No Equivalence Where to do so Would Vitiate the Claim Limitation

Wleklinski v. Targus, Inc., [2007-1273](December 19, 2007)[SCHALL, Rader, Prost] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 4,976,388.
BRIEF: The Federal Circuit affirmed the finding of no literal infringement, finding that the claim's requirement of an auxiliary strap means "including first and second separate end sections made of a relatively non-stretchable material, and also including a separate center section made of material which is longitudinally stretchable"was not met. The Federal Circuit said that the plain meaning of the claim language requires that the center and end sections of the strap be composed of different materials. The limitation refers to the end sections of the strap being "made of a relatively non-stretchable material" and the center section of the strap being "made of material which is longitudinally stretchable". At the same time, the center and end sections are both described as being "separate" from each other. The Federal Circuit said that the most persuasive reading of the claim language is that the center and end sections are constructed of different materials, and rejected Comfort Strapp’s proposed construction as inconsistent with this plain meaning.
The Federal Circuit also found no error in granting summary judgment of no infringement under the doctrine of equivalents. As the district court found, the accused strap, which has an auxiliary strap means composed of a single unitary material made of the same fabric, is the fundamental opposite of the claimed invention, in which the auxiliary strap means requires separate sections made of different materials. A finding of infringement under the doctrine of equivalents would impermissibly vitiate claim limitations, citing Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358 (Fed. Cir. 2005) ("[A]n element of an accused product or process is not, as a matter of law, equivalent to a limitation of the claimed invention if such a
finding would entirely vitiate the limitation."). The Federal Circuit said that "claim 1 requires separate center and end sections that are made of different materials; finding equivalence with a single strap lacking separate sections and different materials would impermissibly vitiate this limitation."

Enjoining Non-Infringing Sales an Abuse of Discretion

MPT, Inc. v. Marathon Labels, Inc., [2007-1183, -1204, -1238](December 12, 2007)[MOORE, Schall, Moran] NON-PRECEDENTIAL The Federal Circuit held that the district court abused its discretion in granting a permanent injunction that prohibits certain non-infringing sales, but otherwise affirmed the district court.
BRIEF: The distinct court granted an injunction against all sales of a Smart Surface Placard including sales to resellers who sell the apparatus for use outside the United States. The patentee conceded that sales of the Placard for use outside the United States did not infringe its method patents. The Federal Circuit said that given the parties’ admissions, the district court’s injunction is overly broad and therefore an abuse of discretion. The district court should not have enjoined sales of the Placard to locations outside the United States or sales to resellers who sell to locations outside the United States. The Federal Circuit reversed the grant of the injunction and remanded.

The Law Doesn't Impose an Impossible Standard of Corroboration; But You Do Need Some

In re Garner, [2007-1221](December 5, 2007)[MOORE, Rader, Schall] The Federal Circuit affirmed BPAI's decision against Garner for failure to make a prima facie showing of priority.
BRIEF: Garner attempted to provoke an interference, and when his initial filing was found insufficient, attempted to add copies of his application and prior provisional application. The BPAI rejected the submission of the application and provisional application as improper new evidence. The Federal Circuit reversed the BPAI's finding of new evidence, but affirmed the dismissal of the opposition, finding that even with the specifications, Garner’s submissions to the Board do not sufficiently corroborate his claim of actual reduction to practice. Garner submitted that a declaration from Fondon, who saw the device in Garner's laboratory as corroboration. But the Federal Circuit observed that Fondon did not testify that the device operated or worked for its intended purpose. In fact, Fondon did not indicate that he ever saw the device operate. The Federal Circuit said that while the law does not impose an impossible standard of ‘independence’ on corroborative evidence by requiring that every point of a reduction to practice be corroborated by evidence having a source totally independent of the inventor, corroboration of the existence of the device is not sufficient in this case to establish corroboration of reduction to practice.

Failure to Pay Maintenance Fee Was Avoidable

Millman v. US Patent and Trademark Office, [2007-1403](December 5, 2007)[MAYER, SCHALL and LINN] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment on its motion to dismiss or in the alternative for summary judgment affirming the denial of Millman's request to reinstate his patent for failure to pay maintenance fees.
BRIEF: Millman failed to pay maintenance fees on his patent. He filed a petition that non-payment was unavoidable. Such a petition must include "[a] showing that the delay was unavoidable since reasonable care was taken to ensure that the maintenance fee would be paid timely and that the petition was filed promptly after the patentee was notified of, or otherwise became aware of, the expiration of the patent. The showing must also enumerate the steps taken to ensure timely payment of the maintenance fee, the date and the manner in which patentee became aware of the expiration of the patent and the steps taken to file the petition promptly." 37 C.F.R. § 1.378(b)(3). In determining whether a delay in paying a maintenance fee was unavoidable, one looks to whether the party responsible for payment of the maintenance fee exercised the due care of a reasonably prudent person. The Federal Circuit said that "The PTO properly determined that Millman had not acted in a manner consistent with a reasonably prudent person. He took surprisingly little interest in even surficial details of his issued patent, such as the schedule of maintenance fees on the inside cover. He was made aware that maintenance fees would become due in the patent itself, and in a letter from his patent counsel upon issuance. When he missed his first deadline and subsequently terminated his attorney, he took possession of all files related to the patent, but did not examine them before placing them in storage for over three years." The Federal Circuit concluded that "The PTO’s decision that Millman's delay was not unavoidable was not "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law."