a Good Career Move

Bender v. Dudas, [06-1243](June 21, 2007)[LINN, Rader, Plager] The Federal Circuit affirmed summary judgment upholding disciplinary action taken by the U.S. Patent and Trademark Office excluding Bender from practice before the U.S. Patent and Trademark Office.
SIGNIFICANCE: This case is about one such practitioner who became complicit in the activities of an invention promoter involving over 1,000 unsuspecting inventors.
BRIEF: Bender took over prosecution of a large number of design patent applications filed by an attorney working for an invention promotion company, who agreed to a suspension. The Patent Office found that Bender had neglected an entrusted legal matter in violation of 37 C.F.R. § 10.77(c); accepted employment where professional judgment may be affected in violation of 37 C.F.R. § 10.62(a) and accepted compensation from a person other than a client without a full disclosure to the client in violation of 37 C.F.R. § 10.68(a)(1); and engaged in conduct that was prejudicial to the administration of justice in violation of 37 C.F.R. § 10.23(b)(5). The district court affirmed on summary judgment, and the Federal Circuit finding no error, likewise affirmed. Perhaps most damning for Bender was awareness of his predecessor's problems, and failure to correct them.

"Home" is a Matter of Geography, Not Substance

In re Margolin, [07-1056](June 15, 2007)[NEWMAN, Schall, Dyk] The Federal Circuit affirmed the rejection of Margolin's claims 1-5 on a method of distributed computing as being anticipated.
BRIEF: LOF: Whether a claim is anticipated and what a reference teaches are questions of fact. The Federal Circuit said that it had to uphold the BPAI's factual findings if the findings are supported by substantial evidence in the record before the Board. The Federal Circuit said "A claim is anticipated under 35 U.S.C. 102 when the same invention, including all of the claimed limitations, appears in a single reference." Margolin tried to distinguish the claimed invention as relating to a home network, but the Federal Circuit found this a mere question of geography, not a structural limitation. The Federal Circuit found the BPAI's construction of the claim reasonable, and finding substantial evidence that the claimed invention was disclosed in a single reference, affirmed the anticipation rejection.

Contempt of Preliminary Injunction Not Appealable

Entergris v. Pall Corporation, [04-1440, 05-1265, 06-1374](June 13, 2007)[MOORE, Gajarsa, Linn] The Federal Circuit dismissed the appeal of sanctions awarded for violation of a preliminary injunction, and affirmed the dissolution of the preliminary injunction.
BRIEF: The Federal Circuit held that a contempt award for violating a preliminary injunction was not final judgment, and thus was not appealable.
Regarding the dissolution of the preliminary injunction, the Federal Circuit rejected Pall's argument that one reason the injunction was lifted was because it was no longer producing an infringing product. In language that would seem to mandate an injunction in every case (regardless of eBay v. Merchexchange) the Federal Circuit said "if a court was to dissolve a preliminary injunction solely on the ground that the defendant was no longer producing an infringing product, there would be no prohibition against the defendant reverting to production of the originally enjoined products." However, the Federal Circuit went on to say that if an alleged infringer "raises a 'substantial question' regarding invalidity, i.e., asserts an invalidity defense that the patentee cannot prove 'lacks substantial merit,' the preliminary injunction should not issue. Concluding that Pall had asserted an invalidity defense that Mykrolis has not proved lacks substantial merit, the Federal Circuit held that the district court did not abuse its discretion in dissolving the preliminary injunction.

Disavowal of Claim Scope Must be Unambiguous

NMT Medical, Inc. v. Cardia, Inc., [06-1645](June 6, 2007)[GAJARSA, Michel, Mayer] The Federal Circuit vacated summary judgment of infringement of U.S. Patent No. 5,451,235 on a device for repairing heart defects, because of errors in claim construction, and remanded for further proceedings.
SIGNIFICANCE: (1) Whether a structure is insubstantially different from the structure disclosed in the specification corresponding to a means-plus-function claim is a fact question best left to the jury. (2) Disavowal of claim scope must be unambiguous.
BRIEF: Construction of a means plus function claim requires the court to identify the claimed function, and then to locate the structure in the specification which has been clearly linked to that function. Once a means plus function claim is construed, literal infringement is analyzed by determining whether the accused device employs structure identical or equivalent to the structure disclosed in the patent, and the accused device performs the identical function specified in the claim. LOF: Infringement of a means plus function claim is a question of fact. When the accused device is not identical to the structure corresponding to the means plus function element, the issue is whether the difference between the accused structure and the structure disclosed in the specification are "insubstantial". The Federal Circuit found that it was error to resolve the factual question of insubstantial differences on summary judgment.
Turning to claim 12, the Federal Circuit found error in the trial court's construction that required the devices to be "directly" connected. The Federal Circuit noted that the specification used the term directly when directly connection was intended, and concluded it was error to impose the requirement of "directly" when the claim language did not. Defendant argued that the patentee had disclaimed a broader interpretation, but the Federal Circuit has declined to apply the doctrine of prosecution disclaimer where the alleged disavowal of claim scope is ambiguous. Noting that amendments were made, the Federal Circuit found that they did not unambiguously limit the claim to directly connected.