DISTRICT COURT DID NOT CRITICALLY COMPARE PRIOR ART TO CLAIMED INVENTION

Süd-Chemie, Inc., v. Multisorb Technologies, Inc., [2008-1247] (January 30, 2009) [BRYSON, Rader, Friedman] The Federal Circuit vacated and remanded summary judgment of invalidity of U.S. Patent No. 5,743,942 on a desiccant container.
DISCUSSION: The district court found that the prior art reference disclosed the layers of the same material, as required by the patent’s claims, but the Federal Circuit noted that the district court looked only to the classes of materials described in the patents and did not examine the softening points of the materials. The Federal Circuit found that the district failed to recognize that reference actually discloses the use of incompatible materials while the ’942 patent requires compatible materials. The Federal Circuit found that the district court incorrectly concluded that reference taught the same container as that claimed in the ’942 patent.

WE ARE FREE TO OVERRIDE THE JURY’S LEGAL CONCLUSION ON THE ULTIMATE QUESTION OF OBVIOUSNESS WITHOUT DEFERENCE

Boston Scientific Scimed, Inc. v. Cordis Corporation, [2008-1073] (January 15, 2009) The Federal Circuit reversed the judgment that claim 8 of U.S. Patent No. 6,120,536 was valid and infringed.
DISCUSSION: The Federal Circuit reviews a jury’s conclusions on obviousness, a question of law, without deference, and the underlying findings of fact, whether explicit or implicit within the verdict, for substantial evidence. The Federal Circuit said that while a jury may render a decision on a question of obviousness when it is considering any underlying fact questions, obviousness is ultimately a question of law that the Federal Circuit reviews de novo. When the Federal Circuit considers that, even in light of a jury’s findings of fact, the references demonstrate an invention to have been obvious, the Federal Circuit will reverse the obviousness determination. The Federal Circuit held that the record did not contain substantial evidence for the jury to conclude that references did not make the claimed invention obvious.

DO OVER FOR COMISKEY

In Re Comiskey, [2006-1286 (Serial No. 09/461,742)] (January 13, 2009) [DYK, Michel, Prost] The Federal Circuit vacated the panels original decision, and reassigned the opinion to the panel for revision.
DISCUSSION: The panel conclude that Comiskey’s independent claims 1 and 32 and most of their dependent claims are unpatentable subject matter under 35 U.S.C. § 101, and remanded the remainder of the claims for the PTO to consider the § 101 question in the first instance. The Federal Circuit said that only if the requirements of § 101 are satisfied is the inventor allowed to pass through to the other requirements for patentability, such as novelty under § 102 and, of pertinence to this case, non-obviousness under § 103. Supreme Court decisions after the 1952 Patent Act have rejected a “purely literal reading” of the process provision and emphasized that not every “process” is patentable.
The prohibition against the patenting of abstract ideas has two distinct (though related) aspects. First, when an abstract concept has no claimed practical application, it is not patentable. Second, the abstract concept may have a practical application. The Supreme Court has reviewed process patents reciting algorithms or abstract concepts in claims directed to industrial processes. In that context, the Supreme Court has held that a claim reciting an algorithm or abstract idea can state statutory subject matter only if, as employed in the process, it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter.
Following the lead of the Supreme Court, this court and our predecessor court have refused to find processes patentable when they merely claimed a mental process standing alone and untied to another category of statutory subject matter even when a practical application was claimed.
The Federal Circuit said that “[i]t is thus clear that the present statute does not allow patents to be issued on particular business systems—such as a particular type of arbitration—that depend entirely on the use of mental processes.” In other words, the patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter. Thus, it is established that the application of human intelligence to the solution of practical problems is not in and of itself patentable.
The Federal Circuit noted that some of the claims, under the broadest reasonable interpretation, recite the use of a machine, and remanded these claims so that the § 101 question could be addressed in the first instance by the PTO.
COMMENT: THE FEDERAL CIRCUIT REMOVED CONFUSING LANGUAGE FROM THE ORIGINAL OPINION TO THE EFFECT THAT MATTER THAT WAS NOT PROPER SUBJECT MATTER UNDER § 101 WAS OBVIOUS. INSTEAD THE FEDERAL CIRCUIT DECIDED THE CASE (AN APPEAL OF AN OBVIOUSNESS REJECTION) ENTIRELY ON § 101 GROUNDS, WITHOUT ANY DISCUSSION OF OBVIOUSNESS.

SECONDARY CONSIDERATIONS DON'T SAVE OBVIOUS INVENTION

Friskit, Inc., v. Realnetworks, Inc., [2007-1583] (January 12, 2009) [BRYSON, Linn, Prost] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of obviousness after defendant renewed its motion after the Supreme Court decision in KSR.
DISCUSSION: Friskit acknowledged that it did not invent streaming media, playlists or media players, but emphasized that its patents “deliver the glue to put existing technologies together into a single application.” Federal Circuit said that that characterization of the claimed invention did not overcome the showing of obviousness, however, because, as the Supreme Court noted in KSR, the “predictable use of prior art elements according to their established functions” is likely to be within the grasp of one of ordinary skill in the art. After the renewed motion for summary judgment, Friskit shifted its non-obviousness argument, but the Federal Circuit still found that asserted feature to be in the prior art. The Federal Circuit rejected Friskit’s assertion of secondary considerations, noting that Friskit failed to show that the success of those products was attributable to the subject matter that it contends is nonobvious. The Federal Circuit also attached little significance to copying by the accused infringer in the absence of evidence of failed development efforts by the infringer, or that the copied technology fell within the scope of the asserted claims.

OBVIOUSNESS WAS A LEAD PIPE SINCH

Tokyo Keiso Company, Ltd. v. SMC Corporation, [2008-1045, -1112] (January 9, 2009) [LOURIE, Schall, Prost] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of invalidity of claims 1, 2, and 5 of U.S. Patent 5,458,004 for obviousness.
DISCUSSION: The patent related to measuring the velocity of flow in pipes with sound, and in particular using plastic as opposed to metal pipes so that the higher speed of sound in metal did not affect the measurement. The Federal Circuit observed that applicant had admitted most of the elements of the claims in dispute were prior art, stating that [A] statement by an applicant during prosecution identifying certain matter not the work of the inventor as ‘prior art’ is an admission that the matter is prior art.” The Federal Circuit found that the art relied upon by the district court disclosed the claim elements that were not admitted as prior art. As for the specific choice of material, the Federal Circuit noted that the claimed material was in the same family as in the reference, and relied upon the lack of unexpected results in determining that specific material was obvious from the generic disclosure of the prior art.
In finding that no secondary reference was needed, the Federal Circuit quoted from KSR that “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”

FOR THERE TO BE A CONTROVERSY, DEFENDANT HAS TO KNOW WHAT YOU'RE TALKING ABOUT

Panavise Products, Inc., v. National Products, Inc., [2008-1444] (January 6, 2009) [MICHEL, Prost, and Moore] The Federal Circuit affirmed dismissal of Panavise’s declaratory judgment action because Panavise failed to show a substantial controversy upon which the court’s subject matter jurisdiction may rest.
DISCUSSION: Panavise sought a declaratory judgment that it did not infringe U.S. Patent No. 6,666,420 on a suction cup mounting device, and that the patent was invalid and unenforceable. In analyzing jurisdictional questions in declaratory judgment actions, there is no bright-line rule. Instead, the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment. In contesting jurisdiction, defendant submitted the declaration of its president that that neither he, nor anyone in his company, had ever seen or evaluated plaintiff's’s device, that he was not even aware that Panavise made such a product until after their complaint was filed; and (3) that his company and its lawyers had absolutely no contact with Panavise relating to the Device or the ’420 patent prior to the date its complaint was filed. Not surprisingly, the Federal Circuit found that some knowledge of the conduct was necessary for a controversy to arise between the parties, and affirmed the dismissal.

THERE IS A DIFFERENCE BETWEEN PROSECUTION DISCLAIMER, and CONSULTING THE PROSECUTION TO CONFRIM THE CONSTRUTION FROM THE CLAIMS AND SPECIFICATION

Vehicle IP, LLC, v. General Motors Corporation, [2008-1259] (January 6, 2009) [PROST, Mayer, Bryson] NON-PRECEDENTIAL The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 6,535,743, which covers various aspects of a mobile navigation system.
DISCUSSION: The claim in suit, directed to a system for providing directions, required a notification region defined by a plurality of notification coordinates. The district court construed coordinates as a set of numbers used to locate the position of a point. The accused systems used a scalar – a single number representative of a distance. The Federal Circuit noted that the invention requires the claims require a comparison of coordinates, and since one of the coordinates was given in latitude and longitude, the plain language of the claims precludes the possibility that a coordinate can be a scalar, because a scalar cannot be compared with latitude and longitude. The Federal Circuit also found support in explanation of the invention in the prosecution history to distinguish the prior art. The Federal Circuit distinguished between prosecution disclaimer, which is invoked to limit the meaning of a claim term that would otherwise be read broadly, with claim construction where the prosecution history is consulted to see if it supports the construction already discerned from the claim language and confirmed by the written description.