The Formicary

Everyone Makes Mistakes; But the Patentee Has to Fix Them All

2012-01-01T19:04:00.004-06:00

Everyone makes mistakes, but when a mistake occurs in a patent, regardless of who is at fault, the patent may not have full force and effect unless and until the patent is corrected. At first blush the Fig. 12 from U.S. Patent No. 8,075,302 might appear to be of a transparent device, but it is supposed to be "an exploded view of a preferred embodiment of the dispensing and mixing head showing the static mixer, the mixing block, seal plate, valving block, compound pin valves, O-rings, packing, valve actuating air cylinder, and associated connecting and mounting hardware." Furthermore the Figure in the patent is not the Figure that the applicant submitted. How the image disappeared is the Patent Office's problem, but the fact that it disappeared is the patentee's problem. The specification may be incomplete unless and until the patent is corrected, by reissue or a Certificate of Correction

Design Patent Claim Drafting

2011-12-29T11:46:00.001-06:00

While the words of a design patent claim are standardized, that does not mean that there is no art to drafting a design patent. A design patent claims the design "as shown and described". Thus the scope of the claim is controlled by controlling what is shown and how it is described. U.S. Patent No. D456,915 is an interesting example of controlling the scope of a design patent claim through the use of dashed lines and description. The invention, an eggnog-colored candle top with a sprinkled nutmeg-like topping, is defined solely by dashed lines. This means that the claim is not limited to any particular shape, and essentially covers randomly dispersed dots on the top of a candle. Also interesting is the attempt to cover color (eggnog) with a black and white drawing solely through written description and the submission of informal drawings.

Proper preparation of a design patent means thoughtful preparation of the drawings, and careful drafting of the description.

The Name of the Game is the . . . Spec?

2011-07-08T17:07:00.002-05:00

Retractable Technologies, Inc. v. Becton, Dickinson And Company, 2010-1402 (July 8, 2011) [LOURIE, Rader, Plager] the Federal Circuit affirmed in part and reversed in part judgment that Becton Dickinson infringed U.S. Patent Nos. 5,632,733, 6,090,077, and 7,351,224 on syringes with retractable needles.

DISCUSSION: The primary issue on appeal was whether the district court erred in construing “a hollow syringe body” in several of the claims in dispute as not being limited to a one-piece hollow syringe body.

While there was a dependent claim that limited the body to a “one-piece body” which tended to imply the independent claim was not so limited, the Federal Circuit found that this implication was “not a strong one”, noting that independent claim that “none of the claims expressly recite a body that contains multiple pieces”.

The Federal Circuit said that “[i]t is axiomatic that the claim construction process entails more than viewing the claim language in isolation” and that [c]laim language must always be read in view of the writ-ten description”. The Federal Circuit found that the specification indicated that “body” referred to a one-piece body. The Federal Circuit pointed to the Background of the Art said:

U.S. Patent No. 5,632,733, col. 2, ll. 26-31. The Federal Circuit also pointed to the Summary of the Invention:

U.S. Patent No. 5,632,733, col. 2, ll. 45-47. The Federal Circuit noted that the Detailed Description repeatedly mentions the one-piece construction:

U.S. Patent No. 5,632,733, col. 5, ll. 54-56.

U.S. Patent No. 5,632,733, col. 10, ll. 9-10. In contrast, the Federal Circuit noted that the “specifications do not disclose a body that consists of multiple pieces or indicate that the body is anything other than a one-piece body”.

Noting that there is a fine line between construing the claims in light of the specification and improperly importing a limitation from the specification into the claims, the Federal Circuit identified it “strive[s] to capture the scope of the actual invention, rather than strictly limit the scope of claims to disclosed embodiments or allow the claim language to become divorced from what the specification conveys is the invention.” The Federal Circuit said that “while the claims leave open the possibility that the recited ‘body’ may encompass a syringe body composed of more than one piece, the specifications tell us otherwise.” The Federal Circuit concluded that “a construction of “body” that limits the term to a one-piece body is required to tether the claims to what the specifications indicate the inventor actually invented.”

SIGNIFICANCE:

1. While Judge Rich famously proclaimed “the name of the game is the claim” (Giles S. Rich, The Extent of the Protection and Interpretation of Claims-American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright L., 497, 499 (1990) ("To coin a phrase, the name of the game is the claim."), in a post-Philips world the specification is can undo the work of a careful claim drafter.

2. When drafting a specification, describe alternatives, and when an adjective is used (e.g. one-piece) specifically contemplate alternatives.

3. When employing claim differentiation, don’t rely on a dependent claim specifically claiming the preferred embodiment to broaden the base independent claim, specifically claim alternatives to the preferred embodiment.

Findings on Intent Lacking in first Post-Thersense Inequitable Conduct Case

2011-06-27T16:55:00.005-05:00

American Calcar, Inc. v. American Honda Motor Co., Inc., 2009-1503, -1567 (June 27, 2011) [LOURIE, Bryson Gajarsa] the Federal Circuit affirmed summary judgment decisions of non infringement, reversed the denial of JMOL on the validity of the ’759 patent, and vacated and remanded the finding of inequitable conduct.

DISCUSSION: Although the question of inequitable conduct was presented to the jury for an advisory determination, the Federal Circuit said that inequitable conduct is equitable in nature, with no right to a jury, and the trial court has the obligation to resolve the underlying facts of materiality and intent. The Federal Circuit said that its en banc decision in Therasense that to prove inequitable conduct, the accused infringer must provide evidence that the applicant (1) misrepresented or omitted material information, and (2) did so with specific intent to deceive the PTO.

Under Therasense, the materiality required to establish inequitable conduct is, in general, but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Further, while deceptive intent can be inferred from indirect and circumstantial evidence, that “inference must not only be based on sufficient evidence and be reasonable in light of that evidence, but it must also be the single most reasonable inference able to be drawn from the evidence to meet the clear and convincing standard.” The Federal Circuit reiterated that in a case involving nondisclosure of information, clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.

The Federal Circuit noted that the withheld information may be material if it would have blocked patent issuance under the PTO’s preponderance of the evidence standard, giving those patents’ claims their broadest reasonable construction. However it could not infer that finding from the district court’s opinion, so it vacated and remanded the case.

Under Therasense, “the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.” The Federal Circuit noted that although the court performed a detailed analysis of the facts withheld, it made no holding that any of the inventors knew that the withheld information was in fact material and made a deliberate decision to withhold it. The Federal Circuit said that instead, the district court relied on the sliding scale standard that was rejected in Therasense, basing its finding of intent significantly on the materiality of the 96RL system to the claimed invention. The Federal Circuit said that it was not its task to make factual findings, and vacated the district court’s finding of intent and remand the issue to the district court.

Regarding the summary judgment of non-infringement, the Federal Circuit agreed with the district court that the language of the summary and the detailed description limited the meaning of the claims, despite the fact that at least the summary used the language “for example” as well as an argument based upon claim differentiation, noting that if a claim will bear only one interpretation, similarity will have to be tolerated.

The Federal Circuit also held the patentee to a narrower construction of the term “source”, noting that it may reach a narrower construction, limited to the embodiments disclosed in the specification, when the claims themselves, the specification, or the prosecution history clearly indicate that the invention encompasses no more than that confined structure or method. On the issue of equivalents, the Federal Circuit found that ACI failed to provide particularized testimony and linking argument as to the ‘insubstantiality of the differences’ between the claimed invention and the accused device or process, and in any event finding a signal from one source to be equivalent to “signals from a plurality of sources” would vitiate that claim limitation by rendering it meaningless.

The Federal Circuit agreed with the district court’s claim construction and that “in response to” connotes that the second event occur in reaction to the first event. This was supported by the language of the claim itself. The Federal Circuit further observed that the specification did not disclose any embodiment that requires intervening action.

Transfer Right When You Pick A Court Just For Venue Court Needs Link to Case

2010-12-03T23:57:00.000-06:00

In re Acer, Misc. No. 942, [SCHALL, Gajarsa, Moore] (2010), the Federal Circuit granted a petition for mandamus transferring the case from the Eastern District of Texas to the Northern District of California. Mandamus is available to correct correct a “patently erroneous denial of transfer”. The Court must consider both the private interest factors of (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make a trial easy, expeditious, and inexpensive, and the public interest factors of (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflicts of laws or in the application of foreign law. Mandamus was used to correction a “patently erroneous denial of transfer”.
The Federal Circuit concluded “the convenience of the parties and witnesses, the sources of proof, the local interest, and the compulsory process factors all significantly favor transfer. Mean-while, no factor remotely favors keeping this case in the Eastern District of Texas. Although Dell may be a likely source of evidence at trial.”

Induce Infringement / Without knowledge of Patent / Don't Turn A Blind Eye

2010-02-05T14:46:00.000-06:00

SEB S.A., v. Montgomery Ward & Co., Inc., [2009-1099, -1108, -1119] (February 5, 2010) [RADER, Bryson, Linn] The Federal Circuit affirmed the holding that U.S. Patent No. 4,995,312 was valid, and infringed, and that defendant had induced infringement of the patent.
DISCUSSION:
Claim Construction: U.S. Patent No. 4,995,312 covers a deep fryer having a heated pan, and a plastic skirt that is “completely free with respect to the pan”. The limitation “completely free with respect to the pan” was construed to mean “there are no thermal bridges between the skirt and the pan.” The patented device had screws fixing the skirt, but these were thermally isolated and thus were not thermal bridges. The Federal Circuit perceived a slight internal inconsistency with the district court’s claim construction of “completely free” in the phrase “said skirt (3) being completely free with respect to the pan (1) with the exception of a ring (5)” because if “completely free” merely meant “no thermal bridges between the skirt and the pan,” the claim would not need to exclude expressly the ring from the completely free limitation with the fact that there was an insulting ring between the skirt and the pan. Despite the inconsistency, to the Federal Circuit the district court’s construction of “completely free” rings true. The Federal Circuit, applying the Canon that “Differences among claims can . . . be a useful guide in understanding the meaning of particular claim terms”, noted that if “completely free” actually meant “completely free” then claim 8, which calls for a rod, would be excluded. Furthermore, applying the Canon that “[A] construction that would not read on the preferred embodiment would rarely if ever be correct and would require highly persuasive evidentiary support.” the Federal Circuit said if “completely free” meant “completely free” then the claim would not cover the only embodiment. The Federal Circuit put great stock in the fact that the specification repeatedly highlights the inventiveness of eliminating thermal bridges to prevent heat transfer to the plastic skirt, and was apparently untroubled by the fact that applicant forsook this language in favor of “completely free”. The patent prosecutors (from the big city of Arlington, Virginia, got it right, while defendant’s counsel “from the middle of nowhere” (see below) doesn’t get the benefit of the doubt. The Federal Circuit said that read in light of the entire specification and with an eye to the preferred embodiment, then, the term “completely free” means “practically or functionally free.”

Because of the jury instructions, the Federal Circuit had to conclude that there was both direct infringement and inducement in order to affirm.
Actual Infringement by f.o.b. sales abroad:
As to direct infringement, defendant argued two points: First, an offer in the United States to sell goods outside of the United States does not violate the “offer to sell” provision of § 271(a). Second, in determining if a sale occurred in the United States, it was erroneous to consider “where the products were shipped from and where the products were shipped to”. The Federal Circuit observed that it had yet to define the full territorial scope of the “offers to sell” offense in § 271(a), but did point out that in Rotec Indus., Inc. v. Mitsubishi Corp., Judge Newman, concurring said that “[A]n offer to sell a device or system whose actual sale can not infringe a United States patent is not an infringing act under § 271.” The Federal Circuit said that the sales did not so clearly occur overseas that the district court’s failure to include such a limitation in its jury instructions affected the integrity of the trial. The Federal Circuit said that the only evidence of where sales occurred was that the products were delivered f.o.b. Hong Kong or mainland China. However, the Federal Circuit said that it has “rejected the notion that simply because goods were shipped f.o.b., the location of the ‘sale’ for the purposes of § 271 must be the location from which the goods were shipped.” Citing Lightcubes. Thus the district court’s instruction that the jury could consider “where the products were shipped from and where the products were shipped to” was not error.
Inducement by Turning A Blind Eye:
The district court found that there is no evidence that defendant was aware of the ’312 patent before April 9, 1998, but still found evidence to support plaintiff’s theory of inducement. This “evidence” included the fact that despite the fact that there are “a zillion patent attorneys in New York City” defendant went to a “guy in the middle of nowhere” to clear the product. The district court found that this was enough for the jury to infer that defendant understood that he was likely violating a patent. Implicit in this finding are: 1. Binghamton New Your is in the middle of no where, and 2. The zillionth best patent attorney in New York City, is better than any patent attorney in Binghamton.
Defendant argued that it could not be held liable for inducing a patent that it did not actually know existed, citing DSU Med Corp. v. JMS Co., which said that “The requirement that the alleged infringer knew or should have known his actions would induce actual infringement necessarily includes the requirement that he or she knew of the patent.”. However Federal Circuit said that DSU Medical did not set out the metes and bounds of the knowledge-of-the-patent requirement. In the Federal Circuit’s words, DSU Medical “decided the target of the knowledge, not the nature of that knowledge”.
The Federal Circuit said that inducement requires a showing of “specific intent to encourage another’s infringement” but that specific intent is not so narrow as to allow an accused wrongdoer to actively disregard a known risk that an element of the offense exists. The Federal Circuit said that the standard of deliberate indifference of a known risk is not different from actual knowledge, but is a form of actual knowledge, and a party’s knowledge of a disputed fact may also be proved through evidence that he consciously avoided knowledge of what would otherwise have been obvious to him.
The Federal Circuit held that a claim for inducement is viable even where the patentee has not produced direct evidence that the accused infringer actually knew of the patent-in-suit, and that this was such an instance. The Federal Circuit noted the following evidence that defendant deliberately disregarded a known risk that there was a patent:
1. Defendant purchased a plaintiff product in Hong Kong and copied all but the cosmetics.
2. While defendant hired an attorney to conduct a right-to-use study, it did not tell him that the product had been copied (noting that such failure would be highly suggestive of deliberate indifference in most circumstances).
3. Defendant’s did not point to any exculpatory evidence -- the lack of patent marking was rejected because defendant did not explain why it thought a product marketed in Hong Kong would have the U.S. patent number.
The Federal Circuit indicated that it was not setting the outer limit of what is sufficient constructive knowledge to constitute actual knowledge, but hinted that ignoring patent numbers marked on a product might be enough.

HYPOTHOSIZE A / REASONABLE ROYALTY / BUT DON'T SPECULATE

2010-02-05T14:37:00.000-06:00

Resqnet.Com, Inc., v. Lansa, Inc., [2008-1365,-1366, 2009-1030] (February 5, 2010) [NEWMAN, LOURIE, and RADER] The Federal Circuit affirmed the finding that U.S. Patent No. 6,295,075 is valid and infringed, that U.S. Patent No. 5,831,608 is not infringed, reversed the imposition of sanctions, and vacated the damage award and remanded for recalculation.
DISCUSSION: Regarding the reasonable royalty damages, the Federal Circuit observed “a reasonable royalty analysis requires a court to hypothesize, not to speculate”. The Federal Circuit said that “the trial court must carefully tie proof of damages to the claimed invention’s footprint in the market place”. The licenses used by the plaintiff’s damages expert were silent about the patent in suit, and included rights beyond a license to the patent in suit. The Federal Circuit instructed that on remand the trial court should not rely on unrelated licenses to increase the reasonable royalty rate above rates more clearly linked to the economic demand for the claimed technology. The Federal Circuit reversed the award of sanctions as an abuse of discretion and untimely.

The Patent Office / Miscalculates Patent Term / Extensions Increase

2010-01-07T19:58:00.004-06:00

Wyeth v. Kappos, [2009-1120] (January 7, 2010)[RADER, Plager, and Moore] The Federal Circuit affirmed summary judgment that Wyeth was entitled to extended patent term adjustments under 35 U.S.C. § 154(b) due to the Patent and Trademark Office’s delay in prosecuting their patent applications.
DISCUSSION: 35 U.S.C. § 154(b)(1) provides two separate extensions of patent term, one under part (A) for delays occasioned by failure of the USPTO to meet certain deadlines, and one under part (B) for pendency greater than 3 years. These are subject to reduction for overlap, which the USPTO interpreted as limiting the patentee to the greater of the part (A) extension or the part (B) extension, while Wyeth argued that only the part (A) that occurred after three years from filing is a true overlap. For one patent, the USPTO determined an extension of 462 days, while Wyeth calculated an extension of 756 days, and for the other patent, the USPTO determined a 492 day extension, while Wyeth determined a 722 day extension.
On a matter of pure statutory construction, the Federal Circuit agreed with Wyeth that the USPTO was calculating the extension wrong, and that the extension under parts A and B don't overlap, except when the A extension is for delays beyond the third anniversary of filing.

THE PENALTY FOR / FALSE MARKING IS ASSESSED PER / MISMARKED ARTICLE

2009-12-28T23:28:00.001-06:00

The Forest Group, Inc., v. Bon Tool Company, [2009-1044] (December 28, 2009)[MOORE, Rader, Plager] The Federal Circuit reversed and remanded the $500 fine against Forest for false patent marking, and affirmed the denial of attorneys fees and the holdings that that Forest had not violated the Lanham Act, that U.S. Patent No. 5,645,515 was not invalid, and was not infringed,
DISCUSSION: The Federal Circuit held that the plain language of 35 U.S.C. § 292 requires courts to impose penalties for false marking on a per article basis, and thus remanded the $500 penalty for district court to impose a per article penalty. The Federal Circuit provided some comfort noting:
This does not mean that a court must fine those guilty of false marking $500 per article marked. The statute provides a fine of “not more than $500 for every such offense.” 35 U.S.C. § 292(a) (emphasis added). By allowing a range of penalties, the statute provides district courts the discretion to strike a balance between encouraging enforcement of an important public policy and imposing disproportionately large penalties for small, inexpensive items produced in large quantities. In the case of inexpensive mass-produced articles, a court has the discretion to determine that a fraction of a penny per article is a proper penalty.
COMMENT: This holding is of particular concern because of indications that mismarking may include statements that a product is “covered by one or more” patents on a list, or that the product is covered by an expired patent. Best Practice: Every patentee should promptly review the patent marking on its products, remove patents that do not cover the product, and consider removing patents that have expired.

CAN YOU PICTURE THIS? / SPECIMENS OF USE NEED NOT/ INCLUDE A PHOTO

2009-12-23T16:36:00.000-06:00

In Re Michael Sones, [2009-1140 (Serial No. 78/717,427)](December 23, 2009)[ LINN, Newman, Rader] The Federal Circuit reversed theTTAB, which affirmed the Examiner’s rejection of internet specimens which did not necessarily have to include a photograph of the goods.
DISCUSSION: The Federal Circuit held that a picture is not a mandatory requirement for a website-based specimen of use, and that the test for an acceptable website-based specimen, just as any other specimen, is simply that it must in some way evince that the mark is “associated” with the goods and serves as an indicator of source.. The Court said that precedentestablishes that a visual depiction of a product is an important consideration in determining whether a submitted specimen sufficiently associates a mark with the source of the goods. It might well be that the absence of a picture will render website specimens ineffective in many cases and will be, as the PTO argues, “[a] crucial factor in the court’s analysis.” But a picture is not the only way to show an association between a mark and the goods, and we cannot approve of the rigid, bright-line rule that the PTO applied here.

LIABILITY / ESTIMATE FOR BANKRUPTCY / LARGELY AFFIRMED

2009-12-22T16:43:00.000-06:00

In Re Electro-Mechanical Industries, [2008-1530, 2009-1137] (December 22, 2009) [MOORE, Newman, Plager] NON-PRECEDENTIAL The Federal Circuit affirmed, with modification, a the determination in an estimation proceeding of the bankrupt’s liability for willful patent infringement.

NO JMOL? / NO BASIS FOR APPEAL. / MICROSOFT ENJOINED

2009-12-22T16:41:00.001-06:00

i4i Limited Partnership v. Microsoft Corporation, [2009-1504](December 22, 2009)[PROST, Schall, Moore] The Federal Circuit affirmed a $200 million damage award, and an injunction against future selling, offering to sell, importing, or using copies of Word with the infringing custom XML editor. Microsoft is also prohibited from instructing or assisting new customers in the custom XML editor’s use.
DISCUSSION: The Federal Circuit rejected Microsoft’s claim construction which the Federal Circuit found improperly imported benefit of the claim limitation, rather than the limitation.
CANON: Generally, a claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a “clear intention” to limit the claim’s scope with “words or expressions of manifest exclusion or restriction.” CANON: "By the same token, not every benefit flowing from an invention is a claim limitation." TIP: The use of permissive language in the specification, can help prevent the preferred embodiment from becoming the only embodiment.
The Federal Circuit also held that Microsoft could not challenge the non-obviousness determination, because Microsoft failed make a JMOL, holding that a party must file a pre-verdict JMOL motion on all theories, and with respect to all prior art references, that it wishes to challenge with a post-verdict JMOL. The Federal Circuit rejected Microsoft’s argument that the clear and convincing burden of proof should have been less for prior art that was not before the PTO. Finally the Federal Circuit affirmed the permanent injunction, with potentially serious impact on futures sales of Microsoft Word.

ANTICIPATION? / ORDINARY OBSERVER / IS THE CORRECT TEST

2009-12-17T16:48:00.000-06:00

International Seaway Trading Corporation v. Walgreens Corporation, and TOUCHSPORT FOOTWEAR USA, INC., [2009-1237](December 17, 2009)[DYK, Bryson, Clevenger] The Federal Circuit, affirmed in part, reversed in part, and remanded the holding that the design patents in suit were anticipated.
DISCUSSION: The Federal Circuit held that the district court did not err in concluding that the ordinary observer test is the sole test for design patent invalidity under § 102, but that it did err in failing to consider the entirety of the designs, including the insoles of the shoes.

MANDAMUS GRANTED / FOR ABUSE OF DISCRETION / CASE SHOULD BE TRANSFERRED

2009-12-17T16:46:00.000-06:00

In re Nintendo Co., Ltd., [MISCELLANEOUS DOCKET NO. 914] (December 17, 2009) [RADER, Clevenger, Dyk]] The Federal Circuit granted mandamus transferring the case from the Eastern District of Texas.
DISCUSSION: The Federal Circuit said that A motion to transfer venue should be granted upon a showing that the transferee venue is “clearly more convenient” than the venue chosen by the plaintiff. The Fifth Circuit applies the “public” and “private” factors for determining forum non conveniens when deciding a § 1404(a) motion to transfer venue.The private interest factors include: “(1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make a trial easy, expeditious and inexpensive.” The public interest factors include: “(1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflicts of law or in the application of foreign law.”

PRELIMINARY / INJUNCTION INCONSISTENT / WITH STAY, ONE REVERSED

2009-12-16T16:50:00.000-06:00

Automated Merchandising Systems, Inc. v. Crane Co., [2009-1158, -1164] (December 16, 2009) [MICHEL, Clevenger, and Dyk] The Federal Circuit reversed the grant of a preliminary injunction, but affirmed the stay pending reexamination.
DISCUSSION: The Federal Circuit found that AMS had not demonstrated it was entitled to a preliminary injunction. The Federal Circuit noted that because it logically seems that there cannot simultaneously be a substantial issue of patentability and no substantial issue of patentability, stays pending reexamination are typically inappropriate in cases in which preliminary injunctions are appropriate. However, since the grant of preliminary injunction was reversed, there was no longer any problem with staying AMS’s claims against Crane pending the outcome of the reexamination process.

AFTER KSR / COMMON SENSE APPLIES NOT A / RIGID FORMULA

2009-12-15T16:55:00.000-06:00

In Re Henry Gleizer, [2009-1373](December 15, 2009)[LOURIE, Dyk, Kendall] NON-PRECEDENTIAL The Federal Circuit affirmed the rejection of applicant’s claims for obviousness.
DISCUSSION: The Federal Circuit agreed with the Board affirmance of the rejection and noted that “[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case” and that the “common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not.”

EXPERT'S CONCLUSION / DOES NOT CREATE ISSUE OF / MATERIAL FACT

2009-12-15T16:52:00.000-06:00

Intellectual Science and Technology, Inc., v. SONY Electronics, Inc., [2009-1142] (December 15, 2009) [RADER, Archer, Gajarsa] The Federal Circuit affirmed summary judgment of non-infringement.
DISCUSSION: This court concludes that plaintiff expert did not sufficiently identify the structural elements corresponding to the claimed “data transmitting means.” An expert’s unsupported conclusion on the ultimate issue of infringement will not alone create a genuine issue of material fact. When counsel for Intellectual Science was asked at oral argument its expert identified the structural elements in his declaration, counsel conceded that the language is “perhaps not as grammatical as one would wish.” The Federal Circuit said that asking litigants to provide more than a difficult-to-decipher expert declaration does not impose too high a burden at summary judgment, especially where, as here, the structural elements are allegedly common.

CLAIMS SHOULD BE CONSTRUED / THE SAME FOR VALIDITY / AND FOR INFRINGEMENT

2009-12-07T20:59:00.002-06:00

Source Search Technologies, LLC, v. Lendingtree, LLC, [2008-1505, -1524] (December 7, 2009) [RADER, Plager, Schall). The Federal Circuit reversed and remanded summary judgment that the asserted claims of U.S. Patent No. 5,758,328 (“’328 patent”) were infringed but invalid on obviousness grounds.
DISCUSSION: The Federal Circuit said that “[i]t is axiomatic that claims are construed the same way for both invalidity and infringement.” Having reversed summary judgment of invalidity, the Federal Ciruit also reversed the summary judgment of infringement.

JURISDICTION MORE / LIKELY WHERE A LICENSING / ENTITY INVOLVED

2009-12-04T21:00:00.000-06:00

Hewlett-Packard Company v. Acceleron LLC, [2009-1283]( December 4, 2009) [MICHEL, Newman, Moore] The Federal Circuit reversed the dismissal for lack of declaratory judgment jurisdiction.
DISCUSSION: The Federal Circuit found declaratory judgment jurisdiction from the contacts by defendant patent holding company despite the lack of express threats, or the assertion of specific claims or the identification of accused products, noting it is implausible (especially after MedImmune and several post-MedImmune decisions from this court) to expect that a competent lawyer drafting such correspondence for a patent owner would identify specific claims, present claim charts, and explicitly allege infringement. The Federal Circuit said that: conduct that can be reasonably inferred as demonstrating intent to enforce a patent can create declaratory judgment jurisdiction. Finally, the Federal Circuit indicated that the conduct of a licensing entity, which without enforcement it receives no benefits from its patents, can affect the assessment of whether there is a actual case or controversy.

Federal Circuit Says “Common Sense” has Role in Obviousness Determinations. Who knew?

2009-12-02T18:12:00.000-06:00

Perfect Web Technologies, Inc. v. Infousa, Inc., [09-1105] (December 2, 2009)

At issue was the obviousness of claim 1 of U.S. Patent No. 6,631,400, directed to managing bulk email distribution:

1. A method for managing bulk e-mail distribution comprising the steps:
(A) matching a target recipient profile with a group of target recipients;
(B) transmitting a set of bulk e-mails to said target recipients in said matched group;
(C) calculating a quantity of e-mails in said set of bulk e-mails which have been successfully received by said target recipients; and,
(D) if said calculated quantity does not exceed a prescribed minimum quantity of successfully received e-mails, repeating steps (A)-(C) until said calculated quantity exceeds said prescribed minimum quantity.

The parties agreed that steps (A) through (C) were in the prior art, and that step (D) was not. The parties further agreed on the scope and content of the prior art and the level of skill in the art. Infousa maintained that repeating the prior art steps until the desired number of emails had been received was a matter of common sense, and obvious. The Federal Circuit noted that in rejecting rigid application of the “teaching, suggestion, or motivation” test for obviousness, the Supreme Court said that common sense can be a source of reasons to combine or modify prior art references to achieve the patented invention. The Federal Circuit added that “Common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning.” The Federal Circuit pointed out in Dystar “we explained that that use of common sense does not require a ‘specific hint or suggestion in a particular reference,’ only a reasoned explanation that avoids conclusory generalizations.” The Federal Circuit held that: “while an analysis of obviousness always depends on evidence that supports the required Graham factual findings, it also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.”
Turning to the facts of the present case, the Federal Circuit found the predicate evidence on which the district court based its “common sense” reasoning appeared in the record, namely the facts that step (D) merely involves repeating earlier steps, and that a marketer could repeat those steps, if desired. The district court also adequately explained its invocation of common sense. The district court reasoned: “If 100 e-mail deliveries were ordered, and the first transmission delivered only 95, common sense dictates that one should try again. One could do little else.” The Federal Circuit also found that step (D) would have been obvious to try. The experts identified at most a few potential solutions for this problem at the time, including resending failed messages and sending new messages. Of these limited options, “simple logic” suggested that sending messages to new addresses was more likely to produce successful deliveries than re-sending messages to addresses that have already failed.
So, common sense has been part of the obvious determination all along. Maybe we haven’t noticed because the courts and PTO have such a high regard for it, that they use it sparingly.

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

2009-02-24T13:29:00.000-06:00

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

2009-02-24T13:21:00.001-06:00

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

2009-02-13T22:21:00.000-06:00

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.

2009-02-10T22:34:00.000-06:00

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

2009-02-02T14:13:00.001-06:00

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.

DISTRICT COURT DID NOT CRITICALLY COMPARE PRIOR ART TO CLAIMED INVENTION

2009-01-20T14:10:00.001-06:00

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

2009-01-15T12:29:00.000-06:00

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

2009-01-13T12:31:00.000-06:00

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

2009-01-12T12:34:00.001-06:00

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

2009-01-09T12:00:00.000-06:00

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

2009-01-06T12:06:00.000-06:00

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

2009-01-06T12:04:00.000-06:00

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.

IF YOU BUILD A BUSINESS ON AN INFRINGING PRODUCT YOU CAN'T COMPLAIN WHEN AN INJUNCTION DESTROYS THE BUSINESS

2008-12-30T21:01:00.001-06:00

Acumed LLC, v. Stryker Corporation, [2008-1124] (December 30, 2008) [LOURIE, Mayer, Gajarsa] The Federal Circuit affirmed the grant of a permanent injunction.
DISCUSSION: Following eBay, a patentee must satisfy the well-established four-factor test for injunctive relief before a court may grant a permanent injunction. The Federal Circuit reviews the grant of a preliminary for abuse of discretion. Abuse of discretion may be found on a 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.”
The Federal Circuit said that the essential attribute of a patent grant is that it provides a right to exclude competitors from infringing the patent. In view of that right, infringement may cause a patentee irreparable harm not remediable by a reasonable royalty. The Federal Circuit said that the fact that a patentee has previously chosen to license the patent may indicate that a reasonable royalty does compensate for an infringement, that is but one factor for the district court to consider. The fact of the grant of previous licenses, the identity of the past licensees, the experience in the market since the licenses were granted, and the identity of the new infringer all may affect the district court’s discretionary decision concerning whether a reasonable royalty from an infringer constitutes damages adequate to compensate for the infringement.

FEDERAL CIRCUIT TEACHES THE E.D. OF TEXAS ABOUT FORUM NON CONVENIENS

2008-12-29T21:07:00.000-06:00

In re TS Tech USA Corporation, [Miscellaneous Docket No. 888] (December 29, 2008) [RADER. Michel, Prost] The Federal Circuit granted a writ of mandamus because the district court clearly abused its discretion in denying TS Tech’s motion to transfer venue pursuant to 28 U.S.C. § 1404(a).
DISCUSSION: The Federal Circuit applied The Fifth Circuit applies the “public” and “private” factors for determining forum non conveniens when deciding a § 1404(a) venue transfer question. The “private” interest factors include (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make a trial easy, expeditious and inexpensive. The “public” interest factors to be considered are (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflicts of laws or in the application of foreign law. The Federal Circuit identified four errors committed by the district court: First, the district court gave too much weight to Lear’s choice of venue under Fifth Circuit law. Second the district court ignored Fifth Circuit precedent in assessing the cost of attendance for witnesses, including additional travel time, meal and lodging expenses; and time away from employment, for which the Fifth Circuit established a 100-mile rule. Third, the district court erred by reading out of the § 1404(a) analysis the factor regarding the relative ease of access to sources of proof. Finally, the district court disregarded Fifth Circuit precedent in analyzing the public interest in having localized interests decided at home.

EXPERTS IN PATENT CASES NEED EXPERTISE

2008-12-24T20:53:00.000-06:00

Sundance, Inc. v. Demonte Fabricating Ltd., [2008-1068, -1115] (December 24, 2008) [MOORE, Dyk, Prost] The Federal Circuit reversed JMOL of validity of U.S. Patent No. 5,026,109.
DISCUSSION: On appeal Sundance complained about the denial of its motion in limine to exclude expert testimony of a patent lawyer who was not an expert in the art. The Federal Circuit agreed, holding that unless a patent lawyer is also a qualified technical expert, his or her testimony on the issues of validity and infringement is improper and thus inadmissible. QUOTE: “We hold that it is an abuse of discretion to permit a witness to testify as an expert on the issues of noninfringement or invalidity unless that witness is qualified as an expert in the pertinent art.” The Federal Circuit said that with regard to invalidity a witness not qualified in the pertinent art may not testify as an expert as to anticipation, or any of the underlying questions, such as the nature of the claimed invention, what a prior art references discloses, or whether the asserted claims read on the prior art reference. Nor may a witness not qualified in the pertinent art testify as an expert on obviousness, or any of the underlying technical questions, such as the nature of the claimed invention, the scope and content of prior art, the differences between the claimed invention and the prior art, or the motivation of one of ordinary skill in the art to combine these references to achieve the claimed invention.
Regarding the grant of JMOL, the Federal Circuited noted that the consequence of its holding that the testimony of the patent attorney should have been excluded is that there was no expert testimony supporting a holding of obviousness. However, the Federal Circuit concluded that no such testimony was required because there are no underlying factual issues in dispute as to obviousness. The Court noted that the technology was simple (although not enough to make defendant’s witness, who held a Bachelor of Science Degree with high honors in Mechanical Engineering from Michigan Technological University, an expert) and neither party claimed that expert testimony is required to support such a holding.

IF A COMPONENT DOES NOT HAVE A SUBSTANTIAL NON-INFRINGING USE, THEN THE ASSEMBLY DOES NOT EITHER

2008-12-23T20:25:00.001-06:00

Ricoh Company, Ltd., v. Quanta Computer Inc., [2007-1567] QUANTA STORAGE, INC., (December 23, 2008) [GAJARSA, LINN, and DYK] The Federal Circuit reversed summary judgment of no contributory or inducement of infringement, but affirmed that the asserted claims of U.S. Patent No. 6,631,109 are invalid for obviousness and that the accused devices do not practice the methods of the asserted claims of U.S. Patent No. 6,172,955.
DISCUSSION: The Federal Circuit said that a process consists of doing something, and therefore has to be carried out or performed. In contrast, software is not itself a sequence of actions, but rather it is a set of instructions that directs hardware to perform a sequence of actions. Because the allegedly infringing sale in this case was the sale of software (i.e., instructions to perform a process rather than the performance of the process itself), the Federal Circuit did not have to decide whether a process may ever be sold so as to give rise to liability under § 271(a). It held that that a party that sells or offers to sell software containing instructions to perform a patented method does not infringe the patent under § 271(a).
Regarding contributory infringement, the Federal Circuit said that It appears to be undisputed that, if there was direct infringement Quanta would be liable under § 271(c) if it imported into or sold within the United States a bare component that had no use other than practicing the methods of the ’552 and ’755 patents. Such a component, specially adapted for use in the patented process and with no substantial noninfringing use, would plainly be “good for nothing else” but infringement of the patented process. The Federal Circuit said that It thus follows that Quanta should not be permitted to escape liability as a contributory infringer merely by embedding that microcontroller in a larger product with some additional, separable feature before importing and selling it. The Federal Circuit said that if it were to hold otherwise, then so long as the resulting product, as a whole, has a substantial non-infringing use based solely on the additional feature, no contributory liability would exist despite the presence of a component that, if sold alone, plainly would incur liability. As further justification for its determination, the Federal Circuit observed that the potential for induced infringement liability in these situations was not a practical substitute for contributory infringement liability, because unlike contributory infringement, induced infringement liability under § 271(b) requires proof that the inducer has an affirmative intent to cause direct infringement.On the issue of inducement, the Federal Circuit noted that liability for active inducement may be found where evidence goes beyond a product’s characteristics or the knowledge that it may be put to infringing uses, and shows statements or actions directed to promoting infringement. The Federal Circuit rejected the district court’s requirement that there be some communication between the inducer and the direct infringer, noting that proving that a message was sent out is the preeminent, but not exclusive, way of showing that active steps were taken with the purpose of bringing about infringing acts. Thus the incorporation of components that only had infringing use was sufficient to create a question of fact about intent to induce infringement.

REPRESENTATIVE CLAIMS MUST BE REPRESENTATIVE

2008-12-23T20:17:00.001-06:00

Hyatt v. Dudas, [2007-1050, -1051, -1052, -1053] (December 23, 2008) [GAJARSA, Newman, and Ward] The Federal Circuit affirmed the district court’s remand of the appeal of Hyatt’s twelve patent applications for consideration of each of the claims, rather than consideration of “representative” claims.
DISCUSSION: Hyatt brought four civil actions under 35 U.S.C. § 145 (2000) challenging decisions of the BPAI affirming the rejection of his claims. Hyatt had 2400 claims pending in 12 applications, but the BPAI concluded that Hyatt had separately argued only twenty-one of his claims because these were the only claims that Hyatt had discussed in the “Summary of the Invention” sections of his briefs to the Board. On this basis, the Board selected these twenty-one claims as representative of the approximately 2,400 claims on appeal. Upon consideration of these representative claims, the Board affirmed the examiner’s rejections and thereupon affirmed the rejections of the non-representative claims. The Federal Circuit agreed with the district court that the Board misinterpreted the meaning of “ground of rejection” in section 1.192(c)(7) and, as a result, improperly selected certain claims to be representative of groups of claims that were rejected on different grounds. The Patent Office took the position that “ground of rejection” meant statutory ground of rejection, and thus it could consider whether all claims failed to meet the written description requirement, based upon a representative claim. The Federal Circuit agreed with Hyatt, that the Patent Office also had to consider the reason why the particular claim was rejected.

THE PATENT OFFICE MUST APPLY BROADEST REASONABLE INTERPRETATION OF CLAIMS UNDER EXAMINATION

2008-12-19T20:11:00.000-06:00

In Re Wheeler, [2008-1215 (Serial No. 10/899,352)] (December 19, 2008) NON-PRECEDENTIAL [NEWMAN, Mayer, Lourie] The Federal Circuit reversed the anticipation rejection of claims to a lighted, transparent fishing pole.
DISCUSSION: The claims were directed to a transparent lighted fishing pole with a light source in the handle to illuminate the pole. The claims were rejected over a reference showing a light at the tip of the fishing pole. The Patent Office took the position that the claims did not explicitly require that the entire length of the pole be transparent. The Federal Circuit held that although claims during examination are given their broadest reasonable interpretation in order to facilitate precision in claiming, that interpretation must be “consistent with the specification, [and] claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." All may not be well for Mr. Wheeler, as the Federal Circuit explicitly noted that it was constrained to consider the Patent Offices action, and could not substitute its own judgement, suggesting that another rejection is in his future.

ON REMAND, MANDATE LIMITS CONDUCT OF CASE

2008-12-18T19:59:00.000-06:00

Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., [2007-1296, -1347] (December 18, 2008) [LOURIE, Newman, Mayer] The Federal Circuit reversed summary judgment of invalidity, and remanded for determination of the damages award.
DISCUSSION: The Federal Circuit changed the claim construction and remanded, and on remand the district court considered defendant’s anticipation arguments, and found the patent invalid. The patentee argued that it anticipation was beyond the scope of the remand. The Federal Circuit boiled the issue down to whether the anticipation was directly related to the changed claim construction, and found that while it is true that new anticipation arguments may arise under a change in claim construction, that cannot be the case here because the limitation at issue never served as a basis for distinguishing the prior art from the patent.

OBVIOUSNESS ISSUE WAIVED BY FAILURE TO MOVE FOR JMOL

2008-12-18T19:53:00.001-06:00

Rentrop v. The Spectranetics Corporation, [2007-1560] (December 18, 2008) [WALKER, Michel, Friedman] The Federal Circuit affirmed judgment for Rentrop resulting in a $500,000 damage award.
DISCUSSION: The Federal Circuit rejected Spectranetics’ arguments about obvious as waived since it did not move for JMOL, and rejected its challenge to the pre-KSR jury instructions as waived since final judgment was not entered until four months after the KSR decision. The Federal Circuit found substantial evidence to support the finding of infringement, and agreed with the district court’s analysis of the inequitable conduct issues.

CLAIMS CONSTRUED IN LIGHT OF SPECIFICATION, DRAWINGS, AND OTHER CLAIMS

2008-12-16T19:49:00.002-06:00

Respironics, Inc. v. Invacare Corp., [2008-1164, -1193] (December 16, 2008) NON-PRECEDENTIAL The Federal Circuit affirmed non-infringement of U.S. Patents No. 5,148,802 and 5,433,193, but because the district court erred in construing the term “shape” in the ’575 patent and erred in granting summary judgment of no anticipation of U.S. Patent Nos. 6,105,575 and 6,609,517, and vacated the grant of summary judgment of noninfringement of the ’575 patent, and reversed the grant of summary judgment of validity of the ’575 and ’517 patents.
DISCUSSION: Addressing infringement, the Federal Circuited noted that the mere fact that step four refers back to “said higher and said lower pressure magnitudes” of step one does not, as a rule, require step one to be performed before step four. However after examining the specification, the Federal Circuit noted that the preselection of higher and lower pressure magnitudes is not merely a preferred embodiment; it is the patents’ only embodiment. Thus the Federal Circuit concluded that the district court correctly construed the term “selected higher and lower pressure magnitudes” to require the pressure magnitudes to be chosen prior to operation of the computer circuitry that is used to determine whether the patient is inhaling or exhaling.
Regarding the limitation “shape”, the Federal Circuit looked to claim differentiation and to the specification and drawings to conclude that the shape of the pressure profile was different from magnitude and duration. Under this new construction, the Federal Circuit vacated the grant of summary judgment with respect to noninfringement.

CEASE AND DESIST LETTERS ARE NOT ENOUGH TO CONFER PERSONAL JURISDICTION

2008-12-16T19:44:00.000-06:00

Avocent Huntsville Corp. v. Aten International Co., Ltd., [2007-1553] (December 16, 2008) [LINN, Newman, Schall] The Federal Circuit affirmed the district courts dismissal of a declaratory judgment action against a Taiwanese company for lack of personal jurisdiction, because plaintiffs failed to allege that the Taiwanese company purposefully directed any activities beyond merely sending notice letters at residents of the forum and that the declaratory judgment action arose out of or related to those activities.
DISCUSSION: Aten sent three letters concerning its patent applications and patents. The first was a letter dated May 28, 2004, from counsel for Aten Technology to CEO and President of Avocent giving notice of two pending patent applications. The second was a letter dated April 27, 2006, from IOGEAR to Amazon in Seattle, Washington, encouraging Amazon to discontinue selling various products allegedly infringing the ’112 patent, including the “Avocent SVM200.” As a result of these letters, Avocent brought this declaratory judgment action. Determining whether personal jurisdiction exists over an out-of-state defendant involves two inquiries: whether a forum state’s long-arm statute permits service of process, and whether the assertion of personal jurisdiction would violate due process.” Because Alabama’s long-arm statute permits service of process “as broad as the permissible limits of due process, the jurisdictional analysis collapsed into a single determination of whether the exercise of personal jurisdiction comports with due process.
Due process requires that to subject a defendant not present in the district to jurisdiction, the defendant have certain minimum contacts with it such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice. The Federal Circuit said that a patentee should not subject itself to personal jurisdiction in a forum solely by informing a party who happens to be located there of suspected infringement, noting that grounding personal jurisdiction on such contacts alone would not comport with principles of fairness. A patent owner may, without more, send cease and desist letters to a suspected infringer, or its customers, without being subjected to personal jurisdiction in the suspected infringer’s home state.

"MECHANISM" = "MEANS"

2008-12-15T19:23:00.001-06:00

Welker Bearing Company v. PHD, Incorporated, [2008-1169] (December 15, 2008) [RADER, Schall, Prost] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent Nos. 6,786,478 and 6,913,254.
DISCUSSION: At issue was the claim limitation “by a mechanism for rotating in response to said rectilinear movement of said locating pin for moving said finger radially”, which the district court correctly construed as subject to 35 U.S.C. § 112 ¶ 6.
The Federal Circuit noted that the claim did not include the word “means,” but instead the similar word “mechanism.” This Federal Circuit reviewed its prior handling of “mechanism”. In Massachusetts Institute Of Technology v. Abacus the Federal Circuit said “[t]he generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’ typically do not connote sufficiently definite structure [to avoid means-plus-function treatment] . . . The term ‘mechanism’ standing alone connotes no more structure than the term ‘means.’” Although the Federal Circuit said that claim language that further defines a generic term like ‘mechanism’ can sometimes add sufficient structure to avoid 112 ¶ 6, the adjectival modifier “colorant selection” was not defined in the specification and did not carry any generally understood structural meaning in the art. However, in Greenberg v. Ethicon Endo-Surgery, Inc. the Federal Circuit held that paragraph 6 did not apply to the term “detent mechanism, because the noun detent denotes a type of device with a generally understood meaning in the mechanical arts, even though the definitions are expressed in functional terms.
The Federal Circuited noted that no adjective endows the claimed “mechanism” with a physical or structural component. The Federal Circuit further noted that the claim provides no structural context for determining the characteristics of the “mechanism” other than to describe its function. Thus, the Federal Circuit concluded that the unadorned term “mechanism” is “simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term ‘means for.’” The Federal Circuit noted a number of ways the patentee could have added structure to the limitation, but did not. Looking to the specification, the Federal Circuit affirmed the district court’s determination that the claim was not infringed.

ENANTIOMERS ARE NOT NECESSARILY OBVIOUS

2008-12-12T19:15:00.001-06:00

Sanofi-Synthelabo v. Apotex, Inc., [2007-1438] (December 12, 2008) [NEWMAN, Lourie, Bryson] The Federal Circuit affirmed the district court’s ruling sustaining validity of U.S. Patent No. 4,847,265 on Plavix®.
DISCUSSION: The Federal Circuited noted that it has recognized the known difficulty of separating enantiomers and the unpredictability of their properties, and held that a reference that stated that a compound has enantiomers did not enable the separation of those enantiomers, where the reference did not teach how to obtain the enantiomer. The Federal Circuit found no clear error in the district court’s finding herein that the reference patents would not have enabled a person of ordinary skill to obtain clopidogrel substantially separated from the levorotatory enantiomer, and affirmed the finding of validity. As to obviousness, the Federal Circuit noted obviousness cannot be avoided simply by a showing of some degree of unpredictability in the art so long as there was a reasonable probability of success.” However, the Federal Circuit noted that on the basis of the trial evidence, the district court found that a person of ordinary skill in this field would not reasonably have predicted that the dextrorotatory enantiomer would provide all of the antiplatelet activity and none of the adverse neurotoxicity. Clear error has not been shown in this finding, and in the conclusion of nonobviousness based thereon. The difficulties in separating the enantiomers also contributed to the non-obviousness.

FEDERAL CIRCUIT'S JURISDICTION ON APPEAL FROM DENIAL OF PRELIMINARY INJUNCTION IS LIMITED

2008-12-11T18:58:00.004-06:00

ILOR, Llc v. Google, Inc., [2008-1178] (December 11, 2008) [LINN, Mayer, Moore] The Federal Circuit held that the district court did not abuse its discretion by denying iLORs’ motion for a preliminary injunction.
DISCUSSION: The Federal Circuit concluded that the district court correctly construed the sole claim limitation at issue, and did not abuse its discretion by denying iLOR’s motion for preliminary injunctive relief because noninfringement was undisputed under that construction. The bigger issue is the basis for the Federal Circuit’s jurisdiction. The Federal Circuit found that the there was no final judgment, and that its jurisdiction arose solely from the denial of the preliminary injunction.

"The Present Invention" does not Automatically Limit Claims in All Cases, But it Did Here

2008-12-09T21:28:00.000-06:00

Netcraft Corporation v. Ebay, Inc., [2008-1263] (December 9, 2008) [PROST, Bryson, Linn] The Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent Nos. 6,351,739 and 6,976,008.
DISCUSSION: The Federal Circuit agreed with the district court that “providing a communications link through equipment of the third party,” required “providing customers with internet access.” Because the parties agreed that Defendants do not provide internet access to customers, summary judgment was appropriate.
The Federal Circuit conceded that the lay meaning of “communications link” standing alone may be broader than “internet access,” but said it was not construing this term standing alone. The Federal Circuit instructed that in order to properly determine the ordinary meaning of the entire phrase at issue in this case, it must consider the claim terms in light of the entire patent. The Federal Circuit found that based on a reading of the common specification in its entirety, along with the cited prosecution history, the claim limitation “providing a communications link through equipment of the third party” requires providing customers with internet access.
The Federal Circuit noted the repeated identification of “the present invention” in the Summary of the Invention as requiring internet communication. The Federal Circuit said that use of the phrase “the invention” does not “automatically” limit the meaning of claim terms in all circumstances, stating that such language must be read in the context of the entire specification and prosecution history. However the Federal Circuit found that under the circumstances the claims were limited. The Federal Circuit even found support in the Abstract. The Federal Circuit attached less significance to the prosecution history, noting that because the prosecution history represents an ongoing negotiation between the PTO and the applicant, rather than the final product of that negotiation, it often lacks the clarity of the specification and thus is less useful for claim construction purposes.

$16.8 Million Attorneys' Fees Award Affirmed

2008-12-08T21:33:00.000-06:00

Takeda Chemical Industries, Ltd., v. Mylan Laboratories, Inc., [2007-1269, -1270] (December 8, 2008) [LOURIE, Rader, Bryson] The Federal Circuit affirmed attorneys fees awards for to Takeda of $11,400,000 from Mylan and $5,400,000 from Alphapharm, with interest.
DISCUSSION: 35 U.S.C. § 285 provides that a trial court “in exceptional cases may award reasonable attorney fees to the prevailing party.” The decision to award attorney fees is within the discretion of the trial judge, but the conclusion that a case is exceptional is a finding of fact reviewable only for clear error. The Federal Circuit also affirmed the award of Expert Fees, noting that a district court may invoke its inherent power to impose sanctions in the form of reasonable expert fees in excess of what is provided for by statute.

Substantial New Question of Patentability is Not Necessarily a Substantial Question of Validity

2008-12-05T21:58:00.000-06:00

The Procter & Gamble Company v. Kraft Foods Global, Inc., [2008-1105] (December 5, 2008) [GAJARSA, Bryson, Dyk] The Federal vacated a stay initiated by Kraft pending reexamination of Kraft’s patent, and remanded for consideration of the merits of P&G’s motion for a preliminary injunction.
DISCUSSION: The Federal Circuit said tha the district court abused its discretion by effectively denying P&G’s motion for a preliminary injunction without considering and balancing the required factors. The Federal Circuit the district instructed the district court to consider the current posture of the reexamination proceeding, and cautioned it not to equate the “substantial new question of patentability” standard for whether reexamination should take place, with the with the “substantial question of validity” standard by which a defendant may prevent a patentee from demonstrating a likelihood of success on the merits.
Regarding the stay, the Federal Circuit rejected Kraft’s argument that the statute only authorizes patentees to obtain stays, noting that a district court has historically had the power to stay proceedings grant stays to control its docket. The Federal Circuit added that we note that the district court ordinarily should not grant both a preliminary injunction and a stay.

Fame Plays a Dominant Part of Likelihood of Confusion Analysis

2008-12-05T21:48:00.000-06:00

Hainline v. Vanity Fair, Inc., [2008-1313 (Opposition Nos. 91/163,354; 91/166,973; and 91/166,975)] (December 5, 2008) [MAYER, DYK, HUFF] NON-PRECEDENTIAL The Federal Circuit affirmed the TTAB sustaining Vanity Fair’s oppositions.
DISCUSSION: The Federal Circuit held fame of a prior mark can play a “dominant” role in the process of balancing the DuPont factors. The Federal Circuit noted that “[a] famous mark is one ‘with extensive public recognition and renown.’’’ The Federal Circuit said “[F]amous marks are more likely to be remembered and associated in the public mind than a weaker mark.” Id. Thus, the fact that Vanity Fair products have achieved significant fame weighs strongly in favor of a conclusion of likely confusion. The Federal Circuit examined other factors, including the similarity of the goods, channels of trade, and the similarity of the marks and affirmed the TTAB that VANITY AND SANITY was confusingly similar to VANITY FAIR.

Patentee Enjoined from Threatening to Assert Patent

2008-12-03T22:02:00.000-06:00

Unitronics (1989) (R”G) LTD. v. Gharb, [2008-1442] (December 3, 2008) [NEWMAN, LINN, and MOORE] The Federal Circuit affirmed a permanent injunction against defendant asserting or threatening to assert U.S. Patent No. 6,552,654 against Unitronics.

Failure to Disclose Patents to a Standards-Setting Organization Can Impair Enforceability of the Patents

2008-12-01T21:31:00.001-06:00

Qualcomm Incorporated v. Broadcom Corporation, [2007-1545, 2008-1162] (December 1, 2008) [PROST, Mayer, Lourie] The Federal Circuit affirmed the district court’s determinations that Qualcomm had a duty to disclose the asserted patents to the JVT, that it breached this duty, but vacated the unenforceability judgment and remanded with instructions to enter an unenforceability remedy limited in scope to H.264-compliant products.
DISCUSSION: By failing to disclose relevant intellectual property rights (“IPR”) to an SSO prior to the adoption of a standard, a “patent holder is in a position to ‘hold up’ industry participants from implementing the standard. Industry participants who have invested significant resources developing products and technologies that conform to the standard will find it prohibitively expensive to abandon their investment and switch to another standard.” In order to avoid “patent hold-up,” many SSOs require participants to disclose and/or give up IPR covering a standard. The case turned on four issues: (1) Existence of Disclosure Duty: Did Qualcomm, as a participant in the JVT, have a duty to disclose patents to the JVT prior to the release of the H.264 standard in May 2003; (2) Scope of Disclosure Duty: If so, what was the scope of its disclosure duty; (3) Breach: Did Qualcomm breach its disclosure duty by failing to disclose the ’104 and ’767 Patents; and (4) Remedy: If so, was it within the district court’s equitable authority to enter an unenforceability remedy based on the equitable defense of waiver in the SSO context? LOF: The existence of a disclosure duty is a legal question with factual underpinnings. The Federal Circuit agreed that Qualcom had a duty. As to the scope of that duty, the Federal Circuit also agreed that JVT participants only had to disclose patents that “reasonably might be necessary” to practice the H.264 standard. The Federal Circuit also agreed that Qualcom had violated this standard, but disagreed that as a result the patents should be completely unenforceable. Instead, the Federal Circuit limited the unenforceability to all current and future H.264-compliant products.

Petitioner's Priority of Use Supports Cancellation of Registration

2008-11-24T21:41:00.001-06:00

FARAH v. PRAMIL S.R.L., [2008-1329 (Cancellation No. 92/032,341)] (November 24, 2008) [MAYER, GAJARSA, and PROST] The Federal Circuit affirmed the TTAB’s cancellation of Farah’s Reg. No. 2,447,970 on the mark OMIC based upon Pramil’s prioritiy of use.

GENUINE ISSUES OF MATERIAL FACT PREVENT SUMMARY JUDGMENT OF ON-SALE DEFENSE

2008-11-21T21:43:00.000-06:00

Lacks Industries, Inc., v. McKechnie Vehicle Components USA, Inc., [2008-1167] (November 21, 2008) [MICHEL, Clevenger, Moore] NON-PRECEDENTIAL The Federal Circuit reversed summary judgment of invalidity of U.S. Patent No. 5,597,213 because of genuine issues of material facts.The Federal Circuit stated that “Only an offer which rises to the level of a commercial offer for sale, one which the other party could make into a binding contract by simple acceptance (assuming consideration), constitutes an offer for sale under § 102(b).” In addition, to satisfy the on-sale bar, the subject matter of the sale or offer for sale must satisfy each limitation of the claim, though it may do so inherently. The Federal Circuit concluded that, when considered in the light most favorable to the patentee, there were genuine issues of material fact about whether the claimed invention was on sale.

IT WAS ERROR TO LIMIT CLAIMS TO PREFERRED EMBODIMENT, PARTICULARLY LIMITATIONS NOT “CENTRAL” TO THE INVENTION

2008-11-20T21:47:00.001-06:00

Medegen MMS, Inc. v. ICU Medical, Inc., [2008-1114] (November 20, 2008) [DYK, Rader, Walker] The Federal Circuit reversed summary judgment of non-infringement of U.S. Patent No. 5,730,418 because the district court erred in its construction of the claim term “plug.”
DISCUSSION: The district court construed “plug” as “an elastomeric part that either pivots about a reduced diameter portion or buckles, to establish a fluid flow path.” The district court relied heavily on the finding that “the preferred embodiment[s] of the invention, as discussed throughout the specification and claims, all consistently discuss a plug” with the elastomeric feature, and that the specification “nowhere describes a non-elastomeric or rigid plug.” The district court also stated that Medegen “needed to indicate in the ’418 Patent that a skilled artisan could use alternative plugs and describe how such plugs would perform the functions of controlling fluid flow and achieving minimum fluid displacement in the context of its invention.” The Federal Circuit noted that the term “plug” is not expressly limited by the language of the claims—that is, the elastomeric limitation is not found within the claim itself. The Federal Circuit also noted that there was no contention that the ordinary meaning of the term “plug” does not include a rigid plug or that it has a special meaning in the medical field that requires elastomericity, or that there was any clear disclaimer of non-elastomeric plugs in the specification. The Federal Circuit found that the patent was clear that the elastomeric feature of the plug is merely an example of how to create a fluid flow connection between the inlet valve and the internal fluid chamber, and concluded that the use of an elastomeric plug to establish that fluid flow connection is not central to the invention itself, which is directed to reducing retrograde flow.
COMMENT: It is interesting that Judge Walker, a district court judge sitting by designation, dissented, expressing the frustration all district court judges must have with claim construction, and in particular with construing claims in light of the specification, without importing limitations.

SUMMARY JUDGMENT REVERSED BECAUSE OF FACTS IN DISPUTE ABOUT WHETHER PRIOR ART IS ANALGOUS

2008-11-19T21:49:00.001-06:00

Andersen Corporation v. Pella Corporation, [2007-1536] (November 19, 2008) [SCHALL, Rader, Alsup] NON-PRECEDENTIAL The Federal Circuit reversed summary judgment that 6,880,612 was invalid for obviousness, questioning whether the prior art was analogous.
DISCUSSION: The district court held that the invention claimed in the ’612 patent was rendered obvious by an electromagnetic-shielding mesh manufactured by TWP, Inc. (“TWP”) in combination with Japanese Patent No. 195646, disclosing a method of coating a screen with light absorbable black color to reduce reflection. The Federal Circuit found that genuine issues of material fact exist as to whether it would have been obvious to an insect screen designer of ordinary skill to use the TWP mesh as screening material for a reduced visibility insect screen. While agreeing that common sense and the nature of the problem to be solved could lead an insect screen designer to a mesh primarily used for a purpose besides insect screens, the Federal Circuit found that the patentee raised a genuine issue of fact as to whether the electromagnetic-shielding mesh would have been part of the field of invention searched by an insect screen designer and whether such an alternative use would have been obvious.

DOUBLE-PATENTING DEPTH CHARGE SINKS SUBMARINE PATENT

2008-11-13T21:52:00.000-06:00

In Re Basell Poliolefine Italia S.P.A., [2007-1450] (November 13, 2008) [LOURIE, Newman, Linn] The Federal Circuit affirmed the decision of the BPAI that U.S. Patent 6,365,687 was invalid for obviousness-type double patenting.
DISCUSSION: The ’687 patent, entitled “Process for the Polymerization and Copolymerization of Certain Unsaturated Hydrocarbons,” issued on April 2, 2002, claiming priority from Italian Application No. 25,109, filed July 27, 1954. On a Commissioner ordered reexamination, the claims were rejected for obviousness-ness type double patented, and the BPAI affirmed, finding that the circumstances did not dictate the application of a two-way test for double patenting. The Board concluded that the patentees “significantly controlled the rate of prosecution throughout the chain of ancestor applications,” and thus the one-way test applied. The Federal Circuit first noted that double patenting is a question of law, and that the determination of whether a one-way or two-way analysis applies is also a question of law. The Federal Circuit noted that the judicially created doctrine of obviousness-type double patenting “prohibit[s] a party from obtaining an extension of the right to exclude through claims in a later patent that are not patentably distinct from claims in a commonly owned earlier patent.” In determining double patenting, a one-way test is normally applied, in which the examiner asks whether the application claims are obvious over the patent claims. In unusual circumstances, where an applicant has been unable to issue its first-filed application, a two-way test may apply, in which “the examiner also asks whether the patent claims are obvious over the application claims.” The Federal Circuit explained that the two-way test is “a narrow exception to the general rule of the one-way test” that arose out of the concern to prevent rejections for obviousness-type double patenting when the applicants filed first for a basic invention and later for an improvement, but, through no fault of the applicants, the PTO decided the applications in reverse order of filing, rejecting the basic application although it would have been allowed if the applications had been decided in the order of their filing. The Federal Circuit readily concluded that the applicant was the cause of the delay and thus they were not entitled to the two-way test for double patenting.
The Federal Circuit also rejected the patentee’s complaint that the Board did not conduct a full Graham analysis, noting “this court has endorsed an obviousness determination similar to, but not necessarily the same as, that undertaken under 35 U.S.C. § 103 in determining the propriety of a rejection for double patenting.

Appellant Waived Challenge to Improperly Appointed BPAI Members

2008-11-03T13:56:00.001-06:00

In Re DBC, [2008-1120] (November 3, 2008) [LINN, Dyk, Stearns] The Federal Circuit affirmed the Board’s determination that the claims would have been obvious, and that DBC waived challenging the appointment of the administrative patent judges of the BPAI.
DISCUSSION: The Federal Circuit found that DBC waived its objection to the composition of the BPAI, by not raising that issue before the BPAI.
The Federal Circuit rejected DBC’s argument that the references did not present a substantial new question of patentability, finding that the additional reference was not cumulative. The Federal Circuit also affirmed the BPAI’s rejection of evidence of commercial success, noting that a proponent must offer proof “that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” The Federal Circuit found that DBC did little more than establish substantial sales, and thus it could not conclude that the BPAI’s decision was not supported by substantial evidence.

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

2008-10-31T14:02:00.000-05:00

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

2008-10-30T14:08:00.000-05:00

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

2008-10-30T14:05:00.000-05:00

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

2008-10-29T14:11:00.000-05:00

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

2008-10-28T14:15:00.000-05:00

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

2008-10-27T14:20:00.000-05:00

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

2008-10-23T14:29:00.000-05:00

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

2008-10-21T14:32:00.000-05:00

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

2008-10-20T14:35:00.001-05:00

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

2008-10-17T14:39:00.000-05:00

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

2008-10-15T14:49:00.000-05:00

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

2008-10-15T14:42:00.000-05:00

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

2008-10-10T15:07:00.000-05:00

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

2008-10-10T14:53:00.000-05:00

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

2008-10-09T15:10:00.000-05:00

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

2008-10-07T15:26:00.001-05:00

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

2008-10-07T15:19:00.000-05:00

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

2008-10-07T15:14:00.000-05:00

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

2008-10-06T21:58:00.000-05:00

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

2008-10-03T22:45:00.000-05:00

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

2008-10-02T22:52:00.000-05:00

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.

INADEQUATE EXPLANATION FOR NON-DISCLOSURE SUPPORTS DETERMINATION OF INEQUITABLE CONDUCT

2008-09-29T22:55:00.000-05:00

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

2008-09-25T23:02:00.001-05:00

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

2008-09-24T23:05:00.000-05:00

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

2008-09-22T23:13:00.000-05:00

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

2008-09-22T23:10:00.000-05:00

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

2008-09-19T23:18:00.000-05:00

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

2008-09-18T23:22:00.000-05:00

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

2008-09-16T23:31:00.000-05:00

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

2008-09-12T23:35:00.000-05:00

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

2008-09-09T23:42:00.000-05:00

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

2008-09-08T23:49:00.000-05:00

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

2008-09-08T23:45:00.000-05:00

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

2008-09-04T23:57:00.000-05:00

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

2008-09-04T23:53:00.000-05:00

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

2008-09-02T12:02:00.001-05:00

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.”

“BAD FAITH” LITIGATION STANDARD HAS OBJECTIVE AND SUBJECTIVE COMPONENTS

2008-08-29T12:10:00.001-05:00

800 Adept, Inc., v. Murex Securities, Ltd., [2007-1272, -1356] (August 29, 2008) [PLAGER, Gajarsa, Dyk] The Federal Circuit vacated the trial court’s damages award, the permanent injunction, and the judgment with respect to willfulness, enhanced damages, and attorney fees to Adept; affirmed invalidity of Targus’ patents except for two claims which were remanded for a new trial.
DISCUSSION: This patent case involves technology for routing “1-800” telephone calls to an appropriate service location, e.g., the service provider closest to the customer who placed the call.
The Federal Circuit found that the plain language of the claims makes clear that the “assigning” step requires that “a telephone number of a service location” be assigned to each potential caller. Nothing in the claims suggests that storing an algorithm that will be used to determine the telephone number of the correct service location during a telephone call constitutes an assignment of a service location telephone number to a potential caller before a telephone call is placed. The Federal Circuit concluded that based on consideration of the claims, the written description, and the remainder of the intrinsic evidence, we the trial court was correct in the first instance when it construed the “assigning” language to refer to “a designation made prior to the telephone call of the first parties.”
Regarding Adept’s tortuous interference claims, the Federal Circuit said that “State tort claims against a patent holder, including tortious interference claims, based on enforcing a patent in the marketplace, are “preempted” by federal patent laws, unless the claimant can show that the patent holder acted in “bad faith” in the publication or enforcement of its patent.” The Federal Circuit noted that the Supreme Court said long ago, “Patents would be of little value if infringers of them could not be notified of the consequences of infringement, or proceeded against in the courts. Such action, considered by itself, cannot be said to be illegal.” The Federal Circuit instructed that the “bad faith” standard has objective and subjective components. The objective component requires a showing that the infringement allegations are “objectively baseless.” The subjective component relates to a showing that the patentee in enforcing the patent demonstrated subjective bad faith. The Federal Circuit cautioned that Courts “must ‘resist the temptation to engage in post hoc reasoning by concluding’ that an ultimately unsuccessful ‘action must have been unreasonable or without foundation.’”

DISCLAIMER ONLY APPLIES WHERE THE EXACT SAME LANGUAGE IS USED

2008-08-28T12:16:00.002-05:00

Lexion Medical, LLC, v. Northgate Technologies, Inc., [2007-1420, -1440] (August 28, 2008) [SCHALL, Michel, Rader] The Federal Circuit affirm-in-part, vacate-in-part, and remanded that Claims 11 and 12 of U.S. Patent No. 5,411,474 are valid and were infringed by Northgate, and that the asserted claims of U.S. Patent No. 6,068,609 are invalid for obviousness.
DISCUSSION: Regarding the ‘474, the Federal Circuit held that prosecution disclaimer did not apply, noting that the alleged disclaimer corresponded precisely with the limitations expressly recited in those particular claims, and was clearly in response to a rejection of those particular claims, any disclaimer must accordingly be limited to those claims, under our approach set forth in Golight. The parties disputed whether predetermined temperature in claim 11(e) covered a range or a single temperature. The Federal Circuit noted that the word “range” appears elsewhere in the language of claim 11 but is not used in limitation 11(e) to describe the “predetermined temperature” suggests that the applicants affirmatively employed the word “range” where that meaning was intended, but specifically declined to do so in connection with the “predetermined temperature” limitation of claim 11(e). As a result the Federal Circuit vacated and remanded the issue of infringement of the ‘474 patent.

Definiteness Does Require the Ability to Determine Infringement in Advance; Merely the Ability to Determine What the Claim Means

2008-08-25T12:16:00.000-05:00

Star Scientific, Inc., v. R.J. Reynolds Tobacco Company [2007-1448] (August 25, 2008) [MICHEL, Schall, Dyk] The Federal Circuit reversed judgment that Star's U.S. Patent Nos. 6,202,649 and 6,425,401 were unenforceable due to inequitable conduct; and granting summary judgment of invalidity of all asserted claims due to indefiniteness.
DISCUSSION: The Federal Circuit reviews the district court's inequitable conduct determination under a two-tier standard; the underlying factual determinations are reviewed for clear error, the ultimate decision as to inequitable conduct is reviewed for an abuse of discretion. With respect to the '649 patent the Federal Circuit held that the district court clearly erred in finding that plaintiff had an intent to deceive the PTO, and with respect to the '401 patent, the Federal Circuit held that the district court clearly erred in finding that the information contained in the Burton letter and Curran data was material. The Federal Circuit said that the need to strictly enforce the burden of proof and elevated standard of proof in the inequitable conduct context is paramount because the penalty for inequitable conduct is so severe, the loss of the entire patent even where every claim clearly meets every requirement of patentability. The Federal Circuit said that just as it is inequitable to permit a patentee who obtained his patent through deliberate misrepresentations or omissions of material information to enforce the patent against others, it is also inequitable to strike down an entire patent where the patentee only committed minor missteps or acted with minimal culpability or in good faith. As a result, courts must ensure that an accused infringer asserting inequitable conduct has met his burden on materiality and deceptive intent with clear and convincing evidence before exercising its discretion on whether to render a patent unenforceable.
With regard to the deceptive intent prong, the Federal Circuit has emphasized that "materiality does not presume intent, which is a separate and essential component of inequitable conduct." Because direct evidence of deceptive intent is rarely available, intent can be inferred from indirect and circumstantial evidence, but it must still be clear and convincing, and inferences drawn from lesser evidence cannot satisfy the deceptive intent requirement.
With regard to the materiality prong, the Federal Circuit has held that "information is material when a reasonable examiner would consider it important in deciding whether to allow the application to issue as a patent." But information is not material if it is cumulative of other information already disclosed to the PTO. If a threshold level of intent to deceive or materiality is not established by clear and convincing evidence, the district court does not have any discretion to exercise and cannot hold the patent unenforceable regardless of the relative equities or how it might balance them. The district court held that the term "anaerobic condition" is indefinite and thus, since it appears in every asserted independent claim, held that all asserted claims are invalid as indefinite. The Federal Circuit noted that "[o]nly claims not amenable to construction or insolubly ambiguous are indefinite." A claim term is not indefinite just because "it poses a difficult issue of claim construction" the standard is whether "the claims [are] amenable to construction, however difficult that task may be." The Federal Circuit said that by finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of patent validity . . . ." The Federal Circuit held that from the claim term "anaerobic condition" and the intrinsic record, a skilled artisan would discern what the term delineates, and further found that this is further supported by statements to that effect in the patents' specifications.
The Federal Circuit noted that when a word of degree is used the patent's specification must provide some standard for measuring that degree to be definite. The Federal Circuit said that "anaerobic condition" is in effect a term of degree because its bounds depend on the degree of oxygen deficiency, however the Federal Circuit found that the intrinsic record provides a standard for measuring that degree and assessing the bounds of "anaerobic condition." In fact, the Federal Circuited noted, some of the claims explicitly refer to the standard. According to the Federal Circuit, the error the district court made was its misunderstanding that claim definiteness required that a potential infringer be able to determine if a process infringes before practicing the claimed process. "The test for indefiniteness does not depend on a potential infringer's ability to ascertain the nature of its own accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention."

The Risk of Functional Claiming is That the Functional Limitation may be an Inherent Characteristic of the Prior art

2008-08-21T13:14:00.001-05:00

Leggett & Platt, Inc. v. Vutek, Inc., [2007-1515] (August 21, 2008) [PROST, Bryson, Archer] The Federal Circuit affirmed summary judgment of invalidity of L&P’s U.S. Patent No. 6,755,518 (the “’518 patent”).
DISCUSSION: Three questions of claim construction were presented on appeal: (1) cold UV, (2) freeze dots of the jetted ink, and (3) substantially cure. Based on these claim constructions the district court found the asserted claims either anticipated by, or obvious from, defendant’s patents. the district court construed the term “substantially cure” to mean “cured to a great extent or almost completely cured.” The Federal Circuit noted that the district court construed the term “substantially cure” to mean “cured to a great extent or almost completely cured.” Thus, the relevant portion of claim 1 simply requires a cold UV source (e.g., LEDs) that is “effective to impinge sufficient UV light on the ink” to cure the ink to a great extent or almost completely cure it. The Federal Circuit noted that because the claim is written with functional rather than structural language—it requires the cold UV assembly to be “effective to” substantially cure rather than requiring ink to be substantially cured—the claim limitation will be anticipated if the LEDs disclosed in the prior art are able to cure the ink to a great extent. As the Federal Circuit explained in In re Schreiber, the risk of functional claiming is that the functional limitation may be an inherent characteristic of the prior art.
The Federal Circuit noted that the prior art showed that 75-80% curing, which the Federal Circuit said a reasonable mind might well find to be “substantially cured”, however under the strict standard of summary judgment the Federal Circuit could not say, as a matter of law, that 75-80% cured is “cured to a great extent or almost completely cured.” The Federal Circuit said that it could, however, conclude as a matter of law that the prior art inherently discloses LEDs that are “effective to impinge sufficient UV light on the ink to” cure the ink to a great extent. The Federal Circuit said that under the principles of inherency, if the prior art necessarily functions in accordance with, or includes, the claims limitations, it anticipates. In other words, the prior art will anticipate by inherency if its LEDs necessarily are “effective to impinge sufficient UV light on the ink to substantially cure the ink.” Thus, while the prior art may not expressly disclose that the LEDs cure the ink to a great extent, it inherently discloses LEDs that are “effective to” do so.
The Federal Circuit rejected plaintiff’s argument that the prior art could not cure the ink as ignoring the difference between substantial cure and full cure is not insubstantial. The Federal Circuit also rejected plaintiff’s argument that some examples did not anticipate, as relying on the erroneous assumption that the disclosure of multiple examples renders one example less anticipatory.

No Declaratory Judgment Jurisdiction if There is No Useful Remedy

2008-08-21T13:09:00.000-05:00

Merck & Co., Inc., v. Apotex, Inc., [2008-1133] (August 21, 2008) [MAYER, LINN, and ILLSTON] NON-PRECEDENTIAL The Federal Circuit affirmed dismissal of Apotex’s counterclaims for declaratory judgment against appellee Merck & Co., Inc. because the current dispute does not “‘admi[t] of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts,’”
DISCUSSION: As part of its maneuverings under the Hatch-Waxman Act, when Apotex filed an ANDA citing three Merck patents on the glaucoma medications Trusopt® and Cosopt®, and Merck filed suit on only one of the patents. Apotex counterclaimed with respect to the two unasserted patents, but the district court dismissed the counterclaim for lack of a justiciable controversy. The Federal Circuited noted that the proper standard for determining whether a declaratory judgment action satisfies the Article III case or controversy requirement 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.” Noting that to defeat another applicant’s period of exclusivity Apotex needed a declaration of invalidity before August 14, 2008, just seven days after the oral arguments, the Federal Circuit concluded that they could not provide meaningful relief and affirmed the dismissal.

Experimental Use Cannot Negate Public Use If the Invention has been Reduced to Practice before the Experimental Use

2008-08-20T13:18:00.000-05:00

ASTRAZENECA AB, v. APOTEX CORP., APOTEX, INC., [2007-1414, -1416, -1458, -1459] (August 20, 2008) [BRYSON, Lourie,GAJARSA] The Federal Circuit affirmed judgments of infringement against Apotex and Impax in litigation involving a number of generic drug manufacturers for infringement of Astra’s patents covering formulations of omeprazole, the active ingredient in Prilosec, a drug designed to treat acid-related gastrointestinal disorders.
DISCUSSION: Impax argumed that the district court lost jurisdiction over the case after the patents expired. The district court rejected that argument because the FDA had granted Astra an additional six-month period of market exclusivity after Astra had agreed to the FDA’s request that it perform pediatric testing of its product. The Federal Circuit found that the district court correctly interpreted section 271(e)(4)(A) to provide a post-expiration remedy for infringement under section 271(e)(2).
Impax challenged the district court’s finding that Impax’s formulation met the “inert subcoating” limitation of both patents. The Federal Circuit noted that Astra did not need to identify the process by which the infringing subcoating was produced; it was sufficient for it to show the presence of the claimed structure. The Federal Circuit found sufficient evidence to support the existence of the required inert subcoating.
Regarding Impax’s challege to the validity, before the critical date Astra commissioned four large clinical studies to determine the safety and efficacy of its formulation in order to obtain FDA approval. The district court ruled that the studies constituted experimental uses, not public uses, of the claimed invention. The district court further ruled that the patented formulation was not ready for patenting until after the studies were completed. The Federal Circuit agreed that experimental use cannot negate a public use when it is shown that the invention was reduced to practice before the experimental use. However, the Federal Circuit said it could affirm affirm the district court’s conclusion that the claims were not invalid under section 102(b) based on the court’s factual determination that the claimed formulation was not ready for patenting until after the clinical studies were completed. The Federal Circuit said that the district court found that the claimed formulation was not reduced to practice before the clinical trials were completed, and upheld that finding. The Federal Circuit noted that In Pfaff, the Supreme Court described two ways for a party to show that an invention was ready for patenting before the critical date of section 102(b): “by proof of reduction to practice before the critical date; or by proof that prior to the critical date the inventor had prepared drawings or other descriptions of the invention that were sufficiently specific to enable a person skilled in the art to practice the invention.” To demonstrate reduction to practice, the Federal Circuit said that a party must prove that the inventor (1) constructed an embodiment or performed a process that met all the limitations and (2) determined that the invention would work for its intended purpose. The Federal Circuit said that testing is required to demonstrate reduction to practice in some instances because without such testing there cannot be sufficient certainty that the invention will work for its intended purpose. The Federal Circuit said that the district court found that the Phase III formulation was not reduced to practice before the trials because the evidence showed that at that time the inventors believed only that the formulation “might solve the twin problems of in vivo stability and long-term storage” and the Federal Circuit agreed.
Turning to Apotex’s appeal, Appotex argued that its manufacturing process merely practices the prior art. However the Federal Circuit responded that it is well established that “practicing the prior art” is not a defense to infringement. Based on the district court’s thorough analysis of the prior art and the nature of the problem, the Federal Circuit found no error in the court’s findings of fact and conclusions of law on the question of obviousness.

Beta Testers Who Paid Create an On Sale Bar

2008-08-19T13:26:00.001-05:00

CYGNUS TELECOMMUNICATIONS TECHNOLOGY, LLC, v. TELESYS COMMUNICATIONS, LLC, [2007-1328, -1329, -1330, -1331, -1332, -1333, -1354, -1361] (August 19, 2008) [BRYSON, Newman, Pogue] The Federal Circuit affirmed summary judgment that U.S. patent numbers 5,883,964 and 6,035,027 are invalid under the on-sale bar of 35 U.S.C. § 102(b); summary judgment of non-infringement as to defendant AT&T; and dismissal of Cygnus’s trade secret misappropriation claims.
DISCUSSION: The district court ruled, on summary judgment, that the ’964 and ’027 patents are invalid under the on-sale bar of 35 U.S.C. § 102(b). The district court’s ruling was based on Alleman’s sale of the 386 system to paying users before the critical date for both patents, April 24, 1991. The district court determined that the 386 system had been reduced to practice based on Mr. Alleman’s sworn declaration to the PTO that the invention had been reduced to practice before June 27, 1990. The Federal Circuit began with a statement of the general rule A patent is invalid under the section 102(b) on-sale bar if, prior to the critical date, the invention was ready for patenting and was the subject of a commercial sale or offer for sale.
The Federal Circuit approved the district court’s ruling that the question whether the system would work on a commercial scale was distinct from whether the system embodied the claims in the two patents at issue. Because the system embodied the claims, sales relating to its use can constitute an invalidating commercial sale, regardless of the state of development of a commercial system. Regarding the “beta testers” the Federal Circuit said that the district court properly concluded that in light of the undisputed evidence that they paid to use the system, there was a sale of the service. The Federal Circuit noted that there did not need to be a profit in order for there to be a sale within the meaning of section 102(b). The Federal Circuit also affirmed that “experimental use cannot occur after a reduction to practice.”