Description Does Not Have to be In Haec Verba, But It Does Have to Show Inventor was in Possession of the Invention

In re Lew, [2007-1196](November 29, 2007)[GAJARSA, Newman, Linn] The Federal Circuit affirmed the BPAI's affirmance of the final rejection of the sole claim pending.
SIGNIFICANCE: The test of new matter or compliance with written description is whether a person of ordinary skill would know that the inventor was in possession of the subject matter.
A specific reference to what the invention is in the specification will limit the scope.
BRIEF: Lew cancelled all of the original claims and presented a new claim 19 and submitted a substitute specification. The substitute specification was essentially identical to the prior specification, except that each use of the term "ball bearings" was replaced with "curved members," a term not previously used anywhere in the application, and references to "pockets" were replaced with "slots." The PTO examiner objected to the substitute written description and rejected the new claim on the grounds that the amendments introduced new matter into the application that was not supported by the initial disclosure. The Board affirmed.
The Federal Circuit said that we have long explained that the written description requirement of § 112 requires the application to "convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention." The claimed subject matter need not be described "in haec verba" in the original specification in order to satisfy the written description requirement. Rather, "the test . . . is whether a person of ordinary skill in the art would recognize that the applicant possessed what is claimed in the later filed application as of the filing date of the earlier filed application." LOF: Whether an amendment violates the written description requirement of 35 U.S.C. § 112 and the new matter prohibition of 35 U.S.C. § 132 are questions of fact. The Federal Circuit noted that
there was no language in the original written description that would suggest that using “ball bearings” was only one specific embodiment of Lew’s invention. To the contrary, the Federal Circuit found that each time “the invention” was described, including in the summary of the invention and the abstract, it was stated to include “ball bearings.”
The Federal Circuit concluded that substantial evidence supports the Board’s determination that Lew’s amendments to replace the term “ball bearing” with the broader term “curved member” were not supported by the initial disclosure, and, therefore, the examiner did not err in rejecting claim 19 under § 112, first paragraph, and affirmed the BPAI.

Construing a Claim Consistent with the Specification without Importing Limitations is, Like Beauty, in the Eye of the Beholder

Strumbo v. Ameristep Corp., [2007-1205](November 28, 2007) [MOORE, Schall, Bryson] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 5,628,338 on a portable and collapsible hunting shelter.
SIGNIFICANCE: Where the claims and specification do not provide guidance on the function, way, or result relevant to the invention, a court must look to a person of oridnary skill in the art.
All of the terms in a claim must be given meaning.
Construing a claim consistent with the specification and importating limitations is, like beauty, in many cases in the eye of the beholder.
BRIEF: The only claim term at issue is "a closable vertical opening," which is a limitation in all nine claims of the ‘338 patent. When construing claims, a court must begin by looking to the words of the claims themselves to define the scope of the patented invention. Words of a claim "are generally given their ordinary and customary meaning" as understood by a person of ordinary skill in the art in question. For this reason, claims must be read in view of the specification, of which they are a part. Thus, the specification is the single best guide to the meaning of a disputed term. However, in examining the specification for proper context, however, this court will not at any time import limitations from the specification into the claims.

The Federal Circuit said that construing the word "vertical" as referring to merely the orientation of the opening would render the phrases "along one of said side edges" and "along one vertical corner of said structure" superfluous, a methodology of claim construction that this court has denounced. [COMMENT: ISN'T THE FEDERAL CIRCUIT MAKING THE WORD VERTICAL SUPERFLUOUS INSTEAD?] The Federal Circuit said that only if “vertical” refers to the shape of the opening instead of redundantly to the orientation of the opening would each claim term have a distinct meaning. The Federal Circuit said the specification of the ‘338 patent inherently requires a slit-like shape for the opening, noting a "linear slit is the only fathomable shape of an opening with the described characteristics." Further the Federal Circuit said "There is nothing in the specification to suggest that the patentee contemplated that any other shape of opening could work with this invention. " The Federal Circuit concluded that the district court correctly interpreted the claims in the context of the claim language and the specification.

The Federal Circuit also affirmed summary judgment of non-infringement under the Doctrine of Equivalents. Stumbo failed to provide particularized proof of the equivalence, while defendant offered explanations of how the products different in function, way, and result. While Stumbo claimed that the differences were not relevant to the claimed features, the Federal Circuit found that whenthe claims and specification of a patent are silent as to the result of a claim limitation, as they are in the ‘338 patent, it should turn to the ordinarily skilled artisan. THe only proffered proof was that of defendant as to how the results were different.

Because Prosecution is a Negotiation, Prosecution Disclaimer Must Be Clear and Unambiguous

Elbex Video, Ltd. v. Sensormatic Electronics Corp., [2007-1097](November 28, 2007)[MOORE, Dyk, Cote] The Federal Circuit affirmed in part, reversed in part and remanded the district courts determination that Sensormatic’s accused closed circuit television (CCTV) systems do not infringe claim 1 of United States Patent No. 4,989,085.
SIGNIFICANCE: A prosecution disclaimer must be clear and unambiguous.
BRIEF: The district court found that the inventor limited the "receiving means" that receives the first code signal to a "monitor" that receives the first code signal. The Federal Circuit said that implicit in its determination is a finding that the inventor clearly and unmistakably surrendered any claim scope between the "receiving means" that receives first code signals as expressly recited in the claims, and a "monitor" that receives first code signals. The Federal Circuit disagreed. First, the Federal Circuit found that statement in the prosecution history is unsupported by even a shred of evidence from the specification. Second, when read in isolation, the statement in the prosecution history could be argued to be a disclaimer, but when the prosecution history as a whole is considered, the inventor’s response to the PTO is not as clear.
Third, reading the specification and remainder of the intrinsic record as a whole would lead those skilled in the art to the conclusion that the inventor’s statement was not a clear and unmistakable surrender of claim scope. The Federal Circuit said: "For a prosecution statement to prevail over the plain language of the claim, the statement must be clear and unmistakable such that the public should be entitled to rely on any 'definitive statements made during prosecution.'"
The Federal Circuit remanded this aspect of the case, but did affirm summary judgment of some of the systems on other grounds.

Federal Circuit Declines to Infer What Applicant Should have Made Explicit in the Claims

In re Chatani, [2007-1150] (November 19. 2007) [MAYER, JACOBS, PROST] NON-PRECEDENTIAL The Federal Circuit affirmed the BPAI that the claims at issued were anticipated by a reference because the steps in the method claims were not limited to any particular order.
SIGNIFICANCE: The order of the steps in a method claim is only limited if the claim as properly interpreted says so.
BRIEF: During prosecution, claims must be given their “broadest reasonable interpretation.” The claim language on its face does not require sequential performance, and the Federal Circuit declined to infer what should have been made explicit in the claim during prosecution. The Federal Circuit said that to arrive at applicant's proposed construction would require improperly reading limitations into the claim. LOF: "Anticipation is a question of fact." Comparing the broadly construed claim with the prior art, the Federal Circuit concluded
there was substantial evidence to support the board’s anticipation determination.

Likelihood of Success and Difficulty to Measure Damages or Collect Them Supports Preliminary Injunction

Canon, Inc. v. GCC International Ltd., [2006-1615](November 16, 2007)[GARBIS, Michel, Dyk] The Federal Circuit affirmed the grant of a preliminary injunction against defendant's sale of accused printer toner cartridges.
SIGNIFICANCE: Repair versus reconstruction is determined by the relative value of the replacement parts and the parts not replaced.
BRIEF: The Federal Circuit does not encourage interlocutory appeals from claim construction decisions. However, sometimes early construction of terms is necessary to resolve a motion for a preliminary injunction. At issues was whether the claim was limited to the replacement cartridges themselves or to a combination including the replacement cartridges. The Federal Circuit found that on the present record there was a reasonably debatable question of whether the claim should be construed to cover the cartridge alone or the cartridge as part of a combination. However, the Federal Circuit said that even if the claim were construed to cover the cartridge as part of a combination, Canon would still have a substantial likelihood of success.
If Claim 58 were construed as covering a combination, it is unlikely that the covered combination would include the toner cartridge and the entirety of the printer or fax machine since most of the components of such machines are not claimed. In respect to such a combination, it is apparent that the replacement of the toner cartridge part of the combination would not constitute a permissible repair because the extent of the refurbishment would be disproportionate to the overall value of the parts that were not replaced. Thus the Federal Circuit concluded that Canon had established a substantial likelihood—albeit not a certainty—of success. Regarding the balance of harm, the Federal Circuit said that due to the difficulty (if not impossibility) of determining the damages resulting from price erosion and loss of market share, an award of money damages would not be sufficient, and to the extent that money damages against Defendants were awarded, there appears to be a reasonable basis for the district court’s finding that there would be little probability that Canon could effect the collection of a money judgment. As to the question of public interest, the Federal Circuit noted the public benefits from lower prices resulting from free market competition, but the public also has an interest in the enforcement of patents, so public interest favors neither side.

Prior Invention Requires Proof of Reduction to Practice

Z4 Technologies, Inc., v. Microsoft Corporation, [2006-1638](November 16, 2007)[LINN, Lourie, Bucklo] The Federal Circuit affirmed the district court's denial of Microsoft’s motion for judgment as a matter of law ("JMOL") following a jury trial in which the jury found that Microsoft had infringed z4's U.S. Patents Nos. 6,044,471 and 6,785,825.
SIGNIFICANCE: A patent challenger is not entitled to an instruction that the presumption of validity is easier to overcome with prior art not considered by the PTO.
BRIEF: While Microsoft persuaded the Federal Circuit that the construction of "USER" was incorrect, the Federal Circuit nonetheless found sufficient evidence to support the jury verdict of infringement. On validity, Microsoft argued that it was the prior inventor, which required Microsoft to establish an earlier reduction to practice. In order to establish an actual reduction to practice, the inventor must prove that: (1) he constructed an embodiment or performed a process that met all the limitations and (2) he determined that the invention would work for its intended purpose. However, because of conflicting testimony about the effectiveness of Microsoft's earlier product, the Federal Circuit found sufficient evidence to support a jury verdict that Microsoft had not reduced the invention to practice. The Federal Circuit also found no error in the district court's refusal to instruct the jury that the presumption of validity is easier to overcome when prior art was not considered by the Patent and Trademark Office.

That's Not Fraud, Its Lawyer Argument

Apotex Corp. v. Merck & Co., [2006-1405](November 16, 2007)[NEWMAN, Rader, Prost] The Federal Circuit affirmed summary judgment in favor of Merck & Co. in an action by Apotex to set aside a judgment on charges of fraud, pursuant to Federal Rule of Civil Procedure 60(b)(3).
SIGNIFICANCE: Fraud upon the court requires that there was a material subversion of the legal process.
BRIEF: Apotex sued Merck for patent infringement, but the patent was found invalid under 35 USC 102(g). It was generally undisputed that Merck had invented and practiced the accused process well before Apotex had done so, but Apotex argued that it was entitled to a patent because Merck had suppressed or concealed the invention and practiced it in secret, and therefore that Merck infringed the Apotex patents. Based upon information obtained in another case, Apotex alleged that the invalidity verdict was obtained by fraud. The district court found that the allegedly fraudulent testimony was either not inconsistent or was not testimony, but mere lawyer argument, and rejected Apotex' challenge. Fraud upon the court requires that there was a material subversion of the legal process such as could not have been exposed within the one-year window; it requires rigorous proof, as do other challenges to final judgment, lest the finality established by Rule 60(b) be overwhelmed by continuing attacks on the judgment. The Federal Circuit agreed with the district court's analysis that no fraud had occurred.

District Court Had No Authority to Transfer Case to Court of Federal Claims

Connell v. KLN Steel Products Company, Ltd., [2007-1083](November 15, 2007)[MOORE, Michel, Rader] NON-PRECEDENTIAL The Federal Circuit vacated the transfer of KLN's affirmative defense under 28 U.S.C. § 1498(a) to the Court of Federal Claims.
BRIEF: Connell sued KLN for infringement of U.S. Patent No. 6,611,973 in providing bunk beds to the U.S. government. KLN contended that the United States had authorized and consented to the alleged infringement, exculpating KLN from any liability under 28 U.S.C. § 1498(a). KLN moved for summary judgment on this defense, and the district court denied that motion but transferred the case to the Court of Federal Claims. The Federal Circuit concluded that that neither § 1404(a) nor § 1631 provides a proper basis for the district court’s transfer to the Court of Federal Claims., and that United States was not an indispensable party to Connell’s suit against KLN. Therefore, it vacated the district court’s order transferring this case to the Court of Federal Claims and remand for further proceedings consistent with this opinion.

Exclusive Field of Use Licensee Can't Sue in Its Own Name

International Gamco, Inc. v. Multimedia Games, Inc., [2007-1034](October 15, 2007)[RADER, Friedman, Moore] The Federal Circuit reversed the district court's denial of defendant's motion to dismiss, finding that an enterprise licensee did not have standing to bring an infringement action.
SIGNIFICANCE: An exclusive field of use licensee does not have standing to sue alone.
BRIEF: The district court concluded that Gamco held an "exclusive enterprise" license – a hybrid between a territorial license and a field of use license: "Rather than being restricted only to a geographic area or only to specific kinds of conduct Gamco’s rights are restricted to the operations of the New York State Lottery, an enterprise of the State of New York." With that characterization, the district court concluded that an exclusive enterprise licensee has standing to file suit in its own name. The Federal Circuit said that an exclusive licensee has standing to sue in its own name, without joining the patent holder, where “all substantial rights” in the patent are transferred. In such a case, the “exclusive licensee” is effectively an assignee. A territorial exclusive licensee does have standing to sue. The Federal Circuit then considered whether a field of use licensee had standing to sue. The Federal Circuit considered in Pope Manufacturing Co. v. Jeffery Manufacturing Co., 144 U.S. 248 (1892), as indicating that an exclusive field-of-use licensee did not have standing to sue. In Pope, the Supreme Court focused on conflicting claims against accused infringers and among the licensees. To alleviate this risk, the Federal Circuits’s prudential standing requirement compels an exclusive licensee with less than all substantial rights, such as a field of use licensee, to join the patentee before initiating suit. The Federal Circuit reversed the denial of defendant's motion to dismiss.

Court of Appeals Lacks Jurisdiction to Consider Appeal of Remand Based Upon Declining Suppmental Jurisdiction

HIF Bio, Inc. v. Yung Shin Pharmaceuticals Industrial Co., Ltd., [2006-1522](November 13, 2007)[GAJARSA, Michel, Holderman] The Federal Circuit dismissed the appeal for lack of jurisdiction.
SIGNIFICANCE: A remand based on declining supplemental jurisdiction is not appealable.
BRIEF: CTI asserted on appeal that the district court’s remand order was improper because the plaintiffs’ remanded claims raise a substantial question of federal patent law—inventorship.
The Federal Circuit said that a remand based on declining supplemental jurisdiction must be considered within the class of remands described in § 1447(c) and thus barred from appellate review by § 1447(d)\, and dismissed the appeal.

Incorporation by Reference was Incomplete and Results in Grandparent Application Invalding Patent

Zenon Environmental, Inc. v. United States Filter Corporation, [2006-1266,-1267](November 7, 2007)[NEWMAN, Lourie, Linn] The Federal Circuit reversed the district court's holding that U.S. Patent No. 6,620,319 was not anticipated, and did not reach the district court's decision that the patent was not infringed.
SIGNFICANCE: Incorporation by reference must be complete or chain of continuity is broken.
TIP: Do not delete subject matter from a parent application. Even a more complete incorporation by reference (e.g. "incorporated by reference in its entirety") could be found impropery for failure to particularly identify incorporated subject matter being incorporated.
BRIEF: At issued was whether the or not the '319 patent was entitled to priority of the '373 patent. If not, then intervening disclosures would anticipate the '319 patent. The priority claim depended upon the continuity of disclosure, and the patentee maintained that although the needed disclosure was omitted from the intervening patents, it was incorporated by reference. The Federal Circuit said that incorporation by reference provides a method for integrating material from various documents into a host document by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein. To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents. LOF: Whether material has been incorporated by reference into a host document, and the extent to which it has been incorporated, is a question of law. In determining whether material has been incorporated by reference, the standard of one reasonably skilled in the art should be used to determine whether the host document describes the material to be incorporated by reference with sufficient particularity.
The Federal Circuit said that in order to gain the benefit of the filing date of an earlier application under 35 U.S.C. § 120, each application in the chain leading back to the earlier application must comply with the written description requirement of 35 U.S.C. § 112. Incorporation by reference provides a method for integrating material from various documents into a host document by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein. To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents." Id. (emphases added). The language at issue stated: "Further details relating to the construction and deployment of a most preferred skein are found in the parent U.S. Pat. No. 5,639,373, and in Ser. No. 08/690,045, the relevant disclosures of each of which are included by reference thereto as if fully set forth herein. " The Federal Circuit observed that the plain language expressly limits the incorporation to only relevant disclosures of the patents, indicating that the disclosures are not being incorporated in their entirety. Moreover, the Federal Circuit said that the subject matter incorporated was limited to the construction and deployment of a vertical skein, and determined that a person of ordinary skill in the art would not consider this sufficient to include the subject matter to support the claims at issue.
In dissent, Judge Newman complains that this case adds new requirements to priority claims under Section 120 that does nothing but add "costs and pitfalls to inventors, as they attempt to walk new judicial tightropes"

Pro Se Appellant Failed to Identify Reversible Error, Demoted to Amateur Se

Hutchins v. Zoll Medical Corporation, [2007-1396](November 6, 2007)[MAYER, LOURIE, PROST] The Federal Circuit affirmed the dismissal of Hutchins pro se complaint, finding that appellant failed to identify any reversible error.
BRIEF: Pro se Plaintiff screwed up, tried again, and had his second case dismissed as res judicata.

The Doctine of Equivalents Can Apply to Claim Ranges

U.S. Philips Corporation v. Iwasaki Electric Co. Ltd., [2007-1117](November 2, 2007) [LINN, Newman, Lourie] The Federal Circuit found that Iwasaki was properly on notice of potential infringement before the filing of the complaint, and reversed the district court’s determination that per-filing notice was inadequate. The Federal Circuit also affirm the district court’s claim construction, and entry of partial summary judgment of no literal infringement, but vacated the partial summary judgment of noninfringement under the doctrine of equivalents, and remanded.
BRIEF: Philips failed to mark its products with the patent number, but Philips parent company sent Iwasaki notice of infringement. Iwasaki contested whether this letter was sufficient, since it was not from the patent owner. The Federal Circuit said when there has been a failure to mark a patented product, 35 U.S.C. § 287(a) forecloses damages for infringement except on proof that the infringer was notified of the infringement. Actual notice under § 287(a) requires the affirmative communication of a specific charge of infringement by a specific accused product or device. Actual notice requirement of § 287(a) also demands notice of the patentee’s identity as well as notice of infringement," and that the notice must arise by "an affirmative act on the part of the patentee which informs the defendant of infringement." The Federal Circuit concluded, however that notice was sufficient because: the front page of the ’181 patent, which was enclosed with the letter, correctly identifies "U.S. Philips Corporation, New York, N.Y." as the assignee. The Federal Circuit conceded that although the assignation printed on the face of a patent is not a conclusive indication of the patent’s current ownership, when the information printed on the patent is correct, it is enough to put an accused infringer on notice of the patentee’s identity. The Federal Circuit was also not concerned that letter did not purport to come from the patentee because it is undisputed that Philips International B.V. had the ultimate responsibility for licensing and enforcement of the ’181 patent.
Philips also challenged the construction of the claim limitation "between 10-6 and 10-4 μmol/mm3", which Philips claimed was merely a range of orders of magnitude, not a range of more-precise numbers. However the Federal Circuit agreed with the district court's interpretation that this meant "between 1 × 10-6 and 1 × 10-4 μmol/mm3." The Federal Circuit said "[a]lthough the upper and lower bounds of the claimed range are expressed as powers of ten, this alone is no reason for treating them as anything other than the ordinary numbers that they are. As the district court observed, the overall phrase—'a quantity between ____ and ____'—is a construction that 'implies a specific range . . . . It does not imply a range between two values which are themselves ranges.'" Philips was in effect arguing that in its exponents it was literally claimed any number that rounded to that number thus 10-4 encompassed 10-3.5. However this was inconsistent with how Philips used other exponents in its specification. The Federal Circuit expressly cautioned against reading too much into the decision:

We emphasize that the claim construction we affirm today should not be read to state the endpoints of the claimed range with greater precision than the claim language warrants. In some scientific contexts, "1" represents a less precise quantity than "1.0," and "1" may encompass values such as 1.1 that "1.0" may not. See Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d 1316, 1320–21 (Fed. Cir. 2001) (discussing distinction between "0.91 g/cm3" and "0.910 g/cm3"). In other words, "1.0" may be said to have more significant digits than "1" with no decimal point. Because "10-6" and "10-4" are simply the numbers 0.000001 and 0.0001 expressed as powers of ten, the claim language provides no basis for inferring any level of precision beyond the single digit "1." The way that power-of-ten quantities are used in the specification, discussed supra, confirms that the quantities of halogen described by the claims are not intended to be more precise.

Finally, the Federal Circuit rejected Iwasaki's argument, and reversed the district court that finding equivalence outside the claimed range would "vitiate" the claim limitation. The Doctrine of Equivalents is available for a claimed range. The Federal Circuit added that terms such as "approximately" in front of the ends of the range may expand the scope for literal infringement, but have nothing to do with whether the doctrine of equivalents applies. The Federal Circuit also rejected limiting the ends of the ranges from equivalence where there is prior art near the ranges, because the claims in this case were not narrowed.

Unusual is Not Exceptional; Moving Party Has Burden to Show a Case is Exceptional for an Award of Attorneys Fees

Digeo, Inc. v. Audible, Inc., [2007-1133] (November 1, 2007) [MICHEL, Moore, Cote] The Federal Circuit found no clear error in the district court's determination that the case was not exceptional, and that the district did not abuse its discretion in denying additional discovery.
SIGNIFICANCE: The moving party has the burden to show a case is exceptional under 285 by clear and convincing evidence.
BRIEF: Digeo purchased U.S. Patent No. 5,734,823 from IPDN, successor to Microtome, Inc., "as is" at a bankruptcy sale in 2002. There were considerable irregularities in the execution of the Power of Attorney and assignments, where were purportedly signed by Oliver Chang on behalf of himself, and as executor for his deceased brother Edward. During discovery it was revealed that Edward was alive and well, and that Oliver did not even sign the documents. Audible claimed that the case was exceptional, and sought attorneys fees. The determination of whether a case is exceptional and thus eligible for an award of attorneys fees under 285 is a two step process in which the court must determine (1) whether there is clear and convincing evidence that the case is exceptional (a factual determination reviewed for clear error), and (2) whether, in its discretion, an aware of attorneys fees is justified (a discretionary act reviewed for abuse). The district court concluded that there was not clear and convincing evidence that Digeo know or should have known of the defect in its title to the '823 patent. On appeal Audible complained that it was improperly assigned the burden of proof, but the Federal Circuit distinguished between a Rule 11 motion, in which the burden shifts to the non-moving party to justify its conduct, and a motion under Rule 285, where the burden remains on the moving party to show the case is exceptional. The Federal Circuit also declined to find a heightened standard of investigation when a patent is purchased "as is", and reiterated that merely negligent conduct does not suffice to establish that a case is exceptional.

Pa -- the Rain -- Innovation is Saved

Tafas v. Dudas, [1:07cv1008 (JCC)](October 31, 2007) The U.S. District Court for the Eastern District of Virginia enjoined the application of the Patents Office's rules governing continuations and claim limits.

BRIEF: After discussing the propriety of considering the various amicus briefs, and admissability of the Manbeck Declaration, the court turned to the merits of the injunction. Regarding plaintiff's likelihood of success, on the continuation limitations, the Court said that "a decision by the PTO to limit the number of continuing applications would run contrary to the mandate of Section 120." The Court found that neither party had a strong likelihood of success as the limitations on RCE's. With respect to Rules 75 and 265, which limit the number of claims an applicant may submit, the Court likewise found that neither party had a strong likelihood of success.