If the Invenstors Can't Practice The Invention, There Are Enablement Issues

Ormco Corp. v. Align Technology, Inc., [2006-01240, -1274](August 24, 2007)[LOURIE, Dyk, O'Malley] The Federal Circuit affirmed in part justment that Ormco's patents were not infringed and were invalid, and affirmed summary judgment of invalidity of Allign's patent.
SIGNIFICANCE: 1. A disclaimer can result from disavowals made in ancestor patent applications. 2. If the inventor had trouble practicing the claimed invention, there is a good chance the claims are not enabled. 3. Law of the case is mandates the same result in a subsequent appeal of the same case, absent new evidence, new law, or clear error.
BRIEF: "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." However, "claims ‘must be read in view of the specification, of which they are a part,’" and "[t]he construction that stays true to the claim language and most naturally aligns with the patent’s description of the invention will be, in the end, the correct construction." The Federal Circuit noted numerous references in the specification to the automated determiation of the final position of teeth, and the absence of any human intervention except at the start of the process. The Federal Circuit then turned to the prosecution history. "[T]he prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." The Federal Circuit said that prosecution disclaimer may arise from disavowals made during the prosecution of ancestor patent applications. Considering the prosecution histories, the Federal Circuit affirmed the determination that the claims were limited to methods where the final tooth positions are automatically calculated.
LOF: Enablement is a question of law that we renew de novo. The Federal Circuit said that if an inventor attempts but fails to enable his invention in a commercial product that purports to be an embodiment of the patented invention, that is strong evidence that the patent specification lacks enablement. The Federal Circuit said that substantial doubt concerning enablement was case by the inventors in this case, that's what the district court concluded, and the Federal Circuti had not rason to disagree, and affirmed the grant of summary judgment of invalidity.
Regarding the cross-appeal, LOF: Anticipation is a question of fact, but, in reviewing a grant of summary judgment of invalidity for anticipation, we determine de novo whether the evidence creates genuine issues of material fact that should have precluded summary judgment. The Federal Circuit applied its prior holding on this issue as law of the case, and affirmed. "Under [the law of the case] doctrine a court adheres to a decision in a prior appeal in the same case unless one of three exceptional circumstances exist: (1) the evidence in a subsequent trial is substantially different; (2) controlling authority has since made a contrary decision of the law applicable to the issues; or (3) the earlier ruling was clearly erroneous and would work a manifest injustice."

The Right to a Jury Trial on Legal Issues Should Not Be Lost to Prior Determination of Equitable Issues

Shum v. Intel Corporation, [2006-1249](August 24, 2007)[LOURIE, Newman, Friedman] The Federal Circuit found that the district court erred in conducting a bench trial on inventorship prior to a jury trial on state law claims.
SIGNIFICANCE: 1. Only under the most imperative circumstances will the right to a jury trial as to legal issues be lost to the prior determination of equitable issues. 2. Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention.
BRIEF: Shum and Verdiell were partners in a company the day after dissolving the company Verdiell filed a patent application assigned to a company he formed prior to the dissolution, later filed several others, and eventually sold out to Intel for $409 million. When Shum found out about these transactions, Shum sued. The district court held a bench trial on Shum's claim to correct inventorship, and found that Shum failed to meet his burden of proving he was an inventor. The court then granted summary judgment against Shum on his state law claims. Citing Beacon Theaters, the Federal Circuit said that only under the most imperative circumstances can the right to a jury trial of legal issues be lost through prior determination of equitable claims. The Federal Circuit agreed with Shum that the case involved both legal and equitable claims, and that he was improperly denied a jury trial on the facts underlying his state law claims. The Federal Circuit noted that conception is the touchstone of inventorship, and each joint inventor must generally contribute to the conception of the invention. Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention. To prove inventorship, Shum was required to show conception. Similarly to prove his state law claims, Shum had to prove false statements about inventorship by Verdiell.

Proof of Willfulness Requires a Showing of Recklessness

In Re Seagate Technology, LLC., [MD-830](August 20, 2007)[MAYER, Newman, Lourie, Rader, Schall, Bryson, Gajarsa, Linn, Dyk, and Prost) The Federal Circuit issued a Writ of Mandamus vacating the district courts order compelling disclosure of materials that Seagate claimed were protected by privilege.
SIGNIFICANCE: 1. Willfulness requires a showing of recklessness with respect to infringement, not merely a breach of the duty of due care. 2. Waiver of attorney client privilege and work product privilege generally does not extent to trial counsel.
BRIEF: Convolve sued Seagate for patent infringement, alleging willful infringement. Seagate intended to rely on the advice of counsel to defend the allegation of willfulness. Convolve persuaded the district court to compel disclosure all opinions of counsel, including defense counsel, because the privilege was waived by Seagate's reliance on the opinions to defend willfulness. Seagate then sound a Writ of Mandamus to prevent disclosure of its trial counsel's opinions. LOF: We review the trial court’s determination of the scope of waiver for an abuse of discretion. The Federal Circuit began with the observation that an award of enhanced damages requires a showing of willful infringement. The Federal Circuit then analyzed how its law on willfulness, beginning with Underwater Devices, imposed a duty of care, which was more of a negligence standard that was in appropriate for evaluating willful conduct, and which forced accused infringe rs to rely upon the opinion of counsel to establish due care. While Knorr-Bremse had ameliorated the problem by eliminating any adverse inference from not disclosing (or even obtaining) an opinion of counsel. The Federal Circuit explained that its decision in Echo Starr that assertion of advice of counsel as a defense to willful was a waiver of privilege on communciations on the same subject, but the Federal Circuit said that it did not decide the question of waiver as to trial counsel.
The Federal Circuit concluded that the duty of care fails to comport with the general understanding of willfulness in the civil context, and overruled Underwater Devices and held that proof of willful infringement permitting enhanced damages requires at least a showing of objective recklessness. Furthermore, because the Federal Circuit abandoned the affirmative duty of due care, it reemphasized that "there is no affirmative obligation to obtain opinion of counsel". The Federal Circuit explained that to establish willful infringement, a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent.
The Federal Circuit then turned to the appropriate scope of waiver, stating the significantly different functions of trial counsel and opinion counsel advise against extending waiver to trial counsel. The Federal Circuit further found that willfulness will almost always depend on pre-filing conduct, and that willfulness asserted in a Complaint must necessarily be grounded exclusively in the accused infringer's prefiling conduct. Since a party can obtain a preliminary injunction when an accused infringer's post filing conduct is reckless, the Federal Circuit said that a patentee who does not attempt to stop an accused infringer’s activities with a preliminary injunction should not be allowed to accrue enhanced damages based solely on the infringer’s post-filing conduct. Similarly, if a patentee attempts to secure a preliminary injunction but fails, it is likely the infringement did not rise to the level of recklessness. As to work-product privilege, the Federal Circuit held that as a general proposition, relying on opinion counsel’s work product does not waive work product immunity with respect to trial counsel, but left open the possibility that situations may arise in which waiver may be extended to trial counsel, such as if a patentee or his counsel engages in "chicanery".

Foreign Application is Constructive Reduction to Practice

Frazer v. Schlegel, [2006-1154](August 20, 2007)[NEWMAN, Friedman, Rader] The Federal Circuit held that Frazer was entitled to priority of its Australian patent application in an interference with Schlegal, reversing the decision by the BPAI.
SIGNIFICANCE: 1. A foreign patent application can be a constructive reduction to practice.
BRIEF: When the priority claim is based on subject matter disclosed in a foreign patent application whose filing date is properly claimed, the foreign application has the same effect as if filed in the United States. The Federal Circuit said that the real question was not whether the Australian application showed conception, but whether it showed a constructive reduction to practice, as a foreign application can still be a constructive reduction to practice. The Federal Circuit held that the the Australian application had an adequate disclosure of the interference count.

Attorney Cannot Appeal Decision in Which His Actions Are Criticized

Nisus Corporation v. Perma-Chink Systems, Inc., [2006-1592, 2007-1142](August 13, 2007)[BRYSON, Rader, Linn] The Federal Circuit dismissed for lack of jurisdiction the appeal of a practitioner who actions were deemed to constitute inequitable conduct.
SIGNIFICANCE: An attorney who is merely criticized in a judicial opinion does not have standing to either intervene in the underlying case, or appeal.
BRIEF: Mr. Teschner's actions were found to constitute inequitable conduct, and Mr. Techner sought to intervene, pointing out that he had been replaced early in the prosecution. The District Court denied his motion to intervene, although it did amend its judgment. The Federal Circuit began with an analysis of its jurisdiction over the appeal. The Federal Circuit takes the position that a Court Order that criticizes an attorney and that is intended to be "a formal judicial action" in a disciplinary proceeding is an appealable decision, but that other kids of judicial criticisms of lawyer's actions are not reviewable. The Federal Circuit concluded that in the absence of some type of formal judicial action directed at Mr. Teschner, such a an explicit reprimand or the issuance of some mandatory directive, a courts criticism of an attorney is simply commentary made in the course of an action to which the attorney is, legally speaking, a stranger. The Court concluded that Teschner lacked standing to appeal, but did note that he was not without remedy, and that he could pursue a writ of mandamus to have offending commentary expunged from the public record.

Priority Claim Lost Because Applicant in the Priority Application Differed from the Applicant in the U.S. Application

Boston Scientific Scimed, Inc., v. Medtronic Vascular, Inc., [2006-1434] (August 8, 2007) [MAYER, Bryson, Prost] The Federal Circuit affirmed the decision of the Board of Patent Appeals and Interferences denying Scimed priority of an earlier filed European patent application.
SIGNIFICANCE: The applicant in the priority application must be the same as, or acting on behalf of, the U.S. applicant.
BRIEF: MinTec filed two European patent applications. At the time the MinTec filed, there was no legal relationship between MinTec and Cragg and Dake, nor was MinTec acting on behalf of Cragg and Dake. Cragg and Dake subsequently assigned their rights to MiTec. Cragg and Dake subsequently filed an application in the U.S. and assigned their rights to Scimed. After an interference was declared in the U.S., Scimed sought to claim priority to the European applications, but because the applicant in the European applicant was not the same as the U.S. applicant, nor was the European applicant acting on behalf of the U.S. applicant.
The Federal Circuit affirmed, finding the language of Section 119, as construed by the courts, requires that the prior foreign applicant be filed by or on behalf of the same applicant as in the U.S. The Federal Circuit affirmed the district court.

Saying Too Much in the Specification Limits the Claims

Safetcare Manufacturing, Inc. v. Tele-made, Inc., [2006-1535] (August 3, 2007) [GAJARSA, Michel, Robinson]. The Federal Circuit affirmed the trial court's grant of summary judgment of non-infringement of U.S. Patent No. 6,357,065 on a variable width bariatric modular bed.
BRIEF: The only claim of the '065 Patent at issue requires "a plurality of electric motors" that exert "a pushing force on said plurality of deck sections." It was undisputed that Burke’s Tri-Flex II bed has one motor that exerts such "a pushing force", but the parties dispute whether the motor that raises the deck panel in the foot section exerts "a pushing force" and thus whether Burke’s Tri-Flex II bed has the plurality of motors required by the claim. The Federal Circuit found that the specification prevented the broad construction sought by patentee, noting the specification is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.
The Federal Circuit noted that the Background section describes the prior art as having electric motors that are known to apply a pulling force on structural members attached to the bed frame. The Federal Circuit found that in distinguishing its patent from the prior art that was “known to apply a pulling force on structural members,” the patentee disclosed in the Summary of the Invention that its invention uses motors that apply pushing forces against lift dogs, which are attached to the movable deck sections. The Federal Circuit conceded that distinction between using the specification to interpret the meaning of a claim and importing limitations from the specification into the claim can be a difficult one to apply in practice, but found there was no danger because it was relying on the specification merely to understand what the patentee has claimed and disclaimed. In this case, the written description repeatedly emphasizes that the motor of the patented invention applies a pushing force, not a pulling force. The Federal Circuit also found no infringement under the doctrine of equivalents, because the accused device exerts a force that is translated through the actuator to pull the lift dog toward the motor, and such a force was disavowed from the scope of the pushing force limitation.
SIGNIFICANCE: Attempts to distinguish the prior art in the Background limits the claim scope.

Medimmune Continues to Provide Broad Declaratory Judgment Jurisdiction

Sony Electronics, Inc. v. Guardian Media Technologies, Ltd., [2006-1363] (August 3, 2007) [PROST, Newman, Friedman] The Federal Circuit vacated and remanded the trial court's dismissal of the plaintiff's actions for declaratory judgment of non-infringement and invalidity of U.S. Patent Nos. 4,930,158 and 4,930,160, relating to methods of blocking certain television programs.
BRIEF: After being contacted by defendant regarding infringement of the '158 and '160 patents, the plaintiffs brought a declaratory judgment action, and a month later initiated reexamination of the patents. The trial court granted the patentee's motion to dismiss for lack of actual controversy, and said that even if it did have jurisdiction, it was a close question and it appeared that plaintiff's brought the declaratory judgment action as a negotiation tactic, which were enough reason to exercise its discretion not to hear the cases. As a result of the Supreme Court's decision in Medimmune, the reasonable apprehension of suit test has been abrogated. The Federal Circuit noted that a patentee's statement that it had absolutely no plant whatsoever to sue or a patentee's willingness in licensing did not eliminate an actual controversy for purposes of declaratory judgment jurisdiction. The Federal Circuit concluded that at the time of suit, an actual controversy existed between the parties. Noting the broad discretion of the trial court in exercising declaratory judgment jurisdiction, the Federal Circuit reversed and remanded the case, because the reasons given by the court for exercising its discretion to decline to hear the case were incorrect. There was in fact an actual controversy, so it was not a close case as the trial court supposed. Further, the Federal Circuit was troubled by the trial court's finding that bringing the suit was a tactic. The Federal Circuit found it harder to infer a nefarious motive from the filing. The Court remanded for the trial court to reconsider whether to exercise its discretion to hear the case, or to stay the case, pending the reexamination.

Claims Must Be Given Broadest Reasonable Construction Consistent with the Specification

In re Icon Health and Fitness, Inc., [2006-1573] (August 1, 2007) [PROST, Mayer, Schall] The Federal Circuit affirmed the BPAI's decision holding Icon claims unpatentable as obvious.
BRIEF: Icon sought reexamination of its U.S. Patent No. 5,676,624 on a treadmill with a folding base. LOF: The Board’s determination that a prior art reference is analogous art also presents an issue of fact, reviewed for substantial evidence. The Patent Office must give claims their broadest reasonable construction consistent with the specification. A broad construction during prosecution creates no unfairness to the applicant because the applicant may amend the claims to narrow their scope. Because Icon did not amend its claims, it must submit to the Board's broad claim construction. Icon argued that a reference to a folding bed was not analogous to folding treadmills. While the Federal Circuit agreed that the reference was from a different field, the Federal Circuit found that the references addressed the same problem. As the Supreme Court said in KSR, familiar items may have obvious uses beyond their primary purposes. Having found the reference to be analogous art, the Federal Circuit then discussed whether the combination was obvious, noting that one skilled on the art would naturally look to prior art addressing the same problem as the invention at hand, and in this case would find an appropriate solution. The Federal Circuit found that the striking similarity between the application and the reference illustrates the similarity of the problems they address and solutions to that problem, further supporting the idea that a person of ordinary skill in the art would combine the references. The Federal Circuit rejected Icon's argument that the reference taught away from the invention because it employed different types of springs which would not work in the claimed invention. The Federal Circuited noted that a reference can teach away in two situations: (1) where it would discourage following the path set forth in the reference, or would lead to a different path than taken by the inventor, or (2) where use of the reference would render the result inoperable. The Federal Circuit found that Icon might have a point with respect to narrower claims, but the reference did not teach away from the broad claims at issue. Regarding inoperability, the Federal Circuit noted that it does not "ignore the modifications that one skilled in the art would make to a device borrowed from the prior art", finding that a person of ordinary skill in the art would properly size the components. The Federal Circuit agreed that the broad claims at issue were obvious from the prior art.
TIP: If you must identify the problem solved by the invention, do so only in terms of the ultimate problem solve, and not the specific solution, which might invite the application of art from other fields.

Patent Law Preempts Local Attempts to Regulate the Price of Patented Products

Biotechnology Industry Organization v, District of Columbia, [2006-1593] (August 1, 2007)[GAJARSA, Bryson, and Plager] The Federal Circuit affirmed the judgment of the trial court that the District of Columbia's Excessive Drug Pricing Act of 2005 was preempted by the federal patent laws, and enjoining its enforcement.
BRIEF: The District of Columbia adopted legislation making it unlawful for any drug manufacturer to sell or supply for sale, or impose minimum resale requirements for a patented prescription drug that results in the drug being sold in the District for an excessive price. The Federal first considered jurisdiction, concluding that the action did arise under the patent laws. The Federal Circuit then address the standing of the plaintiff, and concluded that because members of the plaintiff organizations would be injured by enforcement, that the plaintiffs did have standing. The Federal Circuit finally turned to the question of preemption. The Federal Circuit noted that there was no express provision in the patent laws prohibiting the regulation of patented goods, but nevertheless state law must yield to Congressional enactments if it "stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress." The Federal Circuit said that fundamental goal of patent law is spelled out in the Constitution which gives inventors "exclusive rights". The Federal Circuit said that "Patentees value the right to exclude in part because the ability to foreclose competitors from making, using, and selling the invention may allow them an opportunity to obtain above-market profits during the patent’s term." The Federal Circuit found that "By penalizing high prices—and thus limiting the full exercise of the market power that derives from a patent—the District has chosen to re-balance the statutory framework of rewards and incentives insofar as it relates to inventive new drugs." The Federal Circuit concluded "The Act stands as an obstacle to the federal patent law’s balance of objectives as established by Congress" and held that it was preempted by federal patent law.