CLAIM WRITTEN IN GENERAL, DESCRIPTIVE WORDS LIMITED BY A NUMERICAL RANGE IN THE WRITTEN DESCRIPTION BECAUSE THE WORDS DEFINED BY IMPLICATION

Amazin’ Raisins International, Inc., v. Ocean Spray Cranberries, Inc., [2008-1098] (October 31, 2008) [ALSUP, Newman, Lourie] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 5,188,861.
DISCUSSION: U.S. Patent No. 5,188,861 relates to a method of reflavoring dried fruit. Based upon a teaching in the specification in that “Any dried fruit which contains between about 10% to 18% moisture may be employed.” the court construed dried fruit as meaning fruit with a 10% to 18% moisture content. Using this construction, the district court found that OSC’s accused process did not treat “dried fruit” because the frozen cranberries entering used in the process had a moisture content well above 10 to 18%.
The Federal Circuit agreed with the district court’s construction, noting that the language cited by the district court appeared “before any preferred embodiments are discussed or any specific examples detailed.” The Federal Circuit said that it was hard to understand the import of the underscored sentence other than as defining the dried fruit to which the invention was directed. To now say that these limits should be ignored would be a direct contradiction to the public-notice function of a patent. The Federal Circuit explained that although it is generally true that a claim written in general, descriptive words will not be limited by a numerical range appearing only in the written description “when a patentee uses a claim term throughout the entire patent specification, in a manner consistent with only a single meaning, he has defined that term ‘by implication.’”
The Federal Circuit affirmed lack of literal infringement, and lack of infringement by equivalents, holding that a finding that OSC’s frozen fruit equivalent to dried fruit would vitiate the dried fruit claim limitation.

IN BIOLOGICAL INVENTIONS WRITTEN DESCRIPTION REQUIRES MORE THAT CHARACTERIZATION OF A SINGLE SPECIES

In Re Alonso, [2008-1079] (October 30, 2008) [STEARNS, Michel, Mayer] The Federal Circuit affirmed the BPAI decision reversing the Examiner’s rejection of claim 92 for lack of enablement and sustaining the rejection for lack of adequate written description.
DISCUSSION: Whether an applicant has complied with the written description requirement is a finding of fact, to be analyzed from the perspective of one of ordinary skill in the art as of the date of the filing of the application. The written description requirement of 35 U.S.C. §112, ¶1, is straightforward: “The specification shall contain a written description of the invention . . . .” To satisfy this requirement, the specification must describe the invention in sufficient detail so “that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. The requirement is rigorous, but not exhaustive: "[I]t is unnecessary to spell out every detail of the invention in the specification; only enough must be included to convince a person of skill in the art that the inventor possessed the invention."
After noting the articles by the inventor acknowledged the differences in the antibodies used to practice the invention, the Federal Circuit agreed with the BPA that the single antibody described in the Specification is insufficiently representative to provide adequate written descriptive support for the genus of antibodies required to practice the claimed invention. The Federal Circuit has previously said that “a patentee of a biotechnological invention cannot necessarily claim a genus after only describing a limited number of species because there may be unpredictability in the results obtained from species other than those specifically enumerated.” The Federal Circuit said that the specification teaches nothing about the structure, epitope characterization, binding affinity, specificity, or pharmacological properties common to the large family of antibodies implicated by the method.

SUFFICIENT EVIDENCE OF AFFECT ON THE BASIC AND NOVEL CHARACTERISTICS AVOIDED INFRINGEMENT OF “CONSISTING ESSENTIALLY OF” CLAIM

Depuy Mitek, Inc., v. Arthrex, Inc., [2008-1173] (October 30, 2008) [LINN, Newman, O’Grady] NON-PRECEDENTIAL The Federal Circuit affirmed a finding of non-infringement of U.S. Patent No. 5,314,446.
DISCUSSION: The parties stipulated that infringement of the asserted claims would rise or fall with infringement of claim 1, and that the accused product contained every recited limitation of that claim. The only question for the jury to resolve was whether a silicone coating added to the accused product — an element in addition to those listed in the claim — materially affected the basic and novel properties of the invention and thus took the accused structure out of the scope of coverage of the claims.
The Federal Circuit said that because claim 1 uses the transitional phrase, “consisting essentially of,” it covers products or devices which include the listed elements, as well as unlisted elements, so long as the unlisted elements “do not ‘materially affect the basic and novel properties of the invention.’” The district court defined the basic and novel characteristics of the invention of the ’446 patent as: (1) a surgical suture, (2) composed of two dissimilar yarns from the lists in Claim One, (3) where at least one yarn from the first set is in direct intertwining contact with the yarn from the second set, (4) so as to improve pliability and handleability without significantly sacrificing the physical properties of the constituent elements of the suture.
The Federal Circuit found that defendant presented evidence at trial that that the silicone coating permeated the surface of the suture, reaching the braid, and that this materially improved the handleability and pliability of the suture by lubricating the interlocking yarns. The Federal Circuit further found that the defendant presented evidence at trial that, even if it the coating did not penetrate the surface, it still materially affected the physical properties of the suture, both positively and negatively. The Federal Circuit district court’s denials of Mitek’s renewed motion for judgment as a matter of law and motion for new trial.

APPEAL IS MOOT WHERE THERE IS NO EFFECTIVE RELIEF THAT COULD BE GRANTED

Systems Division, Inc., v. Teknek, LLC [2008-1100] (October 29, 2008) [MAYER, SCHALL, and MOORE] NON-PRECEDENTIAL The Federal Circuit dismissed an appeal of a holding of contempt.
DISCUSSION: The district court entered a contempt order, while the order was being appealed, the parties settled and the district court vacated the contempt order. One of the defendant’s bankruptcy trustee appealed the now-vacated Contempt Order, claiming that it adversely affected his interests and asked the Federal Circuit to vacate the order that the district court has itself already vacated. Because there is no effectual relief that the Federal Circuit could grant to the Trustee, it dismissed the appeal as moot. Because the Trustee’s appeal to this court is frivolous, it imposed sanctions under Rule 38 of the Federal Rules of Appellate Procedure and order the Trustee and his attorneys to pay SDI’s attorney fees and costs due to this appeal.

DISMISSAL MADE DEFENDANT PREVAILING PARTY FOR ATTORNEYS FEES AWARD

Tavory v. NTP, Inc., [2008-1090] (October 28, 2008) [MICHEL, Newman, and Bryson] The Federal Circuit affirmed the award of attorney’s fees in favor of NTP because defects in Tavory's copyright registration divested the court of subject matter jurisdiction over his copyright infringement claim.
DISCUSSION: Tavory sued NTP suit seeking: (1) to add himself as a co-inventor to certain patents, (2) copyright infringement as to the software Tavory had allegedly written, and (3) unjust enrichment. The district court dismissed the unjust enrichment claim, and granted summary judgment on the inventorship and copyright claims. Regarding the copyright infringement claim, the court held that Tavory's copyright registration was defective because the purported copy of his software that he deposited with the Copyright Office was not a bona fide copy of Tavory's original software, and awarded attorneys fees. Tavory objected that because the copyright claim was dismissed, NTP was not a prevailing party. The Federal Circuit said that the Supreme Court has held that the term "prevailing party," as that term is used in various federal attorney's fees statutes, requires that the party have obtained some kind of relief from the court on the merits of the claim such that a "material alteration of the legal relationship of the parties" has occurred. The Federal Circuit concluded that the judgment did materially alter their legal relationship, and that it rendered NTP the prevailing party within the meaning of § 505.

CORROBORATED EVIDENCE OF CONCEPTION NEEDED TO ESTABLISH CO-INVENTION

Tavory v. NTP, INC., [2007-1527] (October 27, 2008) [MICHEL, Newman, Bryson] The Federal Circuit affirmed summary judgment that Tavory was not a coinventor of certain NTP patents.
DISCUSSION: Tavory sued NTP suit seeking: (1) to add himself as a co-inventor to certain patents, (2) copyright infringement as to the software Tavory had allegedly written, and (3) unjust enrichment. The district court dismissed the unjust enrichment claim, and granted summary judgment on the inventorship and copyright claims. The Federal Circuit said patent is presumed to name the correct inventors, thus a putative unnamed co-inventor must prove his inventorship by clear and convincing evidence. The "touchstone" of inventorship is conception, which requires a "definite and permanent idea of the complete and operative invention." A co-inventor must prove he contributed to this conception of the claimed invention. The contribution must be more than simply the exercise of ordinary skill in the art. Simply reducing to practice that which has been conceived by others is insufficient for co-inventorship. A co-inventor need not contribute to the conception of every claim of a patent -- a single claim is sufficient -- and he need not "make the same type or amount of contribution" as the other co-inventors. As a result, no individual co-inventor need have a "definite and permanent idea of the complete and operative invention" so long as all of the co-inventors collectively satisfy that requirement. A co-inventor's own statements are inadequate to prove conception as a matter of law and thus must be corroborated by independent evidence. This evidence can be in the form of contemporaneous documents or the oral testimony of an independent witness. The evidence must establish that the inventor(s) made a "contemporaneous disclosure that would enable one skilled in the art to make the invention." In the co-inventor context, the contemporaneous disclosure must enable a skilled artisan to practice the portion of the invention that the co-inventor contributed.The Federal Circuit found that Tavory has not provided any competent evidence that his alleged contribution to the claimed invention—the interface switch—was the result of anything more than the exercise of ordinary skill in the art, he has failed to establish co-inventorship. The Federal Circuit further found that Tavory failed to provide sufficient corroborating evidence that he conceived of the interface switch. The Federal Circuit said he indisputably lacks any contemporaneous documents evidencing such a disclosure and relies instead on the testimony and declarations of various witnesses. However, the Federal Circuit found that while the testimony might establish reduction to practice, it did not establish conception. The Federal Circuit held that Tavory failed to establish a genuine issue of material fact as to his inventorship, and affirmed the grant of summary judgment.

DISCQUALIFICATION BECAUSE NO SUBSTANTIAL RELATIONSHIP WITH PRIOR REPRESENTATION

Commonwealth Scientific & Industrial Research Organisation, v. Toshiba America Information Systems, Inc., [2008-1108, -1116] (October 23, 2008) [STEARNS, Linn, Dyk] The Federal Circuit affirmed the denial of a motion to intervene.
DISCUSSION: The district court denied the motion to disqualify on the merits, and therefore denied the motion to intervene. The Federal Circuit found no error in the denial of the motion to disqualify, and therefore affirmed. The Federal Circuit said that ABA Model Rule 1.9 governing conflicts involving the representation of former clients applies to the motion to disqualify. Under the “substantial relationship” test, the movant must prove: (1) an actual attorney-client relationship existed between the moving party and the opposing counsel; (2) the present litigation involves a matter that is ‘substantially related’ to the subject of the movant’s prior representation; and (3) the interests of the opposing counsel’s present client are materially adverse to the movant.” In applying the test, courts consider three relevant factors: (1) the factual similarities between the current and former representations, (2) the similarities between the legal questions posed, and (3) the nature and extent of the attorney’s involvement with the former representation. The Federal Circuit agreed that Marvell failed to meet its burden of showing a substantial relationship.

SUBSTANTIAL QUESTION DOES NOT DESTROY THE LIKELIHOOD OF SUCCESS

Abbott Laboratories, v. Sandoz, Inc., [2007-1300] (October 21, 2008) [NEWMAN, Archer, Gajarsa) The Federal Circuit affirmed the grant of a preliminary injunction.
DISCUSSION: On appellate review of the grant of a preliminary injunction, the question "is simply whether the issuance of the injunction constituted an abuse of discretion." "It is well settled that the granting of a temporary injunction, pending final hearing, is within the sound discretion of the trial court; and that, upon appeal, an order granting such an injunction will not be disturbed unless contrary to some rule of equity, or the result of improvident exercise of judicial discretion." Abuse of discretion is established "by showing that the court made a clear error of judgment in weighing relevant factors or exercised its discretion based upon an error of law or clearly erroneous factual findings."
On the question of obviousness, the Federal Circuit said that the Court in KSR did not create a presumption that all experimentation in fields where there is already a background of useful knowledge is "obvious to try," without considering the nature of the science or technology. Each case must be decided in its particular context, including the characteristics of the science or technology, its state of advance, the nature of the known choices, the specificity or generality of the prior art, and the predictability of results in the area of interest.On the question of injunction, the Federal Circuit said that Supreme Court precedent, every regional circuit, and controlling Federal Circuit precedent, apply to the preliminary injunction the combination of criteria that includes likelihood of success on the merits and equitable considerations. No other court has held that when the attacker has presented a “substantial question” on its side of the dispute – that is, more than a scintilla but less than a preponderance of evidence in support of its side – no injunction pendente lite is available.

ANTICIPATION REQUIRES THE PRESENCE IN A SINGLE PRIOR ART DISCLOSURE OF ALL ELEMENTS OF A CLAIMED INVENTION ARRANGED AS IN THE CLAIM

Net Moneyin, Inc., v. Verisign, Inc., [2007-1565] (October 20, 2008) [LINN, Clevenger, Moore] The Federal Circuit affirmed the district court’s holding of the asserted claims of U.S. Patent Nos. 5,822,737 and 5,963,917 invalid under 35 U.S.C. § 112 ¶ 2 because they contain limitations in means-plus-function format without identifying corresponding structure. The Federal Circuit reversed a finding of validity under 102(a).
DISCUSSION: The Federal Circuit said that a patent applicant who employs means-plus-function language “must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112.” The Federal Circuit said that to avoid purely functional claiming in cases involving computer-implemented inventions, it had “consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” The Federal Circuit explained that 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 section 112 paragraph 6.” Consequently, a means-plus-function claim element for which the only disclosed structure is a general purpose computer is invalid if the specification fails to disclose an algorithm for performing the claimed function. Since there was no dispute in this case that the specification fails to disclose an algorithm by which a general purpose bank computer performs the function, the district court correctly concluded that claims 1, 13, and 14 are indefinite under 35 U.S.C. § 112 ¶ 2. As to invalidity under 102(a), the district court found the claimed invention anticipated based upon a single reference, but taking individual features from separate examples disclosed in the reference. The Federal Circuit reversed, noting that 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—anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.

ERROR TO REDUCE DAMAGE AWARD WITHOUT OFFERING PLAINTIFF NEW TRIAL

Minks v. Polaris Industries, Inc., [2007-1490, -1491] (October 17, 2008) [GAJARSA, Newman, Plager] The Federal Circuit held that Minks was entitled to a new trial on damages for infringement of his U.S. Patent No. 4,664,080, because the district court reduced the jury’s damages award from $1,294,620.91 to $55,809.60 (after doubling) without offering Minks a new trial, and because the jury instruction on the issue of actual notice to defendant was erroneous.
DISCUSSION: The Federal Circuit found that the district court’s reduction of the damage award was not premised on “legal error,” and thus it was an error not to offer Minks a new trial.

NO ERROR IN NOT CONSIDERING CLAIMS INDIVIDUALLY WHERE APPLICANT ARGUED CLAIMS IN GROUPS

In Re Tzipori, [2008-1119] (October 15, 2008) [MICHEL, Friedman, Walker] The Federal Circuit affirmed the BPAI finding of obviousness in light of a combination of five prior art references.
DISCUSSION: On appeal, Tzipori complained that the Board erroneously failed to consider his claims individually, but the Federal Circuit held that it was proper to consider claims in groups. The Federal Circuit noted that although applicants in their substitute appeal brief to the Board that "[t]he claims do not stand or fall together," they organized their claims into four groups, and argued the claims in groups. The Federal Circuit noted that the Board treated the claims in these groups, and even added a fifth group, separately discussing the applications only independent claim. 37 C.F.R. § 41.37 requires an applicant to clearly identify and separately argue those claims for which he requests the Board's specific attention.
The Federal Circuit further held that the Board applied the correct legal standard for obviousness and reached a decision supported by substantial evidence.

SETTLEMENT AGREEMENT DID NOT EXTEND BEYOND EXCLUSIONARY ZONE OF PATENTS AND DIDN'T VIOATE ANTITRUST LAWS

In Re Ciprofloxacin Hydrochloride Antitrust Litigation, [2008-1097] (October 15, 2008) [PROST, Schall, Ward] The Federal Circuit affirmed the decision of the district court that any anti-competitive effects caused by the settlement agreements between Bayer and the generic defendants were within the exclusionary zone of the patent, and thus could not be redressed by federal antitrust law.
DISCUSSION: A generic drug manufacturer filed an ANDA to make Cipro, covered by Bayer’s U.S. Patent No. 4,670,444, and Bayer sued for infringement. The parties reached a settlement in which Bayer agreed to provide product to the defendants or make payments. This agreement was challenged as a violation of the antitrust laws. The district court the court concluded that the plaintiffs had failed to show that the Agreements had any anti-competitive effects on the market for ciprofloxacin beyond that permitted under the patent.
Courts will presumptively apply a “rule of reason” analysis to determine whether an agreement imposes an unreasonable restraint on competition. Only agreements that have a “predictable and pernicious anticompetitive effect, and . . . limited potential for procompetitive benefit” are deemed to be per se unlawful under the Sherman Act.
The Federal Circuit noted that that there was no evidence that the Agreements created a bottleneck on challenges to the ’444 patent or otherwise restrained competition outside the “exclusionary zone” of the patent. Pursuant to the Agreements, the generic defendants agreed not to market a generic version of Cipro until the ’444 patent expired10 and not to challenge the validity of the ’444 patent, and Bayer agreed to make payments and optionally supply Cipro for resale. Thus, the essence of the Agreements was to exclude the defendants from profiting from the patented invention. This was well within Bayer’s rights as the patentee. Furthermore, there is a long-standing policy in the law in favor of settlements, and this policy extends to patent infringement litigation.

EVIDENCE OF SECONDARY CONSIDERATIONS DOES NOT ALWAYS OVERCOME A STRONG PRIMA FACIE SHOWING OF OBVIOUSNESS

Asyst Technologies, Inc., v. Emtrak, Inc., [2007-1554] (October 10, 2008) [BRYSON, Michel, Newman] The Federal Circuit affirmed the district courts JMOL that the claims were invalid for obviousness.
DISCUSSION: The Federal Circuit agreed that multiplexers were well known in the art at the time of the patent, and that a person of skill in the art would be familiar with multiplexers and how to use them. Thus the Federal Circuit agreed that replacing a the bus of the prior art with a multiplexer is little more than “the simple substitution of one known element for another.” The patentee asserted that there was objective evidence of non-obviousness. The Federal Circuit noted that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support. Thus, even though commercial embodiments of the invention may have enjoyed commercial success, the patentee’s failure to link that commercial success to the features of its invention that were not disclosed in the prior art undermines the probative force of the evidence pertaining to the success of the invention. The Federal Circuit said that the same flaw attends the patentee’s reliance on the evidence of long-felt need for the invention and the evidence of industry praise. While the evidence showed that the overall system drew praise as a solution to a felt need, there was no evidence that the success of the commercial embodiment was attributable to the differences between the claimed invention and the prior art. Moreover, the Federal Circuit observed that evidence of secondary considerations does not always overcome a strong prima facie showing of obviousness.

ULTIMATE BURDEN OF PROVING INVALIDITY NEVER SHIFTS, ALTHOUGH BURDEN OF GOING FORWARD MAY JUMP FROM ONE PARTY TO ANOTHER

Technology Licensing Corporation, v. Videotek, Inc., [2007-1441, -1463] (October 10, 2008) [PLAGER, Newman, Schall] The Federal Circuit affirmed the district court.
DISCUSSION: The first issue, patent validity, turned on whether the patentee was entitled to the filing date of an earlier patent application. The Federal Circuit explained its recent holding in PowerOasis that once a challenger (the alleged infringer) has introduced sufficient evidence to put at issue whether there is prior art alleged to anticipate the claims being asserted, prior art that is dated earlier than the apparent effective date of the asserted patent claim, the patentee has the burden of going forward with evidence and argument to the contrary. It is a long-standing rule of patent law that, because an issued patent is by statute presumed valid, a challenger has the burden of persuasion to show by clear and convincing evidence that the contrary is true. That ultimate burden never shifts, however much the burden of going forward may jump from one party to another as the issues in the case are raised and developed. Correctly understood, PowerOasis is fully consistent with this understanding; until such time as these rules are abrogated by statute, by this court sitting en banc, or by the Supreme Court, the opinion in PowerOasis could not be otherwise.

WHEN THE COMPLEXITIES INHERENT IN THE ENGLISH LANGUAGE MEET THE PECULIARITIES OF PATENT JARGON, THE RESULT CAN BE THE BANE OF MANY UNSUSPECTING PATENT

Predicate Logic, Inc., v. Distributive Software, Inc., [2007-1539] (October 9, 2008) [LINN, Newman, Lourie] The Federal Circuit reversed and remanded summary judgment of invalidity for impermissible broadening of the claims during reexamination.
DISCUSSION: The district court held that amendment from “said at least one index” to “at least one said index” impermissibly broadened the scope of claim 1. The district court further found that an amendment deleting the “instantiating” step and replacing it with two steps—“first instantiating” and “second instantiating”—substantively changed the claim by narrowing it. Whether amendments made during reexamination enlarge the scope of a claim is a matter of claim construction, which is reviewed de novo. The Federal Circuit said that in analyzing the breadth of the claim before and after amendment, the district court was correct to ask whether any conceivable process would infringe the amended claim, but not infringe the original claim. A reissue claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects. However, the Federal Circuit found that the district court’s analysis was flawed, and that the district court’s hypothetical process infringed both the original and the reexamined claim.
Although reversing the district court on the issue of whether the claims were impermissible broadened disposed of the appeal, the Federal Circuit also addressed whether the amendment to the instantiating step was a substantive change, because it affected intervening rights. The Federal Circuit noted that “Identical’ for purposes of intervening rights does not mean verbatim, but means at most without substantive change. . . . An amendment that clarifies the text of the claim or makes it more definite without affecting its scope is generally viewed as identical. The Federal Circuit concluded that the amendment of the “instantiating” step to the “first instantiating” and “second instantiating” steps did not result in a substantive change to claim 1 of the ’798 patent, and thus the original and amended claims are “identical” for purposes of § 252 and, correspondingly, § 307.
QUOTE: “When the complexities inherent in the English language meet the peculiarities of patent jargon, the result can be the bane of many unsuspecting patentees.”

“ABOUT” MEANS WHATEVER THE FEDERAL CIRCUIT WANTS IT TO; BUT IT MAY ELIMINATE THE DOCTRINE OF EQUIVALENTS

Cohesive Technologies, Inc., v. Waters Corporation, [2008-1029, -1030, -1031, -1032, -1059] (October 7, 2008) [LINN, Mayer, Prost] The Federal Circuit held that "about"
DISCUSSION: Cohesive brought three related actions accusing Waters of infringing U.S. Patent Nos. 5,772,874 and 5,919,368.
As to infringement, the Federal Circuit determines the ordinary and customary meaning of undefined claim terms as understood by a person of ordinary skill in the art at the time of the invention, using the methodology in Phillips v. AWH Corp., 415 F.3d 1303, 1312-19 (Fed. Cir. 2005) (en banc). The court looks 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. Those sources include the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.
The Federal Circuit rejected the argument that the patentee had limited the claims by argument, finding that the patentee distinguished the particular polymers in the reference, and not all polymers. The Federal Circuit further rejected the argument that the patentee had disclaimed all divinylbenzene thereby excluding the accused product which was an 80% divinylbenzene copolymer. The Federal Circuit wryly noting that if a patentee disclaims “flammable substances like hydrogen” during prosecution, the patentee has not disclaimed the nonflammable compound H2O, just because it is two-thirds hydrogen.
The Federal Circuit also held that the district court erred by granting judgment as a matter of law on the issue of anticipation before the jury was allowed to consider the claim. The district court did not make a finding that no reasonable jury could conclude that the asserted references anticipated. Rather, the district court itself characterized the anticipation case as “iffy.” The Federal Circuit said that an “iffy” anticipation case, however, does not foreclose a favorable verdict. The Federal Circuit expounded that while anticipation was the epitiome of obviousness, the two are distinct. Among other things, the Federal Circuit pointed out that secondary considerations were a part of an obviousness determination, but not anticipation.
On the issue of inequitable conduct, the Federal Circuit stated that to prove the intent prong of inequitable conduct, the accused infringer must prove by clear and convincing evidence that the material information was withheld with the specific intent to deceive the Patent Office. The Federal Circuit noted that there was no independent evidence of specific intent to deceive, and that the district court specifically credited the testimony of the prosecuting attorneys that they did not regard the misstatements in the expert’s declaration as material.
Regarding infringement of the 25µm columns, the Federal Circuit noted that all of the asserted claims of both patents included limitations requiring in effect that the column particles have average diameters “greater than about 30 μm”. The patentee maintained that the 25µm columns had an average particle size of 29.01 μm, while the accused infringer maintained that they had an average particle size of 25.22 or 25.16 μm. The district court construed the claim language to exclude 29.01 μm particles. The Federal Circuit said that although it is appropriate for a court to consider the accused device when determining what aspect of the claim should be construed, it is not appropriate for the court to construe a claim solely to exclude the accused device. The Federal Circuit also criticized the district court’s claim construction for reading out the qualifier “about”. The district court stated that it did not hesitate in construing about 30 microns to exclude a magnitude of 29.01 microns, because the patentee could have applied for a patent that included particles of “greater than 29 microns” if that is what it had intended. The Federal Circuit responded that the patentee likewise could have drafted the limitation as “greater than 30 μm”—rather than “greater than about 30 μm”—if it had intended the narrow scope that the district court gave to the claim.
The Federal Circuit explained that when “about” is used as part of a numeric range, the use of the word “about,” avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technologic and stylistic context. In determining how far beyond the claimed range the term “about” extends the claim, one must focus on the criticality of the numerical limitation to the invention. In other words, one must look to the purpose that the “about 30 μm” limitation serves, to determine how much smaller than 30 μm the average particle diameter can be and still serve that purpose. It is the purpose of the limitation in the claimed invention—not the purpose of the invention itself—that is relevant. Examining the specification, the Federal Circuit determined that about 30 could not include 20, which was found to be unsatisfactory. The Federal Circuit also noted that 42.39 μm was considered to be about 50. This represented an acceptable variance of at least 15.22% from the 50 μm nominal diameter. The Federal Circuit said it was reasonable to conclude that “about 30 μm” encompasses at least a 15.22% variance from 30 μm. Thus, “about 30 μm” should encompass at least 30 μm ± 15.22%, i.e., between 25.434 μm and 34.566 μm. The Federal Circuit applied the same construction to about 20 μm, and concluded that the proper construction of “greater than about 30 μm” in claim 1 of the ’874 patent is either (1) greater than 25.434 μm, or (2) both greater than 23.044 μm and of sufficiently large size to assure that the column is capable of attaining turbulence.
The Federal Circuit held that the patentee was not entitled to expansion under the Doctrine of Equivalents, noting that by electing to include the broadening word “about” in the claim, the patentee has in this case already captured what would otherwise be equivalents within the literal scope of the claim.

OWNER OF EXPIRED PATENT'S CHALLENGE TO MAINTENANCE FEE"S BROUGH TOO LATE

Georgalis v. United States Patent And Trademark Office, [2008-1260] (October 7, 2008) The Federal Circuit affirmed-in-part, vacated-in-part, and remanded-in-part plaintiff’s challenge to the PTO’s maintenance fee program.
DISCUSSION: Eight years after missing his second maintenance fee, after his late payment was rejected, rather than appealing Georgalis sued the Patent Office challenging the PTO’s maintenance fee program. The Federal Circuit said that Because Georgalis waited approximately ten years (until 2006) to file the instant lawsuit, these claims are time-barred under § 2401(a). Accordingly, the district court lacked jurisdiction to hear Georgalis’s challenges to § 41(b), including his assertions that the patent’s expiration was a taking without just compensation and that § 41(b) is unconstitutional.
The Federal Circuit affirmed the district court’s decision to grant summary judgment in favor of the USPTO on Georgalis’s claims that 35 U.S.C. § 41(c) is unconstitutional and effected a taking without just compensation. The Federal Circuit vacated the portion of the district court’s opinion granting summary judgment in favor of the USPTO on Georgalis’s claims that 35 U.S.C. § 41(b) is unconstitutional and effected a taking without just compensation, and remanded with instructions to dismiss Georgalis’s claims challenging § 41(b) for lack of jurisdiction.

IT'S NOT INFRINGEMENT IF YOU HAVE A LICENSE

Murphey v. TPS Enterprises, [2008-1163] (October 7, 2008) [MAYER, LINN, and MOORE] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of non-infringement because any accused acts took place before the patentee terminated the license to appellees, and thus were not infringing acts.

LITIGATION FIRM DISQUALIFIED FROM PURSUING CLAIM AGAINST PROSECTING FIRM BECAUSE OF STANDARDS OF ATTORNEY LOYALTY

Touchcom, Inc. v. Bereskin & Parr, [2008-1229] (October 6, 2008) [MAYER, Lourie, Dyk] NON-PRECEDENTIAL The Federal Circuit granted Bereskin & Parr’s motion to disqualify Touchcoms’ counsel in an appeal of a dismissal of malpractice action.
DISCUSSION: Wildman, Harrold, represented Touchcom, Inc. in an unsuccessful patent infringement action based upon a patent that Bereskin & Parr obtained for Touchcom, which resulted in the patent being declared invalid for indefiniteness. Wildman Harrold defended the deposition of Bereskin & Parr, and based upon that action, Berseskin moved to disqualify them from representing Touchcom. Based primarily on appearances, the Federal Circuit granted the motion.

A PRIOR ART REFERENCE MUST BE ENABLING

Impax Laboratories, Inc. v. Aventis Pharmaceuticals Inc., [2007-1513] (October 3, 2008) [RADER, Schall, Zobel] The Federal Circuit affirmed the district court’s determination that U.S. Patent No. 5,236,940 does not qualify as an enabling prior art reference and thus does not anticipate claims 1-5 of U.S. Patent No. 5,527,814.
DISCUSSION: In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation. In other words, the prior art must enable the claimed invention. The Wands factors are used to determine when experimention is “undue”: The “undue experimentation” component of that equation examines (1) the quantity of experimentation; (2) the amount of direction or guidance present; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims.
LOF: Whether a prior art reference is enabling presents a question of law based upon underlying factual findings. The Federal Circuit held that the burden to show non-enablement of the prior art was properly shifted to the patentee, and that the district court did not commit error in determining that the burden had been met.

NO REASONABLE JURY COULD HAVE FOUND INFRINGEMENT

The Johns Hoplins University v. Datascope Corp., [2007-1530] (October 2, 2008) [ZOBEL, Newman, Schall] The Federal Circuit reversed the judgment of infringement of U.S. Patent Nos. 5,766,191, 6,824,551, and 7,108,704.
DISCUSSION: The Federal Circuit held that the jury’s verdict of infringement of claim 1 of the ‘191 patent, claims 16-17, 27 and 34 of the ‘551 patent and claims 1, 3-7 and 15-18 of the ‘704 patent was not supported by substantial evidence and that defendant’s motion for JMOL should have been granted.
Each of the asserted independent claims in the patents-in-suit requires introducing, into a vascular conduit, a fragmentation catheter comprised either of a fragmentation member or an expanding distal end that automatically expands to conform to the shape and diameter of the inner lumen of the vascular conduit. The Federal Circuit therefore examined the record for substantial evidence in support of the finding of infringement. Substantial evidence is “more than a mere scintilla” and is “such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” The Federal Circuit found that, no reasonable jury could have found that the ProLumen device literally met this limitation based on the expert’s testimony opinion, given his contradictory testimony that the device only contacts the vessel in two places.