L&W, Inc. v. Shertech, Inc. and Steven W. Sheridan

Decided December 14, 2006  pdf

Judge Bryson with Judges Mayer and Clevenger

Decided December 13, 2006  pdf

Judge Rader with Judges Newman and Mayer

Decided December 13, 2006  pdf

Judge Rader with Judges Schall and Linn, partially en banc

Decided December 29, 2006  pdf

Judge Prost with Judges Lourie and Dyk, Lourie dissenting

Decided December 26, 2006  pdf

Judge Rader with Judges Schall and Gajarsa

Decided December 8, 2006  pdf

Judge Lourie with Judges Clevenger and Bryson

Abraxis Bioscience, Inc. v. Mayne Pharma (USA) Inc.
Decided November 15, 2006  pdf
Judge Lourie with Judges Plager and Rader

02 Micro International Limited et al. v. Monolithic Power Systems, Inc.
Decided November 15, 2006  pdf
Judge Dyk with Judges Michel and Prost

PHG Technologies, LLC v. St. John Companies, Inc.
Decided November 17, 2006  pdf
Judge Prost with Judges Michel and Dyk

Impax Laboratories, Inc. v. Aventis Pharmaceuticals, Inc.
Decided November 20, 2006  pdf
Judge Schall with Judges Rader and Prost

Robert D. Thompson v. Microsoft Corporation
Decided December 8, 2006  pdf
Judge Linn with Judges Mayer and Bryson

Medrad, Inc. v. Tyco Healthcare Group LP et al.

Decided October 16, 2006 pdf

Judge Linn with Judges Michel and Archer

A reissue patent application may be filed to correct procedural errors such as a faulty inventor’s declaration.

Medrad obtained patent claims to a patient blood infusion system, and filed a reissue application with an inventor’s declaration that explained how broader claims were needed. The reissued patent had narrowed claims however, so Medrad filed another reissue application solely to correct the declaration and to correct inventorship. During subsequent litigation at the U.S. District Court for the Western District of Pennsylvania, Judge Gary Lancaster found the later reissued patent invalid because of the judge’s belief that reissue cannot be used to correct such a “procedural” error. Medrad appealed.

The Federal Circuit reversed because the reissue statute 35 US 251 for correcting errors in a patent does not “require that the error occur in the actual language of the claims.”

Some practitioners have problems following procedures when filing a reissue application. Careful claim analysis and documentation are needed before filing to determine claim scope differences from previously sought claims.

In Re Pennington Seed, Inc.

Decided October 19, 2006 pdf

Judge Lourie with Judges Michel and Ellis

Plant varietal names are generic and cannot be trademarked.

Pennington designated “Rebel” as a grass seed variety when applying for a plant variety protection certificate in 1981. Twenty years later, Pennington tried to register “Rebel” as a trademark for grass seed. The PTO refused, citing the historical practice of “refusing trademark registration for varietal names of plants on the ground that such names designate a particular variety of plant, rather than indicate the source of the product.”

The Federal Circuit affirmed because “it is well established that an applicant cannot acquire trademark protection for the generic name of a product.”

Representing a name to the government as a variety or as a generic term is a sure fire way to hinder later trademark protection for the name.

Go Medical Instrustries PTY, Ltd. Et al. v. Inmed Corporation et al.

Decided October 27, 2006 pdf

Judge Michel with Judges Archer and Linn

A patent licensee “may cease payments due under a license” but only upon linking the non-payment to claim invalidity.

Go licensed its urinary catheter patent to Inmed but a district court found the patent invalid during third party litigation. Inmed stopped paying royalties “until such time as the appeal is decided.” Go then terminated the agreement and sued Inmed at the U.S. District Court for the Northern District of Georgia, where Judge Thomas Thrash Jr. declared the patent infringed and invalid. Both sides appealed various issues, including the court’s holding that Go no longer owed royalty payments from the moment when the other court deemed the patent invalid.

The Federal Circuit held that Inmed’s royalty obligation continued to a later date despite the “Lear Doctrine,” which limits a patentee to recover “royalties until the date the licensee first challenges the validity.” Inmed did not meet the two conditions of 1) actually ceasing royalty payments and 2) clearly linking the reason for non-payment to patent invalidity.

This complicated litigation arose after a license agreement unraveled when a court deemed a licensed patent invalid. Altering a business relationship in such circumstances should be done carefully and comport with patent law rules.

Qualcomm Incorporated v. Nokia Corporation and Nokia, Inc.

Decided October 20, 2006 pdf

Judge Prost with Judges Newman and Schall

Incorporation of “the American Arbitration Association Rules” into a license agreement gives the arbitrator “the power to rule on his or her own jurisdiction.”

Qualcomm’s license agreement with Nokia granted rights to wireless CDMA system patents but specified that “any dispute…arising out of or relating to this Agreement” …”shall be settled by arbitration in accordance with (the American Arbitration Association) rules.” Qualcomm sued Nokia 4 years later at the U.S. District Court for the Southern District of California for allegedly infringing claims to other patents that cover a later (GSM) system technology. Nokia initiated arbitration and appealed judge Rudi Brewster’s decision not to stay the district court litigation, after the judge opined that the GSM technology issues differed from CDMA issues.

The Federal Circuit vacated the district court’s denial of the stay and instructed the district court to first inquire whether the parties “clearly and unmistakably” delegated “arbitraility decisions to an arbitrator, and if so, whether the assertion to arbitrate is wholly groundless.” Unfortunately for Qualcomm, the license agreement specifically incorporated “the AAA rules,” which specify that the arbitrator decides whether or not something is subject to the arbitration.

Negotiators should be wary of incorporating rules en masse (such as from an arbitration association) into a license agreement. Such license terms can yield unintended consequences.

Medtronic, Inc. v. Guidant Corporation et al.

Decided October 12, 2006 pdf

Judge Schall with Judges Michel and Dyk

“[W]hen a reissue claim, while broader in certain respects than the original patent claim, is materially narrowed in other respects, the recapture rule does not apply.”

Medtronic sued Guidant at the U.S. District Court for the District of Delaware for declaratory judgment that Guidant’s reissue patent claims for a heart pacer method “are invalid by reason of violation of the rule against recapturing surrendered subject matter.” Judge Sue Robinson found the claims not invalid, however and Medtronic appealed to the Federal Circuit.

The Federal Circuit reviewed the scope of amended claims, the reasons for amendments, and agreed that the recapture rule did not apply. Both courts found that when broad claims were added during reissue, the claims also were materially narrowed in other respects.

The work of filing, prosecuting and defending reissue patents often focuses on the claim construction problem of how to broaden claims in some aspects, yet narrow them in other aspects.

SRAM Incorporated v. AD-2 Engineering, Inc.

Decided October 2, 2006 pdf

Judge Linn with Judges Rader and Bryson

The Federal Circuit ”is not bound by the PTO’s claim interpretation because we review claim construction de novo.”

SRAM sued AD-2 at the U.S. District Court for the Northern District of Illinois for alleged infringement of SRAM’s patent claims to a bicycle “shift actuator rotatably mounted on a bicycle handlebar….” that takes up slack in the chain when shifting. Judge Robert Gettleman entered judgment of non-invalidity, liability and an injunction against AD-II after construing the claims as requiring “precise index shifting.” AD-II appealed to the Federal Circuit.

The Federal Circuit noted that the claims do not recite the index shifting innovation, and vacated the judgment and injunction based on a broader construction. The court noted that both the patent office and the lower court interpreted the claims to include the inventive feature of precise distance shifting. However, the Federal Circuit explained that “we are powerless to rewrite the claims and must construe the language of the claims at issue based on the words used…in this case the words are clear.”

Once again, the Federal Circuit pulls out the rug from under a litigation result based on de novo claim construction. In this case, file history evidence of claim construction from the examiner was trumped by a clear claim meaning, which the Federal Circuit ultimately relied on. Patent examiners often have poor English ability. A patent practitioner should not rely on English negotiated at the patent office with someone who does not understand well the grammatical limits of the language.

Aero Products International, Inc. et al. v. Intex Recreation Corp. et al.

Decided October 2, 2006 pdf

Judge Schall with Judges Rader and Dyk

A plaintiff “is not entitled to dual damages (from both trademark and patent infringements) resulting from the same act.”

Aero won a jury verdict against Intex for infringing patent claims to air mattress valves and to a trademark “ONE TOUCH” that covers sales of the claimed device. Judge John Darrah awarded damages of 6 million for patent infringement with willfulness and 1 million for trademark infringement. Intex appealed to the Federal Circuit.

The Federal Circuit vacated the 1 million trademark infringement damages because “the award of both patent infringement and trademark infringement damages in favor of Aero represents an impermissible double recovery.”

“[I]n determining whether there has been an impermissible double recovery of damages, the inquiry focuses on whether the damages issue arose from the same set of operative facts.”

Dystar Textilfarben GMBH et al. v. C.H. Patrick Co. et al.

Decided October 3, 2006 pdf

Judge Michel with Judges Rader and Schall

“[E]vidence of a motivation to combine (for obviousness) may be found…in the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved.”

DyStar sued Patrick at the U.S. District Court for the District of South Carolina for alleged infringement of claims to a textile dying process that uses a “hydrogenated” dye. A jury determined that the “level of ordinary skill in the art” of the invention was “a dyer with no knowledge of chemistry” and who thus had no motivation to combine chemical art. The jury found infringement and magistrate judge William Catoe, Jr. denied a motion from Patrick for judgment as a matter of law (“JMOL”) of obviousness. Patrick appealed to the Federal Circuit.

The Federal Circuit reversed the lower court because the jury had used an overly unsophisticated definition of a skilled artisan.

This decision reviews the problem of how to determine motivation to combine prior art for obviousness while noting that the Supreme Court is reviewing an important case (KSR Int’l Co. v. Teleflex Inc.) on this topic. The Federal Circuit emphasized that motivation can be found “from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.” The Federal Circuit summarized that “implicit motivation” for obviousness requires: determining the level of a skilled artisan in the field of an invention, determining the common knowledge of that person, and finally, considering the nature of the problem to be solved. Further, a finding of implicit motivation may require an explanation of “why ‘common sense’ of an ordinary artisan seeking to solve the problem at hand would have led him to combine the references.” Evidence of “why” may be a resulting “product or process that is more desirable” such as a cheaper or more convenient product.

Hopefully, the Supreme Court will give us all a bright line test for determining motivation that is at least as specific as the vague steps enunciated in this opinion from the Federal Circuit.

Sol Sheinbein v. Jon W. Dudas
Decided September 25, 2006 pdf

Judge Lourie with Judges Newman and Rader

“[A] (patent) practitioner may be found unfit to practice based solely on his disbarment in another jurisdiction.”

Patent attorney Sheinbein assisted his son’s escape (while the son was under murder investigation) to Israel . In response, Sheinbein was disbarred from practicing law in Maryland and in the District of Columbia . The patent office, citing the disbarment, also excluded Sheinbein from practice before the PTO. Sheinbein appealed to the U.S. District Court for the District of Columbia , but Judge Ellen Huvelle dismissed his case, and Sheinbein appealed to the Federal Circuit.

The Federal Circuit affirmed and noted that the PTO “is not in a position to conduct an efficient investigation of a practitioner’s conduct and must await the findings of a sister jurisdiction.”

Yoon Ja Kim v. Conagra Foods, Inc.

Decided September 20, 2006 pdf
Judge Dyk with Judges Schall and Archer, Judge Schall partially dissenting

For “a ‘consisting essentially of’ claim, there is no infringement where the accused product contains additional, unclaimed ingredients that materially affect the basic and novel properties of the invention.”

Kim sued Conagra at the U.S. District Court for the Northern District of Illinois for allegedly infringing claims to a “potassium bromate replacer composition consisting essentially of….” Judge William Hart construed the claims to cover compositions that “must perform essentially the same function” and found no infringement. Kim appealed the no infringement and Conagra appealed a no-invalidity holding.

A Federal Circuit panel majority affirmed, because the specification stated that the claimed “replacer …is a more effective oxidant than potassium bromate” and because the jury properly determined whether the accused composition performed the same function” as the prior art bromine compositions. Judge Schall dissented with a view that Kim had been her own lexicographer, and that the claimed composition is construed without functional comparison to potassium bromate.

A claim to a composition should not recite a function, unless of course, you want to confuse everyone during enforcement of the claim in a court.

Monsanto Company v. Mitchell Scruggs et al.

Decided August 16, 2006 pdf
Judge Mayer with Judges Bryson and Dyk

The anticompetitive doctrine of “patent misuse covers only activity falling outside of the patent grant.”

This is another case that tests Monsanto’s creative licensing of genetically engineered seed that is resistant to Roundup ™ herbicide. Monsanto sued Scruggs at the U.S. District Court for the Northern District of Mississippi after learning that Scruggs purchased genetically modified soybean without a license, and had replanted harvested seeds, in violation of Monsanto’s license agreement. Judge Allen Pepper granted Monsanto summary judgment on various claims, defenses and counterclaims, and issued a permanent injunction against Scruggs, who appealed to the Federal Circuit.

The Federal Circuit affirmed all holdings except the injunction, because the district court had not considered the four part test for permanent injunctions in the wake of the Ebay case decision.

This case shows the extent to which a license can be used to protect a self replicating invention. The license did not cover an “unrestricted sale” and thus the doctrine of patent exhaustion did not apply, allowing Monsanto to control use of the product well into the future. Monsanto’s forced licensing of the herbicide Roundup™ in combination with sale of seeds was narrowly condoned because at the time of licensing, no other equivalent herbicide was available. If another herbicide had been available, the license would have had to be amended. Judge Dyk dissented on this narrow point because “potential competitors are potentially discouraged” from such licensing activities, which thus are anti-competitive.

A Mississippi court in this case actually granted summary judgment on infringement and other basic issues, despite great interest by several outside parties who filed amicus curiae briefs.

MIT et al. v. Abacus Software, et al.
Decided September 13, 2006

Judge Michel with Judges Friedman and Dyk, Michel dissenting

A claim term such as “circuit” that is “used in common parlance….to designate structure, even …a broad class of structures” is not a means plus function.

MIT sued many companies at the U.S. District Court for the Eastern District of Texas for allegedly infringing claims to “a system for reproducing a color original” using “aesthetic correction circuitry.”  Judge David Fosom accepted a magistrate’s interpretation of “correction circuitry” as a means plus function claim.  Both sides stipulated to a final judgment of non-infringement based on the court’s claim construction, for a rapid appeal of claim construction to the Federal Circuit.

The Federal Circuit reversed the claim construction and vacated the summary judgment because “technical dictionaries….plainly indicate that the term ‘circuit,’ connotes structure.”  The Federal Circuit held that this term “is clearly limited to hardware” and further noted that the specification references and examples did not use the term to mean software.  Judge Michel dissented with a view that “not every adjectival qualification … connotes sufficiently definite structure” and agreed with the district court’s more narrow interpretation as a means plus function claim. 

Patent claims in the engineering fields should exploit broad, structural terms such as “sensor” and “circuit” to denote a wide range of intended embodiments.

Alza Corporation v. Mylan Laboratories, Inc. and Mylan Pharmaceuticals, Inc.

Decided September 6, 2006

Judge Gajarsa with Judges Clevenger and Prost

“A suggestion to combine (prior art references) need not be found in the prior art” but “may be implicit from the prior art as a whole.”

 Alza sued Mylan at the U.S. District Court for the Northern District of West Viginia for allegedly infringing claims to “a sustained-release oxybutynin formulation” that is absorbed slowly by virtue of its chemical ability to pass through the colon wall.  Judge Irene Keeley found the claims invalid on obviousness grounds.  Alza appealed to the Federal Circuit.

The Federal Circuit affirmed, because a skilled artisan (someone with an “advanced degree”) “would have had a reasonable expectation that oxybutynin would be colonically absorbed” and thus be motivated to make the extended release formulation.  A prior art teaching that “lipophilic drugs are absorbed along the length of the GI tract” was combined with the fact that oxybutynin is a lipophilic drug, without further specific evidence of motivation..

The Federal Circuit now, often stresses that “implicit” motivation can be found in background art for obviousness challenges.  The best defense to this loose motivation requirement is to show unexpected results or evidence of teaching away in the prior art.

Ormco Corporation et al. v. Align Technology, Inc.
Decided August 30, 2006
Judge Dyk with Judges Schall and Gajarsa

“[T]eaching, motivation, or suggestion [to combine references] may be implicit from the prior art as a whole, rather than expressly stated in the references…”

Align sued Ormco at the U.S. District Court for the Central District of California for allegedly infringing claims to an orthodontic system of multiple brace parts assembled in “a package” with “instructions” for use.  Judge Gary Taylor granted Align summary judgment of no-invalidity and granted a permanent injunction. Align appealed to the Federal Circuit.

The Federal Circuit held all of the infringed claims obvious and reversed the summary judgment.  The Federal Circuit was not impressed by the technical feat of combining 3 braces with one instruction in a single package, and referred to inherency of motivation (i.e. motivation was “implicit”) for reversing the unobviousness determination.

The Federal Circuit recognizes implicit motivation to combine references for obviousness, particularly for simple mechanical inventions.

Fuji Photo Film Co., Ltd. v. Jack C. Benun et al.
Decided August 23, 2006
Judge Rader with Judges Clevenger and Dyk

“[S]imilar issues” can be litigated simultaneously at the ITC and a district court.

Fuji has litigated with Jack and Jack’s various companies since 1998 over infringement of single use film cameras, mostly at the International Trade Commission (“ITC”).  Fuji had customs seize shipments and also obtained large penalties against Jack.  In the latest step, Fuji obtained a preliminary injunction from Judge Katharine Hayden at the U.S. District Court for the District of New Jersey, which prevents Jack and his latest company from moving items from his inventory.  Jack appealed to the Federal Circuit, arguing that the district court lacked jurisdiction because the importation already was subject to an ITC exclusion order.

The Federal Circuit affirmed jurisdiction of the district court because the civil action at the district court does not “fall within that language” of the statute that gives the ITC authority to act, but arises from a different legal source.

Patent disputes over imported products often are handled more rapidly and at lower cost at the ITC.

Cook Biotech Incorporated et al. v. Acell Incorporated et al.

Decided August 18, 2006
Judge Prost with Judges Newman and Lourie

Incorporation by reference of another document in a patent specification permits use of that document for claim construction.

Cook sued Acell at the U.S. District Court for the Northern District of Indiana for alledgedly infringing claims to a tissue graft composition that includes “the luminal portion of the tunica mucosa” of bladder.  A jury found literal infringement of claims as interpreted by Judge Allen Sharp and both sides appealed various issues to the CAFC.

The Federal Circuit construed the claims more narrowly, citing a definition from a third party patent that Cook had incorporated by reference, as a “similar...procedure for preparing intestinal submucosa.”   The Federal Circuit explained that statements in the incorporated reference are “intrinsic evidence” and fair game for determining “patentee’s definition of the claim term.”

Practitioners in the biotech field often specifically incorporate by reference other patents, partly to enable how to make and use a claimed invention.  However, such voluminous, uncontrolled and unedited statements by others via reference in a patent specification provide a rich source of material for destroying a patent or flipping a patentee’s case on its head, as occurred here. 

Conoco, Inc. v. Energy & Environmental International, L.C. et al.

Decided August 17, 2006
Judge Gajarsa with Judges Bryson and Archer

The term “’consisting of’ does not exclude additional components or steps that are unrelated to the invention.”

Conoco sued Energy at the U.S. District Court for the Southern District of Texas for allegedly infringing claims to a process for making pipeline drag reducing ingredients that combine “material selected from the group consisting of water and water-alcohol mixtures.”  Energy stipulated validity and enforceability of the claims, and argued non-infringement, but appealed after Judge John Rainey adopted an undesirable claim construction and found infringement.  

The Federal Circuit affirmed, with a claim construction that allowed other substances in the accused material, if not particularly related to the invention’s function.  The court noted that “[t]ransitional phrases, such as ‘comprising,’ ‘consisting of,’ and ‘consisting essentially of,’ are terms of art in patent law” and have meanings that are found in the PTO’s Manual of Patent Examination Practice (“MPEP”) section 2111.03. 

The Federal Circuit often cites the MPEP and seems to defer to written guidelines of the PTO.  Practitioners should review and perhaps even quote the MPEP as appropriate, when explaining claim terms during patent preparation and prosecution, to minimize claim construction surprise during litigation.

Pfizer Inc. et al. v. Ranbaxy Laboratories Limited et al.
Decided August 2, 2006  pdf
Judge Michel with Judges Schall and Dyk

A dependent claim that “fails to ‘specify a further limitation…’ of the claim to which it refers because it is completely outside the scope” is invalid under rule 112.

Pfizer sued generic drug maker Ranbaxy at the U.S. District Court for the District of Delaware for alleged infringement of two patents for Lipitor™ (LDL cholesterol drug) after Ranbaxy filed an Abbreviated New Drug Application at the FDA.  Judge Joseph Farnam found infringement of the first patent and of dependent claim 6 in the second patent.  Ranbaxy appealed to the Federal Circuit.

The Federal Circuit affirmed most rulings but found dependent claim 6 invalid because this claim recited a “salt of the compound of claim 2” while claim two only recites an acid.  Although the district court overlooked this “technical problem in the drafting of claim 6” the Federal Circuit declared that “we should not rewrite claims to preserve validity.”  That is, “procedural” requirements to obtain a patent such as “requiring submission of an oath,” “submission of a fee with the application” and “joint inventors to apply for a patent jointly” have to be satisfied for validity challenges.  An interesting point relevant to overseas discovery was that “statements made during prosecution of foreign counterparts to the ‘893 patent are irrelevant to claim construction because they were made in response to patentability requirements unique to Danish and European law.” 

Sloppy claim drafting for even one dependent claim can eliminate a patent during later litigation.

Eolas Technologies, Inc. and Regents, U. California v. Microsoft Corp.
Decided July 31, 2006  pdf
Judge Rader with Judges Plager and Prost

Remanded cases in the 7^th Circuit (including Illinois) normally are reassigned to a new judge.

This case is about a procedural rule at the U.S. District Court for the Northern District of Illinois that Microsoft lost, regarding infringement of an Eolas patent by Explorer browser software.  The Federal Circuit had remanded for a review of potential prior art but the district court refused to give Microsoft a new judge as required under the procedural rules of the 7^th circuit.  Microsoft appealed to the Federal Circuit.

The Federal Circuit noted that the “Seventh Circuit appears unique among the circuit courts” by having such rule, agreed with Microsoft and reversed the district court’s refusal.  Eolas presented the weak argument that the Federal Circuit had remanded to “the district court” but the Federal Circuit explained that “district court itself is not literally synonymous with the presiding district court judge.”

When large amounts of money are at stake (Eolas’s royalty damages include foreign sales of Internet Explorer!) a little procedural nuance (such as whether a judge is a court) can turn into a litigatable mountain.

Amgen Inc. V. Hoechst Marion Roussel, Inc. and Transkaryotic Therapies, Inc.
Decided August 3, 2006  pdf
Judge Schall with Judges Michel and Clevenger, Judge Michel dissenting

A patent practitioner can broaden the meaning of a vague claim term by employing “non-limiting” words such as “included” in the specification.

This is a second appeal following a second Markman hearing and bench trial by Judge William Young at the U.S. District Court for the District of Massachusetts over alleged patent infringement by Hoechst’s (now Aventis) EPO preparation.  Hoechst appealed various issues to the Federal Circuit after a jury found infringement of 5 asserted patents.

In its previous remand, the Federal Circuit instructed the district court to construe the claim term “therapeutically effective amount” and to re-determine invalidation for some claims.  In this second appeal, the Federal Circuit, “[u]sing Philips as a guide” relied on broadening statements in the specification and file history to determine that the term does not require an amount that heals or cures disease, and thus reversed several holdings of the district court, for a second remand.

In a dissent Chief Judge Michel argued that the district court correctly construed the claim term from prior art, statements in the specification and the file history.  Judge Michel also lamented that the Federal Circuit affirmed infringement for claims for several patents for this 9 year old litigation “yet the end is nowhere in sight.”  Amgen’s patents may expire before the litigation is completed.

Intel Corporation v. Commonwealth Scientific and Industrial Research Organization

Decided July 14, 2006
Judge Michel with Judges Plager and Bryson

A foreign state does not enjoy sovereign immunity for “commercial activity,” which is broadly defined to embrace attempts to license a U.S. patent.

The Commonwealth Scientific and Industrial Research Organization of Australia (CSIRO), attempted to license its wireless networks U.S. patent to various American companies that use Intel chips.  In response, Intel filed declaratory judgment actions at the U.S. District Court for the Northern District of California for non-infringement, invalidity and other allegations.  Judge Martin Jenkins refused CSIRO’s request for foreign immunity, because CSIRO tried to license the patent, and this activity falls under the “commercial activity” exclusion from the Foreign Sovereign Immunities Act of 28 USC 1602-1611 (FSIA).  CSIRO appealed.

The CAFC affirmed, noting that Congress intended that the “courts would have a great deal of latitude in determining what is a ‘commercial activity’ for purposes of exclusion” under the FSIA.  In particular, “a patentee’s attempt to conduct license negotiations is a commercial activity.”  Moreover, “a contract…(need not) be fully consummated in order to qualify as commercial activity.”

Foreign government agencies have become more active in licensing patents for extra income.  Such agencies cannot run and duck under their sovereign immunity status when things go sour and would be licensees bite back.

Flex-rest, LLC, v. Steelcase, Inc.

Decided July 13, 2006
Judge Linn with Judges Bryson and Prost

“Intentional suppression” of 102(g) prior art “requires evidence that the inventor intentionally delayed filing in order to prolong the (patent term).”

Flex sued Steelcase at the U.S. District Court for the Western District of Michigan for allegedly infringing claims to a clamp that mounts a keyboard tray “in a backward tilted position.”  Flex  lost a jury verdict of invalidity after defendant Steelcase produced anticipation evidence of its own earlier invention under 102(g) and 103.   Both sides appealed. 

The Federal Circuit affirmed because Flex failed to prove that Steelcase had either i) intentionally suppressed or concealed the prior invention or ii) that a conclusion of suppression or concealment could be drawn based on unreasonable delay in making the invention public.  Steelcase’s delay of 6.5 months between reduction to practice and commercialization was deemed reasonable.

Evidence of invention prior to patenting may be used to invalidate patent claims during litigation under 102(g) or 102(f).  The patentee in this case unsuccessfully attempted to attack such prior art of a defendant by arguing that the defendant suppressed or concealed his earlier same invention.

U.C. Regents v. University of Iowa Research Foundation (and NIH)
Decided July 17, 2006
Judge Rader with Judges Bryson and Linn

An applicant cannot assert a claim for the same or substantially the same subject matter that was claimed already in a patent, more than one year after issuance.

U.C. added claims in an application to cover the same invention as claimed by U. Iowa more than one year after Iowa’s patent issued.  During the subsequent interference, the Board of Patent Appeals and Interferences found that the late-filed claim had “material differences” from the earlier claims and failed to meet 35 USC 135(b)(1).  U.C. appealed.

The Federal Circuit affirmed.  The Federal Circuit disagreed with U.C.’s interpretation of 135(b)(1) that U.C.’s filing of other timely claims before the one year deadline had somehow “discharged its duty under section 135(b)(1).”  

Flooding the PTO with numerous, similar sounding claims can complicate priority issues.  Such filers need to carefully document and monitor filing dates and claim contents

Honeywell International, Inc. v. ITT Industries, Inc. et al.
Decided June 22, 2006
Judge Lourie with Judges Mayer and Dyk

Repeated identification within a patent specification to “the invention,” rather than to merely preferred embodiments can narrow claim scope.

Honeywell sued ITT at the U.S. District Court for the Eastern District of Michigan for alleged infringement of claims to a “fuel injector component” made from plastic impregnated with electrically conductive particles to prevent electrostatic breakdown.  Judge Avern Cohn granted ITT summary judgment of non-infringement for its connector part after construing the claim term “fuel injector component” as limited to fuel filters, due to statements in the specification that refer to “fuel filter as “the present invention.” 

The Federal Circuit affirmed, noting that “[t]he public is entitled to take the patentee at his word and the word was that the invention is a fuel filter.”

Patent specifications sometimes are relied on heavily for interpreting claims. 

A patent drafter should be careful when stating in the specification that a structure or method is “the invention,” because a court might believe him and limit the claims accordingly.

Gemmy Industries Corporation v. Chrisha Creations Limited et al.
Decided June 22, 2006
Judge Newman with Judges Mayer and Schall

The “ready for patenting” standard, which covers on sale bar determinations, requires that the for-sale product meet the elements of a patent claim.

Gemmy and Chrisha sued each other in Kansas and New York over Chrisha’s exploitation of a large inflatable Santa Claus, which Gemmy had patented.  After consolidation in the Southern District of New York, Judge Robert Sweet granted Chrisha summary judgment of invalidity on the basis that Gemmy had offered to sell the Santa world wide more than 12 months before filing a Santa patent application.  The court also granted a preliminary injunction against Gemmy’s patent marking of Santa, prompting an interlocutory appeal to the Federal Circuit.

The Federal Circuit vacated the invalidity judgment because the patent claims recite a Santa that is inflated with a fan in the base, whereas the alleged first sale offer concerned a Santa filled with vacuum cleaner exhaust, and lacked this claim element.  The early for-sale offer thus did not meet the Pfaff “ready for patenting” standard.

A patent practitioner should consider early marketing history during patent drafting but may craft claims creatively to avoid an on-sale bar from an evolving product.

LG Electronics, Inc. v. Bizcom Electronics, Inc.
Decided July 7, 2006
Judge Mayer with Judges Michel and Newman

Sales of components recited in combination patent claims do not exhaust patent rights if a license disclaims use of the components and customers are notified before sale.

LG licensed 5 patents that cover computer chip interactions to Intel, on condition that Intel’s buyers are notified that they can only practice the system claims with Intel chips.  LG then sued buyers, who violated the prohibition, at the U.S. District Court for the Northern District of California.  Judge Claudia Wilken construed the claims, granted summary judgment of non-infringement, and declared that LG’s rights in any system claims were exhausted, for 4 of 5 patents in the suit.  All parties appealed various issues.

The Federal Circuit reversed the judgment of patent exhaustion for system claims because “[t]he exhaustion doctrine…does not apply to an expressly conditional sale or license.”  An interesting claim construction issue was whether “an industry standard, which was incorporated into the specification by reference” can be used for construing the system claims.  LG’s patent specifications incorporated by reference an IEEE committee document that included an industry standard for computer bus operation, which supported LG’s claim construction.  The Federal Circuit relied on the incorporated reference and reversed the district court because “prior art cited in a patent or cited in the prosecution history…. constitutes intrinsic evidence.”

The Federal Circuit often cites the Phillips case and defers to the specification when construing claims.  Juicy claim construction evidence from documents that are incorporated by reference is fair game for litigators and represents a large untapped reservoir of intrinsic evidence.

On Demand Machine Corporation v. Ingram Industries, Inc. et al.
Decided March 31, 2006  pdf
Judge Newman with Judges Mayer and Bryson

Decided May 9, 2006  pdf
Judge Linn with Judges Mayer and Schall, Judge Mayer dissenting

Decided May 11, 2006  pdf

Judge Newman with Judges Dyk and Prost, Newman separately concurs

Decided April 21, 2006  pdf

Judge Clevenger with Judges Rader and Dyk

Lava Trading, Inc. v. Sonic Trading Management, LLC et al.
Decided April 19, 2006  pdf

Judge Rader with Judges Mayer and Linn, Mayer dissenting

Decided January 25, 2006  pdf

Judge Newman with Judges Archer and Schall

In Re Scott E. Johnston
Decided January 30, 2006  pdf copy
Judge Newman with Judges Michel and Bryson

Purdue Pharma L.P., et al. v. Endo Pharmaceuticals Inc. et al.
Decided February 1, 2006  pdf copy
Judge Plager with Judges Gajarsa and Linn

Varco, L.P. v. Pason Systems USA Corp 
Decided February 1, 2006  pdf copy
Judge Rader with Judges Clevenger and Dyk

Nicholas V. Perricone, M.D. v. Medicis Pharmaceutical Corporation

Decided December 20, 2005

Judge Rader with Judges Bryson and Linn

*          “[P]rinciples of inherency do not prohibit a process patent for a new use of an old structure.”

            Perricone sued Medicus at the U.S. District Court for the District of Connecticut for allegedly infringing claims to his “method of treating sunburn” by applying a mixture of vitamin C-lipid derivatives to the skin.  Judge Christopher Droney granted summary judgment of invalidity over a prior patent that described applying the same composition as a skin lotion to prevent skin problems.  Perricone appealed to the Federal Circuit.

A Federal Circuit majority opinion reversed because “[n]ew uses of old products or processes are indeed patentable subject matter.”  The cited prior art did not did not describe sunburn prevention or treatment and thus did not anticipate under inherency principles because Perricone had claimed a “much narrower topical application to skin sunburn.”  Judge Bryson dissented with a view that “identification of a new subset of a previously known property is not entitled to patent protection.” 

An interesting side issue was that the Federal Circuit reminded the patentee that (contrary to the opinion of the district court) a patent term disclaimer can be filed after patent issuance.

            This was a close (split decision) case because a claim preamble recited a species element that fell within a genus described in an earlier patent.  The case has been remanded, where the district court likely will hear a very lively obviousness argument from the defendant.

Invitrogen Corporation v. Clontech Laboratories, Inc.

Decided November 18, 2005
Judge Gajarsa with Judges Michel and Rader

*          Proving conception requires objective evidence of an inventor’s “appreciation” that his creation has “the features that comprise the inventive subject matter at bar.”

            Invitrogen sued Clontech at the U.S. District Court for the District of Maryland for allegedly infringing claims to a DNA synthesis enzyme (reverse transcriptase) that lacks RNA cutting ability.  Judge Alexander Williams Jr. reviewed inventorship and found that a competing researcher from Columbia University earlier had made the enzyme as claimed.  The court found the claims anticipated by the Columbia researcher’s acts under 102(g)(2).  Invitrogen appealed to the Federal Circuit.

The Federal Circuit held that “the district court misapplied the law of appreciation when dating conception,” and vacated the conception and invalidity holdings.  The Federal Circuit pointed out that “conception requires that the inventor appreciate that which he has invented” and “[i]n the appreciation analysis, the relevant uncertainty relates to the emerging recognition of something new.”  In this case, the asserted prior inventor at Columbia did not know that particular mutant forms of the enzyme had the new property until much later, when he had developed a reliable assay to confirm his desire/guess of the new property, as later claimed by the other.

Proving conception in the biochemical arts can be difficult, because guesswork and predictions often are confused or even pushed over reality.  Notebook and other evidence are most important to show that an inventor understood all elements of an invention as later claimed. 

Microstrategy Inc. v. Business Objects, S.A. and Business Objects Americas, Inc.

Decided November 17, 2005

Judge Rader with Judges Newman and Archer

*          When interpreting state law, “the federal court must look to the rulings of the highest state court, and, if no such rulings exist, …predict how that high court would rule.”

            Microstrategy sued Business at the U.S. District Court for the Eastern District of Virginia for alleged patent infringement and also for several state law business tort claims, after Business hired employees away from Microstrategy.  Judge Jerome Friedman granted summary judgment of non infringement and unenforceability of an employment contract that obligated former employees of Microstrategy to “not, directly or indirectly, seek to influence any employees, agents, contractors or customers of MicroStrategy to terminate or modify their relationship with MicroStrategy."  MicroStrategy appealed to the Federal Circuit.

The Federal Circuit reversed the unenforceability holding of the employment contract, because a lower Virginia state court reasonably disagreed with the federal district court on construing this contract passage.   The Federal Circuit explained that, while only a state’s highest court decision on a state law matter is binding on a federal court, “[a] state court’s judgment is not to be treated lightly, particularly where it interprets state law.”

Business litigation often embraces state law issues such as interpretation of employee contracts, and such issues can merge with patent issues in litigation at a district court.  A patent practitioner should be familiar with state laws that cover their inventor’s confidentiality and non-compete contracts. 

Norian Corp. v. Stryker Corp.
Decided December 6, 2005  pdf copy
Judge Bryson with Judges Rader and Newman

*          The “general rule (that) the word ‘a’ generally means ‘one or more’ in open ended claims …does not apply when the specification or the prosecution history shows that the word was used in its singular sense.”

Norian sued Stryker at the U.S. District Court for the Northern District of California for allegedly infringing claims to a bone mineralization “kit consisting of…a solution consisting of water and a sodium phosphate.”  Judge William Alsup granted Stryker summary judgment of no infringement because the accused product contained more than one form of phosphate.  Norian appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit affirmed because the patentee had used “at least one” to refer to other chemicals in the same claim and in context, “the word ‘a’ is conspicuous in the phrase.”  The court also noted that the term “a sodium phosphate” was added during prosecution with a clarifying statement that one phosphate was intended.

Poor patent prosecution may have allowed a narrow construction of the term “a” during litigation.  The applicant had added this term and admitted during prosecution that “the solution is limited to one that is made of water and a solute selected from a sodium phosphate.” 

Pfizer, Inc. and Warner-Lambert Company, LLC v. Teva Pharmaceuticals USA, Inc. et al.

Decided November 22, 2005  pdf copy

Judge Prost with Judges Newman and Rader

*          “It is necessary to consider the specification as a whole, and to read all portions of the written description, if possible in a manner that renders the patent internally consistent.”

Warner sued Teva for patent infringement at the U.S. District Court for the District of New Jersey after Teva sought FDA approval for a generic version of Teva’s Accupril™.  The court found the patent infringed and not invalid.  After Teva began selling the generic product, Judge Dickinson Debevoise granted Warner a preliminary injunction.  Teva appealed the injunction to the Federal Circuit, arguing for a narrower definition of the claim term “saccharides (i.e. sugars)” that would exclude the non-sugar stabilizer used in Teva’s accused product.

The Federal Circuit affirmed because, although portions of the patent specification indicated “saccharide” to mean “sugar,” this argument “ignores the fact that the person of ordinary skill in the art is deemed to have read the claim term in the context of the entire patent.”  The specification broadly included other stabilizers such as mannitol and other non-sugars as “saccharide.”

In earlier litigation Teva argued an opposite, broader definition for “saccharide” to support claim invalidity arguments and both parties had agreed to the broader definition.  However, “the stipulation presented to the court….stated that it was for the purposes of that litigation only.”  In contrast, statements made at the patent office are used more reliably to construe claims because of the “public notice” function of patent office records.   The enhanced ability of a third party challenger to rely on such admissions by a patentee (or from an examiner) during reexamination is an often overlooked strategic advantage of reexamination over litigation for handling claim disputes. 

IPXL Holdings, LLC, v. Amazon.com, Inc.

Decided November 11, 2005   pdf copy

Judge Clevenger with Judges Rader and Schall

*          “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 USC 112, second paragraph.”

IPXL sued Amazon at the US District Court for the Eastern District of Virginia for alleged infringement of claims that recite electronic fund transfers.  Judge Leonie Brinkema granted Amazon summary judgement of non-infringement, invalidity of all claims, and awarded attorney fees.  IPXL appealed to the Federal Circuit. 

The Federal Circuit agreed that a reference, which the PTO had considered during examination, anticipated the claims.  The Federal Circuit however, reversed the award of attorney fees as Amazon did not timely file a request for the fees under Fed. R. Civ. P. 54, since “Amazon took no steps under Rule 6(b)(2) that could have afforded the district court a basis …to enlarge the 14 day time period” for filing the request.

In this first decision that comments on the invalidity of compound method/device claims under section 112, the Federal Circuit explained that recitation of both method and apparatus in the same claim “does not apprise a person of ordinary skill in the art of its scope, and ….is invalid under section 112, paragraph 2.”

Sloppy claim drafting sometimes includes method steps with apparatus claims such as those litigated in this case.  Such hybrid claims can be attacked during litigation on section 112(2) grounds.

Union Carbide Chemicals & Plastics Technology Corp. et al. v. Shell Oil Company et al. www.fedcir.gov/opinions/04-1475.pdf
Decided October 3, 2005
Judge Rader with Judges Mayer and Prost

*          “[T]he exportation of a component…used (abroad) in the performance of a       patented process or method” …“may result in liability under 271(f).”

             Union sued Shell at the U.S. District Court for the District of Delaware for allegedly infringing patent claims to a method of making ethylene oxide and inducing infringement overseas.  A jury found contributory infringement from Shell's sales to third parties and Judge Sue Robinson limited damages to domestic use because of her interpretation that USC 271(f) does not apply to method claims.  Both sides appealed.

The Federal Circuit vacated the damages award “because 271(f) governs method/process inventions.” 

Many industries are globally integrated and companies often decide where to make a product or conduct a service based on costs in different countries.  In response, a patentee should consider how U.S. patent method claims might be asserted against companies that use a material from the US to practice a patented method in another country. 

J. Ole Sorensen et al. v. International Trade Commission et al.
Decided October 31, 2005 www.fedcir.gov/opinions/05-1020.pdf
Judge Rader with Judges Michel and Linn

*          Claim terms are defined primarily by the specification.  File history must “clearly             and unambiguously express surrender of subject matter” to alter these meanings.

                Ole attacked Mercedes at the ITC under 19 USC 1337 for importing tail light lenses made with two colored plastics, in alleged violation of his US patent claims to a molding method that uses two different plastic materials in a mold.  Because Ole narrowed his claims by adding the term “different characteristics” during prosecution, the ITC found no infringement from a view that the molded materials must differ in some characteristic other than color.  Ole appealed to the Federal Circuit.

The Federal Circuit vacated the ITC decision because statements in the specification indicated that the two plastics may be merely “different.”  The court noted the primacy of the specification and that Ole’s comments during prosecution “in no way shows a clear and unambiguous disavowal of the broad scope of the claim.”

The Federal Circuit seems to rely more heavily on the patent specification and less on file history for construing claims, in the wake of the en banc Philips claim construction case earlier this year.  Because of this emphasis, a practitioner should prepare very detailed specifications to ensure maximum performance during patent enforcement.

Michael P. Callicrate v. Wadsworth Manufacturing, Inc.
Decided October 31, 2005   www.fedcir.gov/opinions/04-1597.pdf
Judge Rader with Judges Newman and Prost

*          “[A] patent specification may sufficiently enable a feature under 112(1), even if only the background section provides the enabling disclosure.”

Michael sued Wadsworth at the U.S. District Court for the District of Montana for infringing his patent claims to a cattle castrator.  Michael’s patent claims had elements that were supported in the background section of his earliest patent disclosures, where he had disparaged those features.  Judge Donald Molloy responded to this anomaly by declaring that the later patent claims were not supported by the earlier disclosures.  A jury then found that intervening prior art invalidates the later patent claims.  Michael appealed.

The Federal Circuit reversed because the description of claim elements in the background section of the earlier priority documents supported the earlier priority date.  Neither party argued the written description requirement and this opinion revolved around whether enablement was met in the earlier applications.

A practitioner often avoids detailed description in the background section of a specification.  This case shows however, that a nuanced description of prior art may be a useful reference for adding features to a later asserted claim.  In the biotechnology arts in particular, practitioners tend to cite and describe many alternative procedures in a patent specification to fortify enablement of a claimed invention.  This technique may be useful even for mechanical patent applications.

Dorel Juvenile Group, Inc., v. Graco Children’s Products, Inc.
Decided November 7, 2005   www.fedcir.gov/opinions/05-1026.pdf
Judge Clevenger with Judges Newman and Gajarsa, Newman dissenting

*          Whether an accused product has features recited in a patent claim “is a question           of fact that cannot be determined on summary judgment.”

Dorel sued Graco at the U.S. District Court for the Southern District of Indiana for allegedly infringing claims to a child’s car seat having a cup holder with the base “removably attached to a seat.”  Judge Larry McKinney granted summary judgment of noninfringement because the claims recite a seat that is designed to come apart from the base whereas Graco’s seat does not separate when used properly.  Dorel appealed to the Federal Circuit.

The Federal Circuit noted that the accused seat could be taken off the base using a special screw driver and vacated the summary judgment because “[t]he district court has invaded the province of the finder of fact, here a jury…in determining the infringement question.”  Newman dissented with a view that the facts clearly show that no disassembly of the accused seat is possible in the context of the claim meaning.

The majority opinion in this case deferred to a jury's role in deciding an issue that could have been more fully addressed in the patent specification.  This fact issue might have been avoided if the patent specification had included a wide variety of mechanisms (even if mostly theoretical) for detaching the seat.

Medimmune, Inc. v. Genentech, Inc. et al.
Decided October 18, 2005   www.fedcir.gov/opinions/04-1300.pdf
Judge Newman with Judges Mayer and Clevenger, Clevenger dissenting in part

*          A patent licensee that does not breach its license and lacks apprehension of suit             cannot assert a declaratory judgment action of invalidity against the patent.

                Medimmune licensed patents and patent applications from both Genentech and Celltech for the use of cell cultures to make human antibodies.  Genentech’s patent application and Celltech’s patent collided via an interference at the PTO.  The PTO held that Celltech’s older patent was prior to the other.  Genentech contested this with a suit under 35 USC 146 at the U.S. District Court for the Northern District of California.  The court allowed the parties to enter mediation, during which they concluded a mutually agreeable cross license with royalty sharing agreement, based on a changed priority to the later Genentech application.  This lengthened Medimmune’s license duration.  Medimmune responded with its own district court action against both parties, asserting declaratory judgment of invalidity, unenforceability of Genentech’s patent, and further that the two licensors colluded during their mediation to optimize profit.  Judge Mariana Pfaelzer dismissed the case however, because Medimmune continued to pay royalties and lacked reasonable apprehension of suit.  Medimmune appealed to the Federal Circuit.

This very interesting fact pattern reveals two adversaries that divvied up royalties after they moved their patent dispute into mediation and created a longer patent/licensing term.  The Federal Circuit affirmed the dismissal of all claims, noting that “settlement of disputes such as priority in patent interferences is not a presumptive violation of antitrust law.”  Clevenger agreed with the dismissal of the patent claims but deemed this dismissal as removing the patent law issues only, and would have allowed transfer of the remaining anti-trust issues to the Ninth Circuit Court of Appeals.

After seven and a half years of slugging it out at the PTO to determine priority, the parties flipped the PTO decision during a mediation in California “based in part on new evidence of the content of a draft patent application,” which was presented to a retired judge acting as a mediator.  This flippage and co-exploitation may have prompted a suspicion that the two adversaries may have gamed the legal system to create an unfair extension of a monopoly over their common licensee.

Sicom Systems Ltd., v. Agilent Technologies, Inc. et al.

Decided October 18, 2005
Judge Prost with Judges Mayer and Rader

*          An exclusive licensee that is not free to sublicense or assign lacks standing to sue without joining the licensor.

            Sicom, an exclusive “commercial” licensee of the Canadian government, sued Agilent at the U.S. District Court for the District of Delaware for allegedly infringing patent claims to digital transmission systems that use eye patterns.  Judge Joseph Farnan, Jr. dismissed the suit for lack of standing because Canada had withheld the right to sue for non-commercial infringement, maintained control over sublicensing and did not participate in the litigation.  Sicom appealed to the Federal Circuit.

The Federal Circuit affirmed because Canada did not transfer substantially all rights to Sicom.  In particular, the Federal Circuit noted that “the restriction on Sicom's right to assign was a fatal reservation of rights by Canada.”

The Federal Circuit outlined license terms that transfer substantially all rights and that support standing.  Notably, such license should: a) transfer all rights including the right to assign and can merely oblige the licensee to inform the licensor in the event of suit; b) include a reversionary right to the patentee in the event of bankruptcy or production termination; and c) include a right to share infringement damages.

Mayer/Berkshire Corp. v. Berkshire Fashions, Inc.
Decided September 22, 2005
Judge Newman with Judges Friedman and Bryson

*          "A trademark infringement action in the district court is not automatically of preclusive effect in a cancellation proceeding."

            Mayer opposed Berkshire's registration for the trademark "BERKSHIRE" at the U.S. PTO during a lawsuit between these parties at the U.S. District Court for the District of New Jersey.  Berkshire won a verdict of non-infringement and the U.S. PTO subsequently dismissed the opposition.  Berkshire then obtained the trademark for the field of apparel.  Mayer opposed the application upon its publication but the PTO held that the "issue of likelihood of confusion" was already decided by the New Jersey court.  Mayer appealed to the Federal Circuit.

            The Federal Circuit vacated the PTO's dismissal because "different causes of action (in the PTO vs in the court) may involve different sets of transactional facts, different proofs, different burdens, and different public policies," which "generally avoid preclusion."

            Berkshire was helped by the fact that its mark was registered in a variety of fields, which minimized overlap with litigated issues.  An aggressive trademark filer should pay the extra fees and register in multiple fields of use.

International Rectifier Corporation v. Samsung Electronics Co., Ltd. et al.
Decided September 23, 2005
Judge Linn with Judges Lourie and Prost

*          A district court needs to provide a "concise but clear explanation" when reducing a fee award.

            In a previous appeal, the Federal Circuit found Samsung not in contempt for violating a permanent injunction and remanded to the U.S. District Court for the Central District of California.  On remand, Samsung moved the district court for an award of more than $1.25 million in attorney's fees but Judge Manuel Real awarded only $650,000, noting that the case "has been terribly overlawyered."  Samsung appealed again to the Federal Circuit, arguing that the district court used clearly erroneous findings when reducing the award.

            The Federal Circuit reversed and remanded again because without "an explanation of the district court's fee reduction, 'we are unable to assess whether the court abused that discretion.'"

            Merely arguing about litigation fees can chew up precious financial resources and lead to an appeal and further litigation.  A creative contract (such as settlement agreement) drafter should include agreements in advance for such issues to minimize unnecessary litigation.

In Re. Stereotaxis, Inc.

Decided October 27, 2005
Judge Friedman with Judges Rader and Dyk

*          “The Trademark Office may require a disclaimer … if the mark is merely descriptive for at least one of the products or services.”

            The PTO agreed to register Stereotaxis’s requested trademark (a logo next to “Stereotaxis, Inc.”) only if the company specifically disclaimed the term “Stereotaxis.”  The PTO deemed this term merely descriptive for the product, which stereotaxically allows positioning of medical devices.  Stereotaxis appealed to the Federal Circuit, arguing that the PTO had failed to specify the products and services that are described by the disputed term. 

The Federal Circuit affirmed, based on a dictionary definition for STEREOTAXIS, which “immediately describes, without conjecture or speculation” some or most of Stereotaxis’s product. 

Stereotaxis lost because it could not "show that its proposed definition would be understood by the relevant public …to be the only meaning of the term."  A company that wants to select and trademark a name should consider something that does not merely restate what the company does or sells.

Novo Nordisk Pharmaceuticals, Inc. v. Bio-Technology General Corp et al.

Decided October 5, 2005

Judge Schall with Judges Archer and Bryson

*          A prophetic example in the past tense can made a patent unenforceable,            particularly when the applicant tried but failed to carry out the invention.

            This is another recent case where a fictitious example in a patent evinced fraud on the patent office, making the patent unenforceable.  Novo sued Bio-Technology at the U.S. District Court for the District of Delaware for infringing patent claims to human growth hormone made from bacteria via an enzyme processing step.  Judge Sue Robinson found the patent anticipated over an earlier journal article and also unenforceable due to inequitable conduct.  Novo appealed to the Federal Circuit.

            The Federal Circuit affirmed anticipation and unenforceability.  In finding anticipation, the court cited the recent Rasmusson case, wherein "[t]he standard for enablement of a prior art reference for purposes of anticipation under section 102 differs from the enablement standard under (section 112)," and that "anticipation does not require actual performance of suggestions in a disclosure."  Unenforceability was amply supported by evidence that the inventor could not practice the claimed invention after the filing date and that the inventor made up and relied on "prophetic data."

            Enthusiasm for a hotly competitive technology with obvious commercial advantages can lead an inventor to file aspirations as inventions.  A patent practitioner should ensure that all technical fantasies in a patent application are properly designated as prophesies, preferably by describing them in present or future tense.

Network Commerce, Inc. and CRS, LLC v. Microsoft Corporation

Decided September 8, 2005

Judge Dyk with Judges Mayer and Friedman

*          A claim term that "does not have a specialized meaning in the relevant art" and   that has no "widely accepted meaning" may be defined strictly by a specification.

            Network sued Microsoft at the U.S. District Court for the Western District of Washington for alleged infringement of computer electronic commerce claims that recite the term "download component" for use in coordinating data.  Judge Marsha Pechman construed the term narrowly and granted Microsoft summary judgment of non-infringement.  Network appealed.

            The Federal Circuit affirmed, noting that the disputed term had been added during prosecution and only a terse reference to a related term "download file" appeared in the specification.  The court found that the disputed term had no widely accepted meaning and no specialized meaning.  The court then followed its dictum that a court should "rely heavily on the written description for guidance" for claim meaning, and derived a narrow description from the specification for interpretation.

            If a desired claim term has no generally accepted meaning and no specialized meaning, a patent drafter should provide a definition in the specification or risk having a court construe the term narrowly based on whatever might be gleaned from the specification.  The Federal Circuit in this case rejected Networks' desire to use dictionary definitions of "download" and "file," rendering unpleasant results to this patentee.
Lizardtech, Inc. and Regents of the Univ. of Cal. v. Earth Resource Mapping, Inc. et al.

Decided October 4, 2005

Judge Bryson with Judges Lourie and Schall

*          "[A] patentee cannot always satisfy the requirements of section 112, (for a broad           claim) merely by clearly describing one embodiment of the thing claimed."

            Lizard sued Earth for allegedly infringing a software method for creating a "discrete wavelet transform" used in digital image compression, at the U.S. District Court for the Western District of Washington.  Judge John Coughenour, after a first remand from the Federal Circuit that clarified claim meaning, granted Earth summary judgment of no infringement and invalidity.  Lizard appealed.

            The Federal Circuit affirmed.  One issue was that the broadest method claims asserted against Lizard failed written description.  The specification "failed to meet either requirement" of written description or enablement because only a narrow embodiment was given and a skilled reader would not possess "any and all means for achieving" the broad claim.

            Broad claims sometimes are flimsy, and may be easiest to attack on prior art, written description and enablement grounds.  Creative patent drafting of alternative embodiments sometimes can go a long way to alleviate the latter two insufficiencies.

Invitrogen Corporation v. Biocrest Manufacturing, L.P. et al.

Decided October 5, 2005

Judge Rader with Judges Dyk and Prost

*          To "qualify as 'public,' a use (under 35 USC 102(b)) must occur without any     'limitation or restriction, or injunction of secrecy.'"

            Invitrogen sued Biocrest at the U.S. District Court for the Western District of Texas for allegedly infringing claims to methods of making improved bacteria for genetic engineering.  Judge Sam Sparks found the claims invalid on prior sale grounds because "Invitrogen had used the claimed process ….to acquire a commercial advantage" more than one year before the patent priority date.  Both sides appealed various issues to the Federal Circuit.

            The Federal Circuit reversed the prior sale invalidity holding because Invitrogen "did not sell the claimed process or any products made with it" more than one year before the priority date.  The court pointed out that "[t]he proper test for the public use prong of the 102(b) statutory bar is whether the purported use (1) was accessible to the public; or (2) was commercially exploited."

            The line between commercial use and research has become more blurred as research methods are used as tools for production or for production themselves.  However, such use of a research method generally is not a statutory bar unless the product of the method is sold. 

U.S. Philips Corporation v. International Trade Commission et al.
Decided  September 21, 2005
Judge Bryson with Judges Gajarsa and Linn

*          A "package patent license" that includes patents to other unneeded technologies is  
     "not anticompetitive in the way that a compelled purchase of a tied product would be."

Philips licensed four different pools of patents to a number of companies.  Each pool included "essential" patents and "non-essential" patents for producing compact discs.  Some of the licensees stopped paying fees and Philips filed a complaint with the International Trade Commission ("ITC"), alleging violation of section 337(a)(1)(B) of the Tariff Act.  The respondents, however, convinced the ITC that the asserted patents were unenforceable on patent misuse grounds because needed patents were tied to un-needed patents, which violates an antitrust law principle.  Philips appealed to the Federal Circuit.

The Federal Circuit reversed because "Philip's package licenses do not require that licensees actually use the technology covered by any of the patents that the Commission characterized as nonessential."  Philips' "package licenses" were not anticompetitive because they did not involve "a compelled purchase of a tied product."  In fact, the Federal Circuit pointed out that "package license agreements in which the royalty was based on the number of units produced, not the number of patents used to produce them, can resolve in advance all potential patent disputes" and may be a good thing.

            We live in a patent proliferation world, where even trying to figure out which patents in a portfolio really cover a product can chew up significant legal resources.  This Federal Circuit decision favors patent pooling, which if done properly, can lower the cost of doing business.

Ron Nystrom v. Trex Company, Inc and Trex Company, LLC
Decided September 14, 2005
Judge Linn with Judges Mayer and Gajarsa

*          "[P]atent drawings …may not be relied on to show particular sizes if the            specification is completely silent on the issue."

Ron sued Trex at the U.S. District Court for the Eastern District of Virginia for allegedly infringing claims to decking boards made with proportioned curved tops that shed water.  Judge Jerome Friedman granted summary judgement of invalidity and non-infringement over a prior art patent that has drawings, which could be used as information to model Ron's claimed invention.  Ron appealed to the Federal Circuit.

The Federal Circuit reversed the invalidity holding based on the prior art patent drawings because "the speculative modeling premised on unstated assumptions in prior art patent drawings cannot be the basis for challenging the validity of claims reciting specific dimensions not disclosed directly in such prior art."  In particular, the Federal Circuit noted that "absent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value."

Patent prior art is very extensive, includes both drawings and writings, and usually is searched during patent disputes.  The defendant in this case found related drawings in a prior art patent, and modeled new drawings for an anticipation defense.  In rejecting this approach, the Federal Circuit acknowledged the "explicit or implicit notice to the public" function of patents.  However, citing the recent Philips case, the court cautioned that patent interpretation is through the looking glass of an average skilled artisan, and might not include conclusions from a high priced expert study obtained during litigation.

In RE. Dane K. Fisher and Raghunath V. Lalgudi

Decided September 7, 2005

Judge Michel with Judges Rader and Bryson, Rader dissenting

*          A patent  claim must be supported by a disclosed "specific and substantial" utility           showing of "a specific benefit (that) exists in currently available form.""

            The PTO refused Dane's claims to certain unique but partial DNA sequence segments, or "ESTs" because Dane "did not know the precise structure or function of either the genes or the proteins encoded for by those genes."  The examiner and PTO Board rejected Dane's proffered utility (diagnostic uses for yet unknown compounds) as insufficiently specific.  Dane appealed to the Court of Appeals for the Federal Circuit.

            A panel majority affirmed, because a patent disclosure must show a use "which provides some immediate benefit to the public" (emphasis in original).  The claimed invention here was "mere 'object[s] of use testing,' to wit, objects upon which scientific research could be performed with no assurance that anything useful will be discovered in the end."  Judge Rader dissented because the ESTs had utility "at least as research tools in isolating and studying other molecules."

            Because of the keen industry interest in this issue and the strong split in the panel decision, the "specific and substantial" utility test likely may undergo revision.  However, this refinement of the utility test should not affect the patentability of research method tools, which exploit specific discovered biological effects and/or chemical reactions, and thus have demonstrated "immediate value."  The Federal Circuit pointed out in this case that the frustrated applicant could not even prove industry interest in his ESTs.

Free Motion Fitness, Inc. v Cybex International, Inc.; The Nautilus Group et al.

Decided September 16, 2005

Judge Dyk with Judges Rader and Prost

*          “’A’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open ended         claims containing the transitional phrase ‘comprising.’”

            Free sued Cybex at the U.S. District Court for the District of Utah for allegedly infringing claims for machines, which recite “a cable linking” and “a first end pivotally supported.”  Judge Bruce Jenkins granted Cybex summary judgment of non-infringement after construing “a cable” to mean only one.  The court  found non infringement because the accused devices had multiple cables.  Free appealed to the Federal Circuit.

            A Federal Circuit panel majority explained that the “convention” of “a” or “an” meaning “one or more” only is overcome when a specific number of elements are recited or “when the patentee evinces a clear intent to ..limit the article.”

            Judge Prost dissented and construed “a” to mean “one” because the specification discloses “’a single cable’ in each embodiment.”  A patent drafter should provide alternative broadening examples as much as possible because even a Federal Circuit appellate judge may not agree on the meaning of a simple word such as "a.".

Pandrol USA, LP et al. v. Airboss Railway Products, Inc. et al.
Decided September 19, 2005
Judge Rader with Judges Clevenger and Dyk

*          “The written description requirement does not require the applicant to    describe exactly the subject matter claimed."

            Pandrol sued Airboss at the U.S. District Court for the Western District of Missouri for allegedly infringing claims to a railroad track fastener having “a layer of adhering material” between a plate and a concrete rail road tie.  Judge Scott Wright granted summary judgment of no invalidity, and held that the written description requirement was met for this broad interpretation despite the limited description of only two materials in the specification.  Airboss appealed.

            The Federal Circuit affirmed, noting that general statements in the specification referred to bonding, thus justifying a claim for “adhering material” despite the emphasis on only two chemicals.

            The Federal Circuit partly relied on a broad statement in the patent abstract in its expansive interpretation of “adhering material.”  Drafting of the abstract is a great opportunity to impart broad meanings to claim terms.

Cytologix Corporation, v. Ventana Medical Systems, Inc.
Decided September 21, 2005
Judge Dyk with Judges Mayer and Gajarsa

*          While parties to a patent infringement suit might agree to forgo a Markman         hearing, they cannot argue their conflicting claim constructions to a jury.

            Cytologix sued Ventana at the U.S. District Court for the District of Massachusetts for allegedly infringing claims to automated microscope slide stainers.  The parties agreed, contrary to Judge Rya Zobel’s wishes, to avoid a Markman hearing and construed the claims using expert witnesses, after the close of evidence. A jury found infringement, Cytologix won an injunction and Ventana appealed various issues to the Federal Circuit.

            The Federal Circuit found errors in the district court’s claim construction but found infringement under the correct construction and remanded to review an unsettled obviousness issue.  The Federal Circuit pointed out that “[d]istrict courts may engage in a rolling claim construction” but that in this case, “the district court should have refused to allow (claim construction) testimony” to the jury.  Other complications included Ventana's dropping its anticipation theory before the late claim construction, which precluded later raising that issue, and that neither side objected to the jury instructions, which narrowed the scope of appellate review.

            This litigation apparently was a mess because the basic law of the case, namely, claim meaning, was not settled before trial and was argued to a jury. 

In Re. Technology Licensing Corporation
Decided September 12, 2005
Judges Newman, Rader and Bryson, Newman dissenting

*          A “patentee’s decision to seek only equitable relief” (such as an injunction) can result “in the entire case, including invalidity tried to the court without a jury."

            Technology sued Videotek for alleged patent infringement at the U.S. District Court for the Northern District of California.  Videotek’s supplier Gennum, filed a declaratory judgment action alleging invalidity and non-infringement.  The dispute matured into a partial settlement, wherein Technology only requested injunctive relief and Gemmum withdrew its request for a jury trial.  Technology maintained that it wanted a trial by jury, but the court refused because historically, when a patentee seeks “only equitable relief…no jury trial would have been available.”  Technology petitioned the Court of Appeals for the Federal Circuit for a writ of mandamus to compel the district court to grant its request for a jury trial.

            A per curiam majority panel affirmed that Technology had no right to a jury trial for the requested injunctive relief.  In particular, the Federal Circuit noted that under its precedent, when TLC “had filed a standard infringement action as plaintiff and had requested only an injunction, neither TLC nor Gennum would have been entitled to a jury trial, regardless of whether Gennum raised invalidity as a defense or in a counterclaim.”  Newman dissented with some unusual arguments. 

            Technology apparently did not realize that it would lose its jury trial right when it withdrew its claims for damages and sought only an injunction in response to an order that significantly reduced its recoverable damages. 

SKF USA Inc., v. International Trade Commission et al.
Decided September14, 2005
Judge Lourie with Judges Archer and Gajarsa

*          “[P]hysical material differences are not required to establish trademark   infringement involving gray market goods.”

            SKF filed a trademark infringement complaint at the International Trade Commission against importers of “gray goods” (genuine goods sold for less overseas and imported for sale in the US).  SKF argued that the imports “differed materially in the post-sale technical services offered with them,” which caused consumer confusion.  Although sales of the imports were characterized by little or no service, the ITC held that the regular domestic SKF sales and the gray good sales were indistinguishable because 12 percent of SKF’s sales also enjoyed no post-sale services.  SKF appealed to the Federal Circuit.

            The Federal Circuit agreed with the ITC that “material differences that preclude infringement by gray goods may be physical or nonphysical.”  The court also agreed that SKF could not prove that “substantially all” of its authorized sales materially differed from the gray goods, as needed to prove improper sales.  Thus, SKF’s partial sales of non serviced bearings contributed to any consumer confusion that it accused gray market importers of creating.

            This case establishes that non-physical differences such as service can distinguish a product from parallel imports.  If SKF had distinguished “substantially all” of its sales by service, then SKF might have blocked importation via the ITC.

Symbol Technologies, Inc. et al. v. Lemelson Medical et al.
Decided September 9, 2005
Judge Lourie with Judges Mayer and Bryson

*          Prosecution laches may be “decided as a matter of equity, subject to the discretion of a district court” but “should be applied only in egregious cases.”

            This is a second appeal regarding Symbol’s prosecution laches defense against allegations of infringing Lemelson’s machine vision patent claims, which issued 18 to 39 years after their priority dates.  In this appeal from a first remand, the Federal Circuit affirmed Judge Philip Pro’s declaratory judgment at the U.S. District Court for the District of Nevada that Lemelson’s patents are unenforceable under the doctrine of prosecution laches.

The Federal Circuit emphasized that the prosecution laches “doctrine should be used sparingly lest statutory provisions be unjustifiably vitiated” and offered four instances when refiling an application is justified.  These instances include: 1) deferring “filing of a divisional application until just before the issuance of the parent application;” 2) refiling with “rejected claims in order to present evidence of unexpected advantages;” 3) refiling “to add subject matter …to support broader claims;” and 4) other reasons “provided that such refiling is not unduly successive or repetitive.”  Importantly, a finding of prosecution laches does not require a showing of intent, and mere “unreasonable delay” may suffice.

A practitioner could review the four categories of justified circumstances when refiling an application to ensure compliance with the prosecution laches rule.

Freedman Seating Company v. American Seating Company et al.

Decided August 11, 2005

Judge Schall with Judges Mayer and Plager

*          “[A]n element of an accused product or process is not … equivalent to a limitation of the claimed invention if such a finding would entirely vitiate the limitation.”

Freedman sued American at the U.S. District Court for the Central District of California for allegedly infringing claims to a vehicle stowable seat that is “slidably mounted.”  Judge Gary Klausner granted summary judgment of infringement under the doctrine of equivalents because the accused seat was rotatably mounted in a similar manner and included other claim elements. Freedman appealed to the Federal Circuit.

The Federal Circuit reversed the doctrine of equivalents infringement holding because extension of “slidably mounted” to include a rotating structure “would mean that any support member capable of allowing translational and rotational motion would be equivalent,” and thus “vitiate” this claim term limitation.  Most important to the analysis was that the unclaimed variation of rotation was forseeable on the application filing date.  This decision emphasized repeatedly the public notice function of the claims and expresses hostility to use of the doctrine of equivalents when alternative equivalent meanings were well known on an application's filing date.

If a claim element variation is known by others when filed, a court may be reluctant to extend claim scope to that variation under the doctrine of equivalents.  For best protection, a patent practitioner should file a broad specification with claims that cover all known alternative embodiments.

Storage Technology Corp. v. Custom Hardware Engineering & Consulting, Inc. et al.
Decided August 24, 2005

Judge Bryson with Judges Rader and Schall

*          17 U.S.C. 117(c)(2) may allow 3^rd party maintenance vendors to copy and temporarily use non-essential software that automatically loads upon computer startup.

            Storage licenses its copyrighted computer code, which manages tape libraries, to its customers, but excludes the “maintenance code” portion of the software from the licenses.  Custom, which lacked a license, repairs data libraries for these customers by turning on their computers and reading diagnostics codes after defeating a security function.  This prompted Storage to sue Custom at the U.S. District Court for the District of Massachusetts, for alleged copyright infringement and other alleged misdeeds. Judge Rya Zobel granted Storage a preliminary injunction and Custom appealed to the Federal Circuit.

Custom’s primary defense was the safe harbor provision of 17 U.S.C. 117(c), which allows use of software “for purpose only of maintenance or repair” of a machine if the software copy “is made solely by virtue of activation of (the) machine.”  The Federal Circuit vacated the injunction because the maintenance software was intertwined with essential (and licensed) operating software and the computer could not be turned on without loading both types.  The Federal Circuit also clarified that “the term ’maintenance’ has a much broader temporal connotation…including ‘checking the proper functioning of …components.’”  This clarification may broaden the availability of section 117(c) as a defense for unlicensed software users.

” 

Judge Rader dissented because “the maintenance code as such is incidental, not indispensable, to activation” and opined that the majority opinion turns the safe harbor provision of 117(c) into “a carte blanche license to use any program loaded into a computer’s RAM when a machine is turned on.” 

 

Unfortunately, the software vendor had blended user software with maintenance software yet only licensed the user portion.  Software blending often is difficult to avoid.  The Federal Circuit however, hinted that a software license could be written to authorize use by “a particular person” instead of being “tied to a particular machine” to prevent third party vendor use.

Pharmacia Corporation et al. v. PAR Pharmaceutical, Inc.

Decided August 10, 2005

Judge Rader with Judges Schall and Linn

*          A declaration filed at the PTO that contradicts a withheld publication by the       declarant may evince inequitable conduct.

            PAR filed an Abbreviated New Drug Application at the FDA, seeking approval to market a generic version of Pharmacia's Xalatan medication for glaucoma.  In response, Pharmacia sued PAR at the U.S. District Court for the District of New Jersey for alleged infringement of two patents.  PAR admitted infringement but asserted that inequitable conduct rendered both patents unenforceable.  In particular, claims of one patent had been allowed only after Pharmacia submitted a declaration arguing a different clinical effect between two compounds.  However, the declarant withheld contradictory information from his own research publication, which would have mooted his declaration.  Judge Stanley Chesler found the first patent unenforceable for inequitable conduct but would not declare the second patent unforceable on the theory that both patents were terminally disclaimed over a common parent.  Both sides appealed to the Federal Circuit.

            The Federal Circuit affirmed the inequitable conduct holdings because the "misleading declarations go to the very point of novelty," making them highly material, and the declarations were known to the declarant, which evinces intent.  The Federal Circuit agreed that the "district court correctly rejected" the assertion that "a terminal disclaimer can bind two related patents together" to allow cross-infection of inequitable conduct from one patent to the other.

            The Federal Circuit sua sponte brought up "a general unclean hands theory" that might be used to show infection of one patent by via inequitable conduct that affects both.  The defendant surprisingly did not argue this theory.

Datamize, LLC. v. Plumtree Software, Inc.
Decided August 5, 2005

Judge Prost with Judges Clevenger and Bryson

*          A subjective claim term such as "aesthetically pleasing" is indefinite unless the     patent specification provides an objective description for the term.

            Datamize sued Plumtree at the U.S. District Court for the Northern District of California, for allegedly infringing patent claims to "an electronic kiosk system" having "interface screen element types" with an "aesthetically pleasing look and feel."  Judge Vaughn Walker granted Plumtree summary judgment of invalidity on grounds of indefiniteness because the "specification does not limit the subjectivity of the phrase 'aesthetically pleasing.'"  Datamize appealed to the Federal Circuit.

            The Federal Circuit affirmed because "[w]hile beauty is in the eye of the beholder, a claim term, to be definite, requires an objective anchor" and the specification provided no guidance for how to determine when something is "aesthetically pleasing."

            A patent practitioner should never add superfluous words to a claim unless of course, he or she intends to confuse a court during patent enforcement or increase litigation costs.

MEMC Electronic Materials, Inc. v. Mitsubishi Materials Silicon Corp. et al.

Decided August 22, 2005
Judge Schall with Judges Newman and Dyk

*          An overseas user of a U.S. patented process and who collaborates closely with a          final purchaser in the U.S. risks inducing infringement by the purchaser under         35 U.S.C. 271(b).

            This case explores what an overseas company may do when practicing a U.S. patent method claim overseas for the benefit of a final end user in the U.S.  Mitsubishi manufactured silicon wafers made by a process described in MEMC’s U.S. patent and supplied the wafers to Samsung Japan in Japan.  Samsung Japan sold the wafers to Sumsung Austin (in Texas).  All sales negotiations occurred in Japan, but Mitsubishi provided technical information directly to Samsung Austin, and coordinated shipments to that U.S. company.  MEMC later sued Mitsubishi at the U.S. District Court for the Northern District of California under 35 U.S.C. 271 (a) and (b) for alleged direct infringement and inducement of infringement of MEMC’s process patent claims.  Judge Saundra Armstrong granted Mitsubishi summary judgment of no infringement under both theories and both sides appealed various issues to the Court of Appeals for the Federal Circuit.

The Federal Circuit affirmed no direct infringement because all of Mitsubishi’s negotiations, contracting and performance occurred outside the U.S.  The Federal Circuit, however, reversed summary judgment of no inducement of infringement because: 1) Mitsubishi “had knowledge of MEMC’s patent as well as knowledge of Samsung Austin’s potentially infringing activities;” 2) email evidence showed that Mitsubishi “works with Samsung Austin to coordinate shipment dates” including “a shipment of certain wafers directly to Samsung Austin in order to address technical problems;” and 3) Mitsubishi “made several on-site visits to Samsung Austin (to give) technical presentations.”

In a technically complicated field, a manufacturer often works closely with an end user to correct problems and to improve product quality.  These activities could be seen as inducing infringement in some situations.

Aquatex Industries, Inc. v. Techniche Solutions

Decided August 19, 2005

Judge Mayer with Judges Gajarsa and Dyk

*          A specification is more important than prosecution history statements that           do not show a “clear and unmistakable surrender of subject matter” for claim interpretation.

            Aquatex sued Techniche at the U.S. District Court for the Middle District of Tennessee for alleged contributory infringement of claims to the use of evaporative clothing having “a fiberfill batting material.”  Judge Robert Echols granted Techniche summary judgment of noninfringement after construing the term "fiberfill batting material" as not including natural fibers (used in the accused method), based on prosecution history statements.  Aquatex appealed to the Federal Circuit.

The Federal Circuit determined that "[t]he prosecution history …is ambiguous and does not directly address the composition of 'fiberfill'" and reversed non-infringement out of a more expansive term meaning.  The Federal Circuit once again cited the recent Philips decision in favoring the specification over prosecution history, in stating: "because the prosecution history represents an ongoing negotiation, 'it often lacks the clarity of the specification and thus is less useful for claim construction purposes.'"

This case reminds us that the specification is most important for interpreting claims.  One should prepare solid patent applications with numerous examples and careful definitions to alleviate lengthy argumentation during litigation.  Another point was that patent references that had been incorporated by reference into a patent specification "are highly relevant to one of ordinary skill in the art for ascertaining the breadth of the claim term."  A patent practitioner must be careful that entire patents that are incorporated by reference can support undesired claim term meanings.   

Warner-Lambert Company et al. v. Teva Pharmaceuticals USA, Inc.

Decided August 11, 2005

Judge Schall with Judges Linn and Prost

*          Broad claims to multiple compounds may be unenabled if a disclosure only        teaches how to make and use one or two of the compounds.

            Warner sued Teva under 35 USC 271(e)(2)(A) for infringing Warner's Accupril drug formulation patent claims, at the U.S. District Court for the District of New Jersey.  Judge Dickinson Debevoise granted Warner summary judgment of infringement and non-invalidity on enablement grounds.  Teva appealed to the Court of Appeals for the Federal Circuit.

            A Federal Circuit panel reversed summary judgment of no invalidity on enablement grounds.  The court noted that "while the patent claims numerous combinations…..the specification only discloses two working examples, both of which are based on the same general combination…."  In particular, Teva's expert witness had presented a genuine issue of material fact by declaring that "one of skill in the art would need to undertake a range of experimentation in order to practice the invention." 

            An expert declaration can help a party survive summary judgment by demonstrating the existence of a fact dispute, as seen here.  In this case, a complicated fact determination arose because a huge list of compounds was claimed but only one type was taught in the specification.  To minimize fact analysis of enablement during litigation, a practitioner should provide as many examples as possible in a patent specification.

Collegenet, Inc. v. Applyyourself, Inc.
Decided August 2, 2005

Judge Rader with Judges Lourie and Schall

*          "It is well settled that the term 'a' or 'an' ordinarily means 'one or more.'"

            Collegenet successfully sued Applyyourself at the U.S. District Court for the District of Oregon for allegedly infringing claims to methods of creating college application forms "in a format specified by the institution."  Magistrate Judge Dennis Hubel granted a motion as a matter of law for non-infringement, after broadly intgerpreting "a format" to mean "any format" and thus an unlimited number of formats.  Both sides appealed to the Federal Circuit.

            The Federal Circuit held that the district court misconstrued the phrase and reinstated the jury verdict of infringement.  The Federal Circuit initially noted that the patentee did not "expressly define" this term and that the courts must derive the "disputed claim terms from their usage and context."  However, the district court improperly replaced "a" with "any" based on one sentence from the specification and failed to see that , on the whole, the patentee had used the word consistently with general usage. 

            Software patent claims often use simple words such as "format" to describe advances in high technology.  The patent drafter should consider linking such simple terms to a wide variety of examples or to explicit definitions to minimize court misadventure during patent enforcement. 

James A. Frazier et al. v. Roessel Cine Photo Tech. Inc. et al.
Decided August 2, 2005
Judge Linn with Judges Bryson and Dyk, Bryson dissenting in part

*                "In contrast to cases where allegations of fraud are based on the withholding of prior art, there is no room to argue that submission of false affidavits is not material."

                  Frazier licensed a trick photography invention to Panavision and helped obtain a patent.  During prosecution at the patent office, Panavision's patent attorney submitted a video of demonstrative scenes using the invention, in response to rejections.  Later, Frazier and his licensee sued Roessel at the U.S. District Court for the Central District of California for alleged infringement.  However, judge Gary Feess held the patent unenforceable for inequitable conduct because 1. Panavision failed to submit an advertisement that revealed a related prior art technology and 2. the video submitted to the patent office misleadingly had been made with a different (prior art) camera technique.  Both sides appealed various issues to the Federal Circuit.

The Federal Circuit held that Panavisions's withholding of the advertisement was not inequitable conduct because the advertisement "would not have been covered by the claims of Frazier's application."  The court pointed out, however that "[t]he materiality of intentional false statements may be independent of the claims of the patent" and affirmed inequitable conduct based on the misleading video submission.  Judge Bryson dissented from the holding that the withheld advertisement was not material because "a difference in a single element, however important to the patented invention, is not automatically dispositive of the issue of materiality."

Affirmatively lying to the patent office by submitting false information is much more serious than withholding a reference that possibly might be cumulative of other prior art, or which lacks one or more claim elements.

North American Container, Inc., v. Plastipak Packaging et al. (37 defendants)
Decided July 14, 2005
Judge Lourie with Judges Bryson and Linn

*          The recapture rule precludes any amendment by reissue that broadens a
            "non critical" feature that had been added to a claim during original prosecution.

            North obtained a patent that claimed blow molded plastic bottles having dimpled bottoms.  During prosecution North amended the claims to recite that the dimples (which make the bottle stronger) were "generally convex."  Later, North sought a reissue of the patent with extra claims that lacked this limitation.  Various companies in the bottling field filed protests under 37 CFR 1.291(a), alleging violation of the recapture rule because the added claims were broader.  The examiner responded that the term was not a "critical" limitation and allowed the claims anyway.  North then sued the companies at the U.S. District Court for the Northern District of Texas.  Magistrate Judge Sam Lindsay, assisted by special master Paul Janicke, granted summary judgment of invalidity for the broader claims added during reissue, due to violation of the recapture rule.  North appealed to the Federal Circuit.

            The Federal Circuit affirmed invalidity based on violation of the recapture rule after reviewing findings under a three part test: 1. whether the reissue claims are broader than the original claims; 2. whether the broader scope includes matter surrendered in the original prosecution; and 3. whether the reissue claims were narrowed in other respects such that the claims really were not enlarged, thus avoiding the recapture rule.  The reissue claims were deemed broader with respect to the originally surrendered "convex" matter and were not narrowed in other aspects, thus violating the rule.

            This is a second recent case wherein a public protest played a role in PTO examination.  Although the PTO did not agree with the protestor's arguments, the courts did.  This is a welcome example wherein a party can make and lose an argument at the PTO without prejudice to use of the same arguments later in court. 

Electromotive Division of General Motors Corporation v. Transportation Systems Division of General Electric Company and Daido Industrial Bearings, Ltd.
Decided July 28, 2005
Judge Michel with Judges Plager and Linn

*          Experimentation is not a defense against public use or sale unless the use was     controlled by the inventor and the customer (if any) was aware of the experiment.

            GM developed a new locomotive bearing via an in house testing program.  In a second stage "field program," GM substituted the bearing in ongoing orders and examined failed units to see if the failures were caused by the bearing.  More than a year later GM filed two patent applications.  After patent issuance, GM sued GE for alleged infringement at the U.S. District Court for the Eastern District of Michigan.  Judge John O'Meara granted GE summary judgment of invalidity under the on-sale bar of 35 USC 102(b).  GM appealed to the Federal Circuit.

            The Federal Circuit focused on the first prong of the two part Pfaff test for determining commencement of the one year on sale bar period, and noted that a commercial sale existed, but was not experimental.   The latter conclusion was prompted by a determination of two principles to satisfy experimental use: 1. "an inventor must show control over the alleged testing;" and 2. if a sale is involved, then "at a minimum" the "customers must be made aware of the experimentation."  GM's use was not experimental because GM did not control the "field program" use and did not inform its customers (who likely did not want to hear this news) that the bearing was experimental. 

            This decision emphasized that exhaustive analysis of 13 objective factors for determining experimental use often can be avoided by focusing on 1. control by the inventor and 2. awareness of the experimental use by the purchaser. 

Edward H. Phillips v. AWH Corporation et al.
Decided July 12, 2005
En banc

*          A court should continue to "rely heavily on the written description for guidance as           to the meaning of the claims."

*          The Federal Circuit will continue to construe claims as a legal matter without      deference to district court fact finding.

            This eagerly awaited en banc majority decision on claim construction reviews and confirms the existing law but disappoints by avoiding issues that might provide guidance to a very unclear process.  A stinging dissent by Mayer and Newman contests the majority's contention that construction is purely a legal finding and argues that the Federal Circuit should give deference to the district court's claim construction. 

            This case concerns the interpretation of the term "baffles" and the angles that such structures make within building walls, as claimed in Philips' patent.  The CAFC affirmed an earlier panel holding that "baffles" is not a means plus function term.  The court reviewed in some detail what range of angled structures are covered, based on a range of intrinsic and extrinsic evidence as a test case for reviewing claim construction generally.

            The majority decision reiterated the importance of honoring the view of a skilled artisan and emphasized the primacy of "[t]he inquiry into how a person of ordinary skill in the art understands a claim term."  The court appeared to elevate the specification over prosecution history for claim interpretation and to affirm a lower status for dictionaries as extrinsic evidence for possible use after relying first on the specification and file history.  However, the long opinion seemed to offer little new advice.

            Mayer and Newman's dissent declared that the majority decision absurdly adheres "to the falsehood that claim construction is a matter of law devoid of any factual content" and opined that "any attempt to fashion a coherent standard under this regime is pointless."  The dissenters proposed that the Federal Circuit defer to district court claim construction and review claim construction holdings for clear error to "eliminate the time and expense of the charade currently played out before the district court."

            The dissent in this case is a refreshing admission by a minority that the claim construction emperor lacks clothing.  The minority hints at a latent issue in claim construction law, namely how to deal with fact finding after the Supreme Court has kicked the jury out of this process via the fiction that claim construction is purely a legal determination.  An eventual resolution of this contradiction may require a blend of formal fact finding to support legal claim construction, analogous to the legal determination of obviousness based on underlying facts, which the courts are unafraid to carry out now. 
Board of Regents, The University of Texas System and Hydro-Quebec v. Nippon Telephone and Telegraph Corp. 
Decided July 13, 2005
Judge Gajarsa with Judges Schall and Linn

*          Federal court jurisdiction under 28 USC 1338(a) may not exist unless a dispute  
            "necessarily depends on resolution of a substantial question of federal patent law."

            An NTT researcher visited University to research lithium battery electrodes.  The researcher contractually agreed that all discoveries related to his work were to be owned by University.  University then obtained a patent ('382) from the research but sued NTT in Texas state court after the researcher and NTT separately filed a related Japanese patent application.  NTT removed the case to the U.S. District Court for the Western District of Texas in view of 28 U.S.C. 1338(a) (requiring that a federal court handle federal law issues), where Judge Sam Sparks determined that the case "requires an interpretation of (University's) patent, which is a substantial question of federal law."  The court then denied a motion from NTT (formerly a Japanese government monopoly) to dismiss, from the theory that NTT was entitled to foreign sovereign status.  NTT appealed to the Federal Circuit.

            The Federal Circuit held that the district court erroneously had found federal question jurisdiction under 28 USC 1338(a), and transferred the appeal to the Court of Appeals for the Fifth Circuit.  The Federal Circuit explained that "patent law issues identified by NTT are not essential to the resolution of Plaintiff's claim" because: 1) "[p]laintiffs would not need to prove that the '382 patent is valid" to establish its tort claim; 2) "a possible question of inventorship does not convert the state law action into one arising under the patent laws;" and 3) "[t]he construction and scope of the terms of the '382 patent are irrelevant to showing that the technology on which the Japanese patent is based was misappropriated from UT."

            This case reviewed the threshold issue of what minimum patent law issue is required under rule 1338(a) to force removal of a case from state to federal court.  In particular, the rule does not apply if a plaintiff can rely "on another theory involving no patent question" for relief.  The Federal Circuit also found no grounds for removal based on the preemption doctrine (Bonito Boats, Sup. Ct. 1989).  A University request for an injunction to stop NTT's dissemination of "information disclosed in the '382 patent" did not "improperly expand the scope of rights granted under the '382 patent" in violation of this doctrine because University's filing of the patent application extinguished the trade secrets within that application.

            Many trade secret disputes blend federal patent law issues with state tort theories, and pose a jurisdictional question of whether a federal court is required to handle the federal issues of patent law.  The Federal Circuit in this case implied that federal court jurisdiction under 28 U.S.C. 1338(a) is met if a plaintiff absolutely requires interpretation of patent claims for relief. 
 

Princeton Biochemicals, Inc. v. Beckman Coulter, Inc.
Decided June 9, 2005
Judge Rader with Judges Schall and Gajarsa

*          Motivation to combine claim elements for obviousness can arise from a skilled    
      artisan's general knowledge of how closely related prior art solves similar problems.

            Princeton sued Beckman for allegedly infringing patent claims to a coiled capillary electrophoresis apparatus at the U.S. District Court for the District of New Jersey.  A jury found infringement and no invalidity but Judge Mary Cooper deemed the verdict unsupported by substantial evidence and granted judgment as a matter of law in favor of Beckman.  Princeton appealed to the Federal Circuit.

            The Federal Circuit affirmed the invalidity holding after reviewing evidence of motivation to combine a coiled (versus straight) tube to a capillary tube apparatus from the prior art.  An implicit suggestion to combine was found in the knowledge of the skilled artisan and "the nature of the problem (which) called for exactly the solutions in the prior art."  Still further, the court pointed out (as expressed by the PTO during examination) the cited prior art that contained all claim elements in combination "are closely related techniques."  That is, motivation to combine existed because all elements were found in close prior art that solved the same problem, and it was established (using expert testimony in this case) that "one of ordinary skill in the art would look to these related fields."

            The plaintiff in this case may have lacked sufficient expert testimony.  The jury decision was overturned because "there was not substantial evidence to support the jury verdict (of no motivation to combine)."  Furthermore, the Federal Circuit decision emphasized that the plaintiff "offered no evidence to rebut" statements from the defendant that a suggestion to combine items of prior art merely came from knowledge of a skilled artisan.  If rebuttable evidence had been presented, perhaps the jury verdict would have stood scrutiny.

Enzo Biochem, Inc., v. Gen-Probe Incorporated, and Becton Dickenson and Company
Decided July 13, 2005
Judge Lourie with Judges Linn and Prost

*          "Under the final judgment rule, parties may appeal only a 'final decision of a        district court.'"

            Enzo sued Gen-Probe at the U.S. District Court for the Southern District of New York for alleged infringement of claims to nucleic acid probes.  Judge Alvin Hellerstein held the patent invalid on various grounds, orally invited the parties to inform him if he had missed any issues, and then declared "the case was closed" to "enable" a possible appeal.  Enzo appealed and Gen-Probe moved to dismiss because Enzo's counterclaim of unenforceability for inequitable conduct had not been adjudicated. 

            The Federal Circuit agreed with Gen-Probe and dismissed the appeal because "of the nonfinality created by the unquestioned existence" of the counterclaim of inequitable conduct.  The Federal Circuit pointed out that although the district court "may have indicate its intent" to "dispose of all claims and end the case" at "no time was the counterclaim waived" despite Gen-Probes lack of oral notice to the district court when queried on this point.

            The district court judge in this case had responded in part to Enzo's declaration that it would appeal by stating that his "summary order… will enable you to proceed with dispatch in the Federal Court of Appeals on your rights if I have erred."  Now this case returns to the same judge to adjudicate whether Enzo committed fraud on the patent office and if so, whether Enzo has to pay attorney's fees. 

Gary H. Rasmusson and Glenn F. Reynolds v. Smithkline Beecham Corp.
Decided June 27, 2005
Judge Bryson with Judges Plager and Prost

*          “[U]tility must be disclosed [by real data or believable logic] to satisfy the          section 112 enablement requirement.”

            *          “[A]nticipation does not require actual performance of suggestions in a                           disclosure.”

            This case affects the use of prophetic claiming in biotech patent applications. Gary and Smithkline each filed a series of progressively more detailed patent applications covering ideas in the field of prostate cancer treatment.  The PTO Board of Patent Appeals and Interferences held an interference and declared Smithkline the first inventor for use of an enzyme inhibitor because Gary’s first 8 applications failed the enablement requirement.  Gary had asserted in early applications that a compound was an anticancer agent but did not provide any data to challenge conventional wisdom and thus was not “obviously correct.”  The PTO also found that a European patent application did not anticipate Smithkline’s disclosure because the European application was not enabled for the same reason as.  Both sides appealed various issues to the Federal Circuit.

The Federal Circuit affirmed that Gary’s applications were unenabled for lack of persuasive support (i.e. either a showing of real data or an obviously correct argument).  The Federal Circuit explained that “[I]f mere plausibility were the test for enablement under section 112, appliants could obtain patent rights to ‘inventions’ consisting of little more than respectable guesses as to the likelihood of their success.”  The court also reversed the non-anticipation holding because enablement of prior art for 102 purposes can be proven by later results and  the European reference inherently was enabled.  That is, enablement for patentability purposes and enablement of prior art for anticipation purposes differ because section 112 requires a disclosure to teach how to make and use an invention, wherein section 102 lacks this requirement.

Prophetic inventions often are easy to write but are not enabled unless an ordinary skilled artisan would believe the assertions of utility as obviously correct.  Unfortunately for Gary, a scientific report finally confirmed the prophetic clinical usefulness of his claimed compound 10 months before his ninth application.  Enablement was not possible until that date because his data-less prophesy was not believable until proof was available.

Seachange International, Inc., v. C-Cor Inc.
Decided June 29, 2005
Judge Linn with Judges Bryson and Gajarsa

*          “Explicit arguments made during prosecution to overcome prior art can lead to narrow claim interpretations.”

            Seachange sued C-Cor at the U.S. District Court for the District of Delaware for allegedly infringing claims for electronic data storage between interconnected “systems through a network for data communications.”  Judge Joseph Farnam, Jr. construed “network for data communications” to include both direct and indirect communication.  A second, almost identical claim further recited point to point connection, prompting the broader meaning of the earlier claim due to the doctrine of claim differentiation.  C-COR stipulated to infringement, lost a subsequent jury trial and appealed to the Federal Circuit. 

The Federal Circuit construed “data communications” to mean only direct communication despite the existence of a narrower claim that recited this limitation.  Prosecution history arguments had relied on point to point communication in several respects, trumping the doctrine of claim differentiation.  The court also explained that such clarifying statements “may lead to a disavowel of claim scope even if the Examiner did not rely on the argument.”

Most interestingly, a third party filed a “protest petition” (arguments and prior art) against Seachange’s application after the examiner issued a notice of allowance.  The examiner asked Seachange to respond even though substantive examination otherwise was over.  File histories are available on line (www.uspto.gov/external/portal/pair) and updated quickly, allowing competitors to see correspondence.  The PTO responded favorably to a third party submission during this ex parte process.

Checkpoint Systems, Inc., v. All-Tag Security S.A. et. al.
Decided June 20, 2005
Judge Schall with Judges Michel and Dyk

*          The “rule of reason standard requiring corroborating evidence extends to           claims by individuals purporting to be co-inventors.”

            Checkpoint sued All-Tag at the U.S. District Court for the Eastern District of Pennsylvania for allegedly infringing claims to deactivatable labels used in the retail industry.  The claims were to an invention by Jorgensen, who worked with Pichl.  Pichl left the company and formed All-Tag, the defendant, after the patent issued.  In defense of infringement, All-Tag submitted a declaration by Pichel and Jorgensen that they purposely had omitted Pichl as a coinventor of the patented invention years earlier because of a contract based concern.  This prompted.  Judge Petrese Tucker to granted All-Tag summary judgment of invalidity based on 35 USC 102(f) (inventorship by another).  Checkpoint appealed to the Federal Circuit.

            The Federal Circuit reversed because Jorgensen’s declaration of sole inventorship to the PTO contradicted his later declaration made during litigation.  This presented a genuine issue of material fact, precluding summary judgment.  The court explained that the “rule of reason standard corroborating evidence extends to claims by individuals purporting to be co-inventors.”

Invalidity on 35 USC 102(f) grounds often presents an unappreciated opportunity during litigation to take advantage of inventorship complexities, particularly where co-inventors work for a different company, and therefore the invention is, at least in part, “by another.”

Ultra-Precision Manufacturing, Ltd.v. Ford Motor Company
Decided June 15, 2005
Judge Linn with Judges Mayer and Clevenger

*          Patent law can preempt "a state law unjust enrichment claim seeking restitution   based on the use of an idea in the public domain."

            Ford asked two former employees, who started a company Ultra, to help design a pressure valve.  Ultra in response developed a superior valve, filed a patent application for the valve and delivered samples to a contact at Ford for testing.  Shortly afterwards, the contact was replaced with a new contact, Finn, who designed a solution himself and filed his own patent application.  Upon discovering this, Ultra sued Ford at the U.S. District Court for the Eastern District of Michigan, alleging unjust enrichment and requesting correction of inventorship of the Ford application.  Judge Victoria Roberts granted summary judgment of no unjust enrichment to Ford, because federal patent law preempts Ultra's unjust enrichment claim.  Ultra appealed to the Federal Circuit.

            The Federal Circuit affirmed because "state law that conflicts with federal law is without effect."  The court explained that "conflict preemption occurs when state law

'stands as an obstacle…..(such that state law) offers 'patent-like protection' to discoveries unprotected under federal law" (citing Bonito Boats).  Key to the analysis was that Ford did not receive proprietary trade secrets from Ultra, who had published its information in a patent application that became available to Ford (and everyone else).  These facts fit the court's observation that "absent secrecy, state law cannot create a collateral set of rights" to patent rights. 

            Unfortunately Ultra did not execute an agreement with Ford that could have created a  contract right, and Ford availed itself of information that was public.  By choosing patent protection and thereby publishing its new idea, Ultra abandoned other routes of intellectual property protection under state law. 

Upsher-Smith Laboratories, Inc., v. Pamlab, L.L.C. et al.
Decided June 17, 2005
Judge Rader with Judges Michel and Schall

*          "[A] prior art composition that 'optionally includes' an ingredient anticipates a     claim for the same composition that expressly excludes that ingredient."

            Herbert discovered why antioxidants such as vitamin C and E destroy vitamin B12 and folate, and observed that vitamin supplements without vitamin C and E are more stable.  Herbert then obtained a patent with basic claims to vitamin supplements that are "essentially free of antioxidants."  Herbert's assignee Upsher sued Pamlab for alleged infringement at the U.S. District Court for the District of Minnesota.  Judge Ann Montgomery granted Pamlab summary judgment of invalidity based on anticipation over a 40 year old reference, which had warned that vitamins C and E are "incompatible with vitamin B12."  Upsher appealed to the Federal Circuit. 

            The Federal Circuit affirmed because although Herbert "appears to have been the first to precisely articulate that antioxidants destroy vitamin B12 and folate," supplements that are "essentially free of antioxidants were known in the prior art."  

            A scientist may discover how something already practiced really works and may have to go beyond a broad claim based on his theory and find a useful new process or material/apparatus that can benefit from the new insight.  Unfortunately, Herbert's asserted claims broadly covered, as a genus, prior art that inherently included (i.e. without stating explicitly) his claim elements.  The Federal Circuit pointed out that his asserted claims "are not limited to a 'species' of the compositions taught by the" prior art and thus are anticipated by that art.  In this situation a practitioner should try to draft claims directed to narrow but useful species that are not inherent in prior art. 

Northpoint Technology, Ltd. v. MDS America, Inc. and MDS International, SARL
Decided June 28, 2005

Judge Bryson with Judges Schall and Dyk, Dyk dissenting in part

*          A claimed invention that requires use of "additional parameters and        techniques" for operation may lack enablement.

            Northpoint sued MDS at the U.S. District Court for the Southern District of Florida for alleged infringement of claims to methods and apparatus for video reception of two signals on a common frequency based on different "directional reception range" (e.g. one signal is from an overhead satellite and the other is from a different direction on the ground).  Judge James Cohn construed "directional reception range" broadly to mean reception of a signal from a different 3-D space and not necessary from an antenna pointed in a different direction.  A jury found 3 claims infringed but invalid on anticipation grounds over a reference that uses "adaptive array techniques" (i.e. switching techniques to make an antenna pick up signals in a different direction without actually moving it).  The jury also found invalidity on non-enablement grounds.  Northpoint appealed to the Federal Circuit.

            A Federal Circuit panel majority opinion affirmed.  The opinion noted that a co-inventor admitted lack of enablement by testifying that "numerous parameter values and interference mitigation techniques were used" in the first test of the technology" but that "none of these techniques were described or disclosed" in the asserted patents. 

            Judge Dyk dissented with a view that the claims should have been construed more narrowly, which would have avoided the adaptive array prior art.  Judge Dyk also lamented the finding of "lack of enablement in the absence of expert testimony that the experimentation was excessive or not routine."

            It is helpful to actually make and test an invention so that newly encountered variables in the field of reality can be added to an application to more fully enable others to use the invention. 

Alfred Salazar, v. Proctor & Gamble Company
Decided July 8, 2005
Judge Rader with Judges Bryson and Gajarsa, Bryson dissenting

*          "[U]nilateral statements of an examiner in stating reasons for allowance [do not]             create a clear and ambiguous disavowal of claim scope."

            Salazar sued P&G for allegedly infringing his patent claims to a toothbrush having "elastic" rods that extend beyond the bristles.  The examiner who allowed the patent had noted, after completion of prosecution in a "Statement of Reasons for Allowance" statement that prior art brush rods "made of nylon" are "not considered to be 'elastic' as recited by the claim."  Judge H. Dale Cook relied on this statement in granting P&G summary judgment of no infringement, because P&G's accused brush has extending rods made of nylon.  Salazar appealed to the Federal Circuit.

            A majority panel decision of the Federal Circuit vacated the grant of summary judgment because "an applicant's silence regarding statements made by the examiner during prosecution, without more, cannot amount to a 'clear and unmistakable disavowel' of claim scope."  In particular, the significance of nylon had not been debated during prosecution and the applicant was not obliged to rebut the examiner's sudden introduction of this factor as a condition for allowance.

            Judge Bryson dissented with a view that the examiner's "statement is relevant …because it indicates how a person of ordinary skill in the art- in this instance, the examiner, - would understand the claim term 'elastic' in the context of the patent..(and) the applicant should face a heavy burden in later challenging the examiner's interpretation."

            Patent practitioners always should review a "Statement of Reasons for Allowance" and consider filing an explanatory rebuttal, if needed.  However, failure to file a rebuttal may not necessarily prejudice an applicant.  Conceiveably, for an issue that had not been discussed during prosecution, and for which an applicant has a very poor position, silence might be a good option.  A court should not derive a negative inference in this situation.

Purdue Pharma L.P. et al. v. Endo Pharmaceuticals Inc. et al.

Decided June 7, 2005
Judge Plager with Judges Gajarsa and Linn

*          A patent applicant should not present or imply that an "insight" about a possible result is a fact, particularly if relied on to overcome a rejection at the patent office.

            Purdue, a manufacturer of OxyContin(TM), sued Endo, a generic drug maker, under 35 U.S.C. 271(e)(2) on the basis of Endo's filing of an Abbreviated New Drug Application at the FDA, asserting invalidity and non infringement of Purdue's patents.  The patents claim a "controlled release…formulation" that provides specific plasma concentrations of OxyContin at specific time intervals after ingestion.  The claim assertions were supported by statements in the specification that the formulations were "surprisingly discovered" to affect "a substantially narrower, approximately four-fold [drug range]…. (which) is in sharp contrast to the approximately eight-fold range required… in general."  Purdue relied on the "clinical significance" of this dosage range difference to overcome obviousness prior art rejections in arguments at the PTO. 

            During subsequent patent litigation, Endo cited these same assertions to convince Judge Sidney Stein that the patents are unenforceable due to inequitable conduct.  Endo argued that Purdue's implication of clinical results "was left unclarified by any disclosure" of the speculative insight and thus was fraudulent.  Both sides appealed various issues to the Federal Circuit.

            The Federal Circuit affirmed inequitable conduct, noting that Purdue's withholding of the true (i.e. speculative) nature of the effects, which the PTO relied on for patentability was material.  The court found that "intent to mislead the PTO can be inferred from Purdue's statements and the context in which they were made." 

            Sometimes a patent applicant pushes the envelope by filing a disclosure that lacks data but contains speculative results.  The Federal Circuit pointed out here that "experimental results" are not necessarily required for patentability in such instances, but that an applicant can get into trouble if it "misrepresented the results and made reference to them during prosecution."

Boss Control, Inc. et al. v. Bombardier Inc. et al.

Decided June 8, 2005

Judge Prost with Judges Schall and Gajarsa

*          "In fact, the specification is the single best guide to the meaning of a disputed      term."

            Boss sued Bombardier at the U.S. District Court for the Southern District of Texas for allegedly infringing patent claims to a power interruption system used in snowmobiles and watercraft that senses unauthorized use.  Judge Kenneth Hoyt granted Bombardier summary judgment of non-infringement, after construing "operative to interrupt power" to mean sensing a power load threshold, which the accused devices lack.  Both sides appealed various issues.

            This case centered on construing simple words used to describe an innovative circuit that outputs a response based on the amount of sensed electrical current.  The Federal Circuit agreed with the district court's interpretation from statements in the specification that compared the invention with prior art devices that do not sense a power threshold.  The Federal Circuit found that "[i]n this case the specification …clearly gives the term 'interrupt' a special definition" narrower than a definition and thus "the intrinsic evidence binds Boss to a narrower definition of 'interrupt' than the extrinsic evidence might support."

            U.S. patent practitioners avoid teaching a "gist" of the invention to discourage a court from construing a claim narrowly.  However, as seen in this case, simple claim words that require explanation can prompt a court to study the specification to figure out a theory of what was invented.  To prevent such unintended consequences, a practitioner should make sure that the claim terms are clear enough on their face, or provide specific explanation in the specification as a guide.

Air Turbine Technology, Inc. v. Atlas Copco AB et al.

Decided June 7, 2005

Judge Schall with Judges Lourie and Prost

*          A false advertising claim under the Lanham Act requires a showing of causation             between the advertising and an injury.

            Air licensed its metal grinder speed control technology to Atlas, which marketed a pencil grinder, model TSFO6, that embodied the technology.  Air later rescinded the contract, prompting Atlas to replace the product with a new model TSF07 that lacked the desirable speed control.  Alarmed by the resulting market confusion and association of inferiority with its original product, Air sued Atlas at the U.S. District Court for the Southern District of Florida for patent infringement, fraud and other alleged misdeeds.  Judge Kenneth Marra granted Atlas summary judgment of no false advertising because Air failed to show evidence of causation between Atlas's ads and an injury to Air.  A jury additionally found no patent infringement.  Air appealed to the Federal Circuit.

            The Federal Circuit affirmed in a decision that reviewed how "false advertising under the Lanham Act requires, among other things, a showing of both an injury and a casual link between the injury and the allegedly false advertising."  Air did not focus sufficiently on causation of a specific injury but instead argued that Atlas's false advertising had "poisoned the entire tool-industry well" against improved grinders. 

            A negotiator for a license between a patentee and a large marketer should consider the long term added advertising value of a licensed commercialized product.  This case was exacerbated by Atlas's license contract promise to not "exploit the technology" outside the contract, which the courts decided did not cover advertising because exploitation requires to "put into practical use."

Michael Bowling v. Hasbro, Inc.
Decided April 11, 2005
Judge Linn with Judges Michel and Gajarsa

*          "The mere pendency of a court order is insufficient to constitute notice of impending       dismissal with prejudice."

 

            This case concerns the conditions under which a court can dismiss a patent infringement complaint when a plaintiff does not follow court rules.  According to Federal Rule of Civil Procedure 4(m), a plaintiff must serve a defendant within 120 days after filing its complaint, which Bowling failed to do when filing a patent infringement suit against Hasbro at the U.S. District Court for the District of Arizona.  After Bowling did not respond within 30 days of Judge David Bury's warning to show "good cause" why the case should not be dismissed, the court dismissed the case with prejudice.  Bowling appealed to the Federal Circuit.

             The Federal Circuit reversed, pointing out that Bowling's infringement complaint "was pending less than six months, which is less than the time specified in the district court's local rule for dismissal for failure to prosecute."  Also, despite the court's complaint that it needed to spend time on other cases in its docket, "the district court in this case did not invest the time or endure the disruption" that other courts do, in dismissing such cases. 

            District court dockets are crowded.  A court can be uncooperative when a party does not follow rules and does not respond in time to an order. 

Arthrocare Corporation, and Ethicon, Inc., v. Smith & Nephew, Inc.

Decided May 10, 2005

Judge Bryson with Judges Mayer and Lourie

*          Prosecution history of a prior art patent reference can be used to determine anticipation.

            ArthroCare sued Smith at the U.S. District Court for the District of Delaware for allegedly infringing patent claims that recite electrosurgical systems that have "an electrically conducting fluid supply."  A jury found the patent claims valid and infringed and Judge Sue Robinson denied Smith's motions for judgment of invalidity as a matter of law based on an anticipating patent by Ross.  Smith appealed to the Federal Circuit.

            The Federal Circuit reversed the district court's denial of Smith's motion for judgment of invalidity for some of the claims, noting that "it was error for the district court to limit the disclosure of the prior art reference to a preferred embodiment."  The Federal Circuit explained that prosecution history statements for the asserted prior art patent indicated that the patent must "provide the necessary electrical conductor" and thus "discloses an electrically conducting fluid" in anticipation of this claim element.

            The district court also dismissed Smith's antitrust counterclaim without providing Smith an opportunity to amend the counterclaim.  The district court had stayed proceedings related to the antitrust issue before Smith's response was due to a dismissal motion from AnthroCare.  The Federal Circuit vacated this dismissal because a "court should dismiss only if the complainant is unable or unwilling to amend the complaint."

            In this case a district court narrowly construed not a litigated patent, but rather the disclosure of a prior art patent by limiting that patent to a preferred embodiment.  The Federal Circuit, however, reached into the prosecution history to interpret the patent more broadly, and overturned a validity holding.

Teva Pharmaceuticals USA Inc. v. Pfizer, Inc.
Decided January 21, 2005, Rehearing Denied April 4, 2005
Judges Clevenger, Schall and Meyer, Meyer dissenting

 

*          A generic drug maker does not have reasonable apprehension of suit from a previous     drug maker merely by filing an ANDA that attacks a patent in the FDA orange book.         

            In this procedurally complex case, a divided Federal Circuit held that "a reasonable apprehension of imminent suit" suitable to support a declaratory judgment action is not created when a generic drug maker files an Abbreviated New Drug Application ("ANDA") at the FDA.  Teva had filed an ANDA, asserting invalidity and non-infringement of a patent that Pfizer had listed in the FDA's "orange book."  This filing was an early step in Teva's plan to market its generic version of Pfizer's patented Zoloft(TM) drug.  The two companies skirmished under the rules that extend a pioneering drug maker's patent term in exchange for allowing generics to take advantage of earlier regulatory approval.  Under those rules, Pfizer had a 45 day period to sue Teva for patent infringement but did not.  Teva then sued Pfizer for declaratory judgment of non-infringement and invalidity at the U.S. District Court for the District of Massachusetts.  Judge Richard Stearns dismissed the suit on the basis that Teva did not have reasonable apprehension that Pfizer would sue Teva.  Teva appealed to the Federal Circuit.

            In a January 21, 2005 decision, a Federal Circuit panel affirmed.  The court found that Teva had no apprehension of suit because "the listing of a patent in the Orange Book by an New Drug Application filer [Pfizer] is the result of a statutory requirement (and) without more …should not be construed as a blanket threat to potential infringers."  Teva asked the Federal Circuit to reconsider.  Although the court denied a rehearing, this denial was accompanied by several long dissents, illustrating that the Federal Circuit remains deeply divided on this issue. 

            The use of and compliance with the ANDA filing requirements at the FDA often affects the time period during which a drug maker can sell an important drug exclusively.  This case overturns an assumption that filing an ANDA by a generic drug maker creates an apprehension of lawsuit from a preceding drug maker.  The lessoned ability to file a declaratory judgment action in this situation may affect generic drug makers where the preceding maker benefits by not responding to an ANDA filing that asserts invalidity of its patent.

The Gillette Company v. Energizer Holdings, Inc.
Decided April 29, 2005
Judge Rader with Judges Michel and Archer, Archer dissenting

*          "'[F]irst, second, and third' are terms to distinguish different                    elements of the claim, not terms supplying a numerical limit."

            Gillette sued Energizer at the U.S. District Court for the District of Massachusetts for allegedly infringing claims to a multiple blade razor, which recite "a group of first, second, and third blades" arranged a certain way.  Judge Patti Saris denied Gillette's request for a preliminary injunction against Energizer's four blade razor after interpreting the claims as limited to a three blade razor.  Gillette appealed.

            The Federal Circuit found that the district court erroneously construed the terms "first, "second," and "third" as numerical limitations.  The court emphasized that the claims include "the 'open' claim terms 'comprising' and 'group of',…..to encompass subject matter beyond a razor with only three blades."  Regarding the phrase "group of," the majority opinion explained that "to 'close' a Markush group, the PTO insists on the transition phrase 'group consisting of."  Thus, "without the word 'consisting' the simple phrase 'group of' is presumptively open.'"  Judge Archer dissented with a view that the patentee used these terms "in a manner other than their ordinary meaning'" 

            Broad claims are a major focus of patent prosecution.  This case teaches that the term "group," by itself, can have a broad meaning similar to that of "comprising."

Hoffer v. Microsoft Corporation et. al.
Decided April 22, 2005
Judges Newman, Bryson and Dyk, Newman concurring separately

*          "When a harmless error in a patent is not subject to reasonable debate, it           can be corrected by the court, as for other legal documents."

Hoffer sued Microsoft at the U.S. District Court for the Northern District of California for allegedly infringing claims of a method patent for electronic trading.  Judge Ware granted summary judgment of non-infringement and invalidity for claim 22 on indefiniteness grounds.  Claim 22 was filed as claim 39 and depended on claim 38 during prosecution.  Claim 22 of the issued patent, however, still recited claim 38, instead of claim 1, and thus was unclear.  Hoffer appealed to the Federal Circuit.

The Federal Circuit, in a per curiam decision, reversed the invalidity holding because "[a]bsent evidence of culpability or intent to deceive by delaying formal correction, a patent should not be invalidated based on an obvious administrative error."  In this case, "the error was apparent from the face of the patent" and the district court should have corrected it.

Judge Newman wrote separately to emphasize her concern that the Federal Circuit also should have construed other disputed claim terms, instead of finding non-infringement after interpreting this one term.  

A practitioner should routinely review patents upon issuance and request a correction from the PTO when finding an obvious error such as claim numbering.

Nazomi Communications, Inc. v. Arm Holdings, PLC et al.
Decided April 11, 2005
Judge Rader with Judges Michel and Prost

 
*          A district court must provide the basis for its claim construction.  This may         include an analysis of a skilled artisan's knowledge.

Nazomi sued Arm at the U.S. District Court for the Northern District of California for allegedly infringing claims to a computer system for implementing Java software.  Judge Jeremy Fogel held summary judgment of no-infringement in a decision that included one paragraph of claim interpretation with a terse, "infringement analysis" based on circular reasoning.  Nazomi appealed to the Federal Circuit.

The Federal Circuit vacated and remanded because "the district court did not construe the disputed claim term in sufficient detail for appellate review."  The Federal Circuit noted that the district court may have embraced an improper "practicing the prior art" defense and had glossed over claim interpretation in the decision.

This opinion includes a detailed summary of what the Federal Circuit likes to see from a district court before carrying out its own review.

           
In Re. Dr. Matthias Rath
Decided March 24, 2005
Judge Dyk with Judges Bryson and Linn

*          The U.S. did not fully implement the Paris Convention treaty with respect to       trademarks for foreign applicants.

The Federal Circuit declared in this case that "the Lanham Act overrides the requirements of the Paris Convention with respect to the rights of foreign registrants."  Rath, a German citizen, had applied for a counterpart U.S. trademark to his German trademark "RATH" but the PTO refused registration because the mark was primarily merely a surname and lacked acquired distinctiveness. 

Rath appealed to the Federal Circuit, arguing that the surname rule contradicts the Paris Convention treaty with respect to foreign trademark holders.  This treaty states in part that: A(1) "[e]very trademark duly registered in the country of origin shall be accepted…in the other countries of the Union, subject to the (three) reservations…."  Rath argued that the surname rule is not within the reservations of the Paris Convention and that foreign trademark holders have rights that U.S. citizens lack, in this respect. 

A majority decision affirmed the PTO's refusal, because "the provisions of the Convention of Paris are not self-executing and legislation is therefore needed" for implementation, yet the U.S. Congress did not implement the cited provision.  Judge Bryson in a dissent noted that "whether the Lanham Act should be read to conflict with and trump the Paris Convention …has significant potential implications for international intellectual property law."  Judge Bryson preferred instead to interpret the surname rule issue as a formal exception within the Paris Convention, and therefore consistent with U.S. law.

As the dissent pointed out, the court could have interpreted the surname rule within an exception (the trademark is "devoid of any distinctive character) of the Paris Convention.  One can wonder what other parts of the Paris Convention have not been implemented.

Schreiber Foods, Inc. v. Beatrice Cheese, Inc. et al.
Decided March 22, 2005
Judge Dyk with Judges Rader and Archer

*          An infringement judgment is not voided by a temporary transfer of a patent in     suit to a non-party, which temporarily deprives the court of jurisdiction.

*          "If a lawyer has offered material evidence and comes to know of its falsity, the   lawyer shall take reasonable remedial measures."

            Schreiber sued Beatrice at the U.S. District Court for the Eastern District of Wisconsin for alleged infringement of patent claims to methods and devices for hermetically sealing food.  During the litigation, Schreiber assigned the litigated patent to a subsidiary, apparently for tax purposes, but did not inform Beatrice or the court.  Furthermore, Schreiber responded to a subsequent discovery request that it "is not aware of any" documents concerning assignments or security interests in the patent.  Later, while the case was pending, Schreiber's counsel learned of the assignment.  The counsel "concluded that there was no legal or ethical obligation to disclose the assignment" or the falsity of the statements made during discovery, but instructed Schreiber to quietly reacquire the patent. 

            Beatrice learned of the assignments from another case.  After relay of this information to the court, Judge Lynn Adelman vacated the judgment and dismissed the case for lack of jurisdiction as a sanction.  Schreiber appealed, waiving its claim for damages but otherwise seeking reinstatement of the judgment that the patent is enforceable and infringed. 

            The Federal Circuit reversed the dismissal and remanded for a new trial, which among other things would allow the district court "to first consider lesser sanctions."  The Federal Circuit noted that "Schreiber had constitutional standing at the time the suit was commenced" and "the temporary loss of standing during patent litigation can be cured before judgment."

            The plaintiff initially got into trouble by assigning its patent (including the right to sue for past actions!) during litigation without informing the litigation team.  This mistake was compounded by the plaintiff's failure to amend its earlier false discovery statement, which the Federal Circuit found to be "plainly sanctionable."          

Asyst Technologies, Inc. v. Emtrak, Inc. et al.
Decided March 22, 2005
Judge Bryson with Judges Michel and Newman

*          The "specific exclusion principle," which is similar to the all elements rule, blocks            the doctrine of equivalents for a claim term that describes two conditions.

            Asyst sued Emtrak at the U.S. District Court for the Northern District of California for allegedly infringing patent claims that recite a communication "means mounted on" a transportable container in a factory.  After a first remand from the Federal Circuit, Judge Jeremy Fogel granted summary judgment of non-infringement.  The District Court also found a second claim, which recited "sensing means" non-infringed because the accused device lacked a "structure constituting the sensing means" as described in the patent.  Both sides appealed various issues to the Federal Circuit.

            The Federal Circuit affirmed that the claim term "'mounted on' limitation is binary in nature (and the) means must be either mounted or unmounted."  Accordingly, the accused system, which relies instead on a computer interface mounted elsewhere to relay signals could not literally infringe.  The accused device also did not infringe under the doctrine of equivalents because to "hold that 'unmounted' is equivalent to 'mounted' would effectively read the 'mounted on' limitation out of the patent….would vitiate an entire claim limitation" under the all elements rule.  The court further noted that "[t]his case falls within both that doctrine and its corollary, the 'specific exclusion' principle" because of the binary nature of the term.

            A claim term construction that admits only two conditions (i.e. is "binary in nature") may potentiate application of the all elements rule and also the specific exclusion principle.  Another point for the engineering field is that the Federal Circuit interpreted "sensing means" without limitation to a structure in the specification, thereby reversing a district court's non-infringement holding.  A category of "means for" technical terms may exist that do not require a description of structure in the specification. 

Playtex Products, Inc. v. Proctor & Gamble Company
Decided March 7, 2004
Judge Gajarsa with Judges Lourie and Linn

*          "Words of approximation, such as 'generally' and 'substantially,' are descriptive terms     commonly used in patent claims to avoid a strict numerical boundary."

            The U.S. District Court for the Southern District of Ohio granted P&G summary judgment of no infringement of Playtex's tampon inserter claims that recite "two ….opposed, substantially flattened surfaces."  Judge Thomas Rose construed "substantially flattened" as flattened enough to fall within a manufacturing tolerance, based on extrinsic evidence from Playtex's expert, after deciding that the patentee's preferred embodiment did not fall within a more common definition based only on intrinsic evidence.  No infringement was found because the accused devices did not "fall within a manufacturing tolerance for flatness."  Playtex appealed to the Federal Circuit.

            The Federal Circuit reversed because "the district court found ambiguity where there is none" and "erred in going beyond the intrinsic evidence" to construe the term "substantially flattened."  Instead, the intrinsic evidence simply shows that such surfaces are "material flatter than" other parts of the device.

            Patent practitioners often use terms of approximation such as "substantially" to describe an invention.  If the practitioner desires claims that are easily construed in court, further description should be provided, by way of explicit definition or examples.

Eolas Technologies Inc. and the Regents of the University of California v. Microsoft Corp.
Decided March 2, 2005
Judge Rader with Judges Friedman and Plager

*          "[S]oftware code made in the United States and exported abroad is a 'component of a   patented invention' under section 271(f)."

            Eolas sued Microsoft at the U.S. District Court for the Northern District of Illinois for allegedly infringing patent claims to software that allows interactive gaming by an internet browser.  After a jury trial, Judge James Zagel rejected Microsoft's affirmative defenses of invalidity and inequitable conduct, and held that Microsoft owes Eolas royalty for related software that Microsoft sent overseas for sale, under section 271(f) of the patent code.  Microsoft appealed to the Federal Circuit.

            The Federal Circuit vacated and remanded for a new trial because the district court erroneously had concluded that an anticipating public use by another more than one year before the filing date subsequently became abandoned, after the user moved to a more advanced version of his software.  The Federal Circuit pointed out that "creating an improved version of an invention does not in any sense abandon the original invention."  The Federal Circuit also affirmed the ruling that Microsoft's shipments of browser software overseas was a transfer of a component of a patented invention as an infringement of a U.S. patent under 35 U.S.C. 271(f) because "every form of invention eligible for patenting falls within the protection of section 271(f)."

            Software inventions enjoy the same protections as hardware under the patent laws (including 271(f)) and increasingly are seen as indistinguishable from hardware.  The Federal Circuit in this case noted that "[o]n a functioning computer, software morphs into hardware and vive versa at the touch of a button."

ASM America, Inc. et al. v. Genus, Inc.
Decided March 16, 2005
Judge Bryson with Judges Newman and Friedman

*          "When a patentee defines a term in the specification, that definition ordinarily controls."

            ASM sued Genus at the U.S. District Court for the Northern District of California for allegedly infringing claims to a process for sequential layer deposition on semiconductors, using an "evacuating step."  Judge Elizabeth Laporte, noting the frequent use of "vacuum pump" and "evacuation" in the patent specification and file history, granted summary judgment of noninfringement because the accused process lacked an evacuating step.  Genus appealed to the Federal Circuit.

            The Federal Circuit affirmed for the same reasons given by the district court in a decision dominated by claim construction arguments.  In addition to the intrinsic evidence regarding the need to evacuate with a partial vacuum to carry out the claimed invention, the court also noted that when "considering purchasing" the patent, ASM's "own Chief Technology Officer stated that the claims…were limited" to evacuation processes.  Furthermore, the inventor in his notebook had stated that "an essential requirement of this new process is that it be done in a vacuum chamber." 

            Statements about limitations of a new invention by an inventor and by a technology manager can haunt a party that later asserts a patent during litigation.  Defendants in such litigation should look for these admissions during discovery.

Medrad, Inc. v. MRI Devices Corporation

Decided March 16, 2005
Judge Bryson with Judges Rader and Friedman

*          "The manner in which (a) term is used in the patent" dictates a different definition from    "the same term in a different patent with a different specification."

            Medrad sued MRI at the U.S. District Court for the Western District of Pennsylvania for allegedly infringing claims to an MRI system that coordinates overlapping coils to maintain a "substantially uniform" magnetic field.  Judge Terrence McVerry granted partial summary judgment of invalidity based on prior art that also produced an arguably uniform field with overlapping coils.  Medrad appealed to the Federal Circuit, which affirmed.

            Claim construction dominated this case.  The main issue was whether the definition for "substantially uniform" was broad enough to cover the prior art.  One debate concerned whether the Federal Circuit's construction of "substantially uniform" in another case involving a solid detergent shape should inform interpretation of the term in this case.  The Federal Circuit specifically declined to follow its earlier definition because "[t]he use of a term in a patent on a detergent is of little pertinence to the use of a similar term in a patent on MRI RF coils."  The Federal Circuit explained that it is "entirely proper to consider the functions of an invention in seeking to determine the meaning of particular claim language."

            Although simple English words often are used to claim an invention, the purpose and proper functioning of the invention may be relied on to put a gloss on their construed meanings.

Evident Corporation et al. v. Church & Dwight Co., Inc. et al.
Decided February 22, 2005
Judge Lourie with Judges Schall and Linn

*          "[A] patentee should be joined, either voluntarily, or involuntarily, in any infringement      suit brought by an exclusive licensee."

            Three inventors of toothpaste formulations filed a patent application and assigned their rights to their company Peroxydent.  Peroxydent then licensed those rights to Evident, while reserving a right of first refusal to bring suit for infringement.  Later, Evident sued Church, which joined Peroxydent to the lawsuit.  Church won the lawsuit, including an inequitable conduct holding.  After Judge Mary Cooper awarded Church attorney's fees of more than 1 million dollars, Evident and Peroxydent suddenly argued lack of jurisdiction in an appeal to the Federal Circuit, because the former was a "mere licensee lacking all substantial rights in the patent" without standing to sue, and the latter "was simply a passive third-party counterclaim defendant without an interest in the litigation."

            The Federal Circuit affirmed that both Evident and Peroxydent were jointly and severally liable for the attorney fee award, in an opinion that reviewed the need to join patent owners and others with standing to sue, to ensure "that all entities with an interest in the asserted patent were part of the lawsuit."

            An interesting point in this case was that the Federal Circuit cited New Jersey partnership law in holding Peroxydent responsible for the consequences of inequitable conduct carried out by the inventors and their other company, Evident, even in the absence of any participation or knowledge of the fraud.   

V-Formation, Inc., v. Benetton Group SPA, et al.
Decided March 15, 2005
Judge Rader with Judges Mayer and Prost

*          A listed prior art reference is intrinsic evidence for claim construction because it shows   claim "usage in context as understood by one of skill in the art at the time of invention."

            V-Formation sued Benetton at the U.S. District Court for the Southern District of New York for allegedly infringing claims to a roller skate having "fasteners for releasably attaching" sidewalls.  Judge Harold Baer Jr. granted Benetton summary judgment of non-infringement because Benetton's accused skates used a rivet instead of a releasable attachment.  V-Formation appealed to the Federal Circuit.

             The Federal Circuit affirmed, based on a review of the "intrinsic record" as "the primary tool to supply the context for interpretation of disputed claim terms."  Within the intrinsic evidence was a statement in a publication submitted in an information disclosure statement.  This cited document stated (referring to a prior art skate) that "[i]n alternative embodiments, a more permanent fastener such as a rivet could also be used."  The Federal Circuit approved this use of cited art, noting that "when prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term."

            The use of cited prior art for claim construction could become very powerful in litigation because patentees, particularly in fields such as biotechnology, often cite many patents and other documents, in an effort to sweep such publications into the record.  However, as seen here, such references contain numerous statements that are intrinsic evidence, possibly on equal footing with the patent specification itself, to interpret patent claims.

Sentry Protection Products, Inc. et al. v. Eagle Manufacturing Company

Decided March 11, 2005

Judge Prost with Judges Lourie and Schall

*          "Constructive notice (of a patent) is provided 'when the patentee consistently marks       substantially all of its patented products.'"

            Sentry sued Eagle at the U.S. District Court for the Northern District of Ohio for alleged infringement of claims to a building column protector to withstand collisions with fork lift trucks.  Judge Solomon Oliver Jr. determined that no damages were available and therefore granted summary judgment of noninfringement for one of the asserted patents.  Sentry appealed to the Federal Circuit.

            The Federal Circuit affirmed most holdings but vacated the noninfringement finding because the district court misapplied the constructive notice rule.  Sentry had provided an affidavit that its products had been marked, which the district court had discounted as not presenting an issue of fact.  In contrast, the Federal Circuit held that Sentry "is entitled to an opportunity to prove constructive notice and corresponding entitlement to damages."

            As part of an overall patent protection program a patentee should carefully mark all products covered by a patent.  This case is a reminder that failure to provide either actual or constructive notice to an opponent, can block or restrict a damage award during litigation.

Pause Technology LLC v. Tivo Inc.

Decided March 14, 2005

Judge Linn with Judges Newman and Lourie

*          "A judgment that does not dispose of pending counterclaims is not a final judgment" and             cannot be appealed to the Federal Circuit.

            Pause sued Tivo at the U.S. District Court for the District of Massachusetts for alleged infringement of claims to digital video recorders.  Judge Patti Saris granted summary judgment to Tivo of non-infringement but did not comment on Tivo's invalidity counterclaims.  Pause appealed to the Federal Circuit.

            The Federal Circuit declared that it lacked jurisdiction and dismissed the appeal.  While noting Pause's argument that the district court appeared to have "implicitly dismissed the invalidity counterclaim as moot" and that the court "docket sheet shows that the case was dismissed" the Federal Circuit pointed out that "a final judgment is a decision by the district court that ends the litigation on the merits and leaves nothing for the court to do but execute the judgment." 

            The Federal Circuit complained that "parties too frequently are not reviewing the actions of the district courts for finality before lodging appeals" and that the court recently amended "Federal Rule 28(a)(5), which now requires that the jurisdictional statement also include a statement that the judgment or order appealed from is final or otherwise appealable."  

             
Independent Ink, Inc. v. Illinois Tool Works, Inc. and Trident, Inc.
Decided January 25, 2005

Judge Dyk with Judges Clevenger and Prost

*          "[T]he sale or lease of a patented item on condition that the buyer make all of his            purchases of a separate tied product from the patentee is unlawful."

            Trident's standard licensing agreement specifies that the licensee can use Trident's ink jet device technology only if the licensee "purchase their ink for Trident-based systems exclusively from Trident."  Independent, a competing ink manufacturer, sued Trident at the U.S. District Court for the Central District of California for declaratory judgment of non-infringement and invalidity of Trident's ink jet patents.  Independent also alleged that Trident illegally tied its patented product to a non-patented product (ink) in an illegal monopoly under the Sherman act.  Judge Cormac Carney granted summary judgment against Independent because Independent could not prove that Trident had market power for the monopoly.  Independent appealed to the Federal Circuit.

            The Federal Circuit reversed and remanded because the district court erroneously had concluded that to prove "a violation of the antitrust laws, the plaintiff must affirmatively prove market power."  The Federal Circuit pointed out that "where the tying product is patented or copyrighted, market power may be presumed rather than proven."  The district court had refused to follow supreme court law on this point because of extensive commentary by others that the supreme court is wrong.  However, "it is a duty of a court of appeals to follow the precedents of the Supreme Court, …..even where a Supreme Court precedent contains many 'infirmaties' and rests upon 'wobbly, moth-eaten foundations.'"

            A patentee often wishes to control not only a patented product but also a related product, via "tying."  To avoid violating anti-trust rules, the patentee should obtain dependent patent claims that recite the related product, or claims that recite a combined use with the related product. 

Silicon Image, Inc. v. Genesis Microchip Incorporated and Genesis Microchip (Del) Inc.
Decided January 28, 2005

Judge Gajarsa with Judges Michel and Linn

*          "[T]he trial court must dismiss, with or without prejudice, all of the claims" before an       appeal can be made to the Federal Circuit even if the parties have a settlement.

            Silicon sued Genesis at the U.S. District Court for the Eastern District of Virginia for allegedly infringing claims to digital interfaces.  After a Markman hearing, Judge Robert E. Payne suggested that the parties continue settlement discussions.  In response, the parties executed a Memorandum of Understanding ("MOU"), which required a subsequent "Definitive Agreement."  The parties failed to execute the second agreement and the MOU controlled their relationship.  Upon request by both sides, the court entered a "Final Judgment Order" that incorporated the MOU terms and also dismissed the case with prejudice upon certification of a payment.  The court further declared that its order was "a final and appealable order."

            Genesis appealed to the Federal Circuit and both parties admitted that the district court "had not issued an order dismissing the action."  The Federal Circuit dismissed for lack of jurisdiction because even though the district court had "ostensibly" disposed of the case, the MOU terms included in the district court's final order explicitly had "made a dismissal with prejudice of Silicon's patent infringement claims consideration for providing the agreed upon settlement amount and royalty terms."  Noting that "settlement agreements are contracts" the Federal Circuit explained that the district court could not change the MOU terms without consent of the parties and that their agreement "may not now be unilaterally undone by a court."

            A theme in this procedurally complex case was that a negotiated agreement with dismissal of a court action required satisfaction of contract terms (Silicon to receive payment).  The actual conditions for the stipulated dismissal became a sticking point and might have been negotiated more carefully.

Mark Thatcher et al. v. Kohl's Department Stores, Inc. et al.

Decided February 10, 2005

Judge Mayer with Judges Michel and Linn

*          Consent judgments must be carefully drafted because they "are fundamentally different   from contracts" and reflect "a compromise of contested legal positions."

            Thatcher and Kohl's settled their patent litigation dispute over Kohl's sale of shoes, at the U.S. District Court for the Northern District of Illinois, by executing a consent decree that specified "Kohl's obligation to avoid infringing activity" including all "successors-in interest" of Kohls.  The consent decree unfortunately (for Thatcher), lacked "language of assignability, such as the 'successors-in-interest' languge used when discussing Kohl's obligations."  Deckers acquired Thatcher's property rights and then discovered an alleged violation by Kohls of the consent decree.  As the purported successor in interest to Thatcher, Deckers attempted to enforce the consent decree against Kohls but judge George Marovich dismissed because Deckers was not a party to the consent decree but was merely a beneficiary.  Thatcher and Deckers appealed to the Federal Circuit.

            The Federal Circuit affirmed because the consent judgment was "silent" on the issue of enforceability by Thatcher's successors in interest, despite explicit language pertaining to Kohl's successors in interest.  The court pointed out that consent agreements do not necessarily follow contract law principles, which otherwise would have allowed Deckers to proceed.  A consent agreement drafter should be aware of this difference and should explicitly include conditions that otherwise might not be mentioned in a regular contract.

Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772
Decided February 9, 2005

Judge Rader with Judges Michel and Prost

*          An uncommon foreign word may be used as a strong distinctive term in a trademark.

            The PTO refused to register Palm's mark VEUVE ROYALE for sparkling wine based on likelihood of confusion with Veuve's marks including the mark "Royal Widow," partly because "veuve" means "widow" in French.  Palm appealed to the Federal Circuit.

            The Federal Circuit affirmed.  The court pointed out that an arbitrary word "used in an unexpected or uncommon way" for a trademark is "typically strong."  Thus, although Palm's mark has a second word that differs from Veuve's mark, the first word is the "dominant feature in the commercial impression created by Palm Bay's mark."  The Federal Circuit also disagreed that "foreign equivalents" of the "veuve" mark caused confusion.  The court explained that an American buyer would not translate the term veuve" into "widow" and then be confused by the similarity to Veuve's "Royal Widow" trademark.

            This case is important to disputes over trademarks that use one or more words of foreign origin.  In these instances, whether a consumer can translate and readily understand the foreign meaning becomes an issue.

Star Fruits S.N.C. and Institute of Experimental Botany v. U.S. et al.
Decided January 3, 2005
Judge Clevenger with Judges Newman and Dyk, Newman dissenting

*          A patent applicant cannot refuse “to comply with an information requirement”    from a patent examiner that “is not arbitrary or capricious.”

            Star applied for a plant patent at the U.S. PTO but refused to comply with the PTO’s request for evidence of foreign sale or use of the plant. The PTO intended to treat such evidence as prior art and Star disagreed with this legal position.  Star refused to submit the evidence on the grounds that the information was not relevant, but the PTO declared  the application abandoned for failure to respond.  Star unsuccessfully petitioned the PTO commissioner and then sued the commissioner at the U.S. District Court for the Eastern District of Virginia.  Judge Leonie Brinkema affirmed the PTO’s decision and Star appealed to the Federal Circuit.

            The Federal Circuit affirmed the district court, noting that “[a]n agency’s interpretation of its own regulations is entitled to substantial deference and will be accepted unless it is plainly erroneous or inconsistent with the regulation.”  More specifically, Star’s “contrary view of the applicable law” was not an excuse to refuse cooperation with the PTO during examination.  Judge Newman dissented with an opinion that the district court should have considered Star's prior art legal issue and preferred that the Federal Circuit remand on that basis.

A patent practitioner often disagrees with the PTO’s view of the law.  However, the proper response is through an appeal, and not by refusing to cooperate with the PTO.  

Electronics for Imaging, Inc., v. Jan R. Coyle and Kolbert Labs.
Decided January 5, 2005
Judge Lourie with Judges Rader and Gajarsa

*          When threatened, an accused infringer is “entitled to sue to bring an end to the
            threat, despite their confidence in their position.”

EFI sued Coyle at the U.S. District Court for the Northern District of California for declaratory judgment that EFI did not breach a non-disclosure agreement or misappropriate trade secrets, after repeated threats from Coyle.  However, Judge Martin Jenkins dismissed EFI's case because EFI lacked well-founded reasons for bringing a preemptive suit.  In particular, “EFI was confident in its legal position, (and therefore) had no uncertainty of the type contemplated” by the Declaratory Judgment Act.

The Federal Circuit reversed the dismissal of the declaratory judgment action because “the district court misinterpreted the term ‘uncertainty’ in the context of the Declaratory Judgment Act.”  The Federal Circuit noted that this condition is met when “[t]here is the uncertainty whether one will have to incur the expense and inconvenience of litigation, and how it will affect the threatened party’s customers, suppliers, and shareholders.”  This, coupled with numerous threats from Coyle, entitled EFI “to bring the matter to a head and have it resolved in court.”

The advantage of filing a declaratory judgment action early is important to litigation strategy, and a patentee should be careful about making threats based on an un-issued patent.  In this case, EFI chose its own court for the litigation by filing a declaratory judgment action less than one month before Coyle’s U.S. patent issued.

Fuji Photo Film Co., Inc. v. Jazz Photo Corp. et al.
Decided January 14, 2005
Judge Rader with Judges Clevenger and Linn

*          “The patentee’s authorization of an international first sale does not affect            exhaustion of that patentee’s rights in the United States.”

Fuji sued Jazz at the ITC and then at the U.S. District Court for the District of  New Jersey, for allegedly infringing patent claims to disposable cameras, based on Jazz’s refurbishment of used disposable cameras overseas and re-importation with new film.  Jazz asserted an affirmative defense that it merely repaired the cameras, but Judge Faith Hochberg entered final judgment of direct and induced infringement against Jazz.  The court found that a portion of the cameras infringed because those cameras had been first sold overseas.  Both sides appealed various issues to the Federal Circuit.

The Federal Circuit affirmed because “only (product) sold within the U.S. or under a U.S. patent qualify for the repair defense under the exhaustion doctrine.”  Much of this decision concerned whether Jazz met its burden to show repair, rather than unallowable refurbishment in 8 Chinese factories that processed the used cameras.  Jazz provided videotape evidence of repair from one factory, had visited three, and successfully convinced the court that direct evidence from the remaining 5 factories was not necessary.

A theme in this case was the acceptability of “circumstantial evidence” to prove facts.  The Federal Circuit commented that “it is hornbook law that direct evidence of a fact is not necessary.  Circumstantial evidence is not only sufficient, but may also be more certain, satisfying and persuasive then direct evidence.”

Trintec Industries, Inc. v. Pedre Promotional Products, Inc.

Decided January 27, 2005

Judge Friedman with Judges Rader and Bryson

*          Personal jurisdiction for patent litigation may be obtained via internet sales          wherein the location of the internet buyer is the site of the injury.

            Trintec sued Pedre for alleged infringement of claims to methods for producing custom instrument panel faces, at the U.S. District Court for the District of Columbia.  Pedre, located in N.Y. City had advertised and sold product over the internet and through distributors.  Judge Royce Lamberth, however, dismissed the suit for lack of personal jurisdiction.  Trintec appealed to the Federal Circuit.

            The Federal Circuit vacated and remanded because the district court's decision did not provide an adequate basis for the decision yet had admitted the existence of some evidence for personal jurisdiction over Pedre.  Pedre had used distributors who visited D.C. twice a year for sales meetings, and had some direct internet sales into D.C.

            A plaintiff can establish personal jurisdiction against an out of state company via evidence of business transactions through the internet.  This decision mentioned the greater evidentiary persuasiveness of an interactive web site compared to mere passive advertising.  However, evidence is needed to show that individuals in the jurisdiction actually used the website.

Commissariat A'Lenergie Atomique v. Chi Mei Optoelectronics Corporation et al.

Decided January 27, 2005

Judge Dyk with Judges Rader and Friedman

*          A district court should allow a patent plaintiff jurisdictional discovery if needed, "when factual allegations suggest …contacts …with reasonable particularity."

            French company CAA sued Chinese company CMO in the U.S. District Court for the District of Delaware for allegedly infringing claims to liquid crystal displays.  To establish personal jurisdiction over CMO based on a "stream of commerce theory," CAA showed evidence that CMO was a major seller of LCDs in the US and that many of the LCDs sales likely are in Delaware.  However, Judge Kent Jordan dismissed the action for lack of jurisdiction, citing the absence of specific evidence.  The court refused to grant discovery for the jurisdiction issue and CAA appealed to the Federal Circuit.

            The Federal Circuit vacated and remanded for jurisdiction discovery because CAA had preserved its right to discovery for jurisdiction "by initially requesting discovery in their opposition to the motion to dismiss."  The Federal Circuit also explained that "Federal Circuit law governs determination of personal jurisdiction" because such determination is "intimately involved in the substance of enforcement of the patent right."

 

            Jurisdictional issues can consume a significant portion of patent litigation and the Federal Circuit favors jurisdictional discovery.

Bruno Independent Living Aids, Inc. v. Acorn Mobility Services Ltd. and Acorn Stairlifts, Inc.
Decided January 11, 2005
Judge Lourie with Judges Gajarsa and Linn

*          "[I]n the absence of a credible explanation, intent to deceive is generally inferred from    the facts and circumstances."

            Bruno sued a competitor for alleged infringement of Bruno's stairlift patent at the U.S. District Court for the Western District of Wisconsin.  During discovery, Bruno admitted that the patent claims were invalid and filed a reissue application at the PTO.  Judge Barbara Crabb then granted Acorn summary judgment of invalidity and awarded attorney fees to Acorn.  Bruno appealed to the Court of Appeals for Federal Circuit ("Federal Circuit") and Acorn cross appealed.

            The Federal Circuit affirmed the award of attorney's fees because the record supported "the district court's finding that Bruno possessed actual knowledge of the (prior art)--and that it knew or should have known of its materiality."  An influential fact was that Bruno admitted the "substantial equivalence" of its technology to the FDA during patent prosecution but never informed the PTO of that anticipating prior art.  The Federal Circuit pointed out that "an applicant who knew of the art or information cannot intentionally avoid learning of its materiality."

            Determination of intent often is dispositive in proving inequitable conduct.  The Federal Circuit pointed out in this regard that when materiality of the deception is high, and the patentee "has not proffered a credible explanation for the nondisclosure, …an inference of deceptive intent may fairly be drawn in the absence of such an explanation."

Business Objects, S.A., v. Microstrategy

Decided January 6, 2005

Judge Rader with Judges Schall and Prost

*          One can amend a claim by adding an inherent feature of an invention without narrowing the claim or estopping later application of the doctrine of equivalents.

            Business sued Microstrategy at the U.S. District Court for the Northern District of California for allegedly infringing claims to database search methods.  Judge Charles Breyer granted Microstrategy summary judgment of no literal infringement and no infringement under the doctrine of equivalents.  Business appealed to the Federal Circuit.

            The Federal Circuit affirmed most findings, but vacated the holding of no infringement under the doctrine of equivalents because the lower court erroneously had deemed a claim amendment (addition of "predetermined") during prosecution as narrowing the claim scope.  The Federal Circuit pointed out that "[b]ecause the 'predetermined' limitation was implicitly contained in the original term, the amendment did not narrow the scope of " the amended claim.  Accordingly, that amendment did not estop subsequent use of the doctrine of equivalents. 

            When amending a claim at the patent office, one should consider merely making explicit an inherent limitation in the original, unamended claim to avoid file history estoppel. 

Stewart Lamle, v. Mattel, Inc.
Decided January 7, 2005

Judge Dyk with Judges Newman and Clevenger, Newman dissenting

*          Under state law, a typed name on an email may represent a signature for contract          purposes.

            Lamle invented a board game "Farook," that he patented and negotiated with Mattel for licensing outside of the United States.  During those license negotiations, Mattel "promised that it would sign a formal, written contract," as affirmed in an email from a Mattel employee.  Following a subsequent marketing study, however, Mattel decided not to pursue a license and Lamle sued Mattel at the U.S. District Court for the Central District of California.  After a first litigation and appeal, Judge Terry Hatter on remand held summary judgment that no contract had existed been Lamle and Mattel.  Lamle appealed again.

            A majority Federal Circuit panel determined that the "only question" in this case was whether a Mattel employee's "name on an email is a valid writing and signature to satisfy the Statute of Frauds."  Because a "record or signature may not be denied legal effect or enforceability solely because it is in electronic form," the email created a genuine issue of material fact that precluded summary judgment.  Judge Newman dissented from this view with an opinion that the parties had agreed "that any obligation would be contained in a formal written contract."

            An email is easily written and sent, yet can convey a signed agreement.  Such communication, particularly from an employee who is not a primary negotiator, should be carried out with great care. 

 Versa Corporation v. Ag-Bag International Limited

Decided December 14, 2004

Judge Dyk with Judges Newman and Rader, Newman dissenting

*          "[W]hen multiple embodiments in the specification correspond to the claimed function,   proper application of 112,(6) generally reads the claim element to embrace each."

            Versa sued Ag-Bag in the U.S. District Court for the District of Oregon for alleged infringement of claims to compost bagging machines with "means…for creating channels in the compost material."  Judge Dennis Hubel construed this claim term to require both perforated pipes and flutes but Ag-Bag's accused device lacked flutes.  Versa admitted no possible infringement under the court's construction and appealed to the Federal Circuit, with the argument that the district court erred in its claim construction.

            A majority Federal Circuit panel agreed with Versa because the specification "points out that both structures are not required," and reversed the non-infringement holding.  The panel reasoned that Versa's patent specification suggests that machines work with either structure, and states "although it is preferred that both the flutes ..and the pipe… be utilized."  Judge Newman dissented because "the patentee cannot point to an isolated suggestion in the specification to eliminate that limitation" and because all figures and other description in the patent showed both structures used together.

            A patent practitioner should describe and suggest a wide variety of embodiments in a specification to breathe life into broad claim interpretation during patent enforcement.   

Matthew Stephens and Spectrum Laboratories, Inc. v. Tech International, Inc. et al.
Decided December 29, 2004

Judge Mayer with Judges Rader and Schall

*          "[A]n exceptional case finding is not to be based on speculation or conjecture but upon clear and convincing evidence."

            Spectrum sued Tech in the U.S. District Court for the District of Nevada for allegedly infringing claims to a biochemical purification method.  The parties settled all claims except a counterclaim from Tech for attorney's fees based on a charge that the suit was frivolous.  Judge David Hagen granted Tech attorney's fees on several grounds and Spectrum appealed.

            The Federal Circuit could find no exceptional circumstances such as inequitable conduct or existence of a frivolous suit, and reversed.  The Federal Circuit noted that a patent suit is frivolous if the plaintiff "knew of should have known that it could not successfully assert" a patent, yet Spectrum had no such knowledge.  The district court's second misconduct rationale was that Spectrum had warned Tech of another pending application, yet had not filed an information disclosure statement in that application until much later.  The Federal Circuit found however, that Spectrum's notice to Tech was within Spectrum's rights under section 154.  Further, "Spectrum was permitted to file an IDS, if deemed material, at any point during the prosecution of the application."

            A defendant of a patent infringement suit can win attorney's fees if the case is proven exceptional due to, for example, inequitable conduct at the PTO, or a showing that the lawsuit is frivolous, but this proof requires clear and convincing evidence.    

Brooks Furniture Manufacturing, Inc. v. Dutailier International, Inc. and Dutailier, Inc.
Decided January 4, 2005
Judge Newman with Judges Lourie and Dyk

*          "Absent misconduct……sanctions may be imposed against the patentee only if both (1) the litigation is brought in subjective bad faith, and (2) the litigation is objectively baseless"

            Brooks sued Dutalier in the Eastern District of Tennessee for declaratory judgment of patent invalidity and non-infringement and Dutailier counterclaimed infringement of its rocking chair design patent.  Judge Curtis Collier granted Brooks summary judgment of noninfringement and for attorney fees, after concluding that the circumstances of the case were exceptional.  Dutailier appealed to the Federal Circuit.

            The Federal Circuit reversed and vacated the award of attorney's fees because "the first requirement (to impose sanctions, namely subjective bad faith) is not satisfied."  The court explained that "[b]ringing an infringement action does not become unreasonable in terms of '285 if the infringement can reasonably be disputed…and a patentee's ultimately incorrect view of how a court will find does not of itself establish bad faith."  The court noted that just because an infringement opinion obtained before litigation differed from a court's ultimate conclusion on the merits of infringement does not transform the opinion "into the opposite extreme of unreliability and incompetence."

            The patentee's infringement opinion obtained prior to litigation played a major role in this case and probably helped protect the patentee.

In Re. James F. Crish and Richard L. Eckert
Decided December 21, 2004
Judge Lourie with Judges Mayer and Dyk

 

*          "[T]he identification and characterization of a prior art material does not make it novel." 

            The PTO refused Crish's request for patent claims to a DNA comprising a promoter (regulation) sequence for the human involucrin gene.  This gene encodes a protein that combines with keratin protein to form the hard outer layer of skin.  The PTO cited Crish's own previous publication as prior art because that publication described the complete gene, although the promoter portion was not sequenced.  Crish appealed to the Federal Circuit.

            The Federal Circuit affirmed because the gene "sequence is the identity of the structure of the gene, not merely one of its properties" and "[t]the only arguable contribution to the art that Crish's application makes is the identification of the nucleotide sequence of the promoter region of" this gene.  Much argumentation in this case concerned whether others could have or did sequence correctly the same gene segment.  However, the existence and location of the regulatory region of the gene was known, and the Federal Circuit pointed out that the PTO properly could "conclude that a claimed feature (the sequence) is present in the prior art." 

            Many biotech patent applications are filed for new DNA sequences.  Unfortunately, Crish published some details of his new discovery well before filing a patent application with additional information for the promoter control region sequence.  Before publishing a research paper, an inventor should review the long term consequences on patent claims, including the effect of later discoveries that merely fill in details of earlier findings.

Shen Manufacturing Co., Inc. v. The Ritz Hotel Limited
Decided December 17, 2004
 Judge Mayer with Judges Schall and Prost

*          "The ultimate conclusion of similarity or dissimilarity of (trade)marks must rest on            consideration of the marks in their entirety."

            Ritz filed a first group of trademark applications for phrases that contain "RITZ" for shower curtains, dinnerware, and floor and wall coverings.  Shen, which had used the "RITZ" mark for kitchen textiles and bathroom towels since 1892, filed oppositions to the registrations.  The PTO dismissed Shen's oppositions, but sustained oppositions to a second group of RITZ marks for cooking and clothing.  Shen appealed and Ritz cross appealed to the Federal Circuit.

            The Federal Circuit affirmed the dismissal of oppositions to the first group of marks but reversed the decision that sustained the oppositions to the second group.  A theme in this case was that the Ritz Hotel marks, while including "RITZ," further comprised other features such as "Paris" or a crest, which distinguished them sufficiently to avoid likely confusion in the minds of the consumer.  This opinion stressed the "strong commercial impression" that "conjures images of fancy, even swanky ladies," that differs much from Shen's RITZ mark, which "invokes images, in any of cleaning, cooking or manual labor."  The Federal Circuit held that the mark "RITZ" for use with cooking classes would be confused with Shen's "RITZ" mark used on Shen's kitchen textiles because ""the test is not that goods and services must be related if used together, but merely that that finding is part of the underlying factual inquiry…" and reversed that portion of the decision.

            In determining the likelihood of confusion between marks, the court relied on three "DuPont" factors: the "alleged fame of Shen's RITZ mark;" the similarity of the marks and the relatedness of the goods.  Shen's sales were far less than sales of the Ritz Hotel, indicating much less fame, and the court found lifestyle differences to support dissimilarity of the goods.

Iron Grip Barbell Company, Inc., and York Barbell Company, Inc. v. USA Sports, Inc.

Decided December 14, 2004

Judge Dyk with Judges Newman and Archer

*          "[W]here there is a range disclosed in the prior art, and the claimed invention falls within             that range, there is a presumption of obviousness."

            Iron sued USA at the U.S. District Court for the Central District of California, for allegedly infringing claims to a weight training plate having 3 handle openings.  Judge Gary Taylor found the claims invalid on obviousness grounds in view of prior art devices with 1, 2 and 4 handle openings.  Iron appealed to the Federal Circuit.

            The Federal Circuit affirmed because "[w]here the prior art discloses a range encompassing a somewhat narrower claimed range, the narrower range may be obvious" and the prior art for this technology had exploited 1, 2 and 4 openings.  Iron was unable to rebut the presumption of obviousness with a showing "that the particular range is critical, generally by showing that the claimed range achieves unexpected results." 

            The district court did not comment favorably on the deep insight or flash of genius required to substitute 3 holes in a device, where 1, 2, and 4 holes had been used previously, but remarked that "[t]he obvious test…calls upon the court to just simply exercise common sense."

Alza Corporation and Janssen Pharmaceutica, Inc. v. Mylan Laboratories et. al.

Decided December 10, 2004
Judge Archer with Judges Newman and Dyk, Dyk dissenting in part

*          Claim terms may be construed from statements made during prosecution.

            Alza sued Mylan at the U.S. District Court for the District of Vermont for allegedly infringing patent claims to the transdermal (passing through the skin) administration of a form of fentanyl, a narcotic.  During trial, Judge William Sessions III further construed the claim term "skin permeable form" to exclude the citric acid salt of fentanyl, based on statements made during patent application prosecution to avoid prior art.  Under this definition, which replaced a narrower pH limitation, the court found infringement and Mylan appealed to the Federal Circuit.

            The Federal Circuit agreed with the district court's claim construction and affirmed the holdings.  The Federal Circuit pointed out that both sides confusingly argued claim construction under the old pre-trial definition, which the Federal Circuit did not adopt.  Judge Dyk wrote separately to disagree with a finding of no inequitable conduct because a declaration filed by the inventor during reexamination was knowingly misleading. 

            Claim construction often is crucial to infringement and invalidity determinations.  In this case, the parties agreed on the definition of a critical claim term, but "at trial the district court determined that this definition was not sufficiently precise to answer the questions relevant to the litigation" and subsequently modified the definition from a review of the intrinsic evidence. 

            A practitioner should remember that claim meaning can be altered during trial as well as after trial in an appeal.  The practitioner can provide clear and unambiguous statements to illuminate intended claim meaning in the specification and during prosecution to minimize such unexpected tilting of the patent claim landscape by a court. 

NTP v. Research in Motion, Ltd.
Decided December 14, 2004
Judge Linn with Judges Michel and Schall

*          A system having one part overseas infringes a U.S. patent if "the location of the    
            beneficial use and function of the whole operable system assembly is the United States."

            NTP sued Research in Motion ("RIM") at the U.S. District Court for the Eastern District of Virginia for allegedly infringing claims to systems and methods with its BlackBerry system wireless email system.  Following a jury verdict of direct, induced and contributory infringement by RIM on all asserted claims, judge James Spencer awarded NTP damages and an injunction.  RIM appealed to the Federal Circuit.

            The Federal Circuit concluded that the claim term "originating processor" had been interpreted incorrectly, vacated the judgment in part, and remanded to determine if the jury verdict should be set aside.  Most interestingly, the Federal Circuit confirmed the district court's finding that territoriality under section 271(a) of title 35 (requirements for a direct infringement claim) was met even though a claimed component (e-mail relay station) was located in Canada.  The Federal Circuit explained that a wireless system with a component overseas can infringe, because of "control of the equipment from the United States" and "beneficial use…within the United States."

            This complicated case involved 5 patents with 31 disputed claim terms, and led to a willfulness finding, award of attorney's fees and more than $53 million in damages.  But the Federal Circuit flipped the case back after more narrowly defining one term, from a fresh review of the written description and how "one skilled in the art would understand" that term.               
 

In Re: Daniel S. Fulton and James Huang
Decided December 2, 2004
Judge Michel with Judges Rader and Gajarsa

*          "A known or obvious composition does not become patentable simply because it has     been described as somewhat inferior."

            The PTO refused to allow a patent for Fulton's idea of a shoe sole having hexagonal studs facing the "fore-aft axis," because of obviousness over patents that show triangular, square and rectangular protrusions.  Fulton unsuccessfully argued that the prior art followed "a path that is in a divergent direction," which showed that his technology was inferior, and appealed to the Federal Circuit.

            The Federal Circuit affirmed, noting that teaching away requires that a cited art "criticize, discredit, or otherwise discourage the solution claimed."  Furthermore, motivation to make the combination "does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art" but can be "somewhat inferior to some other product for the same use."

            Shoe tread is an old and crowded art.  The applicant in this case argued that his novel tread was unobvious because so many similar designs were preferred, but these same facts were used to show motivation to combine instead.

Frank's Casing Crew & Rental Tools, Inc. v. Weatherford International, Inc.
Decided November 30, 2004
Judge Rader with Judges Friedman and Dyk

 

*          "The same term or phrase should be interpreted consistently where it appears in claims
            of common ancestry."

            Frank's sued Weatherford at the U.S. District Court for the Western District of Oklahoma for allegedly infringing claims to a system that inserts oil well pipe sections via a "means for selectively pivoting" a boom.  Judge Stephen Friot interpreted this means-for claim element to require "lift and boom plates" as disclosed in a preferred embodiment.  The judge granted Weatherford summary judgment of no infringement because Weatherford's device lacks both structures.  Frank's appealed to the Federal Circuit.

            The Federal Circuit agreed that the pivoting means requires both structural features, partly because "the patent includes claims with a yawing function," which requires the same two structures, and because "[i]f possible, this court construes claim terms 'in a manner that renders the patent internally consistent.'"

            This is another example of the need to be very careful when relying on means plus function claims.  A recited function in this format is limited to structures presented in the specification and that are clearly linked to the function.  Unfortunately for the patentee, this patent presented only one structural embodiment.  The accused infringer used a "distinct (different) structural" approach to perform "essentially the same function," and escaped infringement.

. 

Centricut, LLC (N.H.) and Centricut, (Del.) v. The Esab Group, Inc.

Decided December 6, 2004
Judge Dyk with Judges Michel and Clevenger

*          "[W]here the accused infringer offers expert testimony negating infringement, the            patentee cannot satisfy its burden of proof by relying only on (non experts)."

            Centricut sued Esab for declaratory judgment of non-infringement and patent invalidity at the U.S. District Court for the District of New Hampshire.  Esab counter sued for infringement of its claims to a metal cutting electrode "composed of a metallic material having a work function greater than" that of its holder.  Judge Steven McAuliffe held that the work function limitation was met by the accused device, found infringement and assessed damages in favor of Esab.  Centricut appealed and Esab cross appealed to the Federal Circuit.

            The Federal Circuit reversed because Esab supported none of its infringement theories by adequate expert testimony, and Centricut provided some testimony on the critical issue of whether the accused product met the "work function" limitation.  The Federal Circuit noted "that 'typically' expert testimony will be necessary in cases involving complex technology."  When only the defendant provides sufficient testimony in such cases, however, the plaintiff fails to meet its burden of proof.

            This case was very difficult for both sides because the claim term "work function" "is not an intrinsic property of a metal but rather is a property of specific surfaces under specific conditions."  New technology should be described using well known principles, or else new properties and new descriptive tests should be provided in a patent specification to avoid the technology black hole problem experienced here, where even the experts were stumped with an important claim term.

Campbell Plastics Engineering & Mfg., Inc. v. Les Brownlee, Acting Secretary of the Navy
Decided November 10, 2004
Judge Clevenger with Judges Michel and Dyk

*          Insufficient invention disclosure by a company to a government sponsor may trigger        the transfer of all invention rights to the government

            Campbell obtained an SBA grant from the U.S. Army to develop an air crew protective mask.  Although the contract required Campbell to disclose inventions to the Army within 2 months of written invention disclosures, by notification in yearly reports, and by filing a final project report, Campbell did not notify the Army formally of an invention until a patent had issued.  The Army subsequently demanded title to the invention and an Army appeals board affirmed.  Campbell appealed to the Federal Circuit. 

            The Federal Circuit affirmed that Campbell's invention rights should be transferred to the Army because Campbell did not properly report the invention to the Army sponsor, as required by the contract.

            This is a first case where the Federal Circuit "defined a contractor's obligation to disclose a 'subject invention' under the obligation created by the Bayh-Dole act."  Recipients of Federal money under this act can retain title to new technology developed from sponsored research but now must be more vigilant in following the reporting requirements of their contracts.

Vastfame Camera, Ltd. et al. v. I.T.C. and Fuji Photo Film Co., Ltd.

Decided October 7, 2004
Judge Linn with Judges Clevenger and Bryson

 
*          A repeat investigation by the International Trade Commission (I.T.C.) of imported         product under section 1337 has to include asserted patent invalidity defenses

 

            Previously, Fuji won an appeal to exclude the importation and sale of single use cameras as violating Fuji's U.S. patents.  In this new case, Fuji went back to the I.T.C. to exclude refurbished cameras from another party, VastFrame, which merely had been informed of and invited to join in the earlier litigation.  The I.T.C. responded to Fuji's complaint against Vastfame by opening a new investigation against Vastfame under 19 U.S.C. 1337.  In that investigation, the I.T.C. refused to consider Vastfame's invalidity defense (which were asserted by previous defendants) and found that Vastfame cameras infringed a Fuji patent.  Vastfame appealed to the Federal Circuit and Fuji joined as an intervenor.

            The Federal Circuit vacated this decision because the I.T.C. always must consider patent invalidity defenses in its investigations of imports under 1337(c).  The court noted that statute 1337(c) states that "[a]ll legal and equitable defenses may be presented in all cases."  Thus, even though Fuji previously had litigated invalidity of the same patent at the I.T.C., the statute requires de-novo review of such defenses in  a new case.

            The I.T.C. is a great forum to attack importers because of the I.T.C.'s rapid docket and often lower costs compared with regular court litigation.  However, I.T.C. administration agency law is specialized and such proceedings can differ procedurally from regular litigation.

Fuji Photo Film Co., Inc. v. I.T.C. and Achiever Industries, Ltd.
Decided October 7, 2004
Judge Bryson with Judges Clevenger and Linn

*          Omission of a word in a claim is not error when that word is used in another part          
            of the claim

            This is a second appeal from an I.T.C. decision on imported disposable cameras.  Fuji argued, among other things, that the I.T.C. erroneously interpreted the patent claim terms "opening" and "taking lens."  The Federal Circuit affirmed the I.T.C.'s claim interpretation of "opening" because "the patent consistently uses the term "opening" to refer to perforations in the camera's cover," and refused to give Fuji a broader claim scope.  The Federal Circuit also affirmed that the term "taking lens" lacks an associated "means" and rebuffed Fuji's assertion that "the absence of the word 'means' after 'taking lens' was an inadvertent omission," and that the court should "correct the omission through claim construction," particularly since "means" was used in other parts of the claim but was "conspicuously absent" in the contested element.  In this regard the Federal Circuit pointed out that if the omission of "means" were "an oversight, it should have been corrected with an amendment or other corrective measure." 

            In refusing Fuji's error arguments, The Federal Circuit explained that "[o]ther players in the marketplace are entitled to rely on the record made in the Patent Office in determining the meaning and scope of the patent" and "it is the patentee who must bear the cost of its failure to seek protection."  A patent practitioner should consider how statements made during prosecution can affect claim interpretation during litigation.

Miscellaneous No. 774 In Re. Violation of Rule 28(c)
Decided November 5, 2004
Judges Michel, Clevenger and Dyk

*          Filed briefs at the Federal Circuit must follow court rules or incur sanctions

            In an appeal at the Federal Circuit, the attorney for Esab Group filed a cross appeal Reply Brief that included extra arguments regarding the main appeal, which exceeded that needed for the response.  During oral argument, the Federal Circuit ordered the attorney to explain why sanctions should not be imposed for violating the court's rules regarding adding extra arguments.

            The attorney argued that the court rules are confusing, but the Federal Circuit retorted that the rule "is perfectly clear."  While not imposing sanctions this time, the court explained that "in future cases, serious violations of applicable rules, whether or not "inadvertent," will potentially subject counsel to sanctions.

            The Federal Circuit panel pointed out that "[t]he court must consider a large number of appeals each year" and needs cooperation by following the rules, to "conduct its work fairly and efficiently."  Perhaps the court's case load is increasing.           
       
 

C.R. Bard, Inc. and Davol Inc. v. United States Surgical Corp.
Decided October 29, 2004
Judge Michel with Judges Newman and Prost

*          A statement in a patent specification that describes the invention as a whole,       rather than just an embodiment can limit claim scope.

            Bard sued Surgical at the U.S. District Court for the District of Delaware for allegedly infringing claims to a mesh surgical plug that is "conformable" for repairing hernias.  Judge Kent Jordan construed this term to mean having "pre-formed pleats" and granted summary judgment of non-infringement because the accused plugs lacked a pleated structure.  Bard appealed to the Federal Circuit.

            A theme of this case was how a court can balance the use of customary meaning, dictionaries, specification statements and file history statements for interpreting common meaning claim terms.  The panel pointed out that the Federal Circuit will resolve this issue in an en banc rehearing of the Phillips v. AWH Corp. and that the intrinsic evidence for the present case provided ample support for reading the structural limitation of "pre-formed pleats" into the "conformable" plug claim.  In particular, the Federal Circuit noted that the patent specification states that "[t]he implant includes a pleated surface."

            This decision emphasized a holistic approach to claim construction and the primacy of statements by the patent applicant in the specification and during prosecution, over the use of dictionaries to construe claim terms, particularly for well known terms.  The patent drafter had stated that "the invention" included pleats.  A practitioner should not overly characterize "the" invention in a specification, as was done here.

Capo, Inc. v. Dioptics Medical Products, Inc.
Decided October 25, 2004
Judge Newman with Judges Lourie and Dyk

*          The existence of reasonable apprehension sufficient to commence a declaratory             judgment action is determined via an objective standard.

            Dioptics threatened Capo, a former long time seller of Dioptics' sunglasses with a "multi-million dollar lawsuit" after learning that Capo was designing its own line of sunglasses.  Capo responded with a declaratory judgment action against Dioptics at the U.S. District Court for the Middle District of Florida for a declaration of non-infringement of Dioptics' patents.  Judge Anne Conway declined to find that Capo had reasonable apprehension of a suit from Dioptics and dismissed Capo's suit.  Capo appealed to the Federal Circuit.

            The Federal Circuit vacated the decision and remanded because the district court erroneously used a subjective view that "the dispute was not 'sufficiently crystallized'"  because Dioptics had not seen Capo's product and would not file a compulsory counterclaim.  The Federal Circuit pointed out that in determining "the requisite objective apprehension…it is the objective words and actions of the patentee that are controlling" and found that Dioptics "minced no words, (and) left no doubt" that it might sue Capo.

            Dioptics apparently did not want this lawsuit but threatened Capo enough to bring suit.  A business manager often confronts competitors in a heated atmosphere and must be vigilant that he does not say something that objectively could create reasonable fear in the competitor of an imminent lawsuit. 

 

Caterpillar Inc. v. Sturman Industries, Inc. Oded E. Sturman and Carol K. Sturman
Decided October 28, 2004
Judge Prost with Judges Newman and Dyk

 

*          "Fraudulent inducement can serve to vitiate a release (from a contract) even       when the release language was unequivocal."

            Caterpillar and Sturman co-developed technology through a "Joint Development Agreement" ("JDA") for magnetic fuel injection switches.  During that effort, Sturman came up with a new switch idea, which Caterpillar rejected.  Subsequently Caterpillar induced Sturman to sign an amended JDA that paid Sturman cash for a "release of any claims" under the JDA.  Sturman "repeatedly sought to determine which intellectual property" was covered by the release and Caterpillar indicated that the release would cover two patent applications.  Caterpillar continued work on the idea, however, and both parties filed patent applications on the same subject, finally suing each other at the U.S. District Court for the Central District of Illinois over correction of inventorship, conversion and trade secret violations.  Judge Joe Billy McDade entered summary judgment in favor of Caterpillar on a fraudulent inducement claim regarding the release executed with Sturman, final judgment in favor of Sturman for inventorship of Sturman's patent application and in Caterpillar's favor on other claims.  Both sides appealed to the Federal Circuit.

            The Federal Circuit  reversed the summary judgment on fraudulent inducement because Sturman produced a contemporaneous note showing Sturman's understanding that the (settlement) JDA would "cover only the two patent applications and not" Sturman's new switch idea.  Much of this decision concerned a non-patent issue of whether the district court improperly allowed a juror, whose husband was a Caterpillar employee, to sit on the jury, which prompted the Federal Circuit to vacate the jury verdict.

            A theme of this case, is that joint technology development can be very messy.  For example, one side may not reveal the true extent of its exploitation of ideas from the other, and may discount the relationship, while negotiating a settlement to part ways.  License negotiators should be careful of providing all information in good faith, particularly when executing a final settlement agreement that disposes of all issues.  

On-Line Technologies, Inc. v. Bodenseewerk Perkin-Elmer GMBH et al.
Decided October 13, 2004
Judge Bryson with Judges Michel and Archer

*          An ambiguous claim term may be interpreted from statements in the       specification.

            On-line sued Boden at the U.S. District Court for the District of Connecticut, for allegedly infringing patent claims to an optical cell having "substantially spherical …surfaces."  Judge Janet Arterton granted summary judgment of noninfringement because Boden's cell used "toroidal" surfaces and On-line's patent specification described the claimed mirrors as merely "approaching toroidal."  On-line appealed to the Federal Circuit.

            The Federal Circuit noted that the contested claim term "has no precise and generally understood meaning (and therefore) we look to the intrinsic evidence, in this case the specification, for guidance."  The specification referred to toroidal surfaces in a preferred embodiment and a contrary statement "approaching toroidal" merely was an acknowledgement that "it is impossible" to make a perfectly toroidal surface.  The Federal Circuit concluded that the district court was mislead by extrinsic evidence and reversed, based on the new construction.

            Claim construction often dominates litigation and can provide surprising reversals at the appeals stage, particularly when claims are drafted poorly.  The Federal Circuit complained that "[b]ecause of the lack of precision in the language used to define (the invention), this case was made more difficult than it needed to be."

Arnold C. Bilstad et al. v. George Wakalopulos and Eduardo R. Urgiles
Decided October 7, 2004
Judge Linn with Judges Bryson and Plager

*          Written description support for a claim term may include a factual determination             of how a skilled artisan would understand the term.

            Bilstad provoked an interference proceeding with Wakalopulos's patent by copying claims that recite "manipulating objects in a plurality of directions."  The PTO held that Bilstad's specification, which described manipulation "in a small number of directions," lacked written description support because the copied claim term "plurality" means the "range from 2 to infinity," which is much broader.  Bilstad appealed to the Federal Circuit.

            The Federal Circuit affirmed the PTO's broad definition of plurality, which relied on multiple dictionary definitions, because "[i]f more than one dictionary definition is consistent with the use of the words in the intrinsic record, the claim term may be construed to encompass all consistent meanings."  Because the PTO "Board never truly discussed the understanding of persons skilled in the art and whether Bilstad's written description (showed) that Bilstad had possession of the claimed subject matter," this holding was reversed and the case remanded.

            This Federal Circuit panel, led by Judge Linn, used dictionary based strict procedure to construe claim terms broadly, consistent with the specification, and considered expert testimony to understand corresponding terms in the specification.  

Bernhardt, L.L.C. v. Collezione Europa USA, Inc.
Decided October 20, 2004
Judge Linn with Judges Mayer and Michel

*          To evaluate design patent infringement, claim comparison with prior art "requires satisfaction of both the ordinary observer and the point of novelty tests."

            Bernhardt sued Collezione for alleged infringement of design patents for furniture at the U.S. District Court for the Middle District of North Carolina.  Judge Frank Bullock, Jr. granted final judgment of invalidity based on prior use at a trade show.  Bernhardt appealed to the Federal Circuit.

            The Federal Circuit vacated and remanded, primarily because the district court failed to review invalidity and infringement based on "points of novelty of the patented designs."

            Infringement and prior art invalidity tests for design patents require comparisons under "both the 'ordinary observer' test and the 'point of novelty' test."  The Federal Circuit noted that "[t]he points of novelty relate to differences from prior designs, and are usually determinable based on the prosecution history."  A practitioner should fortify the prosecution history of design patents with such differences from prior designs in mind.         

The Toro Company v. White Consolidated Industries et al.
Decided September 13, 2004
Judge Linn with Judges Rader and Dyk

*          The “disclosure-dedication rule" blocks use of the doctrine of equivalents for      described but not claimed subject matter, regardless of intent or enablement.        

            Toro sued White at the U.S. District Court for the District of Minnesota for allegedly infringing patent claims to a vacuum blower having “an air inlet cover” with a “means for increasing the pressure.” After two remands from the Federal Circuit on claim construction issues, Judge Donovan Frank granted summary judgment of non-infringement under the doctrine of equivalents because the accused device uses a cover means that is briefly mentioned in the patent but not claimed.  Toro appealed again to the Federal Circuit.

            The Federal Circuit affirmed because a patentee cannot disclose an embodiment in the specification and later reclaim that embodiment under the doctrine of equivalents.  This is now called the “disclosure-dedication rule.”  The Federal Circuit clarified two conditions for using the rule.  One, “[t]he patentee’s subjective intent is irrelevant to determining whether unclaimed subject matter has been disclosed and therefore dedicated to the public.”  Two, this rule “does not impose a paragraph 112 requirement on the disclosed but unclaimed subject matter.”  Thus, although Toro did not intend to dedicate a particular embodiment and only mentioned the embodiment briefly, Toro cannot capture the embodiment via the doctrine of equivalents.

            A patent drafter should be careful of statements in a specification and during prosecution regarding related technology because, if a skilled artisan “can understand the unclaimed disclosed teaching upon reading the written description, the alternative matter disclosed has been dedicated to the public.”  To minimize this problem an applicant can keep an application pending to allow later claiming of a disclosed embodiment in a continuation application.

Knorr-Bremse Systeme Fuer Nutzfahrzeuge Gmbh, v. Dana Corporation et al.
Decided September 13, 2004

Judge Newman with Judges Mayer, Lourie, Clevenger, Rader,
Schall, Bryson, Gajarsa, Linn, Dyk and Prost

*          "[N]o adverse inference shall arise from invocation of the attorney-client and/or work    product privilege….or from failure to consult counsel."

            Knorr sued Dana at the U.S. District Court for the Eastern District of Virginia for allegedly infringing patent claims to air brakes.  Judge T.S. Ellis III found literal infringement.  The court also awarded Knorr attorney's fees, partly because Haldex admitted that it had consulted counsel about Knorr's patents, but refused to produce any opinion from counsel during litigation.  Citing Federal Circuit law, the court concluded "that such opinions were unfavorable" and found the non-disclosure to be evidence of willfulness.  Both sides appealed various issues to the Federal Circuit.

            The Federal Circuit overturned the cited law by holding that an accused infringer is not adversely affected when it refuses to reveal an opinion of counsel about an alleged infringement.  The court explained that conditions which prompted the rule have changed.  Before establishment of the Federal Circuit more than 20 years ago parties often had "flagrant disregard of presumptively valid patents."  An accused infringer therefore had an "affirmative duty to exercise due care to determine whether or not he is infringing, including the duty to seek and obtain competent legal advice from counsel……"  However, this "disrespect for law" has "significantly diminished" in later years. 

            A partial dissent from Judge Dyk pointed out that the majority opinion appears to reaffirm that an accused infringer "has an affirmative duty to exercise due care to determine whether or not he is infringing" and that this position is inconsistent with recent Supreme Court cases.  In this context, the majority opinion also held that  a substantial defense to infringement (such as an invalidity argument) by itself does not defeat liability for willful infringement.  Thus, obtaining an opinion from counsel may still play a role in patent infringement actions as part of a "totality of the circumstances" test to determine whether an infringer had a good faith belief that it was not infringing a patent that would be found invalid or unenforceable during litigation. 

Astrazeneca AB, et al. v. Mutual Pharmaceutical Company, Inc.
Decided September 30, 2004
Judge Michel with Judges Archer and Bryson

*          "[T]he specification may define claim terms 'by implication' such that the meaning may    be 'found in or ascertained by a reading of the patent documents.'"

            Astra sued Mutual at the U.S. District Court for the Eastern District of Pennsylvania for allegedly infringing claims to a pharmaceutical composition comprising a "non-ionic solubilizer" under 35 USC 271(e) after Mutual field an Abbreviated New Drug Application at the FDA.  Judge Michael Baylson construed the term "solubilizer" broadly to cover Mutual's accused non-ionic co-solvent, which is not a surfactant, and granted summary judgment of infringement.  Mutual appealed.

            The Federal Circuit construed "solubilizer" narrowly to only cover surfactants, and reversed the infringement holding.  The Federal Circuit noted that the specification limits this claim term via a statement that "the solubilizers suitable according to the invention are defined below (as)…surface active agents."  The specification further criticized co-solvents (used by the accused) as unacceptable.  Such statements in the specification, the Federal Circuit noted, explicitly narrow the claims.

            This case illustrates how comparative statements in a specification can narrow a claim term.  The Federal Circuit noted that it will "address broadly the law of claim construction" in an en banc rehearing of the Phillips v. AWH Corp. case.  In particular, the court should settle the relative roles of intrinsic evidence (statements in the specification and file history) and ordinary meaning (such as from treatises and dictionaries) for interpreting claims.

Juicy Whip, Inc. v. Orange Bang, Inc. et al.
Decided September 3, 2004
Judge Lourie with Judges Newman and Linn

 

*          A functional relationship between a patented device and products sold with it    allows use of the entire market rule for determining damages.         

            Juicy won a jury verdict and compensatory damages against Orange for infringing patent claims to an orange drink dispenser at the U.S. District Court for the Central District of California.  Judge Audrey Collins denied Juicy's claim for lost profits, including profits from sale of drink ingredients, and Juicy appealed this with other issues to the Federal Circuit.

            The Federal Circuit reversed the denial of lost profits and remanded because Juicy's unpatented orange drink syrup was related functionally to the patented dispensor and this link justified recovery of lost profits from the drink syrup.  The functional relationship was found by the fact that the "dispensor and the syrup are in fact analogous to parts of a single assembly or a complete machine, as the syrup functions together with the dispensor to product the visual appearance that is central" to the invention.  The entire market protected by the patent accordingly included both the patented dispenser and the unprotected syrup sales.

            Sometimes an invention involves multiple components such as a machine that works with a specific material, yet is protected by a patent that claims only the machine.  Damages from infringement may include sales of the other parts that may be deemed "central" to the invention.   

Monsanto Company, v. Kem L .Ralph
Decided September 7, 2004
Judge Lourie with Judges Gajarsa and Prost

*          A jury damages award "must be upheld unless the amount is grossly excessive or monstrous, clearly not supported by the evidence, or based only on speculation or guesswork."

            Ralph purchased genetically engineered seed from Monsanto under a "Technology Agreement" with Monsanto but was sued at the U.S. District Court for the Eastern District of Missouri after Ralph replanted harvested seeds and sold part for replanting by others, in violation of the contract.  A jury awarded Monsanto almost 3 million dollars in damages, or, in the alternative, no more under the liquidated damages clause of the contract and Ralph appealed to the Federal Circuit.

            The Federal Circuit vacated the liquidated damages award for breach of the contract because (as it found for the recent McFarley case) the calculation of damages for breach of contract "failed to distinguish between the various modes of breaching the contract."  However, the jury had awarded an even a higher alternative damage amount and the Federal Circuit found ample evidence that this verdict was not grossly excessive, based on Ralph's egregious conduct such as constant lying and hiding seed during discovery.

In Re. Carol F. Klopfenstein and John L.Brent Jr.
Decided August 18, 2004
Judge Prost with Judges Michel and Schall

*          A disclosure is a printed publication under 102(b) if it is "publically accessible"   according to a 4 part test.

            Carol applied for a patent to methods of making doubly extruded soybean fiber.  The PTO refused claims to the process because single extrusion processes that cause the desired effect (lowering serum cholesterol) were known and Carl had presented his double process results at a conference more than one year before his filing date.  Carl appealed to the Federal Circuit.

            The Federal Circuit affirmed because Carl's presentation of the invention at a research conference met a four factor test for public accessibility regarding i) the length of time of the disclosure; ii) the expertise of the audience; iii) expectations of whether the displayed material would be copied; and iv) ease with which the material displayed could have been copied.  Carl's display was deemed public because the display was presented 3 days to an audience with skill in the field of the invention, the viewers were not precluded from photography or from taking notes, and the relevant information was easily copied.

The Chamberlain Group, Inc., v. Skylink Technologies, Inc.
Decided August 31, 2004
Judge Gajarsa with Judges Linn and Prost

*          Violation of anti-trafficing provisions of the Digital Millennium Copyright Act      ("DMCA") requires a showing of unauthorized use of copyrighted software.

            Chamberlain sued Skylink at the U.S. District Court for the Northern District of Illinois, for alleged violation of inter alia, the anti-trafficing provision of the DMCA over Skylink's sales of a garage door transmitter that works with Chamberlain's receiver.  Judge Rebecca Pallmeyer granted summary judgment of no violation of the DMCA to Skylink, and Chamberlain appealed to the Federal Circuit.

            The Federal Circuit affirmed because "Chamberlain pled no connection between unauthorized use of its copyrighted software and Skylink's accused transmitter."  The Federal Circuit explained that the DMCA does not create any new rights but instead provides a new avenue for enforcing existing copyrights.  Chamberlain's customers were free to use their purchased software and Skylink's alternative transmitter did not violate a copyright of Chamberlain, which could not succeed with an action under copyright law.

Power MOSFET Technologies, L.L.C. et al. v. Siemens AG et al.
Decided August 17, 2004
Judge Gajarsa with Judges Michel and Prost

*          A court can construe claims during trial and a litigant should be prepared to argue          and provide evidence at any time based on an altered claim meaning.

            Power sued Siemens at the U.S. District Court for the Eastern District of Texas for allegedly infringing claims to power silicon devices having regions that "contact" first and second silicon interfaces.  A special master construed individual claim terms and Judge David Folsom construed these terms in context in response to claim construction arguments from both sides during the litigation.  Using a final claim construction determined at trial the court found no infringement and both sides appealed various issues to the Federal Circuit.

            The Federal Circuit affirmed.  The Federal Circuit noted that the special master had not construed "contacting" and "interface" in context of the claims as a whole, yet both sides continued to argue the combination of words even during trial.  Unfortunately, Power "chose not to present evidence on the doctrine of equivalents" during trial after the claim term meaning shifted, and could not obtain a new trial to present such evidence later.

            Theories of infringement and defenses depend on claim construction.  If claim meaning changes during trial, those theories should be reviewed and new ones, if needed, asserted promptly.

In Re. Wilhelm Elsner and In Re. Keith Zary
Decided August 16, 2004
Judge Lourie with Judges Clevenger and Bryson

 

*          Foreign sale of a plant variety can enable a printed publication that discloses the             plant, and create a 102(b) bar to a plant patent.

            The PTO refused plant patent claims to Elsner and Zary because in both cases (which are not related), the applicant had sold a plant overseas and had published a patent application more than 1 year before his U.S. plant patent application filing date.  The parties appealed their rejections to the Federal Circuit.

            The Federal Circuit vacated for determination of "the extent to which the foreign sales were known to the public" sufficiently to enable a skilled artisan to reproduce the plant.  The court concluded that "published applications, combined with the foreign sales of the plants, placed the claimed inventions in the possession of the public" and the combination therefore is 102(b) prior art to the requested plant patent claims.

            Generally, plant patenting follows the same rules that govern regular patents.  This case shows that the disclosure requirements of plants are analogous to micro-organisms in that public access (e.g. via a biological deposit) may enable an invention.  A foreign sale of a plant variety, in this context, however, "must not be an obscure, solitary occurrence that would go unnoticed by those skilled in the art."  Upon remand, the district court will determine whether the sale was sufficiently public to render it enabling. 

In Re. Alberto Lee Bigio
Decided August 24, 2004
Judge Rader with Judges Newman and Schall, Newman dissenting

 

*          Analogous prior art for obviousness may be selected via similarity of structure

            The PTO rejected Bigio's application for patent claims to a hair brush having "hair brush" bristles in an hourglass shape.  The PTO interpreted "hair brush" to include "brushes that may be used on other parts of animal bodies."  The PTO thus determined that toothbrush prior art is analogous for obviousness determinations and the Board of Patent Appeals and Interferences upheld an obviousness rejection from a combination of toothbrush references.  Bigio appealed to the Federal Circuit.

            The Federal Circuit affirmed, citing two alternate tests for determining the scope of analogous prior art.  One test is "whether the art is from the same field of endeavor, regardless of the problem addressed," which can include art that has "essentially the same function and structure," and the other is "whether the reference still is reasonably pertinent to the particular problem" addressed.  The court agreed with the PTO that the toothbrush art fell within the claim scope via the first test because the "claimed invention relates to the 'field of hand-held brushes,'" which includes toothbrushes having similar structure and function.  Judge Newman dissented with a structural observation that "teeth are not bodily hair."

            Obviousness often is asserted by a combination of references from an "analogous art."  A patent applicant sometimes can control the scope of the analogous art by defining the claims carefully in consideration of the art and should add narrow, dependent claims to avoid foreseeable analogous art.  

Home Diagnostics, Inc. v. Lifescan, Inc.
Decided August 31, 2004
Judge Rader with Judges Dyk and Prost

*          Prior art cited by a patentee that "sheds light on the meaning of a term …may indicate not only the meaning of the term…but also that the patentee intended to adopt that construction."

            Home sued Lifescan at the U.S. District Court for the Northern District of California for declaratory judgment that Home's glucose meter does not infringe Lifescan's patent.  Lifescan counterclaimed for infringement.  Judge James Ware construed the claim term "upon detection of a suitably stable endpoint" to mean "predetermined time period," and held no-infringement by Home's devices, which use variable time periods.  Lifescan appealed.

            The Federal Circuit reversed, because the district court erroneously had limited the claims to embodiments in the specification and "[a]bsent a clear disavowel or contrary definition in the specification or the prosecution history, the patentee is entitled to the full scope of its claim coverage."  The Federal Circuit also noted that "the prior art identified … gives additional reasons" for an expanded claim meaning."

            The Federal Circuit explained that prior art cited by a patentee "can have particular value as a guide to the proper construction of the term."  Patent drafters should be careful of how others use important claim terms that are not defined expressly, and litigators should consider art cited in a patent as fertile ground to construe claims.

Lighting World, Inc. v. Birchwood Lighting, Inc.
Decided September 3, 2004
Judge Bryson with Judges Plager and Linn

*          A claim term "used in common parlance" may "designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function."

            Lighting sued Birchwood at the U.S. District Court for the Central District of California for allegedly infringing claims that recite a light fixture "connector assembly."  Judge Percy Anderson construed "connector assembly" as a function limited to corresponding structure(s) described in the specification under 35 U.S.C. 112(6).  The court held no infringement based on this narrow definition.  Both sides appealed various issues.

            The Federal Circuit reversed, using a much broader term definition.  The Federal Circuit emphasized resort "to the dictionary to determine if a disputed term has achieved recognition as a noun denoting structure, even in the noun is derived from the function performed" and found that "the term 'connector' has a reasonably well-understood meaning …. in terms of the function it performs."

            This case teaches that a word derived from a functional term may describe a broad range of structures in the mechanical arts.  This acceptance of functional claim language continues the theme of the Linear Technology Corporation case (June 17), wherein broad structure for a well used functional electronics term was imputed from general knowledge in the field..

Xechem International, Inc. v. The University of Texas M.D. Anderson Cancer Center and Board of Regents of the University of Texas System
Judge Newman with Judges Gajarsa and Linn

*          A state's "Eleventh Amendment immunity (for patent litigation issues) may be abrogated only where the State provides no remedy, or only inadequate remedies…"

            Xechem entered into a Sponsored Laboratory Study Agreement with Texas and later disputed inventorship of a patent application that arose from the common project.  Xechem then sued Texas at the U.S. District Court for the Southern District of Texas over several allegations including incorrect inventorship.  However, Judge Ewing Werlein, Jr. granted Texas a dismissal after Texas asserted its Eleventh Amendment and state immunity from suit.  Xechem appealed to the Federal Circuit, arguing that Texas cannot rely on the Eleventh Amendment but is subject to suit in federal court for inventorship correction. 

            The Federal Circuit affirmed Texas's immunity because "claims concerning patent ownership do not create federal jurisdiction" and "ownership issues are generally the province of state courts…. (which) can apply federal law to issues properly before the state court." 

            Companies that enter agreements with state universities should be wary of the tilted playing field enjoyed by states that can invoke their 11th Amendment immunity to many litigation issues in federal courts.  The Federal Circuit in this case reviewed elements of the university contract and found that Texas did not give up this right by an express and clear waiver in the license.  A private company that negotiates a research agreement with a state university should try to obtain a "clear declaration" of the state's "intent to submit to federal jurisdiction" in the contract to avoid this problem.

Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc.
Decided August 11, 2004
Judge Clevenger with Judges Rader and Linn

*          "In the absence of modifiers, general descriptive terms are typically construed as            having their full meaning."

            Innova sued Safari at the U.S. District Court for the Middle District of Florida for alleged infringement of patent claims to an in-bottle water filter having a filter tube "operatively connected" to the cap.  Judge Steven Merryday construed the term "operably connected" to require that the filter be affixed "to the cap by some tenacious means of physical engagement" and granted summary judgment of non infringement because the accused device is reversibly attached by screwing.  Innova appealed to the Federal Circuit.

            The Federal Circuit held that the district court erroneously construed the term and reversed.  The Federal Circuit noted that "[n]either party asserts that the term "operably connected" is a technical term having a special meaning" and that the intrinsic evidence provides no evidence of "any clear and unmistakable disavowal" of claim scope.  Thus, the broad common meaning of this term rules.

            The Federal Circuit considered the patent abstract when interpreting the claims, noting that the abstract "reflects the applicant's attempt to disclose the broad array of means" for connecting the filter.  It seems that broad, sweeping statements in an abstract can help maintain broad claim meaning during litigation.

In Re. David Wallach et al.
Decided August 11, 2004
Judge Lourie with Judges Mayer and Gajarsa

 

*          "[D]isclosure of a partial structure without additional characterization of the        product may not be sufficient to evidence possession of the claimed invention."

            The PTO Board of Patent Appeals and Interferences affirmed the rejection of Wallach's claims to DNA that encodes a 190 amino acid protein because Wallach's patent application only described a 10 amino acid long portion of the protein sequence.  Wallach argued that the PTO already found that the written description requirement was met for his divisional application having an identical specification, which claimed protein encoded by the recited DNA, and appealed to the Federal Circuit.

            The Federal Circuit affirmed the PTO's decision.  The court noted that the patent specification described additional features of the protein, which allows identification of claimed protein in the corresponding patent application despite the description of only 5% of the protein sequence.  Unfortunately, the specification provided no functional description of the corresponding DNA structure.

            This case explores how "functional characteristics when coupled with a known or disclosed correlation between function and structure" may be relied on to claim a molecule with a partially known structure.  Discovers of partially sequenced genes often seek both protein claims and DNA claims, based on incomplete structural details.  A practitioner should include functional information for both types of chemicals to obtain claims when their structures are incompletely known.

 
Unitherm Food Systems, Inc. et al. v. Swift-Eckrich, Inc. (ConAgra)
Decided July 12, 2004
Judge Gajarsa with Judges Schall and Linn

 

*          A court must consider intrinsic evidence and only then turns to a dictionary if that evidence does not overcome a presumption of plain meaning.        

Unitherm sued ConAgra at the U.S. District Court for the Western District of Oklahoma for numerous alleged causes of action, including infringement of claims to a meat browning process to "develop a golden-brown color" and a Walker Process antitrust violation of the Sherman act.  Judge Robin Cauthron first considered intrinsic evidence and then resorted to a dictionary definition to construe the term "golden-brown color."  The court found the claims invalid and a jury found antitrust liability.  ConAgra appealed.

The Federal Circuit affirmed the claim construction and invalidity determinations.  The Federal Circuit emphasized that the district court properly "did not consult a dictionary prior to searching the intrinsic evidence for a definition" but first determined that the patentee "failed to specifically define the term 'golden brown' as a precursor to" a dictionary analysis. (emphasis in original).  Furthermore, since "the dictionary definition that the district court adopted did not contradict" a skilled artisan's understanding of the intrinsic evidence, that "construction is therefore presumptively correct."   The Federal Circuit also vacated the antitrust holding because Unitherm merely presented abstract technical substitutability arguments and “failed to present any economic evidence.”

This case presents a two step procedure for using dictionaries. A district court 1) first tries to interpret a claim from intrinsic evidence; and 2) then resorts to a dictionary if needed and must ensure that a chosen dictionary definition does not contradict an understanding of the intrinsic evidence by a skilled artisan.  A practitioner should include an explicit technical description of each important claim term if desired to avoid a dictionary adventure during litigation.

Novartis Pharmaceuticals Corporation et al. v. Abbott Laboratories
Decided July 8, 2004
Judge Prost with Judges Bryson and Gajarsa

*          The doctrine of equivalents "cannot embrace a structure that is specifically          excluded from the scope of the claims.”

Novartis sued Abbott at the U.S. District Court for the District of Delaware for allegedly infringing patent claims to a pharmaceutical comprising a "lipophilic [i.e. oil] phase component."  Judge Joseph Farnan, Jr. construed this phrase as not including a surfactant [i.e. soap or detergent] because the patent specification explained that "[s]uitable components for use as lipophilic phase include any solvent….devoid of surfactant function."  The court determined that Abbott's detergent was not equivalent to a lipophilic component, and granted summary judgment of non-infringement. 

The Federal Circuit reversed the claim construction but affirmed noninfringement because intrinsic evidence indicated that the lipophilic phase had to include more than a surfactant/detergent, and Abbott had no other lipophilic component.  The Federal Circuit explained that when the substitution of one feature for another "places it outside the scope of the recited claim element, the doctrine of equivalents may not be applied."  Judge Bryson dissented because of a different interpretation of the chemical intrinsic evidence.

This case was complicated by difficult interpretations of loosely defined chemical terms.  A practitioner should be as clear as possible when describing important claim terms in a specification.

Typeright Keyboard Corporation v. Microsoft Corporation
Decided July 6, 2004
Judge Dyk with Judges Lourie and Schall

*          "[S]ummary judgment is not appropriate when the opposing party offers specific            facts that call into question the credibility of the movant's witnesses."

Typeright sued Microsoft at the U.S. District Court for the Southern District of California, for allegedly infringing Typeright's V-shaped keyboard patents.  Judge Irma Gonzalez granted Microsoft summary judgment of invalidity based on Microsoft's showing of undated pictures of a V-shaped keyboard that a paid consultant had found in a file.  Typeright appealed the summary judgment and Microsoft cross-appealed the dismissal of its non-infringement claims.

The Federal Circuit reversed the invalidity summary judgment because "where an issue as to material fact cannot be resolved without observation of the demeanor of witnesses in order to evaluate their credibility, summary judgment is not appropriate."

The faulty summary judgment was based on several questionable factual issues, including the "somewhat tentative" nature of the testimony by Microsoft's hired experts.  Another persuasive fact was that the European company that generated the alleged prior art had filed a patent application for that “prior” art well after Typeright filed its own patent application. 

Marlane and Timothy Searfoss v. Pioneer Consolidated Corporation
Decided July 6, 2004
Judge Michel with Judges Newman and Schall

*          When dictionaries offer different definitions, one definition may be chosen based            on consistent usage in the specification and prosecution history.

Searfoss sued Pioneer at the U.S. District Court for the Eastern District of Michigan for allegedly infringing patent claims to truck covers having an "actuation means" for "connecting" the cover.  Judge Robert Cleland granted summary judgment of non-infringement and Searfoss appealed.

 The Federal Circuit affirmed, in an opinion that centered on the meaning of the word “connecting.”  The accused truck cover used an indirect connection.  The Federal Circuit construed “connecting” to mean a direct mechanical connection because competing dictionaries offered different meanings “and the district court did as it must, and consulted the written description,” which described only direct connections.  The court found no infringement under the doctrine of equivalents because to extend the meaning to cover an indirect connection “would in effect, completely vitiate the connection function.”

A narrower claim meaning was arrived at in this case because dictionary definitions were inconsistent and statements in the specification were used to clear up the ambiguity.  A practitioner should be careful to use broad descriptions.

AFG Industries, Inc. and Asahi Glass Company, Ltd. v. Cardinal IG Company, Inc. and Andersen Windows, Inc.
Decided July 13, 2004
Judge Rader with Judges Michel and Newman, Newman dissenting

*          The definition of a claimed structure normally "is not affected by the method of   creation of that structure."

AFG sued Cardinal at the U.S. District Court for the Eastern District of Tennessee for allegedly infringing claims to an insulating glass coated with three layers of zinc sandwiched between silver layers.  Judge Thomas Hull granted Cardinal summary judgment of noninfringement because Cardinal’s method deposits multiple layers of zinc without silver.  AFG appealed.

This is a third appeal in this case concerning construction of the term "layer," and the Federal Circuit again reversed and remanded.  The Federal Circuit noted that the multiply deposited zinc really formed one single layer and not three contiguous layers, and "the determination of whether a particular structure is a 'layer' within the meaning of the claim is not affected by the method of creation of that structure."  Judge Newman dissented  with a view that the district court had interpreted the term properly via three previous markman hearings.

This is another example of how a simple English word used innocently to describe a complex technical process causes havoc during litigation.  A practitioner should utilize her literary freedom to create new terms when describing new, complex procedures/structure, or at least describe precise tests and/or descriptions of the advanced technology instead of relying on very simple English words.

Milton D. Goldenberg and Immunomedics, Inc., v. Cytogen, Inc. and C.R. Bard, Inc.
Decided June 23, 2004
Judge Gajarsa with Judges Schall and Prost, Judge Prost dissenting in part

*          A claim term that "has no accepted meaning to one of ordinary skill in the art" is             construed "only as broadly as is provided for by the patent itself."

            Goldenberg sued Cytogen at the U.S. District Court for the District of New Jersey for allegedly infringing patent claims to a tumor detection method using antibodies that bind to a "marker substance" from tumor cells.  Judge Anne Thompson granted Cytogen summary judgment of noninfringement because Cytogen's antibody binds the inside portion of a protein that exists both inside and outside a cell at the same time.  Goldenberg appealed.

            The Federal Circuit affirmed the claim construction because Goldenberg had emphasized during prosecution that the marker substance was from "inside" the tumor cell.  Unfortunately, the term, "intracellular marker substance," was "unknown to those of ordinary skill in the art at the time the patent application was filed," yet was not clearly defined in the specification.  The Federal Circuit pointed out that "[i]t thus fell to the applicants, as a duty, to provide a precise definition…"  The Federal Circuit also reversed summary judgment of infringement under the doctrine of equivalents because Goldenberg's expert testified that Cytogen’s transmembrane proteins are a “grey category” of protein that might be equivalent.  Judge Prost dissented with a view that Goldenberg's new claim term should be interpreted more broadly.

            Without a precise definition, ambiguity of a new claim term seemed to work against the patentee.  Claim terms that consist of a) common words having multiple common meanings, or b) unfamiliar language should be defined clearly in a specification to avoid a literary adventure during litigation.     

Honeywell International Inc. et al. v. Hamilton Sundstrand Corporation
Decided June 2, 2004
En Banc, Judge Dyk writing for the majority, Newman dissenting in part

*          "[R]ewriting of dependent claims into independent form coupled with cancellation of the original independent claims creates a presumption of prosecution history estoppel"

During prosecution of patent claims to aircraft auxiliary power units, Honeywell cancelled independent claims and rewrote narrower dependent claims as independent claims.  After issuance of the re-written claims, Honeywell sued Hamilton at the U.S. District Court for the District of Delaware for alleged patent infringement.  A jury found infringement under the doctrine of equivalents and Hamilton appealed to the Federal Circuit.

This case concerns an important doctrine of equivalents issue that the Federal Circuit considered en banc.  The Federal Circuit held that Honeywell's cancellation and re-writing of dependent claims into independent form during prosecution created a presumption of prosecution history estoppel, and vacated the district court holding.  The lower court erroneously had reasoned that "the elements at issue were not amended" and failed to find the estoppel.  However, the Federal Circuit emphasized that "the proper focus is whether the amendment narrows the overall scope of the claimed subject matter."  Judge Newman dissented on this issue because rewriting "a dependent claim in independent form, when required only because the antecedent independent claim was cancelled" should not be deemed "a narrowing amendment as to all elements and limitations of the restated claim" and "is contrary to statute."

For an important invention that spawns multiple patents, a practitioner may consider going after narrower claims in a first application to avoid prosecution history estoppel for those claims and assert broader claims later.

The Nautilus Group, Inc. v. Icon Health and Fitness, Inc.
Decided June 21, 2004
Judge Schall with Judges Michel and Prost

*          Trademark likelihood of confusion may be "premised on a combination of          identical functionality of products and only somewhat similar marks"

Nautilus sued Icon for alleged patent and trademark infringement at the U.S. District Court for the Western District of Washington.  Judge Marsha Pechman granted Nautilus a preliminary injunction barring Icon's use of the "Crossbar" trademark for its exercise equipment based on a likelihood of confusion over Nautilus's "Bowflex" trademark.  Icon appealed to the Federal Circuit.

The Federal Circuit reviewed the factors for establishing likelihood of confusion according to ninth circuit law and affirmed.  A dominant factor was the fact that the competing products were "virtually interchangeable" and therefore "less similarity between the marks was necessary" to show likeliness of consumer confusion.  A second major point was "that Nautilus had invested significantly in the brand name" and the strength of Nautilus's registered mark weighed in its favor.

Trademark law favors trademarks that are registered early and promoted heavily.  The Federal Circuit in this case noted that Nautilus "has invested in excess of $233 million in promotion" (versus Icon's expenditure of $13 million) and that Icon deliberately "chose to incorporate the term 'bow' (in its trademark) in an attempt to capture some of the market of BowFlex." 

Competitive Technologies, Inc. and Board of Trustees of the
University of Illinois v. Fujitsu Limited et al.
Decided June 30, 2004
Judge Dyk with Judges Mayer and Gajarsa

 

*          A state may appeal a conclusive district court denial of 11th amendment immunity          that resolves an issue separate from the merits of the action

The Board of Trustees of the University of Illinois ("University") sued Futitsu for alleged patent infringement at the U.S. District Court for the Northern District of California and requested dismissal of certain counterclaims on the basis of Eleventh Amendment sovereign immunity grounds.  Judge Joseph Spero denied the motion, stating that "it may be necessary to revisit the question," and the University appealed.

The Federal Circuit dismissed the appeal for lack of jurisdiction.  The Federal Circuit explained that, on the one hand, appeals of Eleventh Amendment immunity decisions enjoy an exception from the final judgement rule, but on the other hand, this exemption is limited to decisions that a) "conclusively determine the disputed question; 2) resolve an important issue completely separate from the merits of the action, and 3) [that are] effectively unreviewable on appeal from a final judgment."  The Federal Circuit found that 1) was not met because the district court had not settled the issue.

State universities often maximize income from their patent property and rely on their "state agency" status to avoid certain issues during litigation.

Ron Nystrom v. Trex Company, Inc. and Trex Company, LLC
Decided June 28, 2004
Judge Linn with Judges Mayer and Gajarsa

*          Claim construction may be informed by alternative meanings from different         dictionaries

 Nystrom sued Trex at the U.S.  District Court for the Eastern District of Virginia for alleged infringement of patent claims to exterior floor "board" having "a convex top surface which sheds water."  Judge Jerome Friedman granted summary judgment of non-infringement because the claim term "board" is limited to "wood cut from a log" and the accused decking planks are made from wood fiber/plastic composite.  The court also found invalidity based on prior art patent drawings.  Nystrom appealed to the Federal Circuit.

The Federal Circuit construed the term "board" broadly to include "a rigid material" and reversed the non-infringement finding.  The majority decision stressed that "claim terms may be construed to encompass all dictionary definitions not inconsistent with the intrinsic record" and cited a definition that was supported by only some dictionaries.  The majority opinion also reversed the invalidity holding based on a previous patent drawing, because the district court erroneously had assumed that the patent drawings were in proper scale. The patent did not recite the relative scale of dimensions of its figures.  The figures could not be relied on because "[a]bsent any written description in the specification of quantitative values, arguments based on measurement of a drawing are of little value."  Judge Gajarsa dissented on the claim interpretation, complaining that the majority "establishes a duel between dictionary definitions and then selects one of the various definitions" while discounting the written description and prosecution history.

The Federal Circuit is split between judges that seem to interpret claims more broadly with dictionaries, (even using more than one dictionary as needed) and those who rely more on statements in the intrinsic record.  To counter this ambiguity, a practitioner might consider drafting broad dictionary definitions for a patent specification and stating such definitions during prosecution where appropriate and when safe to do so.

Metabolite Laboratories, Inc. and Competitive Technologies, Inc. v.
Laboratory Corporation of America Holdings
Decided June 8, 2004
Judge Rader with Judges Friedman and Schall, Shall dissenting in part

*          A stated purpose in a claim preamble aids claim interpretation when the intended           use was relied on during prosecution

Metabolite sued Laboratory at the U.S. District Court for the District of Colorado for allegedly infringing patent claims to "[a] method for detecting a deficiency of cobalamin or folate….(by) assaying a body fluid for an elevated level of total homosteine and correlating … with a deficiency of cobalamine or folate.  A jury found indirect infringement and Judge Zita Weinshienk awarded Metabolite more than $5,000,000.   Laboratory appealed.

The CAFC affirmed.  The main issue in this case was interpretation of the claim term "correlating."  The Federal Circuit majority decision stressed that "the best indicator of claim meaning is its usage in context as understood by one of skill in the art at the time of invention."  However, the majority noted that the intended use recited in the claim preamble overcame a prior art rejection during prosecution, which thus "ties the preamble directly to the correlating step."  The Federal Circuit used the preamble to conclude that no further act (other than a mere appreciation of correlation) was needed to infringe the claim.  Judge Schall partly dissented with a view that "correlating" has a narrower meaning wherein infringement only occurs if an actual high measurement is found, and thus the calculated damages should include a much smaller number of infringements. 

Claim construction is often dispositive in litigation and a practitioner should be mindful that statements made during prosecution impart meaning to the claims.

Intirtool, Ltd. v. Texar Corporation
Decided May 10, 2004
Judge Linn with Judges Lourie and Schall

*          A claim preamble is not a limitation if the claim body "describes a structurally     complete invention such that deletion of the preamble phrase" has no effect.

Intirtool sold its patented tools to Texar until Texar asked for a price reduction in view of another supplier of similar tools covered by Intirtool's patent.  Seven years later Intirtool sued Texar for infringing Intirtool's patent by Texar's sale of copied product, at the U.S. District Court for the Eastern District of Texas.  Judge Paul Brown found that the claim preamble "for simultaneously punching and connecting overlapping sheet metal" was a claim limitation but was not supported by the specification, and invalidated the patent.  Furthermore, Intirtool was barred from obtaining damages by the equitable doctrine of latches (more than 6 years delay to filing of lawsuit).  Intirtool appealed to the Federal Circuit.

A Federal Circuit panel found that the preamble merely recited an intended purpose or benefit, and reversed the holding of invalidity on written description grounds because "the preamble adds nothing to this highly detailed claim."  The almost 7 years delay between the end of Intirtool's relationship with Texar and commencement of the lawsuit was not latches because Intirtool did not "have actual or constructive knowledge of an act of infringement" and the Federal Circuit reversed this holding as well.

A practitioner should avoid adding unnecessary words to patent claims.  In this case, a defendant convinced a district court that an unnecessary recitation of a benefit within a claim invalidated the claim.

The Arnold Partnership v. Jon Dudas and Nicholas P. Godici
Decided March 24, 2004
Judge Rader with Judges Bryson and Dyk

*          Patent term extension may not be available under 35 USC 156(c) for combination         drug claims to previously approved active ingredients.

Arnold unsuccessfully applied to the PTO for a patent term extension of Arnold's patent, which covered a combination of hydrocodone and ibubrofen.  When the PTO refused, Arnold filed suit in the U.S. District Court for the Eastern District of Virginia.  Judge Leonie Brinkema agreed with the PTO's interpretation that 35 U.S.C. 156(a)(5)(A) allows patent extension only for "the first permitted commercial marketing of use of the product…."  Because both ibuprofen and hydrocodone had received approval for commercial marketing, no patent term extension was possible, even if the combination had not been approved before.  Arnold appealed to the Federal Circuit.

The Federal Circuit carefully reviewed the relevant statutory language and affirmed.  The court admitted that "its reading of (the statute) does not perfectly overlay with FDA's practices and regulations" but that the court "must follow the directions of the law, not its own conceptions of the best way to make the law achieve certain policy objectives."  It may seem unfair to deny patent term extension to combinations of previously approved drugs, but Congress has to change the law to allow term extension for this category of patents.

Jordan Spencer Jacobs, v. Nintendo of America, Inc.
Decided May 28, 2004
Judge Bryson with Judges Michel and Linn

*          A license to a manufacturer for sale of a device provides an implied license to    OEM purchasers of the device.

Jacobs sued various hardware makers at the U.S. District Court for the Middle District of Florida for allegedly infringing Jacobs' patent claims to a video game controller that responds to acceleration movement.  Jacobs also sued Analog on alleged inducement and contributory infringement grounds for making an accelerometer sensor that the other companies built into the game controller.  Jacobs settled its case with Analog via licensing to Analog "the right to make, use, sell …..accelerometers, for use in tilt-sensitive control boxes."  Jacobs then sued Nintendo, Analog's customer.  Judge Gregory Presnell granted summary judgment of non-infringement based on the settlement agreement with Analog.  Jacobs appealed.

The Federal Circuit affirmed because the license agreement "specifically authorized the sale of those accelerometers for infringing uses."  This opinion stressed that the settlement agreement permitted the use of the device, and "a party may not assign a right, receive consideration for it, and then take steps that would render the right commercially useless."

Microchip Technology Incorporated v. U.S. Philips Corporation et al.
Decided May 13, 2004
Judge Dyk with Judges Michel and Lourie

*          "Unless the parties (to a contract) clearly and unmistakably provide otherwise, the question of whether the parties agreed to arbitrate is to be decided by the court."

Philips granted GI a license to Philips' patents, which included a mandatory arbitration clause in the event of a dispute.  GI then "spun off" Microchip from a wholly owned subsidiary.  During patent litigation with GI at the U.S. District Court for the District of Arizona, Microchip relied on its relationship with GI to argue that Microchip had a license to the litigated patents.  While denying that Microchip was a party to the contract, Philips started an arbitration against Microchip in the International Court of Arbitration.  Judge Paul Rosenblatt of the Arizona court granted Microchip a stay of the arbitration until the court could determine the parties to the license agreement and Philips appealed.

The Federal Circuit affirmed the lower court's decision to determine the existence of an arbitration agreement between Philips and Microchip before allowing arbitration.  Citing several Supreme Court cases, the Federal Circuit panel pointed out that "the question of whether a party is bound by an agreement containing an arbitration provision is a 'threshold question' for the court (and not an arbitrator) to decide." 

Contracts often include agreements to submit disputes to arbitration.  However, the sale or transfer of assets, including license rights, from one company to a subsidiary or other party can create ambiguity regarding the enforcement of an arbitration provision.  As a result, litigation at a court may be needed anyway.  To combat this, a license drafter should consider specifying such possible transfers of license rights when writing a mandatory arbitration clause in a contract.

Knoll Pharmaceutical Company, Inc. et al. v. Teva Pharmaceuticals USA, Inc.
Decided May 19, 2004
Judge Newman with Judges Archer and Prost

*          Evidence of unexpected results for an unobviousness determination can be         generated and relied on after grant of a patent.

            Knoll sued Teva at the U.S. District Court for the Northern District of Illinois for alleged patent infringement under 35 USC 271(e)(2) after Teva filed a New Drug Application at the Food and Drug Administration for a drug combination.  Judge John Darrah granted Teva summary judgment of invalidity on obviousness grounds, despite Teva's strong showing of unexpected synergistic results from the combination.  Knoll appealed to the Federal Circuit.

            A Federal Circuit panel reversed because although prior art suggested combining an opioid with an analgesic, Knoll's patent specification refers to unexpected results of combining the specific pharmaceuticals hydrocodone and ibuprofen.  Knoll also relied on unexpected results found by testing after obtaining the patent.  The Federal Circuit explained that "[e]vidence obtained after the patent grant is not excluded from consideration, for understanding of the full range of an invention is not always achieved at the time of filing the patent application."

            It is helpful to assert at least some unexpected results in a patent specification.  Stronger, more persuasive evidence of unexpected results may be generated later, such as during litigation.

In Re American Academy of Science Tech Center
Decided May 13, 2004
Judge Bryson with Judges Rader and Gajarsa

*          "During examination, claims are to be given their broadest reasonable
            interpretation consistent with the specification…"

            American obtained a patent with claims to "general purpose user computers" that are connected to a "data center computer."  American sued Novell for alleged patent infringement, which prompted Novell to request reexamination of American's patent, staying the litigation.  The PTO rejected all claims on prior art grounds in view of the fact that "user computer" broadly encompasses a variety of computers.  American appealed this decision to the Federal Circuit, arguing that this claim term is limited to single person use computers.

            The Federal Circuit, without resort to a dictionary, interpreted the term "user computer" broadly from a description in the specification that "distinguishes a user computer from a data center computer (only) in terms of function."  The court noted that the PTO "is required to use a different (broader) standard for construing claims than that used by …. judges who, post-issuance, operate under the assumption the patent is valid," and affirmed the prior art rejection. 

            The patentee in this case locked itself into an overly broad claim scope from statements in the specification and did not have suitable additional, narrower terms in dependent claims.  Another point is that a defendant in litigation successfully relied on reexamination to invalidate a software patent and remove the lawsuit.  Sending the dispute to the PTO may favor attempts to invalidate a patent on prior art grounds since the PTO, with the Federal Circuit's approval, may construe claims more broadly than a judge.

Sierra Applied Sciences, Inc. v. Advanced Energy Industries, Inc.
Decided April 13, 2004
Judge Michel with Judges Gajarsa and Dyk

*          A promise not to sue must have a breadth equal to earlier threats to remove a
            reasonable apprehension of suit.

            Sierra sued Advanced at the U.S. District Court for the District of Colorado for summary judgment of non-infringement or invalidity of Advanced's patent claim to a power supply.  Judge Lewis Babcock dismissed the suit for lack of a case or controversy.  Sierra appealed to the Federal Circuit.

            This case was complicated by the fact that Sierra had made and used in house, three different devices at different states of completion, and by the fact that Advance promise not to sue Sierra for in-house use of Advance's invention.  The Federal Circuit found the three devices technologically distinct but faulted the lower court for not distinguishing between two of them.  The Federal Circuit argued that a "court must carefully calibrate the analysis to each of the products….(or) risk issuing an advisory opinion on one product…"  Finding that Advanced's promise not to sue for in house use of one device did not extend to infringing acts outside, the Federal Circuit found that Sierra had a reasonable apprehension of suit with respect to that product, and reversed that portion of the decision.

            Patentees can sue others for who use patented inventions in research and development.  Resolution of such cases may require sophisticated technical analysis.  In this case, the Federal Circuit remanded to the district court with respect to one research device for further fact finding to determine whether the device actually carried out an infringing act before it blew up.

Elan Corporation, PLC, v. Andrx Pharmaceuticals, Inc.
Decided May 5, 2004
Judge Lourie with Judges Michel and Dyk

*          "An offer to enter into a license under a patent for future sale of the invention …             when and if it has been developed ….is not an offer to sell."

Elan offered to license its once-daily drug formulation to other companies that would actively participate in planning of clinical studies, with a price contingent on future acts.  One year later, Elan filed a patent application and obtained a patent.  Andrx then filed an abbreviated New Drug Application, prompting Elan to file suit for patent infringement at the U.S. District Court for the Southern District of Florida.  Judge Adalberto Jordan held that Elan's offer to license was a commercial offer of a product that was ready for patenting more than one year prior to filing the patent application, and found the patent invalid under the on-sale bar of 102(b).  Elan appealed and Andrx cross appealed.

The Federal Circuit reversed because Elan's license offer was not a commercial offer, but merely allowed the offeree "the opportunity to become its [Elan's] partner in the clinical testing and eventual marketing of such tablets at some indefinite point in the future."  In particular, the offer letter "lacked any mention of quantities, time of delivery, place of delivery, or product specifications beyond (a) general statement." 

An invention rights holder may license an invention more than one prior to filing a relevant patent application.  This case shows that an offer that includes development terms and costs is not an offer to sell under 102(b) but is instead an offer to license the invention itself, which does not prompt the on sale bar of 102(b).

           
Unova, Inc. v. Acer Incorporated et al.
Decided March 31, 2004
Judge Lourie with Judges Clevenger and Schall

*          Under California law,  "the mutual intention of the parties at the time the contract            is formed governs interpretation."

Unova granted Compaq "and its parents" a license for certain "smart battery" technology under Unova's patents.  Later, HP acquired Compaq and became Compaq's parent.  Unova then sued HP at the U.S. District Court for the Central District of California for infringing its smart battery patents.  Judge Edward Rafeedie granted summary judgement to HP that the earlier settlement agreement covers HP.  Unova appealed to the Federal Circuit.

A Federal Circuit panel pointed out that the settlement agreement "release provision is written in the present tense" and "most naturally does not refer to Compaq's future parents," and reversed. 

The panel explained that contract interpretation in this case may be "confirmed by - the structure of the settlement agreement as a whole" regarding intent of the parties. 

A contract should indicate the intent of the parties, particularly when the contract may affect a third party (such as a parent, subsidiary or purchaser).

Edward H. Phillips v. AWH Corporation et al.
Decided April 8, 2004
Judge Dyk with Judges Newman and Lourie

*          "[A]n adjectival qualification …further narrows the scope of those structures      covered by the claim and makes the term more definite."

 Philips sued AWH at the U.S. District Court for the District of Colorado for alledged infringement of patent claims to "building modules…comprising internal steel baffles…..."  Judge Marcia Krieger construed the term "baffle" as part of a means plus function claim, which limits the claim to structure in the specification.  Because AWH's device used 90 degree angle baffles and the specification only showed oblique angle baffle structures, the court granted summary judgment of non-infringement.  Philips appealed to the Federal Circuit. 

The Federal Circuit found that "baffle" was not in means plus function language but found that the specification narrowly limited the claim to oblique baffles, which provide impact resistance as repeatedly emphasized in the specification and during prosecution.  The court therefore affirmed, based on this alternative narrow interpretation.  Judge Dyk dissented, arguing that the court improperly limited the claims to the preferred embodiment. 

The majority opinion relied on the "context of the entirety of (the) invention" to limit the claims to a definition that fit the emphasized "impact resistance" in the specification.  The accused device in contrast, employs a baffle geometry (at 90 degrees/perpendicular) that was not described in the specification and that did not provide the exhorted advantages.  A practitioner should not define an invention by overly strong laudatory statements directed to a specific function, as a court may adopt such characterization to narrow claim scope.

Crown Operations International, Ltd. and Marshall H. Krone v. Solutia, Inc.
Decided May 13, 2004
Judge Gajarsa with Judges Lourie and Clevenger

*          A patent with claims that require software to understand should include a           description of that software to meet the enablement requirement.

Crown sued Solutia for declaratory judgment of invalidity for two patents that claim multiplayer glass at the U.S. District Court for the Western District of Wisconsin.  Judge John Shabaz denied declaratory judgment relief of invalidity on prior art, lack of enablement and written description grounds and Crown appealed to the Federal Circuit.

The Federal Circuit affirmed in part but found that a genuine issue of material fact exists with respect to the non-enablement holding.  The court found that the patents, which claim glass with films having particular 2% optical reflectance characteristics, apparently do not describe clearly the software or method for determining this reflectance.  The Federal Circuit remanded for additional proceedings on this point.  The court noted that "[a] specification that claims an invention requiring implementation through computer software but fails to set forth the details of computer programming may present issues of whether the experimentation required to write the programming is reasonable or unreasonable."

Many technical procedures involved in working an invention require software.  A practitioner should add algorithms used for necessary but unpublished software to a patent specification or risk subsequent invalidation on enablement grounds.

Housey Pharmaceuticals, Inc. v. Astrazeneca UK Ltd. et al.
Decided May 7, 2004
Judge Clevenger with Judges Mayer and Newman, Newman dissenting

*          Claim terms may be interpreted broadly if the patentee did not "clearly disavow"            the "plain meaning."

Housey sued Astra at the U.S. District Court for the District of Delaware for allegedly infringing claim to methods of screening chemicals that effect (inhibit or activate) particular proteins in cells.  Judge Sue Robinson construed the terms "inhibitor" and "activator" broadly, to include both direct and indirect effects, and ordered a final judgment of invalidity and non-infringement based on the broad definitions.  Both sides appealed various issues to the Federal Circuit.

A Federal Circuit panel majority affirmed, because ample evidence from the specification and prosecution history indicated a broad meaning, which overlaps significant prior art.  Judge Newman, in a long dissent, argued a narrower construction, by focusing on how a skilled artisan might construe the claims and by depending less on "general meaning."

The patentee in this case may have fared better if the patentee had added narrow dependent claims that recite direct binding instead of trying to shoe horn the broad claims into a narrow meaning during litigation.  The filing fee for additional dependent claims is low and such claims can provide significant protection at nominal cost. 
    
Smithkline Beecham Corporation and Beecham Group, P.L.C.
v. Apotex Corp., Apotex, Inc. and Torpharm, Inc.
Decided April 23, 2004
Judge Rader with Judges Bryson and Gajarsa, Gajarsa concurring separately

*          The experimental use exemption to patent infringement is limited to the testing of claimed or inherent features of an invention.

Smithkline sued Apotex at the U.S. District Court for the Northern District of Illinois under 35 USC 271(e)(2) on the basis that Apotex's proposed pharmaceutical would infringe Smithkline's patent, which broadly claims the pharmaceutical compound itself.  Judge Richard Posner held that the patent claim is limited to commercial quantities, since trace or undetectable amounts of the compound must have been produced spontaneously for many years.  The court found no infringement by Apotex's proposed drug, which would not contain commercial quantities of the compound.  The court also held that Smithkline's clinical trials, conducted more than one year prior to its filing date, met the experimental use exemption and did not anticipate the claims.  Smithkline appealed to the Federal Circuit.

A Federal Circuit panel majority construed the claims as lacking a quantity limitation and reversed.  The panel noted that the district court incorrectly had rejected a broad literal scope of claim 1 "because it would produce 'absurd results' and would not serve any policy of patent law."  The panel, however, explained that claim construction "is not a policy-driven inquiry" but instead "is a contextual interpretation of language."  From its broad interpretation, the Federal Circuit deemed Smithkline's clinical trials outside the experimental use exemption for 102 prior art purposes because those trials did not test a claimed feature of the invention.  Gajarsa separately argued that claim 1 was invalid under 35 USC 101 because the claimed product spontaneously forms from another product and "[s]uch spontaneous appearance of a patented product vitiates the public notice function of patents."

The experimental use exemption is limited to public use that occurs prior to reduction to practice and, for example, does not cover clinical studies that measure efficacy and safety of a pharmaceutical.   It is best to file a U.S. patent application within one year of any public use and not rely on this exemption to avoid a statutory bar. 

Golden Blount, Inc. v. Robert H. Peterson Co.
Decided April 19, 2004
Judge Linn with Judges Mayer and Newman, Newman dissenting in part

*          "When the trial court provides only conclusory findings, illuminated by no           subsidiary findings or reasonings" remand is required.

Blout sued Peterson at the U.S. District Court for the Northern District of Texas for allegedly infringing claims to a gas fired log assembly having a "primary burner in a raised level" with respect to a second burner.  Judge Jerry Buchmeyer construed the claims and found infringement based on this construction, but did not provide findings of fact to support the infringement conclusion.  Peterson appealed to the Federal Circuit. 

The Federal Circuit agreed with the district court's claim construction without discussing any dictionary definitions, but had to vacate and remand the infringement holding for lack of factual support.  In particular, the Federal Circuit complained that "[t]here is nothing to explain how the limitations of the claims, as construed, compare to the allegedly infringing device."  Judge Newman dissented on this point because "the question of infringement was essentially decided as a matter of claim construction" which the Federal Circuit is free to decide.  Thus, the Federal Circuit should have reversed or affirmed.

Federal judges sometimes are not comfortable or familiar with patent cases and the rules for deciding these cases.

Monsanto Company v. Homan McFarling
Decided April 9, 2004
Judge Clevenger with Judges Lourie and Plager

*          An excessive damages clause in a contract may be unenforceable under state     law and only permits recovery of actual damages.

This is a second appeal by farmer Homan from a lawsuit by Monsanto at the U.S. District Court for the Eastern District of Missouri.  Monsanto sued Homan for saving and replanting genetically engineered seeds produced from seeds that Homan had purchased from Monsanto.  Monsanto used a license agreement rather than an unconditional sales agreement to control subsequent use its transgenic seed.   Monsanto's "Technology Agreement" with the seed buyer stipulated that "liquidated damages" will be 120 times the contract fee if "the buyer saves, supplies, sells or acquires seed for replant."  Judge Catherine Perry entered summary judgment that Homan breached the agreement and that, under the liquidated damages provision of the agreement, Homan owed Monsanto 780 thousand dollars.  Homan appealed to the Federal Circuit.

The Federal Circuit affirmed most of the district court's rulings but vacated the damages award because "[w]hen a damages clause (in a contract) is a penalty clause, the clause is unenforceable under Missouri law and only actual damages are available."  The Federal Circuit pointed out that variations of this contract principle, which block enforcement of unfair damage provisions in contracts, are found in a number of states.  A license drafter might avoid this problem by employing different formulas to calculate compensation damages for different types of damages.  In this context, both courts pointed to the impropriety of Monsanto using 120 as a multiplier to determine damages for seeds of very different crops when regeneration of cotton and soybean seeds differ more than three-fold.

This case addresses an important biotech issue wherein "licensing restrictions on the use of a good produced by the licensed product are not beyond the scope of the patent at issue."  The Federal Circuit pointed out that "[t]he licensed and patented product (first generation seeds) and the good made by the licensed product (the second generation seeds) are nearly identical copies."  Because of the identity of progeny, Monsanto can enforce its patent against new seed produced from sold seed.  That is, a maker of a self-replicating biotechnology product can control progeny of that product with a patent to the product itself.

Inland Steel Company v. LTV Steel Company and USX Corporation
Decided April 9, 2004
Judge Bryson with Judges Michel and Gajarsa

*          A defendant can invalidate a plaintiff's patent during litigation via ex parte           reexamination at the U.S. PTO to become a "prevailing party" in the litigation.

Inland sued USX at the U.S. District Court for the Northern District of Illinois for alleged patent infringement.  USX requested the PTO to reexamine (ex parte) Inland's patent and Judge George Lindberg dismissed the case "with leave to reinstate" pending the outcome of the reexamination.  After the PTO found the patents invalid, USX moved the district court to reopen the case and to award USX attorney fees and costs.  The court, however, denied the motion for attorneys fees and costs because USX "chose to litigate the issue of patent invalidity (at the PTO), rather than in this court."  USX appealed to the Federal Circuit.

The Federal Circuit reversed and remanded because "the district court did enter judgment in USX's favor on the issue of infringement" and thus was a prevailing party.

A defendant can attack a patent during litigation via patent reexamination at the PTO and possibly become a prevailing party in the litigation if the PTO invalidates the patent.  If invalidation occurs from prior art that the patentee knew about but did not show the PTO during original prosecution, then the defendant may have a powerful argument for an award of attorney's fees, or more.

Norian Corporation v. Stryker Corporation
Decided April 6, 2004
Judge Newman with Judges Friedman and Schall, Schall dissenting in part

*          The claim term "consisting of" means that nothing can be included "beyond what             is claimed" but does not limit aspects unrelated to the invention.

            Norian sued Stryker at the U.S. District Court for the Northern District of California for infringing patent claims to methods and kits that “consist” of certain minerals for preparing bone repair compositions.  Judge William Alsup held summary judgment that the kit claims were not infringed because the accused kit additionally includes a spatula.  Both sides appealed various issues to the Federal Circuit.

            A Federal Circuit panel majority interpreted “consisting” more narrowly, and reversed the summary judgment of non infringement.  The majority decision explained that the "invention is a kit containing specific chemicals, and the claims are explicitly limited in that no other chemical can be included in the composition."  Thus, because the spatula added to the accused kit "is irrelevant to the invention," adding the spatula does not avoid infringement of the "consisting of" claim.  Judge Schall dissented on this point with a more strict view that "consisting of” means “I claim what follows and nothing else" and "such language limits all components." 

Another point was that the Federal Circuit construed the chemical term "phosphoric acid source" more broadly than "its natural meaning" because the meaning "is determined in accordance with its usage in the specification, elaborated if appropriate" by other intrinsic evidence.  In particular, the term was used interchangeably with other terms.  The Federal Circuit's broad interpretation from these facts further shows a movement away from the use of dictionaries for claim interpretation.

            It is often a bad idea to recite "consisting of" in a claim.  The patentee in this case had amended claims from 1) "comprising" to 2) "consisting essentially of" and then to 3) "consisting of" during prosecution.  A practitioner should favor specific claim elements instead of adding the limiting phrase “consisting of” to a claim.

Dr. Harry Gus v. Conair Corporation
Decided April 1, 2004
Judge Bryson with Judges Rader and Dyk

*          "Criticism in patent of prior art structure, which is similar to structure of accused
           device, supports conclusion of non-equivalence."

Gaus sued Conair at the U.S. District Court for the Southern District of New York for allegedly infringing patent claims to hairdryer shock prevention devices that use "a pair of spaced-apart ….probe networks" to detect when a device has fallen into water.  Judge Frank Maas granted Conair summary judgment of no literal infringement and a jury found infringement under the doctrine of equivalents.  Gaus appealed to the Federal Circuit.

The Federal Circuit reversed the doctrine of equivalents judgment because the specification describes the problems of prior art ground fault devices that briefly allow a shock (as used in the accused product) in their operation.  The Federal Circuit pointed out that the "patent excluded structure of the sort found in Conair's hairdryers by these comparative statements."  In other words, structure described in the specification  but not claimed could not be recaptured under the doctrine of equivalents.

It seems that the more detailed a patent application, the smaller the scope of the doctrine of equivalents.  A patent practitioner therefore should consider avoiding extensive criticism of the prior art in a specification to preserve maximum protection under the doctrine of equivalents.

Globetrotter Software, Inc. and Matthew Christiano, v. Elan Computer Group, Inc et al.
Decided March 23, 2004
Judge Linn with Judges Archer and Dyk

*          "A claim interpretation that excludes a preferred embodiment …..is rarely, if ever           correct."

            Greer, a majority shareholder in Elan, sued Globetrotter at the U.S. District Court for the Northern District of California, alleging tortuous interference and unfair competition after Globetrotter warned a would be purchaser of Elan stock that Elan infringed Globetrotter's patents.  Judge Jeremy Fogel granted summary judgment in favor of Globetrotter because Elan lacked objective evidence that Globetrotter's interference was in bad faith.  Greer appealed his loss to the Federal Circuit and Globetrotter cross-appealed infringement of its software patent claims. 

            The Federal Circuit affirmed because "Globetrotter's claim of infringement of the '297 patent was not objectively baseless" as required to prove sham litigation under Prof'l Real Estate Investors (U.S., 1993).   For Globetrotter's cross-appeal, the Federal Circuit revised the district court's construction of the claim term "preventing" as not limited to "actively" preventing a program from running.  The Federal Circuit determined that a dictionary definition of "prevent" was "ambiguous" and did not reveal whether a signal should be active.  The Federal Circuit noted that preferred embodiments in the specification described a passive system, which did not meet the district court's narrow interpretation.  The case was remanded for further proceedings based on the broader claim construction.

            This dispute arose when Globetrotter interfered with stock purchase negotiations by alleging patent infringement.  Companies that undergo asset review during a financing may be particularly sensitive to charges of infringement (which can sink a company's valuation), as seen in this case.  Another point is that the Federal Circuit favored statements made in a patent specification over a dictionary definition of a claim term.  Patent practitioners should be careful to prepare broad disclosures of important claim terms because broadest dictionary definitions may not be available to interpret claims during litigation.

Bristol-Myers Squibb Company et al. v. Pharmachemie B.V.   
Decided March 17, 2004
Judge Bryson with Judges Michel and Newman, Newman dissenting

*          A first restriction requirement does not cover a refiled application for which the PTO asserts a second, different restriction requirement.

Bristol sued Pharmachemie at the U.S. District Court for the District of New Jersey under 35 U.S.C. 271(e)(2) for allegedly infringing a pharmaceutical patent after Pharmachemie filed an Abbreviated New Drug Application with the F.D.A.  Pharmachemie argued patent invalidity on obviousness-type double patenting grounds over an earlier patent having the same priority application as the litigated patent.  Judge Mary Cooper rejected this defense because both patents were divisionals of their common ancestor.  Pharmachemie appealed to the Federal Circuit.

A Federal Circuit panel majority reversed, because the PTO had imposed "a new and different restriction requirement" and "the examiner made clear that the previous restriction requirements did not carry over."  Judge Newman dissented, and would have affirmed because PTO decisions, such as "restriction, its correction and its compliance, cannot now be collaterally attacked as grounds of patent invalidity." 

Perhaps the majority was persuaded to block Bristol's use of a later patent as a divisional because Bristol filed its first application in 1978 and already enjoyed patent protection from the first patent between 1979 and 1996.  The later patent litigated in this case extended patent protection from 1987 through 2003, for a total of 24 years based on a single priority date.

Novartis Pharmaceuticals Corporation et al. v. Eon Labs Manufacturing, Inc.
Decided April 2, 2004
Judge Dyk with Judges Clevenger and Prost, Judge Clevenger dissenting

*          A court should "look to statements made in the specification and prosecution     history to choose between competing dictionary definitions."

Novartis sued Eon at the U.S. District Court for the District of Delaware for indirectly infringing patent claims to a hydrosol form of cyclosporin having particular chemical characteristics.  Novartis argued that Eon's product infringes when it forms a hydrosol in a patient's stomach after ingestion, but Judge Joseph Farnan Jr. interpreted the claims to cover only the medicinal form.  From this interpretation, the court granted Eon summary judgment of non-infringement and Novartis appealed to the Federal Circuit.

The Federal Circuit panel reviewed "hydrosol" as defined in a number of dictionaries, and a majority concluded that statements in the specification and file history indicate a narrower meaning as a medicine (before ingestion).  The majority explained that "the plain meaning" of this term was "ambiguous," which justified searching for a (narrower) description from the intrinsic evidence.  Judge Clevenger dissented because the "full breadth" of the "ordinary meaning" must be followed "unless a clear disavowal of scope" is shown by intrinsic evidence, in accordance with previous decisions.  This split in the court may indicate a possible withdrawal of the Federal Circuit from assuming the broadest dictionary definition for a term until clear evidence is provided to select among alternative definitions. 

This was a close case, probably because the evidence relied on to choose a narrower dictionary definition was not clear.  Judges Dyk and Prost departed from past practice by relying on the absence of intrinsic evidence description of a broader dictionary definition to select a narrower definition.  To guard against this possibility, a patent drafter should a) review the broadest dictionary definition for each important claim term and b) include a broad corresponding description (including examples) for that definition.

Chiron Corporation v. Genentech, Inc.
Decided March 30, 2004
Judge Rader with Judges Archer and Bryson, Bryson concurring separately

*          A patent specification cannot enable technology that arises after the priority date,           and nascent technology "must be enabled with a specific and useful teaching."

Chiron filed four applications covering monoclonal antibodies tor a cancer antigen over an eleven year period.  Chimeric and humanized forms of antibodies were developed by others after the filing date of the first application but before the later applications.  The last (continuation in part) application included a new statement that "the term 'antibody' encompasses" the newly discovered types but lacked any specific new teaching.  Chiron later sued Genentech at the U.S. District Court for the Eastern District of California for infringing the claims of the last patent.  Judge William  Shubb construed the claims as covering Genentech's humanized antibodies but a jury determined that none of the earlier applications satisfied the written description and enablement requirements for the later claims.  Chiron appealed and Genentech conditionally cross appealed claim construction.

The Federal Circuit affirmed because humanizing antibody technology was nascent technology to at least the second filed application yet no application provided an enabling (i.e.. specific and useful) teaching of the technology.  A terse statement in the last application (after the technology was well known) that such technology existed, did not overcome this deficiency.  The majority also found that the earliest patent did not enable the later developed technology.  Judge Bryson separately concurred to argue against this last point because "enablement must be judged in light of the state of the art at the time of the application" (citing In re Hogan, CCPA 1977) but should not necessarily "be construed broadly enough to encompass technology that is not developed until later" (citing Plant Genetic Systems, Fed. Cir. 2003).

A patent applicant can get into trouble by acknowledging nascent (recent, new) technology in a continuation in part application, while relying on an earlier filed application for priority because new technology must be enabled with specific details.  In this situation an applicant might consider filing an extensive disclosure of the new technology as soon as possible after the new development, while maintaining co-pendency of the earlier application.

Summit Technology, Inc. v. Nidek Co., Ltd. Nidek, Inc., and Nidek Technologies, Inc.
Decided March 26, 2004
Judge Linn with Judges Schall and Bryson

*          Expert witness testimony to understand difficult technology and introduced at trial           can lead to a judgment as a matter of law of non-infringement.

Summit sued Nidek at the U.S. District Court for the District of Massachusetts for allegedly infringing claims to an apparatus and system for laser eye surgery via focusing light with "constant energy per unit area."  A jury found the claims literally infringed and not invalid.  However, Judge Edward Harrington granted Nidek judgment as a matter of law of non-infringement based on extrinsic evidence presented at trial.  Summit appealed to the Federal Circuit.

The Federal Circuit reviewed extensive expert trial testimony and found that the accused process uses laser pulses having Gaussian or bell shaped (i.e. not constant) energy distributions.  These distributions were inconsistent with the claim definition and were supported by admissions from both sides' experts as well as the contents of Nidek's submissions to the Food and Drug Administration. 

It seems that expert testimony played an important role in reversing this case because of the difficulty in comparing an accused process with a technically complex claim.  Such claims should be simplified or else supported by a commensurately detailed specification to allow easier identification of infringers.

Gen-Probe Incorporated v. Vysis, Inc.
Decided March 5, 2004
Judge Rader with Judges Archer and Gajarsa

*          "[A] licensee must, at a minimum stop paying royalties" before suing a licensor to            challenge the scope or validity of a licensed patent.

Vysis licensed its blood test patent to Gen-Probe as part of an overall settlement in an unrelated litigation.  Later, Gen-Probe continued royalty payments "under protest," and filed a declaratory judgment suit at the U.S. District Court for the Southern District of California, alleging non infringement and invalidity of the licensed patent.  Judge Marilyn L. Huff denied a motion from Vysis to dismiss for lack of subject matter jurisdiction based on the fact that Gen-Probe could not have reasonably apprehended a suit from its licensor,  Vysis.  After losing a jury trial, Vysis appealed this issue to the Federal Circuit.

The Federal Circuit vacated and ordered dismissal, explaining that despite the parties' litigation history, the "license, unless materially breached, obliterated any reasonable apprehension of a lawsuit based on the prior circumstances."  By entering the license agreement, "Vysis chose to avoid litigation as an avenue of enforcing its rights" and "allowing this action to proceed would effectively defeat those contractual covenants and discourage patentees from granting licenses." 

Sometimes it is difficult to decide whether to litigate a patent or to license the patent.  The Federal Circuit does not favor a licensee doing both.

International Rectifier Corporation v. Ixys Corporation
Decided March 18, 2004
Judge Linn with Judges Newman and Prost

*          A court is not free to attribute a broader meaning to a claim term when a            dictionary definition of the term fails to cover a preferred embodiment         
 

IR won a judgment of patent infringement against IXYS at the U.S. District Court for the Central District of California.  IXYS appealed the infringement finding, arguing that Judge Manuel Real misconstrued certain claim terms.

The CAFC panel pointed out that the district court interpreted the terms  "polygonal" and "annular" too broadly.  The CAFC started with the dictionary definition of each word, and noted that the patentee "chose to use the word…without modification or qualification."  Accordingly, "[t]he district court was not free to attribute new meaning to the term or to excuse the patentee from the consequences of its own word choice."  For a third term "annular," the court pointed out that "the patentee acted as his own lexicographer, and the patentee's definition trumps the ordinary and customary meaning."  However, the district court had interpreted "annular" even broader than the patentee's definition.  Based on the reinterpreted claims, the CAFC vacated the infringement issues and remanded. 

Another interesting issue was whether IXYS's assertion of attorney-client privilege prevented IXYS's estoppel and laches defense.  IR asserted that the withheld facts were necessary to IXYS's defense.  The Federal Circuit vacated this portion of the decision as well because none of the facts relied on for IXYS's defense arose from an opinion or advice of counsel.

Sometimes a chosen claim term has a broader meaning than alternative dictionary definitions would allow.  In this event a patent drafter should define the term more specifically, or preferably make up a new term to describe the technical feature to prevent an undesirable claim interpretation.

International Rectifier Corporation v. Samsung Electronics Co. Ltd. and Samsung Semiconductor, Inc. and IXYS Corporation (a non party appellant)
Decided March 18, 2004
Judge Linn with Judges Newman and Prost

*          "There is no statute in the federal laws concerning patents which gives rise to a   cause of action for conspiracy"

In this second appeal from the Samsung and IR litigation, Samsung and IXYS contested Judge Manuel Real's contempt order that IXYS's importation of devices from Europe and Samsung's extraterritorial conduct invoked liability under a permanent injunction. 

The Federal Circuit vacated the contempt order because neither the permanent injunction or 35 U.S.C. 271(e) applies to conduct outside the United States.  The district court arrived at its contempt decision on the basis that IXYS's importation acts (which were not subject to the injunction) aided and abetted Samsung.  The CAFC, however, declared that this "subversion by agreement theory…has no basis in law" because the patent laws do not cover conspiracy.  Furthermore, no evidence was provided that showed Samsung's control over IXYS's importation or participation in IXYS's activities following importation.  The CAFC explained that knowledge of IXYS's actions alone does not support an allegation of collusion and only "Samsung and/or those persons in active concert or participation with" Samsung are bound by the injunction.

The Federal Circuit pointed out that "courts have held parties in contempt based on the conduct of others, but" only if "the party subject to contempt sanctions had control over those engaged in the conduct."  

In Re Jeffrey M. Sullivan and Daniel Anthony Gately
Decided March 22, 2004
Judge Linn with Judges Archer and Dyk

*          The PTO Board has considerable flexibility to conduct interference proceedings

This is an appeal from an interference case wherein Sullivan, the senior party, relied unsuccessfully on a 135(b) motion (a claim cannot be presented more than one year after the same subject matter publishes in another patent or application) to knock out a competitor's claim.  The PTO Board sua sponte issued an order to show cause why judgment on priority should not be entered against Sullivan, and resolved that issue against Sullivan before reaching the 135(b) issue.  The junior party then prompted a second interference by copying claims from a later Sullivan patent (with no 135(b) issue).  The Board used Sullivan's admission regarding the first patent against him for the second patent.  Sullivan appealed to the CAFC.

The Federal Circuit affirmed, and pointed out that Sullivan's 135(b) argument was moot because the PTO Board's show cause order preceded Sullivan's motion.  Sullivan argued that the Board's actions on the second interference were "void ab initio" because the original declaration of interference was unlawful under 135(b).  The Federal Circuit pointed out, however, that the redeclared interference obviated the 135(b) motion and Sullivan failed to re-argue that the second set of claims copied from Sullivan's later patent were improper under 135(b).

Interference procedure is very complicated, hard to follow and a party sometimes can get lost.  In this case, Sullivan unfortunately "failed to specifically explain how (the amended claim for the second interfernce) is the same or substantially the same subject matter" in his first patent, to support a 135(b) argument against the latter interference.

Q-Pharma, Inc. v. The Andrew Jergens Company
Decided March 8, 2004
Judge Lourie with Judges Archer and Clevenger

*          the key factor in a reasonable pre-filing inquiry is an infringement analysis, which             might consist of a good faith comparison of claims with advertised subject matter

Jergens sold a lotion containing the "natural power" of Coenzyme Q10, prompting.  Q-Pharma to sue for infringing Q-Pharma's patent claim to a method of treating tissue with a lotion having an "effective amount" of Q10.  Q-Pharma did not determine the chemical composition of Jergen's lotion before filing suit but relied on Jergen's advertising, which touted the benefits of Q10 in its lotion.  Jergens refused to supply composition information during discovery but filed a summary judgement motion for non-infringement, stating that its product contained less than 0.5 parts per million Q10 by weight.  Q-Pharma then obtained a voluntary dismissal with prejudice.  Jergen's however, unsuccessfully sought Rule 11 sanctions on grounds that Q-Pharma did not make a sufficient pre-filing inquiry.  Jergen's appealed this and related issues to the CAFC.

The CAFC affirmed because Q-Pharma conducted a claim interpretation analysis that "was reasonably supported by the intrinsic record."  Although not ideal, Q-Pharma's reliance on Jergen's advertising and labeling sufficed for a pre-filing investigation.

Q-Pharma could have conducted a chemical analysis of its competitor's product and could have avoided filing the infringement suit.  However, as a result, Q-Pharma now has Jergen's admission that its Curel(R) Age Defying Therapeutic Moisturizing Lotion with Coenzyme Q10 has (if any) less than 0.5 parts per million Coenzyme Q10 and does not infringe a patent that requires an effective amount of Coenzyme Q10.

Chef America, Inc. v. Lamb-Weston, Inc.
Decided February 20, 1994
Judge Friedman with Judges Rader and Schall

*          "Courts may not redraft claims, whether to make them operable or to sustain their          validity."

Chef sued Lamb at the U.S. District Court for the District of Colorado, for allegedly infringing claims to a process for producing a dough product via heating the dough "in the range of about 400 degrees Fahrenheit to 850 degrees Fahrenheit."  Lamb pointed out that its accused process does not heat dough "to" such a high temperature, which would burn dough into something that "resembles a charcoal briquet."  Chef responded that the claim term "to" should be read as "at" and that the temperature refers to temperature of the oven air.  However, Judge Edward Nottingham granted summary judgment of non-infringement because the accused process does not heat a dough "to" the recited high temperature.  Chef appealed to the Federal Circuit.

The Federal Circuit affirmed because "we construe the claim as written, not as the patentees wish they had written it" and "where as here, claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated."  In particular, the court refused to interpret "to" as "at" because "we have repeatedly declined to rewrite unambiguous patent claim language" to make a patented process "perform the function the patentees intended."

            English skills are very important to patent prosecution.  Poor attention to detail may result in goofy claims that a court will not correct.

Bancorp Services, LLC v. Hartford Life Insurance Company et al.
Decided March 1, 2004
Judge Bryson with Judges Rader and Prost

*          "close questions of indefiniteness in litigation involving issued patents are             properly resolved in favor of the patentee"

Bancorp sued Hartford at the U.S. District Court for the Eastern District of Missouri for allegedly infringing Bancorp's patent claims to a "computer system for managing a life insurance policy."  Judge Carol Jackson granted summary judgment of invalidity to Hartford because the claims recite the undefined phrase "surrender value protection."  Bancorp appealed to the Federal Circuit, with the argument that this term is analogous to "stable value protection," which is defined in the patent specification.

The Federal Circuit agreed with Bancorp and reversed.  The court pointed out that "[b]y finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of patent validity….and we protect the inventive contribution of patentees, even when the drafting of their patents has been less than ideal."  The Federal Circuit further pointed out that although "the use of both terms in close proximity in the same claim gives rise to an inference that a different meaning should be assigned to each," this principle could be overlooked because "of the difference in context (wherein) the claim drafter intended to emphasize" different features. 

The indefiniteness issue in this case arose from the use of two unfamiliar terms that numerically mean the same value, but that were used in different contexts.  A practitioner should consider defining uncommon claim terms, to avoid protracted litigation over those terms during patent enforcement.

Pfizer Inc., v. Dr. Reddy's Laboratories, LTD. and Dr. Reddy's Laboratories, Inc.
Decided February 27, 2004
Judge Newman with Judges Mayer and Lourie, Judge Mayer dissenting

*          Patent term extension covers all claimed uses of a pharmaceutical, including that             of a registered pharmaceutical's salts and esters.

Pfizer sued Reddy's at the U.S. District Court for the District Court of New Jersey for allegedly infringing the extended patent term of Pfizer's pharmaceutical patent claims, after Reddy's filed a new drug application for marketing the maleate salt of the pharmaceutical.  Reddy's admitted that Pfizer's patent claims cover the maleate salt but argued that Pfizer's registered product is the besylate salt, and that the patent term extension only covers the registered product that prompted the patent term extension.  Judge Katherine Hayden agreed with Reddy's and dismissed the complaint on no infringement grounds.  Pfizer appealed to the Federal Circuit.

A Federal Circuit panel majority reasoned that an extended patent term pertains to the same claim scope as the unextended patent term, and reversed the lower court's non-infringement finding.  The Federal Circuit pointed out that "335 U.S.C. 156(f) defines the drug product as including any salt or ester of the active ingredient."  Judge Mayer in a dissent argued that patent term extension does not pertain to all claimed compounds, and in fact "a patent can be given only one extension regardless of the number of drugs that it may claim were subject of approval."

Provisions of the Hatch-Waxman Act are very important to generic drug makers and have been challenged often in recent years.  In this decision, the Federal Circuit pointed out that Congress foresaw "the potential loophole of a change in the salt of the active ingredient" and specifically accounted for such changes.

University of Rochester v. G.D. Searle & Co., Inc et al.
Decided February 13, 2004
Judge Lourie with Judges Bryson and Dyk

*          A patent fails written description if it claims a function of a substance but does not          allow an artisan to identify a substance capable of carrying out that function.

Rochester sued Searle at the U.S. District Court for the Western District of New York, for allegedly infringing claims to methods that selectively inhibit a chemical reaction in the body that causes inflammation.  The Rochester inventors derived a theory for how multiple reactions cause inflammation, and how to discover compounds that should act as superior analgesics, by targeting one reaction.  Rochester did not discover any compounds, but only the theoretical, functional properties expected for such compounds.  Judge David Larimer held summary judgment of invalidity for lack of written description and lack of enablement because the claimed invention could not be practiced or understood from reading the patent specification.  Rochester appealed to the Court of Appeals for the Federal Circuit ("CAFC").

The CAFC affirmed, because "the inventor cannot lay claim to subject matter unless he can provide a description of the compound sufficient to distinguish infringing compounds from non-infringing compounds, or infringing methods from non-infringing methods."  The court noted that "Rochester did not present any evidence that the ordinary skilled artisan would be able to identify any compound based on its vague functional description as a 'non-steroidal compound that selectively inhibits activity of the PGHS-2 gene product."

This decision is favorable to companies that employ research tools invented by others, who have nice theories for drug discovery, but no drugs.  The University of California and University of Texas, as amici curiae with Rochester argued that the court's decision "will have a significant impact on the continuing viability of technology transfer programs at universities."  However, the CAFC explained that universities do not enjoy a "less stringent application of the patent laws to universities than to other entities."

Sulzer Textil A.G. and Sulzer Textile, Inc. v. Picanol N.V.
Decided February 17, 2004
Judge Linn with Judges Lourie and Gajarsa

*          A trial court must inform a jury of the court's claim construction on all disputed   claims and the jury's obligation to apply those constructions

Sulzer sued Picanol at the U.S. District Court for the Eastern District of Texas for allegedly infringing patent claims to methods of operating air jet textile weaving machines.  Magistrate Judge Harry McKee managed a jury trial and the jury found non-infringement.  Sulzer unsuccessfully moved for a new trial because one of the court's instructions to the jury incorrectly referred to the manufacture and not the operation of the accused device.  Sulzer appealed its loss to the Federal Circuit and Picanol cross appealed  for attorney fees.

The Federal Circuit deemed the erroneous jury instruction harmless error, due to the context of ample correct jury instructions, numerous statements during trial regarding device operation, and the fact that contrary evidence was "largely evidence that Sulzer itself elicited."  This decision reviewed how "the district court must instruct" the jury of disputed claim term meanings and that the jury "cannot be left free to apply its own reading of disputed claim terms."  The CAFC found that the district court properly denied attorney's fees and remanded for further determination of whether Sulzer waived recourse to the doctrine of equivalents.

Successfully persuading a court of desirable claim construction during litigation, (in the CAFC's words), "are legal issues central to most patent cases."  Practitioners and litigators should be very sensitive to statements made during prosecution that later can influence a judge or jury during patent enforcement.

Superguide Corporation, v. Directv Enterprises et al. v. Gemstar Development Corp.
Decided February 12, 2004
Judge Prost with Judges Mayer and Michel, Michel concurring separately

*          A claim term may have a broad ordinary meaning unless a patent specification    and/or file history indicate otherwise

            Superguide sued Directv at the U.S. District Court for the Western District of North Carolina for infringing patent claims that recite systems that obtain and update individual TV program schedules.  Judge Lacy Thornburg granted summary judgment in favor of the defendants and the parties appealed a number of issues to the CAFC.

            The CAFC reversed in part the district court's claim construction, vacated the judgment, and remanded.  A major issue was interpretation of the term "regularly received television signal."  The District Court construed this term as limited to analog signals (and not digital television), because there were no "regular" digital television transmissions on the patent priority date.  The CAFC majority however, construed the term according to its plain meaning and noted the lack of intrinsic evidence that contradicts the inclusion of digital television.  While Judge Michel agreed with remanding the case, Judge Michel disagreed that the term "regularly received television signal" could be interpreted outside of "the standpoint of a person of ordinary skill in the relevant art and at the time of the patent."  Judge Michel complained that the CAFC too easily relies on a term's “plain meaning" and "ordinary meaning… (which) obscures the correct analysis" and that this trend underemphasizes the skilled artisan's understanding of patent claims, while overlooking "what the inventors actually invented."

            The CAFC remanded this case with the warning that "the parties are precluded from raising new construction issues regarding other claim language" because they "are presumed to have had ample notice of how their proposed claim constructions would be read in the context of other claim language."  An appellant should carefully include all possible related claim term arguments when appealing claim construction issue(s).

Liebel-Flarsheim Company and Mallinckrodt Inc. v. Medrad, Inc.
Decided February 11, 2004
Judge Bryson with Judges Lourie and Dyk

*          The doctrine of claim differentiation is strongest "where the limitation that is        sought to be read into an independent claim already appears in a dependent claim"

            Liebel sued Medrad at the U.S. District Court for the Southern District of Ohio for allegedly infringing claims to methods and devices for injecting fluid into a patient (for imaging).  Judge Sandra Beckwith construed the claims as limited to injectors that employ a pressure jacket.  The court granted summary judgment of no infringement because the accused devices and methods lack such jackets.  Both sides appealed various issues to the CAFC.

            The CAFC construed the claims without the jacket limitation and reversed.  The court reviewed the problem of "a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification."  The problem arises when a narrow written description supports broader claim language that encompasses other embodiments, such as when an applicant broadens claims during prosecution to reach a competitor's product.  In this case Liebel relied on claim differentiation to support broader claims, by using dependent claims with the added "pressure jacket" limitation.  Such a dependent claim can breath life into an independent claim by showing that the independent claim is not limited to the added element of the dependent claim.

            This case shows the importance of including all possible ideas and future embodiments when preparing a patent application, to support broad claim meanings.  Also, an aggressive prosecutor should consider adding important claim terms to dependent claims, when recognized, to demonstrate that the independent claims are not limited to those claim terms.

Microsoft Corporation v. Multi-tech Systems, Inc. v. Net2phone, Inc.
Decided February 3, 2004
Judge Lourie with Judges Rader and Bryson, Judge Rader dissenting

*          A statement during prosecution emphasizing what an invention "is" may limit       claims of an earlier issued patent with the same specification

Multi-tech sued Microsoft at the U.S. District Court for the District of Minnesota, for allegedly infringing claims from 3 patents covering a communication system that combines voice and data into packets and uses a modem connected to a telephone line.  Judge Ann Montgomery construed the claims as limited to communications "through a standard telephone line" and found the accused internet based systems non-infringing.  Multi-tech appealed to the Court of Appeals for the Federal Circuit ("Federal Circuit").

A Federal Circuit panel majority affirmed, because intrinsic evidence limited the claims to transmission solely through phone lines.  In particular, the 82 page, 57 figure specification refers to "data transmission 'over' or 'through' a telephone line roughly two dozen times" yet "does not even suggest the use of a packet-switched network."  Furthermore, the applicant "took the opportunity to provide a 'summary of the invention'" in response to an office action, by describing a "plain old telephone service" that uses "point to point connection between telephone equipment on each end of the line."  The majority decided that this statement of the invention applies to all patents sharing the same specification, including a patent that issued before the statement was made.

Judge Rader stridently disagreed with this claim interpretation, and argued that there was "no evidence to support the ("Evel Knievel"-like) leap that 'over a telephone line' must mean exclusively over a telephone line."  Further, "the inventions in the various patents are different," so therefore a later statement from one prosecution should not apply to an earlier issued patent.

The majority opinion's use of file history to construe earlier issued claims is very controversial, partly because, (in Judge Rader's words) "the inventions in the various patents are different."  However, the patent specifications were very detailed and the applicant filed terminal disclaimers for all three cases to obtain allowance of very similar claims over a common first issued patent.  Perhaps "the inventions" were not so different from each other and perhaps the stark absence of "packet-switched network" from the huge specification was not merely an oversight as Judge Rader's dissent might lead one to believe.

Nomos Corporation v. Brainlab USA and Brainlab, Inc.
Decided February 4, 2004
Judge Mayer with Judges Gajarsa and Dyk

*          Claim differentiation "is a 'guide, not a rigid rule" and does not broaden a means             plus function claim when only one structure is described in the specification

Nomos sued Brainlab at the U.S. District Court for the District of Delaware for allegedly infringing patent claims to a method of detecting a tumor position in a patient during treatment.  Judge Joseph Farnan, Jr. construed Nomos's claim 1 "means for generating at least one ultrasound image of the lesion" as limited to a single structure in the specification, which was attached to a treatment table.  Because Brainlab's device was hand held and movable, the court granted summary judgment of non-infringement.  Nomos appealed to the Federal Circuit.

The Federal Circuit affirmed.  The patentee's strongest point seemed to be that a dependent claim had the added limitation of attaching the imaging device to a table, and therefore the independent claim must be broader.  The Federal Circuit however explained that the "claim will bear only one interpretation" (because the specification only has one structure), and claim differentiation "does not override the requirements of 112 para 6…" 

If a practitioner has to use a means plus function claim, the function specified in the claim should be supported by as many structures in the specification as possible to avoid the kind of problem illustrated by this case.

Fieldturf, Inc. and Fieldturf Inter., Inc. v. Southwest Recreational Industries, Inc.
Decided February 4, 2004
Judge Mayer with Judges Michel and Schall

*          An "exclusive license agreement" for a patent that does not address litigation      rights may not convey standing needed to bring a patent suit

Fieldturf sued Southwest for antitrust violations, patent infringement and other alleged misdeeds at the U.S. District court for the Eastern District of Kentucky with respect to Southwest's commercialization of AstroTurf(TM).  Judge Joseph Hood granted summary judgment against Fieldturf on all counts and Fieldturf appealed to the Federal Circuit.

The Federal Circuit held that Fieldturf lacks standing to enforce the patent and vacated that portion of the district court's decision.  The Federal Circuit determined that Fieldturf's license agreement with its predecessor in interest failed to satisfy Fieldturf's "burden to provide evidence endowing it with all substantial rights in the patent."  In particular, the license agreement did not address the right to enforce the patent against infringers.  This lack indicated that "all substantial rights" were not transferred, especially since the predecessor in interest obtained the patent rights by an exclusive license that did include other restrictive covenants not mentioned in the last license.

An exclusive license to a patent should include a provision that transfers the right to enforce the patent to the licensee, if that licensee desires the right to litigate on its own.

Glaxo Wellcome, Inc. v. Impax Laboratories, Inc.
Decided January 29, 2004
Judge Rader with Judges Plager and Gajarsa

*          Adding a chemical species to a claim by amendment creates an estoppel that     blocks use of the doctrine of equivalents to other foreseeable chemical species.

Glaxo sued Impax at the U.S. District Court for the Northern District of  California for allegedly infringing claims to a sustained release pharmaceutical composition used in Zyban(TM), which comprises hydroxypropyl methylcellulose.  Judge Marilyn Patel granted Impax summary judgment of non-infringement under the doctrine of equivalents.  Glaxo appealed to the Federal Circuit. 

The Federal Circuit affirmed, because the sustained release compound used in the accused infringing product differs from the claimed compound (by a methyl group), and Glaxo had narrowed its claim by specifying the compound.  The Federal Circuit pointed out that the alleged equivalent was known at the time and was not tangential to the purpose of the amendment.  Accordingly, the amendment estopped application of the doctrine of equivalents to the accused compound.

Unfortunately, Glaxo's patent application did not list alternative chemicals that might have supported a generic compound claim during prosecution.  A patent practitioner should include as many different species as possible when drafting a patent application, to support possible generic claims later.

Smithkline Beecham Corp. ("Glaxo") v. Excel Pharmaceuticals, Inc. and ABC Co.
Decided January 29, 2004
Judge Rader with Judges Plager and Gajarsa

*          File history estoppel does not cover embodiments that are unrecognized in the art          at the time of amendment.

Glaxo sued Excel at the U.S. District Court for the Eastern District of Virginia and at the U.S. District Court for the District of New Jersey for allegedly infringing patent claims to a sustained release pharmaceutical composition comprising a methylcellulose, used in Zyban(TM).  These suits responded to Excel's filing of two Abbreviated New Drug Applications at the U.S. FDA for generic versions that use polyvinyl alcohol in place of the methylcellulose.  Judge Rebecca Smith of the Virginia court held summary judgment of no infringement and Judge William Walls of the New Jersey court dismissed the case sua sponte due to the res judicata effect of the identical Virginia action.  Glaxo appealed to the Federal Circuit.

This case concerns the same patent and issues as the Federal Circuit's Glaxo vs. Impax case decision of the same day.  This case has a different outcome, however, because the accused generic was formulated with a substitute chemical (PVA) that was less familiar to a skilled artisan.  Accordingly, a doctrine of equivalents determination could not be made at the summary judgment stage.  The Federal Circuit held that the "PVA perhaps may qualify as a later-developed technology" because "a portion of the record might suggest that PVA was not a known sustained release agent at the time of the amendment."  Therefore, summary judgment was not appropriate based on the record, and the Federal Circuit vacated the decision for further fact finding.

A patentee can use the doctrine of equivalents for a claim element despite amendment of that element if an accused equivalent was not foreseeable at the time of amendment. 

Liquid Dynamics Corporation v. Vaughan Company, Inc.
Decided January 23, 2004
Judge Gajarsa with Judges Lourie and Dyk, Judge Lourie Dissents

*          "words of approximation, such as 'generally' and 'substantially,' are descriptive   terms commonly used in patent claims to avoid a strict numerical boundary"

Liquid sued Vaughan at the U.S. District Court for the Northern District of Illinois for allegedly infringing claims to a sludge storage tank that mixes via a "substantial helical flow path."  Judge Suzanne Conlon interpreted the term "substantial helical flow path" narrowly because Liquid had added this language during prosecution.  The court found the term ambiguous, but further noted that two of the patent figures illustrate "a perfect helical flow," consistent with a narrow construction, and granted summary judgment of non-infringement.  Both sides appealed various issues to the Federal Circuit.

A Federal Circuit panel majority found the district court's interpretation overly narrow, and vacated the non-infringement decision.  The Federal Circuit pointed out that "[t]he term 'substantial' is a meaningful modifier implying 'approximate,' rather than 'perfect.'"  Furthermore, the panel majority explained that "[t]he district court relied on the written description of Figures 5 and 6 to import the limitation of a perfectly helical flow" and "[w]e have consistently warned against this approach to claim construction."  Judge Lourie dissented, in a contrary opinion that agreed with the district court "interpreting the claim in light of the patent specification, including Figures 5 and 6."

Claim amendments can, where feasible, include a modifier such as "approximately" to avoid a strict interpretation of the added term.  A practitioner also should consider commenting on the broader meaning, to help a judge during patent enforcement avoid reading specific limitations into the term, as Judge Lourie preferred to do in this case.

Richard Ruiz and Foundation Anchoring Systems, Inc. v. A.B. Chance Company
Decided January 29, 2004
Judge Rader with Judges Newman and Michel

*          Implicit motivation to combine prior art may arise from the nature of the problem            to be solved, particularly for "simpler mechanical technologies."

Ruiz and Chance contested various aspects of Chance's patent to screw anchoring systems for shoring up buildings, at the U.S. District Court for the Eastern District of Missouri.  In a previous appeal, the Federal Circuit affirmed infringement but remanded for a decision on invalidity.  Judge Catherine Perry subsequently found Chance's patent claims obvious over two earlier patents.  Motivation to combine the prior patents was found from the nature of the problem, wherein both "reach the same result as the method covered by the patents in issue."  Chance appealed to the Federal Circuit.

The Federal Circuit affirmed, in a decision that reviewed the role of "implied" motivation, which "is particularly relevant with simpler mechanical technologies."  The court explained that 'the nature of a problem to be solved (leads) inventors to look to references relating to possible solutions to that problem" (citing Pro-Mold, Fed. Cir. 1996).

Obviousness contests often are complicated by motivation issues wherein one side attempts to prove obviousness by a showing of motivation to combine two or more references.  This case indicates that mechanical patent claims in particular are more susceptible to "implied motivation" arguments based on the nature of the problem to be solved.  In addressing obviousness, one should first determine whether the technology is a "simpler mechanical" invention, which may have a lower threshold for implied motivation.

PSC Computer Products, Inc. v. Foxconn International, Inc.
and Hon Hai Precision Industry Co., Ltd
Decided January 20, 2004
Judge Gajarsa with Judges Mayer and Clevenger

*          Disclosed but unclaimed subject matter is dedicated to the public and cannot be             recaptured under the doctrine of equivalents

PSC sued Foxconn at the U.S. District Court for the Central District of California for allegedly infringing patent claims to a semiconductor heat sink assembly having a "metal strap."  Judge Dean Pregerson granted Foxconn summary judgment of non-infringement because Foxconn's device uses a plastic strap, not a metal one, and PSC's patent describes but does not claim the use of plastic straps.  PSC appealed to the Federal Circuit.

The Federal Circuit affirmed, with a comment that PSC's patent "written description served notice that plastic had been used as an alternative to metal in the prior art, and that the future use of plastic would therefore not infringe." 

This case teaches that the disclosure rule for embodiments described but not claimed in a patent and that cannot be recovered under the doctrine of equivalents is broad.  The Federal Circuit declared that the main issue in such a determination is whether the "written description (is) sufficiently specific to dedicate (the embodiment) to the public."  The court explained that "if one of ordinary skill in the art can understand the unclaimed disclosed teaching upon reading the written description, the alternative matter disclosed has been dedicated to the public.  This 'disclosure-dedication' rule does not mean that any generic reference in a written specification necessarily dedicates all members of that particular genus to the public.  The disclosure must be of such specificity that one of ordinary skill in the art could identify the subject matter that had been disclosed and not claimed."

A patent practitioner must be careful to assert claims to all possible embodiments when prosecuting a patent application or risk losing those embodiments.  However, as the Federal Circuit pointed out, a patentee can file a continuation or reissue application to correct "such oversights."  Before a patent issues, and within two years of that issuance, a patentee should review the specification and determine whether a continuation application or broadening reissue application, respectively, should be filed.

Golight, Inc. v. Wal-Mart Stores, Inc. and North Arkansas Wholesale Company, Inc. and Innovative International (H.K.) Ltd.
Decided January 20, 2004
Judge Prost with Judges Schall and Archer, Archer dissenting in part

*          A means plus function claim is defined by regular claim interpretation principles before linking the definition to a structure in the specification.

Golight sued Walmart at the U.S. District Court for the District of Colorado for allegedly infringing its patent claims to a remote controlled searchlight with "horizontal means for rotating" the light.  Wal-Mart argued that the written description and prosecution history describe a device that rotates through 360 degrees, but that Wal-Mart's device has a stop to prevent complete rotation.  Judge Zita Weinshank found infringement and Wal-Mart appealed to the Federal Circuit.

A majority of a Federal Circuit panel affirmed.  The majority opinion interpreted one claim as lacking a rotation element based mostly on claim differentiation.  In particular, the claim, which recited "horizontal drive means for rotating" did not specify a rotation limitation, while other claims recited "through at least 360 degrees."  The majority then determined that a corresponding structure for rotation in the specification was not linked to the means plus function claim.   

Judge Archer in a dissent, interpreted the means plus function clause as limiting the claim to a specific rotational structure described in the specification, and would have reversed the infringement holding.

Courts often interpret means plus function claims with difficulty.  The Federal Circuit in this case could not unanimously interpret a claimed function to match a structure in a patent specification.  While means plus function claims may be added to a patent application to impart ambiguity to a claim set, a practitioner should avoid relying solely on such claims for protecting an invention.

The Toro Company, v. Deere & Company
Decided January 20, 2004
Judge Michel with Judges Lourie and Linn

*          To anticipate inherently, a prior art must enable at least one embodiment of the   claimed subject matter.

Toro sued Deere at the U.S. District Court for the District of Minnesota for infringing claims for fracturing soil in turf by pulsed injection of fluid into the ground.  Judge David Doty granted summary judgment of patent "validity" and infringement.  Both sides appealed various issues to the Court of Appeals for the Federal Circuit.

The Federal Circuit found that the district court failed to construe the claims or analyze inherent anticipation properly and vacated the "validity" holding.  A major anticipation issue was whether a patent reference inherently covered a similar method, in view of overlapping numerical ranges.  The Federal Circuit declared that upon remand the district court should "set with clarity the scope of subject matter" that must be anticipated inherently before the prior art analysis.  Another problem was that "Deere failed to make the requisite factual showing" for inherent anticipation and "did not present any direct evidence…such as testing results."

Clear claim limitations must be determined before comparing with a prior art that lacks one or more claim elements, for inherent anticipation.  Testing evidence then should be provided to show that the missing claim element(s) necessarily exist in the cited art.  Another interesting point from this case was that the Federal Circuit cited generic statements in a patent abstract for construing claims broadly.  Although the PTO does not rely on the abstract in this way, a practitioner should remember that broad generic descriptions in the abstract can help a court avoid reading narrow limitations into the claims. 

In Re John P. Curtis, James H. Kemp, and Jan-Joost Pabst.
Decided January 6, 2004
Judge Clevenger with Judges Dyk and Prost

*          A specification that describes a surprising species may lack written description for          a genus of that species.

Curtis filed a reissue patent application with claims to a friction enhancing dental floss coating that comprises microcrystalline wax.  After W.L. Gore requested reexamination of a related patent, the PTO merged the reexamination with the Curtiss reissue and rejected several claims on prior art grounds.  Curtiss countered by arguing an earlier priority date from a prior application, but the PTO Board deemed the earlier application non-enabled.  Curtiss appealed to the Federal Circuit.

The  Federal Circuit affirmed non-enablement of the microcrystalline wax claims because the prior application described results that were "both surprising and unexpected" for the claimed species  Accordingly, the earlier application did not place a skilled artisan "in possession of a genus or combination claimed at a later date."  A contributing factor was Curtiss's (unfortunately conclusory) statements during prosecution that "[t]he only wax that will effectively bind …is microcrystalline wax" and that "only one wax ….is known to be effective to adhere to and to coat PTFE."

Oftentimes a eureka moment of a species discovery portends the existence of a larger genus invention that is apprehended later.  When filing a patent application for a "surprising and unexpected" species, a practitioner should list alternative broader embodiments that may correspond to a more generic invention.  When the broad invention becomes understood, a claim may be asserted by selecting from alternative embodiments already on file.

Medichem, S.A. v. Rolabo, S.L.
Decided December 23, 2003
Judge Gajarsa with Judges Clevenger and Dyk

*          "The transition 'comprising' in a method claim indicates that the claim is open-    ended and allows for additional steps."

Medichem filed a complaint for an inventorship determination under U.S. 35 291 against Rolabo at the U.S. District Court for the Southern District of N.Y. because both company's patents claimed a similar process for making Lratadine, (used in Claritin (TM)).  Judge Jed Rakoff construed Medichems's process claims, which recite "consisting," as limited to the use of a recited tertiary amine.  Because Rolabo's claims recite "comprising reacting" other (non-tertiary) amine compounds, the court found that the inventions differ and found no interference-in-fact.  Both companies appealed various issues to the Federal Circuit.

The Federal Circuit found the district court's construction of "comprising" unduly narrow and that the construction should have covered additional unknown components.  Accordingly, the Rolabo process claims cover the Medichem process and the appellate court vacated the district court decision.  The Federal Circuit explained that an interference in fact exists under the "two way test" using the correct interpretation because 1) Rolabo's claimed invention anticipates or makes obvious Medichem's claimed invention and 2) Medichem's claimed invention anticipates or makes obvious Rolabo's claimed invention. 

The PTO may have helped the Federal Circuit by declaring an interference-in-fact shortly after the Federal Circuit took up this case, in response to Medichem's filing a reissue application.  The PTO Board of Patent Appeals and Interferences held that Medichem's "comprising" term "permitted the inclusion of additional elements, including tertiary amines" and thus could anticipate the Rolabo patent claims. 

First to invent conflicts are often complicated and may involve a court, the PTO, or both for their resolution.  In this case, Medichem converted its patent back into a patent application by filing a reissue application.  This ploy allowed the PTO to adjudicate the conflict under rule 135(a) as an interference contest between a patent application and a patent.

Utah Medical Products, Ind. V. Graphic Controls Corporation
Decided December 4, 2003
Judge Rader with Judges Mayer and Michel

*          Means plus function claims may allow traversal of summary judgment                             stage for jury trial fact finding.

Utah sued Graphic at the U.S. District Court for  the District of Utah for infringing patent claims to an intra uterus pressure measuring device, after Graphic unsuccessfully tried to license Utah's patent and then copied Utah's commercial device.  A jury found infringement under the doctrine of equivalents and Judge Tena Campbell found the patent not invalid.  Graphic appealed to the Federal Circuit.

The Federal Circuit found substantial evidence to support the jury's conclusion that Graphic's use of hard plastic for stiffness during insertion was equivalent to the claimed steel stylet, and affirmed.  One fact that favored equivalence was that Utah had used a steel stylet in its early development program, but had abandoned that embodiment for plastic due to cost. 

The patentee survived the summary judgment stage of litigation because the claims recited a function that required fact finding under the doctrine of equivalents.  Another point is that wide ranging R&D results and possible embodiments should be included in a patent application.  If the disputed patent claims had included more embodiments, literal infringement might have been an issue in this appeal.

Novo Industries, L.P., v. Micro Molds Corporation and Oscar Helver
Decided December 5, 2003
Judge Dyk with Judges Clevenger and Gajarsa

*          A district court can correct a patent error if "the correction is not subject to        reasonable debate"

            Novo sued Micro at the U.S. District Court for the Southern District of Florida for allegedly infringing patent claims to a ventian blinds slat mover having "a stop means formed on a rotatable with said."  Judge Paul Hick declared that the second "a" arose from an "obvious typographical error" and should be "and."  Based on this interpretation, a jury found literal and willful infringement.  Micro appealed, arguing that some intrinsic evidence was inconsistent with the corrected meaning.

            The Federal Circuit held that the district court erred in correcting the patent, and declared that "[a] district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation."  Accordingly, the Federal Circuit found the patent invalid on indefiniteness grounds and reversed. 

            A patent practitioner must carefully check patent claims as allowed.  If a claim ambiguity exits, the examiner should be consulted to correct the problem during an ex parte negotiation.  A court cannot correct an arguable claim error during litigation.

Sulzer Textil A.G. and Sulzer Textile, Inc. v. Picanol N.V.

Decided  December 9, 2003
Judge Linn with Judges Lourie and Gajarsa

*          A jury must follow a court's claim construction and "cannot be left free to apply its own reading of disputed terms to the facts of the case"

            Sulzer sued Picanol at the U.S. District Court for the Eastern District of Texas for allegedly infringing patent claims to methods of operating weaving machines.  A jury found no infringement and Judge Harry McKee denied Sulzer's motion for a new trial due to alleged errors in instructing the jury regarding the "manufacture" (not the operation) of the machines.  Sulzer appealed.

            The Federal Circuit held that the lower court made an erroneous jury instruction.  This decision pointed out that "the trial court in a patent case must at a minimum take steps to assure that the jury understands that it is not free to consider its own meanings for disputed claim terms" and that "[i]t is not enough that the testimony and argument at trial is consistent with the district court's construction of disputed claim terms."  Although this opinion focused on the incorrect jury instruction, Sulzer was not prejudiced by the error and the Federal Circuit remanded the case on other grounds.

            In many cases the most important issue is claim construction.  This decision presents the Federal Circuit's view that a district court must affirmatively explain to a jury that the jury is not free to impart its own claim meaning but must follow the court's claim construction. 

Ulead Systems, Inc. v. Lex Computer & Management Corp.

Decided December 9, 2003

Judge Dyk with Judges Newman and Prost

*          "erroneous payment of small entity fees may be excused …….so long as the      patentee is not guilty of inequitable conduct relating to its inaccurate assertion"

            Ulead filed a declaratory judgment action against Lex, which counterclaimed for patent infringment, at the U.S. District court for the Central District of California.  Judge Dickran Tevrizian granted summary judgment of unenforceability because Lex falsely claimed small entity status when Lex paid maintenance fees.  Both sides appealed various issues to the Federal Circuit.

            The Federal Circuit vacated and remanded "because a genuine dispute of material  fact remains as to Lex's intent to deceive."  The Federal Circuit explained that representation of small entity status could render a patent unenforceable only when there is evidence of improper action "coupled with intent to deceive."  Judge Newman dissented in part because the majority opinion changes "the more rigorous proof of 'fraud' in establishing a false claim to entitlement……to the more readily met inequitable conduct."

            The patentee in this case got into trouble by forgetting to change its status to large entity after the patentee non-exclusively licensed its patent to a company that had more than 500 employees.  A patentee must review small entity status after licensing to larger companies, because payment of a patent term fee incorrectly as a small entity can risk making a patent non-enforceable.

Kaplesh Kumar v. Ovonic battery Co, Inc. and Energy Conversion Devices, Inc.

Decided December 11, 2003

Judge Dyk with Judges Bryson and Prost

*          "prior art cited in a patent or cited in the prosecution history of the patent           constitutes intrinsic evidence" useful for claim interpretation

            Kumar sued Ovonic in the District Court of Massachusetts for allegedly infringing patent claims to "amorphous rare earth" alloys that store hydrogen.  Judge Morris Lasker construed the term "amorphous" to mean "completely" amorphous, with "no ordering of molecules."  Based on this construction, the court granted summary judgment of non-infringement because Ovonic's material is partially ordered.  Kumar appealed to the Federal Circuit.

            The Federal Circuit re-interpreted amorphous to mean no "long range" order, from a definition provided in a patent cited during prosecution.  Accordingly, the court vacated the summary judgment and remanded.  The Federal Circuit explained that "when prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because" a) it indicates an art-recognized meaning and b) shows "that the patentee intended to adopt that meaning."  Bryson separately concurred to emphasize that other intrinsic evidence could have been relied on more for claim construction and that the cited art was more significant in a validity context.

            This case demonstrates the Federal Circuit's willingness to reject claim constructions proffered by both sides and to select a definition provided in a cited reference that differs from a general dictionary definition.  A litigator should explore various definitions provided in cited art when arguing claim construction, particularly when that art was relied on during prosecution of patent claims.

Geneva Pharmaceuticals, Inc. et al. v. Glaxosmithkline PLC, et al.
Decided November 21, 2003
Judge Rader with Judges Mayer and Bryson

*          35 U.S.C. 121 allows a restriction requirement to shield patent claims from double        patenting if the requirement is formal and clearly covers the issued claims

Geneva and other generic drug makers sued Glaxosmithkline ("Glaxo") at the U.S. District Court for the Eastern District of Virginia for declaratory judgment that three of Glaxo's patents pertaining to an amoxycillin inhibitor are invalid on double patenting grounds.  Judge Henry Morgan Jr. granted judgment of invalidity because earlier issued patents from a common priority application claimed synergistic combinations of the inhibitors with the antibiotic, which made the later patents obvious.  Glaxo appealed to the Federal Circuit.

A major argument was whether an examiner's interview, which only mentioned claim differences without declaring separate inventions, was a restriction requirement that could shield the later patent claims from a double patenting rejection.  The district court held that PTO reexaminations of three patents incorrectly concluded that a restriction requirement had taken place.  The Federal Circuit affirmed the district court because a restriction requirement must be "documented by the PTO" and provide "enough clarity and detail to show consonance" between the restricted claims and the later issued claims of an asserted divisional application.  The interview record described claims that were not marked as separate inventions, lacked the word  "restriction" and could not have been a formal restriction. 

It is helpful to include claims to a wide variety of embodiments, thus prompting a restriction in a filed application.  Multiple claims may help avoid double patenting problems because the PTO often zealously splits claims into multiple inventive groups, which are deemed subject to separate patenting.  Another advantage is that the extra claims provide notice to third parties upon publication.  Still further, copious claiming may avoid the problem of losing technology that is disclosed but not claimed, under the as yet fully untested rule expounded in the Johnston v Johnson case.

3M Innovative Properties Company and Minnesota Mining and Manufacturing Company v. Avery Dennison Corporation
Decided December 2, 2003
Judges Clevenger and Linn, Judge Michel dissenting

*          "prosecution history … cannot be used to limit the scope of a claim unless the    applicant took a position before the PTO"  

3M sued Avery at the U.S. District Court for the District of Minnesota for allegedly infringing patent claims to an adhesive based web for signage having a "multiple embossed pattern."  Judge David Doty construed the claim term "multiple embossed" as evidence of a product by process claim and granted summary judgment of no infringement because the accused process does not use sequential embossing.  3M appealed to the Federal Circuit.

A Federal Circuit panel majority reversed the district court's claim construction and vacated the summary judgment.  The majority found that 3M had acted as its own lexicographer by stating that "two or more embossing patterns" are to be "superimposed," and that such description evinced a structural relationship.  The court pointed out in this regard that claim terms which can be interpreted with equal force either way are "by default interpreted in their structural sense, unless the patentee has demonstrated otherwise."  Another reason for the broad interpretation was that 3M added a broadening claim amendment in response to a rejection of a dependent claim, which narrowed the scope to mean a first embossed pattern separate from a second embossed pattern.  Judge Michel dissented, because of his interpretation of "multiple embossed" without the attached word "pattern" as meaning a process.

This case exemplifies how a practitioner can breathe a wider meaning into an antecedent claim term by adding a further definition of that term to a dependent claim during prosecution.  This is provided by the doctrine of claim differentiation, which provides that an independent claim is broader than the dependent claim with respect to an altered claim term.

Ferguson Beauregard/Logic Controls, Division of Dover Resources, Inc. v. Delaware Capital Formation, Inc. et al.
Decided December 4, 2003
Judge Linn with Judges Dyk and Rader, Rader concurring separately

*          Dictionaries poorly associate ordinary meanings with context and may not reflect            customary usage of words by skilled artisans

Ferguson and Delaware disputed a variety of issues at the U.S. District Court for the Eastern District of Texas, regarding each other's patents that cover methods for flushing petroleum from oil wells.  Both parties appealed claim construction and other issues to the Federal Circuit.

The Federal Circuit determined that the district court erroneously construed claim limitations from one of Ferguson's patents, and remanded for this and other reasons.  The Federal Circuit commented at length on the fact that the claim terms "normal" and "predetermined" are to be construed as used "by those skilled in the relevant art" and that "the intrinsic record must always be consulted to identify" which dictionary definition should be followed.  The Federal Circuit explained that the district court had construed these terms improperly by referring to the accused device and by reading in a limitation from the specification.  Judge Rader concurred separately in order to emphasize that "when a court relies on a dictionary definition, it must include additional reasoning to substantiate its choice amongst many possible definitions in many possible dictionaries at many possible times."

It seems that the use of common dictionary words such as "normal" and "predetermined" in claims can prompt a great deal of analysis during litigation to determine their proper meanings in a technical context.  A practitioner who wants to avoid this problem may consider providing alternative (unrestricted) examples of use for such words when drafting a patent application.

Ranbaxy Pharmaceuticals, Inc and Ranbaxy Laboratories Limited v. Apotex, Inc.
Decided November 26, 2003
Judge Mayer with Judges Clevenger and Bryson

*          Redrafting a dependent claim into independent form may incur a presumption of             surrender of doctrine of equivalents for a claim term limited thereby

Ranbaxy sought a declaratory judgment at the U.S. District Court for the District of New Jersey of non-infringement for Apotex's patent claims to a process for preparing a pharmaceutical by dissolution "in a highly polar organic solvent."  Apotex counterclaimed for infringement and moved for a preliminary injunction.  Judge Mary Cooper however, found no infringement.  No literal infringement existed and the doctrine of equivalents could not be applied to cover an embodiment that was disclaimed when Apotex converted a dependent claim to independent form during prosecution.  Apotex appealed the denial of its preliminary judgment motion to the Federal Circuit.

Infringement under the doctrine of equivalents played a major role in this case.  The Federal Circuit affirmed no infringement, and thus no preliminary injunction, because Apotex's claim conversion was a narrowing amendment, which precluded application of the doctrine of equivalents.  The amendment indicated that acetone (equivalent to the accused process) was not included in the narrowed claim. 

The Federal Circuit noted that "[t]he dependent claims that were redrafted into independent form did more than simply add an additional limitation; they further defined and circumscribed an existing limitation for the purpose of putting the claims in condition for allowance."  To avoid an estoppel problem when converting an allowed dependent claim into independent form, a practitioner should explain how the added limitation is not an alteration (further refinement) to an existing limitation.  If possible, a claim element should be added that had not been subject to a patentability argument.

Phonometrics, Inc. and John P. Sutton v. Economy Inns of America et al.
Decided November 21, 2003
Judge Michel with Rader, Judge Newman dissenting

*          "oral statements that 'later advocat[e]' untenable contentions made in previously-            filed papers are sanctionable under Rule 11"

This is a latest appeal in a line of cases concerning the alleged infringement of Phonometrics' patent claims to a "telephone call cost computer" by various hotel companies and manufacturers of call equipment.  The Federal Circuit in its first two reviews of district court litigation against other defendants construed the claims and affirmed summary judgment of non-infringement based on those constructions.  In a subsequent third review, Phonometrics' counsel, Sutton, persisted in arguing that the Federal Circuit's earlier claim construction was "pure dictum."  In response, the Federal Circuit cautioned that "[u]nder principles of stare decisis,…future panels like the present panel will follow the claim construction set forth by our court."

In this most recent litigation, Judge Kenneth Ryskamp of the U.S. District Court for the Southern District of Florida granted a sanction of attorney fees and costs associated with bringing a Rule 11 motion to fourteen defendants after Phonometrics persisted in arguing a claim construction at odds with the first two Federal Circuit decisions.  The Federal Circuit majority affirmed the sanction, noting that "[A] litigant's obligations with respect to the contents of …..papers are not measured solely as of the time they are filed" but "include reaffirming to the court and advocating positions containing in those [papers] after learning that they cease to have any merit." 

Judge Newman in a dissent argued that the appellate case relied on for claim interpretation "was limited to equipment manufacturers" and that a later case more on point was an unpublished nonprecedential decision.  Accordingly, "Phonometrics' counsel's optimism" that the Federal Circuit would distinguish the earlier case as not pertaining to the later one "was not so unreasonable as to warrant Rule 11 sanctions."

This case affirms that later panels of the Federal Circuit follow the claim constructions of earlier panels.  The rule 11 award in this case was for only $13,565.63 and came after a warning "against further litigation of that (claim construction) issue in this court."

CFMT, Inc. and CFM Technologies, Inc. v. Yieldup International Corp.
Decided November 12, 2003
Judge Rader with Judges Friedman and Linn

*          The enablement requirement is met if a patent specification enables any mode of             making and using the claimed invention

            CFMT sued Yieldup at the U.S. District Court for the District of Delaware for infringing patent claims to an apparatus for cleaning semiconductor wafers.  Judge Roderick McKelvie, citing evidence that CFMT's claimed method required further inventions before its commercial use, granted Yieldup summary judgment of invalidity on enablement grounds.  The court also held the patent unenforceable because CFMT failed to present available negative data while making laudatory comments during prosecution at the PTO.  CFMT appealed to the CAFC.

            The CAFC declared that "enablement does not require an inventor to meet lofty standards for success in the commercial marketplace" and reversed the invalidity holding.  The CAFC also reversed the inequitable conduct holding because CFMT had no obligation to submit negative data.  CFMT's arguments regarding advantages of the invention did not include "objective evidentiary support" and a reasonable examiner could not have relied on those laudatory statements.  Without reliance there was no need to submit contrary data.

            This case teaches that when a position is taken during examination at the PTO, an applicant does not necessarily have to submit contrary data when no objective evidentiary support has been offered for the position.    
 

Combined Systems, Inc., v. Defense Technology Corporation of America and Federal Laboratories, Inc.

Decided November 20, 2003

Judge Michel with Judges Mayer and Bryson

*          Claim construction starts with dictionary definitions and is informed by a review of a patent's specification

            CSI sued Defense at the U.S. District Court for the Southern District of New York for alleged infringement of  a patent claim for a method of making a low lethality shotgun charge.  The claim recites loading lead shot followed by "forming folds" in a sock like fabric in front of the lead shot.  Judge Denise Cole construed the term "forming folds" to require the formation of folds before loading the projectile.  The court granted Defense summary judgment of no infringement because Defense's fabric folds occur during insertion, not before.  CSI appealed to the CAFC.  

            The CAFC affirmed, in a decision that reviewed how dictionary definitions are not used in a vacuum but must comport with other intrinsic evidence.  The grammatical use of "folds" indicated that folding was intended before insertion, and other evidence agreed with this.

            The method claim in this case arguably might have covered the accused method if the patent applicant had used broader grammar and had described the method steps as capable of being performed in alternative sequence order.

Schering Corporation v. Geneva Pharmaceuticals, Inc. and Novartis Corporation et al.
Decided August 1, 2003, Petition for Rehearing denied October 28, 2003
Judge Rader with Judges Plager and Bryson, Judges Newman and Lourie dissent from denial of rehearing

 

*          "inherency operates to anticipate entire inventions as well as single limitations      within an invention"

            Schering sued Geneva and other generic drug makers at the U.S. District Court for the district of New Jersey for infringing patent claims to a metabolite ("DCI") of its popular drug CLARITIN (TM) after the makers filed applications to the Food and Drug Administration for approval of their generic equivalents of CLARITIN (TM).  The generic makers asserted that Schering's FDA Orange Book listed patent, which claims the CLARITIN metabolite, is invalid.  Judge John Bissell granted summary judgment of invalidity because Schering's earlier patent for the CLARITIN active ingredient "inherently anticipates" the claims of this later patent to the metabolite found in the body.  Schering appealed to the CAFC.

            The CAFC pointed out that the district court properly construed the claims "to cover DCL in all its forms, including 'metabolized within the human body.'….(and) that DCL was necessarily formed as a metabolite by carrying out the process disclosed in" the earlier Schering patent.  Furthermore "[t]he parties agreed to that construction."  Thus, the CAFC affirmed, because the broad claim, which includes the metabolite compound in the body made from CLARITIN, was inherently anticipated. 

            This is the first case wherein all aspects of a claimed invention were unknown and not even capable of being known until later, yet were anticipated inherently by prior art.  Unfortunately Schering did not claim the invention of obtaining the metabolite in an isolated form and/or administering the metabolite in a pharmaceutical form.  The opinion comports with the fact that a naturally occurring compound is "invented" via its isolation from nature and simultaneous conception/appreciation of its use.  This point apparently was lost on Judge Newman, who dissented from denial of rehearing en banc by arguing that "[i]t was and is well understood that an inventor may discover something that already existed."  In fact, the isolated form and pharmaceutical preparation of the DCL metabolite did not exist before.  Instead of claiming the invention, Schering's second patent claimed the compound per se, including all of its naturally occurring forms and concentrations in the body. 

            Judge Lourie also seemed to miss this point in dissenting from denial of rehearing en banc.  Judge Lourie argued that "[t]his decision holds that an enabling disclosure of 'how to make' metabolites is provided by the mere recitation that one can administer a prior art compound to humans."  This statement overlooks the fact that a novel chemical process for synthesizing a properly claimed metabolite also should be patentable. 

            If a drug company wants to protect a discovery of a drug metabolite as a new drug itself, it should file a patent application to a) that new use, to b) that new drug formulation and/or to c) the new chemical synthesis method of its formation.  Drug companies have to follow the same patent rules as biotech companies who isolate naturally occurring chemicals from nature.
 

William H. Velander et al. v. Ian Garner et al.

Decided November 5, 2003

Judge Schall with Judges Gajarsa and Prost, Gajarsa dissenting

*          Both motivation and a reasonable expectation of success are required to            establish obviousness

            Velander and Garner contested inventorship of a transgenic animal and its use to make transgenic fibrinogen (a protein), in an interference proceeding at the U.S. PTO Board of Patent Appeals and Interferences (the "Board").  Garner successfully convinced the Board that Velander's claims are obvious over cited art.  Velander appealed to the Court of Appeals for the Federal Circuit (“CAFC”).

            Velander did not dispute the existence of motivation to combine references.  Instead, the primary issue was whether "one of ordinary skill in the art would have had a reasonable expectation of success in producing a recoverable amount of biologically active fibrinogen" in view of known success with related proteins.  The CAFC (majority panel) agreed with the Board that although "expensive, technically challenging, and laborious" at the filing date, the claimed method was "nevertheless a viable option" and affirmed the PTO’s obviousness decision.  Gajarsa dissented because the CAFC’s review of the Board's decision "should be restricted to the grounds relied on by the Board" and the Board explicitly “supported its findings" with only two references, while improperly adding "conclusions based on its own understanding or experience."

            Unfortunately, an appeal of an adverse PTO decision to the CAFC is limited to the review of facts that had been relied upon by the PTO. Velander might have fared better if Velander had appealed to a district court, which could have admitted more evidence.  A second point is that the problem – solution test used to determine expectation of success may be met easily when the claims are very broad.  Velander’s claims covered any amount and quality of the transgenic protein, which presented a very low hurdle for reasonable expectation of success.

Arlington Industries, Inc. v. Bridgeport Fittings, Inc.

Decided September 25, 2003

Judge Linn with Judges Archer and Dyk, Dyk dissenting in part

*          Broad dictionary definitions more likely govern claim interpretation if a patent
            applicant does not act as his own lexicographer

            Arlington won a jury verdict against Bridgeport at the U.S. District Court for the Middle District of Pennsylvania for literal infringement of patent claims to an electrical receptacle box extender having wings that are "capable of flexing."  Bridgeport appealed its loss to the CAFC, arguing that Judge Richard Caputo erroneously construed the term "flexing," to include not only cantilever bending but also bowing and bending.

            The CAFC in a majority opinion, affirmed because the dictionary definition for "flex" "encompasses not only cantilever flexing but also bowing or bending" and the properly construed claim covers Bridgeports box, which merely bends.  In deciding not to limit the dictionary definitions for this word, the CAFC pointed out that "[t]here is no indication in the written desciption….that Gretz acted as his own lexicographer."  The CAFC explained that '[i]n the course of prosecuting a patent application, a patentee may redefine a claim term" but the court could not find a narrowing redefinition of the term in the prosecution history.  Judge Dyk dissented however, because according to his view of that prosecution history "Arlington disclaimed a device that merely bowed, but did not flex."

            A patent practitioner should avoid formally defining claim terms in the specification when those terms are defined more broadly by a regular or technical dictionary.  Instead, statements can be added to the specification and during prosecution to illustrate that a wide range of embodiments within a common meaning are contemplated. 

Cygnus Telecommunications Technology, LLC v. Totalaxcess.com, Inc.

Decided September 30, 2003

Judge Newman with Judges Lourie and Prost, Prost dissenting

*          A district court maintains jurisdiction to enforce a settlement agreement when the            terms of that agreement are incorporated into a judgment and dismissal order

            Cygnus obtained a consent and judgment from the U.S. District Court for the Northern District of California that obligated Justice to pay a settlement fee.  However, TotalAxcess purchased Justice at about this time, both parties refused to pay the judgment, and Justice filed for bankruptcy.  Accordingly, Cygnus sued TotalAxcess at the same court.  Judge Donald Whyte however, dismissed the complaint because "the original patent-based ground of federal jurisdiction was not available against TotalAxcess."  TotalAxcess appealed to the CAFC.

            A majority opinion of the CAFC reversed because incorporation of terms of the settlement agreement in the original court order establishes "subject matter jurisdiction to enforce the agreement, including jurisdiction to determine the liability of TotalAxcess."  The CAFC reviewed a Supreme Court decision that allowed continuing jurisdiction when settlement terms are incorporated into the court order.  The majority further opined that (citing a 9^th circuit case) “[I]n the absence of controlling federal statutes, the district court has the same authority to aid judgment creditors as that provided to state courts under local law.”  Judge Prost dissented because of his counter-view that the second suit raises "a new theory: successor liability of a third party…..(that) involves no facts and no law common to the original lawsuit."

            A successful party to a settlement agreement should incorporate that agreement in a consent judgment that disposes the case.  This inclusion may help protect against third parties that acquire the assets of the other side but refuse to pay the liabilities.

Shu-Hui Chen and Vittorio Farina v. Herve Bouchard et al.

Decided October 22, 2003

Judge Lourie with Judges Newman and Schall; Newman dissenting

*          An incorrect chemical or structure in a specification may not be corrected if the disclosure lacks "any characteristics of those products that would evidence possession of the invention"

            Chen filed a patent application to methods of making taxol derivatives but withdrew the application after allowance and payment of the issue fee upon realizing that the named compounds were wrong.  Chen eventually filed a CIP application that issued as a patent with the correct compounds.  The PTO declared an interference between the patent and an application by Farina that claimed the same compounds.  The PTO held that Chen was not first inventor because Chen's earliest filed application, while reciting methods of synthesis, lacked a written description of the compounds.  Chen appealed to the CAFC.

            A CAFC panel majority decision affirmed because, unlike other cases where an applicant is allowed to add structure or correct structural description after filing, Chen's earliest applications "not only do not disclose the structural formula of any ….(later claimed compounds but)…also do not disclose any analytical data or other characteristics."  On a related point, Judge Newman dissented because laboratory notebooks from Chen's assistant described the correct compounds at an early date.  Judge Newman argued that the PTO incorrectly refused to consider the uncorroborated notebooks as business records, and would have found earlier invention for Chen on this basis.

            This case explores the limits of how much a patent applicant can amend an incorrect structural formula for a chemical in a specification after filing, according to the principle that "a chemical structure is simply a means of describing a compound; it is not the invention itself."  Chen could not amend without adding new matter, because he did not describe other characteristic features of his compounds in his earliest patent applications and a skilled artisan could not have figured out the correct compounds from the information given. Chen's attempt to utilize uncorroborated notebook evidence as a "business record" exception to the hearsay rule was interesting.  As electronic notebook keeping becomes routine and in particular more tamper proof, this exemption may assume an important role in resolving inventor disputes. 

Talbert Fuel Systems Patents Co., v. Unocal Corporation,
Union Oil Company of California, and Tosco Corporation
Decided October 28, 2003
Judge Newman with Judges Michel and Plager

*          The surrender of equivalents under Festo is overcome if a skilled artisan "could not reasonably be expected to have drafted a claim" to the desired equivalent

            Talbert sued Tosco at the U.S. District Court for the Central District of California for alleged infringement of patent claims to "gasoline having a boiling point range of 121F to 345F."  Tosco's gasoline has a boiling point above 373F and the court found no literal or infringement or infringement of equivalents because Talbert had added the temperature limitation during prosecution. Talbert appealed this decision to the Federal Circuit, which affirmed, and then appealed to the Supreme Court.  The Supreme Court remanded for further consideration in light of the Court's Festo decision, to give Talbert an opportunity to rebut the "presumption of surrender arising from" the temperature limitation amendment.  

            In this remand, the Federal Circuit reviewed the "[t]hree general criteria of rebuttal… established by the Court" and compared with the available evidence.  The first criteria (unforseeability of the equivalent at the time of making the amendment) was deemed not met because "the prior art embraces the equivalent."  The second criteria (rationale underlying the amendment bearing no more than a tangential relation to the equivalent in question) also failed because the higher gasoline boiling point was "at issue during prosecution."  The third criteria ("some other reason" why the "patentee could not reasonably be expected to have described the insubstantial substitute") failed because "no other reason ….has been proffered."

            This case exemplifies the three rebuttal criteria for determining whether file history estops application of the doctrine of equivalents to a claim term.  In recent cases, the second criteria, whether the reason for an amendment bore "no more than a tangential relation to the equivalent" is discussed most often.  Accordingly, a patent practitioner should consider presenting a very narrow logical reason when amending a claim to overcome a rejection.  During later litigation, if the reason is merely tangentially related to the facts of an infringement, the patentee can argue that the amendment does not estop application of the doctrine of equivalents to the modified claim term.

Deering Precision Instruments, LLC, v. Vector Distribution Systems, Inc. and Gram Precision Scales, Inc. and Mohan Thadani, and Bonso Electronics International, Inc.
Decided October 17, 2003
Judge Gajarsa with Judges Bryson and Prost

*          A statement during prosecution that merely clarifies an examiner's mistake is not             a "surrender of subject matter" that blocks use of the doctrine of equivalents

            Deering sued Vector at the U.S. District Court for the Northern District of Illinois for alleged infringement of patent claims to a portable scale having a sliding weight "substantially in an imaginary plane containing the fulcrum."  Judge Harry Leinenweber interpreted this language as requiring a significant or considerable portion of a sliding weight to go over the fulcrum.  Because no part of Vector's sliding weight covers the fulcrum the court granted Vector summary judgment of no infringement.  Deering appealed to the Federal Circuit.

            The Federal Circuit construed the claim term "substantially" more narrowly and upheld no literal infringement.  The Federal Circuit took issue with the district court's reliance on a statement during prosecution that merely clarified a mistake of the examiner.  The court explained that the statement was "not the clear and unmistakable surrender of subject matter" required under Festo and vacated the no infringement under the doctrine of equivalents.

            This case teaches another category of arguments (clarifying an examiner's mistake) that may be exempt from file history estoppel.  The case also was interesting because the Federal Circuit relied on statements in a patent specification to select an alternative, more narrow definition of the often used claim term "substantially."

Merck & Co., Inc., v. Teva Pharmaceuticals USA Inc. and Zenith Goldline Pharmaceuticals, Inc.
Decided October 30, 2003
Judge Newman with Judges Mayer and Prost, Mayer dissenting

*          Claim terms "must be understood and interpreted by the court as they would be             understood and interpreted by a person in that field of technology."

            Merck sued Teva at the U.S. District Court for the District of Delaware, under 35 USC 271(e)(2), alleging infringement of Merck's method patent of using the pharmaceutical alendronic acid.  Teva had filed an abbreviated new drug application at the FDA to sell a generic equivalent of the alendronic salt, prompting an infringement claim under this statute.  Judge Joseph Farnan Jr. construed the claim term "acid" to include the salt, (the form used by Teva), and found infringement.  Teva appealed to the Federal Circuit.

            A majority of the Federal Circuit panel found that "all the qualified witnesses," with experience in pharmacology, (excluding a "general chemist") had agreed that the word "acid" encompasses the sodium salt, and affirmed.  The court specifically approved the district court's use of extrinsic testimony for interpreting the claims.  This extrinsic evidence, including writing from the FDA as well as hired experts, was dispositive to the main issue. 

            In a dissent, Judge Mayer argued that "acid and the salt are distinct compounds and that the patentee is able to distinguish between the two when he so chooses" because of statements in the specification.  This dissent and the main litigation issue should have been avoided if the patent applicant (an Italian company) had included "or its salt" in the claims.  It is important to have a practitioner who is both a native speaker of English and familiar with the specific field of the invention to draft and prosecute patent claims in front of the U.S. PTO.

CCO Brands, Inc. v. Micro Security Devices, Inc.
Decided October 7, 2003
Judge Newman with Judges Rader and Dyk

*          A claim term such as "extending" may be interpreted as a functional rather than   a structure limitation if argued that way during prosecution

            Acco sued Micro at the U.S. District Court for the Northern District of California for alleged infringement of patent claims that recite a locking system (useful for laptops) wherein the key mechanism uses "a pin coupled through said housing, for extending into said security slot….when said slot …is in said locked position."  Judge Susan Illston granted Micro summary judgment of non-infringement after construing "the 'pin' clause to require that the pin actively extends into the security slot when the slot engagement member is in the locked position." Micro's accused device pin inserts before rotation locking and therefore could not infringe under this construction.  Acco appealed to the Federal Circuit, arguing that the term "extending" is a structural limitation that does not require the construed active movement.

            The Federal Circuit agreed with the district court's claim construction and affirmed.  The Federal Circuit pointed out that during prosecution, Acco had "argued that 'for extending' is a functional recitation ….as a limitation not present in the references."  The court explained that "[s]tatements made during prosecution which clearly disclaim a particular claim interpretation will limit the scope of the claims."

            Acco's disclaimer for one claim was deemed to cover another claim with similar language but that had not been amended. The Federal Circuit overlooked this anomaly because "the examiner made no such distinction" between the claims and because "two claims which read differently can cover the same subject matter."  One justification for suspending claim differentiation principles was that the examiner cited the importance of the functional pin movement in a "reason for allowance" statement.  If Acco had responded with a clarifying statement this claim construction issue would have been more of a close call during litigation. 

Genzyme Corporation and Mount Sinai School of Medicine of N.Y. University v. Transkaryotic Therapies, Inc.
Decided October 9, 2003
Judge Rader with Judges Schall and Linn, Linn concurring-in-part and dissenting-in-part

*          Description in a specification and during prosecution of a single embodiment well
            known in the art might limit a claim term to that embodiment

            Genzyme sued Transkaryotic at the U.S. District Court for the District of Deleware for infringing patent claims to a method for producing an enzyme via a "a chromosomally integrated nucleotide sequence….controlled by a regulatory sequence.”  Transkaryotic's method used native enzyme that naturally is present (integrated) in a chromosome.  Judge Gregory Sleet held summary judgment of no infringement after construing the term "chromosomally integrated" to require that an infringing method import a foreign gene into the chromosome.  Genzyme appealed to the Federal Circuit.

            A Federal Circuit majority opinion agreed with the lower court's claim construction and affirmed.  The majority argued that "the word 'integrated' suggests putting exogenous (gene) into the host cell's chromosome" and found that "throughout" the "patent specification, the applicant consistently uses the term 'integrated' to refer to a foreign gene inserted into a host cell chromosome."  The majority did not seem to acknowledge the broad structural meaning of this claim term, which includes naturally occurring genes placed there by evolution, but limited the claims to a sole embodiment imported from the specification.  Judge Linn dissented in an opinion that recognized this scientific fact, with an interpretation that “chromosomally integrated” means all genes that are integrated within chromosomes.  It seems that the court unconsciously struggled with a functional vs structural claim interpretation issue.

            Judge Linn's logical dissent pointed out that Genzyme did not restrict the broad art recognized meaning by "clear disavowal" during prosecution.  Both opinions neglected to review the more interesting question of whether the disputed term should be functionally limited and failed to confront sufficiently the challenging enablement and invalidity issues associated with a structural interpretation.  The court further failed to acknowledge that the infringer may have used later developed technology that did not work at the priority date, which indicates invalidity of the claim when interpreted structurally.  These common issues in molecular biology patent litigation are difficult to understand and often neglected.

ResQNet.com, Inc. v. Lansa, Inc.

Decided October 16, 2003
Judge Rader with Judges Newman and Michel

*          "A patent applicant may consistently and clearly use a term in a manner either     more or less expansive than its general usage… and thus expand or limit the scope        of the (claims)"

            ResQNet sued Lansa at the U.S. District Court for the Southern District of New York for infringing patent claims to computer terminals and methods of their use for connecting to main computers such that instructions received in "each of a plurality of fields" leads to proper screen display.  Senior Judge Robert Sweet construed the claims to require algorithms wherein "all fields on the screen are utilized."  To facilitate appeal, the parties entered into a consent judgment that the accused systems (under this claim construction) would not infringe.  ResQNet appealed to the Federal Circuit.

            This case involved the construction of claims terms such as "each of a plurality and "each field" from 3 patents.  The Federal Circuit reviewed the prosecution histories  and specifications and its own case law regarding when statements in a specification and from prosecution can affect claim interpretation.  For example, a description of a problem from the prior art and the inventive solution in the specification can "provide valuable context for the meaning of the claim language."  The Federal Circuit disagreed with some interpretations and affirmed-in-part, reversed-in-part and remanded.  For example, a statement in the specification that a particular algorithm "is not critical to the present invention but may be of the type" was cited as justification for a broader claim scope.

            Simple claim terms such as “each” may be defined by contextual use from intrinsic evidence.  A patent practitioner should exploit patent application drafting and argumentation opportunities during prosecution to push for broad meanings of such words.

 
Alloc, Inc. Berry Finance N.V., and Valinge Aluminum, AB, v. International Trade Commission and Pergo, Inc. and Roysol and Akzenta Paneele + Profile GmbH et al.
Decided September 10, 2003

Judge Rader with Judges Michel and Schall, Schall dissenting

*          A patent specification read as a whole can limit claims to an unrecited feature

            Alloc filed a complaint with the ITC alleging that Pergo violates section 337 because of 1) importation of goods that 2) infringe a valid and enforceable patent and 3) existence of a domestic industry that markets the patented articles.  An administrative law judge at the ITC construed the patent claims "to require play or a space between" locking panels of the product.  Because the accused imported panels lacked this play, the judge held that no domestic injury existed.  Alloc appealed to the Court of Appeals for the Federal Circuit ("Federal Circuit").

            The Federal Circuit admitted that "none of the asserted patent claims recites the term play" but pointed out that "the specification teaches that the invention as a whole, not merely a preferred embodiment, provides for play in the positioning of floor panels."  Furthermore, both the specification and statements during prosecution "distinguished the prior art on the basis of play."  Based on this reading of the specification to include the missing claim term, the court affirmed.

            A dissent by Judge Schall pointed out that after receiving a notice of allowance, the applicant had added new claims identical to the just allowed claims but that lacked the "play" limitation.  Judge Schall explained that "two claims that are identical except for one element presumptively differ in scope" and argued that Pergo literally infringed the correctly construed claims.  This case outcome shows how important late amendments can be, when an examiner has deemed significant allowed matter and often is willing to allow additional claims of broader scope.

ACTV, Inc. and Hypertv Networks
Decided October 8, 2003
Judge Linn with Judges Friedman and Plager

*          Documents from industry working groups that declare meanings of technical      terms are extrinsic evidence for claim interpretation

            ACTV sued Disney at the U.S. District Court for the Southern District of New York for infringing patent claims that recite a system for synchronizing television information with information from the internet.  ACTV's patent claims recite "means for" transmitting URL (internet address) information during the television blank signal period.  Judge Jed Rakoff construed the term "URL" to mean "the complete address of a site on the Internet specifying both a protocol type and a resource location."  The court granted summary judgment of no infringement because Disney's accused "system only transmits file names, not absolute URLs."  ACTV appealed to the Federal Circuit.

            The Federal Circuit construed the term "URL" more broadly and vacated the non-infringement decision because the district court erroneously had relied on extrinsic evidence for claim construction.  Both sides had proffered industry working group documents known as RFC (Request for Comments) to support their respective definitions of "URL."  The Federal Circuit emphasized that "dictionaries and treatises …(that) report the meaning already established and commonly understood" are superior intrinsic evidence over RFCs that are "not designed to reflect common usage, but rather to assign language to facilitate further conversation." 

            This opinion re-emphasized the primacy of dictionaries and treatises as intrinsic evidence, but appeared to treat the alternative (extrinsic evidence) definitions of URL similar to that of alternative dictionary definitions.  A broad definition in the case record was adopted because that definition comported with the term's usage in the claims, the specification and the file history.  Although not always stated clearly, the Federal Circuit often follows its method of compiling alternative possible meanings for a disputed claim term (preferably using a dictionary) and then relying on intrinsic evidence to select among the definitions.

John M. Taskett v. Dale H. Dentlinger
Decided September 26, 2003
Judge Michel with Judges Dyk and Prost

*          Laboratory testing suffices for reduction to practice if no "significant doubts"       exist that a tested system is operative when used as claimed           
           

            Taskett and Dentlinger both filed patent applications directed to a process for automated purchase of telephone service through a bank.  The PTO held an interference contest and deemed Dentlinger the first inventor because Dentlinger reduced his invention to practice earliest.  Taskett appealed to the Federal Circuit, arguing that Taskett's testing did not involve "real money, from a real bank."

            The Federal Circuit affirmed because, although Dentlinger used a "sample checking account" in his tests, the financial authorization was real and the claims did not require "actual money."  The facts summarized in this opinion are similar to those of Scott v. Finney: "In tests showing the invention's solution of a problem, the courts have not required commercial perfection nor absolute replication of the circumstances of the invention's ultimate use."

            The Federal Circuit construed the claims broadly enough to include mock conditions used for testing.  The court partly justified this by citing statements in the specification such as "[n]umerous modifications and alternate embodiments of the invention will occur to those skilled in the art."  A practitioner should add such expansive boilerplate statements to a patent application as courts sometimes look for such recitation to justify an expansive claim interpretation.

State Contracting & Engineering Corporation, v. Condotte America et al.

Decided October 7, 2003        
Judge Bryson with Judges Michel and Dyk

*          A willfulness finding for patent infringement might be avoided without a written   non-infringement opinion if a contract indicated that the patent was licensed

            While performing work for Florida, Contracting invented a new process for constructing concrete sound barriers.  Contracting obtained two patents for the process and Florida included specifications for this process in subsequent contracts with other parties  (Contractors).  Contracting then sued Contractors and won a jury trial of damages for patent infringement at the U.S. District Court for the Southern District of Florida.  Judge William Dimitroules ruled that Contactors' infringement was not willful because Contractors believed from the language of their agreement that Florida had a license to practice the invention.  Both sides appealed various issues to the Federal Circuit.

            The Federal Circuit affirmed the lack of willfulness even though Contractors had not received advice of counsel regarding infringement, because Contractors had a good faith belief that they had a sub-license.  Florida had "made a specific representation that it had a license to practice the invention, and it incorporated the invention in the contract specifications, thus requiring the contractors to use the patented process."

            This is the second appeal from a conflict involving alleged impropriety of contracting between a Florida state agency and contractors working on roadways.  In the earlier appeal, the state of Florida removed itself from the case on grounds of 11th amendment state immunity from violating Federal patent law.  In this second appeal, the Federal Circuit affirmed that the contractors were reasonable in believing that Florida had rights to sublicense the patent rights.   

Elan Pharmaceuticals, Inc. and Athena Neurosciences, Inc. v. May Foundation for Medical Education and Research
Decided October 2, 2003
Judge Newman with Judges Gajarsa and Dyk

*          Asserted prior art, including descriptions in issued U.S. patents must be enabled

            This second Federal Circuit opinion vacates an earlier Federal Circuit decision and concludes that an asserted anticipatory prior art reference was not enabled.

            Elan sued Mayo at the U.S. District Court for the Northern District of California for infringing patent claims to a transgenic mouse that expresses a human mutated protein involved in Alzheimer's disease.  Judge William Alsup granted Mayo summary judgment of patent invalidity in view of another U.S. patent that describes the "mutated gene, its source, the nature of the mutation, and its role in Alzheimer's disease" and that "also states that the invention provides a transgenic animal."  Elan appealed to the Court of Appeals for the Federal Circuit ("CAFC.")

            The CAFC panel vacated the invalidity decision because "[t]he issue is whether the (prior art) teachings enabled a person of ordinary skill" to produce the claimed transgenic mouse and "[t]he district court did not directly address the question of enablement."

            Enablement has been a special problem for biotech inventions because scientists often can easily write down references and procedures for carrying out complex and uncertain biochemical manipulations without carrying out the work themselves.  However, a new biological material can be very complex and often requires undue experimentation for its discovery and analysis.  In this context, the CAFC made it clear that the same enablement requirement for patentability applies equally well to prior art references, including issued U.S. patents.

Glaxo Wellcome Inc. v. Andrx Pharmaceuticals, Inc.

Decided September 22, 2003

Judge Newman with Judges Mayer and Bryson

*          "When a claim term has an accepted scientific meaning, that meaning is generally            not subject to restriction to the specific examples in the specification."

            Glaxo sued Andrx for infringing Glaxo's claims to a smoking cessation pill comprising hydroxypropyl methylcellulose (HPMC) having a particular sustained release characteristic.  Judge Wilkie Ferguson Jr. granted Andrx summary judgment of non-infringement because Andrex's generic product, as described in an Abbreviated New Drug Application to the FDA, uses a different grade of HPMC in combination with another sustained release agent.  Glaxo appealed to the CAFC.

            The CAFC construed the claims as not requiring a certain grade of HPMC and vacated for further analysis.  The CAFC explained that "[t]he district court erred in holding that the amendment adding the release rate data to the claim (during patent application prosecution) limited the claim to the grade of HPMC in the example."  In fact, the applicant responded to a rejection by adding functional language instead of reciting a grade of HPMC.

            During litigation one side sometimes convinces a district court to limit a claim term to a preferred embodiment.  The CAFC explains in this case that when the term already is well known (e.g. a generic chemical name) it is harder to restrict the claim meaning this way.  A practitioner accordingly should consider using well known generic names when drafting patent claims.  Another point, is that when a PTO examiner insists on limiting a claim to a particular chemical because of the "critical" characteristics of that chemical, it may be best to add those characteristics to the claim instead of further specifying the chemical, to obtain broader claim scope.

Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a/k/a SMC Corporation and SMC Pneumatics, Inc.

Decided September 26, 2003

Judge Lourie with Judges Michel, Plager, Clevenger, Rader, Schall, Bryson, Gajarsa, Linn, Dyk and Prost ; Judge Rader also concurs separately;
Judges Newman and Mayer dissent in part

*          File history estoppel restricts the doctrine of equivalents to cover embodiments that were foreseeable at the time of a claim amendment

*          Forseeability of claim equivalents is determined based on technology      existing at the time of amendment, not the filing date

            This case was on remand from the Supreme Court and clarifies how the presumption of claim scope surrender, which limits use of the doctrine of equivalents during litigation, could be overcome.  The Supreme Court stated that the presumption of surrender might be overcome by showing that "at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent."  Three ways for doing this are: 1) demonstrating that "the equivalent [would] have been unforeseeable at the time of the [amendment]; 2) showing that "the rationale underlying the amendment [bore] no more than a tangential relation to the equivalent in question; and 3) "some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question." 

            The majority CAFC opinion concluded that Festo's reason for narrowing the claims was more than tangentially related to the accused equivalents, and Festo could not rebut the presumption on that basis.  However, Festo might still establish that the equivalents could not have been foreseen at the time of making the amendments.  For example, the accused equivalent device or method might use new technology that was not known when the patent application was prosecuted, and the patentee could not possibly have included that embodiment in his patent for this reason.  The CAFC remanded to the district court to evaluate such factual issues regarding unforeseeability of the accused embodiment.

            The CAFC also confirmed that "[q]uestions relating to the application and scope of prosecution history estoppel … fall within the exclusive province of the court" and "the jury has no role to play."  The majority opinion pointed out that analysis of the "tangential relation to the equivalent in question" is limited to intrinsic evidence.  Newman and Mayer's partial dissent, however, countered that evaluation of "the two criteria of tangentialness and some other reason" should not be questions of law for a court only, and that "Festo has been deprived of both trial and appeal" with respect to these evaluations.

            The separate and lengthy opinions presented in this decision evince a doctrine of equivalents that remains clumsy in its application.  An interesting holding was that a determination of equivalents for a claim element against an imitator who uses later developed technology is made based on technology existing at the time of claim amendment, which can be years after preparation and filing of a patent application.  Accordingly, a practitioner must not only query a client about competitors' products during prosecution, but also consider recent technology developments at the time of amending claims.

Medical Instrumentation and Diagnostics Corporation, v. Elekta AB, Elekta Instrument AB, Elekta Instruments, Inc. and Elekta Oncology Systems, Inc.

Decided September 22, 2003

Judge Clevenger with Judge Shall; Judge Newman dissenting

*          A means plus function claim should be associated clearly with a (preferably)       generic structure in the specification

            Medical sued Elekta at the U.S. District Court for the Southern District of California for alleged infringement of claims to stereotactic surgery that recite "means for converting" images "into a selected format."  The specification described structures for analog conversion and Elekta's accused apparatus used software for digital conversion.  A jury found infringement and awarded damages to Medical.  Elekta appealed to the CAFC, arguing that Judge Robert Whaley's claim construction was erroneous and that judgment as a matter of law of non-infringement should have been granted.

            The CAFC reversed the district court's denial of judgment as a matter of law because, while the specification included analog conversion structure, "there is nothing in the specification or prosecution history that clearly links or associates software with the function of converting images into a selected format."  The court emphasized that "[t]he duty of a patentee to clearly link or associate structure with the claimed function is the quid pro quo for allowing the patentee to express the claim in terms of function under section 112, paragraph 6."  The count hinted that merely labeling a diagram in the specification as referring "to some structure instead of simply referring to a step in the claimed method" might have sufficed to clearly link software to the claim.  Judge Newman disagreed that software was not linked as a structure to the means plus function claim because such "software procedures … were well known."  This split in the court illustrates the problems of interpreting means plus function claims.  Many practitioners avoid these claims for this reason. 

            The CAFC majority decision repeatedly mentioned a lack of clear association of structure to the means plus function claim in "the specification and file history" (emphasis added) rather than just the specification itself.  The apparent desire to use file history to help find an association seems unusual but likely shows that an applicant might use file history to help link such structure to means plus function claims after filing.  Thus, a patent practitioner should consider explaining desired associations of generic structures with means plus function elements during prosecution.  This could help lock in a desirable broad interpretation for use during patent enforcement.

Akamai Technologies, Inc. and Massachusetts Institute of Technology v. Cable & Wireless Internet Services, Inc. and Kinetech

Decided September 15, 2003

Judge Gajarsa with Judges Newman and Dyk, Newman dissenting in part

*          The Federal Circuit can re-interpret a claim and undo the results of a jury trial

            MIT obtained a patent to an internet system of optimizing resources for decreasing internet congestion and delay in accessing web pages via load balancing software, preferably at DNS servers.  C&W obtained a similar patent that it filed more than one year before MIT's patent but that issued after MIT's patent (and therefore is 102(e) prior art).  C&W's 102(e) patent described locating load balancing software "at the content provider, or origin, servers" instead of at the DNS servers as described by MIT.  MIT sued C&W for infringing its earlier issued patent at the U.S. District Court for the District of Massachusetts, and a jury found MIT's patent valid and infringed.  Judge Rya Zobel granted MIT a permanent injunction based on the verdict and C&W appealed its loss to the Federal Circuit.

            The Federal Circuit held that C&W's patent anticipates MIT's claims and reversed that part of the permanent injunction.  The Federal Circuit construed MIT's claims more broadly than did the district court because the claims "do not expressly require" a particular location for the load balancing software.  Thus, the defendant's own earlier filed patent application, which described the software, but located the software at a different location, anticipated the broader claims.  The Federal Circuit pointed out that the lower court erroneously relied on extrinsic testimony evidence (which) is not the unequivocal evidence" for the narrower definition.

            Judge Newman dissented in part because the majority decision "says not a word about the evidence at trial, but simply decides the (claim interpretation) question for itself."  However, claim construction is a matter of law, and construed claims that govern the case easily may change upon appellate review, as happened here.  To avoid the costly consequences of re-interpreted claims, a practitioner should explain all important claim terms clearly during patent application preparation and prosecution.

BJ Services Company v. Halliburton Energy Services, Inc.
Decided August 6, 2003
Judge Mayer with Judges Dyk and Prost

*          The claim term 'about' may encompass the range of experimental error that occurs         in any measurement

            BJ won a patent infringement jury trial against Halliburton for infringing patent claims to methods of fracturing a subterranean formation.  Halliburton appealed its loss to the Federal Circuit, arguing that BJ's patent claim, which recites "about 0.06" is invalid on indefiniteness grounds and that other claims, which recite "a C* concentration" are not enabled. 

            The Federal Circuit affirmed the validity of BJ's claim that recites "about" because "about" refers to experimental error and a range of such error was provided to the jury.  The other claims that recite "C* concentration" were enabled because testimony provided at trial "confirmed that one of skill in the art would have known to measure the polymer" a certain way.  Thus, extrinsic evidence during litigation was used to fill in apparent gaps of the specification as well as to provide meaning for "about."

            Interestingly, the defendant did not request the court to construe "about 0.06" but agreed that the jury "should be instructed to give 'about 0.06' its plain and ordinary meaning."  The Federal Circuit went along with this, and stated that "the issues here are essentially factual."  A patent claim drafter might add extra claims that recite the term "about" to a patent application to force the use of extrinsic evidence for fact finding during litigation.  Such an "essentially factual" issue built into a patent specification may improve chances of traversing summary judgment and reaching a jury trial during patent litigation.           

Nitro Leisure Products, L.L.C. v. Acushnet Company
Decided August 26, 2003
Judge Linn with Judges Newman and Bryson, Judge Newman dissenting

*          Likelihood of trademark .confusion may be less for refurbished goods because consumers have a different expectation of product quality

            Nitro collects used golf balls and "refurbishes" them by removing paint, repainting and adding back original trademarks to their surfaces.  Nitro filed suit at the U.S. District Court for the Southern District of Florida against golf ball maker Acushnet, who objected to this practice, and sought, inter alia, declaratory judgment of non infringement of Acushnet's patents.  Judge Donald Middlebrooks denied Acushnet preliminary injunctive relief for violation of its "Titleist" trademark and golf ball patents.  Acushnet appealed, arguing that "Nitro's refurbishing process so alters the basic composition of Acushnet's golf balls that it would be a misnomer to call the article by its original name."

            A Federal Circuit majority opinion affirmed.  The court reviewed Supreme Court cases wherein "used and repaired goods can be sold under the trademark of the original manufacturer without deceiving the public" as long as the accused infringer "had attempted to restore so far as possible the original condition of the goods and full disclosure is made about the true nature of the goods."  The majority opinion further noted that the test for consumer confusion may be more relaxed for refurbished products than for new and unused goods.  In particular, "material differences do not necessarily measure consumer confusion" because a consumer does not expect refurbished or used goods to be the same as new goods.

            Judge Newman interpreted the facts differently, concluding that "when the balls are so badly scarred or cut that they must be repainted and the damage concealed" the trademark owner has an interest in preventing re-application of the trademark. 

            This case examined the limits of when to reapply a trademark to a refurbished product.  The split in the court appeared to arise from a disagreement over the facts.  Either the refurbished ball was "so badly cut that it was discarded" by the original purchaser (dissent) or the balls were not "so different from the original that it would be a misnomer for them to be designated by the original trademark" (majority).  This was an appeal from a preliminary injunction decision that lacked exhaustive fact finding.  Perhaps the real point from this case is that preliminary injunctions are hard to obtain in patent and trademark cases because the facts (such as whether a refurbished good is damaged enough to confuse the public) are unsettled without discovery or full trial.

Alfred Dana III v. E.S. Originals, Inc. et al.
Decided September 8, 2003
Judge Bryson with Judges Rader and Dyk, Dyk concurring separately

*          A possible co-plaintiff may not be able to wait out and take advantage of results            from a first litigation before filing a second suit

             Dana sold L.A. Gear his flashing shoe patent but reserved the right to sue for pre-assignment infringement.  L.A. Gear subsequently obtained a judgment in California against E.S., for patent validity and infringement by E.S. et al.  Dana then sued E.S. et al. at the U.S. District Court for the Southern District of Florida on the same issues.  Judge Wilkie Ferguson agreed that under the principle of "offensive" collateral estoppel (the plaintiff could have but was not part of an earlier suit that settled the same issues) E.S. et al. could not deny infringement or challenge patent validity because those issues had been resolved in the California case.  E.S. et al. appealed.

            The Federal Circuit vacated the decision because "in cases where a plaintiff could easily have joined in the earlier action or where …. the application of offensive estoppel would be unfair" this use of collateral estoppel "creates a 'no lose' incentive for plaintiffs to hold back and await developments in other plaintiffs' cases."  In this case, "the district court did not make a finding as to whether Mr. Dana could easily have joined the earlier action" so the Federal Circuit remanded for further inquiry on that issue.  Judge Dyk separately concurred but argued that issues of res judicata and collateral estoppel should be resolved by Federal Circuit law and not regional circuit law, as part of the Federal Circuit's responsibility to prevent forum shopping among the circuits.

            Smaller litigants in particular could profit by relying on others to litigate an opponent and then use those results to facilitate a later suit.  The Federal Circuit however discourages such "free rider" actions in instances where a would be plaintiff could have joined the earlier lawsuit.  On a related note, however, all would be litigants should consider the use of data from investigations by government agencies against their foes.  An FDA or SEC investigation against a would be defendant may produce useful admissions and other facts that could be dispositive in a subsequent civil suit.  When relevant, this should be considered as part of a litigation strategy.

The Dow Chemical Company v. Mee Industries, Inc and Florida Power Corporation
Decided September 5, 2003
Judge Dyk with Judges Clevenger and Bryson

*          A statement of intended purpose is not a limiting claim element

            Dow sued Mee at the U.S. District Court for the Middle District of Florida for infringing patent claims that recite adding water to gas turbines "to avoid destructive thermal stresses."  Judge Gregory Presnell granted Mee judgment of patent invalidity and of no direct, contributory, or induced infringement because "the systems sold by Mee did not adjust water volume for the specific purpose of avoiding thermal stress.".  Dow appealed.

            The Federal Circuit affirmed most of the holdings but vacated and remanded the no infringement finding against Mee.  Mee's accused process adds water, but does not avoid destructive stress in doing so.  The Federal Circuit declared that "[e]ven if an operator increased water …for an entirely different reason, that would not avoid infringement, as the motive of the accused infringer when performing a claimed method is simply not relevant."

            Patent claims should not include statements of reasons or motivations.  As seen in this case, such claim recitations might mislead a court to require that an alleged infringer meet the reason or possess the motivation.

University of West Virginia, Board of Trustees et al. v. Kurt L. Vanhoorhies
Decided September 3, 2003
Judge Clevenger with Judges Lourie and Prost

*          An assignment for an invention that refers to a particular patent application         "only     encompasses immediate lineal descendants" of the application

            Kurt and the University disputed Kurt's obligation to assign ownership of an antenna invention after Kurt left graduate school.  The University obtained a court order instructing Kurt to assign certain patent applications and issued patents based thereon.  The University then prepared assignment forms for transferring those applications and patents as well as related new second generation technology patent rights that had not been adjudicated in the court.  Kurt offered instead his own assignments to the specific applications described in the court order.  The University then obtained an order from the U.S. District Court for the Northern District of West Virginia instructing Kurt's attorney to execute the University's assignment forms.  Judge W. Craig Broadwater denied Kurt's subsequent motion for relief because the extra patent assignments desired by the University "were part of the litigation in this matter."  Kurt appealed.

            The Federal Circuit reversed because it could not find any reason for the University to obtain assignments for patent applications that were not "immediate lineal descendants" (in a priority chain from) the litigated patent applications.  Kurt's original assignment of the first generation technology obligated transfer of rights to inventions "as described in the aforesaid application…and to any and all patents or reissues or extensions thereof…" 

            The assignment language described in this case appears unremarkable.  Invention assignees should remember that such assignments generally are limited to patent applications that descend from a filed application and are not necessarily subject specific.  If an assignee wants an obligation from an inventor to assign rights in a technology area, the assignee should consider an employment agreement or other contract to obligate the inventor. 

E-Pass Technologies, Inc. v. 3COM Corporation and Palm Inc.
Decided August 20, 2003
Judge Dyk with Judges Clevenger and Linn

*          An industry standard for a device does not control the meaning of a claim term for         the device unless a patent applicant has adopted that standard specifically

E-Pass sued 3COM at the U.S. District Court for the Northern District of California for infringing a patent claim to a method for using an "electronic multi-function card."  Senior Judge D. Lowell Jensen's claim construction limited the claim to credit card sized devices (as defined by an industry standard) and granted summary judgment of non-infringement to 3COM.  E-Pass appealed to the Federal Circuit.

The Federal Circuit repeated its view that courts indulge a "heavy presumption" that a claim term carries its "ordinary and customary meaning" unless that meaning is "rebutted" by expressions of "manifest exclusion or restriction in the specification and/or prosecution history."  E-Pass had compared its device with regular credit cards multiple times in its patent specification but qualified those examples as "simple" or "normal" forms, which "suggest that the card may deviate from the usual dimensions."  Accordingly, "[i]t was improper, therefore, for the district court to rely upon the industry standards to provide the ordinary meaning of the term 'card' in the context" of the patent specification and the Federal Circuit reversed.

Sometimes a district court (as in this case) incorrectly narrows a claim meaning from statements in a patent specification that compare an invention with prior art.  To help the courts avoid imparting limitations of the prior art into the claims this way, a patent drafter should always qualify that a similarity comparison with prior art is only an embodiment, a "simple form" or a "normal" form of the invention.

Electronics for Imaging, Inc. v. Jan R. Coyle and Kolbert Labs.
Decided .August 18, 2003
Judge Gajarsa with Judges Rader and Bryson

*          A patentee that hires attorneys in another state and sends agents into that state to           persuade a company to take a license may create personal jurisdiction for a   lawsuit in that other state

This case teaches how a technology licensor can create personal jurisdiction that subjects the licensor to a lawsuit in another state while trying to license to another in that state.  Coyle, a Nevada resident executed a nondisclosure agreement and tried to license his technology to "Electronics" in California through multiple visits and calls into California.  Electronics finally sued Coyle in the U.S. District Court for the Northern District of California for declaratory judgment that Electronics did not misappropriate any trade secrets or breach the nondisclosure agreement with Electronics.  After Coyle's patent issued, Electronics further alleged that the patent claims were invalid.  Judge Martin Jenkins dismissed the suit because Electronics failed to establish that Coyle had the "minimum contacts" in California necessary to justify the Court's dominion of jurisdiction over Coyle.  Electronics appealed.

The Federal Circuit explained that Federal Circuit law applies to the patent invalidity claim and reviewed the three factor International Shoe jurisdiction test.  The Federal Circuit concluded that while mere threats over the phone or via mail "are not sufficient to satisfy due process requirements when exercising jurisdiction over an out-of-state patentee," Coyle's other contacts with California exceeded a minimum that indicated purposeful activities directed at California.  Coyle exposed himself to California court jurisdiction by: a) hiring California law firms to do his patent work; b) hiring a California attorney to assist his desired sale of technology to Electronics; c) telephoning Electronics in California at various times; and d) sending representatives into California to demonstrate Coyle's technology to Electronics.  The Federal Circuit held that "the totality of these contacts" indicate "significant activities in California" that shows Coyle purposely availed himself of the privilege of conducing business within California, "thus invoking the benefits and protections of its laws."

This case teaches what not to do in order to avoid a declaratory judgment action in a distant state.  Merely sending a notice letter (or even "mere threats of infringement directed at the forum state") generally does not create sufficient jurisdiction for a declaratory judgment action there.  However, hiring patent attorneys and other attorneys in the other state for assistance with the licensing, sending representatives to carry out licensing activities in the state and placing multiple telephone calls into the state, together are purposeful and significant enough to create personal jurisdiction.  A licensor should try to carry out these activities in his own state to minimize the risk of having to litigate in a distant forum.

Resonate Inc., v. Alteon Websystems, Inc.
Decided August 5, 2003
Judge Plager with Judges Bryson and Prost

*          "Limitations may not be read into a claim from a preferred embodiment when the           claim language is broader than that embodiment"

Resonate sued Alteon at the U.S. District Court for the Northern District of California for infringing an internet web server method claim for managing multiple requests for a web page via multiple servers.  Based on a narrow claim construction wherein transmitted web page data must bypass a "load balancer," Judge Claudia Wilken entered final judgment of non-infringement in favor of Alteon.  Both sides appealed.

The Federal Circuit disagreed with the district court's "level of detail" claim analysis wherein "every other step" of the claim was "described in detail" so therefore a "transmitting the requested (webpage to the requester)" step "would have been detailed in the claim as well."  Because the patentee had not claimed the transmission step in any detail this claim term should be interpreted broadly as "patentees are not required to claim each part of an invention with the same amount of detail."

This is another case wherein the Federal Circuit has reversed a district court decision because the district court erroneously limited a broad claim term to a desired or specific embodiment.  A patent drafter should always describe each important claim term with alternative definitions to help the courts see the breadth of those terms.

Bayer AG and  Bayer Corporation, v. Housey Pharmaceuticals, Inc.
Decided August 22, 2003
Judge Dyk with Judges Mayer and Prost

*          Infringement under 35 U.S.C. 271(g) is limited to manufactured goods and does            not include information generated by a patented process

*          "[P]rocesses of identification and generation of data are not steps in the manufacture of a final drug product"

Bayer sued Housey at the U.S. District Court for the District of Delaware for declaratory judgment that Houseys' patent claims to chemical screening methods were invalid and not infringed.  Chief Judge Sue Robinson dismissed Housey's counterclaim that Bayer infringed the U.S. method claims by importing drugs that were produced overseas using information obtained by the claimed process.  The court reasoned that Bayer's "importation of a pharmaceutical composition identified by the patented process" and "the importation of information generated by the patented process" were not violations of Housey's method patent under 35 U.S.C. 271(g).  Housey appealed.

The Federal Circuit affirmed.  The "central question" in this case was "whether the statutory term 'made' means 'manufactured.'"  The Federal Circuit reviewed the legislative history of 271(g) and related provisions, and concluded that 271(g) refers to a "physical product" because of statutory exemptions wherein the allegedly infringing product: i) "is materially changed by subsequent processes;" and ii.) "becomes a trivial and non-essential component of another product."  Another point was the impracticality of protecting against importation of information per se, which can enter the country via a person's brain.

This case clarifies a major problem facing foreign biotech companies that import new chemicals and that encounter U.S. patents that claim methods of discovering those chemicals.  A product made using a research tool overseas generally does not infringe a U.S. claim to the drug discovery method used, under 271(g).  It appears that if the research tool patent cannot describe the discovered chemical, then the claims, at best, might be limited to "information" useful for discovery.  However, even that information may enter the U.S. without infringing under 271(g).           
 

Intellectual Property Development, Inc. and Communications Patents, Ltd., v. US-Columbia Cablevision of Westchester, Inc. and Tele-Communications, Inc.
Decided July 21, 2003

Judge Schall with Judges Gajarsa and Dyk

*          Claim terms are interpreted with a dictionary.  A patent specification and file      history then are used to select from alternative dictionary definitions

            Intellectual sued Columbia at the U.S. District Court for the Southern District of New York for infringing a patent claim that recites a "high frequency" fiber optic broadcasting system.  After transfer of the case back from another court, Judge William Pauley III "construed 'high frequency' to refer to the range of 3-30 MHz" and found no infringement because the accused process uses frequencies above 30 MHz.  Intellectual appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC agreed with the district court's claim construction and affirmed.  The CAFC explained that the district court did not "put the cart before the horse" by "looking at dictionary definitions first instead of the specification to determine the meaning of the term."  In fact "dictionaries, encyclopedias, and treatises, publicly available at the time the patent is issued, are objective resources" for initial interpretation and "[t]he prosecution history limits (that initial) interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed."

            This invention was in a field that changed rapidly in 1974.  However, the patent specification filed then did not include an expansive definition of an important claim term.  As a result, a definition published on the filing date limited the claim to technology present then and prevented the claim from reading on later developed higher frequency technology.  This use of dictionary definitions as a first step in claim interpretation can limit claim meaning unless the patent drafter uses terms with broad dictionary definitions that accommodate later technology.  A patent drafter should consider terms that include anticipated changes in technology such as higher frequencies for communication devices.

Torpharm, Inc., v. Ranbaxy Pharmaceuticals, Inc. et al.
Decided July 23, 2003
Judge Clevenger with Judges Newman and Gajarsa

*          Non-obviousness of an issued patent claim must be assessed against the prior art,          and not by prosecution history statements

            Torpharm obtained patent claims to an improved drug formulation and related product by process claims, after successfully arguing at the PTO that the product was novel.  During a first litigation in North Carolina, product claims in a divisional patent were invalidated for lack of novelty.  A second litigation of related product by process claims in New Jersey then took place, wherein defendant Ranbaxy convinced Judge John Lifland to grant summary judgment of invalidity because of prosecution history indicating that the claims were only allowed after Torpharm convinced the examiner that the product was novel.  Non novelty of the product as determined in the first litigation collaterally estopped assertion of product novelty in the second litigation.  Torpharm appealed.

            The CAFC reversed summary judgment of invalidity of product by process claims in the second litigation because novelty and obviousness are separately argued issues and the obviousness determination required further fact finding.  In particular, the CAFC explained that argumentation during patent prosecution "is relevant to claim interpretation…….(but this does) not suggest that a patentee may advance during litigation only those arguments in support of patentability that were made before the Patent Office, nor that the negation of an argument advanced during prosecution necessarily negates patentability as well." 

            This complicated case teaches how statements made during patent prosecution may be used to advance claim interpretation theories and invalidity theories during litigation.  Generally, "[a] patentee is not required to fight tooth and nail every possibly adverse thought an examiner commits to paper" to strengthen a validity position during later patent enforcement but should worry more about interpretation of claim terms based on statements made during prosecution.  

Custom Computer Services, Inc., v. Paychex Properties, Inc.
Decided July 22, 2003
Judge Lourie with Judges Schall and Prost

*          A naming error in a document filed at the patent office sometimes may be           corrected if additional information is provided

            Payroll filed two extensions of time to oppose Paychex's trademark registration at the U.S. PTO.  However Payroll's attorney mistakenly filed the extensions "on behalf of Custom Computer Services, Inc., formerly known as The Payroll People."  The PTO dismissed a subsequently filed Notice of Opposition as untimely because the correct name was "The Payroll People," which had not changed its name, and the extensions of time had been filed with an incorrect name.  Payroll appealed to the CAFC.

            The CAFC pointed out that under the PTO's rules, if a name is "is misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time" then the mistake may be corrected.  In this instance, the attorney had included the extra description of "formerly known as The Payroll People."  Therefore, the mistake was "in the form of one entity's name" (which is) "consistent with the PTO's definition of mistake" and is correctable.

            The attorney saved an incorrect filing by adding extra identification in the papers.  Generally, it is a good idea to add extra identification to identify names and documents when filing papers at the PTO.  For example, by including title, inventor name, and filing date along with a serial number of an application, the application might be correctly described even when the wrong serial number is listed.

Sunrace Roots Enterprise Co., Ltd. and Sun Victory Trading Co., Inc., v. SRAM Corporation
Decided July 17, 2003
Judge Bryson with Judges Lourie and Gajarsa

*          The courts "indulge a heavy presumption that a claim term carries its ordinary and          customary meaning"

            SunRace sued SRAM at the U.S. District Court for the Northern District of California for declaratory judgment that SRAM's patent, which claims a bicycle shift actuator, is invalid and unenforceable.  Judge Vaughn Walker construed the claim term "shift actuator" to require a cam mechanism and entered judgment of noninfringement because Sunrace's device lacks a cam.  SRAM appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC reviewed how statements in SunRace's patent prosecution history and patent specification might overcome "the presumption that the ordinary claim meaning was intended."  The court particularly relied on the doctrine of claim differentiation to determine that an independent claim did not require use of a cam because Sunrace included a cam as a new limiting element in a dependent claim.  The CAFC explained that the "rebuttable presumption that different claims are of different scope … is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim."

            Dependent claims are very useful to impart broad meaning to independent claims via the doctrine of claim differentiation.  Accordingly, a patent prosecutor should consider drafting many dependent claims that recite alternative broadening features of an important claim element, particularly if such claims could be introduced and negotiated informally with the examiner after filing.  Additional dependent claims cost only 18$ (large entity), do not increase issue or maintenance fees, and are a bargain.

Abbott Laboratories, v. Syntron Bioresearch, Inc.
Decided July 10, 2003
Judge Dyk with Judges Mayer and Michel

*          The plain meaning and context of a term used in a claim heavily influences its      interpretation

            Abbott sued Suntron at the U.S. District Court for the Southern District of California for infringing patent claims to a test strip and method wherein substances flow through the strip and become "non-diffusively bound."  Judge Marilyn Huff instructed a jury that this term requires that an infringing device carry out a quantitative analysis.  Based on this meaning, the jury found no infringement.  Both sides appealed various issues.

            The Federal Circuit reversed the non-infringement holding for claims that recited this disputed term because "the language of the claims as a whole …..suggests that quantitative analysis should not be read as a requirement ….(but is) broad enough to encompass both qualitative and quantitative analysis."

            A patent practitioner should provide broad definitions of important claim terms.  Explicit definitions in the specification are helpful, but contextual use in the claims themselves can impart a broad meaning.

In re Les Halles De Paris J.V.

Decided July 11, 2003
Judge Rader with Judges Newman and Dyk

*          A service trade mark often is less geographically deceptively misdescriptive       because a customer typically receives services at the business location

            The U.S. PTO refused to register Les Halles' service mark "LE MARAIS" for restaurant services on the basis "that the mark was primarily geographically deceptively misdescriptive."  Les Halles appealed to the Federal Circuit.

            The Federal Circuit explained that "geographic marks in connection with services are less likely to mislead the public than geographic marks on goods" and therefore "a different application of the services-place association prong (of the test for deceptive misdescription under 2(e)(3)) is appropriate, especially in the context of marks used for restaurant services."  Thus, in comparison with rejections of trademark applications for goods, "the PTO must show some heightened association between the services and the relevant geographic denotation."

            A service business such as a restaurant that provides service at its location can more easily obtain a service mark that states a geographic location, because of less likelihood of consumer confusion.

Waymark Corporation and Caravello Family LP, and Joseph J. Zito and Alexander B. Rotbart, v. Porta Systems Corporation
Decided July 10, 2003
Judge Dyk with Judges Newman and Rader

*          To obtain the right to litigate, assignments must be in writing under 35 USC 261,            exclusive licenses may be oral

            On remand from the Federal Circuit, Judge Donald Middlebrooks of the U.S. District Court for the Southern District of Florida agreed with several arguments from Caravello that Waymark's litigation conduct merited an award of attorneys' fees against Waymark.  Waymark appealed the judge's sanctions order for attorney's fees to the CAFC.

            The Federal Circuit found legal error in all three theories embraced by the district court for imposing attorneys fees.  One, Waymark's failure to register its trademark until one year after filing a suit alleging trademark infringement was not litigation misconduct because the Lanham Act section 15 USC 1125(a)(1) "provides a remedy for infringement of both registered and unregistered trademarks."  Two, Waymark had standing to sue Porta because the co-plaintiff had claimed a written assignment of the patent "and it was permissible to join Waymark as a plaintiff under the alleged oral exclusive license."  Three, Waymark did not provide misleading responses to a discovery request because the thing requested (assignment document) did not exist.

            This case is interesting because a party relied on an oral exclusive license to join litigation as a co-plaintiff.  The unwritten exclusive license allowed joinder as a co-defendent and the CAFC cautioned that "only in extremely limited circumstances can the holder of an oral transfer of patent rights sue for infringement in its own name." 

Integra Lifesciences I, Ltd. et al. v. Merck KgaA et al.
Decided June 6, 2003
Judge Rader with Judges Newman and Prost, Newman dissents in part

*          "General biomedical research to identify new pharmaceutical compounds" that "may rationally form a predicate for future FDA clinical tests" may not be exempt from patent infringement under 271(e)(1) 

            This case insufficiently addresses the problem of how researchers may study and further develop a technical discovery after an innovator receives a patent for the discovery and uses that patent to block all scientific investigation.

Integra sued Merck at the U.S. District Court for the Southern District of California for infringing patent claims to peptides that inhibit angiogenesis (new blood vessel formation).  A jury found infringement and Judge James M. Fitzgerald held that Merck's drug discovery research did not enjoy a "clinical research" exemption under 35 U.S.C. 271(e)(1) for that infringement.  Both sides appealed various issues.

A CAFC majority opinion affirmed that Merck's infringing activity did not fall within the exemption of 271(e)(1), which allows research "solely for uses reasonably related to the development and submission of information" to the FDA.  The opinion explored the intent of the drafters of rule 271(e) on blocking research by others and concluded that congress desired for the "nature of the interference with the rights of the patent holder….(to be) de minimus."

Judge Newman dissented due to a belief that what the panel majority calls "discovery based research" should be subject to either a common law research exemption or an exemption under the safe harbor of 271(e)(1).  Newman complained that technology development generally would suffer without some kind of exception for the study of new patented ideas.

In recent years a conflict has deepened between the private rights of a patentee to prohibit practice of an invention and society's need to allow others to investigate and advance new technology, particularly in the biotechnology field, where the distinction between "research" and "commercialization" may be blurred.  Rather than face this larger issue, the CAFC panel majority merely reviewed the intent of the drafters of the 271(e)(1) clinical use exemption, as part of the court's mandate for interpreting statutory law.  Either an activist court, (in the form of an en banc CAFC or the Supreme Court), or Congress will have to examine the larger issue and clarify a route for scientists to carry out inventive acts that further technical development in the face of un-cooperative patent holders.

The Board of Education of the Board of Trustees of Florida State University et al. v. American Bioscience, Inc. et al.
Decided June 23, 2003
Judge Lourie with Judges Rader and Linn

*          A co-inventor of a combination claim must have a firm and definite idea of the    claimed combination as a whole

Florida (Florida State University) sued a former post doctoral scientist and American, his new company to amend inventorship of an application that they had filed regarding synthetic taxol (an anticancer drug) compounds.  The compounds related to the former employee's research at Florida.  Florida successfully convinced judge Roger Vinson to delete three inventors and add three new inventors during a bench trial.  The trial reviewed details of communications between researchers that led to the synthetic taxol discovery.  The amended inventorship gave employees from Florida inventorship rights and American appealed to the CAFC.

The CAFC ruled that the district court had improperly determined inventorship.  The CAFC corrected inventorship according to the principle that (citing Burroughs Wellcome from 1994) "[o]ne who simply provides the inventor with well-known principles or explains the state of the art without ever having 'a firm and definite idea' of the claimed combination as a whole does not qualify as a joint inventor."  The CAFC declared that the district court improperly held Yang to be a co-inventor.  In particular, Yang's suggestions for "choice of side chains" of a larger synthetic taxol compound did not make Yang a co-inventor because the issued patent did not claim the larger compound that Yang conceived and "Yang could not have contributed to the conception of the structure of even that (claimed) compound."  In other words, suggesting a component of a larger claimed combination did not make Yang a co-inventor. 

This case indicates that co-inventorship is not created merely by "teaching" something that is known by others in a field.  That is, a suggestion of an embellishment to another's idea may not always make the suggestor a co-inventor.  A patent practitioner might adopt this rule in inventorship determinations by inquiring whether a suggestion made by a co-worker to another was more than "teaching skills or general methods" to help the recipient subsequently synthesize a more complete conception as claimed.  According to this view, a contributor might even have to demonstrate an inventive step to acquire inventorship status.

Omega Engineering, Inc. v. Raytek Corporation et al.

Raytek Corporation v. Omega Engineering, Inc. and Newport Electronics, Inc.
Decided July 7, 2003
Judge Clevenger with Judges Michel and Schall

*          Prosecution disclaimer (effect of arguments made during prosecution) does not narrow claim interpretation when the alleged disavowal of claim scope is ambiguous

Omega sued Raytek at the U.S. District Court for the District of Connecticut for infringing patent claims to devices and methods that form an optic image outline ("energy zone") for measuring temperature from infrared light.  Judge Janet Hall construed means plus function claims as excluding laser beams directed inside the energy zone and granted summary judgment of non-infringement.  Omega appealed to the CAFC.

   The CAFC construed the claims more broadly and reversed the non-infringement finding.  The main issue was interpretation of ambiguous comments made by the patent applicant to overcome prior art during prosecution.  The applicant had distinguished over the art by "precluding appreciable heat from entering the energy zone and affecting the temperature."  The district court interpreted this to mean no laser light could enter the energy zone and found no infringement because the accused device and method employ at least some laser light inside the zone.  CAFC pointed out that "unless expressly compelled by the intrinsic evidence, courts must avoid the addition of a novel limitation" to construed claims and that if "the inventors' statements (are) amenable to multiple reasonable interpretations" then prosecution disclaimer does not operate, and the amendment or argument does not limit claim meaning.

The CAFC explained that comments made during prosecution must be "clear and unmistakable" before they can become a) argument based estoppel in a doctrine of equivalents analysis or b) prosecution disclaimer in a claim interpretation analysis.  A patent practitioner should emphasize the limits (narrowness) of any arguments made during prosecution, to restrict the effect of those arguments on claim construction and on the doctrine of equivalents during patent enforcement. 

Abbott Laboratories and Central Glass Company, Ltd. v. Baxter Pharmaceutical Products, Inc. and Baxter Healthcare Corp.
Decided July 3, 2003
Judge Rader with Judges Gajarsa and Dyk

*          Only a clear disavowal of subject matter divests claims of broader scope

            Abbott obtained a patent that claimed an anesthetic composition with a Lewis acid inhibitor "in an amount effective to prevent degradation."  Baxter then filed an Abbreviated New Drug Application (ANDA) with the FDA, asserting a paragraph IV certification that its proposed product does not infringe the product.  Baxter's product contained no more than 130 ppm water and the Abbott patent exemplified the use of 150 ppm water.  Abbott sued Baxter at the U.S. District Court for the Northern District of Illinois for infringing its patent claim.  Judge Ronald Guzman granted Baxter summery judgment of non-infringement because Abbott's Information Disclosure Statement disclosed that Abbott had sold preparations containing 131 ppm water prior to the filing date of Abbott's patent application.  The court reasoned that Abbott had surrendered the subject matter of the sale and thus interpreted the claims narrowly.  Abbott appealed to the CAFC. 

            The CAFC held that the district court misconstrued the claims and remanded.  The CAFC explained that "mere invocation of prior art does not necessitate limiting claim scope" and that "only a clear disavowal of subject matter divests claims of broader scope" such as "by redefining the term" or by "expressions of manifest exclusion or restriction."  In this case, the district court interpreted a concentration range narrowly "to maintain the validity of the .. patent" in view of the prior sale, but the CAFC held that a proper validity analysis should have been made.

            This case shows that a patent applicant successfully might use the vague term "effective amount" in its claims.  The CAFC pointed out that the district court would have to develop a record of what an "effective amount" means to a skilled artisan and should fully evaluate the teachings in the specification on this issue.  A patent practitioner should consider using such term along with a description of relevant factors in the specification, as this could lead to broad claims that require expert witness fact finding during patent enforcement.

Eli Lilly & Co., v. Board of Regents of the University of Washington
Decided July 3, 2002
Judge Gajarsa with Judges Michel and Lourie, Lourie dissenting

*          The PTO may refuse to declare an interference between a senior party having a             species claim and a junior party with a genus claim under its "two-way test"

Lilly filed a reissue patent application and asked the PTO to declare an interference between the reissue application and a later issued patent from UW.  The PTO used a "two way test" to determine that Lilly's and UW's patent documents "are not drawn to the same patentable invention."  For the two way test, a claim from each party must anticipate or render obvious the claim of the other and Lilly's narrower claim did not anticipate UW's genus claim under this test.  Lilly appealed to the CAFC.  

A majority of the panel affirmed because 37 C.F.R. section 1.601(n), which allows the PTO to initiate an interference "can reasonably be interpreted to require an election between either a one-way test or a two-way test …(and the PTO) reasonably opted for a two-way test to avoid subjecting broad patents for basic inventions to interferences, some of which would be unnecessary."

Judge Lourie dissented because "Rule 601(n) plainly describes a one-way test" and "the Board's action constitutes an abuse of discretion."  Lourie further argued that affirming the two way test in this instance "may well lead to a prolonged action in a district court unaccustomed to evaluating interference issues involving (complex technology), whereas reversal would result in the more experienced Patent Office determining the respective rights of the parties."

A patentee sometimes can attack a competitor's patent by reissuing its patent and asking for an interference.  This case confirms that the PTO may have considerable discretion to accommodate such desires. 

Invitrogen Corporation, v. Biocrest Manufacturing, L.P., et. Al.
Decided May 7, 2003
Judge Rader with Judges Bryson and Dyk

*          Claim language should be interpreted "in its proper scientific context"

 

            Invitrogen sued Biocrest at the U.S. District Court for the Western District of Texas for infringing Invitrogen's patent claims that recite a process for producing E. Coli "comprising" a first step of growing the bacteria at "18 deg. C. to 32 deg C.," followed by subsequent steps.  Judge Sam Sparks construed the claims as excluding growth of cells at higher temperatures prior to the first step, due to prosecution history wherein Invitrogen amended "less than 37 deg. C." to recite the lower temperature range.  Because Biocrest grows its cells at 37 degrees prior to the first step, the court granted summary judgment of non-infringement and both sides appealed to the Court of Appeals for the Federal Circuit ("Federal Circuit").

            The Federal Circuit construed the claims more broadly and vacated for three main reasons.  One, the term "comprising" in a method claim "allows for additional steps" such as a previous growth step at an unclaimed temperature.  Two, "the context of this scientific field illuminates the claim's meaning and reach."  The idea of growing a sample of E. Coli that has never experienced growth at 37 degrees is absurd because 37 degree growth of cultures obtained from 37 degree environments is routine.  The third reason is that "[t]he district court's construction would also effectively exclude the embodiment of (an example in the) patent."  The Federal Circuit noted that "[t]his court has held that construing a claim to exclude a preferred embodiment is rarely, if ever, correct, and would require highly persuasive evidentiary support."

            As technology becomes more complicated and much background knowledge of a technical field is omitted from a patent specification, courts need to consider more often the "proper scientific context" of a claim.  Hopefully, more district courts will utilize special masters and technical experts to accommodate this trend and get the claims right before appellate review.

Fleur T. Tehrani, Ph.D., P.E., v. Hamilton Medical, Inc. and Hamilton Medical, A.G.
Decided June 13, 2003
Judge Bryson with Judges Mayer and Newman

 

*          Means for claims that cover data processing may be limited to specific   equations described in the specification

            Fleur sued Hamilton at the U.S. District Court for the Central District of California for infringing patent claims to a respirator and method that controls breathing via a "means for processing data" of lung and breath factors.  Judge Gary Taylor granted Fleur summary judgment of infringement because the user of Hamilton's device indirectly provides the claimed input data by manipulating knobs and valves that reflect parameters such as carbon dioxide, and thus input information for a stored algorithm.  Hamilton appealed.  

            The Federal Circuit vacated and remanded because the district court failed to determine "the precise algorithm that is part of the recited (means for processing) structure" and thus could not rule on whether the accused algorithm is identical or equivalent to that claimed.  That is, the district court overlooked the "equations" or "underlying calculations" described in the patent specification, which constitute structure linked to the means for clause in the claims.   

            Means for claims that refer to an algorithm or microprocessor may be limited to specific algorithms or equations in the specification.  A patent drafter in these instances should include broad algorithms that can utilize a variety of inputs (such as unmeasured or estimated input) and also should include claims that lack means for clauses.

Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc.
Decided May 30, 2003
Judge Dyk with Judges Bryson and Gajarsa

*          The Trademark Amendments Act of 1999 allows oppositions to trademark       registrations on dilution grounds unless the registrant had first use

            This is the first Federal Circuit review of the Federal Trademark Dilution Act of 1995 ("FTDA"), which creates a federal cause of action for trademark dilution,  and of the Trademark Amendments Act of 1999, which requires the PTO Board to consider dilution as a grounds for opposition to a trademark registration.  Trademark applicant Advantage used the slogan "We'll Even Pick You Up" in its advertising and competitor Enterprise later used a related slogan "We'll Pick You Up."  However, Enterprise obtained a first registration at the PTO.  Advantage subsequently filed suit in the Western District of Texas and filed its own trademark registration, against which Enterprise lodged an opposition, alleging dilution under the FTDA.  The district court held against Enterprise, "because the slogan at issue is not sufficiently famous or distinctive to receive protection under the [FTDA]."  The PTO also dismissed Enterprise's opposition on the same grounds, arguing that the issue was settled by the court and that ""Unless (Enterprise) can establish that its mark was famous prior to (Advantage's) use …..it cannot prevail."  Enterprise appealed to the Federal Circuit.

            This Federal Circuit opinion reviews the law of concurrent use registrations and explains that the new anti-dilution statutes did not arise from common law, nor were "motivated by an interest in protecting consumers."  Rather, the new laws were passed "to protect famous trademarks from subsequent uses."  However, "any prior use, … bars a claim of dilution as a ground for opposition" under the new laws.  Furthermore, the statutes do not require "the defendant's prior use be substantial or cover a wide geographic area to defeat an injunction."  Thus, the PTO "Board correctly rejected Enterprise's opposition and registered the Advantage mark."

            Companies should consider both registering and using service marks such as advertising slogans as early as possible.  This case shows how early yet limited use of a mark is advantageous, even against others who later arguably make the trademark famous.  Being the first to register also is important, as a prior registrant obtains "nationwide registration, subject only to those areas where the senior (earlier unregistered) user can prove prior use."

Alan Waner, v. Ford Motor Company
Decided June 4, 2003
Judge Archer with Judges Newman and Michel, Newman dissenting

*          Absent trade secret status or a contract, state law may not provide a collateral set          of rights to protect an invention

            Waner invented truck fender liners that prevent an exterior paint job from cracking in response to rocks hitting the inside wheel well.  He sold his liners to a Ford dealer.  Waner then contacted a Ford employee for licensing, who "told Waner to get his patent work in order."  Waner filed a patent application and explained his product to another Ford manager, who assured Waner that he would present Waner's request at an upcoming meeting.  Later, the manager told Waner that the meeting had been postponed when it actually had taken place, and referred Waner to Ford's attorneys.  Ford subsequently installed tens of thousands of liners on its trucks and Waner sued Ford at the U.S. District court for the District of South Dakota for "usurpment of an idea/unjust enrichment and infringement" of his patent.  A jury found patent infringement and Judge Karen Schreier awarded Waner attorney's fees, while denying Ford's motion for judgment as a matter of law of non-infringement.  Both sides appealed to the Federal Circuit.

            The CAFC found that the district court erroneously construed the claims and found no infringement.  The CAFC also affirmed the district court's conclusion that "once Waner sold the fender liners on the market……Waner had no protectable property interest in his fender liner."  The court pointed out that because "Waner's invention was in the public domain prior to issuance of the patent, he is not protected by state law."  The award of attorney's fees likewise was reversed because "fees may be awarded only to the prevailing party."

            Newman, in a dissent, argued that Ford's poor business ethics should engender a finding of unjust enrichment, because Waner brought his invention to Ford's attention and Ford lied about a meeting, despite the fact that Waner's idea was not a secret.  This case shows how a properly prepared patent application with suitable claims may be the best protection for a small inventor that approaches a big company for commercialization of an invention that has been worked publicly.

In Re. California Innovations, Inc.
Decided May 22, 2003
Judge Rader with Judges Newman and Clevenger

*          The test for rejecting a deceptively misdescriptive trademark is no longer simple             distinctiveness but requires a higher standard of deceptiveness

            The U.S. PTO Trademark Trial and Appeal Board rejected California's trademark application for "CALIFORNIA INNOVATIONS" after concluding that the proposed mark was "primarily geographically deceptively misdescriptive.  California appealed to the CAFC.

            The CAFC vacated and remanded because "the Board applied an outdated standard."  The CAFC explained that "[i]n the pre-NAFTA era, the focus on distinctiveness overshadowed the deceptiveness aspect (for this rejection)…(and thus) the PTO used a low standard to reject marks for geographically deceptive misdescriptiveness …., which was relatively simple to meet."  However, the NAFTA "treaty shifts the emphasis for geographically descriptive marks to prevention of any public deception."

            In the past, this kind of trademark application temporarily might be denied registration on the principal register.  Upon a showing of distinctiveness, the mark could acquire a place on the principal register, and thus a rejection under the pre GATT rule was only temporary until the applicant could prove that the mark had become distinctive.  The NAFTA implementing legislation, however, shifted the emphasis for geographically descriptive marks to the prevention of any public deception.  Marks that are deemed geographically deceptively misdescriptive now are denied registration permanently, as are other deceptive marks under 1052(a).  This emphasis of fraud on the consumer prompts the higher showing of deceptiveness in analyzing whether a mark is geographically misdescriptive.

Storage Technology Corporation v. Cisco Systems, Inc. et al.
Decided May 13, 2003
Judge Plager with Judges Schall and Gajarsa

*          A term in a claim preamble that serves as a convenient label for the invention      does not limit claim scope

Storage sued Cisco at the U.S. District Court for the Western District of Wisconsin for infringing claims to a method that requires "caching policy identification information" (temporary storing of internet transmission priority ID).  The case was transferred to the Northern District of California where Judge Susan Illston granted Cisco summary judgment of non-infringment because the accused  method does not cache "policy" information itself (such as how to transmit a packet of information on the internet) but only caches "identification" of the policy.  The court limited the claims as additionally requiring policy information caches because the claim preambles recite "policy caching" and because Storage argued during prosecution that both types of caches are used in the method.  Storage appealed to the Federal Circuit.

The CAFC held that the claims only require caching of policy identification, and that the preamble "policy caching" phrase "does not limit claim scope when it merely gives a descriptive name to the invention" (citing IMS Tech. 2000).  Further, Storage's "inaccurate statement (during patent application prosecution) cannot override the claim language itself," because a "general statement introducing new limitations does not limit scope of claims not amended to include the new limitations" (referring to Rambus, 2003).  Based on this broader claim interpretation, the CAFC vacated the non-infringement judgment.

An interesting teaching of this case is that a narrowing statement made during patent prosecution may not limit claim interpretation if the applicant can later argue that the statement was in error and that the claim was not amended according to the statement. 

Anton/Bauer, Inc., and Alex Desorbo v. PAG, Ltd.
Decided May 21, 2003
Judge Schall with Judges Mayer and Dyk

*          Sale of a part for a patented combination may preclude direct infringement         under    the exhaustion doctrine

Anton won a preliminary injunction at the U.S. District Court for the District of Connecticut, enjoining PAG from selling a battery pack that includes a male plate battery connector (that mates with a female connector of a camera) described in Anton's patent.  Anton's patent claims recite a combination of the male plate with a female coupling plate.  Judge Christopher Droney refused PAG's implied license and first sale doctrine arguments based on Anton's sales of the male coupling plate to PAG for the sole use in the combination as claimed.  PAG appealed to the CAFC.

The CAFC reversed because Anton's "unrestricted sale of its female plate, useful only in performing the claimed combination, plainly indicates that the grant of a license to practice the invention should be inferred."  The CAFC pointed out that the finding of an implied license does not "obviate the applicability of contributory infringement in every case" but "merely limits a patentee's ability to assert contributory infringement" when the patentee has sold part of a claimed combination.  The court declined to say whether a minimal portion of a claimed invention must be sold to infer a license grant but stated that it would address this issue "another day."

The CAFC pointed out that Anton "could have, if novel, claimed its female plate and male plate individually …in order to improve the protection of its invention" and further "had the option of selling its female and male plates together as the patented combination."  A patent practitioner must be careful to visualize a final commercial product when drafting claims that may cover parts sold separately, to avoid this problem.

Dayco Products, Inc. v. Total Containment, Inc.
Decided May 23, 2003
Judge Dyk with Judges Mayer and Michel

*          A showing of intent to deceive, and not merely intent to withhold a material        reference may be necessary to prove inequitable conduct

Dayco sued Total for infringing patent claims at the U.S. District Court for the Western District of Missouri.  Senior Judge Scott Wright granted Total summary judgment of unenforceability due to inequitable conduct.  Inequitable conduct was found because Dayco's attorney did not inform a first examiner a) that a similar application from the same line of cases was being examined by a second examiner, b) of a prior art reference cited by the second examiner, and c) of a rejection against very similar claims by the second examiner.  Dayco appealed to the CAFC. 

This is the first case of inequitable conduct for a patent that was prosecuted after the 1992 change in rule 1.56, which now defines materiality more narrowly as information that establishes "a prima facie case of unpatentability" or "refutes, or is inconsistent with a position the applicant takes."  The CAFC deemed that Total sufficiently showed evidence of materiality for a summary judgment from acts a) and c) under both the new and the old rules.  However, act b), (failure to reveal the cited reference to the first examiner) was not material without further analysis because "the mere fact" that another examiner found a new "reference to be material is informative, but not dispositive" in the absence of "factual analysis" with other references.  Most importantly, the CAFC disagreed with the district court's finding that the applicant's withholding of a reference cited by another examiner for a similar set of claims establishes intent.  The prosecuting attorney provided a reason for withholding the reference that "is not on its fact implausible."  That is, the CAFC indicated that a specific showing of intent to deceive and not just a showing of intent to withhold may be required to establish inequitable conduct even when the withheld information is extremely material. 

In its review of "new" rule 56, the CAFC declared that "we have not decided whether the standard for materiality in inequitable conduct cases is governed by equitable principles or by the Patent Office's rules."  This lack of guidance is very unfortunate for patent practitioners who have had to obey the new rules for more than 10 years without knowing how the courts will use the rules for judging inequitable conduct. 

Silent Drive, Inc. v. Strong Industries, Inc. and Brooks Strong
Decided April 16, 2003
Judge Dyk with Judges Linn and Prost

*          An infringement letter uniquely aimed at the forum state and threatening injury     there establishes personal jurisdiction for a declaratory judgment action

            Silent collaborated with F.S., a Texas company to create a trailer axle.  Strong subsequently sued F.S. at a Texas state court for misappropriation of trade secrets to make the axle.  Although Silent was not a party to the lawsuit, the state court granted Strong an injunction enjoining Silent from practicing the axle technology.  Strong then sent warning letters to Silent informing Silent of the injunction (with criminal penalties) and also sent copies to Silent's customers outside of Iowa.  Silent sued Strong in the U.S. District Court for the Northern District of Iowa.  Judge Mark Bennett concluded that Strong's letters to Silent did not create confer personal jurisdiction because the letters "were [not] uniquely or expressly aimed at Iowa" and "the brunt of the harm was [not] suffered in Iowa…."  Silent appealed to the Federal Circuit.

            The Federal Circuit pointed out that this case differs from the usual sending of a warning letter.  Normally, a warning letter does not establish personal jurisdiction because of "policy considerations unique to the patent context."  However, "[n]o such countervailing policy exists with regard to state court injunctions, which are designed to operate primarily in the forum."  Accordingly, personal jurisdiction existed and the Federal Circuit reversed. 

            A warning letter that includes a credible threat of harm specific to a forum (such as a possible criminal conviction in that forum) may establish personal jurisdiction there.

Abbott Laboratories and Fournier Industrie et Sante et al. v. Novopharm Limited
Decided March 20, 2003

Judge Lourie with Judges Michel and Bryson

*          Defining claim terms in a patent specification instead of relying on dictionary       definitions of common words may lead to narrower claims

            Abbott, an exclusive licensee of a drug formulation patent that claims a "co-micronized mixture of particles of fenofibrate and a solid surfactant," markets fenofibrate capsules under a New Drug Application approved by the FDA.  Novopharm, a generic maker, filed an Abbreviated New Drug Application for a modified formulation and included an assertion that Novopharm's particular formulation would not infringe Abbott's patent.  Abbott then sued Novopharm at the U.S. District Court for the Northern District of Illinois.  Judge John Darrah interpreted the claims very narrowly and granted Novopharm summary judgment of no infringement.  The court noted that the specification defined "co-micronization of fenofibrate and a solid surfactant" as "micronization of an intimate mixture of fenofibrate and a solid surfactant" and the "claims could not be construed to include [mixtures obtained by adding surfactant to fenobrate, or separately miconizing the ingredients]."  Abbott appealed to the Federal Circuit.

            The Federal Circuit affirmed because the specification provided a strict definition of the claim phrase.  The court explained that "[h]ad that term not been explicitly defined in the '726 patent specification, we might well agree with the appellants that that term could simply mean 'micronized with or together' and would not necessarily exclude the presence of ingredients not specifically recited in the claim." 

            The Federal Circuit has stated often that multiple definitions from a dictionary should be used to initially construe patent claim terms.  Such broad (multiple) meanings for each word become limited to fewer definitions when one or more definitions are incompatible with statements made in the specification or during prosecution.  A patent applicant should consider relying on multiple dictionary definitions of common words instead of providing a specific definition, as the patentee did in this case. 

Cooper Cameron Corporation v. Kvaerner Oilfield Products, Inc.
Decided May 14, 2003

Judge Lourie with Judges Mayer and Schall

*          An R&D project report may be prior art if available to interested parties

*          A drawing may supply written description when a specification fails to describe an embodiment in words

            Cooper sued Kvaerner at the U.S. District Court for the Southern District of Texas for infringing claims to subsea wellheads having horizontal arrangements that allow maintenance via a "workover port."  Judge Nancy Atlas granted Kvaerner partial summary judgment of invalidity for failure to meet the written discription requirement because "the original disclosure only referred to the workover port as being located between [two plugs] and not other locations as broadly claimed."  The court also held that the inventor's written reports during wellhead development did not anticipate under 102 because the reports "were not generally available or were not prior art" as proper "printed publications."  Both sides appealed to the Federal Circuit.

            The Federal Circuit vacated the summary judgment of invalidity for failure to meet the written description requirement because the specification contained a drawing that comported with the broad claim language.  The court, citing Vas-Cath, noted that "under proper circumstances, drawings alone may provide a written description of an invention."  The court also vacated the non anticipation of the technical reports because the joint venture "released" the "reports to its three members and six participants," who "distributed to interested parties, including outside contractors."

            This case has two lessons.  One, providing figures of a mechanical invention can potentiate broad claims that are not supported by the text as filed.  Two, when studying an invention via a larger joint venture group, it is very important to restrict the group's reports.  The reports in this case had a confidentiality notice, but still had been available to contractors.

Eaton Corporation v. Rockwell International Corporation et al.

Decided March 27, 2003

Judge Prost with Judges Newman and Dyk

*          Long claim preambles that recite structure may limit claim scope

            Eaton won a final jury verdict of infringement and a permanent injunction against Rockwell at the U.S. District Court for the District of Delaware for infringing patent claims to a truck shifting method.  The infringed independent claim recited a two step method but had a preamble of more than 250 words that included several structures.  Judge Joseph Farnan, Jr. construed the claim preamble as merely providing a "reference point" that does not limit the claim structurally.  Rockwell appealed to the Federal Circuit.

            The Federal Circuit's claim interpretation limited the claims to the specific structures recited in the preamble because the recited method "requires the manipulation and operation of structure that is identified and described by the preamble."  Accordingly, the Federal Circuit reversed the infringement judgment, vacated the damages award and vacated the permanent injunction. 

            The method steps in the disputed claims recited the terms "the" and "said" to refer to components mentioned in the preamble ("during the gear shift ratio" and "retaining said vehicle master clutch")  Accordingly, the claim body following the preamble "refers to structure that is identified and defined in the preamble."  A patent applicant that desires to avoid limiting a claim to its preamble should not refer to the preamble this way. 

Northrop Grumman Corporation v. Intel Corporation et al.

Decided March 31, 2003

Judge Bryson with Judges Mayer and Friedman

*          A means plus function claim is not limited by structural elements that are             unnecessary to perform the claimed function

            Northrop sued Intel at the U.S. District Court for the Eastern District of Texas for infringing claims to an improved multiplex data bus interface having "means for defining a functional state of the bus interface unit" and "means for monitoring a plurality of logical signals."  A special master interpreted the means plus function claims as requiring structure such as command/response signals that were not present in the accused infringing protocols, and the court found no infringement.  Northrup appealed to the Federal Circuit, arguing that the claims were interpreted too narrowly.

            The Federal Circuit reversed because the district court had included unnecessary input signals and control signals as necessary to carry out the recited functions.  The Federal Circuit pointed out that signals that are monitored or generated by the necessary structure "cannot be part of the structure that does the monitoring."  The other means for structures also were defined too broadly.  For one clause, only a set of flip flop circuit elements was deemed necessary to implement the function rather than a larger group.  

            Courts often make mistakes when construing means plus function claims.  To facilitate uncertainty during litigation, a patent applicant may consider adding one or two means plus function claims to an application that includes primarily other types of claims.  It may not be wise however, to rely on means plus function claims exclusively in a patent. 

RF Delaware, Inc., v. Pacific Keystone Technologies, Inc. et al.

Decided April 21, 2003

Judge Michel with Judges Rader and Schall

*          Dependent claim terms are not to be read into an independent claim

            RF sued Pacific at the U.S. District Court for the Northern District of Alabama for infringing claims to particulate filters used for clarifying water, and for methods of washing the filters.  Judge Robert Propst granted Pacific summary judgment of non-infringement after construing the claims "to require a multi-layered upflow filter" despite the fact that such multi-layers are recited in dependent claims only, and despite the fact that RF argued different claim meaning at an earlier litigation in Virginia.  The court also was persuaded that Pacific merely was practicing the prior art.  RF appealed to the Federal Circuit.

            The Federal Circuit held that the district court improperly read dependent claim elements into the independent claims and reversed.  The Federal Circuit also found that the district court "improperly adoped Pacific's practicing prior art argument" as an infringement defense, noting that "Pacific needs to establish that its method is in the prior art." 

            This case followed an earlier litigation between RF and another infringer in Virginia, wherein RF argued a different claim interpretation.  Pacific argued that RF is bound by RF's claim construction arguments from the earlier litigation under the doctrine of collateral estoppel.  However, the standard for judicial finality was not satisfied because the parties had settled their case.  The Federal Circuit further found that RF was not judicially estopped by its agreement with the Virginia court's claim interpretation, and was free to argue a new interpretation in Alabama.  This is because RF "did not succeed in urging its [claim interpretation] position."  Deciding when and how to settle a case in a manner to prevent this kind of estoppel is an important strategy when faced with multiple suits.

Rhone-Poulenc Rorer et al. v. Bristol-Myers Squibb Company
Decided April 15, 2003
Judge Prost with Judges Clevenger and Schall

*          A research publication by an inventor after a priority date may be prior art,        particularly if the inventor contradicts statements made in a patent application

            Rhone sued Bristol at the U.S. District Court for the Southern District of New York for infringing patent claims to a method of synthesizing taxol, an anticancer compound.  Judge Robert P. Patterson Jr. held that the patent was unenforceable because of inequitable conduct at the U.S. PTO by Rhone.  Rhone appealed to the Federal Circuit.

            The Federal Circuit affirmed the inequitable conduct finding because the patent applicant failed to submit and have initialed by the examiner, a post filing publication by the inventor that contradicted statements in the patent application.  This case is unusual because the inventor's publication was after the application filing date and became "material" to prosecution under 37 CFC 1.56 based on enablement.  Evidence of enablement from publications or experiments made after the priority date often is used during prosecution at the PTO to prove enablement, particularly for an aggressive applicant that files a disclosure that is at least partly prophetic.  This case affirms that an applicant must submit such later generated information if material under 37 CFR 1.56 on enablement grounds.

            This case teaches several things that an applicant should not do.  One, never put negative statements about the patent application in correspondence.  The principal patent practitioner was a French patent agent who stated in writing to his U.S. associate that "it is difficult to select an appropriate protecting group without undue experimentation."  This comment was used during litigation to help prove inequitable conduct.  Two, a patent applicant should insist that the patent application examiner initialize all found references from the examiner's own search.   The examiner in this case had found the inventor's later research article, but never initialized those entries on form PTO-892.  If the examiner had initialize this search entry, inequitable conduct likely would have been avoided.  Three, the U.S. associate relied on the judgment of the overseas associate regarding a publication, but that overseas associate apparently misapprehended the requirements of U.S. law. 

Lockheed Martin Corporation v. Space Systems/Loral, Inc.

Decided March 24, 2003
Judge Gajarsa with Judges Schall and Friedman

*     There is no doctrine of equivalents analysis for a claim that fails the all elements rule

            This doctrine of equivalents case was remanded from the Supreme Court to the Court of Appeals for the Federal Circuit ("CAFC") after the Festo decision.  Lockheed had sued Space at the District Court for the Northern District of California for infringing satellite orbital correction method claims.  The district court granted Space summary judgment of no infringement, both literally and under the doctrine of equivalents.  The CAFC, in a first decision, affirmed no infringement under the doctrine of equivalents, in accordance with its rule prior to the Supreme Court's Festo decision.  The present remanded case constitutes the Federal Circuit's second review of the district court decision, which held that Space's satellites do not infringe Lockheed's means-for claims.

            The Federal Circuit held in this second review that "the district court erred by improperly broadening the scope of the claimed function by 'reading out' the limitations contained in the claim language."  The claim language includes "rotating" a gyro within the satellite "sinusoidally over the orbit."  This language follows a means for clause, and therefore was limited to a corresponding structure disclosed in the specification, which controlled the rotation by "a predetermined rate schedule."  The Federal Circuit pointed out that Space's accused method "does not utilize a predetermined rate schedule" because it uses "real-time error" sensing.  Accordingly, there could be no infringement under the doctrine of equivalents because to find otherwise "would entirely vitiate a particular claim[ed] element."

            This decision emphasizes that the all elements rule may be just as important as prosecution history estoppel in blocking further analysis of claim infringement under the doctrine of equivalents.  The court explained that a "court must first determine whether the scope of the doctrine of equivalents, as applied to the claim limitation … has been narrowed by" either rule before determining infringement under the doctrine of equivalents. 

Allergan, Inc. and Allergan Sales, Inc., v. Alcon Laboratories, Inc., et al.

Decided March 28, 2003

Judge Schall with Judges Clevenger and Linn, Clevenger and Linn concur separately

*          A pioneer drug maker may sue a generic maker under 35 USC 271(e)2 for induced      infringement of method claims in the absence of direct infringement

            The facts of this case are similar to that of the Warner Lambert case from January.  As in that case, a drug maker (Allergan) asserted claims to a method of using a drug agaimst a generic maker (Alcon) that had filed an Abbreviated New Drug Application (ANDA) at the FDA for a different use of the drug.  Judge David Carter of the U.S. District Court for the Central District of California granted Alcon summary judgment of non-infringement.  The court explained that the filing of an ANDA, without actual infringement, does not provide a basis for a method of use patent holder to sue an ANDA applicant for induced infringement because "the question of inducing infringement would be entirely too speculative."  Allergan appealed to the Federal Circuit.

            The Federal Circuit disagreed with the district court that a patentee could not sue a generic maker for induced infringement upon the generic maker's mere filing of an ANDA.  The Federal Circuit pointed out that "a method of use patent holder could potentially bring an action against a generic drug manufacturer for induced infringement ….before a single (instance of direct infringement by the writing of a) prescription."  On the other hand, the January, 2003 Warner-Lambert case established that "a method of use (pioneer drug) holder may not sue an (generic maker) ANDA applicant  ….if the ANDA applicant is not seeking FDA approval for the use claimed in the patent."  Accordingly, the Federal Circuit affirmed the district court decision for this other reason.  Schall and Clevenger concurred in a separate opinion.  They argued that, although the Federal Circuit has to follow its (Warner-Lambert) precedent, Congress did not intend to limit a patentee's ability to sue under the Wax Hatchman rules based on different methods of use for a pharmaceutical.  Judge Linn also concurred separately and complained that different methods of use for a drug should not confine the ability to sue.  Furthermore, he argued that the Warner-Lambert case holding overstepped the function of courts, which should not have "allowed its policy choices and its evaluation of the legislative history - reasonable as they may be-to override the terms of the statute chosen by congress."

            This split court decision on interpretation of the Hatch-Waxman rules reflects the need for legislative action to amend the rules. 

 Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc.

Decided April 11, 2003

Judge Linn with Judges Schall and Bryson

*          The written description always must be examined to interpret claims

            Brookhill sued Intuitive at the U.S. District Court for the Southern District of New York for infringing claims to a remote control surgical system that uses a radio link "to a remote location beyond a range of direct manual contact."  Judge Naomi Buchwald interpreted the claim term "remote location" to mean a location outside of the operating room.  Based on this definition, the court granted summary judgment in favor of Intuitive (which used a system inside the operating room) and dismissed the complaint.  Brookhill appealed to the CAFC.

            The CAFC concluded that the district court construed the term "remote location" too narrowly and reversed.  The court emphasized that "[t]he written description must be examined in every case, because it is relevant not only to aid in the claim construction analysis, but also to determine if the presumption of ordinary and customary meaning is rebutted."  This opinion referred to the significance of "surrounding text" of the claim to interpret a term and explained that "consulting dictionary definitions is simply a first step."  That is, "where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and towards the proper meanings."

            This case confirms that broad, alternative dictionary definitions of claim terms are to be used for claim interpretation and may govern the claim meaning unless "the written description and prosecution history fail to express a manifest exclusion or restriction limiting the claim term."  Careful patent drafting according to this principle may be crucial to winning a litigation contest.

Riverwood International Corporation v. R.A. Jones & Co., Inc.
Decided March 31, 2003
Judge Linn with Judges Clevenger and Schall

*          Filing of an information disclosure statement is not an admission that a cited        reference is prior art

            Riverwood's inventor obtained a patent after filing an information disclosure statement ("IDS") that cited a prior patent by the inventor as "prior art."  The named inventors of the prior patent overlapped the named inventors of the later Riverwood patent.  During infringement litigation against Jones at the U.S. District Court for the Northern District of Georgia, Jones convinced Judge Beverly Martin that Riverwood's information disclosure statement was an admission that the prior patent was prior art.  The court found invalidity in view of the prior patent.  Riverwood appealed to the CAFC and Jones cross-appealed.

            The CAFC vacated the prior art and invalidity holdings.  The CAFC pointed out that an IDS "shall not be construed to be an admission" according to 37 CFR 1.97(h).  Furthermore, the doctrine that regular admissions "by an applicant during prosecution identifying certain matter …. as 'prior art' is an admission that the matter is prior art" does not apply "when the subject matter at issue is the inventor's own work."  Instead, the CAFC remanded "for a determination of whether the portions of the (cited) patent relied on as prior art (and the asserted claims) represent the work of a common inventive entity."

            Despite the unfortunate conclusory language sometimes used in an information disclosure statement, such statements are not admissions of prior art.  Another interesting issue was the invalidity challenge based on obviousness and anticipation over the inventor's earlier work.  The CAFC remanded for the district court to determine the "evidentiary issue of who invented the subject matter disclosed" to support the rejection, and if need be to "order correction" of inventorship of the earlier patent.

Hoffman-La Roche, Inc., v. Promega Corporation

Decided March 31, 2003

Judge Bryson with Judges Newman and Archer, Newman dissenting

*          Use of the past tense for a prophetic result in a patent application may pose an   inequitable conduct problem if relied on to obtain a patent

            Hoffman sued Promega at the U.S. District Court for the Northern District of California for alleged infringement of Hoffman's patent claims to an enzyme used for polymerase chain reaction.  An issue was whether actions of the inventors to overcome prior art rose to the level of inequitable conduct, and thereby make the patent unenforceable.  The inventors had argued that a prior art enzyme publication asserted by a patent examiner showed a different molecular weight enzyme having at least ten times less purity than the claimed enzyme.  The inventors' argument relied on data from an example in their specification.  This example used the past tense more than 75 times, but contained a statement of very high enzyme purity in the present tense.  During litigation, different steps of the stated purification procedure were found to have been carried out independently of each other, the enzyme had not been obtained in the stated purity, and the stated purification value was prophetic.  Judge Vaughn Walker found that these affirmative misrepresentations were made knowingly and for the purpose of overcoming the prior reference.  The court held summary judgment that the patent was unenforceable due to inequitable conduct.  Hoffman appealed to the CAFC.

            A majority opinion of the CAFC found that the district court did not clearly err in finding the intent element of inequitable conduct for the data misrepresentation, because the inventors knowingly had made misrepresentations "to persuade the examiner to issue a patent" despite their "good faith belief in the novelty of their invention."  The CAFC found that the materiality element of inequitable conduct also was met for some of the misrepresentations.  The CAFC pointed out, however, that "an important step in the judicial resolution of inequitable conduct claims" is to determine if the "misrepresentations or omissions in question are sufficiently serious….to warrant the severe sanction of holding the patent unenforceable."  The district court failed to resolve this latter issue.  Partly for this reason, the CAFC vacated the order of unenforceability.  Judge Newman in a dissent complained of "[l]itigation-induced assaults on the conduct of science and scientists, by aggressive advocates intent on destruction of reputation and property for private gain."  In particular, Judge Newman took issue with the holding that "because the example was not written entirely in the present tense and identified as 'prophetic,' this establishes, without more, both material misrepresentation and deceptive intent."

            A theme in this inequitable conduct case was that only a record of affirmative misrepresentations of data supported intent and materiality to deceive an examiner.  The affirmative misrepresentation of data that overcomes a prior art rejection likely sets this case apart from instances where negligence or omissions during patent prosecution risk an inequitable conduct finding.  The majority opinion emphasized in this context that "affirmative misrepresentations by the patentee, in contrast to misleading omissions, are more likely to be regarded as material."

Apex Inc.v. Raritan Computer, Inc.
Decided April 2, 2003

Judge Gajarsa with Judges Newman and Rader

*          Adjectives in a claim that qualify a functional claim term help avoid         narrow             interpretation as a means plus function claim

            Apex sued Raritan at the U.S. District Court for the Southern District of New York for infringing patent claims to programmable computer switchers.  Judge Milton Pollack held that claim terms such as "circuit" are functional and require matching structure in the specification under 35 USC 112 paragraph 6 as means plus function claims.  The court found non-infringement based on this narrow interpretation.  Apex appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC vacated and remanded because a dictionary definition of "the term 'circuit,' by itself connotes some structure."  Furthermore, "every use of the term in the asserted claims includes additional adjectival qualifications further identifying sufficient structure to perform the claimed function."

            A patent applicant should consider the possibility that a court may construe a patent claim as a means plus function claim.  Qualifying adjectives as well as contextual use of the claim language in the specification and prosecution history may help a court find that a claim recites enough structure to carry out a function.

The Regents of the University of New Mexico v. Galen D. Knight
and Terence J. Scallen
Decided February 28, 2003
Judge Lourie with Judges Newman and Schall

 

*          A structural formula in a patent application may be corrected if the added matter is         an inherent and more accurate description of the subject matter

*          A state that files a patent law suit waives Eleventh Amendment immunity to all    counterclaims arising from the same disputed transaction

            Inventors Knight and Scallen filed patent applications to chemical compounds and executed powers of attorney on behalf of the University while working in cancer research.  Later, Inventors refused to assign continuation in part applications to the University.  The University sued Inventors at the U.S. District Court for the District of New Mexico for the assignments.  Judge John Conway granted the University summary judgment that Inventors breached their obligation to assign University and dismissed Inventor's counterclaim for damages.  The judge held that the University (a state entity) is not subject to the Inventor's damages counterclaim under the Eleventh Amendment, which prevents citizens from suing a state without state permission.  This is because the University did not enter the court for damages, but only had asked for a declaration of ownership.  Inventors appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC disagreed with the application of Eleventh Amendment immunity to the University.  The CAFC declared that allowing a state to enter court for one type of claim while avoiding another type of counterclaim would lead to "seriously unfair results."  Thus, the court established that "a state that voluntarily appears in federal court has waived its (11th amendment) immunity for all compulsory counterclaims" and "in particular, counterclaims for royalties." 

            An interesting issue in this case was that chemical structures in the CIP applications were incorrect and the PTO accepted correction to new structures after a consultant found that the original structures were incorrect.  The Federal Circuit accepted the correction, which was carried out against the inventors' wishes, because "a chemical structure is simply a means of describing a compound; it is not the invention itself."  The application had provided details of synthesis that led to the different structure, allowing correction.

Darrel A. Mazzari and Michael T. Sheedy, v. James E. Rogan, Director PTO
Decided March 17, 2003
Judge Mayer with Judges Newman and Bryson

*          An unsuccessful  patent applicant may present new evidence and arguments in an           appeal to the U.S. District Court for the District of Columbia

In this case an unsuccessful patent applicant appealed his loss to the U.S. District Court for the District of Columbia, which accepts actions against the PTO commissioner under 35 U.S.C. 145.  Both the PTO and the applicant took advantage of their right to introduce new evidence through this route of review.  The PTO presented new evidence of anticipation and Mazzari presented expert witness testimony.  Judge Emmet Sullivan granted the PTO summary judgment that Mazzari's claims are unpatentable.  Mazzari appealed his loss to the CAFC.

The CAFC affirmed the district court's summary judgment, partly due to the PTO's new evidence of prior art and cross examination evidence, wherein Mazzari's expert "admitted that he was not one of ordinary skill in the art" and had not based his declaration on a relevant device.    

This is a strange case wherein the lawyer who represented the patent applicant argued that a prior art was not valid because it was in German.  The attorney also failed to follow instructions of the district court.  Instead, the lawyer "filed numerous confusing documents" and in response, the district court "referred him to appropriate bar disciplinary authorities."

Duro-last, Inc., v. Custom Seal, Inc.
Decided February 28, 2003
Judge Plager with Judges Michel and Lourie

*          Obviousness arguments for a JMOL motion must be sufficiently specific

This is a procedural case pertaining to the instance wherein a party asks a court to overturn a jury verdict, with a motion for judgment as a matter of law ("JMOL").  Duro-Last filed a JMOL motion in a patent lawsuit against Custom at the U.S. District Court for the Eastern District of Michigan as required under the rules, prior to jury deliberation.  However, that JMOL motion did not include arguments of patent validity.  After the jury found Duro-last's patents invalid for obviousness, Duro-Last renewed its JMOL motion.  Judge Robert Cleland accepted that post-trial motion, thus overturning the jury's finding.  Duro-last appealed to the CAFC.

The CAFC reversed the judge's JMOL verdict and reinstated the jury verdict of invalidity.  The CAFC explained that the procedural requirement of arguing an issue "with enough specificity" in a JMOL motion before submission of the case to a jury allows "the opposing party an opportunity to cure the defects in proof."  Here, however, the defendant did not have an opportunity to cure the alleged defect before jury deliberation.  This is because the plaintiff's earlier JMOL motion had omitted arguments and sufficient facts for contesting an obviousness finding.  The CAFC declared that this procedural point is a federal circuit law issue, and not law of the regional circuit because the matter "pertains uniquely to patent law."

Motion practice is very important in litigation.  Convincing a judge to reverse a jury verdict due to insufficient evidence is a powerful tactic that requires careful adherence to the procedural rules.

Lacks Industries, Inc., v. McKechnie Vehicle Components USA, Inc.
 (doing business as Thompson International et al.)
Decided March 13, 2003
Judge Michel with judges Newman and Clevenger

*          An anticipating offer for sale under 102(b) requires a formal offer under contract            law principles

Lacks sued McKechnie for infringing method claims for providing decorative wheel covers at the U.S. District Court for the Eastern District of Michigan.  Judge John Feikens granted McKechnie summary judgment, including an invalidity holding under 35 U.S.C. 102.  The district court found that Lacks had "vigorously solicited wheel manufacturers ….to specify and purchase wheels (made by the patented method)" more than one year before filing the patent application.  The parties appealed various issues to the CAFC.

A CAFC majority decision vacated the invalidity finding because the district court, "explicitly relied on a standard requiring less than 'a formal offer under contract law principles.'"  Upon remanding, the majority opinion suggested that the district court "may need to take additional evidence on the practice in the industry to determine" if those precommercial activities "rise to an offer for sale under the UCC."

A main issue in this case was how to determine whether "precommercial activities" rise to the level of a formal offer, in view of the different purchasing customs found in the automobile industry.  In a partial dissent, Judge Newman complained that the majority opinion, which suggested that the district court take "additional evidence on the practice in the industry," constitutes a "regression toward the imprecision of the discredited "totality of the circumstances" standard that the Supreme Court rejected in Pfaff.  Judge Newman declared a preference for "objective application of contract law" over "indulgence based on disputed local custom" to determine the existence of a formal offer.  Judge Clevenger also dissented in part due to a different interpretation of the claims, and whether the accused devices met the limitations of those claims.

This case was complex, partly because of disputed claim claims that recite how a "decorative layer readily blends" with a "lip" to "provide a visual impression" and is "substantially flush" and thereby "appears to constitute an integral portion" of a wheel.  It is hard to clarify a "visual impression" claim during litigation.

In Re. Richard A. Berg, Paul D. Toman, and Donald G. Wallace
Decided February 20, 2003
Judge Bryson with Judges Plager and Prost

*          Motivation to combine references may arise from an ordinary skilled artisan's     recognition of benefits from the combination

The US PTO rejected Berg's patent claims that recite collagen genes and other DNA sequences useful for processing the encoded collagen, based on obviousness.  After an unsuccessful appeal to the Board of Patent Appeals and Interferences Berg appealed to the CAFC.

The CAFC affirmed the obviousness rejection of Berg's gene claims.  The court found that motivation to combine different references arose from the ability of a skilled artisan to appreciate the benefits of combining DNA sequences from different sources.  The court agreed with the PTO that the combination of genetic components "provides benefits in post-translational processing of the procollagen peptide, which a person of ordinary skill in the art would have been motivated to preserve."

The holding of this case could make it harder to succeed against an obviousness rejections in some instances.  To counter this problem, a patent drafter might include observations of how a particular combination of claim elements would not be expected to provide an observed beneficial result.

Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corporation
and Schering Corporation
Decided February 21, 2003
Judge Clevenger with Judges Mayer and Rader

*          A method claim that recites a virus strain is infringed by a method using a           different strain when the genetic differences are not linked to the claimed method

Boehringer sued Schering at the U.S. District Court for the District of New Jersey for infringing Boehringer's method claims to the culturing of a swine virus strain "VR2332" until a "cytopathic effect is observed."  Judge Harold Ackerman construed the claims narrowly (the accused process used a different virus for example) and found no literal infringement.  A jury, however, found infringement under the doctrine of equivalents.  Both sides appealed.

The CAFC affirmed.  The CAFC agreed that the term "VR2332" limited the claim to a deposited strain with that name.  The accused strain was not a pathogenic virus and differed genetically from the claimed strain in significant ways.  However, these differences did not relate to other claim elements, and the CAFC upheld the jury decision of equivalence.  A second equivalence, to the claim term "until cytopathic effect is observed" was found in the infringing method because Schering incubates its virus a constant length of time to confirm viral growth, which evinces a cytopathic (cell-damaging) effect.

Boehringer convinced the jury that the accused virus is equivalent to Boehringer's deposited strain and won under the doctrine of equivalents.  However, literal infringement of this claim might have been more of a close issue if the application had been written differently.  In finding the accused virus different from the claimed virus, the CAFC pointed out that Boehringer did not state that its virus "was a 'generic' or 'prototype' virus, nor did Boehringer assert that viruses related to but not identical to the isolated strain were within the scope of the invention.  These choices must be held against it."

Pandrol USA, LP and Pandrol Limited, v. Airboss Railway Products, Inc. et al.
Decided February 21, 2003
Judge Dyk with Judges Clevenger and Plager

*          Patent invalidity is a separate issue from infringement and need not be raised      at the summary judgment stage of patent litigation

Pandrol sued Airboss at the U.S. District Court for the Western District of Missouri for infringing patent claims to a railroad track part.  Judge Scott Wright granted Pandrol summary judgment of infringement and held that Airboss had waived its affirmative defense of patent invalidity by not raising this issue during cross motions.  Airboss appealed to the CAFC.

            The CAFC held that the defendants did not waive their defense of patent invalidity and vacated this part of the decision.  This is because "invalidity is a separate issue from infringement."  The CAFC quoted the Supreme Court, which stated that "[a] party seeking a declaratory judgment of invalidity presents a claim independent of the patentee's charge of infringement" and that moreover, "of the two questions, validity has the greater public importance." 

 

Intel Corporation, v. VIA Technologies, Inc.
Decided February 14, 2003
Judge Michel with Judges Mayer and Clevenger

*          An ambiguous license agreement may be construed against a drafter of the         agreement that is solely responsible for the license terms

            Intel created an industry computer communication protocol standard and provided royalty-free licenses for companies having devices that "comply" with the standard "provided that such license shall not extend to features of a product which are not required to comply" with the standard.  Intel later filed suit against VIA in the District Court for the Northern District of California, alleging that VIA's interfaces use Intel's invention outside of the license scope.  Judge William Alsup agreed with VIA's expansive interpretation of the single one page license, decided that VIA's accused activities were allowed, and granted summary judgment of non-infringement. Alternatively, the court held that the license otherwise is ambiguous and under Delaware state law, should be construed against the drafter.   Both sides appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC affirmed.  Although both Intel's interpretation and VIA's interpretation of the short agreement were "reasonable," Intel "alone drafted the agreement and had complete control over the language of its terms…..(and) [t]here was no negotiation between the parties."  Thus, under Delaware contract law, when a contract ambiguity concerns "critical terms" of the license, the ambiguity is construed against the drafter without consideration of extrinsic evidence.  Under this rule of "contra proferentum," a contract drafter that does not negotiate but presents the contract on a make it or leave it basis may be unable to present expert testimony during litigation to support the drafter's desired construction. 

            A party who drafts and offers an agreement to another with no negotiation must be particularly careful to make the agreement clear, or risk losing rights under the agreement.  This is not Federal Circuit Law, but is state contract law in Delaware and in other states.

Biogen, Inc., v. Berlex Laboratories, Inc., and Schering AG
Decided January 31, 2003

Judge Newman with Judges Friedman and Rader; Rader partially concurs separately

*          Arguments made in a related patent application do not automatically apply to     different claims in a separate application

            Biogen brought a declaratory judgment action against Berlex at the U.S.  District Court for the Southern District of New York.  Judge Mark Wolf interpreted the claims to cover the manufacture of human interferon protein in a cell from a single DNA transport vehicle.  Based on this interpretation, Biogen's interferon, which was made using two separate DNA vehicles to move the DNA into the cell (vectors), was deemed not infringing and the court granted summary judgment of non-infringement.  The court also found no infringement under the doctrine of equivalents because Berlex had argued that its method was limited to use of a single vehicle during patent prosecution of a parent application to the divisional application.  Both sides appealed.

            The CAFC affirmed the district court's claim interpretation and the non-literal infringement holding.  The claims broadly recited a method but such methods were limited to a preferred embodiment of a single vector to transfer DNA into a host cell.  Although the specification mentioned the existence (but not details) of other methods, the court explained that "for complex biological processes a reference to known general techniques does not establish whether or how such techniques may be successfully adapted to a particular activity."  More importantly, the examiner had stated during prosecution that the vector "is the same in the prior patent and the instant (divisional) application."  Thus, the examiner had believed that the invention was limited to a single vehicle, despite the broader claim language.

            The CAFC vacated summary judgment of non-infringement because the district court had not reviewed facts for infringement under the doctrine of equivalents.  Those facts included an admission (in the parent application) that a single vehicle is used in the method, but that Berlex subsequently repudiated its earlier statement when Berlex filed a divisional application.  The CAFC pointed out that "[a]rguments must be viewed in context" and held that the district court should have reviewed the facts of equivalency instead of summarily deciding the question as a matter of estoppel.  Rader in a separate opinion concurred in part and argued that "the prosecution history of the parent application may well apply to its progeny" because the specifications are the same and the claims "are patentably distinguishable." 

            When filing and prosecuting a divisional patent application, a patent practitioner should review all admissions made in the parent application and consider explaining how those admissions do not affect the different claims of the later application. 

Springs Window Fashions LP, Shade-o-matic Ltd., and Manor Tec, Inc.

Decided February 13, 2003

Judge Bryson with Judges Mayer and Gajarsa

*          Statements during prosecution that do not overcome rejections may be used to construe claims narrowly

            Springs sued Novo at the U.S. District Court for the Western District of Wisconsin for infringing Springs' patent claims that recite methods of cutting venetian blinds with a first cutter and a "separate second cutter,".  Judge John Shabaz granted summary judgment of non-infringement because Novo's accused cutters consisted of two blades that were not separately (independently) movable.  Both sides appealed.

            The CAFC found that Springs had admitted during patent application prosecution that the invention differed from prior art by the use of "separate movement (cutting blade) means" and affirmed the non-infringement holding.  It appears that Springs' admissions during prosecution arguably were not necessary and may not have influenced the examiner because the asserted prior art may have been removed on other grounds.  However, the CAFC explained that, consistent with the Festo rule, "the public notice function of a patent and its prosecution history requires that a patentee be held to what he declares during the prosecution of his patent."

            Statements made on the record during patent application prosecution generally influence U.S. patent claim construction more than statements made during prosecution in other jurisdictions such as Europe.  It is very important that a patent practitioner for a U.S. patent be familiar with this challenge and very careful about implying narrower claim meaning during arguments with a U.S. examiner.

Altiris, Inc. v. Symantec Corp.
February 12, 2003
Judge Michel with Judges Lourie and Linn

*          Patent method claim steps are not limited to a specific order unless the   specification or file history provides such specific order as determined by a 2-part            test

            Altiris unsuccessfully sued Symantec for infringing claims to a computer booting method at the U.S. District Court for the District of Utah.  Judge Dale Kimball granted Symantec summary judgment of noninfringement because Symantec's accused method employed a reversed order of the preferred procedure.  Both parties appealed claim construction issues to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC declared that the lower court erroneously limited the claims and remanded for re-determination of infringement.  The district court had limited the method claims to a specific order of steps, even though "the plain meaning of the language of the claims imposes no order."  The CAFC reviewed its "two-part test for determining if the steps of a method claim that do not otherwise recite an order, must nonetheless be performed in the order in which they are written" (from Interactive Gift, Fed. Cir. 2000).  In the first step, a court reviews "the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written."  For the second step, if no order is required from the first step "we next look to the rest of the specification to determine whether it directly or implicitly requires such a narrow construction."  The second step reveals an order if the patentee: i) "acted as his own lexicographer and clearly set forth a definition (of an order)"; ii) "distinguished that term from prior art…expressly disclaimed subject matter, or described a particular embodiment as important to the invention"; iii) chose a term that "so deprives a claim of clarity as to require resort to the other intrinsic evidence;" or iv) "phrased the claim in step-or means-plus function format," in which event the term is limited to "the corresponding structure or step disclosed in the specification."  Altiris did not provide such restrictive statement(s) in the patent specification or file history and was not limited to a step order.

            Inferring claim meaning indirectly from statements made (or not made) in a specification and during prosecution can be vague and time consuming.  To help a court construe method claims broadly, a patent drafter should add a statement to the specification that the steps are not limited to any specific order.

Phonometrics, Inc., v. Westin Hotel Co.
Decided February 12, 2003

Judges Bryson, Lourie and Schall

*          Claim construction by the Court of Appeals for the Federal Circuit is not dictum            but controls future cases

            Phonometrics unsuccessfully sued several defendants for alleged infringement of Phonometrics' patent claims to a telephone call cost computer, and appealed those losses to the CAFC.  In each appeal, the CAFC followed a narrow claim construction, which precluded a finding of infringement.  In the second and third appeals, Phonometrics unsuccessfully argued that the CAFC's previous claim construction "was merely dictum" and had no preclusive effect.  In this last case against Westin brought at the U.S. District Court for the Southern District of Florida, Judge Kenneth Ryskamp granted Westin summary judgment of non infringement based on that same claim construction.  Phonometrics appealed to the Federal Circuit, seeking to "re-litigate the meaning" of phrases already construed by the Federal Circuit in earlier cases and complaining that the judge was biased because the judge consistently ruled against Phonometrics "on every issue."

            The CAFC affirmed non-infringement, sanctioned Phonometrics and its attorney $3,000.00 for its "frivolous" claim construction arguments" and warned that attempts to re-litigate issues previously decided "will be sanctioned more severely."

            Sanctions from courts discourage costly, frivolous litigation.  This case shows that the CAFC will not tolerate multiple re-arguments of settled claim construction issues.  The district court as well "awarded attorney fees every time a defendant sued by Phonometrics has requested them." 

Arjun Singh, v. Anthony J. Brake

Decided January 29, 2003

Judge Lourie with Judges Friedman and Prost

*          A notebook entry that demonstrates an understanding of a problem but does not            provide a corroborated solution fails to support a conception date

            Singh lost an interference contest to Brake for an invention to a DNA that encodes a yeast extra cellular transport signal attached to a foreign gene for production of protein in yeast.  Singh appealed to the CAFC, which remanded.  Upon remand, the Board of Patent Appeals and Interferences affirmed that Singh did not prove earlier conception of the claimed DNA because, although Singh "may have articulated in (a notebook) entry the problem to be solved" the notebook entry "did not provide the solution."  Singh appealed again to the CAFC.

            The CAFC affirmed Brake's invention priority.  Singh's notebook evidence of conception unfortunately spanned separate pages, some of which were not countersigned and dated until much later.  The earliest signed page described an order for material that could be used to practice the invention.  Another page had a note on the corner describing an intended use of the material but was uncorroborated (not witnessed timely).  The CAFC explained that such notebook evidence was insufficient and that Singh has the "burden….to prove that he as the inventor had a definite and permanent idea of how to make the (DNA) construct."

            This case shows the value of frequent and timely signing of notebook pages by an inventor and a witness.  In many instances, it is important to document pure ideas, such as thoughts for how to carry out a speculative experiment.  Such evidence often is the earliest indication of "a definite and permanent idea" to support the conception of an invention.

Prima Tek II, L.L.C. and Southpac Trust International, Inc.v. Polypap, S.A.R.L. et al.
Decided February 5, 2003
Judge Gajarsa with Judges Plager and Prost

*          Varied use of a claim term in a patent specification supports a wide claim breadth

            Prima obtained patents for flower holders and sued Polypap at the U.S. District Court for the Southern District of Illinois for infringing the patents.  In this suit, Judge Michael Reagan construed the claim term "floral holding material" to mean "a three dimensional ….material capable of giving support to individual flowers when their stems are inserted into the material."  Based on this interpretation, the court granted Southpac summary judgment of no infringement because flowers "are not actually inserted into and through the actual plastic" of the accused device but instead "inserted into a hole" (which is not a 3-dimensional material).  Prima appealed to the CAFC.

            The CAFC interpreted the claims more broadly, vacated the decision and remanded for determination of infringement.  In construing the claims more broadly, the CAFC concluded "that the prosecution history does not attribute a special meaning to the phrase 'floral holding material.'"  More importantly, the patent specification states that the floral holding "material 'may be' (not must be) ….floral foam or soil. (and ) the many uses of the term throughout the .. patent are consistent with a broader definition."  The main point in this decision is that Prima used an important claim term "at various points in the written description to refer to any material of any shape or type" and thereby obtained a broader claim meaning.

            A basic rule of patent preparation and prosecution is to describe each claim term as broadly as possible in the specification and to avoid contradicting the statements during prosecution, as Prima did with its patents.

Dr. Raymond Tronzo v. Biomet, Inc.

February 12, 2003
Judge Newman with Judges Lourie and Schall

*          A party must timely file a motion to correct an omission in an appellate decision that awards interest on damages or risk losing that portion of the award

            This case, at the U.S. District Court for the Southern District of Florida, concerns a procedural issue of how to obtain interest on a damages award when an appeals court neglects to include an interest calculation in its decision.  Judge Daniel Hurley granted Tronzo post-judgment interest on a 20 million dollars damages award.  The court later reduced the award following an appeal to the CAFC, but then reinstated the award.  The reinstatement decision from the CAFC did not recalculate interest starting from the first award date.  When the district court finally corrected this, Biomet appealed to the CAFC.

            The CAFC vacated the corrected interest award because under rule 37(b) of the Federal Rules of Appellate Procedure, a judgment from an appeals court "must contain   instructions" about interest on damages and a district court cannot change this.  Tronzo should have asked the CAFC to modify its earlier judgement but "no such motion was filed." 

            It is important to raise issues timely during litigation and to file motions when required, or else lose certain rights, as seen in this complicated procedure case.

Harold L. Bowers v. Baystate Technologies, Inc.
Decided January 29, 2003
Judge Rader with Judge Clevenger, Judge Dyk concurs/dissents separately

*          The Copyright Act does not preempt contractual constraints such as shrink wrap           licenses on copyrighted articles

Bowers patented, copyrighted and sold computer aided design software with a "shrink wrap" license that prohibits reverse engineering.  Baystate, a competitor, obtained copies and apparently reverse engineered many of the software's features into Baystate's own software.  A dispute erupted that culminated with Baystate suing Bowers for declaratory judgment that Baystate's products do not infringe Bower's patent and that Boyer's patent is both invalid and unenforceable.  Bowers counter sued and a jury awarded Bowers damages for breach of the shrink wrap license, patent infringement and copyright infringement.  Both sides appealed to the Federal Circuit.

A majority opinion of the Federal Circuit affirmed the breach of contract holding but Judge Dyk dissented on this point. 

This is an interesting case that reveals legal issues for using shrink wrap licenses (non-negotiated licenses for use of a product that are encountered after opening the product package) for protecting products such as software.  A major issue was whether the federal Copyright Act preempts state law contract claims based on shrink wrap licenses that restrain copying.  The Federal Circuit pointed out that "most courts to examine this issue have found that the Copyright Act does not preempt contractual constraints on copyrighted articles."  In distinguishing Bower's shrink wrap "contract" from statutory fair use exceptions to copyright infringement, the Federal Circuit adopted the district court's view that the shrink wrap license constituted a waiver of an affirmative defense and statutory right by a private contractual agreement supported by mutual assent and consideration.  Judge Dyk in a dissent argued that copyright law preempts state laws that authorize shrinkwrap licenses which prohibit reverse engineering, and emphasized that shrink wrap licenses are contracts of adhesion that have not been freely negotiated.  The majority opinion unfortunately did not explore the underlying issue of the limits to enforcing a shrinkwrap license as a contract.

An enforceable shrink wrap license as a contract, can provide broader protection against copying than that obtained under copyright law.  A possible limitation to enforceability of such contract may be whether a court were to consider the contract an unfair "contract of adhesion," because the only choice offered to the purchaser is to avoid making the purchase in the first place, as argued in the dissent.

Rambus Inc., v. Infineon Technologies AG, et al.
Decided January 29, 2003
Judge Rader with Judges Bryson and Prost, Prost dissenting

*          A facially incorrect remark during prosecution does not govern claim meaning

*          A member of a standards setting organization that secretly tries to obtain patents            that cover a new standard might escape fraud charges if the organization's rules are            poorly drafted and the patent claims do not cover the issued standard

Rambus was a member of JEDEC, a standard-setting body associated with the Electronic Industries Association.  JEDEC had a written policy encouraging the adoption of standards free of patented items or processes and a provision for members to reveal the existence of a conflict when voting on a standard.  During its membership of a SDRAM standard setting committee, Rambus attempted to obtain patents that might cover a new SDRAM standard.  Rambus then quit the organization and filed further patent applications having claims that covered aspects of a later adopted SDRAM standard.  Rambus sued Infineon at the U.S. District Court for the Eastern District of Virginia for infringing its patents and Infineon counterclaimed fraud under state law for not disclosing to JEDEC its patents and patent applications related to the standard.  Judge Robert Payne narrowly construed the claim term "integrated circuit device" as necessarily requiring particular circuitry, based on an introductory comment in the Rambus patent prosecution history.  A jury found no infringement of the narrow claims, and fraud, based on an extensive record of intent to file applications that would cover an expected SDRAM standard.  Both sides appealed to the Federal Circuit.

A majority decision of the Federal Circuit reversed the fraud holding because the claims of the early filed patent applications did not in fact cover the SDRAM standards.  Prost, in a dissent, complained that the majority merely made a de novo analysis of the respective claims, the findings were not made at the district court, and "a finding not made cannot be reviewed."  Prost also dissented that JEDEC's disclosure policy should be interpreted more broadly and would have sustained the fraud verdict.  Prost agreed that the lower court improperly relied on a facially incorrect comment during prosecution to construe the claims too narrowly.  That is, prosecution history in its entirety and not just one comment is to be used in interpreting claim meaning.

A big problem in this case was that the standard setting organization had "a staggering lack of defining details in (its) patent policy….(and) a policy that does not define clearly what, when, who, how, and to whom the members must disclose does not provide a firm basis for the disclosure duty necessary for a fraud verdict."  Organizations that set standards should review their disclosure policies in light of the Federal Circuit's comments in this decision.

Micro Chemical, Inc., v. Lextron, Inc. and Turnkey Computer Systems, Inc.
Decided January 24, 2003
Judge Plager with Judges Michel and Lourie

*          Expert testimony is based upon sufficient facts or data even when the expert      does not independently investigate but relies on conflicting facts

Micro won a jury verdict award of damages at the U.S. District Court for the Northern District of Texas against Lextron for patent infringement, partly due to testimony from Micro's damages expert.  Lextron appealed to the Federal Circuit, arguing that the expert's testimony "was not based on reliable facts."

The Federal Circuit affirmed, because the admission of expert testimony under the law of the respective regional circuit (Fifth Circuit) does not require that the testifying expert "undertake an independent investigation" of the facts relied on for his testimony.  The Federal Circuit explained that admissibility of expert testimony under rule 702, as fashioned by the Daubert case and amended in 2000 requires that "the testimony is based on sufficient facts or data" but that such requirement "is not intended to authorize a trial court to exclude an expert's testimony on the ground that the court believes one version of the facts and not the other" but rather should rely on "vigorous cross-examination, presentation of contrary evidence and careful instruction on the burden of proof…..(for) attacking shaky but admissible evidence."

Determination of damages is a very important part of litigation where ambiguous information is presented by battling (or even baffling) experts.  This case teaches that an expert may present debatable evidence during litigation.  Such evidence may be dispositive in litigation.

Micro Chemical, Inc., v. Lextron, Inc.
Decided January 29, 2003
Judge Rader with Judges Schall and Bryson

*          Lack of an available substitute for a patented product allows recovery of lost     profits for patent infringement

Micro sued Lextron at the U.S. District Court for the District of Colorado.  Judge  Zita Weinshienk granted Lextron summary judgment denying Micro lost profits on the basis that Lextron's later developed machine was a substitute that could have been available during Lextron's infringement.  Micro appealed to the Federal Circuit.

This case concerns the circumstances where an infringer can rely on a later developed non-infringing alternative as a readily available alternative during infringement, and thereby escape an award of damages to a patentee based on the "but for" infringment test.  This is a follow up to the Grain Processing case, wherein the Federal Circuit reaffirmed that "a technology not on the market at the time of infringement can, in certain circumstances, constitute an available noninfringing alternative."  In Grain Processing, the defendant escaped paying lost profits because the defendant proved that a substitute product easily could have been made, without any real research.  Thus, no profits were lost because other technology was available (with a little development work).  In this case, however, the Federal Circuit pointed out that Lextron exerted months of design around R&D work to come up with a noninfringing product.  Accordingly, an alternative technology was not readily available and Micro suffered lost profits due to Lextron's infringement.  The Federal Circuit therefore reversed and remanded.

A judged infringer often tries to prove that its infringement did not cause lost profits to a plaintiff because other technologies could have been used.  The Federal Circuit in this case explains the amount of R&D activity that distinguishes a readily available technology from a true design around.

Plant Genetic Systems, N.V. and Biogen, Inc. v. Dekalb Genetics Corporation

Decided January 13, 2003
Judge Michel with Judges Newman and Prost

*          A broad claim of a pioneer patent that covers known but unenabled embodiments          is invalid

            PGS sued DeKalb at the U.S. District Court for the District of Connecticut for allegedly infringing PGS's patent claims that recite genetically engineered plant cells that make a plant resistant to an herbicide.  Judge Dominic Squatrito found the broad patent claims, which recite all types of "plant," invalid on enablement grounds.  One type of plants known as "monocots" (grasses, etc with one leaf) could not be genetically engineered when PGS filed its patent application and the claims covered these known but unenabled embodiments.  PGS appealed to the CAFC.

            The CAFC rejected PGS's argument that PGS's patent "is a pioneer patent and thereby entitled to a broad scope of coverage and lower standard of enablement" and affirmed.  The CAFC pointed out that a determination of whether a patent is "pioneering" is "unnecessary to the disposition of this case" and that "the scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification" (quoting In re Fisher from CCPA 1970).  The CAFC distinguished this case from earlier cases wherein a broad claim covers later technical developments because when PGS filed an application for its "pioneering" invention, the large class of monocot plants were known already and studied intensively.  More specifically, the CAFC asserted that an inventor cannot "claim what was specifically desired but difficult to obtain at the time the application was filed, unless the patent discloses how to make and use it."

            Many broad biotech patent claims have issued that cover molecules and methods that were not enabled at the time of filing.  The CAFC has stated in this decision that the "pioneering status" of an invention might not overcome an enablement deficiency in such instances.

Warner-Lambert Company v. Apotex Corp, Apotex, Inc. and Torpharm, Inc.

Decided January 16, 2003

Judge Lourie with Judges Michel and Plager

*          Submission of an Abbreviated New Drug Application ("ANDA") to the FDA    does not infringe a use claim if the clinical use sought from the FDA differs 

            Warner obtained a New Drug Application from the U.S. Food and Drug Administration to market a drug for treatment of epilepsy.  The patents for the drug and use of the drug in epilepsy expired, but Warner obtained a current patent for use of the drug in "neurodegenerative" disease.  Generic drug maker Apotex filed an ANDA for the different use in epilepsy, which prompted Warner to sue Apotex at the U.S. District Court for the Northern District of Illinois.  Judge Paul Plunkett granted Apotex summary judgment of non-infringement because Warner has no cause of action under the asserted patent, which does not cover epilepsy.  Warner appealed to the CAFC.

            The CAFC reviewed the legislative history of the Hatch-Waxman Act, which created the laws governing how patent rights from drug companies can be enforced against generic copiers, and affirmed.  The CAFC concluded that "it is not an act of infringement to submit an ANDA for approval to market a drug for a use when neither the drug nor that use is covered by an existing patent." 

            Pharmaceutical companies often invoke provisions of 35 U.S.C. 271(e)(2)(A) to attack generic copiers of a drug.  Blocking the sale of a generic drug for even a few months can greatly affect a company's profit.  However, a main point of this case is that a generic drug maker does not have to list with the FDA, a "use" patent subject to 271(e) if that patent only claims methods of use that differ from the use requested from the F.D.A.

In Re. Lance G. Peterson and Ioannis Vasatis
Decided January 8, 2003
Judge Lourie with Judges Bryson and Dyk

·                    A claim to a narrow range within a generally known larger range that is not especially broad may be prima facie obvious

            The PTO rejected Peterson's patent application claims to nickel based alloys of specified percent element compositions on obviousness grounds over prior art composition ranges.  Peterson's claims broadly recited elemental compositions having "about" certain percentages of several elements.  The examiner found a prima facie case of obviousness due to overlapping element ranges of prior art compositions with the claimed composition.  Peterson appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC affirmed the PTO's rejection of claims on obviousness grounds.  The CAFC asserted that Peterson's unexpected results did not rebut the prima facie case of obviousness because Peterson's evidence covered a narrower range of percentages than his claimed "about" percentage ranges.  The CAFC noted in this regard that "[e]stablishing that one (or a small number of) species gives unexpected results is inadequate proof (in such instances because …) objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support" (quoting In re Tiffin from CCPA 1971).

            A patent applicant should not rely solely on claims that recite "about" but should include specific overlapping narrower ranges in the specification to support additional claims that may withstand prior art challenges more easily.  

Oakley, Inc. v. Sunglass Hut International et al.
Decided January 9, 2003
Judge Lourie with Judges Newman and Dyk, Dyk concurring separately

*          A claim term such as "vivid colored appearance" is not indefinite if the    specification presents a formula useful to quantitate the term       

            Oakley obtained a preliminary injunction against Sunglass at the U.S. District Court for the Central District of California after Judge Alicemarie Stotler held that Sunglass's sunglasses likely would be found to infringe Oakley's patent claims.  The claims recite a sunglass that makes a "vivid colored appearance" as seen by others.  Sunglass argued invalidity because the unusual claim phrase was indefinite.  Sunglass lost this argument and appealed to the CAFC.

            The CAFC affirmed, because Oakley's "specification presents a formula for calculating the  differential effect for a number of examples" that were close enough to the accused product to arguably cover that product.  Dyk, in a concurring opinion pointed out that the case was "close and difficult" and the claim construction "may or may not be correct" but affirmed the lower court decision because "the claims enjoy a presumption of validity" and "there was expert testimony that the accused lenses had a vivid colored appearance."

            The CAFC responded favorably to expert testimony for at least part of its deliberation in this case.  The combination of a qualitative term in a claim with a quantitative description in a patent specification for interpreting the term may be a useful claim drafting strategy for anticipating litigation.

In re Majestic Distilling Company, Inc.
Decided January 2, 2003
Judge Lourie with Judges Newman and Schall

*          Identical trade marks on related goods for separate trademark holders causes    confusion, as analysed under several DuPont factors

            The PTO refused Majestic's application for the mark "RED BULL" for tequila, in view of a previous "RED BULL" trademark registration to another company for malt liquor.  Majestic appealed to the CAFC.

            The CAFC evaluated the likelihood of consumer confusion over the origin of trademarked goods based on the "Du Pont factors" (CCPA 1973) as commonly used for this analysis, and affirmed.  Likelihood of confusion was found for several reasons, including the fact that "when word marks are identical but neither suggestive nor descriptive of the goods" the similarity of the mark "weighs heavily against the applicant."

Majestic asserted that it used the RED BULL trademark since 1984 but did not try to register the mark until 5 years after the same mark was registered by another company for a similar product.  A company should register its trademark early.

Paradise Creations, Inc. v. UV Sales, Inc
Decided January 3, 2003
Judge Dyk with Judges Lourie and Bryson, Lourie dissenting

*          A company with a lapsed business license lacks standing to sue in a Federal court

Paradise, a Florida corporation, contracted an exclusive patent right after the state of Florida had administratively dissolved the company's corporate status because Paradise neglected to file annual reports.  The dissolution cancelled Paradise's right to conduct business.  Paradise discovered its dissolved status after suing UV Sales at the U.S. District Court for the Southern District of Florida for patent infringement.  UV Sales convinced Judge Kenneth Ryskamp that Paradise was not an active Florida company, prompting the court to grant a dismissal.  Paradise quickly reinstated its Florida corporation status and argued that under Florida's "corporation revival" law such reinstatement "takes effect" retroactively to the dissolution date and that "the corporation resumes carrying on its business as if the (company) dissolution had never occurred."  The district court disagreed and Paradise appealed to the CAFC.

A CAFC majority opinion affirmed, because only a patentee and "successors in title to the patentee (including) [e]xclusive licensees holding all substantial rights to the patent" can sue for patent infringement.  The majority held that Paradise could not execute a contract when administratively dissolved, and Florida's corporation revival law cannot retroactively confer standing in a Federal court.  Judge Lourie opined in a dissent that "Paradise was (only) temporarily impaired as a corporation" and that Florida state law can retroactively create a patent right transfer and the right to sue. 

 

Sometimes a company may forget to file company reports with its state of incorporation, and  may become "administratively dissolved" until (in many cases) the corporation pays a fee to reinstate its status to conduct business.  This case illustrates complications that can arise from this neglect. 

Amgen Inc. v. Hoechst Marion Roussel, Inc. (Now Aventis Pharmaceuticals Inc.) and Transkaryotic Therapies, Inc.
Decided January 6, 2003
Judge Michel with Judges Schall and Clevenger, Clevenger dissenting

*          A composition claim does not require that the patent specification describe       
          technical developments that arise after the patent application was filed

Amgen filed a declaratory judgment action against Hoechst at the U.S. District Court for the District of Massachusetts after Hoechst submitted an Investigational New Drug Application at the Food and Drug Administration.  Amgen eventually asserted claims from five patents to materials and methods of producing EPO, an important blood hormone, against Hoechst.  The suit involved many legal theories, including whether Amgen's broad method and protein claims were invalid on enablement and written description grounds.  Judge William Young held many of the claims valid and infringed.  Both sides appealed to the CAFC.

 
            The CAFC affirmed the district court's claim construction and many of its holdings, but vacated and remanded obviousness and doctrine of equivalents infringement holdings.  Clevenger dissented on the point that the district court should have reviewed enablement and written description of claims more aggressively to address the "central issue" of whether "Amgens disclosure of one means of producing synthetic EPO….entitles it to claim all EPO produced by mammalian cells in culture, or all cultured vertebrate cells that produce EPO."

A major dispute was whether claims that broadly cover virtually all synthetic EPO could survive enablement and written description challenges when the specification provided limited, narrow teachings.  The CAFC acknowledged the district court's comment that "it appeared that Dr. Lin (the inventor) claimed far more than he delivered" and that after "much reflection" the district court found "that Amgen survives [the enablement challenge], albeit barely."  Hoechst apparently tried to avoid Amgen's patent rights by developing new technology for its alleged infringing method and materials that differs from that described in the patents.  The CAFC noted in this context that "where the method is immaterial to the claim, the enablement inquiry simply does not require the specification to describe technological developments concerning the method by which a patented composition is made that may arise after the patent application is filed."

            An interesting aspect of this case was that the district court "found invalidity (of certain Amgen claims) proven, but only by a preponderance.  However, the claims remained valid and were deemed infringed because, unlike examination at the U.S.PTO. "a heavy burden falls on the challenger (Hoechst)" as the question in the litigation was "validity of issued claims, that are presumed valid by statute" not "patentability of the claims."  Patent challenge by opposition, such as in Japan and Europe might yield a different outcome in this circumstance.  

The case summaries represent the private, current views of Marvin Motsenbocker and are intended to be informative only and not to give legal advice or opinions.  Any views expressed or implied are not necessarily those of Heller Ehrman, its  attorneys or clients.

2002 starts here *************************************

Summary for the year:  focused on claim construction a. use of dictionaries heavily emphasized, yet expert witnesses for "about" and "substantially" was condoned.  Research exemption, resolutely killed off.  Biotech area, court recognized the maturation of the technology and explicitily acknowledged the ability to claim biomolecules at least partly based on their function, as structure - function relationships are becoming more certain for many biomolecules. (Enzo)

Toxgon Corporation v. BNFL Inc. and GTS Duratek
Decided December 10, 2002
Judge Clevenger with Judges Newman and Gajarsa

*          An infringing government contractor is subject to litigation but can escape           liability if the contractor can prove infringement was solely for the U.S.

            BNFL developed a process to glassify radioactive waste for the U.S. department of energy and allegedly infringed Toxgon's method patent claims.  Toxgon sued BNFL at the U.S. District Court for the Eastern District of Washington.  However, Judge Fremming Nielsen dismissed the case for lack of subject matter jurisdiction because under FRCP 12(b)(1), litigation for alleged infringement that occurs "under the authority of and for the sole benefit of the United States" must occur in the Court of Federal Claims.  Toxgon appealed to the Ninth Circuit Court of Appeals, which transferred the case to the Court of Appeals for the Federal Circuit.

            The Federal Circuit vacated the decision because "section 1498 relieves a federal contractor of liability where the contractor uses or manufactures an infringing invention for the United States" but is "not a jurisdictional statute."  That is, a patentee can force an infringer who claims to be working solely for the government to prove those facts in a district court, without first having to file suit in the Court of Federal Claims.

            Whether an accused infringer is working "for the sole benefit of the United States" often is not clear and may need significant fact finding.  After the facts are determined, a defendant can rely on those facts and request summary judgment of no infringement.

 In re Robert T. Bass
Decided December 17, 2002

Judge Mayer with Judges Clevenger and Rader

*          Until a matter has been completed, the PTO may reconsider an earlier action

            A third party requested ex parte reexamination of Bass's patent claims to a fishing boat, and submitted several alleged prior art documents.  The examiner found the claims allowable and issued a "Notice of Intent to Issue Reexamination Certificate."  However, before the PTO issued the reexamination certificate, the third party submitted the same references again, along with more information and a request for a second reexamination.  The examiner responded by changing his mind and rejecting claims 1-4. 

            Bass appealed the rejection to the Board of Patent Appeals and Interferences and then to the Federal Circuit, arguing that the examiner could not reconsider the same references from a first reexamination in a second reexamination.  The Federal Circuit disagreed and affirmed the rejection because the first reexamination was not complete when the examiner considered the second reexamination request.  That is, the first reexamination was pending until the moment that the PTO mailed out the reexamination certificate. 

            A patent examiner is free to change her mind at any time until a patent is actually granted, or until a respective matter has been completed.  Virtually all decisions from the PTO are provisional until a final concluding document (such as grant of a patent or of a certificate) has been mailed.
 

Verve, LLC, v. Crane Cams, Inc. et al.
Decided November 14, 2002
Judge Newman with Judges Lourie and Clevenger

*          The claim terms "about" and "substantially" are descriptive and can be used to    avoid a strict numerical boundary for a claim parameter

            Verve sued Crane at the U.S. District Court for the Eastern District of Michigan for infringing claims to an internal combustion engine push rod having a larger diameter middle section and "substantially constant wall thickness."  Judge Arthur Tarnow granted Crane summary judgment of invalidity on indefiniteness grounds because "the meaning of 'substantially,' constant wall thickness is unclear."  Verve appealed to the Federal Circuit.

            The Federal Circuit vacated the indefiniteness ruling because "[e]xpressions such as 'substantially' are used in patent documents when warranted by the nature of the invention, in order to accommodate the minor variations that may be appropriate to secure the invention."  The court further explained that this term should be interpreted by "appropriate recourse to extrinsic evidence concerning the usage and understanding of the term 'substantially' in relevant context."  Thus, the court recognizes the value of expert witnesses for construing these kinds of claim terms.

            The Federal Circuit in recent years has emphasized the use of intrinsic evidence and dictionaries for construing claims.  However, a patent practitioner might consider adding words such as "about" and "substantially" in extra claims to improve chances of using expert witnesses for claim construction in litigation.

Middleton, Inc., v. Minnesota Mining and Manufacturing Company
Decided November 27, 2002
Judge Rader with Judges Clevenger and Linn

*          Prosecution history statements used to overcome rejections are limited to their   context and may not apply to related applications

            Middleton sued Minnesota at the U.S. District Court for the Northern District of Illinois for infringing patent claims to "improved floor finishing materials having a sheet of uniform flexible film."  Judge John Grady granted summary judgment of non infringement after finding that Middleton had amended claim language from "dry flexible film" to "uniform flexible film" during prosecution of a parent application to overcome a prior art rejection.  Minnesota's floor material was not uniform and therefore could not infringe based on this interpretation.  Middleton appealed to the Federal Circuit.

            The Federal Circuit reversed because the claim amendments, while used to define the same claim terms for a parent application, nevertheless were limited to the context of that other related application, which narrowly claimed bowling alley flooring.  The litigated patent claims in contrast were broadly directed to all flooring.  Thus, "[t]he prosecution history in the context of varnishes for smooth bowling alleys does not limit the broader claims to other flooring surfaces."

            This case demonstrates the danger of using identical claim terms among different patent applications, because an opponent may try to use statements from the prosecution of one application to attack claim breadth obtained from another.  Although the Federal Circuit stated in this case that terms should not be taken out of context, it may be helpful to use synonyms of claim terms in overlapping patent applications to help unlink the claims and avoid the problem.

All Dental Prodx, LLC and DMG Dental-Material Gesellschaft MBH

v. Advantage Dental Products, Inc.
Decided October 25, 2002
Judge Lourie with Judges Newman and Friedman

*          Prosecution history statements may be used to improve definiteness of claim terms

            Advantage sued All Dental at the U.S. District Court for the Eastern District of New York for infringing claims to methods of preparing teeth impressions by heating "an original unidentified mass of thermosetting material" and letting the material set in the patient's mouth at a lower body temperature.  All Dental convinced judge Jacob Mishler to grant summary judgment of invalidity based on lack of written description and indefiniteness grounds because the term "original unidentified mass" was not present in the filed application, and was unclear.   Advantage appealed its loss to the Fededral Circuit.

            The Federal Circuit reversed the invalidity ruling because "the contested language …. is also fairly simple and intelligible, capable of being understood in the context of the patent specification."  More importantly, the Federal Circuit panel determined that "[i]n this case, the prosecution history aids in clarifying the meaning of the claim phrase "original unidentified mass" because "[t]he applicant twice distinguished his invention over the prior art on the basis of that limitation" and both times disclaimed "a specific shape." 

            A patent applicant should consider exploiting prosecution history in a positive way to clarify the meaning of an otherwise difficult to understand claim term during patent prosecution.