Infringement Judgement Extended to Alter Egos of the Original Parties

Systems Division, Inc. v. Teknek Electronics, Ltd., [2007-1162](October 26, 2007)[MOORE, Michel, Newman] NON-PRECEDENTIAL The Federal Circuit affirmed the district court's decision adding parties to an infringement judgment under an alter ego theory.
SIGNIFICANCE: Judgment can't be defeated by fraudulent transfers to related entities who are alter egos of the original parties.
BRIEF: Two months after suit was filed, the original defendants formed a new entity in Scotland, and began moving assets to the newly formed entity. After a jury verdict against the defendant, the defendant filed an insolvency petition. California law allows parties to be added to a judgement if they alter egos of the existing defendants, and the newly joined defendants controlled the litigation. The Federal Circuit agreed that the added defendants were the alter egos of the original defendants, and that they had the opportunity to control the litigation through the newly added individual defendants where were the sole stockholders, directors, and officers of the companies. As to jurisdiction, the jurisdiction over the alter egos is the same as jurisdiction over the original parties,

Broad Scope of Claims + Unpredictability of Art = Lack of Enablement

Pharmaceutical Resources, Inc. v. Roxane Laboratories, Inc., [2007-1093-1134](October 26, 2007)[MOORE, Michel, and Cote] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment that the claims of U.S. Patent Nos. 6,593,318 and 6,593,320 were invalid under 35 USC 112 for lack of enablement.
SIGNIFICANCE: The broad scope of the claims and the unpredictability of the art meant that the claims were not adequately enabled. It is important to claim what was actually invented.
BRIEF: LOF: Whether the subject matter of a patent claim satisfies the enablement requirement under 35 USC 112 is a question of law, reviewed de novo, based on underlying facts, reviewed for clear error. In re Wands set forth the eight factors to determine enablement: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. The Federal Circuit observed that Par sought extremely broad claims in an art it acknowledged was unpredictable, quipping "The motto, 'beware of what asks for,' might be applicable here." The specifications of the patents in suit discusses the unpredictability of the art. Further, the claims were, as as the district court found, extraordinarily broad. The Federal Circuit found that the claims cover any surfactant in any concentration, the claims and the specification suggesting that the claims encompass hundreds of possible surfactants. The Federal Circuit found that the number of inoperative combinations is significant when assessing the experimentation that an ordinary skilled artisan would need to practice the claimed invention. The Federal Circuit found that taking into account the broad scope of the claims, and the unpredictability of the art, Par evidence of enablement failed to establish a genuine issue of material fact to defeat summary judgment. The disclosure of only three working examples utilizing only one new surfactant, was not an enabling disclosure commensurate with the entire scope of the claims. Furthermore the affidavits from experts were conclusory. Finally, the evidence of experiments by the inventor actually supported a finding of lack of enablement because of the number of unsuccessful experiments.

Lack of Written Description Makes Claims Interference Unpatentable to Junior Party

Adang v. Umbeck, [2007-1120](October 25, 2007)[BRYSON, FRIEDMAN, KEELEY] NON-PRECEDENTIAL The Federal Circuit affirmed the BPAI's determination that Adang's claims in interference were invalid for failure to comply with the written description requirement.
BRIEF: The claims in interference were directed to cotton plants with "selected foreign DNA". Umbeck complained that Adang's specification only supported plants transformed with insecticidal resistance genes, rather than "any" selected DNA. The BPAI agreed, finding the claims in interference unpatentable to Adang. On appeal Adang complained that there was no expert testimony about the meaning of "selected foreign DNA" to a person of ordinary skill in the art, but the Federal Circuit said that a patent can be held invalid for failure to meet the written description requirement solely on the language of the specification. The Federal Circuit also agreed with the BPAI that Adang failed to properly incorporate by reference the disclosure of a patent application mentioned, but not specifically incorporated by reference.

A Claim Referring to the Bayh-Dole Act Does Not Arise Under the Patent Laws

Wisconsin Alumni Research Foundation v. Xenon Pharmaceuticals, Inc., [2007-1026, 1033](October 24, 2007)[MAYER, GAJARSA, RESTANI] NON-PRECEDENTIAL The Federal Circuit transferred an appeal for lack of subject matter jurisdiction.
BRIEF: The Complaint in the action mentioned the Bayh-Dole Act, 35 USC 200. The Federal Circuit held that the "mere inclusion in Title 35 of the United States Code does not make a statute a patent law under which a claim may arise." Furthermore, the Federal Circuit found that the Complaint neither proposes that the Act creates the cause of action, or that their right to relief depends upon the resolution of a substantial question of patent law. The appeal was transferred to the Seventh Circuit.

Eleventh Amendment Immunity from Patent Infringement Claims is Alive and Well

Biomedical Patent Management Corporation v. State of California, Department of Health Services, [2006-1515](October 23, 2007)[O,MALLEY, Rader, Gajarsa] The Federal Circuit affirmed the district court's dismissal of the Complaint based on the State of California's sovereign immunity under the Eleventh Amendment.
SIGNIFICANCE: Eleventh Amendment immunity for states from patent infringement actions is alive and well.
BRIEF: Biomedical did not dispute that defendant, as a branch of the government of the state of California, was entitled to immunity under the Eleventh Amendment, but argued that the immunity had been waived by asserting claims in a prior lawsuit between the parties. Biomedical also argument that California's participation in other patent litigation constituted a general waiver. The Federal Circuit found that the voluntary dismissal of the earlier suit between the parties meant that the present suit was an entirely new action, to which any waiver of immunity in the first action would not apply.

A Compulsory License by Any Other Name Still Smells . . .The Same

Paice, LLC, v. Toyota Motor Corp., [2006-1610,-1631](October 18, 2007)[PROST, LOURIE, RADER] The Federal Circuit affirmed judgment that Toyota infringed claims 11 and 39 of U.S. Patent No. 5,343,970, that Toyota did not literally infringe claims 11 and 39 of the ’970 patent, claim 15 of the U.S. Patent No. 6,209,672, and claims 1 and 2 of U.S. Patent No. 6,554,088, and the district court’s imposition of an ongoing royalty arrangement that allows Toyota to continue practicing the invention of the ’970 patent in exchange for a set royalty payment.
SIGNIFICANCE: The Federal Circuit endorses on-going royalty in lieu of injunctions as a remedy a court can impose.
BRIEF: Regarding the infringement determination, the Federal Circuit rejected Toyota's attack on Paice's expert's testimony. The Federal Circuit also rejected Toyota's argument that Paice's criticism of the prior art limited the claims. Agreeing that criticism of the prior art can limit the scope of claims, as it did in SciMed Life Systems, Inc. v. Advanced Cardiovascular Systems, Inc., Gaus v. Conair Corp., and Dawn Equip. Co. v. Ky. Farms Inc., the Federal Circuit found that Paice distinguished the prior art in the same way Toyota's product was different from the prior art, and thus the criticism of the prior art did not distinguish Toyota's products, which like the claims relied upon a microprocessor controller.
Regarding the denial of the injunction, LOF: "The decision to grant or deny permanent injunctive relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion." As to the on-going royalty, Paice complained that its was beyond the statutory authority of the court, and in any event should be determined by the jury. The Federal Circuit first explained that an on-going royalty was different from a compulsory license, which by definition was open to all comers. The Federal Circuit began with 35 U.S.C. § 283, which provides in relevant part: "The several courts having jurisdiction of cases under this title may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable." The Federal Circuit characterized the issues as whether an an order permitting use of a patented invention in exchange for a royalty is properly characterized as preventing the violation of the rights secured by the patent. The Federal Circuit said that under some circumstances, awarding an ongoing royalty for patent infringement in lieu of an injunction may be appropriate. cited Shatterproof Glass Corp. v. Libbey–Owens Ford Co. The Federal Circuit said:

In most cases, where the district court determines that a permanent injunction
is not warranted, the district court may wish to allow the parties to negotiate
a license amongst themselves regarding future use of a patented invention before
imposing an ongoing royalty. Should the parties fail to come to an agreement,
the district court could step in to assess a reasonable royalty in light of the
ongoing infringement.

While not disapproving of an on-going royalty, the Federal Circuit was critical of the way the amount was determined: "the district court’s order provides no reasoning to support the selection of $25 per infringing vehicle as the royalty rate. Thus, this court is unable to determine whether the district court abused its discretion in setting the ongoing royalty rate." Accordingly, the Federal Circuit remanded the case for the limited purpose of having the district court reevaluate the ongoing royalty rate.

Federal Circuit Has Appellate Jurisdiction Over Malpractice Claim Based Upon Claim Scope

Immunocept, LLC v. Fulbright & Jaworski, LLP, [2006-1432](October 15, 2007)[MICHEL, Lourie, Rader] The Federal Circuit held that because the claim scope determination involved in the malpractice claim presents a substantial question of patent law it had jurisdiction, and affirmed that Immunocept’s malpractice claim is barred by the statute of limitations.
BRIEF: The Federal Circuit held that it had jurisdiction over an appeal of a malpractice action where the alleged malpractice was the narrowness of the scope of the claims. The Federal Circuit affirmed the district court's determination that the malpractice claim was barred by statute of limitations, since the plaintiff knew or should have know about the alleged defect in their patent when they consulted another patent attorney to examine and expand the scope of their protection.

Plaintiff Failed to Show Jurisdiction; Case Dismissed

F & G Research, Inc. v. Paten Wireless Technology, Inc., [2007-1206](October 15, 2007)[SCHALL, BRYSON, and MOORE] The Federal Circuit affirmed the dismissal of a patent infringement suit for lack of personal jurisdiction.
BRIEF: Plaintiff failed to show acts of infringement in Florida. Because the district court correctly held, based on the evidence before it, that it lacked personal jurisdiction over Paten, it properly dismissed the complaint.

Patent Malpractice CanConfer Federal Subject Matter Jurisdiction

Air Measurement Technologies, Inc. v. Akin Gump Strauss Hauer & Feld, L.L.P.,
[2007-1035](October 15, 2007)[MICHEL, Lourie, Rader] The Federal Circuit affirmed the district court's decision not to remand a malpractice case that raised a substantial question of patent law.
BRIEF: In the course of enforcing patents it had obtained, AMT discovered a number of alleged errors committed by defendants, including: that their attorney (1) failed to file the initial patent application within the one year ‘on sale bar’ of 35 U.S.C. § 102(b); (2) failed to disclose two prior patents and other facts during the prosecution of the patent applications; (3) failed to file in a timely fashion the application that resulted in the ’771 patent, which contains the broadest claims to the invention; (4) miscalculated the settlement damages in the prior litigation; (5) failed to inform AMT of his mistakes despite his fiduciary duty to do so; (6) failed to inform AMT adequately of the existence of the prior litigant’s defenses of on sale bar and inequitable conduct; and (7) made misrepresentations to AMT. The Federal Circuit said that Because the underlying suit here is a patent infringement action against SCBA defendants, the district court will have to adjudicate, hypothetically, the merits of the infringement claim. Because proof of patent infringement is necessary to show AMT would have prevailed in the prior litigation, patent infringement is a "necessary element" of AMT’s malpractice claim and therefore apparently presents a substantial question of patent law conferring § 1338 jurisdiction.

The Specification is Directed to a Person of Ordinary Skill -- I.e. a Person of Ordinary Creativity, and Not an Automaton

Allvoice Computing PLC. v Nuance Communications, Inc., [2006-1440](October 12, 2007)[RADER, Newman, Gajarsa] The Federal Circuit reversed summary judgment in favor or Nuance that Allvoice's patent was invalid as indefinite and failed to disclose the best mode of practicing the claimed invention.
SIGNIFICANCE: 1. Indefiniteness means that the bounds of the claim cannot be understood by a person of ordinary skill in the art -- a person of ordinary creativity and not an automaton. 2. The best mode requirement only applies to the claimed invention.
BRIEF: The District Court, based upon a claim construction by a court-appointed expert, found that means-plus-function element in the claims were indefinite, and further that the patentee failed to disclose the best mode. LOF: "The review of indefiniteness under 35 U.S.C. § 112, paragraph 2, proceeds as a question of law without deference." The test for definiteness asks whether one skilled in the art would understand the bounds of the claim when read in light of the specification. Under 35 U.S.C. § 112 ¶ 2 and ¶ 6, a means-plus-function clause is indefinite if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim. The Federal Circuit found that the district court added a limitation beyond the claims as a result of emphasizing a portion of the prosecution history beyond its true significance. As properly construed, the Federal Circuit found that the specification does contain structure corresponding to the "means". Interestingly, the Federal Circuit cited the abilities of a person of ordinary skill espoused in KSR (a person of ordinary skill is also a person of ordinary creativity, not an automaton) in finding that a person of ordinary skill would understand the specification.
As to best mode, the Federal Circuit said that the district court held the '273 patent invalid for deliberate concealment of the best mode – a requirement of 35 U.S.C. § 112 ¶ 1. A careful reading of the claim, however, shows that the alleged undisclosed best mode is not a best mode of practicing the claimed invention. To the contrary, the alleged best mode subject matter falls outside the scope of claim, thus the alleged best mode is not a way of practicing the claimed invention at all. To apply the best mode standard, a court must first determine whether, at the time the patent application was filed, the inventor had a best mode of practicing the claimed invention. This determination turns on the inventor's own subjective beliefs. The second part of the analysis asks has the inventor 'concealed' his preferred mode from the public?

KSR Mandates Common Sense Approach that Makes Reexamination Claim Obvious

In re Translogic Technology, Inc., [2006-1192](October 12, 2007)[RADER, Mayer, Prost] The Federal Circuit affirmed the BPAI's decision affirming the rejection of U.S. Patent No. 5,162,666 in a Reexamination proceeding.
SIGNIFICANCE: KSR mandated consideration of common knowledge and common sense.
BRIEF: LOF: "Determination of obviousness under 35 U.S.C. § 103 is a legal conclusion based on underlying facts." Words of a claim are generally given their ordinary and customary meaning. The Federal Circuit found that one of the claims at issue provided context for construing the claim terms. The claim used the phrases "coupled to" and "coupled to receive". The Federal Circuit found that the former defines a connection, while the latter doe snot specify a particular connection. The Federal Circuit thus concluded that "coupled to receive" meant "capable of receiving". Having construed the claims, the Federal Circuit turned to obviousness, and applying the "common sense" approach of KSR to extend the use of customary knowledge in the obviousness equation. The Federal Circuit said that an obviousness analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court to take account of the inferences and creative steps that a person of ordinary skill in the art would employ. The Federal Circuit concluded that a person of ordinary skill in the art would have recognized the value of a know element, to modify the prior art. Thus the Federal Circuit affirmed BPAI that the claimed invention was obvious.

Exclusive Licensee Can Pursue Appeal

Schwarz Pharma, Inc. v. Paddock Laboratories. Inc., [2007-1074] (October 12, 2007)[Lourie, Michel, Moore] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 4,743,450, in favor of Paddock, because prosecution history bars resort to the Doctrine of Equivalents.
SIGNIFICANCE: 1. The exclusive licensee can pursue an appeal without the patent owner; 2. Any narrowing amendment presumptively bars equivalents, and the burden remains on the patent owner to show why estopple does not apply
BRIEF: Paddock filed an ANDA certifying the claims of the '450 patent were invalid, and the owner Warner, and its exclusive licensee Schwarz, sued for infringement. The district court determined as a matter of law that arguments made by the inventors and amendments to each of the independent clams in response to an obviousness rejection by the examiner during the prosecution of the application leading to the ’450 patent did not result in argument-based estoppel, but did result in amendment-based estoppel. Paddock challenged Schwarz's standing to appeal without Warner, but the Federal Circuit held that when a patentee joins an exclusive licensee in bringing a patent infringement suit in a district court, the licensee does not lose standing to appeal even though the patentee does not join in the appeal.
Schwarz argued that it never claimed compositions and processes involving MgO, and thus there could be no surrender when the claims were amended. As the Supreme Court said in Festo: A patentee’s decision to narrow his claims through amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim. There are some cases, however, where the amendment cannot reasonably be viewed as surrendering a particular equivalent. The equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question; or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. In those cases the patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence. The Federal Circuit held that the original claims did recite a metal containing stabilizer, in claim 1, and an alkaline earth metal salt, in claim 16. Warner-Lambert thus presumptively surrendered subject matter encompassed by those terms when it amended those claims and deleted those broader terms. The Federal Circuit concluded that, because MgO was known as a stabilizer in the field of pharmaceutical compositions, Schwarz has failed to rebut the presumption of surrender by demonstrating that MgO was not a foreseeable equivalent.

Filing of Second ANDA was not Enjoined in Prior Suit, and Thus was not Contempt

Abbott Laboratories v. Torhpharm, Inc., [2007-1019] (October 11. 2007)[MICHEL, Dyk, Otero] The Federal Circuit reversed a contempt finding against because the conduct at issue was not within the express terms of the injunction.
SIGNIFICANCE: If the filing of a second ANDA is not specifically enjoined, then the filing of a second ANDA is not contempt.
BRIEF: After losing a prior infringement action, defendants filed a seceond ANDA, and Abbott brought a contempt action. The Federal Circuit rejected defendant's argument that the infringement by filing an ANDA was only a "technical" infringement. The Federal Circuit also rejected the challenge that considering the infringement question in a contempt proceeding was inappropriate. However, the Federal Circuit said that before entering judgment in a contempt proceeding, the district court must address two questions: (1) whether a contempt proceeding is appropriate (i.e., is the accused product more than a colorable different from the previously adjudicated product), and (2) whether the accused product infringes the claims of the asserted patent. The Federal Circuit found that holding a contempt proceeding was within the district court's discretion, and turned to the question of whether the finding of contempt was appropriate LOF: As with any other legal instrument, interpretation of the terms of an injunction is a question of law we review de novo. The Federal Circuit held that the finding of contempt was in error, because defendant did not make, use or sell in the U.S: "there is no evidence here that Apotex actually did so. Rather, it is undisputed that Apotex’s actions in attempting to design around the Abbott patent claims occurred outside the United States. " The Federal Circuit noted that the filing of the ANDA was an infringement, but not one prohibited by the injunction.

State Waived Sovereign Immunity in Forum Selection Clause

Baum Research and Development C0., Inc., v. University of Massachusetts at Lowell, [2006-1330](October 10, 2007)[NEWMAN, Friedman, Moore] The Federal Circuit affirmed the district court's determination that the University of Massachusetts at Lowell waived its Eleventh Amendment immunity by expressly agreeing to federal jurisdiction in a patent license agreement.
BRIEF: The Eleventh Amendment limits the judicial authority of the federal courts and bars unconsented suit against a state in federal court. The license agreement provided: "This Agreement will be construed, interpreted and applied according to the laws of the State of Michigan and all parties agree to proper venue and hereby submit to jurisdiction in the appropriate State or Federal Courts of Record sitting in the State of Michigan." The Federal Circuit agreed that this was specific enough to constitute a waiver, and rejected the University's claim that it did not have authority to waive sovereign immunity.

Inadvertance Can Carry An Applicant Only So Far; 15 Patents Found Unenforceable

Nilssen v. Osram Sylvania, Inc., [2006-1550](October 10, 2007)[LOURIE, Mayer, Linares] The Federal Circuit found no abuse of discretion, and affirmed unenforceability of all fifteen of Nilssen's patents in suit.
SIGNIFICANCE: Failure to comply with the MPEP can make a patent unenforceable!
QUOTE: "[T]he patent process is complicated one, one that require both technical and legal credentials in order to effectively prosecute patents for inventors.
BRIEF: Nillsen prosecuted his own applications because he felt that his understanding of the subject matter was better than that of any attorney. In the course of prosecuting the applications Nillsen failed to disclose that declarant in a declaration submitted in support of the applications had a financial interest in the application, failed to pay large entity fees while some of the patents were licensed to a large entity, and failing to disclose on-going litigation to the PTO as required by the MPEP. The Federal Circuit reviews a district court's finding of inequitable conduct for abuse of discretion. An abuse of discretion occurs when the court's decision (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous construction of the law; (3) is based on clearly erroneous findings of fact; (4) there is no evidence in the record on which the court could have rationally based its decision.
The Federal Circuit found no abuse of discretion in holding patents invalid for failing to disclose the relationship between the affiant and the pending applications, noting that "it is material to an examiner's evaluation of the credibility and content of affidavits to know of any significant relationship between an affiant and an applicant." The Federal Circuit also found no abuse of discretion in finding patents unenforceable where Nillsen had entered into agreements concerning the patents with large entities, but continued to pay the small entity maintenance fee. The Federal Circuit relied on the district court's finding of an obvious intent to mislead, and a finding that Nilsson's exculpatory statements were not credible. The Federal Circuit also found not abuse of discretion in finding patents unenforceable for improper priority claims, even in the absence of any reliance by the Examiner, finding a misrepresentation that would not have immediately affected patentability is still material. The Federal Circuit found no abuse of discretion in finding patents unenforceable for failing to disclose ongoing litigation relating to the subject matter of application, in violation of MPEP 2001.06(c)(c). Finally, the Federal Circuit found no abuse of discretion in holding patents unenforceable for failure to disclose prior art.
The Federal Circuit felt compelled to add a closing comment that while each of the defenses raised by Nilssen to the inequitable conduct allegations was not per se unreasonable when considered in isolation, the case presents such a collection of problems including "repeated attempts to play fair and square with the patent system." The Federal Circuit conceded that "[m]istakes do happen, but that inadvertence can carry an applicant only so far." Mr. Nilssen thought he didn't need professional patent help. "The result of this case, regrettably, proves that he was wrong."

No Relief for Applicant Where Counsel Failed to Defend Opposition

Fischer v. Anderson, [2007-1152](October 10, 2007)[SCHALL, Bryson, Moore] NON-PRECEDENTIAL The Federal Circuit affirmed the TTAB Order sustaining the opposition against Anderson's application, and denying her registration on the mark CHLOE VEVRIER.
BRIEF: Fischer filed a motion for judgment on the pleadings, to which Anderson failed to respond. Anderson then failed to respond to the TTAB Order to show cause why judgment should not be entered against her. The Board entered judgment against her. With new counsel, Fischer filed a motion for relief from the judgment, pursuant to FRCP 60, blaming prior counsel. The TTAB could not find excusable neglect, imputing Anderson's counsel's actions against her. The Federal Circuit agreed that Anderson was bound by the conduct of her prior counsel. The Federal Circuit also found that there was no showing of extraordinary circumstances prior to the entry of the judgment against Anderson.

Broad Scope of Claim to "Any Plant Cell" Not Enabled Where Technology Did Not Work with Any Plant Cell

Monsanto Co. v. Syngenta Seeds, Inc., [2006-1472](October 4, 2007)[RADER, Gajarsa, O'Mally] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patents Nos. 5,538,880 and 6,013,863, and held that claims 1, 5 and 6 of U.S. Patent No. 4,940,835 invalid under 35 U.S.C. § 112 for lack of enablement.
SIGNIFICANCE: 1 All steps of method must be performed during patent term for infringement. 2. Broad claim to any plant cell not enabled where technology did not apply to all plant cells.
BRIEF: The District Court granted Syngenta’s motions for summary judgment finding the Lundquist patents not infringed because the patent holder (Monsanto through Dekalb) performed the initial steps of the claimed processes. The court also found claims 1, 5 and 6 of the '835 patent invalid for lack of enablement. The Federal Circuit rejected Monsanto's argument that Syngenta infringed the dependent claims, even if if did not infringe the independent claims, citing its decision in Wahpeton Canvas Co., Inc. v. Frontier, Inc., 870 F.2d 1546, 1552 (Fed. Cir. 1989), where is said "One may infringe an independent claim and not infringe a claim dependent on that claim. The reverse is not true. One who does not infringe an independent claim cannot infringe a claim dependent on (and thus containing all the limitations of) that claim." The Federal Circuit said there was no infringement because the steps of the method were performed by the patentee, not the defendant, and were performed before the issuance of the patent. The Federal Circuit said infringement of a multi-step method claim cannot lie by the performance of a single step after issuance of the patent when the initial steps were performed prior to issuance.
LOF: As to enablement, this court reviews determinations of enablement under 35 U.S.C. § 112, first paragraph, without deference. Factual issues underlying enablement are reviewed for clear error. The Federal Circuit said that The district court correctly construed claim 1 of the '835 patent to require the claimed gene to function in any plant cell, including both dicots and monocots. The Federal Circuit observed that the '835 patent was filed before transformation of monocot cells was possible. Therefore, those skilled in the art could not transform a monocot plant cell as of the filing date of the patent application. Without the ability to transform a monocot cell, one skilled in the art could not determine whether the plant gene could carry out the claimed functions and thus fall within the scope of the claim.