Offer of Complete Relief Divested District Court of Jurisdiction

Samsung Electronics Co., Ltd., v. Rambus, Inc., [2006-1579] (April 29, 2008) The Federal Circuit vacated the order of the district court and remands the case to the district court with the instruction that it dismiss Samsung's declaratory judgment action.
BRIEF: To avoid an adverse finding of spoilation of evidence, RAMBUS granted a covenant not to sue, and offered Samsung its attorneys’ fees. Samsung rejected the offer, and the district court entered judgment finding the case exceptional, but denying Samsung its attorneys’ fees. On Appeal the Federal Circuit held that Rambus’ offer eliminated the controversy between the parties, divesting the district court of jurisdiction. Accordingly, the district court in this case lacked jurisdiction to issue any further opinions in conjunction with an attorney fees dispute that has ceased to exist. Because the district court's writing is an impermissible advisory opinion, the Federal Circuit vacated that advisory opinion as issued without jurisdiction. In sum, the offer of the full amount in dispute brought an end to the case and controversy between Rambus and Samsung. At that point the district court also lacked subject matter jurisdiction to rule on the attorney fees motion.

"Sale" Has a Physical and Conceptual Aspect

Litecubes, LLC, v. Northern Light Products, Inc. [2006-1646] (April 28, 2008) [GAJARSA, Newman, Ardher] The Federal Circuit affirmed a judgment of patent and copyright infringement against a defendant who challenged jurisdiction on the grounds it did not sell the allegedly infringing products within the United States, nor import the products into the United States.
SIGNIFICANCE: Jurisdiction is determined from the well-pleaded Complaint. Where legal title passes is not controlling on where a sale occurred.
BRIEF: GlowProducts is a Canadian corporation operating from its offices in Victoria, British Columbia, which acquires novelty items from Chinese manufacturers and then sells the items primarily in North America. GlowProducts does not have offices, facilities, or assets in the United States. Evidence at trial, however, established that GlowProducts sold the accused products directly to customers located in the United States and that GlowProducts would ship the products, f.o.b., from its Canadian offices to its customers in the United States. After the trial had concluded and the jury entered a verdict of willful infringement, GlowProducts filed a motion to dismiss for lack of subject matter jurisdiction on these grounds. Neither Litecubes nor the district court challenged GlowProducts characterization of the issue as jurisdictional. Instead Litecubes opposed the motion on the grounds that there was ample evidence that GlowProducts had sold, offered to sell, or imported the allegedly infringing products to the United States. The district court agreed, denying GlowProducts’ motion, finding evidence of infringement “sufficient to establish subject matter jurisdiction in this Court” because GlowProducts “clearly imported the accused products into the United States.”
LOF: Subject matter jurisdiction is a question of law reviewed de novo. The Federal Circuit noted that Litecubes alleged in its complaint that GlowProducts violated 35 U.S.C. § 271(a). Nevertheless, GlowProducts argues that even though Litecubes’ well-pleaded complaint establishes that federal patent law creates the cause of action, there is no subject matter jurisdiction over this suit because Litecubes has failed to prove that GlowProducts sold or offered to sell products in the United States or imported products into the United States. The Federal Circuit said that subject matter jurisdiction does not fail simply because the plaintiff might be unable to ultimately succeed on the merits. It is firmly established that the absence of a valid (as opposed to arguable) cause of action does not implicate subject-matter jurisdiction, i.e., the courts’ statutory or constitutional power to adjudicate the case. A failure to prove the allegations alleged in a complaint requires a decision on the merits, not a dismissal for lack of subject matter jurisdiction. The Federal Circuit observed that even if the complaint fails to allege a cause of action upon which relief can be granted, this “failure to state a proper cause of action calls for a judgment on the merits and not for a dismissal for want of jurisdiction.
Turning the denial of JMOL, the Federal Circuit said that although the district court based its ruling on a finding that GlowProducts imported its goods into the United States, the preferable initial inquiry, given the facts of this case and our prior established law, is whether there was a sale within the United States. It was uncontested that GlowProducts sold and shipped the allegedly infringing products directly to customers located in the United States. GlowProducts based its argument that these were not sales in the United States on the grounds that the products were shipped f.o.b., and thus title over the goods were transferred while the goods were still in Canada. The Federal Circuit said that its case law was inconsistent with such a theory, and concluded that there is substantial evidence of a sale within the United States for the purposes of § 271.
The Federal Circuit cited North American Philips Corp. where it said that “unlike the ‘making’ and the ‘using’ of an infringing article, which as purely physical occurrences are relatively straightforward to place, the ‘selling’ of an infringing article has both a physical and a conceptual dimension to it. That is to say, it is possible to define the situs of the tort of infringement-by-sale either in real terms as including the location of the seller and the buyer and perhaps the points along the shipment route in between, or in formal terms as the single point at which some legally operative act took place, such as the place where the sales transaction would be deemed to have occurred as a matter of commercial law.” The Federal Circuit found no policy that would be furthered by according controlling significance to the passage of legal title.” The Federal Circuit concluded that simply because an article is delivered ‘free on board’ outside of the forum, a sale is not necessarily precluded from occurring in the forum.”
The Federal Circuit held that since it found substantial evidence of a sale within the United States, it need not determine whether there was also an offer to sell within the United States or importation into the United States, and concluded that substantial evidence supported the jury verdict of copyright infringement.

Case Remanded So Board Could Make Initial Determination for Court to Review

In re Reuning, [2007-1535] (April 25, 2008) [PROST, Michel, Linn] NON-PRECEDENTIAL The Federal Circuit vacated the Board’s decision affirming the obviousness of certain claims, and remanded for further proceedings.
BRIEF: The Board of appeals declined to rule on the bulk of the claims because they were not properly argued. The Federal Circuit remanded the case at the suggestion of the Solicitor for proper consideration by the Board of Appeals.

Attorneys Fees Awarded for Inequitable Conduct During Prosecution of Patents in Suit

Monsanto Company v. Bayer Bioscience N.V., [2007-1299] (April 23, 2008) [BRYSON, GAJARSA, and LINN] NON-PRECEDENTIAL The Federal Circuit affirmed the award of attorney fees to Monsanto under 35 U.S.C. § 285.
BRIEF: The district court concluded that attorney fees were warranted because Bayer’s inequitable conduct in the prosecution of the four patents made the case exceptional. LOF: Whether a case is exceptional under § 285 is a factual question reviewed for clear error. Bayer did not challenge the discretionary determination to award attorney fees, but rather Bayer argued that the district court erred in finding that each of the four patents was procured through inequitable conduct. The Federal Circuit held that this was law of the case, from previous decision that Bayer appealed and lost, and could not be relitigated.

False and Misleading Allegations of Patent Infringement Requires Showing of Objective Baselessness

Dominant Semiconductors Sdn. Bhd., v. Osram GmbH [2007-1456] (April 23, 2008) [KENNELLY, Michel, Dyk] The Federal Circuit affirmed the grant of summary judgment in favor of OSRAM GmbH (“OSRAM”) on Dominant’s claims for unfair competition, intentional interference with contractual relations, interference with prospective economic advantage, and trade libel arising from OSRAM’s communications to its customers that Dominant infringed several of its patents.
BRIEF: Dominant alleged that Osram made false and misleading infringement allegations about Dominant’s products and asserted its patent rights in bad faith. The district court granted summary judgment for Osram finding Osram’s statements were “not objectively baseless and thus were not made in bad faith.” The district court concluded that it was objectively reasonable for OSRAM to rely on an opinion by patent counsel when there was no evidence that the analysis was unreasonable on its face or contained unsupportable conclusions. The Federal Circuit said that federal patent law bars the imposition of liability for publicizing a patent in the marketplace unless the plaintiff can show that the patent holder acted in bad faith, and that Federal patent law likewise preempts state-law tort liability when a patentee in good faith communicates allegations of infringement of its patent.The Federal Circuit noted that bad faith includes separate objective and subjective components. To be objectively baseless, the infringement allegations must be such that “no reasonable litigant could reasonably expect success on the merits.” The Federal Circuit said that bad faith is not supported when the information is objectively accurate” and that “[c]ommunication of accurate information about patent rights, whether by direct notice to the potential infringers or by publicity release, does not support a finding of bad faith.” The Federal Circuit rejected Dominant’s argument that the standards of Rule 11 should apply to pre-litgation statements. The Federal Circuit rejected Dominant’s arguments directed to Osram’s subjective intent noting that subjective considerations of bad faith are irrelevant if the challenged assertions are not objectively baseless. The Federal Circuit concluded that, objective baselessness requires a determination based on the record ultimately made in the infringement proceedings and the record of the state tort action, and not on the basis of information available to the patentee at the time the allegations were made, and affirmed summary judgment for Osram.

Uniformity of Claim Construction is Important

Finisar Corp. v. The DirecTV Group, Inc., [2007-1023, -1024] (April 18, 2008) [RADER, Michel, Moore] The Federal Circuit vacated the verdict of infringement of U.S. Patent No. 5,404,505 because the district court incorrectly construed a vital term featured prominently in each asserted claim, and vacated and remanded validity, finding that the district court erred in ruling that the prior art did not anticipate claim 16.
BRIEF: Generally claim terms are given their ordinary and customary meanings, according to the customary understanding of an artisan of ordinary skill at the time of the invention. The person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification. When construing claims, the claims and the rest of the patent, along with the patent’s prosecution history (together, the intrinsic evidence of the meaning of the claims) are the primary resources; while helpful, extrinsic sources like dictionaries and expert testimony cannot overcome more persuasive intrinsic evidence.
Given the importance of uniformity in the treatment of a given patent, the Federal Circuit said it would be remiss to overlook another district court’s construction of the same claim terms in the same patent as part of this separate appeal. Thus, in the interest of uniformity and correctness, this court consults the claim analysis of different district courts on the identical terms in the context of the same patent. The Federal Circuit determined that the Northern District of California’s construction of the claim terms was better.
Turning to the question of infringement, the Federal Circuit noted LOF: Literal infringement is a question of fact, reviewed for substantial evidence when tried to a jury. While some of the district court’s construction was harmless error, it was significant with respect to some infringement issues, so the Federal Circuit vacated and remanded
Turning to the question of validity, the Federal Circuit noted LOF: Anticipation is a question of fact, reviewed for substantial evidence when tried to a jury. To anticipate a claim, a single prior art reference must expressly or inherently disclose each claim limitation. But disclosure of each element is not quite enough—this court has long held that “[a]nticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” This question claim down to the interpretation of the reference, and the Federal Circuit fell back to conventional rules of grammar: “this court used general principles of English grammar for the proposition that “[r]eferential and qualifying words and phrases, where no contrary intention appears, refer solely to the last antecedent, which consists of ‘the last word, phrase, or clause that can be made an antecedent without impairing the meaning of the sentence’” for purposes of statutory construction. In contrast, “[w]hen a modifier is set off from a series of antecedents by a comma, the modifier should be read to apply to each of those antecedents.” The Federal Circuit observed that the rules of grammar not withstanding, in interpreting prior art it is ultimately what the reference means to a person of ordinary skill in the art, Finding the reference did anticipate claim 16, the Federal Circuit remanded for consideration of the validity of the other claims.
Regarding willful infringement, the Federal Circuit found no willfulness, noting that there is no requirement of considering both validity and infringement, since a a position of non-infringement is adequate to avoid willfulness.
Regarding the invalidity of claims under 35 USC §112, the Federal Circuit again addressed the level of disclosure needed to support means plus function claims under 35 USC §112, ¶ 6. The Federal Circuit agreed that the district court correctly determined that the structure recited in the specification does not even meet the minimal disclosure necessary to make the claims definite. Simply reciting “software” without providing some detail about the means to accomplish the function is not enough. Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to ‘the corresponding structure, material, or acts’ that perform the function, as required by 35 USC §112, ¶ 6.

Equiavlent Was Both Foreseeable and Not Tangential

Honeywell International, Inc.v. Hamilton Sundstrand Corporation [2006-1602] (April 18, 2008) [RADER, Newman, Dyk] The Federal Circuit affirmed the decision that prosecution history barred Honeywell from asserting the doctrine of equivalents.
SIGNIFICANCE: It is difficult to rebut the application of prosecution history estopper
BRIEF: The principal issues is whether Honeywell could rebut the presumption that rewriting a dependent in independent form barred application of the doctrine of equivalents. Honeywell could only do so by demonstrating that (1) the alleged equivalent would have been unforeseeable at the time of the narrowing amendment,” or (2) "the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question," or (3) "that there was 'some other reason' suggesting that the patentee could not reasonably have been expected to have described the alleged equivalent." LOF: Prosecution history estoppel is a legal question subject to de novo review on appeal.
Regarding forseeability, the Federal Circuit noted that “[a]n equivalent is foreseeable if one skilled in the art would have known that the alternative existed in the field of art as defined by the original claim scope, even if the suitability of the alternative for the particular purposes defined by the amended claim scope were unknown.” The Federal Circuit explained the foreseeability requirement:
The principle of foreseeability ties patent enforcement appropriately to patent acquisition. In making this connection, foreseeability reconciles the preeminent notice function of patent claims with the protective function of the doctrine of equivalents. Thus, foreseeability in this context ensures that the doctrine does not capture subject matter that the patent drafter could have foreseen during prosecution and included in the claims. The goal of the principle is to ensure that the claims continue to define patent scope in all foreseeable circumstances, while protecting patent owners against insubstantial variations from a claimed element in unforeseeable circumstances. The foreseeability principle thus relegates the doctrine of equivalents to its appropriate exceptional place in patent enforcement.
The Federal Circuit said that to maintain consistency, a court must use the same definition of the equivalent to evaluate both foreseeability and infringement. The Federal Circuit said that Foreseeability does not require that the accused infringing product or process be foreseeable, nor that any equivalent exist at the time; rather foreseeability only requires that one of ordinary skill in the art would have reasonably foreseen the proposed equivalent at the pertinent time.
Turning to tangential, the Federal Circuit first noted that the tangential relation criterion for overcoming the Festo presumption is very narrow. To rebut the estoppel presumption with tangentiality, a patentee must "demonstrate that the rationale underlying the amendment bore no more than a tangential relation to the equivalent in question," or, in other words, that "the narrowing amendment was peripheral, or not directly relevant, to the alleged equivalent." Additionally, the reason for the narrowing amendment "should be discernible from the prosecution history record . . . ." If the prosecution history reveals no reason for the narrowing amendment, the presumption is not rebutted. The Federal Circuit said that the record shows that Honeywell made the amendment to add the limitation. Because the alleged equivalent focuses on the added limitation, the amendment bore a direct, not merely tangential, relation to the equivalent. Tangentiality does not help Honeywell overcome the presumption of surrender.

No Error By the District Court

Helena Laboratories Corporation, v. Alpha Scientific Corporation, [2007-1503] (April 16, 2008) [MOORE, Rader, Clevenger] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 5,344,666 relating to dispensing devices for use with stoppered containers such as blood collection tubes.
BRIEF: LOF: A determination of noninfringement, either literal or under the doctrine of equivalents, is a question of fact. The Federal Circuit agreed with the claim construction, and found no error in the determination there was no literal infringement or infringement under the doctrine of equivalents.

Assignee Disputes Arbitrability of Disputes

DataTreasury Corp., v. Wells Fargo & Company [2007-1317] (April 16, 2008) [FOGEL, Mayer, Bryson] The Federal Circuit affirmed the denial of a motion to dismiss or stay litigation pending arbitration, because the parties are not bound by the operative arbitration clause.
SIGNIFICANCE: Arbitration clause does not gene ally pass with title to the patent.
BRIEF: In a case involving the arbitrability of a claim, the Federal Circuit reviews the district court’s determination that the parties have contractually bound themselves to arbitrate disputes de novo, and its factual findings for clear error. Regional circuit law is applied to contractual disputes, including disputes involving license agreements. In determining whether parties have agreed to arbitrate a particular dispute, courts in the Fifth Circuit consider: (1) whether a valid agreement between the parties exists; and (2) whether the dispute in question falls within the scope of that arbitration agreement. Although none of the parties in the case had signed the license agreement that contained the arbitration clause, Appellants argued that the arbitration clause “runs with the patent.” The cases do not support a conclusion that procedural terms of a licensing agreement unrelated to the actual use of the patent (e.g. an arbitration clause) are binding on a subsequent owner of the patent. The Federal Circuit said that requiring a non-signatory party to arbitrate solely on the basis of an arbitration clause in a license agreement between signatory parties would be inconsistent with basic principles of contract law and the Federal Arbitration Act, 9 U.S.C. § 2 et seq. (“FAA”). Arbitration under the FAA is a matter of consent, not coercion. The Federal Circuit concluded Neither party in this litigation signed the PLA or participated in negotiating any of its terms. Accordingly, the dispute between these parties was not subject to the arbitration clause of that agreement. As this court previously has recognized, “a party cannot be compelled to arbitrate if an arbitration clause does not bind it.”

Proving the Accused Device Practices the Prior Art Does Not Prove Anticipation

Zenith Electronics Corporation v. PDI Communication Systems, Inc., [2007-1288, -1321] (April 16, 2008) [SCHALL, Newman, Lourie] The Federal Circuit affirmed the district court’s grant of summary judgment of invalidity of claim 1 of the ’301 patent; grant of summary judgment of noninfringement of the ’301 patent; and dismissal with prejudice of PDI’s counterclaim of inequitable conduct with respect to claims 2–8 of the ’513 patent, and vacated the district court’s (1) grant of summary judgment of invalidity of claim 1 of the ’513 patent; (2) grant of summary judgment of noninfringement of claim 1 of the ’513 patent; (3) dismissal without prejudice of PDI’s counterclaim of inequitable conduct with respect to the ’301 patent and claim 1 of the ’513 patent; and (4) denial of PDI’s motion for costs.
SIGNIFICANCE: Implied license to users stems for express license to manufacture. Practicing the prior art does not prove anticipation under 102.
BRIEF: The Federal Circuit did not have any difficulty rejecting Zenith’s appeal of invalidity of the ‘301 patent. Regarding infringement, the Federal Circuit considered the implied license defense, which it said was typically presented “when a patentee or its licensee sells an article and the question is whether the sale carries with it a license to engage in conduct that would infringe the patent owner's rights.” The Federal Circuit said there are two requirements for the grant of an implied license. First, the equipment involved must have no noninfringing uses. “If there is no noninfringing use, it may be reasonable to infer that there has been ‘a relinquishment of the patent monopoly with respect to the article sold. Second, the circumstances of the sale must “plainly indicate that the grant of a license should be inferred.”
Here, however, the Federal Circuit found that the implied license stemmed from the express license granted by Zenith to the various manufacturers. The Federal Circuit observed that no restrictions are placed upon the grants. For example, the agreements could have required the manufacturers to label each pillow speaker with a disclaimer informing purchasers that they are only licensed to use the pillow speakers with Zenith televisions. In the absence of a contractual restriction, the Federal Circuit found that evidence of Zenith’s intent was irrelevant, representing simply the seller’s hope or wish, rather than an enforceable restriction.
Turning to the ‘513 patent the Federal Circuit held that PDI did not provide clear and convincing evidence of invalidity, stating that anticipation cannot be proved by merely establishing that one “practices the prior art. The Federal Circuit said that mere proof that the prior art is identical, in all material respects, to an allegedly infringing product cannot constitute clear and convincing evidence of invalidity. Anticipation requires a showing that each element of the claim at issue, properly construed, is found in a single prior art reference. It is the presence of the prior art and its relationship to the claim language that matters for invalidity. The Federal Circuit found no such showing.Regarding infringement of the ‘513 patent the Federal Circuit found no implied license because it was not part of the express license to the manufacturers, and it was directed to components that were not made and sold by the licensed manufacturers.

Preambles Are Generally Not Claim Limiting

Symantec Corporation v. Computer Associates International, Inc., [2007-1201, -1239] (April 11, 2008) [DYK, Gajarsa, Linn] The Federal vacated and remanded summary judgment of non-infringement and invalidity, but affirm the district court’s decision on laches, inequitable conduct, and inventorship.
SIGNIFICANCE: The use of different language in the preamble is not necessarily significant.
BRIEF: The first question addressed by the Federal Circuit was the meaning of “a method of screening data as it is being transferred” in the preamble. The Federal Circuit noted that because the disputed term appears in the preamble to claim 1, it must first determine whether it is in fact a separate limitation. In general, a preamble is construed as a limitation “if it recites essential structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the claim.” The Federal Circuit said that “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.” Absent clear reliance on the preamble in the prosecution history, or in situations where it is necessary to provide antecedent basis for the body of the claim, the preamble “generally is not limiting.”While the language was added during prosecution, it was added concurrently with limitations in the body of the claim, which affected whether the language was limiting. The Federal Circuit held that the prosecution history fails to demonstrate “clear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art.” While noting the presumption that different words in a claim are generally given different meanings, the Federal Circuit found that this did not apply to words in the preamble. “The use of different language in the preamble than in the body of the claims does not suggest that the preamble imposes a limitation. Rather it is assumed that the preamble language is duplicative of the language found in the body of the claims or merely provides context for the claims, absent any indication to the contrary in the claims, the specification or the prosecution history.
The Federal Circuit then turned to the meaning of “computer system” rejecting the district court’s construction based on the preferred embodiment’s disclosure of a single computer, finding no reason in the specification to so narrowly construe the term.
The Federal Circuit then turned to the issue of inducement. Symmantec alleged that defendant’s encouraged the use of their antivirus program with internet browsers and thereby induced infringement. The Federal Circuit said that to succeed on a claim of inducement, the patentee must show, first that there has been direct infringement,” and “second, that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another's infringement.” The specific intent necessary to induce infringement requires more than just intent to cause the acts that produce direct infringement, the inducer must have an affirmative intent to cause direct infringement. Thus, “inducement requires evidence of culpable conduct, directed to encouraging another's infringement, not merely that the inducer had knowledge of the direct infringer's activities.”
However the Federal Circuit rejected the idea that actual infringement could only be shown by direct evidence, holding that there was adequate circumstantial evidence of infringement.
Regarding laches, the Federal Circuit reviews a district court's determination on the issue of laches for an abuse of discretion. A defendant, in order to invoke the defense of laches, must prove: (1) that the plaintiff delayed filing suit for an unreasonable and inexcusable length of time from the time the plaintiff knew or reasonably should have known of its claim against the defendant, and (2) that the delay operated to the prejudice or injury of the defendant. A presumption of laches arises “upon proof that the patentee delayed filing suit for more than six years after actual or constructive knowledge of the defendant’s alleged infringing activity. The Federal Circuit agreed that laches would only apply if the current product was the same or similar to the prior product, and that there was insufficient evidence that the products were similar.

Written Description Under Section 112 Should be an Applicant's First Priority

Poweroasis, Inc. v. T-Mobile USA, Inc., [2007-1265 ] (April 11, 2008) [MOORE, Newman, Schall] The Federal Circuit affirmed summary judgment of invalidity of the asserted claims of U.S. Patent Nos. 6,466,658 and 6,721,400, because the claims were not entitled to priority from the parent application.
SIGNIFICANCE: Claims in continuation-in-part application must be supported bu parent application in order to claim priority from parent application
BRIEF: In the patents in suit, Poweroasis described and claimed an interface for vending machines that could reside on a user’s laptop computer, these patents claimed priority from an earlier patent application that merely referenced a user interface. Poweroasis needed to claim priority to its parent application. The Federal Circuit said that application of the written description requirement was central to the resolution of the appeal. The Federal Circuit said: “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” To satisfy the written description requirement the disclosure of the prior application must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession of the invention. While a prior application need not contain precisely the same words as are found in the asserted claims, the prior application must indicate to a person skilled in the art that the inventor was “in possession” of the invention as later claimed. The Federal Circuit said that to satisfy the written description requirement, “the missing descriptive matter must necessarily be present in the original application’s specification such that one skilled in the art would recognize such a disclosure. It is not a question of whether one skilled in the art might be able to construct the patentee’s device from the teachings of the disclosure. Entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly disclosed.
LOF: Compliance with the written description requirement is a question of fact. The Federal Circuit said that the district court’s determination that the original application did not provide a written description of “customer interface” as set forth in the asserted claims was correct. The original application described a vending machine with a “display” or “user interface” as part of the vending machine, rather than a vending machine with a “customer interface” located on a customer’s electronic device. The only support for the broad construction urged for the term “customer interface” was in the continuation in part applications, and thus Poweroasis was not entitled to priority of the parent applications and its later patents were anticipated. The Federal Circuit affirmed the district court.

Prosecution History Reveals What the Examiner and Applicant Thought the Claims Meant

Luma Corporation v. Stryker Corporation, [2007-1353, -1378] (April 10, 2008) [LOURIE, Mayer, Schall] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of noninfringement of claims of U.S. Patent 5,740,801 and of invalidity of certain claims of the patent.
SIGNIFICANCE: Consider all intrinsic sources to construe claims
BRIEF: At issue was whether “graphical objects” included “text objects.” The Federal Circuit began by considering the language of the claims because “the claims themselves provide substantial guidance as to the meaning of particular claim terms.” The Federal Circuit said that the language of claim 14 indicates that “graphical objects” are a subset of the more general category of “visual representations,” and that dependent claim 15 indicates that “text” is also a subset of the category “visual representations.” However the claims did not indicate the relationship between “text” and “graphical objects” so the Federal Circuit turned to the specification, which the court found to be indeterminate as to whether one of ordinary skill in the art would understand “graphical objects” to include text alone. The Federal Circuit noted several passages from the specification which indicated by their grammatical structure that “graphical objects” and “text” are different things. On balance, the Federal Circuit found that the specification supports the district court’s claim construction.Turning to the prosecution history, we find information that is more conclusive that would influence one of ordinary skill in the art’s understanding of “graphical objects.” The prosecution history provides evidence of how the PTO and the inventor understood the patent. The Federal Circuit noted that the Examiner rejected claims to text objects alone, but allowed the claim where text objects were a subset of graphical objects. This indicated to the Federal Circuit that the Examiner clearly understood graphical objects not to include text alone. The Federal Circuit affirmed summary judgment of non infringement, as well as summary judgment of invalidity.

Thermodynamics: More Than Just a Good Idea, It's the Law

In Re Speas, [2008-1076] (April 9, 2008) [MAYER, BRYSON, GAJARSA] The Federal Circuit affirmed rejections of Speas patent application under 35 U.S.C. §§ 101 and 112.
SIGNIFICANCE: You can’t broadly claim the impossible, unless you enable the impossible.
BRIEF: Speas filed a patent application claiming “any and all devices and systems which operate in such a manner as to violate the second law of thermodynamics as it is currently understood and accepted as inviolable by a majority of the worldwide scientific community.” The claims were rejected because they were not supported by an asserted or well established utility, and because the specification did not enable any person having ordinary skill in the art to utilize the invention commensurate in scope with the claims. Speas appealed to the board, which affirmed the rejection. The Federal Circuit found that the board’s decision was supported by substantial evidence. The specification does not enable a person having ordinary skill in the art to make “any and all devices and systems which are adapted for converting thermal energy into other energy forms by contacting a heat source without the necessity of also contacting a thermal medium of lower temperature.” This particularly broad claim is nearly limitless. However, to be enabled the claim must be described by a commensurately broad description encompassing how to utilize the invention to create any and all such devices and systems.

No Bad Faith Assertion of Patent Unless Objectively Baseless

Judkins v. HT Window Fashion Corp., [2007-1434] (April 8, 2008) [KENNELLY, Michel, Bryson] The Federal Circuit affirmed the denial of a preliminary injunction against plaintiff’s assertion that HT’s Polaris product infringed Judkin’s patent.
SIGNIFICANCE: No matter what a party’s actual motivation; objective bad faith is required to bar a patentee from communicating about its patent rights.
BRIEF: To prevail on an unfair-competition claim under section 43(a) of the Lanham Act stemming from a patentee’s marketplace activity in support of his patent, the claimant must first establish that the activity was undertaken in bad faith. A patentee has a right to inform potential infringers of a patent and potentially infringing activity unless the communication is made in bad faith. Although bad faith in this context has both objective and subjective elements, the former is a threshold requirement: “a bad faith standard cannot be satisfied in the absence of a showing that the claims asserted were objectively baseless,” meaning no reasonable litigant could realistically expect to prevail in a dispute over infringement of the patent. The Federal Circuit said that if a district court weighing a motion to enjoin a patentee from communicating its rights determines the patent in question is not necessarily invalid or unenforceable, the objective baselessness requirement is not met, and no injunction should issue. An injunction against communication of patent rights is “strong medicine” that must be used with care and only in exceptional circumstances. The Federal Circuit found that the district court did not abuse its discretion when it denied HT’s request for a preliminary injunction.

Ordianry Meaning Suffices "Only if" There is No Dispute

O2 Micro International Limited v. Beyond Innovation Technology Co., Ltd., [2007-1302, -1303, -1304] (April 3, 2008) [PROST, Lourie, Clevenger] The Federal Circuit vacated and remanded final judgment after a jury trial that defendants willfully induced the infringement of U.S. Patent Nos. 6,259,615, 6,396,722, and 6,804,129.
SIGNIFICANCE: Even ordinary words have to be construed if their meaning is in dispute
BRIEF: At issue was the meaning “only if”, some of the defendants argued it meant “exclusively or solely in the event that,” while others argued it meant “never except when”, while plaintiff maintained that no construction was necessary because the claim term “only if” consists of “two simple, plain English words.” O2 Micro asserted infringement literally and under the doctrine of equivalents, and the general jury verdict did not distinguish between the two.
The Federal Circuit rejected O2 Micro’s argument that defendant’s objections to the construction of “only to” were waived by their failure to object to the jury instructions, noting that the meaning of the term was separately determined at the Markman hearing, where defendants raised their proposed construction. The Federal Circuit also rejected O2 Micro’s argument that defendants new arguments on appeal were waived by their failure to present them to the district court, sating that a waiver will not necessarily occur if a party simply presents new or additional arguments in support of the scope of its claim construction.
Defendant’s assert that the failure to construe “only if” was error because it presented a legal question to the jury. The Federal Circuit noted that In some cases, the ordinary meaning of claim language may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words. However, in many cases, the meaning of a claim term as understood by persons of skill in the art is not readily apparent. Defendants argued that “only if” excluded all other exceptions. The Federal Circuit found that even ordinary words may have to be construed when a term has more than one “ordinary” meaning or when reliance on a term’s “ordinary” meaning does not resolve the parties’ dispute. The Federal Circuit found it was error not to construe “only if” for the jury, although it cautioned that district courts are not (and should not be) required to construe every limitation present in a patent’s asserted claims. The Federal Circuit said that when the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it. The Federal Circuited remanded the case for construction of “only if”. for further proceedings consistent with this opinion. The Federal Circuit further held that because the “only if” limitation was added to overcome the prior art, and O2 Micro had not shown any exception, the doctrine of equivalents could not be applied to the “only if” limitation.

That Word -- I Don't Think it Means What You Think It Means

Microprocessor Enhancement Corporation v. Texas Instruments Incorporated, [2007-1249, -1286] (April 1, 2008) [GAJARSA, Newman, Dyk] The Federal Circuit reversed summary judgment of invalidity for indefiniteness, but affirmed summary judgment of noninfringement.
SIGNIFICANCE: Structure in a method claim, or function in an apparatus claim is not necessarily fatal. A word can have different meanings in the same claim if it is clear from the context.
BRIEF: The district court concluded that independent claims 1 and 7 of the ’593 patent are invalid for indefiniteness on the grounds that both claims impermissibly mix two distinct classes of patentable subject matter and that the claims are insolubly ambiguous for requiring that a single word be interpreted differently in different portions of a single claim. The Federal Circuit said that a claim is considered indefinite if it does not reasonably apprise those skilled in the art of its scope. Because a claim is presumed valid, a claim is indefinite only if the ‘claim is insolubly ambiguous, and no narrowing construction can properly be adopted. LOF: Whether a claim reasonably apprises those skilled in the art of its scope is a question of law that is reviewed de novo. Regarding the mixed subject matter of the claims, as to the method claim1, the Federal Circuit said method claim preambles often recite the physical structures of a system in which the claimed method is practiced, and found that claim 1 was no different. The Federal Circuit similarly found that the apparatus claim 7, apparatus claims are not necessarily indefinite for using functional language.
Addressing the fact that “condition code” was used inconsistently throughout the claims, the Federal Circuit rejected the district court’s conclusion that the term had to have the same meaning throughout the claim. The Federal Circuit said that a single term, used consistently, had to be given the same meaning. The Federal Circuit found that the meaning of the term could change form the contact, and that the claims’ apparent nonsensical reading under a uniform construction of “condition code” is indicative of the ease of determining the appropriate meaning of each use of the term from its context.
The issue of infringement turned on claim construction. The Federal Circuit said that it ascertains the meaning of a disputed term by looking to “‘those sources available to the public that show what a person of skill in the art would have understood disputed claim language to mean.’” These source include the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence. The Federal Circuit examined each source and found no error in the district court’s construction.

The Elimination of the Dispute Does Not Always Eliminate the Controversy

Caraco Pharmaceutical Laboratories, Ltd., v. Forest Laboratories, Inc., [2007-1404] (April 1, 2008) [GAJARSA, Friedman, Prost] The Federal Circuit reversed dismissal for lack of Article III jurisdiction on the grounds that it had been rendered moot when Forest unilaterally granted Caraco a covenant not to sue for infringement of the patent-in-suit.
SIGNIFICANCE: The elimination of a dispute may not eliminate the need for a judicial determination.
BRIEF: In the context of the Hatch-Waxman framework, Forest’s covenant not to sue did not eliminate the controversy between the parties. A judgement of invalidity or non-infringement was required under the Hatch-Waxman Act. The granting of a covenant not to sue did not satisfy the need for a declaration. Accordingly, the Federal Circuit held that Caraco’s declaratory judgment action presents a continuing Article III controversy, and reversed and remanded for further proceedings.