STRUCTURES NOT CORRESPONDING TO THE MEANS ELEMENT ARE STILL RELEVANT TO INFRINGEMENT

Applied Medical Resources Corporation v. United States Surgical Corporation, [2008-1416] (February 24, 2009) [PROST, Mayer, Gajarsa] The Federal Circuit affirmed the denial of a new trial, finding that the jury verdict was not inconsistent with the prior appeal.
DISCUSSION: US Surgical previously won summary judgment that its product did not operate the same way, and thus did not meet a means plus function limitation in Applied Medical’s patent, but the Federal Circuit reversed. At trial on remand, US Surgical repeated its argument that its device did not function in the same way, and thus did not meet the means plus function limitation, and the jury found no infringement. Applied Medical moved for JMOL or a new trial, arguing that the portions of the structure on which US Surgical based its arguments were not part of the structure identified in the court’s construction of element, and thus they are legally irrelevant to the “way” in which that structure performs the claimed functions. When the district court identified the structure that corresponds to the function, which was binding upon the parties, it did not identify portions of the value on which US Surgical based its argument.
The Federal Circuit found that the prior appeal did not hold that the way the non-identified parts function was improper, but that there were questions of material fact that precluded summary judgment, and thus the prior appeal did not prevent US Surgical from making the same summary judgment arguments to the jury. The Federal Circuit noted that nowhere in its discussion did the majority set forth a legal rule that unidentified structure was legally irrelevant to the “way” analysis.
The Federal Circuit conceded that the line between permissibly finding aspects of the claimed invention relevant to the “way” the identified structure functions and impermissibly requiring those “functions” as part of the means-plus-function limitation may not always be precisely defined, but said that such a line is necessary if to give independent meaning to both the “way” and “function” prongs of the equivalency test.
Regardless of the mandate, Applied Medical argues that this court’s precedent clearly establishes that parts of an embodiment that are not identified during claim construction as corresponding to the claimed functions cannot be relevant to the “way” analysis. While the Federal Circuit said it appreciated Applied Medical’s concerns about a roving “way” analysis that permits defendants to confuse or mislead the jury by seizing upon structural differences that are in no way related to the means-plus-function limitation, it concluded that U.S. Surgical’s references to structures not identified in the claim construction comported with its precedent. The Federal Circuit said the cases cited by Applied Medical did not address whether additional parts of the claimed invention can be relevant to the “way” in which the identified structure functions. The Federal said that they could.

30 MONTH STAY UNDER ANDA EXTENDED BECAUSE OF APPLICANT DELAYS

Eli Lilly And Company v. Teva Pharmaceuticals Usa, Inc., [2009-1071] (February 24, 2009) [RADER, Michel, Prost] The Federal Circuit affirmed the district court’s extension of the statutory thirty-month stay of 21 U.S.C. § 355(j)(5)(B)(iii) (2003), preventing the U.S. Food and Drug Administration (“FDA”) from finally approving Teva’s Abbreviated New Drug Application (“ANDA”) because Teva recast its product.DISCUSSION: Lilly sued Teva on June 29, 2006, alleging that Teva’s ANDA infringed four method patents of its twelve listed Orange Book patents for using raloxifene to prevent or treat postmenopausal osteoporosis: The FDA then stayed approval of Teva’s ANDA for thirty months, from the date that Lilly received Teva’s paragraph IV notifications, expiring on November 16, 2008. On September 17, 2008, Lilly moved the district court under 21 U.S.C. § 355(j)(5)(B)(iii) to extend the statutory thirty-month stay due to Teva’s alleged discovery violations, prejudicing Lilly’s preparations for trial. The court granted Lilly’s motion on October 29, 2008, to extend the statutory thirty-month stay until the beginning of trial on March 9, 2009. The Federal Circuit found that the district court acted within its discretion. The Federal Circuit noted that 21 U.S.C. § 355(j)(5)(B)(iii) grants district courts the discretion to adjust the statutory thirty-month stay of ANDAs if “either party to the action failed to reasonably cooperate in expediting the action.”

DEFENDANT'S CONVERSION FROM SEEKER OF LICENSE TO PATENT-EVISCERATING PRIOR ART HOLDER INDICATED ASSERTED PRIOR ART WAS NOT MATERIAL

Line Rothman v. Target Corp., [2008-1375] (February 13, 2009) [RADER, Friedman, Bryson] The Federal Circuit affirmed the holding that claims of U.S. Patent No. 6,855,029 were invalid, but reversed a finding of inequitable conduct by the patentee.
DISCUSSION: The Federal Circuit characterized appellant’s argument on appeal as a highlight reel of testimonial sound bites from Appellees’ witnesses in an effort to make the jury’s verdict seem unreasonable. The Federal Circuit added that in a final attempt to avoid invalidation of the patent, appellant relied upon secondary considerations, which the Federal Circuit reminded is not just a cumulative or confirmatory part of the obviousness calculus but constitutes independent evidence of nonobviousness. The Federal Circuit said that a strong prima facie obviousness showing may stand even in the face of considerable evidence of secondary considerations.
The Federal Circuit noted that leaving the question of inequitable conduct for the jury, while not ideal, was permissible. The Federal Circuit stated that to prevail on an inequitable conduct charge, a defendant must present “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]. Both of these factual elements require proof by clear and convincing evidence. Commenting on the allegedly withheld art, the Federal Circuit said that receipt of threatening letters containing vague descriptions of unsubstantiated prior art at the tail end of a souring business relationship does not create an automatic duty of disclosure. Otherwise, every potential patent licensee (and prospective infringer) could subject a patent applicant to the possibility of inequitable conduct sanctions on a whim. The Federal Circuit noted the dramatic transformation that defendant morphed from interested suitor offering favorable royalty terms and expressing assurance of “strong initial business” with a major retailer to a patent-eviscerating prior art holder. The Federal Circuit found that the withheld prior art was merely cumulative, and did not support a finding of inequitable conduct. The Federal Circuit also found inadequate assertions that attorney argument about the references could support a finding of inequitable conduct.

Kuhl Wheels, LLC v. General Motors Corporation, [2008-1158, -1179] (February 10, 2009) [MICHEL, MAYER, and DYK] The Federal Circuit affirmed summary judgment of non-infringement in favor defendants with eight days of the oral argument.

FEDERAL CIRCUIT IGNORES ORDINARY MEANING AND GIVES NARROW CONSTRUCTION TO "WOUND", SUSTAINING VALIDITY OF PATENT

Kinetic Concepts, Inc., v. Blue Sky Medical Group, Inc., [2007-1340, -1341, -1342] (February 2, 2009) [PROST, Bryson, Dyk] the Federa; Corciot affirmed the denial of defendants’ motion for judgment as a matter of law on obviousness and their alternative motion for a new trial on obviousness, and the failure to declare several claim terms indefinite, and affirmed plaintiff’s appeal of the denial of its motion for judgment as a matter of law on infringement and its alternative motion for a new trial on infringement.
DISCUSSION: Defendants complained about the proper construction of the term “wound”, which affected the application of the prior art to the claims. The Federal Circuit affirmed the construction, noting that to construe “wound” broader would expand the scope of the claims far beyond anything described in the specification. The Federal Circuit found sufficient support for the jury’s determination of non-obviousness. Regarding the plaintiff’s motion for JMOL of infringement, the Federal Circuit said that while Defendants’ evidence may not have been overwhelming, it was nonetheless sufficient to support the jury’s conclusion that plaintiff failed to meet its burden of proving direct infringement.
Regarding inducement, the Federal Circuit said that to prove induced infringement, the plaintiff must prove both direct infringement and “that the defendant possessed specific intent to encourage another’s infringement” citing DSU Med. Corp. v. JMS Co. The Federal Circuit found that while practicing the prior art is not a defense to patent infringement, it could support a jury verdict that the defendants did not intend to infringe.