Mere Agreement to Assign Does not Automatically Work an Assignment

IPVENTURE, Inc., v. Prostar Computer, Inc., [2006-1012, 1081] (September 28, 2007)[NEWMAN, Lourie, Bryson] The Federal Circuit reversed the district court's dismissal of a patent infringement action on the grounds that the plaintiff did not own the entire interest in the patent in suit.
SIGNIFICANCE: Mere agreement to assign does not automatically create an ownership interest, divesting the inventor of legal title.
BRIEF: Plaintiff sued for infringement of a patent invented by C. Douglass Thomas, and employee of Hewlett-Packard, and his father, Alan E. Thomas. The district court dismissed the complaint on the theory that Hewlett-Packard had an ownership interest in the patent.
The Federal Circuit found the dismissal was in error, for Hewlett-Packard had no assignment of an interest in the patent, and had disclaimed any interest therein. The Federal Circuit found a difference between a present assignment and an agreement to assign, and held that Hewlett-Packard did not acquire an ownership interest in the patent. Further, the Federal Circuit noted that Hewlett-Packard provided a statement that it never had an interest in the '235 patent, confirmed the situation as to that patent and removed the need to construe the employment agreement.

"Comprised of" and "Comprising" Are Open Claim Transitions

Cias, Inc. v. Alliance Gaming Corp., [2006-1342](September 27, 2007)[NEWMAN, Schall, Moore] The Federal Circuit affirmed grant of summary judgment of non-infringement of U.S. Patent No. 5,283,422, despite the district court's error in construing the term "comprised of".
SIGNIFICANCE: 1. "Comprised of" usually means the same thing as "comprising" in a claim transition. 2. Claims can be limited by arguments about the prior art, even if there was no rejection of the claim.
BRIEF: The claims of a patent establish and limit the patentee's right to exclude, by "describing the outer boundaries of the invention." Claim 1 included the transition "comprised of".
Patent claims are construed as they would be understood by a persons experienced in the field of the invention, on review of the patentee's description of the invention in the specification and the proceedings in the Patent and Trademark Office. The district court interpreted "comprised of" as being narrower than comprising. The Federal Circuit said this ruling was not correct. "Although 'comprised of' is not used as regularly as 'comprising,' and 'comprised of' is sometimes used other than as a 'transition phrase,' nonetheless it partakes of long-standing recognition as an open ended term." The Federal Circuit added that "[t]he usual and generally consistent meaning of 'comprised of,' when it is used as a transition phrase is, like 'comprising,' that the ensuing elements or steps are not limited." In other words, the conventional usage of "comprising" generally also applies to "comprised of." However the fact that the claim was open did not allow the patentee to recapture additional elements that were expressly disclaimed during prosecution of the reexamination. In the reexamination, the patentee made certain arguments about differences from the Shoshani, and even though the claims were not rejected of Shoshani, the Federal Circuit agreed that a disclaimer nonetheless occurred/

PTO Must Give Claims Broadest Reasonable Interpretation

In re Buszard, [2006-1489](September 27, 2007)[NEWMAN, Friedman, Prost] The Federal Circuit reversed a BPAI decision holding all of the claims unpatentable as anticipated.
SIGNIFICANCE: The PTO should give claims their broadest reasonable interpretation, not simply their broadest interpretation.
BRIEF: The claims of the application contained the limitation "a flexible polyurethane foam reaction mixture." The BPAI held the claims anticipated by the Eling et al. reference which disclosed a flexible foam made by crushing the rigid foam, in contrast to the claimed invention, which directly produced a flexible foam. A rejection for anticipation under section 102 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference. Bruszard argued that the claimed flexible foam was different from a flexible foam of the reference which was simply a rigid foam crushed into small particles, and that this difference is readily understood by a person of ordinary skill in the art. The PTO argued that the words in the pending claims must be given their broadest reasonable interpretation, and Bruszard responded that the PTO's interpretation was not reasonable. The Federal Circuit agreed with Bruszard that it is not a reasonable claim construction to equate "flexible" with "rigid" or to equate crushed rigid polyurethane foam with a flexible polyurethane foam, and reversed and remanded.

Failure to Identify the "Means" in the Specification Invalidates Section 112, Paragraph 6 Claim

Maurice Mitchel Innovations, L.P. v. Intel Corporation, [2007-1108](September 24, 2007)[RADER, Moore, Yeakel] The Federal Circuit affirmed summary judgment that claim 1 of U.S. Patent No. 4,875,154 was indefinite under 35 USC 112.
SIGNIFICANCE: "The quid pro quo for using a means-plus-function limitation requires specificity in reciting structure and linking that structure to the limitation."
BRIEF: Claim 1 of the '154 patent includes a claim limitation "means for causing said first and second switch means to remain in said non signal conducting state". The district court concluded this was a Section 112, Paragraph 6 limitation, but found no corresponding structure in the specification, and therefore held the patent claim indefinite. LOF: The review of indefiniteness under 35 USC 112 is a question of law, reviewed without deference. If an applicant employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If there is no structure in the specification corresponding to the means-plus-function limitation in the claims, the claim will be found invalid as indefinite. The Federal Circuit found no such disclosure in the specification, and rejected the disclosure of a complex integrated circuit in the specification as possible support for the claim language, without any explanation in the specification.

Infringement Adequately Shown Without Direct Measure of the Claimed Element

In Re Gabapentin Patent Litigation, [2006-1572] (September 21, 2007)[LOURIE, Linn, Moore] The Federal Circuit reversed sum may judgment of non-infringement of U.S. Patent No. 6,054,482 because the district court erred in determining that there were no genuine issues of material fact, but affirmed the district court's claim construction.
SIGNIFICANCE: Federal Circuit approves indirect proof of a claim limitation.
BRIEF: The parties disputed whether the patentee's use of pH testing to determine the accused product met the limitation of less than 20 ppm acidic chloride. The defendant's focused on the lack of precision of the test +/- 5%. The Federal Circuit found that the test of at least one sample did meet the claim limitation, and that the defendants had waived their objection whether the test was a proper measure of the acidic chloride content.

Methods Dependant Upon Human Thought Are Unpatentable

In Re Comiskey, [2006-1286](September 20, 2007)[DYK, Michel, and Prost] The Federal Circuit CHEL, Chief Judge, DYK and PROST, Circuit Judges. The Federal Circuit did not reach the Board’s obviousness rejection because it concluded that Comiskey’s claims are unpatentable subject matter under 35 U.S.C. § 101.
SIGNIFICANCE: Methods that depend for their operation on human intelligence alone are not patentable subject matter.
BRIEF: Comiskey’s patent application claims a method and system for mandatory arbitration involving legal documents, such as wills or contracts. According to the application, the claimed "program . . . requires resolution by binding arbitration of any challenge or complaint concerning any unilateral document . . . [or] contractual document." The PTO argued that Comiskey’s claims were directed at an unpatentable abstract idea, and not a patentable process, because they neither were tied to a particular machine nor operated to change materials to a different state or thing. Rather the claims impermissibly "encompasse[d] a method of controlling how humans interact with each other to resolve a dispute, based on a human arbitrator’s perception of the dispute." It is well-established that "[t]he first door which must be opened on the difficult path to patentability is § 101." The Federal Circuit said that Comiskey’s application may be viewed as falling within the general category of "business method" patents. At one time,though seemingly within the category of process or method, a method of doing business was rejected as not being within the statutory classes.
The Federal Circuit said that although it has been suggested that State Street Bank supports the patentability of business methods generally, State Street Bank explicitly held that business methods are “subject to the same legal requirements for patentability as applied to any other process or method.” The Federal Circuited noted that the very cases of this court that recognized the patentability of some business methods have reaffirmed that abstract ideas are not patentable. The Federal Circuit said that the prohibition against the patenting of abstract ideas has two distinct (though related) aspects. First, when an abstract concept has no claimed practical application, it is not patentable. Second, the abstract concept may have a practical application. The Supreme Court has reviewed process patents reciting algorithms or abstract concepts in claims directed to industrial processes. In that context, the Supreme Court has held that a claim reciting an algorithm or abstract idea can state statutory subject matter only if, as employed in the process, it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter.
The Federal Circuit examined the Supreme Court's decision in Diehr, where the Supreme Court confirmed that a process claim reciting an algorithm could state statutory subject matter if it (1) is tied to a machine or (2) creates or involves a composition of matter or manufacture. The Court concluded that "[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines. However, mental processes—or processes of human thinking—standing alone are not patentable even if they have practical application. The Federal Circuit noted that in Flook the Supreme Court held the application unpatentable because "if a claim [as a whole] is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory."
The Federal Circuit concluded that: "It is thus clear that the present statute does not allow patents to be issued on particular business systems—such as a particular type of arbitration—that depend entirely on the use of mental processes. In other words, the patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter. Thus, it is established that the application of human intelligence to the solution of practical problems is not in and of itself patentable." The Federal Circuit said that Comiskey’s independent claims 1 and 32 claim the mental process of resolving a legal dispute between two parties by the decision of a human arbitrator. The Federal Circuit concluded that majority of the claims did not constitute patentable subject matter, and that the remainder, adding conventional devices may be obvious. The Federal Circuit remanded the application to the Board.

A Signal is Not Patentable Subject Matter

In Re Nuijten, [2006-1371] (September 20, 2007)[GAJARSA, Linn, Moore] The Federal Circuit affirmed the PTO rejection of claims on the ground that a signal was not patentble subject matter.
SIGNIFICANCE: A signal is not patentable subject matter.
BRIEF: Nuijten’s patent application discloses a technique for reducing distortion induced by the introduction of "watermarks" into signals. The claims on appeal cover transitory electrical and electromagnetic signals propagating through some medium, such as wires, air, or a vacuum. Those types of signals are not encompassed by any of the four enumerated statutory categories: "process, machine, manufacture, or composition of matter." The Federal Circuit examined each of the statutory categories. The Federal Circuit said that the Supreme Court and this court have consistently interpreted the statutory term "process" to require action, and concluded that there was not action. The Federal Circuit said that the Supreme Court has defined the term "machine" as "a concrete thing, consisting of parts, or of certain devices and combination of devices," and concluded that a signal was not a machine. As to the third category, manufactures, the Federal Circuit found the question "more difficult". The Federal Circuited noted that signals are man-made, in the sense of having been encoded, generated, and transmitted by artificial means. However, the Federal Circuit said that artificiality is insufficient by itself to render something a "manufacture." The term is used in the statute in its noun form, and therefore refers to "articles" resulting from the process of manufacture. These definitions indicate that "articles of manufacture" are tangible articles or commodities. A transient electric or electromagnetic transmission does not fit within that definition. The Federal Circuit noted that applicant conceded that the claimed signals were not compositions of matter. Further, the Federal Circuited noted that the Supreme Court has defined "composition of matter" to mean "all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids" and concluded that a signal comprising a fluctuation in electric potential or in electromagnetic fields is not a "chemical union," nor a gas, fluid, powder, or solid. Nuijten’s signals are not "composition[s] of matter."
The Federal Circuit sided with Nuijten on one issue -- the found that in order to be a "signal," as required by the claim, some carrier upon which the information is embedded is required. Thus some physical form for the signal is required, but any form will do, so long as a recipient can understand the message—the nature of the signal’s physical carrier is totally irrelevant to the claims at issue.

Infringement of A Single Claim by Multipe Parties Requires That the Parties be Related or Under Common Control

BMC Resources, Inc. v. Pamentech, L.P., [2006-1503](September 20, 2007)[RADER, Gajarsa, Prost] The Federal Circuit affirmed the determination of non-infringement because the record contains no basis to hold Paymentech vicariously responsible for the actions of the unrelated parties who carried out the other steps of the claimed method.
SIGNIFICANCE: In one party does not perform all of the steps of a claimed method, it does not infringe the patent.
BRIEF: BMC is the assignee of U.S. Patent Nos. 5,718,298 and 5,870,456 on a method for processing debit transactions without a personal identification number. BMC claimed Paymentech was infringing these patents, but Paymentech denied infringement, arguing that it did not perform all of the steps of the patented method by itself or in coordination with its customers and financial institutions. The Federal Circuit characterized the case as presenting the issue of the proper standard for joint infringement by multiple parties of a single claim. Direct infringement requires a party to perform or use each and every step or element of a claimed method or product.
When a defendant participates in or encourages infringement but does not directly infringe a patent, the normal recourse under the law is for the court to apply the standards for liability under indirect infringement. Indirect infringement requires, as a predicate, a finding that some party amongst the accused actors has committed the entire act of direct infringement. These rules for vicarious liability might seem to provide a loophole for a party to escape infringement by having a third party carry out one or more of the claimed steps on its behalf. To the contrary, the law imposes vicarious liability on a party for the acts of another in circumstances showing that the liable party controlled the conduct of the acting party. In the context of patent infringement, a defendant cannot thus avoid liability for direct infringement by having someone else carry out one or more of the claimed steps on its behalf. It would be unfair indeed for the mastermind in such situations to escape liability. District courts in those cases have held a party liable for infringement. The Federal Circuit acknowledges that the standard requiring control or direction for a finding of joint infringement may in some circumstances allow parties to enter into arms-length agreements to avoid infringement. Nonetheless, this concern does not outweigh concerns over expanding the rules governing direct infringement.
Direct infringement is a strict-liability offense, but it is limited to those who practice each and every element of the claimed invention. By contrast, indirect liability requires evidence of “specific intent” to induce infringement. Another form of indirect infringement, contributory infringement under § 271(c), also requires a mens rea (knowledge) and is limited to sales of components or materials without substantial noninfringing uses.
The Federal Circuit observed that the problem could be avoided by better claim drafting:
"The concerns over a party avoiding infringement by arms-length cooperation can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement by a single party."

An Injunction Against Communication of Patent Rights Is Strong Medicine That Must Be Used With Care

GP Industries, Inc., v. A Gutter Solution LLC, [2007-1087](September 20, 2007)[LOURIE, Newman, Prost] The Federal Circuit reversed a preliminary injunction enjoining Eran from future correspondence with present and potential customers about infringement of its patent.
SIGNIFICANCE: A patentee has the right to communicate with others about its patent rights so long as he is not acting in bad faith, i.e. where the claim of infringement is objectively baseless.
BRIEF: Eran, through counsel, sent letters to its distributors and contractors informing them that GPI, a company formed by former employees of Eran, planned to manufacture and sell a gutter cover that infringed U.S. Patent No. 5,557,891. GPI sued for a declaratory judgment of non-infringement and tortious interference, and sought to enjoin Eran's contacting others about GPI's alleged infringement. The Federal Circuit said that when a patentee is prevented from communicating its patent rights, "[w]e apply federal patent law and precedent relating to the giving of notice of patent rights, in reviewing the grant of an injunction against the giving of such notice." The grant of the preliminary injunction is reviewed in the context of whether, under applicable federal law, the notice of patent rights was properly given. Federal law requires a showing of bad faith in order to bar such communications. The Federal Circuit noted the rarity of an injunction being granted against communicating with others concerning one’s patent rights. The Federal Circuit said that "One has a right to inform others of his or her patent rights" and that "an injunction against communication is strong medicine that must be used with care and only in exceptional circumstances." A patentee, acting in good faith on its belief as to the nature and scope of its rights, is fully permitted to press those rights even though he may misconceive what those rights are." “Bad faith” may include subjective and objective considerations, but cannot be satisfied in the absence of a showing that the claims asserted were objectively baseless.

Expert Opinion Evidence Must Be Both Reliable And Relevant to the Issue Before The Trial Court

MEMC Electronic Materials, Inc. v. Mitsubishi Materials Silicon Corp., [2006-1305, -1326] (September 20, 2007) [PLAGER, Schall, Dyk] NON-PRECEDENTIAL The Federal Circuit held that the trial court did not abuse its discretion in excluding the expert report and testimony of MEMC’s expert witness, and affirmed the judgment of non-infringement of MEMC's U.S. Patent No. 5,919,302. The Federak Circuit further held that there are genuine issues of material fact on the issue of enablement, and vacated summary judgment of invalidity for lack of enablement. The Federal Circuit dismissed the cross-appeal relating to its affirmative defenses of anticipation and obviousness.
BRIEF: U.S. Patent No. 5,919,302 discloses a method for producing semiconductor-grade single crystal silicon wafers that are substantially free of agglomerated vacancy intrinsic point defects. MEMC sued for infringement, and the defendants moved for summary judgment and to exclude the testimony of MEMC's expert with regard to the issue of infringement on the ground that they were inadmissible under FRE 702 and the standards set forth in Daubert.
Under Daubert and Rule 702, expert opinion evidence must be both reliable and relevant to the issue before the trial court. While MEMC's expert's tests may be commonly used in the industry to examine defects in silicon wafers, the record indicates that the results of those tests cannot prove that all the claim limitations are met. The Federal Circuit said that although the issue is a close one, under our deferential standard of review it could not find the distric court abused its discretion in concluding that the report and testimony relating to infringement failed to meet the standards of relevance and reliability required by Rule 702.
As to enablement, the Federal Circuit said that the enablement requirement is satisfied if the patent teaches a person skilled in the art at the time the patent application was filed how to make the claimed invention without undue experimentation. LOF: Enablement is a legal conclusion based on underlying factual considerations. There were conflicting expert declarations from the MEMC and the defendants, resulting in summary judgment that the disclosure was not enabling. The Federal Circuit appreciated the effort of the distrtict court to resolve the complex issued, but concluded that there were facts in dispute that could not be resolved on a motion for summary judgement.

Division of Patent Rights in Bankruptcy Confuses Standing Issue

Morrow v. Microsoft Corp., [2006-1512, -1518, -1537](September 19, 2007)[MOORE, Prost, Plager] The Federal Circuit reversed the determination of standing to sue Microsoft, and vacated the judgment of non-infringement.
SIGNIFICANCE: Dividing of patent rights in a bankruptcy proceeding can impair standing to enforce the patents, regardless of the rights purportedly given the parties.
BRIEF: As a result of bankruptcy proceedings the rights in the patent suit were scattered. The Federal Circuit considered the rights held by the named plaintiff, and determined that they were insufficient to confer standing on the plaintiff to bring suit. The Federal Circuit reversed the denial of the motion to dismiss for lack of standing, and refused to reach the issues of validity of the patent.

Under Recently Relaxed Standard, Any Dispute About the Right to Act Without a License Provides Declaratory Judgment Jurisdiction

Adenta GMBH v. Orthoarm, Inc., [2006-1571, -1598] (September 19, 2007) [LOURIE, Michel, Robertson] The Federal Circuit affirmed the denial of a motion to dismiss for lack of subject matter jurisdition, and denial of JMOL that claims of U.S. Patent No. 6,257,883 are not invalid, and affirmed the district court's finding that the case was not exceptional.
SIGNIFICANCE: Under the relaxed Medimmune standard, any dispute over whether a party can perform certain actions without a license creates a justiciable controversy under the Declaratory Judgment Act.
BRIEF: The Federal Circuit noted that in Medimmune, the Supreme Court stated that “[b]asically, the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.” The Federal Circuit said that where a patentee asserts rights under a patent based on certain identified ongoing or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without a license under the patent, an Article III case or 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 found sufficient case and controversy under the recently relaxed standard, and affirmed the denial of the motion to dismiss.
Regarding the denial of JMOL on the finding of invalidity, Orthoarm complained about the lack of corporation for the anticipatory public use. Assessing the sufficiency of evidence which corroborates a witness’s testimony concerning invalidating activities has been analyzed under the "rule of reason" test. A "rule of reason" analysis involves an assessment of the totality of the circumstances including an evaluation of all pertinent evidence. Considering all the evidence presented, the Federal Circuit agreed with the district court that a reasonable fact finder could have concluded that clear and convincing evidence showed that a public use or sale had occurred, and affirmed the denial of JMOL.
Regarding defendant's cross appeal, that the the patentee and acted inequitably, and this the case was exceptional, the Federal Circuit noted the jury had found that no material information had been withheld, and thus did not need to even consider intent. LOF: The determination whether a case is exceptional is a question of fact, reviewed for clear error. The Federal Circuit found no clear error.

Pro Se Litigants Have Low Bar to Avoid Dismissal Under Rule 12(b)(6)

McZeal v. Sprint Nextel Corp., [2006-1548](September 14, 2007)[[ARCHER, Michel, Dyk] The Federal Circuit vacated the dismissal of McZeal's complaint and remanded for further procedings.
SIGNIFICANCE: A patent infringement plaintiff need only put defendant on notice of the claim against it, and need not plead the individual elements of the patent claims.
BRIEF: The District Court dismissed McZeal's 95 page complaint for infringement of his service mark INTERNATIONAL WALKIE TALKIE and his U.S. Patent No. 6,763,226. At issued was whether in the light most favorable to plaintiff, did the Complaint state a valid claim for relief. A court may grant a pro se litigant leeway on procedural matters. However, regardless of whether a plaintiff is pro see, conclusory allegations or legal conclusions masquerading as factual conclusions will not suffice to prevent a motion to dismiss. A patentee need only plead facts sufficient to place the alleged infringer on notice as to what he must defend. The plaintiff is not required to specifically include each element of the claims of the asserted. The Federal Circuit found McZeal's allegations were sufficient to allow defendants to answer, and thus meets the notice pleading required to survive a Rule 12(b)(6) motion, even though McZeal conceded that he did not know how defendant's device worked. The Federal Circuit also reversed the dismissal of McZeal's trademark infringement claim, finding the pleadings sufficient, and the district court's determination that the mark was generic was premature. The Federal Circuit commented that is was not condoning his method of pleading, but concluded he met the bar for pro se litigants.

Ordinary Observer is Commercial Purchase of Patented Part, Not Retail Purchaser of Assembly

Arminak and Associates, Inc., v. Saint-Gobain Calmar, Inc., [2006-1561](September 12, 2007)[HOLDERMAN, Michel, Gajarsa] The Federal Circuit affirmed summary judgment for Arminak that the design of Arminak trigger sprayers did not infringe U.S. Patent Nos. D381,581 and D377,602.
BRIEF: Arminak brought a declaratory judgment action to declare that Calmar's design patents were invalid and not infringed. The Federal Circuit first reviewed the law of design patents:
A design patent protects the nonfunctional aspects of an ornamental design as shown in the patent. The chief limitation on the patentability of designs is that they must be primarily ornamental in character. If the design is dictated by performance of the article, then it is judged to be functional and ineligible for design patent protection. The Federal Circuit said that infringement of a design patent is evaluated in a two-step process. First, the court must construe the claims of the design patent to determine their meaning and scope. Design patents are claimed as shown in drawings. Claim construction by a court is adapted accordingly. The scope of the claim of a patented design "encompasses ‘its visual appearance as a whole,’ and in particular ‘the visual impression it creates.’" Second, after construction of the patent’s claims, the court is to compare the construed claims to the accused design.
Infringement of a design patent occurs if the designs have the same general visual appearance, such that it is likely that the purchaser [(or the ordinary observer)] would be deceived into confusing the design of the accused article with the patented design. The patented and accused designs do not have to be identical in order for design patent infringement to be found. In determining infringement of a design patent, the court is not limited to the ornamental features of a subset of the drawings, but instead must encompass the claimed ornamental features of all figures of a design patent. The comparison of the patented and accused designs involves two separate tests, both of which must be satisfied to find infringement: the ordinary observer test and the point of novelty test. The ordinary observer test considers whether to an ordinary observer, giving such attention as a purchaser usually gives, the resemblance between the designs is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. The point of novelty test requires that the accused design appropriate the novelty which distinguishes the patented design from the prior art. LOF: The ordinary observer test and point of novelty test are factual inquiries. Calmar complained that the district court's claim construction was too detailed. The Federal Circuit responded that its case law does not prohibit detailed claim construction of design patent drawings. It merely disapproves claim construction that goes beyond the novel, nonfunctional ornamental features visually represented by the claimed drawings, or fails to encompass the claimed ornamental features of the design as a whole. A central issue was the identify of the "ordinary observer", the patentee argued that it was retail customers of products in packaging containing the spray head. The Federal Circuit considered the Supreme Court's decision in Gorham The Supreme Court’s Gorham opinion, which expressly excluded experts from the category of persons who are ordinary observers. The Federal Circuit said that the focus of the ordinary observer test is on the actual product that is presented for purchase, and the ordinary purchaser of that product. The Federal Circuit held that that the ordinary observer of the sprayer shroud designs at issue in the case is the industrial purchaser or contract buyer of sprayer shrouds for businesses that assemble the retail product from the component parts of the retail product bottle. The Federal Circuit further agreed that this ordinary observer would not be confused by the two designs. Lastly, the Federal Circuit agreed that the two points of novelty identified by the patentee were not appropriated.

Federal Circuit Changes Non-Precential Opinion on Level of Skill in the Art to a Precedential Opinion

Daiichi Sankyo Co., Ltd. v. Apotex, Inc., [2006-1564] (September 12, 2007) [ARCHER, Michel, Dyi] The Federal Circuit reversed the judgment of the district court that Apotex infringes U.S. Patent No. 5,401,741, and that the patent is not invalid or unenforceable, because the invention would have been obvious in view of the prior art.
BRIEF: The Federal Circuit reissued its July 11, 2007, non-precedential opinion as a precedential opinion.

Criticism of Prior Art Limits Scope of Equivalents

L.B. Plastics, Inc. v. Amerimax Home Products, Inc., [2006-1465](September 12, 2007)[DYK, Newman, Rader] The Federal Circuit affirmed summary judgment that the asserted claims of U.S. Patent No. 6,463,700 were not infringed literally or under the doctrine of equivalents.
SIGNIFICANCE: Patent's criticism of prior art limits applicability of doctrine of equivalents to criticized structures.
BRIEF: The '700 patent claimed a composite gutter guard with a mesh layer over a guard patent. During prosecution the patentee amended the claims to add the limitation a continuous heat weld defining an uninterrupted longitudinal weld to distinguish a patent disclosing spot welds. The accused product had a mesh attached to the guard panel by means of an adhesive, hot glue. The Federal Circuit said that "[i]n construing claims we search for the ordinary and customary meaning of a claim term to a person of ordinary skill in the art. We determine this meaning by looking first at intrinsic evidence such as surrounding claim language, the specification, the prosecution history, and also at extrinsic evidence, which may include expert testimony and dictionaries. The intrinsic recorded provided little disclosure about the uninterrupted longitudinal weld, so the Federal Circuit found it proper to turn to extrinsic evidence. The Federal Circuit agreed with the district court's construction of weld, and concluded that the district court was correct in ruling that adhesive did not literally infringe the "weld" requirement. The Federal Circuit then turned to the doctrine of equivalents, which "allows the patentee to claim those insubstantial alterations that were not captured in drafting the original patent claim but which could be created through trivial changes." The Federal Circuit noted that "when a specification excludes certain prior art alternatives from the literal scope of the claims and criticizes those prior art alternatives, the patentee cannot then use the doctrine of equivalents to capture those alternatives. The Federal Circuit noted the criticism of adhesives in the specification, and observed that since the patentee elected to distinguish prior art attachment means and to limit its claim to continuous welded attachments, a person of ordinary skill in the art reading the specification would clearly conclude that the inventor thought that adhesive attachments generally were undesirable. The Federal Circuit held that the patentee cannot use the doctrine of equivalents to expand welding to include adhesives.

Purification of a Compound may be Obvious

Aventis Pharma Deutschland GmbH v, Lupin, Ltd., [2006-1530, -1555](September 11, 2007)[LINN, Mayer, Robertson] The Federal Circuit reversed summary judgment that the a generic version of ramipril infringed Aventis’s U.S. Patent No. 5,061,722, concluding that the subject matter would have been obvious.
SIGNIFICANCE: Purification of a compound of known benefit or effect may be obvious
BRIEF: After review the scope of the prior art, the Federal Circuit examined obviousness, noting that even after KSR it remains necessary to show “‘some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness,’” but such reasoning “need not seek out precise teachings directed to the specific subject matter of the challenged claim.” In the context of chemical inventions, the Federal Circuit noted the “reason or motivation” need not be an explicit teaching that the claimed compound will have a particular utility; it is sufficient to show that the claimed and prior art compounds possess a “sufficiently close relationship . . . to create an expectation,” in light of the totality of the prior art, that the new compound will have “similar properties” to the old. In the context of a purified material, the Federal Circuit said that a purified compound is not always prima facie obvious over the mixture; for example, it may not be known that the purified compound is present in or an active ingredient of the mixture, or the state of the art may be such that discovering how to perform the purification is an invention of patentable weight in itself. However, if it is known that some desirable property of a mixture derives in whole or in part from a particular one of its components, or if the prior art would provide a person of ordinary skill in the art with reason to believe that this is so, the purified compound is prima facie obvious over the mixture even without an explicit teaching that the ingredient should be concentrated or purified.

Point of Novelty Can Reside in a Combination of Known Features that are a Non-Trivial Advance

Egyptian Goddess, Inc. v. Adi Torkiya, [2006-1562](August 29, 2007)[MOORE, Dyk, Archer] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 467,389 on an ornamental nail buffer.
SIGINFICANCE:
BRIEF: The district court granted summary judgment that the accused design did not appropriate the point of novelty. The Federal Circuit reiterated that there are two tests for design patent infringement, the ordinary observer test, and the point of novelty test. The Point of novelty test requires that no matter how similar two items look, the accused device must appropriate the novelty in the patented deice which distinguishes it from the prior art. LOF: Both the ordinary observer test and the point of novelty test are factual inquiries. The point of novelty can be either a single novel design element or a combination of elements that are individually know in the prior art. For a combination of individually know elements to be the point of novelty, the combination must be a non-trivial advance over the prior art. The Federal Circuit held that the district court correctly concluded that no reasonable jury could conclude that the point of novelty proffered by EGI is a non-trivial advance over the prior art. The Federal Circuit said that in light of the prior art, no reasonable juror could conclude that EGI's asserted point of novelty constituted a non-trivial advance over the prior art.

Description of "The Invention" Limits Claim Scope

Data Encryption Corporation v. Microsoft Corporation, [2006-1603] (September 6, 2007)[PROST, Rader, Bryson] NON-PRECEDENTIAL The Court of Appeals for the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 5,584,023.
SIGNIFICANCE: The Federal Circuit agreed that there was an express disavowal of claim scope by a statement in the specification about "the invention".
BRIEF: Plaintiff argued that the District Court erred in narrowly construing the claims, but the Federal Circuit found that language in the specification that "All data subject to encryption by operation of the present invention is maintained in an encrypted state in the buffer pool." (emphasis added) was an intentional disclaimer of claim scope, noting that the language was unambiguous, and disavowed coverage of systems that maintain data subject to encryption in an unencrypted state in the kernel memory buffer pool.

Failure to Enable the Full Scope of the Claims Makes them Invalid

Automotive Technologies International, Inc. v. BMW of North America, Inc., [2006-1013- 1037][LOURIE, Rader, Prost] The Federal Circuit affirmed summary judgment of invalidity of the claims of U.S. Patent No. 5,231,253 for lack of enablement under 35 USC 112.
SIGNIFIANCE: A claim must be enabled for its full scope, not just some of the embodiments.
BRIEF: At issue were claims to a side impact sensor. LOF: Whether the subject matter of a patent claim satisfies the enablement requirement under 35 USC 112 is a uquestion of law, review de novo, based uo underlying facts, reviewed for clear error. The Federal Circuit agreed with defedants that the specification did not enable the full scope of the asserted claims. The claims were correctly construed to include both mechanical and electronic sensors. However the specification did not enable the full scope of the claimed inventions -- only mechanical sensors were enabled. The Federal Circuit noted that the Figure purportedly showing the electronis sensor was very general, and was even labeled "conceptional". The Federal Circuit said that the mere boxed figure of the electronic sensor and the few lines of description fail to apprise one of ordinary skill how to make and use the electronic sensor. The Federal Circuit disagreed that the knowledge of one of ordinary skill in the art would supply the missing details, saying: "It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement." The Federal Circuit said that while the omission of minor details does not cause a specification to fail to meet the enablement requirement, where there is no disclosure of any specific starting material or any of the conductiosn under which a process can be carried out, undue experimentation is required. The Federal Circuit compared the case to Leibel Flarsheim where the patentee also sought for a broad disclosure, but then could not show that the claim was enabled for the broad scope of the claims.

A Patentee is Held to What He Declares During Prosecution of His Application

Gillespie v. DYWIDAG Systems International, USA, [2006-1382](September 6, 2007)[NEWMAN, Schall, Bryson] The Federal Circuit reversed the judgment of infringement of U.S. Patent No. 5,259,703, modifying the claim construction, and concluding under the modified construction, that literal infringement cannot be found.
SIGNIFICANCE: A patentee is held to what he declares during the prosecution of the application, even it it is not why the application is allowed.
BRIEF: The claim language at issue was directed to a collar "having an outer surface defining a drive head that accepts a driving mechanism for rotating and linearly translating said bolt". The patentee argued that the outside surface was shaped in order to distinguish over the prior art. However, the patentee was arguing that the claims should not be so limited because according to the reasons for allowance, that is not why the claims were allowed. The Federal Circuit found that the plain meaning of the terms supported the narrower construction, and further that this was the meaning that the patentee used when he argued the difference from the prior art. "The patentee is held to what he declares during the prosecution of his patent." Accordingly, the judgment of infringement was reversed.