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.

Alfred J. Schumer v. Laboratory Computer Systems, Inc., and Wacom Tech. Corp.
Decided October 22, 2002
Judge Dyk with Judges Newman and Michel

*          A claim term that has no specialized meaning properly is interpreted with a         standard dictionary

*          The term “or” normally means an alternative between different possibilities

Schumer sued Laboratory at the U.S. District Court for the Western District of Washington for infringing claims to a computer method of transferring digitizer information from an interface apparatus.  Judge Robert Lasnik granted Laboratory summary judgment of no infringement and claim invalidity, after construing claims that recited “location of the point of origin, angle of rotation, or scale” to mean that an infringing method must satisfy all three location conditions, and not just one.  Schumer appealed to the Federal Circuit.

The Federal Circuit held that the lower court erred in construing the claims and vacated the decision.  The Federal Circuit explained that “[w]e have consistently interpreted the word ‘or’ to mean that the items in the sequence are alternatives to each other.”  Moreover, “[t]he proper approach (to claim interpretation) is to construe the claim language using standard dictionary definitions, because here, the claims have no specialized meaning.”  The court, consistent with its rule on using dictionary definitions, reviewed the patent specification and file history, and found that the intrinsic evidence was consistent with the dictionary definition of the term “or.”

The Federal Circuit often emphasizes the use of regular dictionaries to construe common words used in claims.  After construing a non-specialized word, the file history and specification are checked to determine whether the patentee has narrowed the meaning or intended a different meaning from the definitions provided in the dictionary.  To help a district court focus on this claim construction task during litigation, a patent drafter can specify in a patent specification which dictionary to use in interpreting common claim terms. 

Inverness Medical Switzerland Gmbh and Unipath Diagnostics, Inc.,
v. Princeton Biomeditech Corporation
Decided October 31, 2002
Judge Dyk with Judges Rader and Bryson

*          Dictionaries provide evidence of a claim term’s ordinary meaning

Inverness sued Princeton at the U.S. District Court for the District of New Jersey for infringing patent claims to a test strip that has a region of sugar that helps chemicals migrate through the strip upon wetting.  Judge Katharine Hayden construed the claim phrase “mobility … is facilitated” to mean that “sugar……must help or improve the release of the labeled reagent from the test strip… at the point of release upstream.”  However, Princeton’s “accused product sugar did not facilitate mobility at the point of release, and ….did not infringe.”  Accordingly, the court granted summary judgment of non-infringement.  Inverness appealed to the Federal Circuit.

The Federal Circuit vacated and remanded because the lower court had construed the claims improperly by adding the limitation “point of release.”  The Federal Circuit explained that the phrase “‘mobility … is facilitated’ is not limited to release of the labeled reagent, but rather must be given its ordinary meaning of capacity to make movement easier at any stage.”  The court further remarked that “mobility has no such specialized meaning.  Accordingly, standard dictionaries of the English language are the proper source of ordinary meaning of the phrase.”  In a side comment, the court noted that a dictionary definition is used “as of the date the patents issued.”

The Federal Circuit often uses a regular English dictionary to arrive at a claim meaning that differs from that of a district court.  The Federal Circuit explained that this “general rule” of dictionary use is “subject to two limitations.”  One, a “patentee may demonstrate an intent to deviate from the ordinary” meaning by a non-consistent description in the specification.  Two, “the prosecution history limits the interpretation of claim terms so as to exclude any interpretation that was disclaimed during prosecution.”  A dictionary often has multiple definitions for a word and one or more of the definitions may be dropped from an analysis of the two limitations. 

Inverness Medical Switzerland GmbH and Unipath Diagnostics, Inc.
v. Warner Lambert Company (now Pfizer, Inc.)
Decided October 31, 2002
Judge Dyk with Judges Rader and Bryson

*          Alternative dictionary definitions are used for a claim term unless intrinsic            evidence indicates unambiguously that a definition is not intended

This case is very similar to the above Inverness v. Princeton case, and involves the same plaintiffs, patents, and judge.  In both cases the Federal Circuit declared that the district court judge misconstrued the phrase “mobility … is facilitated.”  A second issue in this latter case with Warner Lambert as defendant was the interpretation of the claim phrase “on said test strip.”  The district court construed this term to mean “in contact with the top or outer layer of said test strip.”  This narrow interpretation helped prompt summary judgment of no infringement because reagent in the accused device was impregnated throughout the strip and not just “on” top.  Inverness appealed to the Federal Circuit.

The Federal Circuit relied on a dictionary to construe the terms “on” and “onto,” and arrived at a broader composite meaning from that of the district court.  The Federal Circuit declared that these words as used in the patent have two alternative meanings whereas the district court had found only one meaning.  The Federal Circuit explained that “a word that has an ordinary meaning encompassing two relevant alternatives may be construed to encompass both alternatives.”  In applying the two limitation rule to winnow out one or more dictionary meanings, the court found that although the preferred embodiment of the invention comported with the single definition used by the district court, the specification did not rule out the second meaning.  Also, although the prosecution history contained statements pertinent to the meaning of “on,” such statements were ambiguous and “[i]t is inappropriate to limit a broad definition of a claim term based on prosecution history that is itself ambiguous.” 

A patent applicant should consider stating in a specification that, as a minimum, alternative definitions from a particular dictionary are used for construction of common claims.  The Federal Circuit consulted two different dictionaries and found them to provide “a substantially identical definition.”  This might not always be true, particularly for words that have shifting meanings, and for words that require technical dictionaries.

In Re. Scott T. Jolley (Interference Contest)
Decided October 29, 2002
Judge Clevenger with Judges Michel and Bryson

*          When an invention conception overlaps an interference count, ordinary skill may            be relied on to obtain a complete conception

Jolley lost a first to invent interference contest to McGraw at the PTO for an invention of new refrigerant compositions containing an HFC refrigerant with a soluble ester lubricant.  Jolley’s patent claims and the interference count (broad claim that describes the contested invention) recite this “two component system.”  McGraw on the other hand was found to have conceived earlier, a three part system containing the refrigerant, an ester and a separate polyglycol.  The Board of Patent Appeals and Interferences determined that McGraw had conceived the use of esters both inside and outside the count, based on an email among co-inventors that had suggested experimentation of a wide range of esters as lubricants.  Jolley appealed its first to invent loss to the Federal Circuit.

The Federal Circuit affirmed, in a decision that reviewed the problem of overlapping disclosure and an interference count.  The Federal Circuit noted that “when the inventors actually began to test esters …they turned first to an ester within the scope of the count” as evidence that the inventors preferred those esters when they had conceived the invention as described in the email.  That is, although the subsequent testing “does not determine whether conception was complete as of that date” the experiment “serves as circumstantial corroboration of” the inventors “preference” of the correct esters. 

McGraw was fortunate that his company kept copies of emails between researchers.  A co-inventor sent an email to McGraw that generally suggested experiments, and the first experiment happened to include reagents that fell within the claims of Jolley’s invention.  This email preceded Jolley’s invention and therefore won patent rights for McGraw.

Ilan  Golan v. Pingel Enterprise, Inc. et al.
Decided November 7, 2002
Judge Gajarsa with Judges Newman and Prost

*          Federal law allows publicizing a patent as long as the action is made in good faith          

Pingel sent warning letters to Golan and Golan’s distributors, alleging that a motorcycle fuel switch that they were selling infringed Pingel’s U.S. patent.  Golan then sued Pingel at the U.S. District court for the Central District of California on unfair competition and antitrust grounds.  Judge Mariana Pfaelzer granted Pingel summary judgment dismissing the unfair competition and state tort claims, due to lack of evidence that Pingel acted in bad faith.  Golan appealed to the Federal Circuit.

The Federal Circuit affirmed because Pingel’s statements regarding the performance of Golan’s accused product were factually accurate.  Although Pingel’s patent had expired, Pingel’s incorrect statements about the patent were in good faith because a patent attorney had informed Pingel that the patent was still in force.  The Federal Circuit remanded for determinations of whether the trademark had been registered and whether Federal law or regional circuit law governs the trademark infringement portion of this case. 

A patentee must be factually correct and conduct an investigation when accusing others of infringement.  Pingel stayed out of trouble here by conducting measurements of the accused product before making statements about the product and by relying on a patent attorney (who made an error) prior to sending warning letters.

Rosco, Inc. v. Mirror Lite Company
Decided September 24, 2002
Judge Dyk with Judges Lourie and Plager

*          A design patent for an article is not invalid on functionality grounds when other   forms of the article exist that perform the same function

            Rosco sued Mirror for infringing its design patent to a bus mirror and Mirror counter sued for infringing its utility patent to a bus mirror at the U.S. District Court for the Eastern District of New York.  Senior Judge Charles Sifton found that Rosco's mirror oval shape, the asserted point of novelty of the patent "of necessity dictates its function" and held the patent invalid as functional.  The judge also found Mirror's patent anticipated by Rosco's design patent based on an inherency argument.  Both sides appealed their losses to the Federal Circuit.

The Federal Circuit reversed invalidity of both patents.  The Federal Circuit declared that the appearance of the Rosco design as claimed was not "dictated by the use or purpose of the article" because other forms besides the oval shape could give the same functions of "suburb field of view" and a more "aerodynamic" shape.  The district court had found Mirror's patent anticipated by Rosco's earlier design patent because "one skilled in the art could produce the same results claimed in (Mirror's patent) simply by practicing (Rosco's patent)."  The Federal Circuit reversed this invalidity finding because "[i]nherent anticipation requires that the missing descriptive material is 'necessarily present,' not merely probably or possibly present, in the prior art." 

The Federal Circuit panel complained that "[t]his case presents an example of the need for clear findings of fact and conclusions of law" and listed 6 issues for the lower court to focus on to complete the litigation.  Both sides apparently had convinced the district court to follow unlikely arguments during their fuzzy litigation and now have to reargue major points after correction by the Federal Circuit.

John M.J. Madey v. Duke University
Decided October 3, 2002
Judge Gajarsa with Judges Bryson and Linn

*          The experimental use defense cannot cover an activity that furthers a legitimate   business objective such as sponsored research at a university

Duke recruited Professor Madey.  Madey brought his laser research program and equipment, which was covered by patent claims.  Madey and Duke subsequently had a falling out and Madey left.  Madey later sued Duke at the U.S. District Court for the Middle District of North Carolina for continuing to operate his lab equipment after his departure in violation of his patent claims.  Judge James Beaty Jr. granted summary judgment of non-infringement to Duke based on the experimental use defense.  Maday appealed to the Federal Circuit.

The Federal Circuit reversed and was not persuaded by Duke's argument that Duke's stated "policy" was "dedicated to teaching, research, and the expansion of knowledge….[and] does not undertake research or development work principally for the purpose of developing patents and commercial applications."  The Federal Circuit referred to previous cases that defined the experimental use defense as "very narrow and limited to actions performed 'for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry" and pointed out that "use in keeping with the legitimate business of the alleged infringer does not qualify for the experimental use defense."

The Federal Circuit consistently has construed the experimental use defense narrowly, starting from the Roche v. Bolar case of 1984 (courts should not "construe the experimental use rule so broadly as to allow a violation of the patent laws in the guise of 'scientific inquiry,' when that inquiry has definite, cognizable, and not insubstantial commercial purposes.")  This case adds clarity by confirming that "a legitimate business objective" has commercial purpose.  It is hard to think of an infringement situation that is worth litigating but that has no commercial value.  Accordingly, the experimental use exemption seems dead for practical purposes.

*          File history may not influence claim interpretation when claim language is very     clear

Union Carbide sued Shell at the U.S. District Court for the District of Delaware for infringing patent claims that recite catalysts used in a chemical reaction.  The catalysts contain a mixture of metals found in special ratios and Union Carbide added a complex "efficiency equation" to the claims during prosecution to describe these ratios.  Judge Sue Robinson interpreted the added claim term as product by process language such that no infringement may be found unless an accused infringer actually used the equation.  Based on this interpretation a jury found no infringement.  Union Carbide appealed to the Federal Circuit, contesting claim interpretation, and contesting whether the trial court properly granted new trials based on prejudicial attorney misconduct and insufficient evidence for the jury's finding of lack of enablement for the broad range of metal mixtures claimed.

The Federal Circuit construed the equation as merely descriptive and reversed the no infringement decision because infringement is possible without actual use of the equation.  The Federal Circuit explained that the plain meaning of a claim "controls unless the intrinsic evidence clearly redefines the claim term so as to put one reasonably skilled in the relevant art on notice that (the applicant) intended to assign term a different meaning."  The majority opinion affirmed the district court's decision for a new trial based on attorney misconduct and for a new trial on enablement, noting that the evidence showing inoperative embodiments was vague.  The majority decision however reversed the district court's conversion of the new trial into a grant of non-enablement as a matter of law, because Union Carbide had failed to ask for that decision prior to submitting the case to the jury.  Mayer dissented that the district court should not have granted a new trial on validity because the misconduct was not sufficiently prejudicial.  Mayer also would have upheld the jury finding of invalidity on non-enablement grounds because "many claimed combinations do not result in (the claimed effect)."

This case supports a more restrictive use of file history statements for narrowly interpreting claims.  Also, the multiple disagreements among the district court, the Federal Circuit majority and the Federal Circuit minority reveals the difficulty that courts have with complex claims which seem to cover a near limitless number of possible combinations and that have to meet the enablement requirement. 

Schwing Gmbh, v. Putzmeister Aktiengesellschaft and Putzmeister
Decided September 24, 2002
Judge Bryson with Judges Clevenger and Plager

*          An amendment does not estop application of the doctrine of equivalents if it       bears only a tangential relation to the equivalent in question

Schwing sued Putz at the U.S. District Court for the District of Minnesota for infringing patent claims to concrete pumps having shutter valves with "annular extensions" that provide a wearing surface for greater valve life.  Judge Donovan Frank granted summary judgment of no literal infringement and no infringement under the doctrine of equivalents due to prosecution history estoppel wherein Schwing had amended claims to limit "annular extension" to the "second side" of a flexible ring.  Schwing appealed to the Federal Circuit,

The Federal Circuit held that prosecution history did not estop application of the doctrine of equivalents and vacated the holding of non-infringement under the doctrine of equivalents.  The Federal Circuit explained that "[t]he patentee can overcome the presumption that prosecution history estoppel bars a finding of equivalence….if 1) "the asserted equivalent was unforeseeable;" 2) "the rationale underlying the amendment bears only a tangential relation to the equivalent in question;" or 3) "there is some other reason that the patentee could not reasonably be expected to have described the substitute in question."  The Federal Circuit remanded the case to the district court to allow Schwig a chance to rebut the presumption that the narrowing amendment surrendered the particular equivalent in question, stating "[t]patentee's statements during prosecution and reexamination did not constitute clear disavowal of claim scope" when "viewed as a whole."

This case reviews a three part test that a patentee might use to argue that an amendment or argument at the patent office does not estop application of the doctrine of equivalents.

Earl E. Thompson, Sr. v. Henry T. Haynes et al.
Decided September 30, 2002
Judge Linn with Judges Gajarsa and Dyk

*          Willful violation of a trademark right allows trebling of damages but not trebling of the defendant's profits

Thompson and Haynes entered a complicated "joint patent application" relationship with cooperative marketing and manufacturing split between them.  After a falling out, Thompson sued Haynes at the Northern District of Oklahoma over royalties, injunctive relief, unfair business practice and other issues.  Judge Sven Holmes found that Thompson willfully violated the Lanham Act and the common law of unfair competition.  As recommended by a special master the court awarded Haynes treble damages for lost sales, an advertising campaign, and for Thompson's profits.  Thompson appealed the adverse findings to the Federal Circuit.

The Federal Circuit reversed trebled damages from advertising and profits of the other side because profits are not subject to treble damages under the Lanham Act.  The reviewing court stated that "the court may not, as it did here, simply lump profits together with damages and apply the same measure of enhancement to both."

Determination of damages awards is a complex area of patent law that often is left to attorneys who specialize in this area.   

In Re. Stephen B. Bogese II
Decided September 13, 2002
Judge Dyk with Judges Newman and Prost, Newman dissenting

*          The PTO can order forfeiture of patent rights for unreasonable delay in prosecution

            Stephen filed a patent application for a telephone connector in 1978 and during prosecution of a following continuation application twice appealed to the Federal Circuit.  After the unsuccessful appeals, wherein both the PTO and the Federal Circuit rejected his claims, Stephen re-filed his case ten times without amending the claims.  The PTO then warned Stephen that if he filed another continuation without "any substantive amendment to advance prosecution" the PTO might invoke the equitable doctrine of laches and he would lose "the right to a priority date, or the right to a patent."  Stephen ignored the warning and the PTO rejected his claims on prior art grounds and on these new grounds.  Stephen appealed to the Federal Circuit.

            A majority decision of the Federal Circuit affirmed the PTO's rejection.  The decision cited the recent Symbol Technologies, Inc. v. Lemelson Medical (277 F.3d 1361, 61 USPQ2d 1515 (Fed. Cir. 2002) case wherein the Federal Circuit held that "the equitable doctrine of laches may be applied to bar enforcement of a patent that issued after unreasonable and unexplained delay in prosecution, even though the patent applicant complied with pertinent statutes and rules."  Judge Newman dissented because "equitable determinations are generally reserved to the courts" and such power to impose non-statutory time limits without going through standard agency rule-making "requires legislative authorization."

            The Symbol Technologies, Inc. v. Lemelson Medical case in January established the doctrine of laches as grounds for a court to find a patent unenforceable.  This new case extends the doctrine to the PTO, which now can declare loss of rights due to delay.  This decision is dangerous because it gives the PTO a new basis for refusing to grant a patent.  The problem of refiling a case many times already is solved by the 20 year patent term and the PTO generally does not need its new power.

Eagle Comtronics, Inc. v. Arrow Communication laboratories, Inc. et al.
Decided September 17, 2002
Judge Linn with Judges Rader and Schall

*          Breach of secrecy of a patent application at the PTO by a party during litigation             may invoke sanctions of the court

*          A one to one correspondence of claim elements is not required for a finding of   infringement under the doctrine of equivalents

            Eagle sued Arcom at the U.S. District Court for the Northern District of New York for infringing its patent claims under the doctrine of equivalents.  The claims recite cable filters that have a front cap and rear insert body and the accused device has a single body instead of these separate elements.  Senior Judge Howard Munson granted summary judgment of non infringement because of file history estoppel and further refused to grant sanctions to Arrow after Eagle filed a confidential document at the PTO that Eagle had obtained from discovery.  Both sides appealed to the Federal Circuit.

            The Federal Circuit held that the district court abused its discretion when it found no violation of its protective order regarding confidential documents.  In violating the order, Eagle had decided that an invention described in the discovered Arrow patent application was owned by Eagle and filed copies of that document at the PTO while listing an Eagle employee as an inventor.  The Federal Circuit explained that "[p]atent applications are preserved in secrecy….for a reason. (and that) Breaches of this secrecy undermine the integrity of the patent system.  When these breaches occur under a court's watch, sanctions are wholly appropriate." 

            This case strengthens the doctrine of equivalents.  Eagle alleged infringement only under the doctrine of equivalents when it brought its case to the court.  The district court held that Eagles's patent prosecution arguments against prior art devices that refer to the usefulness of a "seal between the front cap and the rear inset body" of its claims estopped use of the doctrine of equivalents.  The Federal Circuit reversed, because the arguments merely attempted "to distinguish the seal location" and not the seal as claimed, and thus were not file history estoppel.  The Federal Circuit further declared sua sponte that the doctrine of equivalents may apply in this situation where "two elements of the accused device perform a single function of the patented invention, or when separate claim limitations are combined into a single element of the accused device" and remanded for resolution of disputed factual issues.

            The doctrine of equivalents is not dead.  The plaintiff in this case initiated litigation with only a doctrine of equivalents theory and was not blocked by file history estoppel despite having argued over asserted art during prosecution. 

Monsanto Company v. Homan McFarling
Decided August 23, 2002
Judge Newman with Judges Bryson and Clevenger, Clevenger dissenting

*          Forum selection clauses in contracts are valid and acceptable unless they are      clearly unreasonable or fraudulent

            Monsanto developed a patent licensing system to protect its genetically modified seeds that are resistant to Roundup(TM) herbicides.  Under this system, a farmer who buys Monsanto's seed agrees in writing not to replant new seed from a crop produced by the seed.  The agreement includes a forum selection clause obligating the parties to select certain Missouri courts for all disputes arising under the agreement.  Farmer McFarling violated the agreement by saving and planting 1,500 bushels of soybeans from his harvest.  Monsanto sued Mcfarling at the U.S. District Court for the Eastern District of Missouri where judge Catherine Perry denied McFarling's motion to dismiss for lack of personal jurisdiction based on McFarling's assertion that he had failed to read the forum selection clause before signing the agreement.  The judge also granted Monsanto a preliminary injunction.  McFarling appealed.

            The Federal Circuit affirmed, citing California, Missouri and Mississippi contract law, which "reflect" the "universal rule" that  "a person is bound to a written agreement that he signs but neglects to read."  The opinion pointed out that "forum selection clauses… have often been enforced" in "form contracts that are not subject to negotiation."  Clevenger dissented, arguing that McFarling was not subject to jurisdiction to the Missouri court because the contract establishing jurisdiction was a contract of adhesion and therefore unenforceable.  Clevenger pointed out that the parties have unequal standing in terms of bargaining power (multi-billion dollar corporation versus a small farmer) and the license involved a "take-it-or-leave-it" provision in a printed form contract. 

            A key disagreement within this case panel was how much deference should be given to a small party who signs a printed form contract without negotiation.  The majority decision upheld the onerous un-negotiated Monsanto form contract conditions because the U.S. "is not a bazaar economy in which the terms of every transaction, or even of most transactions, are individually dickered."  The dissent pointed out that the form contract was extremely one sided, with a $75,000 farmer obligated to pay a multi-billion dollar corporation's legal fees and costs, litigate in the corporation's backyard and pay damages equal to 120 times the value of the contract.  In return all Monsanto had to do was to allow the farmer to buy a seed that had overtaken more than two thirds of the U.S. soybean seed market. 

Creo Products, Inc. v. Presstek, Inc.
Decided September 17, 2002
Judge Bryson with Judges Clevenger and Rader, Clevenger dissenting

*          A means plus function claim may be supported by structure that is only implicit in           the specification and can be interpreted using a skilled artisan's knowledge

Presstek sued Creo at the U.S. District Court for the District of Delaware for infringing claims of two patents.  The two patents claim an image printing calibration apparatus with "means for" limitations, including means for rotating each cylinder" that applies a color ink.  Judge Gregory Sleet held that the patents are not invalid and the Creo's system does not infringe either patent.  Both sides appealed.

The Federal Circuit affirmed, in a fact filled opinion that explored the meaning and support for several means plus function claim elements.  One problem cited in the opinion was that detailed structure was not provided "for completely performing the function" of a claim element.  However, the Federal Circuit pointed out that "[u]nder our case law interpreting 112 paragraph 6, knowledge of one skilled in the art can be called upon to flesh out a particular structural reference in the specification" to satisfy definiteness.  Judge Clevenger was not so sanguine but dissented because he could not find "any structure disclosed in the written specification to mate with" a means for clause for one of the patents.

This is yet another example of the difficulty courts have with interpreting means plus function claims.   Such claims should be supported by a wide range of structures because some embodiments (and their structures) may become abandoned through claim amendment and argumentation during prosecution.

Novo Nordisk A/S, et al. v. Becton Dickinson and Company
Decided September 19, 2002
Judge Newman with Judges Schall and Bryson

*          Prejudicial remarks of examiner incompetence and patentee monopolies are       improper but must be objected to during trial for remedial action

Novo sued Becton for infringing patent claims that recite an insulin injector syringe containing insulin that flows freely through a 30 gauge needle, and through a thinner than a 29 gauge needle respectively, at the U.S. District Court for the Southern District of New York.  A jury found motivation for combining prior art injection pens with 30 gauge needles because of reduced pain associated with thinner needle size, and the patents were invalidated on obviousness grounds.  Both sides appealed to the Federal Circuit. 

Novo argued on appeal that Judge Barbara Jones improperly refused to instruct the jury that "obvious to try" is not the correct legal standard for determining obviousness.  Novo also argued that Becton presented unduly prejudicial arguments, referring to "overworked and inexperienced" patent examiners and to patents as "monopolies."

The Federal Circuit affirmed the invalidity finding and rejected the jury instruction complaint, while noting that "obvious to try" was expressed by a Becton witness and that "there was extensive argument on the issue."  The Federal Circuit refused to grant a new trial to Novo despite the "presentation to prejudice the jury" of "[i]nflammatory insinuations and incorrect statements" because "Novo failed to object to any of the statements at trial, failed to ask for corrective jury instructions, and failed to raise the issue in post-trial motions."  The Federal Circuit explained that "counsel for the defense cannot as a rule remain silent, interpose no objections, and after a verdict has been returned seize for the first time on the point that the comments to the jury were prejudicial."

The Federal Circuit denied appeals from both sides in this case because suitable motions to object or to appeal their respective issues were not lodged earlier in the litigation but only raised during appeal to the Federal Circuit.  It is important to contest and build a comprehensive record of issues at the earliest stages of litigation. 

Elan Pharmaceuticals, Inc. and Athena Neurosciences, Inc. v. Mayo Foundation
Decided August 30, 2002
Judge Newman with Judges Gajarsa and Dyk, Dyk dissenting

*          A general proposal in the prior art to make a product that has not been made does        not meet the criteria of 'anticipation'

Elan obtained two patents that claim transgenic mice which make an Alzheimer's protein that is useful for drug discovery.  Elan sued Mayo at the District Court for the Northern District of California for infringing the patents and Judge William Alsup granted Mayo summary judgment of invalidity based on a prior art reference that suggested making the same transgenic animals.  Elan appealed to the Federal Circuit.

The Federal Circuit in a majority decision found that the legal requirements of anticipation were not met and reversed.  The court referred to the "difficulty, uncertainty, unpredictability, and low success rate of each method that has been used" in this field in finding the prior art unenabled.  The court further commented that a reference that "does no more than teach broad known 'recipes' for (a technology….and) is simply an invitation to experiment, with no assurance of success" cannot anticipate.  Judge Dyk dissented, in an opposite view that evidence to prove inherency is not limited to evidence in the prior art but can include the patent applicant's knowledge. 

This is an important case for molecular biology patenting because the scientific literature is replete with suggestions for how to make new molecules, new cells, new plants and new animals.  Despite all the suggestions, a scientist often spends enormous resources without guarantee of success in trying to make a new cell or organism that others can easily dream about.  The scientist should not be blocked from obtaining a patent due to anticipation from those dreams.  

Minnesota Mining and Manufacturing Company v. Chemque and Thomas & Betts Corp.
Decided August 30, 2002
Judge Gajarsa with Judges Mayer and Linn, Judge Mayer dissenting

*          Jury instructions are important in litigation

3M sued Chemque at the U.S. District Court for the Western District of Texas for infringing patent claims to a signal transmission component having a special dielectric encapsulant.  A jury found an independent claim not anticipated and not infringed, yet found a pendent dependent claim anticipated and infringed.  3M appealed to the Federal Circuit, and argued against the anticipation finding.  Chemque had successfully convinced district court judge Stephen Capelle that the findings were consistent, but also appealed to the Federal Circuit and argued against consistency of the findings, based on a desired non-infringement theory.

The Federal Circuit reversed portions of the decision wherein the lower court had refused judgment as a matter of law to fix the anomalous jury decision.  The Federal Circuit declared that Chemque was judicially estopped (under 5th circuit law) from asserting that the jury verdicts were inconsistent, because Chemque successfully had relied on the opposite argument in convincing the lower court to maintain the jury verdicts.  The Federal Circuit found insufficient evidence to support anticipation and reversed that holding as well.  In particular, a prior art sample that was sent out to prospective customers did not anticipate because no evidence was presented that the samples were enabling or had been used by anyone.  Judge Mayer dissented because of his belief that the jury verdict was supported by substantial evidence.  Judge Mayer also pointed to various expert testimonies in concluding that anticipation existed for the dependent claim. 

The major problem in this case was the "critical oversight by the parties" in not instructing the jury "as to the relationship between the independent and dependent claims."  Subsequent legal skirmishing focused on how to accept or reject the jury contradictions.

Harold L. Bowers v. Baystate Technologies, Inc.
Decided August 20, 2002
Judge Rader with Judges Clevenger and Dyk

 

*          Prosecution history may be used to narrow the literal meaning of a claim

            Bowers sued Baystate at the U.S. District Court for the District of Massachusetts for infringing its patent claims to a computer system template and pointing device having a "single movement"  to "select a working function."  Judge Nathanial Gorton construed the claims to mean that the pointing device movement "can, but need not, select a working function."  Based on this interpretation a jury found literal infringement and awarded damages.  Baystate appealed to the Federal Circuit.

The Federal Circuit found evidence in the prosecution history that the single movement necessarily selects a working function.  Bowers had distinguished the claims over a prior art by the fact that the pointing device of the prior art sometimes selected "additional menus rather than working functions."  Accordingly, the Federal Circuit interpreted the claims more narrowly, which no longer covered Baystate's accused device, and reversed the patent infringement verdict.

Prosecution history generally is more important for construing literal claim meaning than it is for determining equivalents under the doctrine of equivalents during litigation.

Masco Corporation v. United States et al.
Decided August 28, 2002
Judge Linn with Judges Newman and Clevenger

*          A functionally descriptive claim term that shows how a limitation is accomplished            does not implicate means plus function format under 112 paragraph 6      

            Masco sued the United States at the Court of Federal Claims for infringing method claims to electronic combination locks that recite a step of "transmitting a force applied to the dial to the lever."  Chief Judge Edward Daniel construed the "transmitting a force" claim limitation as a step plus-function limitation under 112 paragraph 6 and granted the United States summary judgment of no infringement, based on this construction.  The court also refused to review certain fact questions on issue preclusion grounds because those questions had been included in a district court litigation that had been reviewed by the Federal Circuit.  Masco appealed to the Federal Circuit.

            The Federal Circuit construed the "transmitting a force" limitation as an act that "describes how the lever is driven into the can," which shows how the limitation is accomplished, and does not invoke a means plus function claim format.  The court thus reversed part of the summary judgment.  The Federal Circuit also declared that issue preclusion does not cover the fact issues of how the locks operated, stating "[s]ince we did not reach the push/pull issue in (the first appealed case) …. we hold that the correct determination cannot serve as a bar to relitigation of that issue in those proceedings."  Issue preclusion could not occur for an issue that had not been re-argued in the earlier appeal.

            Many attorneys prefer to avoid means plus function claims.  Courts often have difficulty even deciding when these claims exist, as seen in this case.

Herbko International, Inc. v. Kappa Books, Inc.
Decided September 3, 2002
Judge Rader with Judges Gajarsa and Prost

 

*          A book title may assume trademark status if multiple volumes create secondary meaning

            Kappa filed a successful petition to cancel Herbko's "CROSSWORD COMPANION" trademark based on Kappa's earlier publication of a book entitled "Crossword Companion."  The USPTO Trademark Trial and Appeal Board granted summary judgment canceling the mark and affirmed the judgment upon request for reconsideration.  Herbko appealed to the Federal Circuit.

The Federal Circuit reversed because "the publication of a single book cannot create, as a matter of law, an association between the book's title (the alleged mark) and the source of the book."  Unfortunately for Kappa, Kappa's second book in its "Crossword Companion" series did not issue until after Herbko filed its intent to use trademark application.  Otherwise, the second book could have been used to show secondary meaning, based on a series of books with the trade name as a title. 

A company should not overlook its trademark strategy when starting a new project.  In this case, Kappa may have lost due to bad timing.

BBA Nonwovens Simpsonville, Inc. v. Superior Nonwovens, LLC and Lloyd E. Trimble

Decided August 30, 2002
Judge Linn with Judges Newman and Dyk, Dyk dissenting in part

*          A protectable trade secret must be commercially valuable

            BBA sued Superior at the U.S. District Court for the District of South Carolina for trade secret misappropriation and patent infringement.  A jury found violation of South Carolina trade secret law which, like most state law modeled after the Uniform Trade Secrets Act, requires that the trade secret owner "derives independent economic value, actual or potential" from the secret.  Both sides appealed various issues to the Federal Circuit.

            A majority of a Federal Circuit panel affirmed the trade secret violation decision and agreed that a combination of individual elements for a quenching condition for yarn manufacture presented by BBA qualifies for trade secret protection.  The Federal Circuit majority referred to an expert opinion in this regard who stated that the elements of the quench conditions were "very novel," and "very, very unusual" and that the secret design is "important to production," in support of the economic value of the secret.  Judge Dyk dissented because the separate elements that BBA used in its process had been described in prior art, and no evidence was provided that the combination of elements provides a "superior economic advantage over the prior art." 

Although BBA succeeded in its trade secret litigation, BBA's position would have been stronger if it had provided evidence that the secret (combination of known elements) provided an economic advantage.

Jack Guttman, Inc. v. Kopykake Enterprises, Inc.
Decided August 30, 2002
Judge Clevenger with Judges Rader and Bryson

*          Statements made during prosecution can be used to support broad literal claim meaning

            Guttman sued Kopykake at the U.S. District Court for the Southern District of Ohio for infringing his patent claims to a method for making edible photocopy sheets for cake decorations.  Judge Susan Dlott "tentatively" construed the claims, which recite "passing an edible web along an elongated non-tortuous copy path in the photocopy machine" as not significantly deforming a copied line and requiring use of an ordinary copy machine.  Based on this construction the court refused to grant a preliminary injunction because the accused device seemed "to follow a tortuous bend" and a regular copy machine was not used.  Guttman appealed to the Federal Circuit.

The Federal Circuit construed the claims to include copy paths that are curved, and copy machines that are not paper copiers but that have a scanner separate from an image reproduction unit.  The Federal Circuit noted that the "prosecution history provides an explicit definition of the contested claim" because Guttman argued to a PTO examiner that the "non-tortuous copy path" term "is intended to cover a copy path that may be curved."  Because the accused device appeared to meet the limitations of the properly construed claims, the Federal Circuit reversed the rejection of the preliminary injunction.  The Federal Circuit pointed out that "grounding a decision on a preliminary injunction on a claim construction at odds with an unambiguous definition in the intrinsic evidence constitutes an abuse of discretion."  

A patent applicant should use patent prosecution as an opportunity to add broadening definitions of claim language into the record to help make a desired interpretation "unambiguous.".

Pin/Nip, Inc. v. Platte Chemical Company
Decided September 4, 2002
Judge Lourie with Judges Mayer and Linn

*          The term "composition" normally means mixtures of multiple substances that exist           together

            Pin/Nip sued Platte at the U.S. District Court for the District of Idaho for infringing its patent claims to a "composition" of two known sprouting inhibitors that show unexpected synergy and thus can be used at lower, less toxic concentrations.  Platte's accused process separately applies the inhibitors at different times.  Judge B. Lynn Winmill construed the claim term "composition" to cover "a spaced, sequential application" of the two inhibitors, which covered the separate application, and a jury found infringement based on this definition.  Pin/Nip appealed to the Federal Circuit.

The Federal Circuit construed the term "composition" to mean "a mixture in which the components are together at some point in time" and noted that "the use of the materials separately was in the prior art."  Accordingly, the Federal Circuit vacated the infringement verdict and remanded.

The Federal Circuit has the final word on claim meaning and can easily undo the results of a jury trial as seen in this case.

New Railhead Manufacturing, L.L.C. v. Vermeer Manufacturing Company,
and Earth Tool Company, L.L.C.
Decided July 30, 2002
Judge Michel with Judges Mayer and Dyk, Dyk Dissenting

*        A provisional application should be as detailed as a regular utility application

Railhead sued Vermeer at the U.S. District Court for the Northern District of Texas for infringing claims to a drill bit having a "unitary bit body being angled with respect to the sonde housing the bit body."  Judge Terry Means agreed with Vermeer that Railhead's priority provisional patent application lacked this element and held summary judgment of invalidity based on prior use more than one year before Railhead's subsequent utility application.  Railhead appealed to the Federal Circuit.

The Federal Circuit pointed out that "nowhere in the provisional application is the bit body expressly described as being angled with respect to the sonde housing" and therefore Railhead could not rely on its provisional application for priority.  The provisional application included drawings that lacked this feature and the later application included more details.  The Federal Circuit explained that a provisional application must meet the same disclosure requirements as a regular utility application.  A dissent by Judge Dyk agreed that the divisional application failed to disclose the later claimed invention but argued that the majority incorrectly deemed the inventor' prior use public because that use was underground, out of public view and under confidentiality.  The majority emphasized that the inventor could not control when the device was actually used and had found public use, primarily on this basis.

The outcome of this case demonstrates the danger of filing a provisional application without the same care as a regular utility application.  Although a provisional application does not require a claim, an application drafter should begin with claims, which allows the drafter to focus on details needed to complete the application properly. 

Bionx Implants, Inc. et al. v. Linvatec Corporation
Decided August 15, 2002
Judge Bryson with Judges Newman and Rader

*        Infringement of product claims is not determined by how a product is used

Bionx sued Linvatec at the U.S. District Court for the Southern District of New York for infringing its patent claims to surgical sutures and methods of their use having "a single rigid shaft portion."  Judge Jed Rakoff held summary judgment of no infringement because the accused device was inserted into the tissue only through "a cannula, or hollow rod," which was "a modification of the device" and therefore "irrelevant as evidence of infringement."  Bionx appealed to the Federal Circuit.

The Federal Circuit reversed the holding of non-infringement because "the use of a cannula to insert the BioStinger into meniscal tissue was within the context in which the patent contemplated that the claimed invention would be used."  Thus, although the defendant argued that its device "is not commercially used with a cannula" the patent specification itself defined the suture as rigid enough to be used with a cannula, which rigidity the accused product satisfied.  Apparently the district court overlooked claim breadth by focusing on differences of how the accused product was used.

A broad description in the patent specification was very useful to this patentee. 

Bayer AG and Bayer Corporation v. Carlsbad Technology, Inc.
Decided August 14, 2002
Judge Rader with Judges Gajarsa and Prost

*     A patentee may be able to clarify a legal ambiguity by filing an unnecessary petition

Bayer terminally disclaimed the expiration date of its CIPRO antibiotic patent to October 1, 2002.  Later, in response to amendments from the Uruguay Round of Agreements Act, the PTO implemented a new 20 year term, stating that a patent filed before June 8, 1995 "is automatically entitled to the longer of the 20-year patent term measured from the earliest U.S. effective filing date or 17 years from grant.  This is automatic by operation of law."  However, when Bayer sued Carlsbad for patent infringement at the U.S. District Court for the Southern District of California, Carlsbad argued that the public is entitled to rely on Bayer's original disclaimer date for the October 1, 2002 patent expiration because to do otherwise was ambiguous, in view of the public notice of Bayer's original disclaimer.  Judge Rudi Brewster disagreed and granted Bayer held summary judgment that the correct date was December 9, 2003.  Carlsbad appealed to the Federal Circuit.

The Federal Circuit affirmed that changes to the patent law automatically extended Bayer's patent date.  Interestingly, Bayer had submitted an "amended terminal disclaimer" to the PTO soon after the law changed.  The Federal Circuit emphasized that although the PTO rejected Bayer's "amended terminal disclaimer" (the PTO does not allow correction or amendment to a terminal disclaimer) the PTO had responded that the "office records will be changed to indicate that the term of the ….patent subsequent to December 9, 2003 ….has been disclaimed."

This case shows the importance of file history in settling a dispute over an ambiguity.  The defendant argued that the public had a right to rely on public notice (the patent gazette published by the PTO) to learn the earlier expiration date.  The Federal Circuit however emphasized that the PTO had included a notice in the file to indicate its acceptance of the automatic later date.  Furthermore, Bayer's "unnecessary" petition to change the date "became part of the public record on January 31, 1996, more than five years' before Carlsbad relied on the earlier date, and therefore "Bayer's prompt action precluded any prejudice to (Carlsbad) or the public."  Thus, Bayer's submission of a document that was not allowed under the rules helped Bayer's litigation.

Allen  Engineering Corporation v. Bartell Industries and Darragh Company
Decided August 1, 2002
Judge Linn with Judges Gajarsa and Prost

*        there is no legally recognizable "gist" to a combination patent

Allen sued Bartell at the U.S. District Court for the Eastern District of Arkansas for infringing patent claims to riding trowels (machines that smooth the surface of freshly poured concrete).  Judge Stephen Reasoner found infringement and awarded double damages.  Bartell appealed to the Federal Circuit.

The Federal Circuit complained that "both during and after trial in this case, counsel appear to have sought to cloud rather than clarify the central legal issues and to draw the court's attention to peripheral issues" and that counsel had made "serious misstatements of applicable law."  Accordingly, the district court made significant errors, including failure to construe the claims or to identify claims that it held infringed under the doctrine of equivalents.  The Federal Circuit thus vacated the infringement decision and the award of damages. 

Some of the district court's errors arose when the court was encouraged to study what it termed the "heart" of the invention to determine infringement, instead of construing the claims and determining infringement on an element by element basis.  The Federal Circuit pointed out that "there is no legally recognizable or protected essential element, gist, or heart of the invention in a combination patent."  It appears that this case has to be re-litigated because attorneys may have misled the court on patent law.

In re. Cruciferous Sprout Litigation; Brassica Protection Products LLC and Johns Hopkins University v. Sunrise Farms, Becky Crikelair, and Frank Crikelair et al.
Decided August 21, 2002
Judge Prost with Judges Clevenger and Bryson

                                                                
*          A prior art reference may anticipate claims inherently

Hopkins sued Sunrise and others in various district courts for infringing its patent claims to methods of obtaining food that contain high anti-cancer glucosinolates by germinating and harvesting Brassica (broccoli, cauliflower) prior to the two leaf stage.  The Judicial Panel on Multidistrict Litigation consolidated the cases in the District of Maryland.  Judge William Nickerson granted summary judgment of invalidity in view of anticipating prior art, because a "plant (broccoli sprouts), long well known in nature and cultivated and eaten by humans for decades, [cannot] be patented merely on the basis of a recent realization that the plant has always had some heretofore unknown but naturally occurring beneficial feature."

The Federal Circuit affirmed because the claimed potential "of sprouts necessarily have existed as long as sprouts themselves, which is certainly more than one year before the date of application at issue here" and thus the claimed features "are inherent characteristics of the sprout."

When claiming inherent features of an old material or process it may be helpful to add elements such as new materials and recently developed methodology that improve working of the invention, to distinguish over prior art.

Abbott Laboratories v. Torpharm, Inc., Apotex, Inc., and Apotex Corp.
Decided August 13, 2002
Judge Clevenger with Judges Plager and Bryson

*          An inherent feature of an invention that is not described in a specification, such   as numerical features nevertheless can be claimed

Abbott sued TorPharm at the U.S. District Court for the Northern District of Illinois after TorPharm filed an Abbreviated New Drug Application with the FDA for a generic version of Abbott's patented drug Depakote.  Judge Charles Norgle Sr. granted summary judgment of infringement to Abbott, based on TorPharm's proposed package insert literature description and on Abbott's test data.  Torpharm appealed to the Federal Circuit.

Abbott's patent claims recite an oligomer having "about 4 to 6 acid/salt subunits."  This numerical claim element was not in Abbott's filed application but was added after Abbott submitted test data to the PTO showing that the "original disclosure of divalproex sodium inherently disclosed the numerical limitations."  Abbott could not conclusively prove that Torpharm's product existed as the claimed oligomers, however, so the Federal Circuit vacated this part of the summary judgment to allow fact finding on this issue.

This case is particularly interesting because the Federal Circuit accepted claims having numerical values that were added to a specification after filing.  The written description requirement was met and the numerical limitation ("about 4-6") was not rejected as new matter by the courts.  Test data submitted during prosecution often is used to support enablement.  This case shows that such data also can support introduction of new numerical limits into claims after filing, although the PTO often may resist such attempts.  This use of inherency can help a patent applicant who may not understand the numerical quality of an invention at the time of filing but may be able to claim a numerical feature during prosecution.

Deprenyl Animal Health, Inc., v. The University of Toronto Innovations Foundation
Decided July 23, 2002
Judge Gajarsa with Judges Linn and Dyk

*          Obtaining and licensing a U.S. patent to a U.S. party establishes personal          jurisdiction suitable for a summary judgment

*          The courts will honor agreements for binding arbitration in other countries

Foundation, the licensing office for the University of Toronto licensed a U.S. patent application to Deprenyl, in Kansas, which later matured into a patent.  Foundation later notified Deprenyl that publicized upcoming sales for Deprenyl's FDA approved drug would be subject to royalty provisions of the license.  Deprenyl responded with a declaratory judgment action against Foundation at the U.S. District Court for the District of Kansas, wherein Deprenyl argued that the patent is invalid and would not be infringed by the sales.  Judge Carlos Murguia granted Foundation's motion to dismiss for lack of jurisdiction because the exercise of personal jurisdiction over Foundation would violate due process.  Deprenyl appealed to the Federal Circuit.

The Federal Circuit reversed because "by registering a patent in the United States Patent Office, a party residing abroad purposefully avails itself of the benefits and protections patent registration in this country affords" and "it is appropriate to require foreign patentees to submit to broader jurisdiction in United States Federal Court that that to which they would otherwise be subject."  The licensing agreement between the parties included an arbitration clause however, so Deprenyl's "interest in resolving the dispute in Kansas, the forum it selected, is compromised by (this provision)."  Thus, the Federal Circuit ordered the litigation stayed, pending binding arbitration.

This case demonstrates that merely licensing a U.S. patent can establish jurisdiction for a declaratory judgment action.  The case also shows the strong power of a broad arbitration clause in a license agreement, which can force all disputes to be arbitrated somewhere else in the world before litigation in the U.S.  The Federal Circuit pointed out in this context that "[n]othing prevents patent-related disputes such as this one from being resolved in binding foreign arbitration" and that arbitration of "patent infringement and validity issues…..bind the parties."  Furthermore "international comity demand(s) that the district court stay proceedings in the present litigation pending the outcome of the Canadian arbitration."  A foreign company that licenses with a U.S. company should consider including in the license binding arbitration in the home country of the foreign company, as Foundation did in this case.

William G. Riles v. Shell Exploration and Production Company
Decided July 31, 2002
Judge Rader with Judges Michel and Gajarsa, Michel Dissenting

*   Only statements during prosecution that unmistakably surrender subject matter  
          estop application of the doctrine of equivalents   

 

This is a case where infringement was found under the doctrine of equivalents in the absence of literal infringement.  Riles obtained a patent to an anchoring method for off shore oil rigs and sued Shell for infringement at the U.S. District Court for the Southern District of Texas.  Judge Sim Lake vacated a jury's finding of literal infringement but not the jury's finding of infringement under the doctrine of equivalents.  Shell appealed to the Federal Circuit.

A majority panel decision of the Federal Circuit affirmed infringement under the doctrine of equivalents and vacated a damage award.  The court deemed the award overly high because the award calculation i) overlooked alternative methods for anchoring Shell's oil platform and ii) Riles's lower cost licensing practice of calculating royalty from a percentage of savings from use of the technology, rather than from preventing any use of a platform.  In the other major issue, the panel majority decided that sufficient evidence supported infringement under the doctrine of equivalents but Judge Michel disagreed.  Citing the all elements rule, Judge Michel argued that individual elements of the claim such as "metal to metal ….contact" are "missing altogether from the defendant's structure."

            The patentee in this case successfully used the doctrine of equivalents where literal infringement was not found.  The Federal Circuit panel however, could not agree on how to determine infringement despite recent law designed to simplify use of the doctrine of equivalents.  Interestingly, the patentee had made statements pertaining to disputed claim elements during patent application prosecution, but did not "unmistakably surrender" subject matter, and merely explained differences between claims and prior art.  It appears that the doctrine of equivalents remains alive and that a patent applicant can still distinguish her claimed invention over prior art without estopping use of the doctrine of equivalents with respect to a described claim element.

Bayer AG and Bayer Corporation v. Schein Pharmaceuticals, Inc. et al.
Decided August 9, 2002
Judge Clevenger with Judges Rader and Dyk, Rader separately concurring

*          The best mode requirement does not compel disclosure of an unclaimed method            for making a novel material needed to practice an invention

Bayer's earliest filed application for the drug "Cipro" did not include a description for how to make a novel intermediate in the synthesis pathway of the Cipro active ingredient.  A later application matured into a patent and Bayer sued Schein and other generic drug makers at the District Court for the District of New Jersey when the makers filed abbreviated new drug applications at the Food and Drug Administration.  Schein unsuccessfully argued that Bayer's patent did not receive priority from the earliest filed application because that application failed to disclose Bayer's method for making a key and novel intermediate, and thus violated the best mode requirement.  Schein argued that Bayer's patent was therefore invalid under 102(d) because Bayer had obtained a foreign patent from an application filed more than one year before its earliest priority date.  Judge Garrett Brown Jr. granted summary judgment that Bayer's patent satisfied the best mode requirement, however, because Bayer's inventor did not claim the key intermediate.  Schein appealed to the Federal Circuit.

The Federal Circuit affirmed because the preferred method of making the novel intermediate did not materially affect the claimed product.  That is, only "[p]references that are reflected in a preferred embodiment or that relate to making or using the invention and have a material effect on the properties of the claimed invention must be disclosed."  Bayer successfully relied on general knowledge of skilled workers for making the novel intermediate needed to produce its claimed compound.  This general knowledge of a less optimum method sufficed because Bayer did not claim the intermediate or the method of making it.

In re Philip R. Thrift and Charles T. Hemphill
Decided August 9, 2002
Judge Dyk with Judges Bryson and Gajarsa

*          An obviousness rejection cannot rely on inherency to show that a claim element is          in a cited reference

The U.S. PTO Board of Patent Appeals and Interferences affirmed an examiner's obviousness rejection of Thrift's claims to a hypermedia system.  The Board acknowledged that the cited references "do not explicitly disclose several of the features" of certain claims amended to overcome the rejection, yet sustained the rejection, citing "Appellants minimal arguments" which failed to "address the Examiner's position of obviousness or inherency with respect to the features recited in these claims."  Thrift appealed to the Federal Circuit.

The Federal Circuit vacated the rejection with respect to certain claims because "the Board failed to present evidence of the presence of key limitations" of those claims in the cited art. 

Many software patent claims such as in this case use very familiar words such as "interface," "operation" and (in this case) "grammar."  The presence of such common words in claims seems to invite the PTO and some district courts to assume the presence of the elements in prior art publications, despite the lack of an explicit description.  To help prevent the PTO or a district court from erroneously finding simple claim elements in prior art based on incorrect use of inherency, a patent application drafter might consider making up new terminology to describe such familiar features.  In this case the PTO overlooked the fact that the claim term "grammar" was not described explicitly in the cited art, and had incorrectly asserted the obviousness rejection.

Trovan, Ltd. et al. v. Sokymat SA, Irori and Ake Gustafson
Decided August 1, 2002
Judge Linn with Judges Michel and Bryson, Michel dissenting

*          A non-disclosure agreement that covers a technology collaboration should
            include the disposition of patent rights related to the collaboration

Trovan and Sokymat entered a non-disclosure agreement and worked together to optimize production of small chip/antenna based transponders.  The agreement did not provide for assignment of inventions developed during the collaboration.  The parties filed separate patents without telling each other and entered litigation at the U.S. District Court for the Central District of California after each side learned about a patent issued to the other.  Each party alleged that the other failed to include a co-inventor.  Jude Mariana Pfaelzer granted summary judgment that neither side incorrectly listed inventors.  After a series of legal maneuvers including an earlier appeal to the Federal Circuit, Sokymat appealed to the Federal Circuit over inventorship issues.

The Federal Circuit construed the claims differently from the district court based on a series of fact based arguments, vacated the non co-inventorship decision, and remanded.  A dissent from Judge Michel argued that the lower court claim construction was harmless error and that the Federal Circuit should affirm. 

A great deal of time and money was spent on this case, which involved different claim constructions and determinations of invention conception by different courts.  This protracted litigation might have been avoided if the original non-disclosure agreement had addressed prospectively the disposition of intellectual property rights between the parties, or it the non-disclosure agreement had been followed by a cooperation agreement that spelled out disposition of patent property rights.  Parties who start a relationship with a non-disclosure agreement should include the disposition of patent rights if they will cooperate in technology to any extent.

Honeywell Inc., v. Victor Company of Japan, Ltd. and U.S. JVC Corp.
Decided August 1, 2002|
Judge Bryson with Judges Gajarsa and Dyk

*          Statements made during patent application prosecution may be used to support a           broader literal claim meaning

Honeywell sued Victor at the U.S. District Court for the District of Minnesota for infringing claims to a camera autofocus detector chip with elements "placed contiguous" to each other.  Judge Donovan Frank construed the term "contiguous" to mean "next in succession without any intervening structure" based on a reading of the specification.  From on this narrow claim interpretation the court granted summary judgment of no infringement.  Honeywell appealed to the Federal Circuit.

The Federal Circuit interpreted the claims more broadly than the district court and reversed in part.  The Federal Circuit panel complained that the patent was "poorly drafted" yet concluded that the district court construed the claims too narrowly.  The Federal Circuit prominently cited file history in its rationale for a broader claim scope, explaining that "a patentee may define a claim term either in the written description of the patent or, as in the present case, in the prosecution history."

Prosecution history is actually more significant for literal claim interpretation than for determining the scope of expanded claims under the doctrine of equivalents in most cases.  This case illustrates how a patent applicant can use the prosecution record as an opportunity to support broad literal claim meaning.  Unlike most European courts, particularly in Germany, U.S. courts often use prosecution history to help determine literal claim scope. 

Enzo Biochem, Inc., v. Gen-Probe Incorporated, et al.
Decided July 15, 2002
Judge Lourie with Judges Dyk and Prost

*          A biological deposit can satisfy the written description requirement

*          Written description is met for a DNA or other molecule of unknown structure if a           characteristic function is provided along with a correlation between the function   and a known structure

The United States District Court for the Southern District of New York granted Gen-Probe summary judgment that Enron's patent claims are invalid for lack of written description.  The Federal Circuit affirmed that decision in a previous appeal.  However the same three judge panel subsequently granted a petition for rehearing and generated this second decision.  In this decision, the panel changed its mind and adopted "the PTO's applicable standard for determining compliance with the written description requirement."  In reversing its first decision the court and affirmed that a biological deposit may be used to meet the written description requirement for a DNA having an unknown sequence.

Biotechnology has developed to the point where an unknown biomolecule such as a DNA of unknown sequence, can nevertheless be described very specifically by chemical function coupled to other known structures.  This case provides a two step outline for obtaining broad claims to biomolecules of unknown sequence or structure, which can be used to avoid the restrictive effects seen in the U.C. Lilly case.  A first step is to "set forth any common features possessed by members of the (claimed DNA) genus that distinguished them from others."  For unknown DNAs, this might be hybridization properties to known sequences.  A second step is to "describe a sufficient number of species within the very broad genus to indicate that the inventors had made a generic invention, i.e. that they had possession of the breadth of the species, as opposed to merely one or two species."  Enzo provided three sequences, and the district court on remand will have to determine whether those sequences support a broad genus claim.

This is a refreshing case that brings the Federal Circuit more in harmony with PTO rules that acknowledge how molecular biologists sometimes characterize and use DNAs of unknown sequence.  A patent writer for an invention to biomolecules of unknown structure should insert into the specification as many common functional features of the molecules and as many examples of the molecules as possible to support broad claims.  Furthermore, biological deposits should be used to establish written description for additional species if lack of time or money prevents determining their structures before filing.

James E. Manning v. Norman A. Paradis (Interference No. 104,199)
Decided July 12, 2002
Judge Dyk with Judges Manning and Paradis

*          A research publication by an inventor that expresses doubt about the working of            an invention may be used to prove lack of reduction to practice

The count (common claim) of an interference contest between Manning and Paradis recited a method of treating cardiac arrest by perfusing a patient heart with a solution that contains an oxygen carrier "in an amount effective to deliver oxygen to the heart."  The U.S. PTO Board of Patent Appeals and Interferences held that Manning did not reduce to practice the subject matter of the count prior to Paradis's filing date because Manning could not show that he "appreciated that oxygen actually was delivered to the heart" during his experiments.  Manning appealed to the Federal Circuit.

The Federal Circuit affirmed because reduction to practice requires proof that the inventor appreciated that the invention would work for its intended purpose.  Unfortunately, the preamble of the count (interference claim) recited the intended purpose (to deliver enough oxygen to the heart to have a therapeutic effect) and required appreciation of successful working for the purpose to find reduction to practice.  Manning's research paper stated that he was not sure whether enough oxygen actually was delivered.  Thus, he did not appreciate the invention's working for the purpose.

Research papers and grant proposals often contain statements that indicate uncertainty and obviousness respectively, of a particular new technology and can be used to attack a patent during litigation.  A patent prosecutor should be mindful of damaging statements made by the inventor and should draft claims and a written description to accommodate inconsistencies with other public documents.

John A. Bailey v. Dart Container Corporation of Michigan et al.
Decided June 7, 2002
Judge Linn with Judges Lourie and Dyk

*          A party may not file a cross-appeal if the argument advanced would not result in            reversal or modification of the appealed judgment

Dart won a decision of noninfringement at the U.S. District Court for the District Court of Massachusetts.  Bailey appealed and Dart filed a "conditional" cross appeal presenting arguments regarding claim construction and non-infringement in the event that the Federal Circuit were to reverse the lower court decision that favored Dart.

The Federal Circuit ruled that Dart cannot file a cross appeal because such appeal "unnecessarily expands the amount of briefing that is otherwise allowed, as well as giving the appellee an unfair opportunity to file the final brief and have the final oral argument."  The Federal Circuit pointed out that an appellee can always make the necessary arguments when needed in its defense and should not file arguments and take up the court's time unless those arguments are needed to reverse or modify a judgment.

An underlying problem in this and other cases is that the Federal Circuit can reinterpret claims and suddenly reverse a decision without much warning to a party.  However, a party cannot anticipate this problem by filing an appeal, even "conditionally" and reargue its claim meaning if that party has a satisfactory result from the district court and is not in an adverse position. 

Netscape Communications Corporation and Microsoft Corp. and America Online, Inc.
 v. Allan M. Konrad
Decided July 9, 2002
Judge Mayer with Judges Newman and Prost

*          An inventor who fails to monitor early tests of his invention or to impose             confidentiality cannot rely on the experimental test exception

            Konrad sued 39 customers of Netscape for infringing his patent claims to a "remote database object system" that Konrad had invented as a staff assistant at the Lawrence Berkeley Lab.  Netscape responded by filing a declaratory judgment action  in the District Court for the Northern District of California.  Judge James Ware granted summary judgment of invalidity because of prior use and prior sale more than one year before Konrad's 1993 filing date.  Konrad had successfully tested his system in 1990 and adapted the system for other physicists to search a database in 1991.  Konrad appealed to the Federal Circuit, arguing that his early activities were merely experimental tests to develop and reduce the invention to practice.

            The Federal Circuit affirmed the invalidity decision, partly because the users of Konrad's system in 1990 were "under no limitation, restriction or obligation of secrecy to the inventor."  The Federal Circuit followed a "totality of the circumstances" analysis in finding public use based on 1) the nature of the public activity; 2) access to the public; 3) no confidentiality obligation of the observers; 4) "testing" by non-inventors; 5) a large number of tests; 6) long duration of test period with respect to similar devices; and 7) whether the inventor received payment for testing.  On the whole these factors indicated public use and not experimental use.  The court also found that Konrad's 1991 demonstration was a solicitation for employment to build a system and was done without confidentiality.  Another interesting point was that although the device tested differed from the claims, "[t]he difference between the claimed invention and the device used would have been obvious" to a skilled artisan.  Thus the public use of an obvious variant of the claims barred the patent rights.

            Sometimes an inventor uses or perfects his invention with others before realizing the true value of the invention and files a patent application much later.  In this event the inventor should establish objective evidence that the early public use was for testing and that dissemination of the test and test results was restricted.

Cardiac Pacemakers, Inc. Guidant Sales Corporation, and Eli Lilly and Company v. St. Jude Medical, Inc., Pacesetter, Inc. and Ventritex, Inc.
Decided July 11, 2002
Judge Gajarsa with Judges Newman and Prost

*          A means plus function claim that recites two functions must be linked to a           structure in the specification that performs both functions

            Cardiac sued St. Jude at the U.S. District Court for the Southern District of Indiana for infringing its pacemaker patent claims that recite a "third monitoring means for monitoring the ECG signal produced by said detecting means for activating said charging means."  Judge David Hamilton granted final partial judgment of invalidity on 112(2)  indefiniteness grounds after claim construction.  The court concluded that the "third monitoring means" limitation could not be construed because no structure in the disclosed embodiments performs the multiple functions stated in the independent claim.  Thus the claims were indefinite and invalid.  Cardiac appealed to the Federal Circuit.

            The Federal Circuit affirmed because no embodiment in the specification discloses a structure that both monitors ECG and activates a charging means.  As it has in other cases the last few years, the Federal Circuit emphasized that "there must be a clear link between the claimed function and the corresponding structure."

            Means plus function claims sometimes are drafted without sufficient care but require special support in the specification.  This is particularly problematic when multiple cascading means elements are linked in the same claim.  A patent prosecutor should not rely solely on means plus function claims but should mix different claim types.

Vardon Golf Company, Inc. v. Karsten Manufacturing Corporation
Decided June 21, 2002
Judge Prost with Judge Newman Concurring opinion by Judge Dyk

 

*          Surrender of a patent to the PTO after summary judgment does not block the    right to appeal or to re-litigate the same issues for a reissued patent

            Vardon sued Karsten at the U.S. District Court for the Northern District of Illinois for infringing its patent.  Judge Charles Kocoras granted partial summary judgment of non-infringement because the accused product did not meet a claimed "substantially uniform thickness" limitation.  Vardon then surrendered its patent to the PTO, obtained a reissue patent that mooted the summary judgment, and filed another lawsuit.  When the court realized that the dispositive claim element from the first case remained in the new claims, the court declared that collateral estoppel prevents Vardon from arguing the new claims.  Both sides appealed.

            The Federal circuit reversed under 7th circuit procedural law because the original summary judgment was subject to revision before it became moot, and Vardon never had an opportunity to appeal the claim construction issue. 

            Vardon complicated this case when it surrendered its litigated patent to obtain a reissue.  However, this decision affirms that a patentee can abandon a first patent in favor of a reissue during litigation without losing the right to reargue or appeal the same issues in a later case.

In re. C. Steven McDaniel
Decided June 19, 2002
Judge Linn with Judge Prost, Dissenting opinion by Judge Mayer

*          An assertion that "patent claims stand or fall together" in an appeal may restrict   a patent applicant's freedom of argumentation

            After final rejection of his claims at the patent office, McDaniel filed an appeal in which he argued that the claims "are all properly of a single group" and stand or fall together.  The Board of Patent Appeals and Interferences ("BPAI") then rejected all claims based on prior art that had been asserted against only some of the claims.  McDaniel appealed further to the Federal Circuit,

            A Federal Circuit majority opinion agreed that one claim, which was only rejected on obvious grounds during prosecution, was improperly rejected on anticipation grounds in the appeal, and reversed that part of the decision.  However the Federal Circuit affirmed the BPAI's blanket rejection of other claims that shared a common rejection because McDaniel had linked those claims as a group, and could not later separate them.  Judge Mayer in a dissent further argued that McDaniel "waived any argument" for treating any of the claims independently because McDaniel failed to i) state that his claims are separately patentable and ii) failed to separately argue the claims.

            The patentee in this case lost some freedom to obtain independently patentable claims by treating them as a single group.  It is important to argue each claim separately in an appeal to the Board of Patent Appeals and Interferences if separate reasons can be asserted for their patentability.

Beckson Marine, Inc. et. al. v. NFM, Inc.
Decided May 30, 2002

Judge Rader with Judges Newman and Schall

*          A patentee can obtain a more favorable claim construction from the Federal       Circuit when a district court improperly imports limitations from the specification

            Beckson sued NFM at the U.S. District Court for the Western District of Washington for infringing claims to a boat portal light having "sloping diagonal grooves."  Judge Franklin Burgess construed this language to mean "a long and narrow groove" from details in the specification and recitation in dependent claims.  The court granted summary judgment of non-infringement because the accused device lacks the specified grooves.  Both sides appealed.

            The Federal Circuit reversed most of the holdings because "the district court improperly narrowed the scope of claim 1 by importing limitations from the specification and from dependent claims 5 and 6."  The Federal Circuit referred to the broad dictionary definition of "groove" and to the prohibition of reading limitations ("long and narrow" in this instance) from the specification into the claims.

            An interesting fact in this case was that Beckson, at one point, asserted an infringement argument against an NFM product that had been sold prior to Beckson's priority date.  When the Federal Circuit interpreted the claims more broadly, it provided NFM another opportunity to invalidate Beckson's patent based on NFM's earlier product.

Trintec Industries, Inc. v. Top-U.S.A. Corporation

Decided July 2, 2002

Judge Rader with Judges Mayer and Gajarsa

*          A terse catalog description does not inherently anticipate a patent claim when it fails to describe a claim element

            Trintec sued Top-USA at the U.S. District Court for the Southern District of Ohio for infringing claims to methods of preparing instrument faces using a computer and color printer or photocopier.  Senior Judge Joseph Kinneary granted summary judgment of invalidity due to inherent anticipation by a Swedish catalog advertisement of watches prepared by "a new computer laser printer."  Trintec appealed to the Federal Circuit.

            The Federal Circuit reversed, pointing out that the claims recite not only "printer" (as mentioned in the cited catalog) but also "photocopier."  The court explained that although "[t]he difference between a printer and a photocopier may be minimal and obvious to those of skill in this art.  Nevertheless, obviousness is not inherent anticipation." 

            This decision reviews the concept of inherency and explains how inherency does not relate to obviousness issues because "[i]nherency does not embrace probabilities or possibilities."

Telcomm Technical Services, Inc. et al. v. Siemens Rolm Communications, Inc.
Decided July 2, 2002
Judge Gajarsa with Judges Michel and Lourie

*          Non-patent litigation that involves a patent infringement counterclaim cannot be reviewed by the Federal Circuit

            Telcomm sued Rolm in at the U.S. District Court for the Northern District of Georgia in an antitrust case wherein Rolm asserted patent and copyright infringement counterclaims.  Judge Willis Hunt, Jr. granted summary judgment in favor of Rolm and a jury found patent and trademark infringement in favor of Rolm.  Both sides appealed to the Federal Circuit.

            The Federal Circuit held that it does not have jurisdiction to hear this appeal and transferred the case to the Court of Appeals for the Eleventh Circuit.

            Until very recently, a non-patent litigation such as an antitrust dispute would enter the jurisdiction of the Federal Circuit if patent infringement became an issue.  In this telecommunications antitrust litigation the issues of patent enforcement and validity arose as defenses.  However, the Supreme Court on June 3, 2002 (Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc.) held that injection of a Federal law issue such as a patent infringement counterclaim by itself does not create Federal Circuit jurisdiction. 

            The June, 2002 Supreme Court decision is a major restriction of the territory of the Federal Circuit.  As a result, (as seen in this recent Federal Circuit appeal)  some cases that require review of claim interpretation from a district court will be carried out by a court other than the Federal Circuit.  A litigant in such cases might not be able to rely on Federal Circuit precedent for a desired claim interpretation, but may have to resort to case holdings from a particular Circuit, which conceivably might lead to forum shopping.

Crown Operations International, Ltd. and Marshall H. Krone v. Solutia Inc.
Decided May 13, 2002
Judge Gajarsa with Judges Lourie and Clevenger

*          A claim that recites a calculated parameter is unenabled when necessary software          details for the calculation are not provided in the patent specification

Crown asked the U.S. District Court for the Western District of Wisconsin for declaratory judgment that one of Solutia's patents is invalid for lack of enablement and written description.  Judge John Shabaz held that inter alia, claims directed to composite safety glass that recite "no more than about 2% visible reflectance" were properly enabled, despite "alleged grammatical ambiguities in the rules disclosed for calculating (the claimed) wave index."

The Federal Circuit reversed the enablement holding because the claimed wave index required a calculation but the software or other tools for carrying out the calculation were not provided and "undue experimentation" would be required to determine the claim boundaries.  The Federal Circuit noted that the patentee "took care to ensure that (its own computer) program contained the necessary boundary conditions….to practice the invention (but) Solutia took substantially less care in transcribing the information from the program into the specification's rules for calculating" the claimed parameter.

If software is needed to practice an invention a patentee should "set forth the details of computer programming" involved or risk losing an enablement argument over whether undue experimentation is required to replicate the software's function.

 
Husky Injection Molding Systems Limited, v. R&D Tool & Engineering Co.
Decided May 17, 2002
Judge Dyk with Judges Michel and Lourie

*          Selling a readily replaceable part of a patented device does not infringe

Judge Scott O. Wright of the U.S. District Court for the Western District of Missouri granted R&D summary judgment of non-infringement of Husky's patent claims to an apparatus (plastic mold) that contains "a carrier plate having at least two sets of cavities."  R&D had sold "a new mold and carrier plate" to an existing Husky customer, which allowed that customer "to produce a different (molded part) design." The court noted the existence of "a replacement mold market" and determined that R&D's substitution of a new mold and carrier place combination "for an unspent combination" was not reconstruction of the patented apparatus.  Husky appealed.

The Federal Circuit affirmed, in a decision that explored the "difficult" line between permissible repair and impermissible reconstruction.  The Federal Circuit affirmed that a "safe harbor exists where activity akin to repair is involved as when repair is involved."  More specifically, "permissible repair also includes replacement of parts that are neither broken nor worn" and if "a part is readily replaceable, it is irrelevant whether the part was an essential element of the invention."

A company may be free to sell an essential part of a patented invention without infringing if the part is readily replaceable.  Conversely, a patentee should make component parts not readily replaceable to prevent competitors from selling such components of their patented devices.

Transclean Corporation et al. v. Bridgewood Services, Inc.
Decided May 21, 2002
Judge Lourie with Judges Newman and Clevenger, Clevenger dissenting in part

*          Technical dictionaries may be preferred over regular dictionaries for defining      claim terms even if both are suitable

Transclean sued Bridgewood for infringing patent means claims to equalizing fluid flow into and out of transmissions during transmission fluid change.  One disputed claim recited "means exhibiting resilient characteristics."  A jury found willful infringement of claims, including the disputed means claims, and awarded damages in a complicated litigation after which both sides appealed to the Federal Circuit.

The Federal Circuit affirmed all holdings except those that stemmed from the district court's interpretation of "resilient characteristics."  The patentee did not define "resilient" and used this word only once in the specification.  The district court used a general dictionary to construe this term to mean as "returning to original shape or position" rather than a technical dictionary, which construed the term more narrowly as "returning to original shape and position."  The Federal Circuit chose the narrower technical dictionary meaning and vacated infringement of that claim, stating that the term is used "in a technical context to describe a component of a mechanical apparatus, and a technical dictionary is therefore a better source to inform the meaning of the term to a skilled artisan."  Clevenger dissented from this portion of the opinion, stating that "the technical definitions are simply inapt because they define the wrong word- resilience instead of resilient."  Clevenger further complained that the general (but not technical) dictionaries defined the word 'resilient' as well as 'resilence,' and moreover gave the same definition for 'resilience' as did the technical dictionaries. 

This case demonstrates the Federal Circuit's preference for technical dictionaries over general dictionaries.  Another point is that courts often do not agree on basic simple definitions recited in patent claims.  An applicant seeking to avoid these kinds of arguments during patent enforcement should define each important claim word in the specification.

Catalina Marketing International, Inc. v. Coolsavings.com, Inc.

Decided May 8, 2002
Judge Rader with Judges Mayer and Prost

*          A claim preamble is not a claim limitation if it does not recite essential structure or          steps, or is not necessary to give life, meaning and vitality to the claim

            Judge John Darrah of the U.S. District Court for the Northern District of Illinois granted Coolsavings summary judgment of no infringement of Catalina's patent claims to a system for dispensing coupons "located at predesignated sites such as consumer stores."  Catalina appealed to the Federal Circuit.

            Catalina's patent claim included the phrase "located at predesignated sites" as a preamble.  A patent examiner rejected claims based on prior art relating to coupon terminal location.  Catalina overcame this rejection by amending other "structural limitations in the claim body to distinguish" over the cited art.  The Federal Circuit noted that "[t]he applicant did not rely on this phrase to define its invention nor is the phrase essential to understand limitations or terms in the claim body."  The Federal Circuit examined "the specification, in its entirety," concluded that it "does not make the location of the terminals an additional structure for the claimed terminals," and remanded. 

            The district court in this case incorrectly focused on a non-limiting claim preamble element in granting summary judgment of non-infringement, possibly because the patent applicant had mentioned this element during prosecution, albeit briefly.  A patent applicant should be careful not to discuss unnecessary terms during patent prosecution because a court, during litigation, might be persuaded to construe such terms narrowly or invoke file history estoppel with respect to such terms, as the district court mistakenly did here.

CCS Fitness, Inc. v. Brunswick Corporation and (its division) Life Fitness
Decided May 3, 2002
Judge Michel with Judges Mayer and Lourie

*          A claim term takes on its ordinary meaning in the absence of an express intent to            impart a novel meaning

            The U.S. District Court for the District of Colorado granted summary judgment of non-infringement to Brunswick with respect to plaintiff CCS's patent claims to a fitness machine having "reciprocating members" (which allow a user to step continuously).  Judge Lewis Babcock interpreted this term to mean a "straight bar" and with "no connections or joints."  Brunswick's accused devices "used a curved reciprocating member that consisted of multiple components" and thus could not infringe according to this definition.  CCS appealed to the Federal Circuit.

            The Federal Circuit construed the term "reciprocating members" broadly to include curved shaped members having multiple parts, noting that there was "nothing in the intrinsic evidence (that) describes a single-component, straight-bar 'member' as important to the invention."  The Federal Circuit emphasized the "heavy presumption that a claim term carries its ordinary and customary meaning" in arriving at a broader claim meaning and reversed the non-infringement holding.

            The Federal Circuit in this opinion provides a guide of at least "four ways" that "a court may constrict the ordinary meaning of a claim term."  These are: 1) "if the patentee acted as his own lexicographer……in either the specification or prosecution history;" 2) "the patentee distinguished that term from prior art" or "expressly disclaimed subject matter, or described a particular embodiment as important;" 3) "if the term chosen by the patentee so deprive[s] the claim of clarity as to require resort to the other intrinsic evidence;" and 4) if the claim is "in step-or means-plus-function format" which limits the scope to the "corresponding structure or step disclosed in the specification."  Patent prosecutors should avoid creating intrinsic evidence that narrows claim scope in these four areas.

Cooper Cameron Corporation v. Kvaerner Oilfield Products, Inc.
Decided May 14, 2002
Judge Lourie with Judges Mayer and Schall

*          Project reports that are partly confidential and accessible only to interested parties         may be prior art

            Cooper sued Kvaerner for infringing patent claims to an oil wellhead invention at the U.S. District Court for the Southern District of Texas.  Judge Nancy Atlas granted Cooper summary judgment that written reports from a third party to contractors involved with a related product were not "printed publications" for purposes of 35 U.S.C. 102 and did not invalidate Cooper's patent.  The court also granted Kvaerner summary judgment that claims from a second Cooper patent were invalid due to lack of written description.  Both sides appealed to the Federal Circuit.

            The Federal Circuit reversed summary judgment that the written report was not a prior art publication because the report could have been distributed widely, despite a confidential notice covering financial information on the fourth page.  The Federal Circuit further suggested that the district court on remand "take into consideration that reports need only be accessible to the interested public."  The Federal Circuit also reversed summary judgment of invalidity of the second patent on written description grounds because the patent specification included a drawing that showed alternative positions of a disputed claim element.

            A company engaged in new product R&D should be careful that any project document circulated with subcontractors and partners be strictly labeled "confidential" in its entirety and that further distribution be strictly prohibited if the document should not become prior art. 

Minnesota Mining and Manufacturing Company and Riker Laboratories, Inc. and Alphapharm Pty. Ltd. v. Barr Laboratories
Decided May 1, 2002
Judge Dyk with Judges Michel and Gajarsa, Gajarsa concurring

*          A private party cannot force compliance with FDA filing rules through patent liti-            gation at a district court but may have to rely on the Administrative Procedure Act

            This is a complex procedural case involving a new drug made by patent licensee 3M, a first generic maker Alphapharm and a second generic maker Barr.  3M sued each generic maker separately as each applied for FDA approval, thus triggering certain procedural delay times for FDA approval.  Judge Michael Davis of the U.S. District Court for the District of Minnesota dismissed 3M's infringement suit against Barr, the second generic "with prejudice" after evidence from discovery indicated lack of infringement.  The dismissal "with prejudice" gave Barr an earlier marketing advantage compared to a "without prejudice" dismissal, which conflicted the interests of both 3M (the licensee) and Alphapharm (the earlier generic).  3M and Alphapharm appealed to the Federal Circuit, arguing that the dismissal should have been "without prejudice."

            The Federal Circuit held that "a private party in a patent infringement action" cannot enforce FDA regulations concerning filings by generic drug makers in response to patent listings in the FDA Orange Book.  Instead, these FDA regulations "must be enforced, if at all, only in the context of an action under the Administrative Procedure Act."  The Federal Circuit found that the dismissal with prejudice was proper because "appellants were seeking to avoid a judgment that would be adverse to their interest in delaying Barr's entrance to the market and that this was not a legitimate justification for their desire to dismiss without prejudice."  Gajarsa's concurring decision warned about imposing a new requirement for the FDA to "determine compliance" with its own regulations but the majority explained that their decision only means that any "issue as to compliance" with this regulation "is not to be decided by the district court" during patent infringement litigation.

            Pioneer drug makers and generic drug makers who follow them often allege misuse of FDA procedures in a skirmish to delay market entry by a generic maker that follows a pioneering drug maker or that follows a first generic maker.  These compliance issues can be complex and should be settled by action against the FDA through regular channels for dealing with government agencies. 

Genentech, Inc. v. Amgen, Inc.
Decided April 29, 2002
Judge Rader with Judges Michel and Schall

*          The Federal Circuit may define a claim term differently and undo the conclusions            of a district court

*          A patentee should be careful when preparing claim charts at the Northern District          of California

            Judge William Alsup of the District Court for the Northern District of California granted Amgen summary judgment of no literal infringement of Genentech's patent claims to methods and vehicles for genetic transformation of a microbe involving a "homologous control region."  The court furthermore barred Genentech for pursuing infringement under the doctrine of equivalents because Genentech did not allege infringement under the doctrine of equivalents in its complaint or on its Rule 16-9 Claim Chart, as required by the local rules of the District of Northern California.  Genentech appealed to the Federal Circuit.

            The Federal Circuit interpreted Genentech's claim term "homologous control region" as possibly including a short 10 base sequence (i.e. links of a long DNA chain) found in Amgen's accused DNA product.  The accused product contained two homologous control region pieces (DNA sequences that naturally occur in the microbe).  However Amgen's two control sequences (which normally are connected by "AATCCAG") were linked by an unnatural "GTAATAAATA" sequence.  Genentech argued that the unnatural linker sequence plays no role in control and should be ignored.  Thus literal infringement exists because the adjacent control sequences meet the claim limitation.  Amgen successfully convinced the court however that its linker necessarily binds to the ribosome along with the adjacent control segments to control expression.  The Federal Circuit however pointed out that Genentech's expert disagreed and testified that the linker "sequences are sufficient to bind the ribosome and initiate translation."  Thus, a factual dispute existed, prompting the Federal Circuit to vacate and remand.

            A second issue was that Genentech lost its right to litigate infringement under the  doctrine of equivalents by failing to plead this infringement theory prior to the claim con- struction hearing.  While admitting "the liberal policy for amending pleadings" the CAFC pointed out that Genentech also neglected to add this theory its claim chart, and "the philosophy behind amending claim charts [under Rule 16-9] is decidedly conservative and designed to prevent the 'shifting sands' approach to claim construction."  This shows the dire consequences of not preparing proper claim charts when litigating in Northern California. 

            Fact disputes over poorly understood added linker DNA such as in this case may become common as more products of combination gene sequences enter the marketplace.

Fantasy Sports Properties, Inc., v. Sportsline.com, Inc. and Yahoo et al.
Decided April 24, 2002
Judge Lourie with Judges Newman and Friedman

*          An examiner's comments during prosecution may limit claim interpretation during            infringement litigation

            Fantasy sued Sportsline et. al. for infringing claims to a computer game that simulates a football league wherein players "receive bonus points."  Judge Jerome Friedman of the U.S. District Court for the Eastern District of Virginia held summary judgment of no infringement.  The court interpreted "bonus points…to mean points that are awarded in addition to the normal points for a scoring play" because Fantasy had added the "bonus points" limitation during prosecution to overcome a rejection.  Based on this narrow interpretation, the court decided that Yahoo's product did not infringe as a matter of law because "it only awards points equal to the points given in an actual professional football game."  Fantasy appealed to the Federal Circuit.

            The Federal Circuit affirmed the lower court's narrow claim construction based on statements in the file history.  The Federal Circuit pointed out that the examiner had "made a number of comments relevant to this appeal."  In particular, the examiner stated that "the only claims that contained the 'bonus points' limitation at issue are found allowable over" prior art because "the examiner fails to find reference to [the] award of bonus points for players …..in the prior art." 

            Comments from an examiner on the record can narrow the literal meaning of claims and block application of the doctrine of equivalents.  Sometimes it is best to file and argue easier claims at first without serious argument from an examiner before discussing broader claims to obtain a patent with less negative file history.

Abbott Laboratories and Mitsubishi-Tokyo Pharm., Inc. v. Dey, L.P and Dey, Inc.
Decided April 23, 2002
Judge Prost with Judges Newman and Gajarsa

*          File history from an application filed more than one year after another commonly            owned patent issues cannot be used for prosecution history estoppel

            Abbott sued Dey for infringing patent claims that recite a lung treating agent wherein "phospholipid content is 75.0-95.5%."  Judge Matthew Kennelly granted summary judgment of noninfringement based on file history estoppel from another application having common subject matter, a common inventor and the same assignee.  The other application was not related by priority as a continuation, continuation in part or divisional, however.   Abbott appealed.

            The Federal Circuit vacated and remanded because (quoting a dissent from the Sextant case) "[w]e have never based a finding of prosecution history estoppel on a statement made by a different applicant during prosecution of an unrelated application, nor have we ever hinted that competitors should examine the file histories of applications other than the one in suit in order to determine the scope of equivalents that may be accorded the patent."  The dispute concerned the numeric range of the claim element and the Federal Circuit further pointed out that "[t]he fact that a claim recites numeric ranges does not, by itself, preclude (the patentee) from relying on the doctrine of equivalents."

            Statements made during prosecution of related applications sometimes are used in attempts to narrowly construe claims and to block application of the doctrine of equivalents.  This case shows that at the very minimum a patent must have a common priority date before its file history can infect the claims of another patent.

Leggett & Platt, Incorporated v. Hickory Springs Manufacturing Company
Decided April 2, 2002
Judge Rader with Judges Clevenger and Bryson

*          A plaintiff may survive the summery judgment stage of litigation by presenting     contradictory evidence from an expert witness

            Leggett obtained a patent with claims to box springs having parallel support wires, which allow nesting of multiple units for low cost shipping.  Hickory hired away Leggett's inventor and then sold a similar product having parallel support wires with additional ends in them.  In response, Legget sued Hickory at the U.S. District Court for the Northern District of Illinois for patent infringement and trade secret violations.  Judge Ruben Castillo granted summary judgment of no infringement and no trade secret infringement.  Leggett appealed to the Court of Appeals for the Federal Circuit.

            The Federal Circuit found ample material fact issues and reversed both holdings.  The court explained that whether the accused structure "functions in substantially the same way as that described in (Legget's) patent is intensely factual" and requires a trial because of the different conformations of wire and attachments involved.  The "conflicting allegations of the experts (which) leave unresolved factual disputes" particularly persuaded the court.  These allegations indicated uncertainty regarding "access" to the trade secrets (hiring the inventor) and "similarity" (creation of a similar product), concerning misappropriation of trade secrets under Illinois law.

            In similar cases the Federal Circuit sometimes has cited an admission from an expert to indicate the lack of a fact dispute.  The introduction of expert testimony, if allowed, can decisively help or hinder survival of a party's case through summary judgment.

Techsearch L.L.C. v. Intel Corporation
Decided April 11, 2002
Judge Gajarsa with Judges Newman and Dyk

*          A court may appoint a "technical advisor" for a highly technical case

            Techsearch sued Intel at the U.S. District Court for the Northern District of California for infringing patent claims to a RISC processor and its use for emulating microprocessors.  Judge William Orrick, declaring that the case involves "a highly technical [issue] far beyond the boundaries of the normal questions of fact and law which judges routinely grapple" appointed a technical advisor after the Markman hearing.  The court granted summary judgment of non-infringement and both parties appealed to the Court of Appeals for the Federal Circuit.

            This case outlines conditions that a ninth circuit district court must follow when using a technical specialist (non witness) assistant.  The Federal Circuit stated that courts "(at least in the absence of legislation to the contrary) have inherent power" to appoint technical specialists for "exceptionally complicated cases" provided they follow guidelines.  The Federal Circuit summarized the ninth circuit guidelines as: 1) use "a fair and open procedure for appointing a neutral technical advisor;" 2) "clearly define and limit the technical advisor's status;" 3) "guard against extra-record information;" and 4) make an "explicit" record of the technical advisor's contribution.

            Techsearch unsuccessfully argued that Judge Orrick's advisor resolved disputed issues of fact because that advisor purchased computer hardware and software during his work, and may have used that equipment to study the disputed problem. 

            Technology will become more complex and indecipherable to non-technically trained judges, who should utilize technical advisors more often.  Such advisors cannot be cross examined.  A dissatisfied litigator may have to challenge an advisor's actions through adherence to rules such as those outlined here.

Michael J. Adang and John D. Kemp v. David A Fischoff and Stephen G. Rogers
Decided April 10, 2002
Judge Linn with Judges Gajarsa and Friedman

*          A patent applicant who argues the difficulty of cited prior art risks proving that   his own invention is not enabled

Adang lost a patent interference contest to Fischoff at the U.S. PTO because Adang's earlier filed application was not enabled for the specific species of plant claimed.   Adang's patent claims recite a genetically engineered tomato plant that makes its own insecticide (a protein of Bacillus thuringiensis) but his specification only provided working examples for tobacco plants.  The Board of Patent Appeals and Interferences cited publications and statements from Adang and others that admit the difficulty of expressing this protein in foreign host cells as showing non-enablement.  Adang appealed to the Federal Circuit.

The Federal Circuit agreed with the PTO that Adang's earliest filed application was not enabled for several reasons.  One reason was Adang's argument during prosecution that other prior art cited regarding a different strain of tobacco was invalid because of "inherent variability of different bioassays" with a differing plant strain.  However, Adang claimed tomato, which as a different species, differs even more from tobacco.  Thus, his arguments of inherent difficulty applied at least as well to his own claims.  Another factor was that Adang published a research paper a year before his priority date that explained the uncertainty in expressing this protein in a foreign host cell because "the translation product (the insecticide protein) is not stable."  Yet further examples were found in subsequent literature by others, which the Federal Circuit agreed with. 

.  When filing a new application in an area where enablement may be a concern a prosecutor should consider previous negative public statements by the inventor as admissions that the invention is not enabled.  Related negative statements during prosecution also may be used to prove non-enablement of the invention.  Instead, the applicant should consider explaining and claiming a specific discovery that overcame those obstacles.

In re John Kollar
Decided April 11, 2002
Judge Lourie with Judges Friedman and Clevenger

*          Selling a license without commercial sale or production of a product is not an
            on-sale bar under 35 U.S.C. 102(b)

The Board of Patent Appeals and Interferences held Kollar's claims to a chemical process unpatentable under the on sale bar of 102(b).  Kollar's assignee sold "a right to commercialize" the invention via a writing which, the Board argued, "was embodied  by a written description in a document which not only identifies the process but also enables the practice of that chemical process."  Kollar appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit reversed because "the offer of a license under a patent and a description of the invention, without more, does not fall within the on-sale bar."  The Federal Circuit stressed the difference between commercial use of a product, device or apparatus, which may require money to change "hands as a result of the transfer of title to the tangible item" and commercial use of a process, which requires "[a]ctually performing the process itself for (commercial) consideration."

A patentee who licenses her invention before filing should be careful that the licensee or a sublicensee does not commercially work her invention too early.  In this case the Federal Circuit remanded and invited the PTO to inquire whether "any third party" may have created an on sale bar "by offering to actually perform that process to commercially produce" a product (emphasis in original).

John H. Griffin and Judith Greengard v. Rogier M Bertina and Pieter H. Reitsma
Decided April 2, 2002
Judge Lourie with Judges Michel and Dyk

*          Reduction to practice does not occur until the inventor has determined that the   invention will work for its intended purpose

            Both Griffin and Bertina filed patent applications for a thrombosis diagnosis method that uses a test sample to assay for a point mutation in the Factor V gene.  The PTO declared a first inventorship interference contest between the two parties, who had filed overlapping claims.  Griffin filed his application later than Bertina but argued that he had reduced the invention to practice earlier.  Griffin provided data to support his argument, which consisted of sequencing gels showing a difference in gene sequence.  However, the PTO declared that the data could not show that Griffin "actually  made the invention described in the count, recognized it for what it was, and knew it would work for some practical purpose."  The PTO thus awarded priority to Bertina and Griffin appealed to the Court of Appeals for the Federal Circuit.

            The Federal Circuit affirmed, noting that "the point mutation that Griffin allegedly identified could have been a polymorphism or the result of a sequencing error, in which case it would not have been useful for much of anything, let alone for indicating an increased risk of thrombosis."  That is, finding a single point in an analysis does not indicate that a test, which requires both positive and negative results linked to a disease state, actually works.

            This case shows how every detail in a count (phantom claim for use in deciding inventorship) may influence an inventorship contest.  Unfortunately for Griffin, the contested count recited a diagnostic method that uses a test subject sample.  Griffin's early data did not come from test subjects and did not support his contention that he appreciated that the invention would work for test subjects.  The Federal Circuit noted that such appreciation of an invention is more easily found where the "work leading to (the) reduction to practice was part of a research program specifically directed toward the purpose of the claim."  Thus, an inventor might help demonstrate early recognition of an invention and use for an intended purpose by formally establishing a research program directed to those ends. 

Ecolab Inc. v. Paraclipse, Inc.
Decided April 3, 2002
Judge Dyk with Judges Clevenger and Gajarsa

*          A contractual surrender of the right to challenge validity of a patent (such as a    consent agreement) is construed very narrowly

            Ecolab sued Paraclipse in the U.S. District Court for the District of Nebraska in 1994 for infringing Ecolab's patent claims to an insect trap that uses light which reflects from the trap off a wall above to attract insects.  Just before trial the parties settled via a consent judgment that stated "[t]his court finds and concludes, and Paraclipse agrees, that (Ecolab's) patent is a valid patent."  Shortly afterwards Paraclipse began to sell a redesigned trap and Ecolab sued again at the district court for use of the new trap.  Judge Thomas Shanahan held that the earlier settlement agreement prevents Paraclipse from challenging patent validity in the second trial and a jury found non-infringement.  Both sides appealed to the Federal Circuit.

            The Federal Circuit held that the district court judge over narrowly construed the scope of a claim and vacated the non-infringement finding for that claim.  The Federal Circuit also found that the district court improperly barred Paraclipse from challenging patent validity, noting that "[a]ny surrender of the right to challenge validity of a patent is construed narrowly."  In particular, the court noted that language used in the consent judgment from the first litigation would suffice if the product in the later litigation were "essentially the same."  However, if a "new" product were litigated then "greater clarity" is needed in a settlement contract to foreclose a validity defense. 

            This case instructs what language should be added to a settlement agreement to prevent re-litigation of patent validity, which often consumes a large portion of litigation.  If a second litigation concerns "essentially the same" product, then a simple statement in the settlement agreement could block re-litigation of validity.  However, if the second litigation concerns a newly designed product, as in this case, then "something more" is needed in the agreement such as an averment not to "aid, assign, or participate in any action contesting the validity."  Conversely, a defendant who executes a settlement agreement contract should try to limit any admission to a simple statement of patent validity, in order to preserve a right to re-litigate patent validity.

Enzo Biochem, Inc. v. Gen-Probe Incorporated et al.
Decided April 2, 2002
Judge Lourie with Judges Dyk and Prost, Judge Dyk dissenting

*          A biological deposit cannot be used to meet the written description requirement             for biotechnology patent claims

            Enzo sued Gen-Probe, Chugai and others at the U.S. District Court for the Southern District of New York for infringing patent claims to DNA tools used for diagnosing gonorrhea.  The DNA tools rely on specific chemical binding between the claimed DNA and DNA from a sample.  The sequence specificity of the claimed DNA is important to the invention because gonorrhea DNA generally is about 80 to 93 percent identical with related non-gonorrhea species of bacteria.  However, Enzo filed its application before sequencing the DNA and relied on a biological deposit, which involved sending viable samples to a microorganism bank, to meet the written description requirement.  Judge Alvin Hellerstein granted the defendants' motion for summary judgment of invalidity for failure to meet the written description requirement.  Enzo appealed its loss to the Federal Circuit.

            The Federal Circuit affirmed invalidity because the patent provided no structure for Enzo's composition of matter claim and "Enzo claimed anything that works, without defining what works."  Furthermore, although Enzo deposited its DNA by making a biological deposit to prove that it had possession of that DNA, "such a showing of possession does not substitute for a written description in the specification, as required by statute."  This conclusion follows because "to require the public to go to a public depository and perform experiments to identify an invention is not consistent with the statutory requirement to describe one's invention in the specification."  Judge Dyk dissented, arguing that the issue of whether the written requirement is met is a question of fact, not of law, and no party entered testimony of a skilled artisan at the summary judgment stage.  Furthermore the parties had agreed that the described function of DNA hybridization "is indicative of a structure" and "the PTO itself was satisfied" with this description.

            Many biotechnology inventions begin with discovery of a microorganism or clone that behaves differently due to some property such as DNA or RNA binding to other DNA or RNA.  This case indicates that merely depositing the material in a biological library and filing a patent application that describes such property may not suffice for claims to molecules having specific sequences.  A reader of an issued patent should not have to go out and hunt for those sequences in the public (biological) library, or wait for another publication that gives the sequences, to determine infringement.

Johnson & Johnston Associates Inc., v. R.E. Service Co., Inc and Mark Frater
Decided March 28, 2002
Per curiam opinion, concurring opinions by Judges Clevenger, Rader, Dyk and Lourie,
Dissent by Newman

*          A patentee cannot use the doctrine of equivalents to cover disclosed but            unclaimed embodiments of an invention          
 
            This case limits the doctrine of equivalents.  Johnston sued RES for infringing patent claims to circuit board copper plate that has a layer of aluminum attached to prevent handling damage.  RES's accused product used steel instead of aluminum.  A jury found infringement under the doctrine of equivalents and RES appealed to the CAFC.  The CAFC ordered an en banc hearing because of uncertainty in recent developments in how to apply the doctrine of equivalents.

            A 11 judge majority held that Johnston could not, as a matter of law, obtain doctrine of equivalents coverage to the steel embodiment because Johnston's patent describes but does not claim the steel embodiment.  In reversing the jury decision, the CAFC majority explained that "when a patent drafter discloses but declines to claim subject matter, as in this case, this action dedicates that unclaimed subject matter to the public."  A concurring opinion by Rader further declared that "the patentee has an obligation to draft claims that capture all reasonably foreseeable ways to practice the invention."  A concurring opinion by Lourie argued against Rader's view of using forseeability because such determination "would often require expert testimony" and would invite litigation resembling arguments over obviousness.  A dissent by Newman warned of an "adverse effect" as applicants would insert less disclosure into specifications to avoid the absolute bar to use of the doctrine of equivalents under the new rule.  That is, "[b]y penalizing the inclusion of information in the specification the patent becomes less useful as a source of knowledge, and more of a guarded legal contract."

            This decision accords with a recent trend that places a great emphasis on deliberate patent preparation and prosecution.  An applicant must be aware that merely adding more description and embodiments to an application may weaken the issued patent if the added embodiments are not claimed.  To respond to this problem an applicant should review the alternative embodiments (on a claim element by element basis) in the specification before paying the issue fee and should re-file claims to desirable embodiments in a continuation application, (which the patentee did in this case).  Secondly, the applicant should reconsider the claims (particularly against possible competitor's products) as the second anniversary of the patent grant date approaches.  The patentee can decide to file a broadening reissue application for the unclaimed embodiments then.

In Re. Jagannadaha K. Sastry et al.     
Decided April 5, 2002 
Judge Bryson with Judges Rader and Schall

*          Motivation to combine two elements arises from a reference that generically       mentions the     use of both elements

            An examiner at the PTO rejected Sastry's AIDS treatment patent claims to combinations of 1) a first peptide that affects cytotoxic T cells and 2) a second peptide that inhibits HIV infection.  The Board of Patent Appeals and Interferences sustained the rejection and Sastry appealed to the Federal Circuit.

            The Federal Circuit found motivation to combine both peptides in several references, and affirmed.  In particular, each reference by itself was found to disclose generic classes of both first and second peptides, along with statements regarding the desirability of using more than one peptide at a time. 

            Motivation to combine in this case was not a close issue.  Generic classes of both peptides and a suggestion to use them together were found in a number of publications within this very crowded field (hundreds of AIDS "treatments" have now been patented).

Andrew Pickholtz v. Rainbow Technologies, Inc. and Software Security, Inc.
Decided April 3, 2002
Judge Lourie with Judges Mayer and Dyk

*          Two different words recited in patent claims may have the same meaning if used             interchangeably in the patent specification

            Pickholtz, an attorney and patentee, sued Rainbow for infringing his patent claims to an apparatus for preventing computer software piracy.  The claimed apparatus blocks software from an external device such as a magnetic disc from executing on a computer without authorization.  Judge Charles Breyer of the U.S. District Court for the Northern District of California granted Rainbow summary judgment of non-infringement.  The court also found that Rainbow engaged in discovery misconduct but refused to award attorney fees to Pickholtz because Pickholtz argued pro se and could not show paid hourly bills for remuneration.  Pickholtz appealed.

            An important issue in this case was the definition of "computer" as recited in Pickholtz's claims.  The claims describe an apparatus for use with a computer and specify that a code generator is "located in the computer," which the district court interpreted as lacking the peripherals of a computer system.  The Federal Circuit however, interpreted the claims more broadly to include peripherals such as that used by the accused device, because "the patent uses the term 'computer system' in the specification and the term 'computer' in the claims; nothing in the patent itself explicates their relationship or indicates any difference in meaning."  Based on the broader definition due to interchangeable use in the specification of the two claim terms, the Federal Circuit reversed the summary judgment. 

            A second issue was the district court's refusal to grant pro se plaintiff Pickholtz's request for attorney's fees despite finding that defendant's had "no substantial justification" for refusing for a year to produce the source code and documentation in response to a discovery request.  The Federal Circuit agreed that a pro se attorney could receive out of pocket expenses but not recover the value of his own time under Rule 37.  However, the Federal Circuit remanded this issue for consideration because (quoting the Supreme Court) the inherent power of a court to punish for contempt "extends to a full range of litigation abuses" and must "fill in the interstices" that other means of imposing sanctions fail to  cover.

            This is another confusing software litigation wherein two courts could not agree on the meaning of important, commonly used terms such as "computer."  A software patent applicant should consider providing very explicit definitions of terms such as "system" and "computer" in her patent specification and in arguments with the patent office.

Johnson & Johnston Associates Inc., v. R.E. Service Co., Inc and Mark Frater
Decided March 28, 2002
Per curiam opinion, concurring opinions by Judges Clevenger, Rader, Dyk and Lourie,
Dissent by Newman

*          A patentee cannot use the doctrine of equivalents to cover disclosed but            unclaimed embodiments of an invention          
 
            This case limits the doctrine of equivalents.  Johnston sued RES for infringing patent claims to circuit board copper plate that has a layer of aluminum attached to prevent handling damage.  RES's accused product used steel instead of aluminum.  A jury found infringement under the doctrine of equivalents and RES appealed to the CAFC.  The CAFC ordered an en banc hearing because of uncertainty in recent developments in how to apply the doctrine of equivalents.

            A 11 judge majority held that Johnston could not, as a matter of law, obtain doctrine of equivalents coverage to the steel embodiment because Johnston's patent describes but does not claim the steel embodiment.  In reversing the jury decision, the CAFC majority explained that "when a patent drafter discloses but declines to claim subject matter, as in this case, this action dedicates that unclaimed subject matter to the public."  A concurring opinion by Rader further declared that "the patentee has an obligation to draft claims that capture all reasonably foreseeable ways to practice the invention."  A concurring opinion by Lourie argued against Rader's view of using forseeability because such determination "would often require expert testimony" and would invite litigation resembling arguments over obviousness.  A dissent by Newman warned of an "adverse effect" as applicants would insert less disclosure into specifications to avoid the absolute bar to use of the doctrine of equivalents under the new rule.  That is, "[b]y penalizing the inclusion of information in the specification the patent becomes less useful as a source of knowledge, and more of a guarded legal contract."

            This decision accords with a recent trend that places a great emphasis on deliberate patent preparation and prosecution.  An applicant must be aware that merely adding more description and embodiments to an application may weaken the issued patent if the added embodiments are not claimed.  To respond to this problem an applicant should review the alternative embodiments (on a claim element by element basis) in the specification before paying the issue fee and should re-file claims to desirable embodiments in a continuation application, (which the patentee did in this case).  Secondly, the applicant should reconsider the claims (particularly against possible competitor's products) as the second anniversary of the patent grant date approaches.  The patentee can decide to file a broadening reissue application for the unclaimed embodiments then.

Rhone-Poulenc Agro, S.A. v. DeKalb Genetics Corp. v. Monsanto Company
Decided March 26, 2002
Judge Dyk with Judges Clevenger and Schall, assigned by en banc order

*          A sub-licensee cannot benefit from the bona fide purchaser rule if the licensor    lacks proper title

            In an earlier case from November 19, 2001 the CAFC found that Monsanto, a sub-licensee of DeKalb, had a proper license to Rhone-Poulenc's patent, despite DeKalb's use of fraud to obtain its license from Phone-Poulenc.  Phone-Poulenc petitioned for a rehearing.  The CAFC en banc decided to vacate the earlier CAFC decision and reassigned the case to the original three judge panel for revision. 

            The issue in this case is whether a sub-licensee (Monsanto) that acquired the sublicense by fraud from a licensee (DeKalb), may retain the sublicense by establishing that the sub-licensee was a "bona fide" purchaser for value.  Last year, the CAFC affirmed Judge N. Carlton Tilley Jr.'s summary judgment at the U.S. District Court for the Middle District of North Carolina that Monsanto had a sublicense under the bona fide purchaser rule.  Upon reconsideration the CAFC panel found that the defense is not available to non-exclusive licensees and vacated the lower court decision.  The panel stated that a licensee (or sub-licensee) lacks this defense because under common law "it was quite clear that one who did not acquire title to the property could not assert the protection of the bona fide purchaser rule."  That is, a licensee has a "mere contract right" and is subservient to whatever rights the licensor actually has.

            The CAFC took a small step in declaring that all instances where the bona fide purchaser rule may apply for patent rights, regardless of the circumstances now fall under federal common law.  To enjoy the right of using the rule to protect its investment, a party must receive a transfer of title such as a patent assignment.  This rule is another reason why due diligence of patent title is important and also why assignments are more valuable than licenses that do not transfer all rights.

In Re. Frank S. Glaug and Margaret A. Kato
Decided March 15, 2002
Judge Newman with Judges Mayer and Michel

 
*          The patent office cannot rely on a general meaning of a term to find equivalent    elements in the prior art when the patent application has further defined the term

            A PTO examiner rejected all of Glaug's claims to a process for making disposable pants (training pants that are removed repeatedly) on obviousness grounds.  Glaug's invention preserves elasticity through repeated use by applying adhesive to "spaced zones" rather than continuously.  The asserted prior art described and taught use of continuous adhesive but included a catch all phrase that "the adhesive zones may be applied with adhesive continuously extending overall on these zones, or in a plurality of dots, intermittent lines, or helical lines."  The Board affirmed the rejection, noting that Glaug's specification also used the word "intermittent" in describing adhesive use, and thus the claim element of spaced (i.e. interrupted) zones is found in the reference.  Glaug appealed.

            The CAFC reversed, because despite the reference's use of the word "intermittent," that reference "makes clear that (it) requires broad contact between the elastic and the adhesive, with illustrations of continuous zones…..  In contrast, Glaug's specification uses 'intermittent' to designate only distinct zones of adhesive…"  In rejecting the PTO's attempt to establish a claim element in the prior art based on word matching, the CAFC pointed out that "[i]t is well established that when a general term is used to introduce a concept that is further defined more narrowly, the general term must be understood in the context in which the inventor presents it."

            The PTO searches large data banks to find claim elements and related words in the prior art for making obviousness and anticipation rejections.  This case indicates that merely matching up a word or snippet of words to a prior art document with a computer does not always indicate that a claim element is in the prior art.  The real meaning of a word is defined by its context in a larger document that the examiner should read and digest, and not consider out of context.

Hewlett-Packard Company v. Packard Press, Inc.
Decided March 1, 2002
Judge Rader with Judges Clevenger and Dyk

*          Actual confusion is not necessary in a likelihood of confusion analysis to             prevent a trademark registration

            HP opposed Packard Press's efforts to register the trademark "PACKARD TECHNOLOGIES."  In a first appeal to the Federal Circuit from the Trademark Trial and Appeal Board the Federal Circuit held that the Board erroneously focused on only the "PACKARD" components of these two companies' trademarks.  On remand, the Board dismissed HP's opposition because "the goods and services were not related enough to cause confusion."  HP appealed.

            The Federal Circuit reversed because "the record offers substantial evidence that the marks convey a similar commercial impression."  The Federal Circuit cited the fact that Packard Press selected the term "Technologies" for its trademark "to suggest the technological nature of its new services," which only "serves to increase, rather than decrease, the similarity in overall impression."  The court further cited the fact that the "dominant portion" of one trademark "is identical to a prominent portion" of the other.  Finally, the Federal Circuit declared that the Board had erred when it declined to compare the services described in the trademark applications of the two companies.

            A theme in this case was the paucity of evidence in the record.  In the first appeal, the Federal Circuit vacated because the Board did not articulate evidentiary findings and conclusions about the relatedness of the goods and services for the marks.  In this second appeal, the Board argued that HP only presented copies of its trademark registrations (which the Board discounted) and did not offer evidence of actual confusion.  The evidence of the trademark registrations themselves, however, persuaded the Federal Circuit that the goods and services of both parties were similar.  In this context, detailed statements in a trademark registration may be helpful to block registrations by others.

John D. Scott and Rachel A. Steven, v. Satoshi Koyama, et al.
Decided February 27, 2002 (Interference No. 103,635)
Judge Newman with Judges Schall and Bryson

*          Preparations for manufacturing are suitable evidence of diligence for       reduction to practice    

 

            The Board of Patent Appeals and Interferences at the U.S. PTO awarded priority of invention to Koyama for claims to a chlorofluorcarbon replacement used in refrigerators.  Scott proved an earlier conception date in the U.S. from his initial written disclosure to his company's U.S. subsidiary.  However, the Board held that Scott did not show diligence because Scott's evidence after conception was limited to manufacturing activities such as selection of a construction company and building a factory for large scale manufacture.  Scott appealed to the Federal Circuit.

            The Federal Circuit declared that Scott's scale up manufacturing evidence alone sufficed to show diligence until reduction to practice and reversed the decision.  Thus, although "no equipment or materials were purchased and no experiments were conducted," negotiating a commercial contract for construction and related acts were a "step in a plan for realizing the process on a commercial scale" suitable for a diligence showing.

            This case affirms that "commercial activity" can be used to show diligence.  Scott met the diligence requirement by presenting evidence  of a commercial act for each day from just before his opponent's filing date until his effective filing date, and thereby won the interference contest.         

 

Contessa Food Products, Inc. v. Conagra, Inc. et al.
Decided March 13, 2002
Judge Linn with Judges Clevenger and Schall

*          All ornamental features from a design patent must be considered in evaluating     infringement, including features that are hidden at the time of sale

            Contessa sued Conagra at the U.S. District Court for the Central District of California for infringing Contessa's design patent for a shrimp plate having radially arranged shrimp piled in a swirled pattern and having an underside with a stepped floor to make a mound effect.  Judge George King held summary judgment of infringement because "an ordinary purchaser would find that the accused products were 'substantially similar' …. and appropriated the 'point of novelty' of the (Contessa) patent.'  Conagra appealed to the Federal Circuit.

            The Federal Circuit reversed because the lower court had erroneously merged the "point of novelty" with the "ordinary observer" test.  The Federal Circuit emphasized that a "patented design is defined by the drawings in the patent, not just by one feature of the claimed design."  Furthermore, the infringement inquiry "is not limited to those features visible during only one phase or portion of the normal use lifetime" but rather the comparison begins "after completion of manufacture or assembly and end(s) with the ultimate destruction, loss or disappearance of the article." 

            An applicant for a design patent should consider limiting the number of distinguishing features to avoid the problem experienced by the patentee in this case.  This case also highlights the difference between trademark infringement, which hinges on a likelihood of confusion test during the point of sale, with design patent infringement, which requires an analysis of all claimed features, regardless of when those features become apparent. 

Louis M. Kohus, v. Cosco, Toys "R" US, Inc. et al.
Decided March 13, 2002
Judge Prost with Judges Mayer and Dyk, Dyk dissenting

*          An award of costs from litigation may not include costs for a computer   animation or video that substitutes for a physical model

            Cosco won summary judgment of non-infringement at the U.S. District Court for the Southern District of Ohio, wherein Kohus alleged infringement of his foldable playpen patent claims.  The Federal Circuit affirmed and Cosco subsequently obtained a judgment to recover costs other than attorney's fees from Kohus at the district court.  Judge Sandra Beckwith awarded costs under Federal Rule of Civil Procedure 54(d), which creates "a presumption in favor of awarding costs, but allows denial of costs at the discretion of the trial court."  Kohus argued that sixth circuit law does not authorize an award of costs for an animated video exhibit and appealed to the Federal Circuit.

            A majority opinion of the Federal Circuit agreed with Kohus and reversed the video cost award.  The opinion explained that the law "allows a district court to award costs for exemplification and copies of papers necessarily obtained for use in the case."  However, costs for "physical models" generally are not included because "after all, they are essentially explanatory and argumentative…. (and) the video is a substitute for a physical model……"

            Judge Dyk dissented, arguing that the video was designed to clarify the patent drawings, and thus was "in the same category with …motion pictures and photographs, (and) was not a physical model." 

            Videos have become an important expense in many litigations.  Furthermore, some judges require litigants to prepare videos to explain their technology.  A defendant should consider convincing a court to accept its video in the same category as "papers necessarily obtained for use in the case," so that any cost award would include reimbursement for the video.

Fiskars, Inc. and Fiskars OY AB, v. Hunt Manufacturing Co.
Decided February 15, 2002
Judge Plager with Judges Gajarsa and Dyk

*          A defendant cannot reopen a damages judgment solely based on new evidence created after completion of a trial

            A jury awarded Fiskars more than $3 million in lost profits at the U.S. District Court for the Western District of Wisconson for infringing Fiskars' patent claims to a paper trimmer.  The claimed trimmer includes a means for biasing the blade to an inoperative position.  Almost two years later Hunt asked the court for relief from the damages award because Hunt had developed a non-infringing alternative product without the biasing means that was well accepted by the marketplace.  Hunt argued that the almost two years wait was necessary to create evidence relating to lost profits.  Judge Barbara Crabb denied Hunt's motion and Hunt appealed to the Federal Circuit.

            The Federal Circuit affirmed the refusal to review the damages award under Rule 60(b)(6) because extraordinary circumstances are required for relief under this rule and because of the "hypothetical nature" of Hunt's damages determination theory.

            Determination of damages from patent infringement is a difficult task.  An important factor in the damages assessment in this case was whether lost profits were due to Fiskars because of the lack of a marketplace alternative to buyers of the product.  Hunt did not present expert testimony on this topic during litigation, so the court refused to consider evidence for this theory after the trial was over.

Epcon Gas Systems, Inc. and Norman S. Loren v. Bauer Compressors, Inc.
Decided February 1, 2002
Judge Linn with Judges Mayer and Clevenger

*          Merely claiming one or more method steps without recital of a function does not            trigger the application of § 112, paragraph 6

            Epcon sued Bauer at the U.S. District Court for the Eastern District of Michigan for infringing method claims for a process of controlling gas added to an injection molding process.  Judge Arthur Tarnow construed claim 2, which recites a series of steps as a step plus function claim subject to 35 U.S.C. 112 (6).  Based on the interpretation of this and similar claims the court held summary judgment of no infringement  Epcon appealed to the Federal Circuit.

            The Federal Circuit reversed the no infringement finding for claim 2 and remanded for trial, stating, "[f]or a method claim, § 112, paragraph 6 is implicated only when steps plus function without acts are present."  The Federal Circuit explained that "[c]laim two is a garden variety process claim" because the claim included no language indicating "step plus function" or "step for." 

            Courts sometimes have a problem with means plus function claims.  In this case, the litigated patent had a mixture of means plus function and regular method claims, which may have led the district court to construe both as means plus function, due to similar words used among the claims.

Tate Access Floors, Inc. and Tate Access Floors Leasing, Inc. v. Interface Architectural Resources, Inc.
Decided February 7, 2002
Judge Gajarsa with Judges Plager and Dyk

*          There is no "practicing the prior art" defense to literal infringement

            Tate obtained an injunction at the U.S. District Court for the District of Maryland (Judge J. Frederick Motz) enjoining Interface from infringing Tate's patent claim.  The claim recites borders of floor panels having a "decorative surface layer" that is removed to expose an inner layer of the panel.  Interface appealed, arguing lack of literal infringement.

            The Federal Circuit affirmed, in a decision that focused on Tate's likelihood of success on its infringement claim.  An interesting issue was Interface's argument that the panels cannot literally infringe because they merely represent prior art beveled edges, and that "practicing the prior art" as a defense is similar to use of the reverse doctrine of equivalents.  Federal Circuit explained that it has never affirmed noninfringement based on the reverse doctrine of equivalents because the "requirements for the written description, enablement, definiteness, and means-plus-function claims ….are co-extensive with the  broadest possible reach of the reverse doctrine of equivalents."  Thus, the prior art defense, while useful for invalidity does not relate to literal infringement.

            The defendant in this appeal argued only infringement and not invalidity despite the reliance on prior art.  This is probably because the patent claims had already been found valid by a different district court and had been affirmed by the Federal Circuit.  A patent such as this one that survives validity challenge in a first litigation generally becomes stronger for use in subsequent litigation.

David L. Hildebrand v. Steck Manufacturing Co. et al.; Steck Manufacturing Co., Inc. v. David L. Hildebrand and H.A. Specialities, Inc.
Decided February 7, 2002
Judge Mayer with Judges Lourie and Dyk

*          Sending a warning letter to an infringer in another state in itself does not subject the sender to personal jurisdiction in that state under Federal law

After filing a patent application for socket wrenches, Hildebrand contacted Ohio companies for possible licensing.  Later that year Hildebrand noticed that Ohio companies, including Steck, were selling devices that apparently were the same as his invention.  Hildebrand sent letters that described his pending patent and that warned of litigation.  Three years later Hildebrand's patent issued and Hildebrand sent more warning letters.  Steck responded with a declaratory judgement action at the U.S. District Court for the Southern District of Ohio.  Hildebrand then sued Steck for patent infringement in Colorado but the Colorado court granted Steck's motion to dismiss and transfer the case to Ohio.  Hildebrand refused to litigate in Ohio and Judge Algenon Marbley of the Ohio court granted default judgement to Steck.  Hildebrand appealed to the CAFC.

The CAFC reversed and remanded because the Ohio court did not have jurisdiction over Hildebrand, a Colorado resident.  Under Ohio's "long-arm statute" the "mere solicitation of business by a foreign person does not constitute transacting business in the state" and Hildebrand's "warning letters coupled with offers to negotiate, rise only to the level of soliciting business…  More importantly, the CAFC declared that Federal law allows that "a patentee be free to inform a party who happens to be (in a distant state) without the risk of being subjected to a law suit in that forum."

A major concern in sending a "warning letter" is giving the other side a basis to start an expensive suit in the distant state.  The CAFC affirmed here that merely sending warning letters into a state does not automatically give courts in that state jurisdiction. 

Bayer AG and Bayer Corp. v. Elan Corp., PLC, Elan Pharma, and Teva Pharm. USA
Decided February 7, 2002
Judge Rader with Judges Michel and Friedman

*          Infringement by submission of an abbreviated new drug application to the FDA is           not the same as infringement by a commercial product

            Bayer sued Elan at the Northern District of Georgia when Elan filed an abbreviated new drug application ("ANDA") at the FDA for a 30 mg generic version of Bayer's drug nifedipine.  Judge William O'Kelley granted Elan summary judgement of non-infringement of this first case after Elan amended its application to avoid Bayer's patent claims.  Bayer sued Elan in a second case after Elan filed a second ANDA for a 60 mg generic version of the drug.  Bayer then sued Elan in a third case after Elan started making the product for sale.  Judge O'Kelley found no infringement in the first case and then granted Elan summary judgment of non-infringement for the second and third cases based on collateral estoppel, as the issues had been litigated in the first case.  Bayer appealed to the CAFC.

            The CAFC vacated and remanded because the district court had not completed claim construction in the first case.  In particular, the district court had not reviewed extrinsic evidence from skilled artisans as to the meaning of the technical claim terms.  Such evidence was necessary to settle issues in the second and third cases.  Furthermore, the district court failed to discriminate between fact finding for infringement based on filing an ANDA and fact finding relevant to direct infringement by making and selling a product.

            District courts seem to have problems judging infringement based on new drug application filing, a relatively new basis for legal action.  A litigant should emphasize the factual differences between an ANDA based infringement, which is limited to the product specified in the application to the FDA, and direct infringement from a commercial product, which has chemical characteristics that have to be physically examined.

Vulcan Engineering Co., Inc., v. Fata Aluminum, Inc., and Fata Group, S.p.A.
Decided February 5, 2002
Judge Newman with Judges Michel and Lourie

*          A patentee cannot receive full damages from infringement if the patentee            licenses customers of the infringer, despite disclaimer in the license

            Vulcan sued FATA for infringing Vulcan's assembly line process for injection molding.  Both  Vulcan and FATA bid to supply assembly lines to General Motors.  FATA won the contract.  Vulcan then sued FATA at the U.S. District Court for the Eastern District of Michigan for using Vulcan's patented process to fulfill its contract. Judge Avern Cohn found infringement and awarded Vulcan $2,187,000 in damages.  Both sides appealed.

            The CAFC affirmed the judgment except for the damages award.  Damages were deemed limited because Vulcan gave General Motors a license to use the assembly lines from  the infringer, with the contractual language that "[t]his Agreement does not waive, release, compromise or discharge ….any claim Vulcan may have against Fata for Vulcan failing to obtain the business of supplying the five casting lines for (General Motors)."  The court decided that this language in Vulcan's contract with General Motors, while meant to preserve Vulcan's right to seek damages from FATA, "is not consistent with the assertion of damages against Fata" because there is "no infringement when licensee acted within scope of its 'have made' rights."  Unfortunately, Vulcan executed this license contract with GM after the court ruled on infringement but just before damages were assessed.  In a related issue, the CAFC remanded for a determination of whether a higher damages award was merited from the theory that Vulcan could have obtained a higher price but for the infringement.

            Determination of damages is a very complex area of patent law.  It is important that any contract that may affect damages liability, as Vulcan executed with GM here, be reviewed by a litigator familiar with damages assessment to prevent problems.

Dana Corporation, v. American Axle & Manufacturing, Inc.
Decided February 12, 2002
Judge Lourie with Judges Clevenger and Gajarsa

*          A court may not invalidate patent claims without construing the terms in each      claim and applying those terms to the alleged invalidating acts

Dana sued American for infringing claims of two patents directed to vehicle driveshafts, at the U.S. District Court for the Eastern District of Michigan.  Judge John O'Meara granted summary judgment to American for invalidity under public use and on-sale bars of 35 U.S.C. 102(b).  Dana appealed to the CAFC.

The CAFC declared that the district court failed to construe the claims, failed to apply the claims to the asserted prior acts, and vacated.  The CAFC pointed out several errors of the district court such as improperly "invalidating all of the dependent claims without considering whether the subject matter of the alleged bars met the additional limitations of those claims."  Furthermore, Dana apparently "was never given an opportunity" to propose detailed construction of the claim limitations.  The district court held the patents invalid after reviewing only one limitation of one claim and did not compare construed claims with the alleged invalidating acts.

Mark R. Hoop and Lisa J. Hoop v. Jeffrey W. Hoop, Stephen E. Hoop, and Hoopsters Accessories, Inc.
January 30, 2002
Judge Mayer with Judges Lourie and Dyk

*          One may not qualify as a joint inventor by merely assisting the actual inventor     after conception

 Two Hoop brothers Mark and Stephen conceived a design for a motorcycle shield and hired two relatives, Lisa and Mark to create more detailed drawings and a 3- dimensional design.  The Brothers and their Relatives had a dispute and both filed design applications at the PTO.  The PTO granted identical design patents, one to the Brothers and one for the Relatives.  The Relatives asked the U.S. District Court for the Southern District of Ohio to invalidate the Brothers' patent.  The Brothers however, successfully convinced Judge Susan Dlott that they were the true inventors and obtained an injunction against the Relatives.  The Relatives appealed to the CAFC.

A CAFC majority affirmed the lower court's decision because the "refinements" made by the Relatives did not rise to the level of inventorship.  The court opined that "[t]he differences here must be substantial and not just superficial; the (Relative's) new design must contain an inventive concept" and that "[t]he ultimate test for design-patent inventorship, like the test for anticipation and infringement, is whether the second asserted invention is 'substantially similar' to the first."

Judge Lourie dissented, arguing that the majority "applied the wrong legal standard in determining inventorship of a design patent" because "the invention is not the concept of an eagle design, but only the specific claimed representation."  The dissent however, agreed with the majority that the second party must have "made significant changes in the original proposal necessary to carry out the invention" to acquire inventor status and that merely assisting after conception does not make someone an inventor.  The court's disagreement over a simple design illustrates how difficult it can be to determine the threshold of inventiveness for a design patent.

University of West Virginia, Board of Trustees et al v. Kurt L. Vanvoorhies
Decided January 30, 2002
Judge Lourie with Judges Rader and Gajarsa

*          A university "patent policy" may obligate an employee to assign invention rights to the university even in the absence of a signed contract

Vanvoorhies assigned an invention to the University of West Virginia while a graduate student there.  Three years later Vanvoorhies convinced the University to file a continuation in part application.  However, Vanvoorhies subsequently refused to execute an assignment and filed his own application, which he assigned to his own company.  The University sued Vanvoorhies at the U.S. District Court for the Northern District of West Virgina for breaching his duty to assign and Vanvoorhies counter claimed fraud, violations of RICO (a federal anti-racketeering statute) and various other misdeeds.  Judge W. Craig Broadwater granted summary judgement for the University.  Vanvoorhies appealed to the fourth circuit and the appeal was transferred to the CAFC.

The CAFC affirmed the lower court, finding ample evidence that Vanvoorhies had an obligation to assign on various grounds.  One ground was Vanvoorhies' affiliation with the University and the patent policy of his employer.  The CAFC explained that Vanvoorhies had an obligation to assign on this ground because the "policy states nothing about (the University's) ownership interest being subject to the election of University personnel."

Inventorship disputes between students or former students and their universities appear to be growing.  The CAFC in this case cited its Chou v. University of Chicago decision from last year which concluded that, as a matter of state law a graduate student may be "obligated to assign her inventions to the University under its patent policy even absent a signed contract requiring such assignment."

In Re Sang-Su Lee
Decided January 18, 2002
Judge Newman with Judges Clevenger and Dyk

*          The PTO cannot rely on common knowledge for motivation to combine references        for an obviousness rejection but must present a specific hint or suggestion from a       particular document

An examiner rejected Lee's patent claims to a method for displaying video functions on obviousness grounds in view of two references.  The examiner combined the references with a conclusory statement that the references should be combined.  The examiner refused Lee's request to provide a specific teaching, suggestion or motivation from the prior art to select and combine the references.  Lee unsuccessfully appealed the obviousness rejection to the Board of Patent Appeals and Interferences (the "Board").  The Board repeated the examiner's conclusory arguments that the claimed "demonstration mode (of the invention) is just a programmable feature which can be used in many different devices …. by adding the proper programming."  The Board further declared that "a specific hint or suggestion" of motivation from a reference was not required for an obviousness rejection.  Lee appealed to the CAFC.

The CAFC vacated the obviousness finding because the PTO failed to include "evidence relevant to the finding of whether there is a teaching, motivation, or suggestion to select and combine the references relied on as evidence of obviousness."  The CAFC pointed out that "a showing of a suggestion, teaching, or motivation to combine the prior art references is an essential component of an obviousness holding."  Thus, [t]he examiner's conclusory statements ….do not adequately address the issue of motivation to combine" and the "factual question of motivation …..could not be resolved on subjective belief and unknown authority." 

This case affirms that an examiner must provide more than a conclusory statement of unspecialized knowledge for motivation to combine when asserting obviousness.  A patent practitioner should cite this case to the PTO when arguing a lack of motivation to combine references for obviousness.

Andrx Pharmaceuticals, Inc. v. Biovail Corporation v. Tommy G. Thompson et al.
Decided January 17, 2002
Judge Dyk with Judges Linn and Bryson

*          A district court cannot easily alter the FDA's 30 month waiting period for                                   an Abbreviated New Drug Application

Biovail sold its drug Tiazac pursuant to an approved New Drug Application.  A generic drug competitor Andrx then filed an Abbreviated New Drug Application ("ANDA") with the FDA, asking for approval of its generic version.  Andrx asserted in its ANDA that its generic does not infringe Biovail's patent but Biovail sued Andrx in the U.S. District Court for the Southern District of Florida, which triggered an automatic 30 month stay of the FDA's approval of Andrx's ANDA.  Judge William Dimitrouleas found non-infringement and the CAFC affirmed.  However, Biovail subsequently acquired exclusive rights for a new formulation of the drug through a license from a patent that issued during the 30 month period of FDA review for Andrx's ANDA filing.  Biovail attempted to restart the 30 month delay based on issuance of its new patent.  Andrx however filed a new suit at the district court against both Biovail and the FDA arguing that the new patent was invalid and was being misused in violation of antitrust and other laws to hinder approval of the generic product.  The court refused to order the FDA to "delist" the new patent but did order the FDA, (citing its authority under 21 USC 355(j)(5)(B)(iii)) to shorten the 30 month waiting period because Biovail "failed to reasonably cooperate in expediting the action."  The district court explained that the FDA had to shorten the additional 30 month period because Biovail had changed "the formulation of its own approved drug, Tiazac, to come within the newly obtained patent …. to impede or delay" resolution of the dispute.  Both sides appealed to the CAFC.

The CAFC agreed with the district court that a district court cannot order the FDA delist a patent registered in the FDA's Orange Book by a drug maker.  However, the CAFC vacated the district court's order to the FDA to shorten the 30 month waiting period for approval of the generic drug because the lower court's ruling "was based on ….an overly broad reading of the statute."  The district court improperly focused on whether the new listed patent covered the drug being marketed and ignored "the critical question" of "the relationship of the patent to the drug products and drug substances covered by (Biovail') New Drug Application."  The CAFC further pointed out that the authority given to a district court by 21 USC 355 to intercede with the FDA does not extend to any "alleged improper conduct before the FDA." 

The FDA procedures for approving drug applications from generic drug makers are very important commercially.  It is natural for a generic maker to try and use district court litigation to remove or shorten the FDA 30 month waiting period.  However, this case affirms that the power of a district court to intercede is limited to remediating "delay related to the particular infringement action" and to arbitrary or capricious acts by the FDA under the Administrative Procedure Act.

In Re. Kenneth L. Berger
Decided January 29, 2002
Judge Linn with Judges Newman and Archer

*          When prompting an interference all "material limitations" of a claim from an         earlier patent must be copied within one year under 35 USC 135 (b)

Berger filed a patent application for a beverage can having an indentation that prevents drips, and amended the claims to provoke an interference with a patent that issued 14 months before the amendment.  The examiner however, refused the amendment, issued a final rejection and refused subsequent amendments after the final rejection.  Berger appealed to the Board of Patent Appeals and Interferences (the "Board") and the Board affirmed.  Berger appealed to the CAFC.

The CAFC did not review the examiner's refusal to enter Berger's amendments after the final rejection because "[t]he refusal of an examiner to enter an amendment after final rejection of claims is a matter of discretion" that "may be remedied by a Rule 181 petition to the Commissioner of Patents" and reviewed by a district court, not directly to the Board or the CAFC.  The CAFC affirmed the refusal to enter a claim for initiating an interference later than 12 months from another patent because "a party must show that the later filed claim does not differ from an earlier claim in any material limitation," which is a "distinctly different question from whether claims made for purposes of interference by different parties are directed to the same or substantially the same subject matter" (which compares the claims with a more liberal standard under 37 CFR 1.601(n)).      

            The patentee in this case tried to prompt an interference in response to another patent by amending claims only 8 months after filing, but was too late.  A patent applicant should review recently issued patents at the time of filing and present appropriate claims at the outset of prosecution to avoid losing the right to challenge claims in another patent by an interference.

H.R. Technologies, Inc. v. Astechnologies, Inc
Decided January 11, 2002
Judge Bryson with Judges Newman and Dyk

*          A patent holder should carefully review ownership rights before initiating an        infringement suit

H.R. sued Astechnologies for patent infringement at the U.S. District Court for the Eastern District of Michigan but Judge George Woods dismissed the action "without prejudice" because H.R. lacked standing to sue.  H.R. did not have a proper assignment from the patentee when it filed the action to enforce the patent.  H.R.promptly corrected the assignment and refiled its suit, which was heard by the same judge.  The defendant, Astechnologies then tried to convince the judge that the original case should have been dismissed "with prejudice," which would block H.R. from pursing a second action against Astechnologies.  Astechnologies failed to persuade the judge and appealed to the CAFC, arguing that the original suit against it should have been dismissed with prejudice and that its own counterclaims should not have been dismissed.

The CAFC called this an "unusual case" and held that the district court's dismissal "without prejudice" was proper.  The CAFC followed 6th circuit law for these procedural issues and noted that "a dismissal for lack of standing would ordinarily be without prejudice."  The CAFC pointed out that unlike other cases dismissed with prejudice, the plaintiff did not need a license from the defendant to obtain standing and could easily cure the assignment defect.  The CAFC however, reversed the district court dismissal of Astechnologies counterclaims because the plaintiff's "standing defect.....had no effect on the remaining counterclaims."

The parties in this case spent much money on legal resources while arguing a procedural matter because the plaintiff did not have a proper patent assignment when it sued the defendant.  It is important that a plaintiff carefully research its patent rights and make sure that it "holds all substantial rights" in a patent before filing suit to prevent this kind of extensive litigation over the plaintiff's standing to sue.

Michael S. Brown et al. v. Mariano Barbacid and Veeraswamy Manne
Decided January 11, 2002
Judge Rader with Judges Newman and Michel, Newman dissenting in part

*          In a patent interference proceeding the physical evidence of data recordings and            notebooks are considered without corroboration

*          Procedural rules of an interference must be followed strictly

The U.S. PTO Board of Patent Appeals and Interferences declared Mariano the senior party in a patent interference declared with Brown over an invention of a method for discovering compounds that interfere with a protein involved in cancer growth.  Brown presented evidence for an earlier conception by way of an autoradiograph showing protein samples in multiple lanes and related laboratory notebook entries.  The Board however, excluded this evidence because of lack of corroboration.  The board also excluded corroborative testimony of conception and reduction to practice on behalf of Brown because Brown failed to review that testimony in the Argument section in Brown's opening brief to the Board.  Brown appealed to the CAFC.

The CAFC held that the Board should have considered Brown's laboratory data and notebook as evidence of conception and vacated the award of priority to Barbacid.  The CAFC explained that the data and notebook entries contain "physical evidence that did not require corroboration."  Furthermore, the Board should have considered independent corroboration by a non-inventor, despite the fact that the non-inventor only discussed some of the lanes in the autoradiograph.  Such partial commentary was "within the understanding of skilled artisans" and should have been accepted by the Board.  The majority opinion argued that the burden of proof remained with the junior party.

The CAFC affirmed the Board's refusal to consider the excluded testimony because arguments in the opening brief must "contain the contentions....for consideration at final hearing."  Unfortunately Brown only presented the desired testimony in the statement of facts and not in arguments of the brief. 

Judge Newman disagreed with the majority conclusion that the junior party Brown could not shift the burden of proving priority to Barbacid.  Judge Newman however, agreed that Brown could not use testimony that Brown neglected to argue in the opening brief.  Interference practice is very complicated and such failure to meet a procedural requirement as this can present dire consequences.

Talbert Fuel Systems Patents Co., v. Unocal Corporation et al.
Decided January 8, 2002
Judge Newman with Judges Michel and Rader

*          Reliance on a claimed numerical value during prosecution may strictly limit          interpretation to that value

Talbert sued Unocal for infringing its patent claims to reformulated gasoline having "a boiling point range of 121deg - 345deg" at the U.S. District Court for the Central District of California.  Judge Consuelo Marshall granted summary judgement of non-infringement because Unocal's accused gasoline has a boiling point outside of this range.  Talbert appealed to the CAFC.

The CAFC affirmed because ample prosecution history showed that Talbert used the 345 deg value to distinguish its invention from prior art gasoline having boiling points up to 390 deg.  The CAFC averred that "even if such a precise limit was not necessary for patentability, .....it is explicitly stated in the claims," and thus the claims are limited to this value.  Doctrine of equivalents infringement was not possible because Talbert amended the temperature range during prosecution.

This is another example how prosecution history often dominates claim construction.  When claiming a numeric range, a patent applicant should file numerous alternative values and (if possible) a rationale for each, to allow greater freedom of claim amendments during prosecution.  Here, the applicant relied on a single value (345 deg) to get around a 390 degree prior art disclosure, and apparently did not have intermediate numeric values above 345 degrees.

Anthony John Antonious and Finnegan et al. v. Spalding et al.
Decided January 7, 2002
Judge Bryson with Judges Lourie and Linn

*          An attorney should carefully investigate a suspected infringing device before filing           a patent infringement suit

Anthony sued Spalding at the U.S. District Court for the District of Maryland for infringing Anthony's patent to a "metal wood-type golf club head having a hosel that extends into and connects with a peripheral mass."  Judge Marvin Garbis decided that the hosel of the accused clubs did not extend into the peripheral mass and awarded sanctions against Anthony's counsel, Finnegan Henderson for bringing a frivolous suit.  Finnegan appealed to the CAFC.

The CAFC held that "to the extent the district court concluded that Finnegan's proposed construction of certain claim language was frivolous.... the court's conclusions conclusion was legally erroneus" and vacated the sanctions order.  The CAFC remanded for further analysis because the district court had not explained clearly whether the sanctions award was based on Finnegan's claim interpretation or rather the prefiling investigation.  The district court had held that the claim term "entends into" is not met by "the hosel's tangentially touching the peripheral mass" whereas Finnegan interpreted "entends into" to "to read on any hosel that abuts against and is fastened to the peripheral mass."  The CAFC accepted the plausibility of Finnegan's claim interpretation and therefore reversed the sanctions on this basis.

This decision affirmed the right of counsel to base an infringement assertion on a claim interpretation that differs greatly from that of a district court.  It seems that the difference in claim construction dominated this case because even if Finnegan had meticulously cut open and studied all other accused products, the extra data would not have affected any decision to litigate.  When initiating litigation it is important to make sure that the claim meaning relied on is reasonable.

Rheox, Inc. v. Entact, Inc. v. RMT, Inc. and American Minerals, Inc.
Decided January 8, 2002
Judge Gajarsa with Judges Schall and Linn

*          A common definition for a claim term may be severely narrowed by amendments           during prosecution

Rheox sued Entact and RMT at the U.S. District Court for the District of New Jersey for infringing a patent directed to remediating lead from contaminated soil by applying a composition primarily comprising "calcium orthophosphate."  Judge Mary Cooper construed the claims to exclude the monocalcium orthophosphate used by the accused process and granted summary judgement of no infringement.  Rheox appealed.

The CAFC affirmed because the applicant had narrowed the literal claim meaning during prosecution by amendment.  The principal issue was that the term "calcium orthophosphate" as filed "generally refers to a family of compounds.....including monocalcium orthophosphate...."  The accused monocalcium orthophosphate material did not infringe however because the applicant had amended the asserted claim with the phrase "consisting essentially of calcium orthophosphate" and cancelled a dependent claim which explicitly recited monocalcium orthophosphate.  Thus, the literal meaning of a broad claim term to a variety of compounds was narrowed by amendments and statements that specifically disavowed one or more of those species of compounds.