INADEQUATE EXPLANATION FOR NON-DISCLOSURE SUPPORTS DETERMINATION OF INEQUITABLE CONDUCT

Praxair, Inc. v. Atmi, Inc., [2007-1483, -1509] (September 29, 2008) [DYK, Lourie, Bryson] The Federal Circuit affirmed the district court’s determination that the ’115 patent is unenforceable due to inequitable conduct, reversed the district court’s unenforceability conclusion with respect to the ’609 patent, affirmed the determination that the asserted claims of the ’609 patent were not proven invalid, vacated the determination of infringement with respect to the ’609 patent (because the district court used an incorrect claim construction), and remanded for a determination as to infringement of the ’609 patent under the correct claim construction. The Federal Circuit also reversed the district court’s judgment of invalidity for indefiniteness of the asserted claims of the ’895 patent and remanded for further proceedings.
DISCUSSION: Inequitable conduct in breach of this duty can be established by showing by clear and convincing evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the PTO. The required showings of materiality and intent are separate, and a showing of materiality alone does not give rise to a presumption of intent to deceive. However, an inference of intent to deceive is generally appropriate, however, when (1) highly material information is withheld; (2) the applicant knew of the information and knew or should have known of the materiality of the information; and (3) the applicant has not provided a credible explanation for the withholding. The Federal Circuit observed that a patentee facing a high level of materiality and clear proof that it knew or should have known of that materiality, can expect to find it difficult to establish ‘subjective good faith’ sufficient to prevent the drawing of an inference of intent to mislead. The Federal Circuit found the explanation for non-disclosure inadequate. There was no testimony that at the time, he believe the reference was cumulative, that cumulativeness was the reason for non-disclosure, or what the non-disclosed art was cumulative of. The Federal Circuit said that “Hindsight construction of reasons why a reference might have been withheld cannot suffice as a credible explanation of why, at the time, the reference was not submitted to the PTO.” The Federal Circuit thus affirmed inequitable conduct with respect to one patent, where the applicant’s arguments made the withheld art highly relevant, and reversed as to another patent, where there were no arguments or other circumstances that made the withheld art highly relevant.

CO-INVENTOR OF LESS THAN ALL CLAIMS IS STILL A NECESSARY PARTY TO AN INFRINGEMENT ACTION

Lucent Technologies, Inc. v. Gateway, Inc., [2007-1546, -1580] (September 25, 2008) [PROST, Lourie, Bryson] The Federal Circuit affirmed the court’s grant of JMOL based on lack of standing for one patent and based on non-infringement for the other patent.
DISCUSSION: The Federal Circuit followed its decision in Israel Bio-Engineering that an inventor of one or more claims of the patent is an owner of all claims of the patent, to conclude that the plaintiff lacked standing to enforce one of the patents because that patent was co-owned by a non-party. On the issue of infringement, Lucent attempted to rely on circumstantial evidence of infringement, but in the end the Federal Circuit agreed with the district court that the circumstantial evidence presented by Lucent established only uncertainty and speculation as to whether infringement occurred

OPINIONS OF COUNSEL STILL IMPORTANT TO AVODING INDIRECT INFRINGEMENT

Broadcom Corporation v. Qualcomm Incorporated, [2008-1199, -1271, -1272] (September 24, 2008) [LINN, Friedman, Prost] The Fedearl Circuit reversed the finding of infringement of U.S. Patent No. 6,847,686, but affirmed the determination of validity and infringement of U.S. Patent Nos. 5,657,317 and 6,389,010.
DISCUSSION: The technology at issue in this appeal relates to wireless voice and data communications on cellular telephone networks. Regarding the ‘686 patent, the Federal Circuit found that district court improperly imported the requirement of a “global controller into the claims. The Federal Circuit said that while the specification does contemplate the possibility of a global controller, the claims of the ’686 patent are directed solely to the DSP. The Federal Circuit said that each claim does not necessarily cover every feature disclosed in the specification, and that when a claim addresses only some of the features disclosed in the specification, it is improper to limit the claim to other, unclaimed features.
With respect to the remaining patents, the Federal Circuit rejected the appellant’s attempt to raise new claim construction arguments, noting “a party may not introduce new claim construction arguments on appeal or alter the scope of the claim construction positions it took below.”
Regarding liability for inducement, the Federal Circuit approved the jury instruction that in determining whether the defendant “knew of should have known that the induced actions would constitute infringement” the jury should consider the totality of the circumstances, including whether or not defendant obtained the advice of a competent lawyer. In response to argument that Seagate eliminated the need to obtain an opinion of counsel, the Federal Circuit instructed that Seagate did not alter the state of mind requirement for inducement. The Federal Circuit said that a lack of culpability for willful infringement does not compel a finding of non-infringement under an inducement theory.
The Federal Circuit held that because opinion-of-counsel evidence, along with other factors, may reflect whether the accused infringer “knew or should have known” that its actions would cause another to directly infringe, such evidence remains relevant to the second prong of the intent analysis.

Can't Second Guess PTO Administrative Decisions During Prosecution

Aristocrat Technologies Australia Pty Limited v. International Game Technology [2008-1016] (September 22, 2008) [LINN, Newman, Bryson] The Federal Circuit reversed summary judgment of invalidity on the grounds that U.S. Patent No. 7,056,215 was improperly revived.
DISCUSSION: The district court held that the U.S. Patent and Trademark Office “improperly revived” the patent after it was abandoned during prosecution, and therefore held it (and the continuation patent that followed it) invalid on summary judgment. The Federal Circuit concluded that “improper revival” may not be raised as a defense in an action involving the validity or infringement of a patent. The Federal Circuit said that Section 282 of title 35 provides a catalog of defenses available in an action challenging the validity or infringement of a patent. The Federal Circuit held that “Congress made it clear in various provisions of the statute when it intended to create a defense of invalidity or noninfringement, but indicated no such intention in the statutes pertaining to revival of abandoned applications.” The Federal Circuit explained that once a patent has issued, the procedural minutiae of prosecution has little relevance to the metes and bounds of the patentee’s right to exclude. The Federal Circuit was concerned that if any prosecution irregularity or procedural lapse, however minor, became grist for a later assertion of invalidity, accused infringers would inundate the courts with arguments relating to every minor transgression they could comb from the file wrapper. However if the irregularity involves an “affirmative misrepresentation of a material fact, failure to disclose material information, or submission of false material information, coupled with an intent to deceive,” it may rise to the level of inequitable conduct, and is redressible under that framework.

NO POINT TO THE POINT OF NOVELTY TEST

Egyptian Goddess, Inc., v. Swisa, Inc., [2006-1562] (September 22, 2008) [BRYSON, en banc] The Federal Circuit affirmed a finding of no-infringement.
DISCUSSION: After a detailed examination of design patent jurisprudence, the Federal Circuit held that the “point of novelty” test should no longer be used in the analysis of a claim of design patent infringement. The Federal Circuit further held that the “ordinary observer” test should be the sole test for determining whether a design patent has been infringed. Under the ordinary observer test, infringement will not be found unless the accused article embodies the patented design or any colorable imitation thereof.
The Federal Circuit said that in some instances, the claimed design and the accused design will be sufficiently distinct that it will be clear without more that the patentee has not met its burden of proving the two designs would appear “substantially the same” to the ordinary observer, as required by Gorham. The Federal Circuit acknowledged that in other instances, when the claimed and accused designs are not plainly dissimilar, resolution of the question whether the ordinary observer would consider the two designs to be substantially the same will benefit from a comparison of the claimed and accused designs with the prior art. The Federal Circuit said that where there are many examples of similar prior art designs, differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.
The Federal Circuit also addressed claim construction for a design patent, noting that while it has held that trial courts have a duty to conduct claim construction in design patent cases, as in utility patent cases, it has not prescribed any particular form that the claim construction must take. The Federal Circuit said that “[g]iven the recognized difficulties entailed in trying to describe a design in words, the preferable course ordinarily will be for a district court not to attempt to ‘construe’ a design patent claim by providing a detailed verbal description of the claimed design.” However, the Federal Circuit said that a district court’s decision regarding the level of detail to be used in describing the claimed design is a matter within the court’s discretion, and absent a showing of prejudice, the court’s decision to issue a relatively detailed claim construction is not reversible error. The Federal Circuit concluded that “it should be clear that the court is not obligated to issue a detailed verbal description of the design if it does not regard verbal elaboration as necessary or helpful.” The Federal Circuit also warned that the court should recognize the risks entailed in such a description, such as the risk of placing undue emphasis on particular features of the design and the risk that a finder of fact will focus on each individual described feature in the verbal description rather than on the design as a whole. While it may be unwise to attempt a full description of the claimed design, a court may find it helpful to point out, either for a jury or in the case of a bench trial by way of describing the court’s own analysis, various features of the claimed design as they relate to the accused design and the prior art.

DISCLOSURE IN PARENT APPLICATION SUPPORTED CLAIMS

Commonwealth Scientific And Industrial Research Organisation, v. Buffalo Technology (USA), Inc., [2007-1449] (September 19, 2008) [BRYSON, Lourie, Rader] The Federal Circuit affirmed summary judgment that the patent is not anticipated and was infringed, but reversed summary judgment of non-obviousness.
DISCUSSION: On the issue of anticipation, the Federal Circuit found that the issue of whether the preamble was a limitation was waived because before the district court the infringer only argued that the preamble language did not restrict the invention to outdoor use, rather that arguing that it was not a limitation at all. On the issue of obviousness, the Federal Circuit found that there were disputed issues of material fact about the reason to combine the references. The Federal Circuit reiterated that the reason to combine references could be found in the nature of the problem to be solved. LOF: On the issue of improper addition of new matter, the Federal Circuit stated that the question whether new matter has been added to an application is a question of fact. The Federal Circuit said that the fact that the USPTO has allowed an amendment without objection “is entitled to an especially weighty presumption of correctness” in a subsequent validity challenge based on the alleged introduction of new matter. Reviewing the application as a whole, the Federal Circuit concluded that there is enough material in the original disclosure to support the district court’s finding that the invention was in fact broader than systems operating only in the frequency range “in excess of 10 GHz.”

ONE MUST PRESENT A COMPELLING CASE THAT THE PRESENCE OF OTHER CONSIDERATIONS WOULD RENDER JURISDICTION UNREASONABLE

The Campbell Pet Company, v. Miale, [2008-1109] (September 18, 2008) [BRYSON, Archer, Prost] The Federal Circuit reversed the dismissal of a declaratory judgment action for lack of personal jurisdiction.
DISCUSSION: The individual defendants were the owners of the corporate defendant, which had made sales in the state of Washington, and individual defendant Theresa Miale attended a convention in the state of Washington, where she accused plaintiff of patent infringement. The Federal Circuit agreed that the sporadic sales and mere maintenance of a website did not constitute sufficient continuous activity to create general jurisdiction over the defendants. However, noting that state’s long-arm statute extends to the limits of due process, the issue as to specific jurisdiction was whether due process considerations permit the exercise of jurisdiction. This in turn raised two questions: (1) whether the defendant “has purposefully directed his activities at residents of the forum”; and (2) whether “the litigation results from alleged injuries that arise out of or relate to those activities.” If the court concludes that those two conditions are satisfied, a third factor comes into play, i.e., “whether the assertion of personal jurisdiction would comport with fair play and substantial justice.” However this third factor is applied sparingly. A defendant who seeks to rely on the “fair play and substantial justice” factor to avoid the exercise of jurisdiction must present a compelling case that the presence of some other considerations would render jurisdiction unreasonable. Factors going into the determination of reasonableness include (1) the burden on the defendant, (2) the interests of the forum state, (3) the plaintiff’s interest in obtaining relief, (4) the interstate judicial system’s interest in obtaining the most efficient resolution of controversies, and (5) the shared interest of the several states in furthering fundamental substantive social policies. The district court found that the first two parts of the three-part test for specific jurisdiction were satisfied, and the Federal Circuit agreed, however, the Federal Circuit disagreed that defendants had shown that exercise of jurisdiction was otherwise improper.

COMPLAINT ABOUT LICENSE AGREEMENT DOES NOT ARISE UNDER PATENT LAWS

Excelstor Technology, Inc., v. Papst Licensing GMBH & Co. KG, [2008-1140] (September 16, 2008) [LOURIE, Mayer, Schall] The Federal Circuit affirmed the dismissal of the action for lack of subject matter jurisdiction.
DISCUSSION: The Federal Circuit noted that where there is no claim of diversity of citizenship, jurisdiction depends upon whether there is a federal question. § 1338 jurisdiction extends to any case “in which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well-pleaded claims.” Under the well-pleaded complaint rule, “arising under” jurisdiction “must be determined from what necessarily appears in the plaintiff’s statement of his own claim in the bill or declaration, unaided by anything alleged in anticipation or avoidance of defenses which it is thought the defendant may interpose.” A claim does not arise under the patent laws if a patent issue appears only in a defense to that claim. The Federal Circuit agreed that plaintiff’s complaint about the license agreement, and about payment of royalties on products after the defendant’s rights had been exhausted, did not arise under the patent laws.

TO AVOID 35 U.S.C. § 112, ¶ 6A CLAIM TERM NEED NOT DENOTE A SPECIFIC STRUCTURE; IT IS SUFFICIENT THAT THE TERM IS USED IN COMMON PARLANCE

Duratech Industries International, Inc. v. Bridgeview Manufacturing, Inc., [2008-1157] (September 12, 2008) [RADER, Michel, Schall] NON-PRECEDENTIAL The Federal Circuit vacated and remanded judgement of non infringement of U.S. Patent No. 6,375,104 because the district court incorrectly construed the critical claim element of the patent as a means-plus-function limitation subject to 35 U.S.C. § 112, paragraph 6.
DISCUSSION: At issue was the claim limitation “a manipulator mounted inside the container for driving the crop material into the disintegrator” which the district court construed as a means-plus-function element. A patentee’s use of the word “means” in a claim limitation creates a presumption that 35 U.S.C. § 112 paragraph 6 applies, and conversely a claim term without the word “means” suggests that § 112, paragraph 6 does not apply. Means-plus-function claiming applies only to purely functional limitations that do not provide the structure that performs the recited function, and in considering whether a claim term recites sufficient structure to avoid application of section 112 P 6, the Federal Circuit has not required the claim term to denote a specific structure – it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function. Noting first the presumption arising from the absence of the word “means” and the ordinary meaning of “manipulator”, the Federal Circuit held that the disputed claim limitation was not a means-plus-function element

DEMONSTRATION IS NOT NECESSARILY AN INFRINGING USE

Medical Solutions, Inc., v. C Change Surgical Llc, [2007-1163] (September 9, 2008) [ZAGEL, Bryson, Prost] The Federal Circuit affirmed the dismissal of MSI’s patent suit for lack of personal jurisdiction because demonstration of the allegedly infringing device at a trade show did not constitute a “use” under the patent laws.
DISCUSSION: MSI held several patents to protect its technology related to devices that control the temperature of medical and surgical fluids in the operating room. MSI sued C Change, alleging its demonstrations of its competitive system infringed MSI’s patents. The district court found that the demonstration was not a use, and the mere presence of the products without pricing or other circumstances of a commercial offer, did not constitute an offer for sale. Noting the absence of any evidence that the demonstration involved heating of medical items, the Federal Circuit agreed that there was not infringing “use”.

LATE BILL OF COSTS COSTS PLAINTIFF

Hildebrand v. Steck Manufacturing Company, Inc., [2008-1047] (September 8, 2008) [MICHEL, MAYER, STEARNS] NON-PRECEDENTIAL The Federal Circuit affirmed denial of for relief from judgment and his application for attorney fees and costs.
DISCUSSION: The Federal Circuit determined that the denial of costs was proper, since plaintiff waited more than a month to file its bill of costs, well beyond the ten days required in the local rules. The Federal Circuit also affirmed the denial of attorneys’ fees, citing the lack of exceptional circumstances.

WRITTEN DESCRIPTION MUST SHOW THAT INVENTOR WAS IN POSSESSION OF INVENTION

Carnegie Mellon University v. Hoffman-La Roche Inc., [2007-1266] (September 8, 2008) [LOURIE, Bryson, Prost] The Federal Circuit affirmed judgment that the claims were invalid for failure to meet the written description requirement, and affirmed the court’s judgment of noninfringement.
DISCUSSION: Paragraph 1 of § 112 requires a written description of the invention—a requirement separate and distinct from the enablement requirement. To satisfy the written description requirement, “the applicant does not have to utilize any particular form of disclosure to describe the subject matter claimed, but the description must clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” The Federal Circuit observed that the claims of the ’708 and ’745 patents encompass a genus of recombinant plasmids that contain coding sequences for DNA polymerase or nick-translation activity from any bacterial source, in contrast, the narrow specifications of the ’708 and ’745 patents only disclose the polA gene coding sequence from one bacterial source, viz., E. coli. Significantly, the specification fails to disclose or describe the polA gene coding sequence for any other bacterial species.
The Federal Circuit said that what is needed to support generic claims to biological subject matter depends on a variety of factors, such as the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, the predictability of the aspect at issue, and other considerations appropriate to the subject matter.
As to non-infringement, patentee’s claims to E. coli were adequately supported. The Federal Circuit agreed with the district court that these claims were not infringed under the doctrine of equivalents by the substitution of Taq for E. coli. The Federal Circuit found that the “all limitations rule” restricts the doctrine of equivalents by preventing its application when doing so would vitiate a claim limitation. The Federal Circuit concluded that a finding that Taq is an equivalent of E. coli would essentially render the “bacterial source [is] E. coli” claim limitation meaningless, and would thus vitiate that limitation of the claims.

SAME REFERENCE CAN CREATE A SUBSTANTIAL NEW QUESTION OF PATENTABILITY

In Re Swanson, [2007-1534] (Reexamination No. 90/006,785)] (September 4, 2008) [GAJARSA, Lourie, Bryson] The Federal Circuit affirmed that the claims 22-25 of U.S. Patent No. 5,073,484 were anticipated and would have been obvious.
DISCUSSION: After losing a case on the invalidity and infringement of the ‘484 patent, Sytron initiated a reexamination in the PTO asserting a substantial new question of patentability. Claims were rejected over Deutsch, and the BPAI affirmed, dismissing Swanson’s argument that Deutsch could not raise a substantial new question of patentability because a jury had affirmed a finding of validity over the reference and the Federal Circuit had affirmed. The Federal Circuit explained that the “substantial new question of patentability” requirement prevents potential harassment of patentees by acting to bar reconsideration of any argument already decided by the PTO. However the statute now expressly states that the existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office.
The Federal Circuit found that Section 303’s language and legislative history, as well as the differences between litigation and examination (in particular the presumption of validity) led it to conclude that Congress did not intend a prior court judgment upholding the validity of a claim to prevent the PTO from finding a substantial new question of validity regarding an issue that has never been considered by the PTO. In light of the extremely limited purpose for which the examiner considered Deutsch in the initial examination, the Board is correct that the issue of whether Deutsch anticipates the method disclosed in claims 22, 23, and 25 was a substantial new question of patentability, never before addressed by the PTO.

LACK OF CASE AND CONTROVERY IN ANDA CASE

Janssen Pharlaceutica, N.V. v. Apotex, Inc., [2008-1062] (September 4, 20080 [MOORE, Michel, Rader] The Federal Circuit affirmed dismissal of a declaratory judgment action for noninfringement.
DISCUSSION: After granting a covenant not to sue, Janssen requested that Apotex withdraw its counterclaims. Apotex refused, but the district court granted Janssen’s motion to dismiss Apotex’s counterclaims for lack of subject matter jurisdiction. Apotex wanted a declaration because of invalidity to trigger TEVA’s period of exclusivity under Hatch-Waxman. The Federal Circuit found that Apotex’s inability to launch its generic product immediately upon the expiration of the ’663 patent—is not sufficient to give rise to declaratory judgment jurisdiction. Even if Apotex successfully invalidates the ‘425 and ‘527 patents, it cannot obtain FDA approval until the expiration of the ‘663 patent because of its stipulations with respect to that patent. Instead, the harm to Apotex that has continuously existed is its exclusion from selling its alleged noninfringing product during Teva’s statutorily entitled 180-day exclusivity period. Apotex is being excluded from the market by Teva’s 180-day exclusivity period—a period which Teva is entitled to under the Hatch-Waxman Act. This is a different injury than that alleged in Caraco.

CORRESPONDENCE BETWEEN THE APPLICANT AND ITS ATTORNEY IS IRRELEVANT TO

Howmedica Osteonics Corp., v. Wright Medical Technology, Inc., [2007-1363] (September 2, 2008) [DYK, Prost, Hochberg] The Federal vacated judgment of noninfringement, and remanded.
DISCUSSION: The case involves U.S. Patent No. 5,824,100 which is directed to an artificial knee prosthesis or implant used to replace part or all of a patient’s knee joint. The claim at issue requires only one condylar element. The femoral component must include “at least one condylar element.” The claim then requires that “the condylar element” meet the specified geometric limitations. The issues was if the component contained more than one condylar element, do both condylar elements have to meet the specified geometric limitations.
Every disclosure of a bicondylar knee in the specification shows two condyles each meeting the geometric requirements of claim, but the Federal Circuit noted that the fact that the specification describes only a single embodiment is insufficient to limit otherwise broad claim language. The Court rejected putting any significance to correspondence between the inventor and the attorney, since it is not part of the prosecution history. Defendant also tried to rely on testimony of the invention, but the Federal Circuit rejected this, stating that the testimony of an inventor “cannot be relied on to change the meaning of the claims.”