Medichem filed a complaint for an inventorship determination under U.S. 35 291 against Rolabo at the U.S. District Court for the Southern District of N.Y. because both company's patents claimed a similar process for making Lratadine, (used in Claritin (TM)).  Judge Jed Rakoff construed Medichems's process claims, which recite "consisting," as limited to the use of a recited tertiary amine.  Because Rolabo's claims recite "comprising reacting" other (non-tertiary) amine compounds, the court found that the inventions differ and found no interference-in-fact.  Both companies appealed various issues to the Federal Circuit.

The Federal Circuit found the district court's construction of "comprising" unduly narrow and that the construction should have covered additional unknown components.  Accordingly, the Rolabo process claims cover the Medichem process and the appellate court vacated the district court decision.  The Federal Circuit explained that an interference in fact exists under the "two way test" using the correct interpretation because 1) Rolabo's claimed invention anticipates or makes obvious Medichem's claimed invention and 2) Medichem's claimed invention anticipates or makes obvious Rolabo's claimed invention. 

The PTO may have helped the Federal Circuit by declaring an interference-in-fact shortly after the Federal Circuit took up this case, in response to Medichem's filing a reissue application.  The PTO Board of Patent Appeals and Interferences held that Medichem's "comprising" term "permitted the inclusion of additional elements, including tertiary amines" and thus could anticipate the Rolabo patent claims. 

First to invent conflicts are often complicated and may involve a court, the PTO, or both for their resolution.  In this case, Medichem converted its patent back into a patent application by filing a reissue application.  This ploy allowed the PTO to adjudicate the conflict under rule 135(a) as an interference contest between a patent application and a patent.

Utah Medical Products, Ind. V. Graphic Controls Corporation
Decided December 4, 2003
Judge Rader with Judges Mayer and Michel

*          Means plus function claims may allow traversal of summary judgment                             stage for jury trial fact finding.

Utah sued Graphic at the U.S. District Court for  the District of Utah for infringing patent claims to an intra uterus pressure measuring device, after Graphic unsuccessfully tried to license Utah's patent and then copied Utah's commercial device.  A jury found infringement under the doctrine of equivalents and Judge Tena Campbell found the patent not invalid.  Graphic appealed to the Federal Circuit.

The Federal Circuit found substantial evidence to support the jury's conclusion that Graphic's use of hard plastic for stiffness during insertion was equivalent to the claimed steel stylet, and affirmed.  One fact that favored equivalence was that Utah had used a steel stylet in its early development program, but had abandoned that embodiment for plastic due to cost. 

The patentee survived the summary judgment stage of litigation because the claims recited a function that required fact finding under the doctrine of equivalents.  Another point is that wide ranging R&D results and possible embodiments should be included in a patent application.  If the disputed patent claims had included more embodiments, literal infringement might have been an issue in this appeal.

Novo Industries, L.P., v. Micro Molds Corporation and Oscar Helver
Decided December 5, 2003
Judge Dyk with Judges Clevenger and Gajarsa

*          A district court can correct a patent error if "the correction is not subject to        reasonable debate"

            Novo sued Micro at the U.S. District Court for the Southern District of Florida for allegedly infringing patent claims to a ventian blinds slat mover having "a stop means formed on a rotatable with said."  Judge Paul Hick declared that the second "a" arose from an "obvious typographical error" and should be "and."  Based on this interpretation, a jury found literal and willful infringement.  Micro appealed, arguing that some intrinsic evidence was inconsistent with the corrected meaning.

            The Federal Circuit held that the district court erred in correcting the patent, and declared that "[a] district court can correct a patent only if (1) the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation."  Accordingly, the Federal Circuit found the patent invalid on indefiniteness grounds and reversed. 

            A patent practitioner must carefully check patent claims as allowed.  If a claim ambiguity exits, the examiner should be consulted to correct the problem during an ex parte negotiation.  A court cannot correct an arguable claim error during litigation.

Sulzer Textil A.G. and Sulzer Textile, Inc. v. Picanol N.V.

Decided  December 9, 2003
Judge Linn with Judges Lourie and Gajarsa

*          A jury must follow a court's claim construction and "cannot be left free to apply its own reading of disputed terms to the facts of the case"

            Sulzer sued Picanol at the U.S. District Court for the Eastern District of Texas for allegedly infringing patent claims to methods of operating weaving machines.  A jury found no infringement and Judge Harry McKee denied Sulzer's motion for a new trial due to alleged errors in instructing the jury regarding the "manufacture" (not the operation) of the machines.  Sulzer appealed.

            The Federal Circuit held that the lower court made an erroneous jury instruction.  This decision pointed out that "the trial court in a patent case must at a minimum take steps to assure that the jury understands that it is not free to consider its own meanings for disputed claim terms" and that "[i]t is not enough that the testimony and argument at trial is consistent with the district court's construction of disputed claim terms."  Although this opinion focused on the incorrect jury instruction, Sulzer was not prejudiced by the error and the Federal Circuit remanded the case on other grounds.

            In many cases the most important issue is claim construction.  This decision presents the Federal Circuit's view that a district court must affirmatively explain to a jury that the jury is not free to impart its own claim meaning but must follow the court's claim construction. 

Ulead Systems, Inc. v. Lex Computer & Management Corp.

Decided December 9, 2003

Judge Dyk with Judges Newman and Prost

*          "erroneous payment of small entity fees may be excused …….so long as the      patentee is not guilty of inequitable conduct relating to its inaccurate assertion"

            Ulead filed a declaratory judgment action against Lex, which counterclaimed for patent infringment, at the U.S. District court for the Central District of California.  Judge Dickran Tevrizian granted summary judgment of unenforceability because Lex falsely claimed small entity status when Lex paid maintenance fees.  Both sides appealed various issues to the Federal Circuit.

            The Federal Circuit vacated and remanded "because a genuine dispute of material  fact remains as to Lex's intent to deceive."  The Federal Circuit explained that representation of small entity status could render a patent unenforceable only when there is evidence of improper action "coupled with intent to deceive."  Judge Newman dissented in part because the majority opinion changes "the more rigorous proof of 'fraud' in establishing a false claim to entitlement……to the more readily met inequitable conduct."

            The patentee in this case got into trouble by forgetting to change its status to large entity after the patentee non-exclusively licensed its patent to a company that had more than 500 employees.  A patentee must review small entity status after licensing to larger companies, because payment of a patent term fee incorrectly as a small entity can risk making a patent non-enforceable.

Kaplesh Kumar v. Ovonic battery Co, Inc. and Energy Conversion Devices, Inc.

Decided December 11, 2003

Judge Dyk with Judges Bryson and Prost

*          "prior art cited in a patent or cited in the prosecution history of the patent           constitutes intrinsic evidence" useful for claim interpretation

            Kumar sued Ovonic in the District Court of Massachusetts for allegedly infringing patent claims to "amorphous rare earth" alloys that store hydrogen.  Judge Morris Lasker construed the term "amorphous" to mean "completely" amorphous, with "no ordering of molecules."  Based on this construction, the court granted summary judgment of non-infringement because Ovonic's material is partially ordered.  Kumar appealed to the Federal Circuit.

            The Federal Circuit re-interpreted amorphous to mean no "long range" order, from a definition provided in a patent cited during prosecution.  Accordingly, the court vacated the summary judgment and remanded.  The Federal Circuit explained that "when prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because" a) it indicates an art-recognized meaning and b) shows "that the patentee intended to adopt that meaning."  Bryson separately concurred to emphasize that other intrinsic evidence could have been relied on more for claim construction and that the cited art was more significant in a validity context.

            This case demonstrates the Federal Circuit's willingness to reject claim constructions proffered by both sides and to select a definition provided in a cited reference that differs from a general dictionary definition.  A litigator should explore various definitions provided in cited art when arguing claim construction, particularly when that art was relied on during prosecution of patent claims.

Geneva Pharmaceuticals, Inc. et al. v. Glaxosmithkline PLC, et al.
Decided November 21, 2003
Judge Rader with Judges Mayer and Bryson

*          35 U.S.C. 121 allows a restriction requirement to shield patent claims from double        patenting if the requirement is formal and clearly covers the issued claims

Geneva and other generic drug makers sued Glaxosmithkline ("Glaxo") at the U.S. District Court for the Eastern District of Virginia for declaratory judgment that three of Glaxo's patents pertaining to an amoxycillin inhibitor are invalid on double patenting grounds.  Judge Henry Morgan Jr. granted judgment of invalidity because earlier issued patents from a common priority application claimed synergistic combinations of the inhibitors with the antibiotic, which made the later patents obvious.  Glaxo appealed to the Federal Circuit.

A major argument was whether an examiner's interview, which only mentioned claim differences without declaring separate inventions, was a restriction requirement that could shield the later patent claims from a double patenting rejection.  The district court held that PTO reexaminations of three patents incorrectly concluded that a restriction requirement had taken place.  The Federal Circuit affirmed the district court because a restriction requirement must be "documented by the PTO" and provide "enough clarity and detail to show consonance" between the restricted claims and the later issued claims of an asserted divisional application.  The interview record described claims that were not marked as separate inventions, lacked the word  "restriction" and could not have been a formal restriction. 

It is helpful to include claims to a wide variety of embodiments, thus prompting a restriction in a filed application.  Multiple claims may help avoid double patenting problems because the PTO often zealously splits claims into multiple inventive groups, which are deemed subject to separate patenting.  Another advantage is that the extra claims provide notice to third parties upon publication.  Still further, copious claiming may avoid the problem of losing technology that is disclosed but not claimed, under the as yet fully untested rule expounded in the Johnston v Johnson case.

3M Innovative Properties Company and Minnesota Mining and Manufacturing Company v. Avery Dennison Corporation
Decided December 2, 2003
Judges Clevenger and Linn, Judge Michel dissenting

*          "prosecution history … cannot be used to limit the scope of a claim unless the    applicant took a position before the PTO"  

3M sued Avery at the U.S. District Court for the District of Minnesota for allegedly infringing patent claims to an adhesive based web for signage having a "multiple embossed pattern."  Judge David Doty construed the claim term "multiple embossed" as evidence of a product by process claim and granted summary judgment of no infringement because the accused process does not use sequential embossing.  3M appealed to the Federal Circuit.

A Federal Circuit panel majority reversed the district court's claim construction and vacated the summary judgment.  The majority found that 3M had acted as its own lexicographer by stating that "two or more embossing patterns" are to be "superimposed," and that such description evinced a structural relationship.  The court pointed out in this regard that claim terms which can be interpreted with equal force either way are "by default interpreted in their structural sense, unless the patentee has demonstrated otherwise."  Another reason for the broad interpretation was that 3M added a broadening claim amendment in response to a rejection of a dependent claim, which narrowed the scope to mean a first embossed pattern separate from a second embossed pattern.  Judge Michel dissented, because of his interpretation of "multiple embossed" without the attached word "pattern" as meaning a process.

This case exemplifies how a practitioner can breathe a wider meaning into an antecedent claim term by adding a further definition of that term to a dependent claim during prosecution.  This is provided by the doctrine of claim differentiation, which provides that an independent claim is broader than the dependent claim with respect to an altered claim term.

Ferguson Beauregard/Logic Controls, Division of Dover Resources, Inc. v. Delaware Capital Formation, Inc. et al.
Decided December 4, 2003
Judge Linn with Judges Dyk and Rader, Rader concurring separately

*          Dictionaries poorly associate ordinary meanings with context and may not reflect            customary usage of words by skilled artisans

Ferguson and Delaware disputed a variety of issues at the U.S. District Court for the Eastern District of Texas, regarding each other's patents that cover methods for flushing petroleum from oil wells.  Both parties appealed claim construction and other issues to the Federal Circuit.

The Federal Circuit determined that the district court erroneously construed claim limitations from one of Ferguson's patents, and remanded for this and other reasons.  The Federal Circuit commented at length on the fact that the claim terms "normal" and "predetermined" are to be construed as used "by those skilled in the relevant art" and that "the intrinsic record must always be consulted to identify" which dictionary definition should be followed.  The Federal Circuit explained that the district court had construed these terms improperly by referring to the accused device and by reading in a limitation from the specification.  Judge Rader concurred separately in order to emphasize that "when a court relies on a dictionary definition, it must include additional reasoning to substantiate its choice amongst many possible definitions in many possible dictionaries at many possible times."

It seems that the use of common dictionary words such as "normal" and "predetermined" in claims can prompt a great deal of analysis during litigation to determine their proper meanings in a technical context.  A practitioner who wants to avoid this problem may consider providing alternative (unrestricted) examples of use for such words when drafting a patent application.

Ranbaxy Pharmaceuticals, Inc and Ranbaxy Laboratories Limited v. Apotex, Inc.
Decided November 26, 2003
Judge Mayer with Judges Clevenger and Bryson

*          Redrafting a dependent claim into independent form may incur a presumption of             surrender of doctrine of equivalents for a claim term limited thereby

Ranbaxy sought a declaratory judgment at the U.S. District Court for the District of New Jersey of non-infringement for Apotex's patent claims to a process for preparing a pharmaceutical by dissolution "in a highly polar organic solvent."  Apotex counterclaimed for infringement and moved for a preliminary injunction.  Judge Mary Cooper however, found no infringement.  No literal infringement existed and the doctrine of equivalents could not be applied to cover an embodiment that was disclaimed when Apotex converted a dependent claim to independent form during prosecution.  Apotex appealed the denial of its preliminary judgment motion to the Federal Circuit.

Infringement under the doctrine of equivalents played a major role in this case.  The Federal Circuit affirmed no infringement, and thus no preliminary injunction, because Apotex's claim conversion was a narrowing amendment, which precluded application of the doctrine of equivalents.  The amendment indicated that acetone (equivalent to the accused process) was not included in the narrowed claim. 

The Federal Circuit noted that "[t]he dependent claims that were redrafted into independent form did more than simply add an additional limitation; they further defined and circumscribed an existing limitation for the purpose of putting the claims in condition for allowance."  To avoid an estoppel problem when converting an allowed dependent claim into independent form, a practitioner should explain how the added limitation is not an alteration (further refinement) to an existing limitation.  If possible, a claim element should be added that had not been subject to a patentability argument.

Phonometrics, Inc. and John P. Sutton v. Economy Inns of America et al.
Decided November 21, 2003
Judge Michel with Rader, Judge Newman dissenting

*          "oral statements that 'later advocat[e]' untenable contentions made in previously-            filed papers are sanctionable under Rule 11"

This is a latest appeal in a line of cases concerning the alleged infringement of Phonometrics' patent claims to a "telephone call cost computer" by various hotel companies and manufacturers of call equipment.  The Federal Circuit in its first two reviews of district court litigation against other defendants construed the claims and affirmed summary judgment of non-infringement based on those constructions.  In a subsequent third review, Phonometrics' counsel, Sutton, persisted in arguing that the Federal Circuit's earlier claim construction was "pure dictum."  In response, the Federal Circuit cautioned that "[u]nder principles of stare decisis,…future panels like the present panel will follow the claim construction set forth by our court."

In this most recent litigation, Judge Kenneth Ryskamp of the U.S. District Court for the Southern District of Florida granted a sanction of attorney fees and costs associated with bringing a Rule 11 motion to fourteen defendants after Phonometrics persisted in arguing a claim construction at odds with the first two Federal Circuit decisions.  The Federal Circuit majority affirmed the sanction, noting that "[A] litigant's obligations with respect to the contents of …..papers are not measured solely as of the time they are filed" but "include reaffirming to the court and advocating positions containing in those [papers] after learning that they cease to have any merit." 

Judge Newman in a dissent argued that the appellate case relied on for claim interpretation "was limited to equipment manufacturers" and that a later case more on point was an unpublished nonprecedential decision.  Accordingly, "Phonometrics' counsel's optimism" that the Federal Circuit would distinguish the earlier case as not pertaining to the later one "was not so unreasonable as to warrant Rule 11 sanctions."

This case affirms that later panels of the Federal Circuit follow the claim constructions of earlier panels.  The rule 11 award in this case was for only $13,565.63 and came after a warning "against further litigation of that (claim construction) issue in this court."

CFMT, Inc. and CFM Technologies, Inc. v. Yieldup International Corp.
Decided November 12, 2003
Judge Rader with Judges Friedman and Linn

*          The enablement requirement is met if a patent specification enables any mode of             making and using the claimed invention

            CFMT sued Yieldup at the U.S. District Court for the District of Delaware for infringing patent claims to an apparatus for cleaning semiconductor wafers.  Judge Roderick McKelvie, citing evidence that CFMT's claimed method required further inventions before its commercial use, granted Yieldup summary judgment of invalidity on enablement grounds.  The court also held the patent unenforceable because CFMT failed to present available negative data while making laudatory comments during prosecution at the PTO.  CFMT appealed to the CAFC.

            The CAFC declared that "enablement does not require an inventor to meet lofty standards for success in the commercial marketplace" and reversed the invalidity holding.  The CAFC also reversed the inequitable conduct holding because CFMT had no obligation to submit negative data.  CFMT's arguments regarding advantages of the invention did not include "objective evidentiary support" and a reasonable examiner could not have relied on those laudatory statements.  Without reliance there was no need to submit contrary data.

            This case teaches that when a position is taken during examination at the PTO, an applicant does not necessarily have to submit contrary data when no objective evidentiary support has been offered for the position.    
 

Combined Systems, Inc., v. Defense Technology Corporation of America and Federal Laboratories, Inc.

Decided November 20, 2003

Judge Michel with Judges Mayer and Bryson

*          Claim construction starts with dictionary definitions and is informed by a review of a patent's specification

            CSI sued Defense at the U.S. District Court for the Southern District of New York for alleged infringement of  a patent claim for a method of making a low lethality shotgun charge.  The claim recites loading lead shot followed by "forming folds" in a sock like fabric in front of the lead shot.  Judge Denise Cole construed the term "forming folds" to require the formation of folds before loading the projectile.  The court granted Defense summary judgment of no infringement because Defense's fabric folds occur during insertion, not before.  CSI appealed to the CAFC.  

            The CAFC affirmed, in a decision that reviewed how dictionary definitions are not used in a vacuum but must comport with other intrinsic evidence.  The grammatical use of "folds" indicated that folding was intended before insertion, and other evidence agreed with this.

            The method claim in this case arguably might have covered the accused method if the patent applicant had used broader grammar and had described the method steps as capable of being performed in alternative sequence order.

Schering Corporation v. Geneva Pharmaceuticals, Inc. and Novartis Corporation et al.
Decided August 1, 2003, Petition for Rehearing denied October 28, 2003
Judge Rader with Judges Plager and Bryson, Judges Newman and Lourie dissent from denial of rehearing

 

*          "inherency operates to anticipate entire inventions as well as single limitations      within an invention"

            Schering sued Geneva and other generic drug makers at the U.S. District Court for the district of New Jersey for infringing patent claims to a metabolite ("DCI") of its popular drug CLARITIN (TM) after the makers filed applications to the Food and Drug Administration for approval of their generic equivalents of CLARITIN (TM).  The generic makers asserted that Schering's FDA Orange Book listed patent, which claims the CLARITIN metabolite, is invalid.  Judge John Bissell granted summary judgment of invalidity because Schering's earlier patent for the CLARITIN active ingredient "inherently anticipates" the claims of this later patent to the metabolite found in the body.  Schering appealed to the CAFC.

            The CAFC pointed out that the district court properly construed the claims "to cover DCL in all its forms, including 'metabolized within the human body.'….(and) that DCL was necessarily formed as a metabolite by carrying out the process disclosed in" the earlier Schering patent.  Furthermore "[t]he parties agreed to that construction."  Thus, the CAFC affirmed, because the broad claim, which includes the metabolite compound in the body made from CLARITIN, was inherently anticipated. 

            This is the first case wherein all aspects of a claimed invention were unknown and not even capable of being known until later, yet were anticipated inherently by prior art.  Unfortunately Schering did not claim the invention of obtaining the metabolite in an isolated form and/or administering the metabolite in a pharmaceutical form.  The opinion comports with the fact that a naturally occurring compound is "invented" via its isolation from nature and simultaneous conception/appreciation of its use.  This point apparently was lost on Judge Newman, who dissented from denial of rehearing en banc by arguing that "[i]t was and is well understood that an inventor may discover something that already existed."  In fact, the isolated form and pharmaceutical preparation of the DCL metabolite did not exist before.  Instead of claiming the invention, Schering's second patent claimed the compound per se, including all of its naturally occurring forms and concentrations in the body. 

            Judge Lourie also seemed to miss this point in dissenting from denial of rehearing en banc.  Judge Lourie argued that "[t]his decision holds that an enabling disclosure of 'how to make' metabolites is provided by the mere recitation that one can administer a prior art compound to humans."  This statement overlooks the fact that a novel chemical process for synthesizing a properly claimed metabolite also should be patentable. 

            If a drug company wants to protect a discovery of a drug metabolite as a new drug itself, it should file a patent application to a) that new use, to b) that new drug formulation and/or to c) the new chemical synthesis method of its formation.  Drug companies have to follow the same patent rules as biotech companies who isolate naturally occurring chemicals from nature.
 

William H. Velander et al. v. Ian Garner et al.

Decided November 5, 2003

Judge Schall with Judges Gajarsa and Prost, Gajarsa dissenting

*          Both motivation and a reasonable expectation of success are required to            establish obviousness

            Velander and Garner contested inventorship of a transgenic animal and its use to make transgenic fibrinogen (a protein), in an interference proceeding at the U.S. PTO Board of Patent Appeals and Interferences (the "Board").  Garner successfully convinced the Board that Velander's claims are obvious over cited art.  Velander appealed to the Court of Appeals for the Federal Circuit (“CAFC”).

            Velander did not dispute the existence of motivation to combine references.  Instead, the primary issue was whether "one of ordinary skill in the art would have had a reasonable expectation of success in producing a recoverable amount of biologically active fibrinogen" in view of known success with related proteins.  The CAFC (majority panel) agreed with the Board that although "expensive, technically challenging, and laborious" at the filing date, the claimed method was "nevertheless a viable option" and affirmed the PTO’s obviousness decision.  Gajarsa dissented because the CAFC’s review of the Board's decision "should be restricted to the grounds relied on by the Board" and the Board explicitly “supported its findings" with only two references, while improperly adding "conclusions based on its own understanding or experience."

            Unfortunately, an appeal of an adverse PTO decision to the CAFC is limited to the review of facts that had been relied upon by the PTO. Velander might have fared better if Velander had appealed to a district court, which could have admitted more evidence.  A second point is that the problem – solution test used to determine expectation of success may be met easily when the claims are very broad.  Velander’s claims covered any amount and quality of the transgenic protein, which presented a very low hurdle for reasonable expectation of success.

Arlington Industries, Inc. v. Bridgeport Fittings, Inc.

Decided September 25, 2003

Judge Linn with Judges Archer and Dyk, Dyk dissenting in part

*          Broad dictionary definitions more likely govern claim interpretation if a patent
            applicant does not act as his own lexicographer

            Arlington won a jury verdict against Bridgeport at the U.S. District Court for the Middle District of Pennsylvania for literal infringement of patent claims to an electrical receptacle box extender having wings that are "capable of flexing."  Bridgeport appealed its loss to the CAFC, arguing that Judge Richard Caputo erroneously construed the term "flexing," to include not only cantilever bending but also bowing and bending.

            The CAFC in a majority opinion, affirmed because the dictionary definition for "flex" "encompasses not only cantilever flexing but also bowing or bending" and the properly construed claim covers Bridgeports box, which merely bends.  In deciding not to limit the dictionary definitions for this word, the CAFC pointed out that "[t]here is no indication in the written desciption….that Gretz acted as his own lexicographer."  The CAFC explained that '[i]n the course of prosecuting a patent application, a patentee may redefine a claim term" but the court could not find a narrowing redefinition of the term in the prosecution history.  Judge Dyk dissented however, because according to his view of that prosecution history "Arlington disclaimed a device that merely bowed, but did not flex."

            A patent practitioner should avoid formally defining claim terms in the specification when those terms are defined more broadly by a regular or technical dictionary.  Instead, statements can be added to the specification and during prosecution to illustrate that a wide range of embodiments within a common meaning are contemplated. 

Cygnus Telecommunications Technology, LLC v. Totalaxcess.com, Inc.

Decided September 30, 2003

Judge Newman with Judges Lourie and Prost, Prost dissenting

*          A district court maintains jurisdiction to enforce a settlement agreement when the            terms of that agreement are incorporated into a judgment and dismissal order

            Cygnus obtained a consent and judgment from the U.S. District Court for the Northern District of California that obligated Justice to pay a settlement fee.  However, TotalAxcess purchased Justice at about this time, both parties refused to pay the judgment, and Justice filed for bankruptcy.  Accordingly, Cygnus sued TotalAxcess at the same court.  Judge Donald Whyte however, dismissed the complaint because "the original patent-based ground of federal jurisdiction was not available against TotalAxcess."  TotalAxcess appealed to the CAFC.

            A majority opinion of the CAFC reversed because incorporation of terms of the settlement agreement in the original court order establishes "subject matter jurisdiction to enforce the agreement, including jurisdiction to determine the liability of TotalAxcess."  The CAFC reviewed a Supreme Court decision that allowed continuing jurisdiction when settlement terms are incorporated into the court order.  The majority further opined that (citing a 9^th circuit case) “[I]n the absence of controlling federal statutes, the district court has the same authority to aid judgment creditors as that provided to state courts under local law.”  Judge Prost dissented because of his counter-view that the second suit raises "a new theory: successor liability of a third party…..(that) involves no facts and no law common to the original lawsuit."

            A successful party to a settlement agreement should incorporate that agreement in a consent judgment that disposes the case.  This inclusion may help protect against third parties that acquire the assets of the other side but refuse to pay the liabilities.

Shu-Hui Chen and Vittorio Farina v. Herve Bouchard et al.

Decided October 22, 2003

Judge Lourie with Judges Newman and Schall; Newman dissenting

*          An incorrect chemical or structure in a specification may not be corrected if the disclosure lacks "any characteristics of those products that would evidence possession of the invention"

            Chen filed a patent application to methods of making taxol derivatives but withdrew the application after allowance and payment of the issue fee upon realizing that the named compounds were wrong.  Chen eventually filed a CIP application that issued as a patent with the correct compounds.  The PTO declared an interference between the patent and an application by Farina that claimed the same compounds.  The PTO held that Chen was not first inventor because Chen's earliest filed application, while reciting methods of synthesis, lacked a written description of the compounds.  Chen appealed to the CAFC.

            A CAFC panel majority decision affirmed because, unlike other cases where an applicant is allowed to add structure or correct structural description after filing, Chen's earliest applications "not only do not disclose the structural formula of any ….(later claimed compounds but)…also do not disclose any analytical data or other characteristics."  On a related point, Judge Newman dissented because laboratory notebooks from Chen's assistant described the correct compounds at an early date.  Judge Newman argued that the PTO incorrectly refused to consider the uncorroborated notebooks as business records, and would have found earlier invention for Chen on this basis.

            This case explores the limits of how much a patent applicant can amend an incorrect structural formula for a chemical in a specification after filing, according to the principle that "a chemical structure is simply a means of describing a compound; it is not the invention itself."  Chen could not amend without adding new matter, because he did not describe other characteristic features of his compounds in his earliest patent applications and a skilled artisan could not have figured out the correct compounds from the information given. Chen's attempt to utilize uncorroborated notebook evidence as a "business record" exception to the hearsay rule was interesting.  As electronic notebook keeping becomes routine and in particular more tamper proof, this exemption may assume an important role in resolving inventor disputes. 

Talbert Fuel Systems Patents Co., v. Unocal Corporation,
Union Oil Company of California, and Tosco Corporation
Decided October 28, 2003
Judge Newman with Judges Michel and Plager

*          The surrender of equivalents under Festo is overcome if a skilled artisan "could not reasonably be expected to have drafted a claim" to the desired equivalent

            Talbert sued Tosco at the U.S. District Court for the Central District of California for alleged infringement of patent claims to "gasoline having a boiling point range of 121F to 345F."  Tosco's gasoline has a boiling point above 373F and the court found no literal or infringement or infringement of equivalents because Talbert had added the temperature limitation during prosecution. Talbert appealed this decision to the Federal Circuit, which affirmed, and then appealed to the Supreme Court.  The Supreme Court remanded for further consideration in light of the Court's Festo decision, to give Talbert an opportunity to rebut the "presumption of surrender arising from" the temperature limitation amendment.  

            In this remand, the Federal Circuit reviewed the "[t]hree general criteria of rebuttal… established by the Court" and compared with the available evidence.  The first criteria (unforseeability of the equivalent at the time of making the amendment) was deemed not met because "the prior art embraces the equivalent."  The second criteria (rationale underlying the amendment bearing no more than a tangential relation to the equivalent in question) also failed because the higher gasoline boiling point was "at issue during prosecution."  The third criteria ("some other reason" why the "patentee could not reasonably be expected to have described the insubstantial substitute") failed because "no other reason ….has been proffered."

            This case exemplifies the three rebuttal criteria for determining whether file history estops application of the doctrine of equivalents to a claim term.  In recent cases, the second criteria, whether the reason for an amendment bore "no more than a tangential relation to the equivalent" is discussed most often.  Accordingly, a patent practitioner should consider presenting a very narrow logical reason when amending a claim to overcome a rejection.  During later litigation, if the reason is merely tangentially related to the facts of an infringement, the patentee can argue that the amendment does not estop application of the doctrine of equivalents to the modified claim term.

Deering Precision Instruments, LLC, v. Vector Distribution Systems, Inc. and Gram Precision Scales, Inc. and Mohan Thadani, and Bonso Electronics International, Inc.
Decided October 17, 2003
Judge Gajarsa with Judges Bryson and Prost

*          A statement during prosecution that merely clarifies an examiner's mistake is not             a "surrender of subject matter" that blocks use of the doctrine of equivalents

            Deering sued Vector at the U.S. District Court for the Northern District of Illinois for alleged infringement of patent claims to a portable scale having a sliding weight "substantially in an imaginary plane containing the fulcrum."  Judge Harry Leinenweber interpreted this language as requiring a significant or considerable portion of a sliding weight to go over the fulcrum.  Because no part of Vector's sliding weight covers the fulcrum the court granted Vector summary judgment of no infringement.  Deering appealed to the Federal Circuit.

            The Federal Circuit construed the claim term "substantially" more narrowly and upheld no literal infringement.  The Federal Circuit took issue with the district court's reliance on a statement during prosecution that merely clarified a mistake of the examiner.  The court explained that the statement was "not the clear and unmistakable surrender of subject matter" required under Festo and vacated the no infringement under the doctrine of equivalents.

            This case teaches another category of arguments (clarifying an examiner's mistake) that may be exempt from file history estoppel.  The case also was interesting because the Federal Circuit relied on statements in a patent specification to select an alternative, more narrow definition of the often used claim term "substantially."

Merck & Co., Inc., v. Teva Pharmaceuticals USA Inc. and Zenith Goldline Pharmaceuticals, Inc.
Decided October 30, 2003
Judge Newman with Judges Mayer and Prost, Mayer dissenting

*          Claim terms "must be understood and interpreted by the court as they would be             understood and interpreted by a person in that field of technology."

            Merck sued Teva at the U.S. District Court for the District of Delaware, under 35 USC 271(e)(2), alleging infringement of Merck's method patent of using the pharmaceutical alendronic acid.  Teva had filed an abbreviated new drug application at the FDA to sell a generic equivalent of the alendronic salt, prompting an infringement claim under this statute.  Judge Joseph Farnan Jr. construed the claim term "acid" to include the salt, (the form used by Teva), and found infringement.  Teva appealed to the Federal Circuit.

            A majority of the Federal Circuit panel found that "all the qualified witnesses," with experience in pharmacology, (excluding a "general chemist") had agreed that the word "acid" encompasses the sodium salt, and affirmed.  The court specifically approved the district court's use of extrinsic testimony for interpreting the claims.  This extrinsic evidence, including writing from the FDA as well as hired experts, was dispositive to the main issue. 

            In a dissent, Judge Mayer argued that "acid and the salt are distinct compounds and that the patentee is able to distinguish between the two when he so chooses" because of statements in the specification.  This dissent and the main litigation issue should have been avoided if the patent applicant (an Italian company) had included "or its salt" in the claims.  It is important to have a practitioner who is both a native speaker of English and familiar with the specific field of the invention to draft and prosecute patent claims in front of the U.S. PTO.

CCO Brands, Inc. v. Micro Security Devices, Inc.
Decided October 7, 2003
Judge Newman with Judges Rader and Dyk

*          A claim term such as "extending" may be interpreted as a functional rather than   a structure limitation if argued that way during prosecution

            Acco sued Micro at the U.S. District Court for the Northern District of California for alleged infringement of patent claims that recite a locking system (useful for laptops) wherein the key mechanism uses "a pin coupled through said housing, for extending into said security slot….when said slot …is in said locked position."  Judge Susan Illston granted Micro summary judgment of non-infringement after construing "the 'pin' clause to require that the pin actively extends into the security slot when the slot engagement member is in the locked position." Micro's accused device pin inserts before rotation locking and therefore could not infringe under this construction.  Acco appealed to the Federal Circuit, arguing that the term "extending" is a structural limitation that does not require the construed active movement.

            The Federal Circuit agreed with the district court's claim construction and affirmed.  The Federal Circuit pointed out that during prosecution, Acco had "argued that 'for extending' is a functional recitation ….as a limitation not present in the references."  The court explained that "[s]tatements made during prosecution which clearly disclaim a particular claim interpretation will limit the scope of the claims."

            Acco's disclaimer for one claim was deemed to cover another claim with similar language but that had not been amended. The Federal Circuit overlooked this anomaly because "the examiner made no such distinction" between the claims and because "two claims which read differently can cover the same subject matter."  One justification for suspending claim differentiation principles was that the examiner cited the importance of the functional pin movement in a "reason for allowance" statement.  If Acco had responded with a clarifying statement this claim construction issue would have been more of a close call during litigation. 

Genzyme Corporation and Mount Sinai School of Medicine of N.Y. University v. Transkaryotic Therapies, Inc.
Decided October 9, 2003
Judge Rader with Judges Schall and Linn, Linn concurring-in-part and dissenting-in-part

*          Description in a specification and during prosecution of a single embodiment well
            known in the art might limit a claim term to that embodiment

            Genzyme sued Transkaryotic at the U.S. District Court for the District of Deleware for infringing patent claims to a method for producing an enzyme via a "a chromosomally integrated nucleotide sequence….controlled by a regulatory sequence.”  Transkaryotic's method used native enzyme that naturally is present (integrated) in a chromosome.  Judge Gregory Sleet held summary judgment of no infringement after construing the term "chromosomally integrated" to require that an infringing method import a foreign gene into the chromosome.  Genzyme appealed to the Federal Circuit.

            A Federal Circuit majority opinion agreed with the lower court's claim construction and affirmed.  The majority argued that "the word 'integrated' suggests putting exogenous (gene) into the host cell's chromosome" and found that "throughout" the "patent specification, the applicant consistently uses the term 'integrated' to refer to a foreign gene inserted into a host cell chromosome."  The majority did not seem to acknowledge the broad structural meaning of this claim term, which includes naturally occurring genes placed there by evolution, but limited the claims to a sole embodiment imported from the specification.  Judge Linn dissented in an opinion that recognized this scientific fact, with an interpretation that “chromosomally integrated” means all genes that are integrated within chromosomes.  It seems that the court unconsciously struggled with a functional vs structural claim interpretation issue.

            Judge Linn's logical dissent pointed out that Genzyme did not restrict the broad art recognized meaning by "clear disavowal" during prosecution.  Both opinions neglected to review the more interesting question of whether the disputed term should be functionally limited and failed to confront sufficiently the challenging enablement and invalidity issues associated with a structural interpretation.  The court further failed to acknowledge that the infringer may have used later developed technology that did not work at the priority date, which indicates invalidity of the claim when interpreted structurally.  These common issues in molecular biology patent litigation are difficult to understand and often neglected.

ResQNet.com, Inc. v. Lansa, Inc.

Decided October 16, 2003
Judge Rader with Judges Newman and Michel

*          "A patent applicant may consistently and clearly use a term in a manner either     more or less expansive than its general usage… and thus expand or limit the scope        of the (claims)"

            ResQNet sued Lansa at the U.S. District Court for the Southern District of New York for infringing patent claims to computer terminals and methods of their use for connecting to main computers such that instructions received in "each of a plurality of fields" leads to proper screen display.  Senior Judge Robert Sweet construed the claims to require algorithms wherein "all fields on the screen are utilized."  To facilitate appeal, the parties entered into a consent judgment that the accused systems (under this claim construction) would not infringe.  ResQNet appealed to the Federal Circuit.

            This case involved the construction of claims terms such as "each of a plurality and "each field" from 3 patents.  The Federal Circuit reviewed the prosecution histories  and specifications and its own case law regarding when statements in a specification and from prosecution can affect claim interpretation.  For example, a description of a problem from the prior art and the inventive solution in the specification can "provide valuable context for the meaning of the claim language."  The Federal Circuit disagreed with some interpretations and affirmed-in-part, reversed-in-part and remanded.  For example, a statement in the specification that a particular algorithm "is not critical to the present invention but may be of the type" was cited as justification for a broader claim scope.

            Simple claim terms such as “each” may be defined by contextual use from intrinsic evidence.  A patent practitioner should exploit patent application drafting and argumentation opportunities during prosecution to push for broad meanings of such words.

 
Alloc, Inc. Berry Finance N.V., and Valinge Aluminum, AB, v. International Trade Commission and Pergo, Inc. and Roysol and Akzenta Paneele + Profile GmbH et al.
Decided September 10, 2003

Judge Rader with Judges Michel and Schall, Schall dissenting

*          A patent specification read as a whole can limit claims to an unrecited feature

            Alloc filed a complaint with the ITC alleging that Pergo violates section 337 because of 1) importation of goods that 2) infringe a valid and enforceable patent and 3) existence of a domestic industry that markets the patented articles.  An administrative law judge at the ITC construed the patent claims "to require play or a space between" locking panels of the product.  Because the accused imported panels lacked this play, the judge held that no domestic injury existed.  Alloc appealed to the Court of Appeals for the Federal Circuit ("Federal Circuit").

            The Federal Circuit admitted that "none of the asserted patent claims recites the term play" but pointed out that "the specification teaches that the invention as a whole, not merely a preferred embodiment, provides for play in the positioning of floor panels."  Furthermore, both the specification and statements during prosecution "distinguished the prior art on the basis of play."  Based on this reading of the specification to include the missing claim term, the court affirmed.

            A dissent by Judge Schall pointed out that after receiving a notice of allowance, the applicant had added new claims identical to the just allowed claims but that lacked the "play" limitation.  Judge Schall explained that "two claims that are identical except for one element presumptively differ in scope" and argued that Pergo literally infringed the correctly construed claims.  This case outcome shows how important late amendments can be, when an examiner has deemed significant allowed matter and often is willing to allow additional claims of broader scope.

ACTV, Inc. and Hypertv Networks
Decided October 8, 2003
Judge Linn with Judges Friedman and Plager

*          Documents from industry working groups that declare meanings of technical      terms are extrinsic evidence for claim interpretation

            ACTV sued Disney at the U.S. District Court for the Southern District of New York for infringing patent claims that recite a system for synchronizing television information with information from the internet.  ACTV's patent claims recite "means for" transmitting URL (internet address) information during the television blank signal period.  Judge Jed Rakoff construed the term "URL" to mean "the complete address of a site on the Internet specifying both a protocol type and a resource location."  The court granted summary judgment of no infringement because Disney's accused "system only transmits file names, not absolute URLs."  ACTV appealed to the Federal Circuit.

            The Federal Circuit construed the term "URL" more broadly and vacated the non-infringement decision because the district court erroneously had relied on extrinsic evidence for claim construction.  Both sides had proffered industry working group documents known as RFC (Request for Comments) to support their respective definitions of "URL."  The Federal Circuit emphasized that "dictionaries and treatises …(that) report the meaning already established and commonly understood" are superior intrinsic evidence over RFCs that are "not designed to reflect common usage, but rather to assign language to facilitate further conversation." 

            This opinion re-emphasized the primacy of dictionaries and treatises as intrinsic evidence, but appeared to treat the alternative (extrinsic evidence) definitions of URL similar to that of alternative dictionary definitions.  A broad definition in the case record was adopted because that definition comported with the term's usage in the claims, the specification and the file history.  Although not always stated clearly, the Federal Circuit often follows its method of compiling alternative possible meanings for a disputed claim term (preferably using a dictionary) and then relying on intrinsic evidence to select among the definitions.

John M. Taskett v. Dale H. Dentlinger
Decided September 26, 2003
Judge Michel with Judges Dyk and Prost

*          Laboratory testing suffices for reduction to practice if no "significant doubts"       exist that a tested system is operative when used as claimed           
           

            Taskett and Dentlinger both filed patent applications directed to a process for automated purchase of telephone service through a bank.  The PTO held an interference contest and deemed Dentlinger the first inventor because Dentlinger reduced his invention to practice earliest.  Taskett appealed to the Federal Circuit, arguing that Taskett's testing did not involve "real money, from a real bank."

            The Federal Circuit affirmed because, although Dentlinger used a "sample checking account" in his tests, the financial authorization was real and the claims did not require "actual money."  The facts summarized in this opinion are similar to those of Scott v. Finney: "In tests showing the invention's solution of a problem, the courts have not required commercial perfection nor absolute replication of the circumstances of the invention's ultimate use."

            The Federal Circuit construed the claims broadly enough to include mock conditions used for testing.  The court partly justified this by citing statements in the specification such as "[n]umerous modifications and alternate embodiments of the invention will occur to those skilled in the art."  A practitioner should add such expansive boilerplate statements to a patent application as courts sometimes look for such recitation to justify an expansive claim interpretation.

State Contracting & Engineering Corporation, v. Condotte America et al.

Decided October 7, 2003        
Judge Bryson with Judges Michel and Dyk

*          A willfulness finding for patent infringement might be avoided without a written   non-infringement opinion if a contract indicated that the patent was licensed

            While performing work for Florida, Contracting invented a new process for constructing concrete sound barriers.  Contracting obtained two patents for the process and Florida included specifications for this process in subsequent contracts with other parties  (Contractors).  Contracting then sued Contractors and won a jury trial of damages for patent infringement at the U.S. District Court for the Southern District of Florida.  Judge William Dimitroules ruled that Contactors' infringement was not willful because Contractors believed from the language of their agreement that Florida had a license to practice the invention.  Both sides appealed various issues to the Federal Circuit.

            The Federal Circuit affirmed the lack of willfulness even though Contractors had not received advice of counsel regarding infringement, because Contractors had a good faith belief that they had a sub-license.  Florida had "made a specific representation that it had a license to practice the invention, and it incorporated the invention in the contract specifications, thus requiring the contractors to use the patented process."

            This is the second appeal from a conflict involving alleged impropriety of contracting between a Florida state agency and contractors working on roadways.  In the earlier appeal, the state of Florida removed itself from the case on grounds of 11th amendment state immunity from violating Federal patent law.  In this second appeal, the Federal Circuit affirmed that the contractors were reasonable in believing that Florida had rights to sublicense the patent rights.   

Elan Pharmaceuticals, Inc. and Athena Neurosciences, Inc. v. May Foundation for Medical Education and Research
Decided October 2, 2003
Judge Newman with Judges Gajarsa and Dyk

*          Asserted prior art, including descriptions in issued U.S. patents must be enabled

            This second Federal Circuit opinion vacates an earlier Federal Circuit decision and concludes that an asserted anticipatory prior art reference was not enabled.

            Elan sued Mayo at the U.S. District Court for the Northern District of California for infringing patent claims to a transgenic mouse that expresses a human mutated protein involved in Alzheimer's disease.  Judge William Alsup granted Mayo summary judgment of patent invalidity in view of another U.S. patent that describes the "mutated gene, its source, the nature of the mutation, and its role in Alzheimer's disease" and that "also states that the invention provides a transgenic animal."  Elan appealed to the Court of Appeals for the Federal Circuit ("CAFC.")

            The CAFC panel vacated the invalidity decision because "[t]he issue is whether the (prior art) teachings enabled a person of ordinary skill" to produce the claimed transgenic mouse and "[t]he district court did not directly address the question of enablement."

            Enablement has been a special problem for biotech inventions because scientists often can easily write down references and procedures for carrying out complex and uncertain biochemical manipulations without carrying out the work themselves.  However, a new biological material can be very complex and often requires undue experimentation for its discovery and analysis.  In this context, the CAFC made it clear that the same enablement requirement for patentability applies equally well to prior art references, including issued U.S. patents.

Glaxo Wellcome Inc. v. Andrx Pharmaceuticals, Inc.

Decided September 22, 2003

Judge Newman with Judges Mayer and Bryson

*          "When a claim term has an accepted scientific meaning, that meaning is generally            not subject to restriction to the specific examples in the specification."

            Glaxo sued Andrx for infringing Glaxo's claims to a smoking cessation pill comprising hydroxypropyl methylcellulose (HPMC) having a particular sustained release characteristic.  Judge Wilkie Ferguson Jr. granted Andrx summary judgment of non-infringement because Andrex's generic product, as described in an Abbreviated New Drug Application to the FDA, uses a different grade of HPMC in combination with another sustained release agent.  Glaxo appealed to the CAFC.

            The CAFC construed the claims as not requiring a certain grade of HPMC and vacated for further analysis.  The CAFC explained that "[t]he district court erred in holding that the amendment adding the release rate data to the claim (during patent application prosecution) limited the claim to the grade of HPMC in the example."  In fact, the applicant responded to a rejection by adding functional language instead of reciting a grade of HPMC.

            During litigation one side sometimes convinces a district court to limit a claim term to a preferred embodiment.  The CAFC explains in this case that when the term already is well known (e.g. a generic chemical name) it is harder to restrict the claim meaning this way.  A practitioner accordingly should consider using well known generic names when drafting patent claims.  Another point, is that when a PTO examiner insists on limiting a claim to a particular chemical because of the "critical" characteristics of that chemical, it may be best to add those characteristics to the claim instead of further specifying the chemical, to obtain broader claim scope.

Festo Corporation v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., a/k/a SMC Corporation and SMC Pneumatics, Inc.

Decided September 26, 2003

Judge Lourie with Judges Michel, Plager, Clevenger, Rader, Schall, Bryson, Gajarsa, Linn, Dyk and Prost ; Judge Rader also concurs separately;
Judges Newman and Mayer dissent in part

*          File history estoppel restricts the doctrine of equivalents to cover embodiments that were foreseeable at the time of a claim amendment

*          Forseeability of claim equivalents is determined based on technology      existing at the time of amendment, not the filing date

            This case was on remand from the Supreme Court and clarifies how the presumption of claim scope surrender, which limits use of the doctrine of equivalents during litigation, could be overcome.  The Supreme Court stated that the presumption of surrender might be overcome by showing that "at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent."  Three ways for doing this are: 1) demonstrating that "the equivalent [would] have been unforeseeable at the time of the [amendment]; 2) showing that "the rationale underlying the amendment [bore] no more than a tangential relation to the equivalent in question; and 3) "some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question." 

            The majority CAFC opinion concluded that Festo's reason for narrowing the claims was more than tangentially related to the accused equivalents, and Festo could not rebut the presumption on that basis.  However, Festo might still establish that the equivalents could not have been foreseen at the time of making the amendments.  For example, the accused equivalent device or method might use new technology that was not known when the patent application was prosecuted, and the patentee could not possibly have included that embodiment in his patent for this reason.  The CAFC remanded to the district court to evaluate such factual issues regarding unforeseeability of the accused embodiment.

            The CAFC also confirmed that "[q]uestions relating to the application and scope of prosecution history estoppel … fall within the exclusive province of the court" and "the jury has no role to play."  The majority opinion pointed out that analysis of the "tangential relation to the equivalent in question" is limited to intrinsic evidence.  Newman and Mayer's partial dissent, however, countered that evaluation of "the two criteria of tangentialness and some other reason" should not be questions of law for a court only, and that "Festo has been deprived of both trial and appeal" with respect to these evaluations.

            The separate and lengthy opinions presented in this decision evince a doctrine of equivalents that remains clumsy in its application.  An interesting holding was that a determination of equivalents for a claim element against an imitator who uses later developed technology is made based on technology existing at the time of claim amendment, which can be years after preparation and filing of a patent application.  Accordingly, a practitioner must not only query a client about competitors' products during prosecution, but also consider recent technology developments at the time of amending claims.

Medical Instrumentation and Diagnostics Corporation, v. Elekta AB, Elekta Instrument AB, Elekta Instruments, Inc. and Elekta Oncology Systems, Inc.

Decided September 22, 2003

Judge Clevenger with Judge Shall; Judge Newman dissenting

*          A means plus function claim should be associated clearly with a (preferably)       generic structure in the specification

            Medical sued Elekta at the U.S. District Court for the Southern District of California for alleged infringement of claims to stereotactic surgery that recite "means for converting" images "into a selected format."  The specification described structures for analog conversion and Elekta's accused apparatus used software for digital conversion.  A jury found infringement and awarded damages to Medical.  Elekta appealed to the CAFC, arguing that Judge Robert Whaley's claim construction was erroneous and that judgment as a matter of law of non-infringement should have been granted.

            The CAFC reversed the district court's denial of judgment as a matter of law because, while the specification included analog conversion structure, "there is nothing in the specification or prosecution history that clearly links or associates software with the function of converting images into a selected format."  The court emphasized that "[t]he duty of a patentee to clearly link or associate structure with the claimed function is the quid pro quo for allowing the patentee to express the claim in terms of function under section 112, paragraph 6."  The count hinted that merely labeling a diagram in the specification as referring "to some structure instead of simply referring to a step in the claimed method" might have sufficed to clearly link software to the claim.  Judge Newman disagreed that software was not linked as a structure to the means plus function claim because such "software procedures … were well known."  This split in the court illustrates the problems of interpreting means plus function claims.  Many practitioners avoid these claims for this reason. 

            The CAFC majority decision repeatedly mentioned a lack of clear association of structure to the means plus function claim in "the specification and file history" (emphasis added) rather than just the specification itself.  The apparent desire to use file history to help find an association seems unusual but likely shows that an applicant might use file history to help link such structure to means plus function claims after filing.  Thus, a patent practitioner should consider explaining desired associations of generic structures with means plus function elements during prosecution.  This could help lock in a desirable broad interpretation for use during patent enforcement.

Akamai Technologies, Inc. and Massachusetts Institute of Technology v. Cable & Wireless Internet Services, Inc. and Kinetech

Decided September 15, 2003

Judge Gajarsa with Judges Newman and Dyk, Newman dissenting in part

*          The Federal Circuit can re-interpret a claim and undo the results of a jury trial

            MIT obtained a patent to an internet system of optimizing resources for decreasing internet congestion and delay in accessing web pages via load balancing software, preferably at DNS servers.  C&W obtained a similar patent that it filed more than one year before MIT's patent but that issued after MIT's patent (and therefore is 102(e) prior art).  C&W's 102(e) patent described locating load balancing software "at the content provider, or origin, servers" instead of at the DNS servers as described by MIT.  MIT sued C&W for infringing its earlier issued patent at the U.S. District Court for the District of Massachusetts, and a jury found MIT's patent valid and infringed.  Judge Rya Zobel granted MIT a permanent injunction based on the verdict and C&W appealed its loss to the Federal Circuit.

            The Federal Circuit held that C&W's patent anticipates MIT's claims and reversed that part of the permanent injunction.  The Federal Circuit construed MIT's claims more broadly than did the district court because the claims "do not expressly require" a particular location for the load balancing software.  Thus, the defendant's own earlier filed patent application, which described the software, but located the software at a different location, anticipated the broader claims.  The Federal Circuit pointed out that the lower court erroneously relied on extrinsic testimony evidence (which) is not the unequivocal evidence" for the narrower definition.

            Judge Newman dissented in part because the majority decision "says not a word about the evidence at trial, but simply decides the (claim interpretation) question for itself."  However, claim construction is a matter of law, and construed claims that govern the case easily may change upon appellate review, as happened here.  To avoid the costly consequences of re-interpreted claims, a practitioner should explain all important claim terms clearly during patent application preparation and prosecution.

BJ Services Company v. Halliburton Energy Services, Inc.
Decided August 6, 2003
Judge Mayer with Judges Dyk and Prost

*          The claim term 'about' may encompass the range of experimental error that occurs         in any measurement

            BJ won a patent infringement jury trial against Halliburton for infringing patent claims to methods of fracturing a subterranean formation.  Halliburton appealed its loss to the Federal Circuit, arguing that BJ's patent claim, which recites "about 0.06" is invalid on indefiniteness grounds and that other claims, which recite "a C* concentration" are not enabled. 

            The Federal Circuit affirmed the validity of BJ's claim that recites "about" because "about" refers to experimental error and a range of such error was provided to the jury.  The other claims that recite "C* concentration" were enabled because testimony provided at trial "confirmed that one of skill in the art would have known to measure the polymer" a certain way.  Thus, extrinsic evidence during litigation was used to fill in apparent gaps of the specification as well as to provide meaning for "about."

            Interestingly, the defendant did not request the court to construe "about 0.06" but agreed that the jury "should be instructed to give 'about 0.06' its plain and ordinary meaning."  The Federal Circuit went along with this, and stated that "the issues here are essentially factual."  A patent claim drafter might add extra claims that recite the term "about" to a patent application to force the use of extrinsic evidence for fact finding during litigation.  Such an "essentially factual" issue built into a patent specification may improve chances of traversing summary judgment and reaching a jury trial during patent litigation.           

Nitro Leisure Products, L.L.C. v. Acushnet Company
Decided August 26, 2003
Judge Linn with Judges Newman and Bryson, Judge Newman dissenting

*          Likelihood of trademark .confusion may be less for refurbished goods because consumers have a different expectation of product quality

            Nitro collects used golf balls and "refurbishes" them by removing paint, repainting and adding back original trademarks to their surfaces.  Nitro filed suit at the U.S. District Court for the Southern District of Florida against golf ball maker Acushnet, who objected to this practice, and sought, inter alia, declaratory judgment of non infringement of Acushnet's patents.  Judge Donald Middlebrooks denied Acushnet preliminary injunctive relief for violation of its "Titleist" trademark and golf ball patents.  Acushnet appealed, arguing that "Nitro's refurbishing process so alters the basic composition of Acushnet's golf balls that it would be a misnomer to call the article by its original name."

            A Federal Circuit majority opinion affirmed.  The court reviewed Supreme Court cases wherein "used and repaired goods can be sold under the trademark of the original manufacturer without deceiving the public" as long as the accused infringer "had attempted to restore so far as possible the original condition of the goods and full disclosure is made about the true nature of the goods."  The majority opinion further noted that the test for consumer confusion may be more relaxed for refurbished products than for new and unused goods.  In particular, "material differences do not necessarily measure consumer confusion" because a consumer does not expect refurbished or used goods to be the same as new goods.

            Judge Newman interpreted the facts differently, concluding that "when the balls are so badly scarred or cut that they must be repainted and the damage concealed" the trademark owner has an interest in preventing re-application of the trademark. 

            This case examined the limits of when to reapply a trademark to a refurbished product.  The split in the court appeared to arise from a disagreement over the facts.  Either the refurbished ball was "so badly cut that it was discarded" by the original purchaser (dissent) or the balls were not "so different from the original that it would be a misnomer for them to be designated by the original trademark" (majority).  This was an appeal from a preliminary injunction decision that lacked exhaustive fact finding.  Perhaps the real point from this case is that preliminary injunctions are hard to obtain in patent and trademark cases because the facts (such as whether a refurbished good is damaged enough to confuse the public) are unsettled without discovery or full trial.

Alfred Dana III v. E.S. Originals, Inc. et al.
Decided September 8, 2003
Judge Bryson with Judges Rader and Dyk, Dyk concurring separately

*          A possible co-plaintiff may not be able to wait out and take advantage of results            from a first litigation before filing a second suit

             Dana sold L.A. Gear his flashing shoe patent but reserved the right to sue for pre-assignment infringement.  L.A. Gear subsequently obtained a judgment in California against E.S., for patent validity and infringement by E.S. et al.  Dana then sued E.S. et al. at the U.S. District Court for the Southern District of Florida on the same issues.  Judge Wilkie Ferguson agreed that under the principle of "offensive" collateral estoppel (the plaintiff could have but was not part of an earlier suit that settled the same issues) E.S. et al. could not deny infringement or challenge patent validity because those issues had been resolved in the California case.  E.S. et al. appealed.

            The Federal Circuit vacated the decision because "in cases where a plaintiff could easily have joined in the earlier action or where …. the application of offensive estoppel would be unfair" this use of collateral estoppel "creates a 'no lose' incentive for plaintiffs to hold back and await developments in other plaintiffs' cases."  In this case, "the district court did not make a finding as to whether Mr. Dana could easily have joined the earlier action" so the Federal Circuit remanded for further inquiry on that issue.  Judge Dyk separately concurred but argued that issues of res judicata and collateral estoppel should be resolved by Federal Circuit law and not regional circuit law, as part of the Federal Circuit's responsibility to prevent forum shopping among the circuits.

            Smaller litigants in particular could profit by relying on others to litigate an opponent and then use those results to facilitate a later suit.  The Federal Circuit however discourages such "free rider" actions in instances where a would be plaintiff could have joined the earlier lawsuit.  On a related note, however, all would be litigants should consider the use of data from investigations by government agencies against their foes.  An FDA or SEC investigation against a would be defendant may produce useful admissions and other facts that could be dispositive in a subsequent civil suit.  When relevant, this should be considered as part of a litigation strategy.

The Dow Chemical Company v. Mee Industries, Inc and Florida Power Corporation
Decided September 5, 2003
Judge Dyk with Judges Clevenger and Bryson

*          A statement of intended purpose is not a limiting claim element

            Dow sued Mee at the U.S. District Court for the Middle District of Florida for infringing patent claims that recite adding water to gas turbines "to avoid destructive thermal stresses."  Judge Gregory Presnell granted Mee judgment of patent invalidity and of no direct, contributory, or induced infringement because "the systems sold by Mee did not adjust water volume for the specific purpose of avoiding thermal stress.".  Dow appealed.

            The Federal Circuit affirmed most of the holdings but vacated and remanded the no infringement finding against Mee.  Mee's accused process adds water, but does not avoid destructive stress in doing so.  The Federal Circuit declared that "[e]ven if an operator increased water …for an entirely different reason, that would not avoid infringement, as the motive of the accused infringer when performing a claimed method is simply not relevant."

            Patent claims should not include statements of reasons or motivations.  As seen in this case, such claim recitations might mislead a court to require that an alleged infringer meet the reason or possess the motivation.

University of West Virginia, Board of Trustees et al. v. Kurt L. Vanhoorhies
Decided September 3, 2003
Judge Clevenger with Judges Lourie and Prost

*          An assignment for an invention that refers to a particular patent application         "only     encompasses immediate lineal descendants" of the application

            Kurt and the University disputed Kurt's obligation to assign ownership of an antenna invention after Kurt left graduate school.  The University obtained a court order instructing Kurt to assign certain patent applications and issued patents based thereon.  The University then prepared assignment forms for transferring those applications and patents as well as related new second generation technology patent rights that had not been adjudicated in the court.  Kurt offered instead his own assignments to the specific applications described in the court order.  The University then obtained an order from the U.S. District Court for the Northern District of West Virginia instructing Kurt's attorney to execute the University's assignment forms.  Judge W. Craig Broadwater denied Kurt's subsequent motion for relief because the extra patent assignments desired by the University "were part of the litigation in this matter."  Kurt appealed.

            The Federal Circuit reversed because it could not find any reason for the University to obtain assignments for patent applications that were not "immediate lineal descendants" (in a priority chain from) the litigated patent applications.  Kurt's original assignment of the first generation technology obligated transfer of rights to inventions "as described in the aforesaid application…and to any and all patents or reissues or extensions thereof…" 

            The assignment language described in this case appears unremarkable.  Invention assignees should remember that such assignments generally are limited to patent applications that descend from a filed application and are not necessarily subject specific.  If an assignee wants an obligation from an inventor to assign rights in a technology area, the assignee should consider an employment agreement or other contract to obligate the inventor. 

E-Pass Technologies, Inc. v. 3COM Corporation and Palm Inc.
Decided August 20, 2003
Judge Dyk with Judges Clevenger and Linn

*          An industry standard for a device does not control the meaning of a claim term for         the device unless a patent applicant has adopted that standard specifically

E-Pass sued 3COM at the U.S. District Court for the Northern District of California for infringing a patent claim to a method for using an "electronic multi-function card."  Senior Judge D. Lowell Jensen's claim construction limited the claim to credit card sized devices (as defined by an industry standard) and granted summary judgment of non-infringement to 3COM.  E-Pass appealed to the Federal Circuit.

The Federal Circuit repeated its view that courts indulge a "heavy presumption" that a claim term carries its "ordinary and customary meaning" unless that meaning is "rebutted" by expressions of "manifest exclusion or restriction in the specification and/or prosecution history."  E-Pass had compared its device with regular credit cards multiple times in its patent specification but qualified those examples as "simple" or "normal" forms, which "suggest that the card may deviate from the usual dimensions."  Accordingly, "[i]t was improper, therefore, for the district court to rely upon the industry standards to provide the ordinary meaning of the term 'card' in the context" of the patent specification and the Federal Circuit reversed.

Sometimes a district court (as in this case) incorrectly narrows a claim meaning from statements in a patent specification that compare an invention with prior art.  To help the courts avoid imparting limitations of the prior art into the claims this way, a patent drafter should always qualify that a similarity comparison with prior art is only an embodiment, a "simple form" or a "normal" form of the invention.

Electronics for Imaging, Inc. v. Jan R. Coyle and Kolbert Labs.
Decided .August 18, 2003
Judge Gajarsa with Judges Rader and Bryson

*          A patentee that hires attorneys in another state and sends agents into that state to           persuade a company to take a license may create personal jurisdiction for a   lawsuit in that other state

This case teaches how a technology licensor can create personal jurisdiction that subjects the licensor to a lawsuit in another state while trying to license to another in that state.  Coyle, a Nevada resident executed a nondisclosure agreement and tried to license his technology to "Electronics" in California through multiple visits and calls into California.  Electronics finally sued Coyle in the U.S. District Court for the Northern District of California for declaratory judgment that Electronics did not misappropriate any trade secrets or breach the nondisclosure agreement with Electronics.  After Coyle's patent issued, Electronics further alleged that the patent claims were invalid.  Judge Martin Jenkins dismissed the suit because Electronics failed to establish that Coyle had the "minimum contacts" in California necessary to justify the Court's dominion of jurisdiction over Coyle.  Electronics appealed.

The Federal Circuit explained that Federal Circuit law applies to the patent invalidity claim and reviewed the three factor International Shoe jurisdiction test.  The Federal Circuit concluded that while mere threats over the phone or via mail "are not sufficient to satisfy due process requirements when exercising jurisdiction over an out-of-state patentee," Coyle's other contacts with California exceeded a minimum that indicated purposeful activities directed at California.  Coyle exposed himself to California court jurisdiction by: a) hiring California law firms to do his patent work; b) hiring a California attorney to assist his desired sale of technology to Electronics; c) telephoning Electronics in California at various times; and d) sending representatives into California to demonstrate Coyle's technology to Electronics.  The Federal Circuit held that "the totality of these contacts" indicate "significant activities in California" that shows Coyle purposely availed himself of the privilege of conducing business within California, "thus invoking the benefits and protections of its laws."

This case teaches what not to do in order to avoid a declaratory judgment action in a distant state.  Merely sending a notice letter (or even "mere threats of infringement directed at the forum state") generally does not create sufficient jurisdiction for a declaratory judgment action there.  However, hiring patent attorneys and other attorneys in the other state for assistance with the licensing, sending representatives to carry out licensing activities in the state and placing multiple telephone calls into the state, together are purposeful and significant enough to create personal jurisdiction.  A licensor should try to carry out these activities in his own state to minimize the risk of having to litigate in a distant forum.

Resonate Inc., v. Alteon Websystems, Inc.
Decided August 5, 2003
Judge Plager with Judges Bryson and Prost

*          "Limitations may not be read into a claim from a preferred embodiment when the           claim language is broader than that embodiment"

Resonate sued Alteon at the U.S. District Court for the Northern District of California for infringing an internet web server method claim for managing multiple requests for a web page via multiple servers.  Based on a narrow claim construction wherein transmitted web page data must bypass a "load balancer," Judge Claudia Wilken entered final judgment of non-infringement in favor of Alteon.  Both sides appealed.

The Federal Circuit disagreed with the district court's "level of detail" claim analysis wherein "every other step" of the claim was "described in detail" so therefore a "transmitting the requested (webpage to the requester)" step "would have been detailed in the claim as well."  Because the patentee had not claimed the transmission step in any detail this claim term should be interpreted broadly as "patentees are not required to claim each part of an invention with the same amount of detail."

This is another case wherein the Federal Circuit has reversed a district court decision because the district court erroneously limited a broad claim term to a desired or specific embodiment.  A patent drafter should always describe each important claim term with alternative definitions to help the courts see the breadth of those terms.

Bayer AG and  Bayer Corporation, v. Housey Pharmaceuticals, Inc.
Decided August 22, 2003
Judge Dyk with Judges Mayer and Prost

*          Infringement under 35 U.S.C. 271(g) is limited to manufactured goods and does            not include information generated by a patented process

*          "[P]rocesses of identification and generation of data are not steps in the manufacture of a final drug product"

Bayer sued Housey at the U.S. District Court for the District of Delaware for declaratory judgment that Houseys' patent claims to chemical screening methods were invalid and not infringed.  Chief Judge Sue Robinson dismissed Housey's counterclaim that Bayer infringed the U.S. method claims by importing drugs that were produced overseas using information obtained by the claimed process.  The court reasoned that Bayer's "importation of a pharmaceutical composition identified by the patented process" and "the importation of information generated by the patented process" were not violations of Housey's method patent under 35 U.S.C. 271(g).  Housey appealed.

The Federal Circuit affirmed.  The "central question" in this case was "whether the statutory term 'made' means 'manufactured.'"  The Federal Circuit reviewed the legislative history of 271(g) and related provisions, and concluded that 271(g) refers to a "physical product" because of statutory exemptions wherein the allegedly infringing product: i) "is materially changed by subsequent processes;" and ii.) "becomes a trivial and non-essential component of another product."  Another point was the impracticality of protecting against importation of information per se, which can enter the country via a person's brain.

This case clarifies a major problem facing foreign biotech companies that import new chemicals and that encounter U.S. patents that claim methods of discovering those chemicals.  A product made using a research tool overseas generally does not infringe a U.S. claim to the drug discovery method used, under 271(g).  It appears that if the research tool patent cannot describe the discovered chemical, then the claims, at best, might be limited to "information" useful for discovery.  However, even that information may enter the U.S. without infringing under 271(g).           
 

Intellectual Property Development, Inc. and Communications Patents, Ltd., v. US-Columbia Cablevision of Westchester, Inc. and Tele-Communications, Inc.
Decided July 21, 2003

Judge Schall with Judges Gajarsa and Dyk

*          Claim terms are interpreted with a dictionary.  A patent specification and file      history then are used to select from alternative dictionary definitions

            Intellectual sued Columbia at the U.S. District Court for the Southern District of New York for infringing a patent claim that recites a "high frequency" fiber optic broadcasting system.  After transfer of the case back from another court, Judge William Pauley III "construed 'high frequency' to refer to the range of 3-30 MHz" and found no infringement because the accused process uses frequencies above 30 MHz.  Intellectual appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC agreed with the district court's claim construction and affirmed.  The CAFC explained that the district court did not "put the cart before the horse" by "looking at dictionary definitions first instead of the specification to determine the meaning of the term."  In fact "dictionaries, encyclopedias, and treatises, publicly available at the time the patent is issued, are objective resources" for initial interpretation and "[t]he prosecution history limits (that initial) interpretation of claims so as to exclude any interpretation that may have been disclaimed or disavowed."

            This invention was in a field that changed rapidly in 1974.  However, the patent specification filed then did not include an expansive definition of an important claim term.  As a result, a definition published on the filing date limited the claim to technology present then and prevented the claim from reading on later developed higher frequency technology.  This use of dictionary definitions as a first step in claim interpretation can limit claim meaning unless the patent drafter uses terms with broad dictionary definitions that accommodate later technology.  A patent drafter should consider terms that include anticipated changes in technology such as higher frequencies for communication devices.

Torpharm, Inc., v. Ranbaxy Pharmaceuticals, Inc. et al.
Decided July 23, 2003
Judge Clevenger with Judges Newman and Gajarsa

*          Non-obviousness of an issued patent claim must be assessed against the prior art,          and not by prosecution history statements

            Torpharm obtained patent claims to an improved drug formulation and related product by process claims, after successfully arguing at the PTO that the product was novel.  During a first litigation in North Carolina, product claims in a divisional patent were invalidated for lack of novelty.  A second litigation of related product by process claims in New Jersey then took place, wherein defendant Ranbaxy convinced Judge John Lifland to grant summary judgment of invalidity because of prosecution history indicating that the claims were only allowed after Torpharm convinced the examiner that the product was novel.  Non novelty of the product as determined in the first litigation collaterally estopped assertion of product novelty in the second litigation.  Torpharm appealed.

            The CAFC reversed summary judgment of invalidity of product by process claims in the second litigation because novelty and obviousness are separately argued issues and the obviousness determination required further fact finding.  In particular, the CAFC explained that argumentation during patent prosecution "is relevant to claim interpretation…….(but this does) not suggest that a patentee may advance during litigation only those arguments in support of patentability that were made before the Patent Office, nor that the negation of an argument advanced during prosecution necessarily negates patentability as well." 

            This complicated case teaches how statements made during patent prosecution may be used to advance claim interpretation theories and invalidity theories during litigation.  Generally, "[a] patentee is not required to fight tooth and nail every possibly adverse thought an examiner commits to paper" to strengthen a validity position during later patent enforcement but should worry more about interpretation of claim terms based on statements made during prosecution.  

Custom Computer Services, Inc., v. Paychex Properties, Inc.
Decided July 22, 2003
Judge Lourie with Judges Schall and Prost

*          A naming error in a document filed at the patent office sometimes may be           corrected if additional information is provided

            Payroll filed two extensions of time to oppose Paychex's trademark registration at the U.S. PTO.  However Payroll's attorney mistakenly filed the extensions "on behalf of Custom Computer Services, Inc., formerly known as The Payroll People."  The PTO dismissed a subsequently filed Notice of Opposition as untimely because the correct name was "The Payroll People," which had not changed its name, and the extensions of time had been filed with an incorrect name.  Payroll appealed to the CAFC.

            The CAFC pointed out that under the PTO's rules, if a name is "is misidentified through mistake or if the opposition is filed in the name of a person in privity with the person who requested and was granted the extension of time" then the mistake may be corrected.  In this instance, the attorney had included the extra description of "formerly known as The Payroll People."  Therefore, the mistake was "in the form of one entity's name" (which is) "consistent with the PTO's definition of mistake" and is correctable.

            The attorney saved an incorrect filing by adding extra identification in the papers.  Generally, it is a good idea to add extra identification to identify names and documents when filing papers at the PTO.  For example, by including title, inventor name, and filing date along with a serial number of an application, the application might be correctly described even when the wrong serial number is listed.

Sunrace Roots Enterprise Co., Ltd. and Sun Victory Trading Co., Inc., v. SRAM Corporation
Decided July 17, 2003
Judge Bryson with Judges Lourie and Gajarsa

*          The courts "indulge a heavy presumption that a claim term carries its ordinary and          customary meaning"

            SunRace sued SRAM at the U.S. District Court for the Northern District of California for declaratory judgment that SRAM's patent, which claims a bicycle shift actuator, is invalid and unenforceable.  Judge Vaughn Walker construed the claim term "shift actuator" to require a cam mechanism and entered judgment of noninfringement because Sunrace's device lacks a cam.  SRAM appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC reviewed how statements in SunRace's patent prosecution history and patent specification might overcome "the presumption that the ordinary claim meaning was intended."  The court particularly relied on the doctrine of claim differentiation to determine that an independent claim did not require use of a cam because Sunrace included a cam as a new limiting element in a dependent claim.  The CAFC explained that the "rebuttable presumption that different claims are of different scope … is especially strong when the limitation in dispute is the only meaningful difference between an independent and dependent claim, and one party is urging that the limitation in the dependent claim should be read into the independent claim."

            Dependent claims are very useful to impart broad meaning to independent claims via the doctrine of claim differentiation.  Accordingly, a patent prosecutor should consider drafting many dependent claims that recite alternative broadening features of an important claim element, particularly if such claims could be introduced and negotiated informally with the examiner after filing.  Additional dependent claims cost only 18$ (large entity), do not increase issue or maintenance fees, and are a bargain.

Abbott Laboratories, v. Syntron Bioresearch, Inc.
Decided July 10, 2003
Judge Dyk with Judges Mayer and Michel

*          The plain meaning and context of a term used in a claim heavily influences its      interpretation

            Abbott sued Suntron at the U.S. District Court for the Southern District of California for infringing patent claims to a test strip and method wherein substances flow through the strip and become "non-diffusively bound."  Judge Marilyn Huff instructed a jury that this term requires that an infringing device carry out a quantitative analysis.  Based on this meaning, the jury found no infringement.  Both sides appealed various issues.

            The Federal Circuit reversed the non-infringement holding for claims that recited this disputed term because "the language of the claims as a whole …..suggests that quantitative analysis should not be read as a requirement ….(but is) broad enough to encompass both qualitative and quantitative analysis."

            A patent practitioner should provide broad definitions of important claim terms.  Explicit definitions in the specification are helpful, but contextual use in the claims themselves can impart a broad meaning.

In re Les Halles De Paris J.V.

Decided July 11, 2003
Judge Rader with Judges Newman and Dyk

*          A service trade mark often is less geographically deceptively misdescriptive       because a customer typically receives services at the business location

            The U.S. PTO refused to register Les Halles' service mark "LE MARAIS" for restaurant services on the basis "that the mark was primarily geographically deceptively misdescriptive."  Les Halles appealed to the Federal Circuit.

            The Federal Circuit explained that "geographic marks in connection with services are less likely to mislead the public than geographic marks on goods" and therefore "a different application of the services-place association prong (of the test for deceptive misdescription under 2(e)(3)) is appropriate, especially in the context of marks used for restaurant services."  Thus, in comparison with rejections of trademark applications for goods, "the PTO must show some heightened association between the services and the relevant geographic denotation."

            A service business such as a restaurant that provides service at its location can more easily obtain a service mark that states a geographic location, because of less likelihood of consumer confusion.

Waymark Corporation and Caravello Family LP, and Joseph J. Zito and Alexander B. Rotbart, v. Porta Systems Corporation
Decided July 10, 2003
Judge Dyk with Judges Newman and Rader

*          To obtain the right to litigate, assignments must be in writing under 35 USC 261,            exclusive licenses may be oral

            On remand from the Federal Circuit, Judge Donald Middlebrooks of the U.S. District Court for the Southern District of Florida agreed with several arguments from Caravello that Waymark's litigation conduct merited an award of attorneys' fees against Waymark.  Waymark appealed the judge's sanctions order for attorney's fees to the CAFC.

            The Federal Circuit found legal error in all three theories embraced by the district court for imposing attorneys fees.  One, Waymark's failure to register its trademark until one year after filing a suit alleging trademark infringement was not litigation misconduct because the Lanham Act section 15 USC 1125(a)(1) "provides a remedy for infringement of both registered and unregistered trademarks."  Two, Waymark had standing to sue Porta because the co-plaintiff had claimed a written assignment of the patent "and it was permissible to join Waymark as a plaintiff under the alleged oral exclusive license."  Three, Waymark did not provide misleading responses to a discovery request because the thing requested (assignment document) did not exist.

            This case is interesting because a party relied on an oral exclusive license to join litigation as a co-plaintiff.  The unwritten exclusive license allowed joinder as a co-defendent and the CAFC cautioned that "only in extremely limited circumstances can the holder of an oral transfer of patent rights sue for infringement in its own name." 

Integra Lifesciences I, Ltd. et al. v. Merck KgaA et al.
Decided June 6, 2003
Judge Rader with Judges Newman and Prost, Newman dissents in part

*          "General biomedical research to identify new pharmaceutical compounds" that "may rationally form a predicate for future FDA clinical tests" may not be exempt from patent infringement under 271(e)(1) 

            This case insufficiently addresses the problem of how researchers may study and further develop a technical discovery after an innovator receives a patent for the discovery and uses that patent to block all scientific investigation.

Integra sued Merck at the U.S. District Court for the Southern District of California for infringing patent claims to peptides that inhibit angiogenesis (new blood vessel formation).  A jury found infringement and Judge James M. Fitzgerald held that Merck's drug discovery research did not enjoy a "clinical research" exemption under 35 U.S.C. 271(e)(1) for that infringement.  Both sides appealed various issues.

A CAFC majority opinion affirmed that Merck's infringing activity did not fall within the exemption of 271(e)(1), which allows research "solely for uses reasonably related to the development and submission of information" to the FDA.  The opinion explored the intent of the drafters of rule 271(e) on blocking research by others and concluded that congress desired for the "nature of the interference with the rights of the patent holder….(to be) de minimus."

Judge Newman dissented due to a belief that what the panel majority calls "discovery based research" should be subject to either a common law research exemption or an exemption under the safe harbor of 271(e)(1).  Newman complained that technology development generally would suffer without some kind of exception for the study of new patented ideas.

In recent years a conflict has deepened between the private rights of a patentee to prohibit practice of an invention and society's need to allow others to investigate and advance new technology, particularly in the biotechnology field, where the distinction between "research" and "commercialization" may be blurred.  Rather than face this larger issue, the CAFC panel majority merely reviewed the intent of the drafters of the 271(e)(1) clinical use exemption, as part of the court's mandate for interpreting statutory law.  Either an activist court, (in the form of an en banc CAFC or the Supreme Court), or Congress will have to examine the larger issue and clarify a route for scientists to carry out inventive acts that further technical development in the face of un-cooperative patent holders.

The Board of Education of the Board of Trustees of Florida State University et al. v. American Bioscience, Inc. et al.
Decided June 23, 2003
Judge Lourie with Judges Rader and Linn

*          A co-inventor of a combination claim must have a firm and definite idea of the    claimed combination as a whole

Florida (Florida State University) sued a former post doctoral scientist and American, his new company to amend inventorship of an application that they had filed regarding synthetic taxol (an anticancer drug) compounds.  The compounds related to the former employee's research at Florida.  Florida successfully convinced judge Roger Vinson to delete three inventors and add three new inventors during a bench trial.  The trial reviewed details of communications between researchers that led to the synthetic taxol discovery.  The amended inventorship gave employees from Florida inventorship rights and American appealed to the CAFC.

The CAFC ruled that the district court had improperly determined inventorship.  The CAFC corrected inventorship according to the principle that (citing Burroughs Wellcome from 1994) "[o]ne who simply provides the inventor with well-known principles or explains the state of the art without ever having 'a firm and definite idea' of the claimed combination as a whole does not qualify as a joint inventor."  The CAFC declared that the district court improperly held Yang to be a co-inventor.  In particular, Yang's suggestions for "choice of side chains" of a larger synthetic taxol compound did not make Yang a co-inventor because the issued patent did not claim the larger compound that Yang conceived and "Yang could not have contributed to the conception of the structure of even that (claimed) compound."  In other words, suggesting a component of a larger claimed combination did not make Yang a co-inventor. 

This case indicates that co-inventorship is not created merely by "teaching" something that is known by others in a field.  That is, a suggestion of an embellishment to another's idea may not always make the suggestor a co-inventor.  A patent practitioner might adopt this rule in inventorship determinations by inquiring whether a suggestion made by a co-worker to another was more than "teaching skills or general methods" to help the recipient subsequently synthesize a more complete conception as claimed.  According to this view, a contributor might even have to demonstrate an inventive step to acquire inventorship status.

Omega Engineering, Inc. v. Raytek Corporation et al.

Raytek Corporation v. Omega Engineering, Inc. and Newport Electronics, Inc.
Decided July 7, 2003
Judge Clevenger with Judges Michel and Schall

*          Prosecution disclaimer (effect of arguments made during prosecution) does not narrow claim interpretation when the alleged disavowal of claim scope is ambiguous

Omega sued Raytek at the U.S. District Court for the District of Connecticut for infringing patent claims to devices and methods that form an optic image outline ("energy zone") for measuring temperature from infrared light.  Judge Janet Hall construed means plus function claims as excluding laser beams directed inside the energy zone and granted summary judgment of non-infringement.  Omega appealed to the CAFC.

   The CAFC construed the claims more broadly and reversed the non-infringement finding.  The main issue was interpretation of ambiguous comments made by the patent applicant to overcome prior art during prosecution.  The applicant had distinguished over the art by "precluding appreciable heat from entering the energy zone and affecting the temperature."  The district court interpreted this to mean no laser light could enter the energy zone and found no infringement because the accused device and method employ at least some laser light inside the zone.  CAFC pointed out that "unless expressly compelled by the intrinsic evidence, courts must avoid the addition of a novel limitation" to construed claims and that if "the inventors' statements (are) amenable to multiple reasonable interpretations" then prosecution disclaimer does not operate, and the amendment or argument does not limit claim meaning.

The CAFC explained that comments made during prosecution must be "clear and unmistakable" before they can become a) argument based estoppel in a doctrine of equivalents analysis or b) prosecution disclaimer in a claim interpretation analysis.  A patent practitioner should emphasize the limits (narrowness) of any arguments made during prosecution, to restrict the effect of those arguments on claim construction and on the doctrine of equivalents during patent enforcement. 

Abbott Laboratories and Central Glass Company, Ltd. v. Baxter Pharmaceutical Products, Inc. and Baxter Healthcare Corp.
Decided July 3, 2003
Judge Rader with Judges Gajarsa and Dyk

*          Only a clear disavowal of subject matter divests claims of broader scope

            Abbott obtained a patent that claimed an anesthetic composition with a Lewis acid inhibitor "in an amount effective to prevent degradation."  Baxter then filed an Abbreviated New Drug Application (ANDA) with the FDA, asserting a paragraph IV certification that its proposed product does not infringe the product.  Baxter's product contained no more than 130 ppm water and the Abbott patent exemplified the use of 150 ppm water.  Abbott sued Baxter at the U.S. District Court for the Northern District of Illinois for infringing its patent claim.  Judge Ronald Guzman granted Baxter summery judgment of non-infringement because Abbott's Information Disclosure Statement disclosed that Abbott had sold preparations containing 131 ppm water prior to the filing date of Abbott's patent application.  The court reasoned that Abbott had surrendered the subject matter of the sale and thus interpreted the claims narrowly.  Abbott appealed to the CAFC. 

            The CAFC held that the district court misconstrued the claims and remanded.  The CAFC explained that "mere invocation of prior art does not necessitate limiting claim scope" and that "only a clear disavowal of subject matter divests claims of broader scope" such as "by redefining the term" or by "expressions of manifest exclusion or restriction."  In this case, the district court interpreted a concentration range narrowly "to maintain the validity of the .. patent" in view of the prior sale, but the CAFC held that a proper validity analysis should have been made.

            This case shows that a patent applicant successfully might use the vague term "effective amount" in its claims.  The CAFC pointed out that the district court would have to develop a record of what an "effective amount" means to a skilled artisan and should fully evaluate the teachings in the specification on this issue.  A patent practitioner should consider using such term along with a description of relevant factors in the specification, as this could lead to broad claims that require expert witness fact finding during patent enforcement.

Eli Lilly & Co., v. Board of Regents of the University of Washington
Decided July 3, 2002
Judge Gajarsa with Judges Michel and Lourie, Lourie dissenting

*          The PTO may refuse to declare an interference between a senior party having a             species claim and a junior party with a genus claim under its "two-way test"

Lilly filed a reissue patent application and asked the PTO to declare an interference between the reissue application and a later issued patent from UW.  The PTO used a "two way test" to determine that Lilly's and UW's patent documents "are not drawn to the same patentable invention."  For the two way test, a claim from each party must anticipate or render obvious the claim of the other and Lilly's narrower claim did not anticipate UW's genus claim under this test.  Lilly appealed to the CAFC.  

A majority of the panel affirmed because 37 C.F.R. section 1.601(n), which allows the PTO to initiate an interference "can reasonably be interpreted to require an election between either a one-way test or a two-way test …(and the PTO) reasonably opted for a two-way test to avoid subjecting broad patents for basic inventions to interferences, some of which would be unnecessary."

Judge Lourie dissented because "Rule 601(n) plainly describes a one-way test" and "the Board's action constitutes an abuse of discretion."  Lourie further argued that affirming the two way test in this instance "may well lead to a prolonged action in a district court unaccustomed to evaluating interference issues involving (complex technology), whereas reversal would result in the more experienced Patent Office determining the respective rights of the parties."

A patentee sometimes can attack a competitor's patent by reissuing its patent and asking for an interference.  This case confirms that the PTO may have considerable discretion to accommodate such desires. 

Invitrogen Corporation, v. Biocrest Manufacturing, L.P., et. Al.
Decided May 7, 2003
Judge Rader with Judges Bryson and Dyk

*          Claim language should be interpreted "in its proper scientific context"

 

            Invitrogen sued Biocrest at the U.S. District Court for the Western District of Texas for infringing Invitrogen's patent claims that recite a process for producing E. Coli "comprising" a first step of growing the bacteria at "18 deg. C. to 32 deg C.," followed by subsequent steps.  Judge Sam Sparks construed the claims as excluding growth of cells at higher temperatures prior to the first step, due to prosecution history wherein Invitrogen amended "less than 37 deg. C." to recite the lower temperature range.  Because Biocrest grows its cells at 37 degrees prior to the first step, the court granted summary judgment of non-infringement and both sides appealed to the Court of Appeals for the Federal Circuit ("Federal Circuit").

            The Federal Circuit construed the claims more broadly and vacated for three main reasons.  One, the term "comprising" in a method claim "allows for additional steps" such as a previous growth step at an unclaimed temperature.  Two, "the context of this scientific field illuminates the claim's meaning and reach."  The idea of growing a sample of E. Coli that has never experienced growth at 37 degrees is absurd because 37 degree growth of cultures obtained from 37 degree environments is routine.  The third reason is that "[t]he district court's construction would also effectively exclude the embodiment of (an example in the) patent."  The Federal Circuit noted that "[t]his court has held that construing a claim to exclude a preferred embodiment is rarely, if ever, correct, and would require highly persuasive evidentiary support."

            As technology becomes more complicated and much background knowledge of a technical field is omitted from a patent specification, courts need to consider more often the "proper scientific context" of a claim.  Hopefully, more district courts will utilize special masters and technical experts to accommodate this trend and get the claims right before appellate review.

Fleur T. Tehrani, Ph.D., P.E., v. Hamilton Medical, Inc. and Hamilton Medical, A.G.
Decided June 13, 2003
Judge Bryson with Judges Mayer and Newman

 

*          Means for claims that cover data processing may be limited to specific   equations described in the specification

            Fleur sued Hamilton at the U.S. District Court for the Central District of California for infringing patent claims to a respirator and method that controls breathing via a "means for processing data" of lung and breath factors.  Judge Gary Taylor granted Fleur summary judgment of infringement because the user of Hamilton's device indirectly provides the claimed input data by manipulating knobs and valves that reflect parameters such as carbon dioxide, and thus input information for a stored algorithm.  Hamilton appealed.  

            The Federal Circuit vacated and remanded because the district court failed to determine "the precise algorithm that is part of the recited (means for processing) structure" and thus could not rule on whether the accused algorithm is identical or equivalent to that claimed.  That is, the district court overlooked the "equations" or "underlying calculations" described in the patent specification, which constitute structure linked to the means for clause in the claims.   

            Means for claims that refer to an algorithm or microprocessor may be limited to specific algorithms or equations in the specification.  A patent drafter in these instances should include broad algorithms that can utilize a variety of inputs (such as unmeasured or estimated input) and also should include claims that lack means for clauses.

Enterprise Rent-A-Car Company v. Advantage Rent-A-Car, Inc.
Decided May 30, 2003
Judge Dyk with Judges Bryson and Gajarsa

*          The Trademark Amendments Act of 1999 allows oppositions to trademark       registrations on dilution grounds unless the registrant had first use

            This is the first Federal Circuit review of the Federal Trademark Dilution Act of 1995 ("FTDA"), which creates a federal cause of action for trademark dilution,  and of the Trademark Amendments Act of 1999, which requires the PTO Board to consider dilution as a grounds for opposition to a trademark registration.  Trademark applicant Advantage used the slogan "We'll Even Pick You Up" in its advertising and competitor Enterprise later used a related slogan "We'll Pick You Up."  However, Enterprise obtained a first registration at the PTO.  Advantage subsequently filed suit in the Western District of Texas and filed its own trademark registration, against which Enterprise lodged an opposition, alleging dilution under the FTDA.  The district court held against Enterprise, "because the slogan at issue is not sufficiently famous or distinctive to receive protection under the [FTDA]."  The PTO also dismissed Enterprise's opposition on the same grounds, arguing that the issue was settled by the court and that ""Unless (Enterprise) can establish that its mark was famous prior to (Advantage's) use …..it cannot prevail."  Enterprise appealed to the Federal Circuit.

            This Federal Circuit opinion reviews the law of concurrent use registrations and explains that the new anti-dilution statutes did not arise from common law, nor were "motivated by an interest in protecting consumers."  Rather, the new laws were passed "to protect famous trademarks from subsequent uses."  However, "any prior use, … bars a claim of dilution as a ground for opposition" under the new laws.  Furthermore, the statutes do not require "the defendant's prior use be substantial or cover a wide geographic area to defeat an injunction."  Thus, the PTO "Board correctly rejected Enterprise's opposition and registered the Advantage mark."

            Companies should consider both registering and using service marks such as advertising slogans as early as possible.  This case shows how early yet limited use of a mark is advantageous, even against others who later arguably make the trademark famous.  Being the first to register also is important, as a prior registrant obtains "nationwide registration, subject only to those areas where the senior (earlier unregistered) user can prove prior use."

Alan Waner, v. Ford Motor Company
Decided June 4, 2003
Judge Archer with Judges Newman and Michel, Newman dissenting

*          Absent trade secret status or a contract, state law may not provide a collateral set          of rights to protect an invention

            Waner invented truck fender liners that prevent an exterior paint job from cracking in response to rocks hitting the inside wheel well.  He sold his liners to a Ford dealer.  Waner then contacted a Ford employee for licensing, who "told Waner to get his patent work in order."  Waner filed a patent application and explained his product to another Ford manager, who assured Waner that he would present Waner's request at an upcoming meeting.  Later, the manager told Waner that the meeting had been postponed when it actually had taken place, and referred Waner to Ford's attorneys.  Ford subsequently installed tens of thousands of liners on its trucks and Waner sued Ford at the U.S. District court for the District of South Dakota for "usurpment of an idea/unjust enrichment and infringement" of his patent.  A jury found patent infringement and Judge Karen Schreier awarded Waner attorney's fees, while denying Ford's motion for judgment as a matter of law of non-infringement.  Both sides appealed to the Federal Circuit.

            The CAFC found that the district court erroneously construed the claims and found no infringement.  The CAFC also affirmed the district court's conclusion that "once Waner sold the fender liners on the market……Waner had no protectable property interest in his fender liner."  The court pointed out that because "Waner's invention was in the public domain prior to issuance of the patent, he is not protected by state law."  The award of attorney's fees likewise was reversed because "fees may be awarded only to the prevailing party."

            Newman, in a dissent, argued that Ford's poor business ethics should engender a finding of unjust enrichment, because Waner brought his invention to Ford's attention and Ford lied about a meeting, despite the fact that Waner's idea was not a secret.  This case shows how a properly prepared patent application with suitable claims may be the best protection for a small inventor that approaches a big company for commercialization of an invention that has been worked publicly.

In Re. California Innovations, Inc.
Decided May 22, 2003
Judge Rader with Judges Newman and Clevenger

*          The test for rejecting a deceptively misdescriptive trademark is no longer simple             distinctiveness but requires a higher standard of deceptiveness

            The U.S. PTO Trademark Trial and Appeal Board rejected California's trademark application for "CALIFORNIA INNOVATIONS" after concluding that the proposed mark was "primarily geographically deceptively misdescriptive.  California appealed to the CAFC.

            The CAFC vacated and remanded because "the Board applied an outdated standard."  The CAFC explained that "[i]n the pre-NAFTA era, the focus on distinctiveness overshadowed the deceptiveness aspect (for this rejection)…(and thus) the PTO used a low standard to reject marks for geographically deceptive misdescriptiveness …., which was relatively simple to meet."  However, the NAFTA "treaty shifts the emphasis for geographically descriptive marks to prevention of any public deception."

            In the past, this kind of trademark application temporarily might be denied registration on the principal register.  Upon a showing of distinctiveness, the mark could acquire a place on the principal register, and thus a rejection under the pre GATT rule was only temporary until the applicant could prove that the mark had become distinctive.  The NAFTA implementing legislation, however, shifted the emphasis for geographically descriptive marks to the prevention of any public deception.  Marks that are deemed geographically deceptively misdescriptive now are denied registration permanently, as are other deceptive marks under 1052(a).  This emphasis of fraud on the consumer prompts the higher showing of deceptiveness in analyzing whether a mark is geographically misdescriptive.

Storage Technology Corporation v. Cisco Systems, Inc. et al.
Decided May 13, 2003
Judge Plager with Judges Schall and Gajarsa

*          A term in a claim preamble that serves as a convenient label for the invention      does not limit claim scope

Storage sued Cisco at the U.S. District Court for the Western District of Wisconsin for infringing claims to a method that requires "caching policy identification information" (temporary storing of internet transmission priority ID).  The case was transferred to the Northern District of California where Judge Susan Illston granted Cisco summary judgment of non-infringment because the accused  method does not cache "policy" information itself (such as how to transmit a packet of information on the internet) but only caches "identification" of the policy.  The court limited the claims as additionally requiring policy information caches because the claim preambles recite "policy caching" and because Storage argued during prosecution that both types of caches are used in the method.  Storage appealed to the Federal Circuit.

The CAFC held that the claims only require caching of policy identification, and that the preamble "policy caching" phrase "does not limit claim scope when it merely gives a descriptive name to the invention" (citing IMS Tech. 2000).  Further, Storage's "inaccurate statement (during patent application prosecution) cannot override the claim language itself," because a "general statement introducing new limitations does not limit scope of claims not amended to include the new limitations" (referring to Rambus, 2003).  Based on this broader claim interpretation, the CAFC vacated the non-infringement judgment.

An interesting teaching of this case is that a narrowing statement made during patent prosecution may not limit claim interpretation if the applicant can later argue that the statement was in error and that the claim was not amended according to the statement. 

Anton/Bauer, Inc., and Alex Desorbo v. PAG, Ltd.
Decided May 21, 2003
Judge Schall with Judges Mayer and Dyk

*          Sale of a part for a patented combination may preclude direct infringement         under    the exhaustion doctrine

Anton won a preliminary injunction at the U.S. District Court for the District of Connecticut, enjoining PAG from selling a battery pack that includes a male plate battery connector (that mates with a female connector of a camera) described in Anton's patent.  Anton's patent claims recite a combination of the male plate with a female coupling plate.  Judge Christopher Droney refused PAG's implied license and first sale doctrine arguments based on Anton's sales of the male coupling plate to PAG for the sole use in the combination as claimed.  PAG appealed to the CAFC.

The CAFC reversed because Anton's "unrestricted sale of its female plate, useful only in performing the claimed combination, plainly indicates that the grant of a license to practice the invention should be inferred."  The CAFC pointed out that the finding of an implied license does not "obviate the applicability of contributory infringement in every case" but "merely limits a patentee's ability to assert contributory infringement" when the patentee has sold part of a claimed combination.  The court declined to say whether a minimal portion of a claimed invention must be sold to infer a license grant but stated that it would address this issue "another day."

The CAFC pointed out that Anton "could have, if novel, claimed its female plate and male plate individually …in order to improve the protection of its invention" and further "had the option of selling its female and male plates together as the patented combination."  A patent practitioner must be careful to visualize a final commercial product when drafting claims that may cover parts sold separately, to avoid this problem.

Dayco Products, Inc. v. Total Containment, Inc.
Decided May 23, 2003
Judge Dyk with Judges Mayer and Michel

*          A showing of intent to deceive, and not merely intent to withhold a material        reference may be necessary to prove inequitable conduct

Dayco sued Total for infringing patent claims at the U.S. District Court for the Western District of Missouri.  Senior Judge Scott Wright granted Total summary judgment of unenforceability due to inequitable conduct.  Inequitable conduct was found because Dayco's attorney did not inform a first examiner a) that a similar application from the same line of cases was being examined by a second examiner, b) of a prior art reference cited by the second examiner, and c) of a rejection against very similar claims by the second examiner.  Dayco appealed to the CAFC. 

This is the first case of inequitable conduct for a patent that was prosecuted after the 1992 change in rule 1.56, which now defines materiality more narrowly as information that establishes "a prima facie case of unpatentability" or "refutes, or is inconsistent with a position the applicant takes."  The CAFC deemed that Total sufficiently showed evidence of materiality for a summary judgment from acts a) and c) under both the new and the old rules.  However, act b), (failure to reveal the cited reference to the first examiner) was not material without further analysis because "the mere fact" that another examiner found a new "reference to be material is informative, but not dispositive" in the absence of "factual analysis" with other references.  Most importantly, the CAFC disagreed with the district court's finding that the applicant's withholding of a reference cited by another examiner for a similar set of claims establishes intent.  The prosecuting attorney provided a reason for withholding the reference that "is not on its fact implausible."  That is, the CAFC indicated that a specific showing of intent to deceive and not just a showing of intent to withhold may be required to establish inequitable conduct even when the withheld information is extremely material. 

In its review of "new" rule 56, the CAFC declared that "we have not decided whether the standard for materiality in inequitable conduct cases is governed by equitable principles or by the Patent Office's rules."  This lack of guidance is very unfortunate for patent practitioners who have had to obey the new rules for more than 10 years without knowing how the courts will use the rules for judging inequitable conduct. 

Silent Drive, Inc. v. Strong Industries, Inc. and Brooks Strong
Decided April 16, 2003
Judge Dyk with Judges Linn and Prost

*          An infringement letter uniquely aimed at the forum state and threatening injury     there establishes personal jurisdiction for a declaratory judgment action

            Silent collaborated with F.S., a Texas company to create a trailer axle.  Strong subsequently sued F.S. at a Texas state court for misappropriation of trade secrets to make the axle.  Although Silent was not a party to the lawsuit, the state court granted Strong an injunction enjoining Silent from practicing the axle technology.  Strong then sent warning letters to Silent informing Silent of the injunction (with criminal penalties) and also sent copies to Silent's customers outside of Iowa.  Silent sued Strong in the U.S. District Court for the Northern District of Iowa.  Judge Mark Bennett concluded that Strong's letters to Silent did not create confer personal jurisdiction because the letters "were [not] uniquely or expressly aimed at Iowa" and "the brunt of the harm was [not] suffered in Iowa…."  Silent appealed to the Federal Circuit.

            The Federal Circuit pointed out that this case differs from the usual sending of a warning letter.  Normally, a warning letter does not establish personal jurisdiction because of "policy considerations unique to the patent context."  However, "[n]o such countervailing policy exists with regard to state court injunctions, which are designed to operate primarily in the forum."  Accordingly, personal jurisdiction existed and the Federal Circuit reversed. 

            A warning letter that includes a credible threat of harm specific to a forum (such as a possible criminal conviction in that forum) may establish personal jurisdiction there.

Abbott Laboratories and Fournier Industrie et Sante et al. v. Novopharm Limited
Decided March 20, 2003

Judge Lourie with Judges Michel and Bryson

*          Defining claim terms in a patent specification instead of relying on dictionary       definitions of common words may lead to narrower claims

            Abbott, an exclusive licensee of a drug formulation patent that claims a "co-micronized mixture of particles of fenofibrate and a solid surfactant," markets fenofibrate capsules under a New Drug Application approved by the FDA.  Novopharm, a generic maker, filed an Abbreviated New Drug Application for a modified formulation and included an assertion that Novopharm's particular formulation would not infringe Abbott's patent.  Abbott then sued Novopharm at the U.S. District Court for the Northern District of Illinois.  Judge John Darrah interpreted the claims very narrowly and granted Novopharm summary judgment of no infringement.  The court noted that the specification defined "co-micronization of fenofibrate and a solid surfactant" as "micronization of an intimate mixture of fenofibrate and a solid surfactant" and the "claims could not be construed to include [mixtures obtained by adding surfactant to fenobrate, or separately miconizing the ingredients]."  Abbott appealed to the Federal Circuit.

            The Federal Circuit affirmed because the specification provided a strict definition of the claim phrase.  The court explained that "[h]ad that term not been explicitly defined in the '726 patent specification, we might well agree with the appellants that that term could simply mean 'micronized with or together' and would not necessarily exclude the presence of ingredients not specifically recited in the claim." 

            The Federal Circuit has stated often that multiple definitions from a dictionary should be used to initially construe patent claim terms.  Such broad (multiple) meanings for each word become limited to fewer definitions when one or more definitions are incompatible with statements made in the specification or during prosecution.  A patent applicant should consider relying on multiple dictionary definitions of common words instead of providing a specific definition, as the patentee did in this case. 

Cooper Cameron Corporation v. Kvaerner Oilfield Products, Inc.
Decided May 14, 2003

Judge Lourie with Judges Mayer and Schall

*          An R&D project report may be prior art if available to interested parties

*          A drawing may supply written description when a specification fails to describe an embodiment in words

            Cooper sued Kvaerner at the U.S. District Court for the Southern District of Texas for infringing claims to subsea wellheads having horizontal arrangements that allow maintenance via a "workover port."  Judge Nancy Atlas granted Kvaerner partial summary judgment of invalidity for failure to meet the written discription requirement because "the original disclosure only referred to the workover port as being located between [two plugs] and not other locations as broadly claimed."  The court also held that the inventor's written reports during wellhead development did not anticipate under 102 because the reports "were not generally available or were not prior art" as proper "printed publications."  Both sides appealed to the Federal Circuit.

            The Federal Circuit vacated the summary judgment of invalidity for failure to meet the written description requirement because the specification contained a drawing that comported with the broad claim language.  The court, citing Vas-Cath, noted that "under proper circumstances, drawings alone may provide a written description of an invention."  The court also vacated the non anticipation of the technical reports because the joint venture "released" the "reports to its three members and six participants," who "distributed to interested parties, including outside contractors."

            This case has two lessons.  One, providing figures of a mechanical invention can potentiate broad claims that are not supported by the text as filed.  Two, when studying an invention via a larger joint venture group, it is very important to restrict the group's reports.  The reports in this case had a confidentiality notice, but still had been available to contractors.

Eaton Corporation v. Rockwell International Corporation et al.

Decided March 27, 2003

Judge Prost with Judges Newman and Dyk

*          Long claim preambles that recite structure may limit claim scope

            Eaton won a final jury verdict of infringement and a permanent injunction against Rockwell at the U.S. District Court for the District of Delaware for infringing patent claims to a truck shifting method.  The infringed independent claim recited a two step method but had a preamble of more than 250 words that included several structures.  Judge Joseph Farnan, Jr. construed the claim preamble as merely providing a "reference point" that does not limit the claim structurally.  Rockwell appealed to the Federal Circuit.

            The Federal Circuit's claim interpretation limited the claims to the specific structures recited in the preamble because the recited method "requires the manipulation and operation of structure that is identified and described by the preamble."  Accordingly, the Federal Circuit reversed the infringement judgment, vacated the damages award and vacated the permanent injunction. 

            The method steps in the disputed claims recited the terms "the" and "said" to refer to components mentioned in the preamble ("during the gear shift ratio" and "retaining said vehicle master clutch")  Accordingly, the claim body following the preamble "refers to structure that is identified and defined in the preamble."  A patent applicant that desires to avoid limiting a claim to its preamble should not refer to the preamble this way. 

Northrop Grumman Corporation v. Intel Corporation et al.

Decided March 31, 2003

Judge Bryson with Judges Mayer and Friedman

*          A means plus function claim is not limited by structural elements that are             unnecessary to perform the claimed function

            Northrop sued Intel at the U.S. District Court for the Eastern District of Texas for infringing claims to an improved multiplex data bus interface having "means for defining a functional state of the bus interface unit" and "means for monitoring a plurality of logical signals."  A special master interpreted the means plus function claims as requiring structure such as command/response signals that were not present in the accused infringing protocols, and the court found no infringement.  Northrup appealed to the Federal Circuit, arguing that the claims were interpreted too narrowly.

            The Federal Circuit reversed because the district court had included unnecessary input signals and control signals as necessary to carry out the recited functions.  The Federal Circuit pointed out that signals that are monitored or generated by the necessary structure "cannot be part of the structure that does the monitoring."  The other means for structures also were defined too broadly.  For one clause, only a set of flip flop circuit elements was deemed necessary to implement the function rather than a larger group.  

            Courts often make mistakes when construing means plus function claims.  To facilitate uncertainty during litigation, a patent applicant may consider adding one or two means plus function claims to an application that includes primarily other types of claims.  It may not be wise however, to rely on means plus function claims exclusively in a patent. 

RF Delaware, Inc., v. Pacific Keystone Technologies, Inc. et al.

Decided April 21, 2003

Judge Michel with Judges Rader and Schall

*          Dependent claim terms are not to be read into an independent claim

            RF sued Pacific at the U.S. District Court for the Northern District of Alabama for infringing claims to particulate filters used for clarifying water, and for methods of washing the filters.  Judge Robert Propst granted Pacific summary judgment of non-infringement after construing the claims "to require a multi-layered upflow filter" despite the fact that such multi-layers are recited in dependent claims only, and despite the fact that RF argued different claim meaning at an earlier litigation in Virginia.  The court also was persuaded that Pacific merely was practicing the prior art.  RF appealed to the Federal Circuit.

            The Federal Circuit held that the district court improperly read dependent claim elements into the independent claims and reversed.  The Federal Circuit also found that the district court "improperly adoped Pacific's practicing prior art argument" as an infringement defense, noting that "Pacific needs to establish that its method is in the prior art." 

            This case followed an earlier litigation between RF and another infringer in Virginia, wherein RF argued a different claim interpretation.  Pacific argued that RF is bound by RF's claim construction arguments from the earlier litigation under the doctrine of collateral estoppel.  However, the standard for judicial finality was not satisfied because the parties had settled their case.  The Federal Circuit further found that RF was not judicially estopped by its agreement with the Virginia court's claim interpretation, and was free to argue a new interpretation in Alabama.  This is because RF "did not succeed in urging its [claim interpretation] position."  Deciding when and how to settle a case in a manner to prevent this kind of estoppel is an important strategy when faced with multiple suits.

Rhone-Poulenc Rorer et al. v. Bristol-Myers Squibb Company
Decided April 15, 2003
Judge Prost with Judges Clevenger and Schall

*          A research publication by an inventor after a priority date may be prior art,        particularly if the inventor contradicts statements made in a patent application

            Rhone sued Bristol at the U.S. District Court for the Southern District of New York for infringing patent claims to a method of synthesizing taxol, an anticancer compound.  Judge Robert P. Patterson Jr. held that the patent was unenforceable because of inequitable conduct at the U.S. PTO by Rhone.  Rhone appealed to the Federal Circuit.

            The Federal Circuit affirmed the inequitable conduct finding because the patent applicant failed to submit and have initialed by the examiner, a post filing publication by the inventor that contradicted statements in the patent application.  This case is unusual because the inventor's publication was after the application filing date and became "material" to prosecution under 37 CFC 1.56 based on enablement.  Evidence of enablement from publications or experiments made after the priority date often is used during prosecution at the PTO to prove enablement, particularly for an aggressive applicant that files a disclosure that is at least partly prophetic.  This case affirms that an applicant must submit such later generated information if material under 37 CFR 1.56 on enablement grounds.

            This case teaches several things that an applicant should not do.  One, never put negative statements about the patent application in correspondence.  The principal patent practitioner was a French patent agent who stated in writing to his U.S. associate that "it is difficult to select an appropriate protecting group without undue experimentation."  This comment was used during litigation to help prove inequitable conduct.  Two, a patent applicant should insist that the patent application examiner initialize all found references from the examiner's own search.   The examiner in this case had found the inventor's later research article, but never initialized those entries on form PTO-892.  If the examiner had initialize this search entry, inequitable conduct likely would have been avoided.  Three, the U.S. associate relied on the judgment of the overseas associate regarding a publication, but that overseas associate apparently misapprehended the requirements of U.S. law. 

Lockheed Martin Corporation v. Space Systems/Loral, Inc.

Decided March 24, 2003
Judge Gajarsa with Judges Schall and Friedman

*     There is no doctrine of equivalents analysis for a claim that fails the all elements rule

            This doctrine of equivalents case was remanded from the Supreme Court to the Court of Appeals for the Federal Circuit ("CAFC") after the Festo decision.  Lockheed had sued Space at the District Court for the Northern District of California for infringing satellite orbital correction method claims.  The district court granted Space summary judgment of no infringement, both literally and under the doctrine of equivalents.  The CAFC, in a first decision, affirmed no infringement under the doctrine of equivalents, in accordance with its rule prior to the Supreme Court's Festo decision.  The present remanded case constitutes the Federal Circuit's second review of the district court decision, which held that Space's satellites do not infringe Lockheed's means-for claims.

            The Federal Circuit held in this second review that "the district court erred by improperly broadening the scope of the claimed function by 'reading out' the limitations contained in the claim language."  The claim language includes "rotating" a gyro within the satellite "sinusoidally over the orbit."  This language follows a means for clause, and therefore was limited to a corresponding structure disclosed in the specification, which controlled the rotation by "a predetermined rate schedule."  The Federal Circuit pointed out that Space's accused method "does not utilize a predetermined rate schedule" because it uses "real-time error" sensing.  Accordingly, there could be no infringement under the doctrine of equivalents because to find otherwise "would entirely vitiate a particular claim[ed] element."

            This decision emphasizes that the all elements rule may be just as important as prosecution history estoppel in blocking further analysis of claim infringement under the doctrine of equivalents.  The court explained that a "court must first determine whether the scope of the doctrine of equivalents, as applied to the claim limitation … has been narrowed by" either rule before determining infringement under the doctrine of equivalents. 

Allergan, Inc. and Allergan Sales, Inc., v. Alcon Laboratories, Inc., et al.

Decided March 28, 2003

Judge Schall with Judges Clevenger and Linn, Clevenger and Linn concur separately

*          A pioneer drug maker may sue a generic maker under 35 USC 271(e)2 for induced      infringement of method claims in the absence of direct infringement

            The facts of this case are similar to that of the Warner Lambert case from January.  As in that case, a drug maker (Allergan) asserted claims to a method of using a drug agaimst a generic maker (Alcon) that had filed an Abbreviated New Drug Application (ANDA) at the FDA for a different use of the drug.  Judge David Carter of the U.S. District Court for the Central District of California granted Alcon summary judgment of non-infringement.  The court explained that the filing of an ANDA, without actual infringement, does not provide a basis for a method of use patent holder to sue an ANDA applicant for induced infringement because "the question of inducing infringement would be entirely too speculative."  Allergan appealed to the Federal Circuit.

            The Federal Circuit disagreed with the district court that a patentee could not sue a generic maker for induced infringement upon the generic maker's mere filing of an ANDA.  The Federal Circuit pointed out that "a method of use patent holder could potentially bring an action against a generic drug manufacturer for induced infringement ….before a single (instance of direct infringement by the writing of a) prescription."  On the other hand, the January, 2003 Warner-Lambert case established that "a method of use (pioneer drug) holder may not sue an (generic maker) ANDA applicant  ….if the ANDA applicant is not seeking FDA approval for the use claimed in the patent."  Accordingly, the Federal Circuit affirmed the district court decision for this other reason.  Schall and Clevenger concurred in a separate opinion.  They argued that, although the Federal Circuit has to follow its (Warner-Lambert) precedent, Congress did not intend to limit a patentee's ability to sue under the Wax Hatchman rules based on different methods of use for a pharmaceutical.  Judge Linn also concurred separately and complained that different methods of use for a drug should not confine the ability to sue.  Furthermore, he argued that the Warner-Lambert case holding overstepped the function of courts, which should not have "allowed its policy choices and its evaluation of the legislative history - reasonable as they may be-to override the terms of the statute chosen by congress."

            This split court decision on interpretation of the Hatch-Waxman rules reflects the need for legislative action to amend the rules. 

 Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc.

Decided April 11, 2003

Judge Linn with Judges Schall and Bryson

*          The written description always must be examined to interpret claims

            Brookhill sued Intuitive at the U.S. District Court for the Southern District of New York for infringing claims to a remote control surgical system that uses a radio link "to a remote location beyond a range of direct manual contact."  Judge Naomi Buchwald interpreted the claim term "remote location" to mean a location outside of the operating room.  Based on this definition, the court granted summary judgment in favor of Intuitive (which used a system inside the operating room) and dismissed the complaint.  Brookhill appealed to the CAFC.

            The CAFC concluded that the district court construed the term "remote location" too narrowly and reversed.  The court emphasized that "[t]he written description must be examined in every case, because it is relevant not only to aid in the claim construction analysis, but also to determine if the presumption of ordinary and customary meaning is rebutted."  This opinion referred to the significance of "surrounding text" of the claim to interpret a term and explained that "consulting dictionary definitions is simply a first step."  That is, "where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and towards the proper meanings."

            This case confirms that broad, alternative dictionary definitions of claim terms are to be used for claim interpretation and may govern the claim meaning unless "the written description and prosecution history fail to express a manifest exclusion or restriction limiting the claim term."  Careful patent drafting according to this principle may be crucial to winning a litigation contest.

Riverwood International Corporation v. R.A. Jones & Co., Inc.
Decided March 31, 2003
Judge Linn with Judges Clevenger and Schall

*          Filing of an information disclosure statement is not an admission that a cited        reference is prior art

            Riverwood's inventor obtained a patent after filing an information disclosure statement ("IDS") that cited a prior patent by the inventor as "prior art."  The named inventors of the prior patent overlapped the named inventors of the later Riverwood patent.  During infringement litigation against Jones at the U.S. District Court for the Northern District of Georgia, Jones convinced Judge Beverly Martin that Riverwood's information disclosure statement was an admission that the prior patent was prior art.  The court found invalidity in view of the prior patent.  Riverwood appealed to the CAFC and Jones cross-appealed.

            The CAFC vacated the prior art and invalidity holdings.  The CAFC pointed out that an IDS "shall not be construed to be an admission" according to 37 CFR 1.97(h).  Furthermore, the doctrine that regular admissions "by an applicant during prosecution identifying certain matter …. as 'prior art' is an admission that the matter is prior art" does not apply "when the subject matter at issue is the inventor's own work."  Instead, the CAFC remanded "for a determination of whether the portions of the (cited) patent relied on as prior art (and the asserted claims) represent the work of a common inventive entity."

            Despite the unfortunate conclusory language sometimes used in an information disclosure statement, such statements are not admissions of prior art.  Another interesting issue was the invalidity challenge based on obviousness and anticipation over the inventor's earlier work.  The CAFC remanded for the district court to determine the "evidentiary issue of who invented the subject matter disclosed" to support the rejection, and if need be to "order correction" of inventorship of the earlier patent.

Hoffman-La Roche, Inc., v. Promega Corporation

Decided March 31, 2003

Judge Bryson with Judges Newman and Archer, Newman dissenting

*          Use of the past tense for a prophetic result in a patent application may pose an   inequitable conduct problem if relied on to obtain a patent

            Hoffman sued Promega at the U.S. District Court for the Northern District of California for alleged infringement of Hoffman's patent claims to an enzyme used for polymerase chain reaction.  An issue was whether actions of the inventors to overcome prior art rose to the level of inequitable conduct, and thereby make the patent unenforceable.  The inventors had argued that a prior art enzyme publication asserted by a patent examiner showed a different molecular weight enzyme having at least ten times less purity than the claimed enzyme.  The inventors' argument relied on data from an example in their specification.  This example used the past tense more than 75 times, but contained a statement of very high enzyme purity in the present tense.  During litigation, different steps of the stated purification procedure were found to have been carried out independently of each other, the enzyme had not been obtained in the stated purity, and the stated purification value was prophetic.  Judge Vaughn Walker found that these affirmative misrepresentations were made knowingly and for the purpose of overcoming the prior reference.  The court held summary judgment that the patent was unenforceable due to inequitable conduct.  Hoffman appealed to the CAFC.

            A majority opinion of the CAFC found that the district court did not clearly err in finding the intent element of inequitable conduct for the data misrepresentation, because the inventors knowingly had made misrepresentations "to persuade the examiner to issue a patent" despite their "good faith belief in the novelty of their invention."  The CAFC found that the materiality element of inequitable conduct also was met for some of the misrepresentations.  The CAFC pointed out, however, that "an important step in the judicial resolution of inequitable conduct claims" is to determine if the "misrepresentations or omissions in question are sufficiently serious….to warrant the severe sanction of holding the patent unenforceable."  The district court failed to resolve this latter issue.  Partly for this reason, the CAFC vacated the order of unenforceability.  Judge Newman in a dissent complained of "[l]itigation-induced assaults on the conduct of science and scientists, by aggressive advocates intent on destruction of reputation and property for private gain."  In particular, Judge Newman took issue with the holding that "because the example was not written entirely in the present tense and identified as 'prophetic,' this establishes, without more, both material misrepresentation and deceptive intent."

            A theme in this inequitable conduct case was that only a record of affirmative misrepresentations of data supported intent and materiality to deceive an examiner.  The affirmative misrepresentation of data that overcomes a prior art rejection likely sets this case apart from instances where negligence or omissions during patent prosecution risk an inequitable conduct finding.  The majority opinion emphasized in this context that "affirmative misrepresentations by the patentee, in contrast to misleading omissions, are more likely to be regarded as material."

Apex Inc.v. Raritan Computer, Inc.
Decided April 2, 2003

Judge Gajarsa with Judges Newman and Rader

*          Adjectives in a claim that qualify a functional claim term help avoid         narrow             interpretation as a means plus function claim

            Apex sued Raritan at the U.S. District Court for the Southern District of New York for infringing patent claims to programmable computer switchers.  Judge Milton Pollack held that claim terms such as "circuit" are functional and require matching structure in the specification under 35 USC 112 paragraph 6 as means plus function claims.  The court found non-infringement based on this narrow interpretation.  Apex appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC vacated and remanded because a dictionary definition of "the term 'circuit,' by itself connotes some structure."  Furthermore, "every use of the term in the asserted claims includes additional adjectival qualifications further identifying sufficient structure to perform the claimed function."

            A patent applicant should consider the possibility that a court may construe a patent claim as a means plus function claim.  Qualifying adjectives as well as contextual use of the claim language in the specification and prosecution history may help a court find that a claim recites enough structure to carry out a function.

The Regents of the University of New Mexico v. Galen D. Knight
and Terence J. Scallen
Decided February 28, 2003
Judge Lourie with Judges Newman and Schall

 

*          A structural formula in a patent application may be corrected if the added matter is         an inherent and more accurate description of the subject matter

*          A state that files a patent law suit waives Eleventh Amendment immunity to all    counterclaims arising from the same disputed transaction

            Inventors Knight and Scallen filed patent applications to chemical compounds and executed powers of attorney on behalf of the University while working in cancer research.  Later, Inventors refused to assign continuation in part applications to the University.  The University sued Inventors at the U.S. District Court for the District of New Mexico for the assignments.  Judge John Conway granted the University summary judgment that Inventors breached their obligation to assign University and dismissed Inventor's counterclaim for damages.  The judge held that the University (a state entity) is not subject to the Inventor's damages counterclaim under the Eleventh Amendment, which prevents citizens from suing a state without state permission.  This is because the University did not enter the court for damages, but only had asked for a declaration of ownership.  Inventors appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC disagreed with the application of Eleventh Amendment immunity to the University.  The CAFC declared that allowing a state to enter court for one type of claim while avoiding another type of counterclaim would lead to "seriously unfair results."  Thus, the court established that "a state that voluntarily appears in federal court has waived its (11th amendment) immunity for all compulsory counterclaims" and "in particular, counterclaims for royalties." 

            An interesting issue in this case was that chemical structures in the CIP applications were incorrect and the PTO accepted correction to new structures after a consultant found that the original structures were incorrect.  The Federal Circuit accepted the correction, which was carried out against the inventors' wishes, because "a chemical structure is simply a means of describing a compound; it is not the invention itself."  The application had provided details of synthesis that led to the different structure, allowing correction.

Darrel A. Mazzari and Michael T. Sheedy, v. James E. Rogan, Director PTO
Decided March 17, 2003
Judge Mayer with Judges Newman and Bryson

*          An unsuccessful  patent applicant may present new evidence and arguments in an           appeal to the U.S. District Court for the District of Columbia

In this case an unsuccessful patent applicant appealed his loss to the U.S. District Court for the District of Columbia, which accepts actions against the PTO commissioner under 35 U.S.C. 145.  Both the PTO and the applicant took advantage of their right to introduce new evidence through this route of review.  The PTO presented new evidence of anticipation and Mazzari presented expert witness testimony.  Judge Emmet Sullivan granted the PTO summary judgment that Mazzari's claims are unpatentable.  Mazzari appealed his loss to the CAFC.

The CAFC affirmed the district court's summary judgment, partly due to the PTO's new evidence of prior art and cross examination evidence, wherein Mazzari's expert "admitted that he was not one of ordinary skill in the art" and had not based his declaration on a relevant device.    

This is a strange case wherein the lawyer who represented the patent applicant argued that a prior art was not valid because it was in German.  The attorney also failed to follow instructions of the district court.  Instead, the lawyer "filed numerous confusing documents" and in response, the district court "referred him to appropriate bar disciplinary authorities."

Duro-last, Inc., v. Custom Seal, Inc.
Decided February 28, 2003
Judge Plager with Judges Michel and Lourie

*          Obviousness arguments for a JMOL motion must be sufficiently specific

This is a procedural case pertaining to the instance wherein a party asks a court to overturn a jury verdict, with a motion for judgment as a matter of law ("JMOL").  Duro-Last filed a JMOL motion in a patent lawsuit against Custom at the U.S. District Court for the Eastern District of Michigan as required under the rules, prior to jury deliberation.  However, that JMOL motion did not include arguments of patent validity.  After the jury found Duro-last's patents invalid for obviousness, Duro-Last renewed its JMOL motion.  Judge Robert Cleland accepted that post-trial motion, thus overturning the jury's finding.  Duro-last appealed to the CAFC.

The CAFC reversed the judge's JMOL verdict and reinstated the jury verdict of invalidity.  The CAFC explained that the procedural requirement of arguing an issue "with enough specificity" in a JMOL motion before submission of the case to a jury allows "the opposing party an opportunity to cure the defects in proof."  Here, however, the defendant did not have an opportunity to cure the alleged defect before jury deliberation.  This is because the plaintiff's earlier JMOL motion had omitted arguments and sufficient facts for contesting an obviousness finding.  The CAFC declared that this procedural point is a federal circuit law issue, and not law of the regional circuit because the matter "pertains uniquely to patent law."

Motion practice is very important in litigation.  Convincing a judge to reverse a jury verdict due to insufficient evidence is a powerful tactic that requires careful adherence to the procedural rules.

Lacks Industries, Inc., v. McKechnie Vehicle Components USA, Inc.
 (doing business as Thompson International et al.)
Decided March 13, 2003
Judge Michel with judges Newman and Clevenger

*          An anticipating offer for sale under 102(b) requires a formal offer under contract            law principles

Lacks sued McKechnie for infringing method claims for providing decorative wheel covers at the U.S. District Court for the Eastern District of Michigan.  Judge John Feikens granted McKechnie summary judgment, including an invalidity holding under 35 U.S.C. 102.  The district court found that Lacks had "vigorously solicited wheel manufacturers ….to specify and purchase wheels (made by the patented method)" more than one year before filing the patent application.  The parties appealed various issues to the CAFC.

A CAFC majority decision vacated the invalidity finding because the district court, "explicitly relied on a standard requiring less than 'a formal offer under contract law principles.'"  Upon remanding, the majority opinion suggested that the district court "may need to take additional evidence on the practice in the industry to determine" if those precommercial activities "rise to an offer for sale under the UCC."

A main issue in this case was how to determine whether "precommercial activities" rise to the level of a formal offer, in view of the different purchasing customs found in the automobile industry.  In a partial dissent, Judge Newman complained that the majority opinion, which suggested that the district court take "additional evidence on the practice in the industry," constitutes a "regression toward the imprecision of the discredited "totality of the circumstances" standard that the Supreme Court rejected in Pfaff.  Judge Newman declared a preference for "objective application of contract law" over "indulgence based on disputed local custom" to determine the existence of a formal offer.  Judge Clevenger also dissented in part due to a different interpretation of the claims, and whether the accused devices met the limitations of those claims.

This case was complex, partly because of disputed claim claims that recite how a "decorative layer readily blends" with a "lip" to "provide a visual impression" and is "substantially flush" and thereby "appears to constitute an integral portion" of a wheel.  It is hard to clarify a "visual impression" claim during litigation.

In Re. Richard A. Berg, Paul D. Toman, and Donald G. Wallace
Decided February 20, 2003
Judge Bryson with Judges Plager and Prost

*          Motivation to combine references may arise from an ordinary skilled artisan's     recognition of benefits from the combination

The US PTO rejected Berg's patent claims that recite collagen genes and other DNA sequences useful for processing the encoded collagen, based on obviousness.  After an unsuccessful appeal to the Board of Patent Appeals and Interferences Berg appealed to the CAFC.

The CAFC affirmed the obviousness rejection of Berg's gene claims.  The court found that motivation to combine different references arose from the ability of a skilled artisan to appreciate the benefits of combining DNA sequences from different sources.  The court agreed with the PTO that the combination of genetic components "provides benefits in post-translational processing of the procollagen peptide, which a person of ordinary skill in the art would have been motivated to preserve."

The holding of this case could make it harder to succeed against an obviousness rejections in some instances.  To counter this problem, a patent drafter might include observations of how a particular combination of claim elements would not be expected to provide an observed beneficial result.

Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corporation
and Schering Corporation
Decided February 21, 2003
Judge Clevenger with Judges Mayer and Rader

*          A method claim that recites a virus strain is infringed by a method using a           different strain when the genetic differences are not linked to the claimed method

Boehringer sued Schering at the U.S. District Court for the District of New Jersey for infringing Boehringer's method claims to the culturing of a swine virus strain "VR2332" until a "cytopathic effect is observed."  Judge Harold Ackerman construed the claims narrowly (the accused process used a different virus for example) and found no literal infringement.  A jury, however, found infringement under the doctrine of equivalents.  Both sides appealed.

The CAFC affirmed.  The CAFC agreed that the term "VR2332" limited the claim to a deposited strain with that name.  The accused strain was not a pathogenic virus and differed genetically from the claimed strain in significant ways.  However, these differences did not relate to other claim elements, and the CAFC upheld the jury decision of equivalence.  A second equivalence, to the claim term "until cytopathic effect is observed" was found in the infringing method because Schering incubates its virus a constant length of time to confirm viral growth, which evinces a cytopathic (cell-damaging) effect.

Boehringer convinced the jury that the accused virus is equivalent to Boehringer's deposited strain and won under the doctrine of equivalents.  However, literal infringement of this claim might have been more of a close issue if the application had been written differently.  In finding the accused virus different from the claimed virus, the CAFC pointed out that Boehringer did not state that its virus "was a 'generic' or 'prototype' virus, nor did Boehringer assert that viruses related to but not identical to the isolated strain were within the scope of the invention.  These choices must be held against it."

Pandrol USA, LP and Pandrol Limited, v. Airboss Railway Products, Inc. et al.
Decided February 21, 2003
Judge Dyk with Judges Clevenger and Plager

*          Patent invalidity is a separate issue from infringement and need not be raised      at the summary judgment stage of patent litigation

Pandrol sued Airboss at the U.S. District Court for the Western District of Missouri for infringing patent claims to a railroad track part.  Judge Scott Wright granted Pandrol summary judgment of infringement and held that Airboss had waived its affirmative defense of patent invalidity by not raising this issue during cross motions.  Airboss appealed to the CAFC.

            The CAFC held that the defendants did not waive their defense of patent invalidity and vacated this part of the decision.  This is because "invalidity is a separate issue from infringement."  The CAFC quoted the Supreme Court, which stated that "[a] party seeking a declaratory judgment of invalidity presents a claim independent of the patentee's charge of infringement" and that moreover, "of the two questions, validity has the greater public importance." 

 

Intel Corporation, v. VIA Technologies, Inc.
Decided February 14, 2003
Judge Michel with Judges Mayer and Clevenger

*          An ambiguous license agreement may be construed against a drafter of the         agreement that is solely responsible for the license terms

            Intel created an industry computer communication protocol standard and provided royalty-free licenses for companies having devices that "comply" with the standard "provided that such license shall not extend to features of a product which are not required to comply" with the standard.  Intel later filed suit against VIA in the District Court for the Northern District of California, alleging that VIA's interfaces use Intel's invention outside of the license scope.  Judge William Alsup agreed with VIA's expansive interpretation of the single one page license, decided that VIA's accused activities were allowed, and granted summary judgment of non-infringement. Alternatively, the court held that the license otherwise is ambiguous and under Delaware state law, should be construed against the drafter.   Both sides appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC affirmed.  Although both Intel's interpretation and VIA's interpretation of the short agreement were "reasonable," Intel "alone drafted the agreement and had complete control over the language of its terms…..(and) [t]here was no negotiation between the parties."  Thus, under Delaware contract law, when a contract ambiguity concerns "critical terms" of the license, the ambiguity is construed against the drafter without consideration of extrinsic evidence.  Under this rule of "contra proferentum," a contract drafter that does not negotiate but presents the contract on a make it or leave it basis may be unable to present expert testimony during litigation to support the drafter's desired construction. 

            A party who drafts and offers an agreement to another with no negotiation must be particularly careful to make the agreement clear, or risk losing rights under the agreement.  This is not Federal Circuit Law, but is state contract law in Delaware and in other states.

Biogen, Inc., v. Berlex Laboratories, Inc., and Schering AG
Decided January 31, 2003

Judge Newman with Judges Friedman and Rader; Rader partially concurs separately

*          Arguments made in a related patent application do not automatically apply to     different claims in a separate application

            Biogen brought a declaratory judgment action against Berlex at the U.S.  District Court for the Southern District of New York.  Judge Mark Wolf interpreted the claims to cover the manufacture of human interferon protein in a cell from a single DNA transport vehicle.  Based on this interpretation, Biogen's interferon, which was made using two separate DNA vehicles to move the DNA into the cell (vectors), was deemed not infringing and the court granted summary judgment of non-infringement.  The court also found no infringement under the doctrine of equivalents because Berlex had argued that its method was limited to use of a single vehicle during patent prosecution of a parent application to the divisional application.  Both sides appealed.

            The CAFC affirmed the district court's claim interpretation and the non-literal infringement holding.  The claims broadly recited a method but such methods were limited to a preferred embodiment of a single vector to transfer DNA into a host cell.  Although the specification mentioned the existence (but not details) of other methods, the court explained that "for complex biological processes a reference to known general techniques does not establish whether or how such techniques may be successfully adapted to a particular activity."  More importantly, the examiner had stated during prosecution that the vector "is the same in the prior patent and the instant (divisional) application."  Thus, the examiner had believed that the invention was limited to a single vehicle, despite the broader claim language.

            The CAFC vacated summary judgment of non-infringement because the district court had not reviewed facts for infringement under the doctrine of equivalents.  Those facts included an admission (in the parent application) that a single vehicle is used in the method, but that Berlex subsequently repudiated its earlier statement when Berlex filed a divisional application.  The CAFC pointed out that "[a]rguments must be viewed in context" and held that the district court should have reviewed the facts of equivalency instead of summarily deciding the question as a matter of estoppel.  Rader in a separate opinion concurred in part and argued that "the prosecution history of the parent application may well apply to its progeny" because the specifications are the same and the claims "are patentably distinguishable." 

            When filing and prosecuting a divisional patent application, a patent practitioner should review all admissions made in the parent application and consider explaining how those admissions do not affect the different claims of the later application. 

Springs Window Fashions LP, Shade-o-matic Ltd., and Manor Tec, Inc.

Decided February 13, 2003

Judge Bryson with Judges Mayer and Gajarsa

*          Statements during prosecution that do not overcome rejections may be used to construe claims narrowly

            Springs sued Novo at the U.S. District Court for the Western District of Wisconsin for infringing Springs' patent claims that recite methods of cutting venetian blinds with a first cutter and a "separate second cutter,".  Judge John Shabaz granted summary judgment of non-infringement because Novo's accused cutters consisted of two blades that were not separately (independently) movable.  Both sides appealed.

            The CAFC found that Springs had admitted during patent application prosecution that the invention differed from prior art by the use of "separate movement (cutting blade) means" and affirmed the non-infringement holding.  It appears that Springs' admissions during prosecution arguably were not necessary and may not have influenced the examiner because the asserted prior art may have been removed on other grounds.  However, the CAFC explained that, consistent with the Festo rule, "the public notice function of a patent and its prosecution history requires that a patentee be held to what he declares during the prosecution of his patent."

            Statements made on the record during patent application prosecution generally influence U.S. patent claim construction more than statements made during prosecution in other jurisdictions such as Europe.  It is very important that a patent practitioner for a U.S. patent be familiar with this challenge and very careful about implying narrower claim meaning during arguments with a U.S. examiner.

Altiris, Inc. v. Symantec Corp.
February 12, 2003
Judge Michel with Judges Lourie and Linn

*          Patent method claim steps are not limited to a specific order unless the   specification or file history provides such specific order as determined by a 2-part            test

            Altiris unsuccessfully sued Symantec for infringing claims to a computer booting method at the U.S. District Court for the District of Utah.  Judge Dale Kimball granted Symantec summary judgment of noninfringement because Symantec's accused method employed a reversed order of the preferred procedure.  Both parties appealed claim construction issues to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC declared that the lower court erroneously limited the claims and remanded for re-determination of infringement.  The district court had limited the method claims to a specific order of steps, even though "the plain meaning of the language of the claims imposes no order."  The CAFC reviewed its "two-part test for determining if the steps of a method claim that do not otherwise recite an order, must nonetheless be performed in the order in which they are written" (from Interactive Gift, Fed. Cir. 2000).  In the first step, a court reviews "the claim language to determine if, as a matter of logic or grammar, they must be performed in the order written."  For the second step, if no order is required from the first step "we next look to the rest of the specification to determine whether it directly or implicitly requires such a narrow construction."  The second step reveals an order if the patentee: i) "acted as his own lexicographer and clearly set forth a definition (of an order)"; ii) "distinguished that term from prior art…expressly disclaimed subject matter, or described a particular embodiment as important to the invention"; iii) chose a term that "so deprives a claim of clarity as to require resort to the other intrinsic evidence;" or iv) "phrased the claim in step-or means-plus function format," in which event the term is limited to "the corresponding structure or step disclosed in the specification."  Altiris did not provide such restrictive statement(s) in the patent specification or file history and was not limited to a step order.

            Inferring claim meaning indirectly from statements made (or not made) in a specification and during prosecution can be vague and time consuming.  To help a court construe method claims broadly, a patent drafter should add a statement to the specification that the steps are not limited to any specific order.

Phonometrics, Inc., v. Westin Hotel Co.
Decided February 12, 2003

Judges Bryson, Lourie and Schall

*          Claim construction by the Court of Appeals for the Federal Circuit is not dictum            but controls future cases

            Phonometrics unsuccessfully sued several defendants for alleged infringement of Phonometrics' patent claims to a telephone call cost computer, and appealed those losses to the CAFC.  In each appeal, the CAFC followed a narrow claim construction, which precluded a finding of infringement.  In the second and third appeals, Phonometrics unsuccessfully argued that the CAFC's previous claim construction "was merely dictum" and had no preclusive effect.  In this last case against Westin brought at the U.S. District Court for the Southern District of Florida, Judge Kenneth Ryskamp granted Westin summary judgment of non infringement based on that same claim construction.  Phonometrics appealed to the Federal Circuit, seeking to "re-litigate the meaning" of phrases already construed by the Federal Circuit in earlier cases and complaining that the judge was biased because the judge consistently ruled against Phonometrics "on every issue."

            The CAFC affirmed non-infringement, sanctioned Phonometrics and its attorney $3,000.00 for its "frivolous" claim construction arguments" and warned that attempts to re-litigate issues previously decided "will be sanctioned more severely."

            Sanctions from courts discourage costly, frivolous litigation.  This case shows that the CAFC will not tolerate multiple re-arguments of settled claim construction issues.  The district court as well "awarded attorney fees every time a defendant sued by Phonometrics has requested them." 

Arjun Singh, v. Anthony J. Brake

Decided January 29, 2003

Judge Lourie with Judges Friedman and Prost

*          A notebook entry that demonstrates an understanding of a problem but does not            provide a corroborated solution fails to support a conception date

            Singh lost an interference contest to Brake for an invention to a DNA that encodes a yeast extra cellular transport signal attached to a foreign gene for production of protein in yeast.  Singh appealed to the CAFC, which remanded.  Upon remand, the Board of Patent Appeals and Interferences affirmed that Singh did not prove earlier conception of the claimed DNA because, although Singh "may have articulated in (a notebook) entry the problem to be solved" the notebook entry "did not provide the solution."  Singh appealed again to the CAFC.

            The CAFC affirmed Brake's invention priority.  Singh's notebook evidence of conception unfortunately spanned separate pages, some of which were not countersigned and dated until much later.  The earliest signed page described an order for material that could be used to practice the invention.  Another page had a note on the corner describing an intended use of the material but was uncorroborated (not witnessed timely).  The CAFC explained that such notebook evidence was insufficient and that Singh has the "burden….to prove that he as the inventor had a definite and permanent idea of how to make the (DNA) construct."

            This case shows the value of frequent and timely signing of notebook pages by an inventor and a witness.  In many instances, it is important to document pure ideas, such as thoughts for how to carry out a speculative experiment.  Such evidence often is the earliest indication of "a definite and permanent idea" to support the conception of an invention.

Prima Tek II, L.L.C. and Southpac Trust International, Inc.v. Polypap, S.A.R.L. et al.
Decided February 5, 2003
Judge Gajarsa with Judges Plager and Prost

*          Varied use of a claim term in a patent specification supports a wide claim breadth

            Prima obtained patents for flower holders and sued Polypap at the U.S. District Court for the Southern District of Illinois for infringing the patents.  In this suit, Judge Michael Reagan construed the claim term "floral holding material" to mean "a three dimensional ….material capable of giving support to individual flowers when their stems are inserted into the material."  Based on this interpretation, the court granted Southpac summary judgment of no infringement because flowers "are not actually inserted into and through the actual plastic" of the accused device but instead "inserted into a hole" (which is not a 3-dimensional material).  Prima appealed to the CAFC.

            The CAFC interpreted the claims more broadly, vacated the decision and remanded for determination of infringement.  In construing the claims more broadly, the CAFC concluded "that the prosecution history does not attribute a special meaning to the phrase 'floral holding material.'"  More importantly, the patent specification states that the floral holding "material 'may be' (not must be) ….floral foam or soil. (and ) the many uses of the term throughout the .. patent are consistent with a broader definition."  The main point in this decision is that Prima used an important claim term "at various points in the written description to refer to any material of any shape or type" and thereby obtained a broader claim meaning.

            A basic rule of patent preparation and prosecution is to describe each claim term as broadly as possible in the specification and to avoid contradicting the statements during prosecution, as Prima did with its patents.

Dr. Raymond Tronzo v. Biomet, Inc.

February 12, 2003
Judge Newman with Judges Lourie and Schall

*          A party must timely file a motion to correct an omission in an appellate decision that awards interest on damages or risk losing that portion of the award

            This case, at the U.S. District Court for the Southern District of Florida, concerns a procedural issue of how to obtain interest on a damages award when an appeals court neglects to include an interest calculation in its decision.  Judge Daniel Hurley granted Tronzo post-judgment interest on a 20 million dollars damages award.  The court later reduced the award following an appeal to the CAFC, but then reinstated the award.  The reinstatement decision from the CAFC did not recalculate interest starting from the first award date.  When the district court finally corrected this, Biomet appealed to the CAFC.

            The CAFC vacated the corrected interest award because under rule 37(b) of the Federal Rules of Appellate Procedure, a judgment from an appeals court "must contain   instructions" about interest on damages and a district court cannot change this.  Tronzo should have asked the CAFC to modify its earlier judgement but "no such motion was filed." 

            It is important to raise issues timely during litigation and to file motions when required, or else lose certain rights, as seen in this complicated procedure case.

Harold L. Bowers v. Baystate Technologies, Inc.
Decided January 29, 2003
Judge Rader with Judge Clevenger, Judge Dyk concurs/dissents separately

*          The Copyright Act does not preempt contractual constraints such as shrink wrap           licenses on copyrighted articles

Bowers patented, copyrighted and sold computer aided design software with a "shrink wrap" license that prohibits reverse engineering.  Baystate, a competitor, obtained copies and apparently reverse engineered many of the software's features into Baystate's own software.  A dispute erupted that culminated with Baystate suing Bowers for declaratory judgment that Baystate's products do not infringe Bower's patent and that Boyer's patent is both invalid and unenforceable.  Bowers counter sued and a jury awarded Bowers damages for breach of the shrink wrap license, patent infringement and copyright infringement.  Both sides appealed to the Federal Circuit.

A majority opinion of the Federal Circuit affirmed the breach of contract holding but Judge Dyk dissented on this point. 

This is an interesting case that reveals legal issues for using shrink wrap licenses (non-negotiated licenses for use of a product that are encountered after opening the product package) for protecting products such as software.  A major issue was whether the federal Copyright Act preempts state law contract claims based on shrink wrap licenses that restrain copying.  The Federal Circuit pointed out that "most courts to examine this issue have found that the Copyright Act does not preempt contractual constraints on copyrighted articles."  In distinguishing Bower's shrink wrap "contract" from statutory fair use exceptions to copyright infringement, the Federal Circuit adopted the district court's view that the shrink wrap license constituted a waiver of an affirmative defense and statutory right by a private contractual agreement supported by mutual assent and consideration.  Judge Dyk in a dissent argued that copyright law preempts state laws that authorize shrinkwrap licenses which prohibit reverse engineering, and emphasized that shrink wrap licenses are contracts of adhesion that have not been freely negotiated.  The majority opinion unfortunately did not explore the underlying issue of the limits to enforcing a shrinkwrap license as a contract.

An enforceable shrink wrap license as a contract, can provide broader protection against copying than that obtained under copyright law.  A possible limitation to enforceability of such contract may be whether a court were to consider the contract an unfair "contract of adhesion," because the only choice offered to the purchaser is to avoid making the purchase in the first place, as argued in the dissent.

Rambus Inc., v. Infineon Technologies AG, et al.
Decided January 29, 2003
Judge Rader with Judges Bryson and Prost, Prost dissenting

*          A facially incorrect remark during prosecution does not govern claim meaning

*          A member of a standards setting organization that secretly tries to obtain patents            that cover a new standard might escape fraud charges if the organization's rules are            poorly drafted and the patent claims do not cover the issued standard

Rambus was a member of JEDEC, a standard-setting body associated with the Electronic Industries Association.  JEDEC had a written policy encouraging the adoption of standards free of patented items or processes and a provision for members to reveal the existence of a conflict when voting on a standard.  During its membership of a SDRAM standard setting committee, Rambus attempted to obtain patents that might cover a new SDRAM standard.  Rambus then quit the organization and filed further patent applications having claims that covered aspects of a later adopted SDRAM standard.  Rambus sued Infineon at the U.S. District Court for the Eastern District of Virginia for infringing its patents and Infineon counterclaimed fraud under state law for not disclosing to JEDEC its patents and patent applications related to the standard.  Judge Robert Payne narrowly construed the claim term "integrated circuit device" as necessarily requiring particular circuitry, based on an introductory comment in the Rambus patent prosecution history.  A jury found no infringement of the narrow claims, and fraud, based on an extensive record of intent to file applications that would cover an expected SDRAM standard.  Both sides appealed to the Federal Circuit.

A majority decision of the Federal Circuit reversed the fraud holding because the claims of the early filed patent applications did not in fact cover the SDRAM standards.  Prost, in a dissent, complained that the majority merely made a de novo analysis of the respective claims, the findings were not made at the district court, and "a finding not made cannot be reviewed."  Prost also dissented that JEDEC's disclosure policy should be interpreted more broadly and would have sustained the fraud verdict.  Prost agreed that the lower court improperly relied on a facially incorrect comment during prosecution to construe the claims too narrowly.  That is, prosecution history in its entirety and not just one comment is to be used in interpreting claim meaning.

A big problem in this case was that the standard setting organization had "a staggering lack of defining details in (its) patent policy….(and) a policy that does not define clearly what, when, who, how, and to whom the members must disclose does not provide a firm basis for the disclosure duty necessary for a fraud verdict."  Organizations that set standards should review their disclosure policies in light of the Federal Circuit's comments in this decision.

Micro Chemical, Inc., v. Lextron, Inc. and Turnkey Computer Systems, Inc.
Decided January 24, 2003
Judge Plager with Judges Michel and Lourie

*          Expert testimony is based upon sufficient facts or data even when the expert      does not independently investigate but relies on conflicting facts

Micro won a jury verdict award of damages at the U.S. District Court for the Northern District of Texas against Lextron for patent infringement, partly due to testimony from Micro's damages expert.  Lextron appealed to the Federal Circuit, arguing that the expert's testimony "was not based on reliable facts."

The Federal Circuit affirmed, because the admission of expert testimony under the law of the respective regional circuit (Fifth Circuit) does not require that the testifying expert "undertake an independent investigation" of the facts relied on for his testimony.  The Federal Circuit explained that admissibility of expert testimony under rule 702, as fashioned by the Daubert case and amended in 2000 requires that "the testimony is based on sufficient facts or data" but that such requirement "is not intended to authorize a trial court to exclude an expert's testimony on the ground that the court believes one version of the facts and not the other" but rather should rely on "vigorous cross-examination, presentation of contrary evidence and careful instruction on the burden of proof…..(for) attacking shaky but admissible evidence."

Determination of damages is a very important part of litigation where ambiguous information is presented by battling (or even baffling) experts.  This case teaches that an expert may present debatable evidence during litigation.  Such evidence may be dispositive in litigation.

Micro Chemical, Inc., v. Lextron, Inc.
Decided January 29, 2003
Judge Rader with Judges Schall and Bryson

*          Lack of an available substitute for a patented product allows recovery of lost     profits for patent infringement

Micro sued Lextron at the U.S. District Court for the District of Colorado.  Judge  Zita Weinshienk granted Lextron summary judgment denying Micro lost profits on the basis that Lextron's later developed machine was a substitute that could have been available during Lextron's infringement.  Micro appealed to the Federal Circuit.

This case concerns the circumstances where an infringer can rely on a later developed non-infringing alternative as a readily available alternative during infringement, and thereby escape an award of damages to a patentee based on the "but for" infringment test.  This is a follow up to the Grain Processing case, wherein the Federal Circuit reaffirmed that "a technology not on the market at the time of infringement can, in certain circumstances, constitute an available noninfringing alternative."  In Grain Processing, the defendant escaped paying lost profits because the defendant proved that a substitute product easily could have been made, without any real research.  Thus, no profits were lost because other technology was available (with a little development work).  In this case, however, the Federal Circuit pointed out that Lextron exerted months of design around R&D work to come up with a noninfringing product.  Accordingly, an alternative technology was not readily available and Micro suffered lost profits due to Lextron's infringement.  The Federal Circuit therefore reversed and remanded.

A judged infringer often tries to prove that its infringement did not cause lost profits to a plaintiff because other technologies could have been used.  The Federal Circuit in this case explains the amount of R&D activity that distinguishes a readily available technology from a true design around.

Plant Genetic Systems, N.V. and Biogen, Inc. v. Dekalb Genetics Corporation

Decided January 13, 2003
Judge Michel with Judges Newman and Prost

*          A broad claim of a pioneer patent that covers known but unenabled embodiments          is invalid

            PGS sued DeKalb at the U.S. District Court for the District of Connecticut for allegedly infringing PGS's patent claims that recite genetically engineered plant cells that make a plant resistant to an herbicide.  Judge Dominic Squatrito found the broad patent claims, which recite all types of "plant," invalid on enablement grounds.  One type of plants known as "monocots" (grasses, etc with one leaf) could not be genetically engineered when PGS filed its patent application and the claims covered these known but unenabled embodiments.  PGS appealed to the CAFC.

            The CAFC rejected PGS's argument that PGS's patent "is a pioneer patent and thereby entitled to a broad scope of coverage and lower standard of enablement" and affirmed.  The CAFC pointed out that a determination of whether a patent is "pioneering" is "unnecessary to the disposition of this case" and that "the scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification" (quoting In re Fisher from CCPA 1970).  The CAFC distinguished this case from earlier cases wherein a broad claim covers later technical developments because when PGS filed an application for its "pioneering" invention, the large class of monocot plants were known already and studied intensively.  More specifically, the CAFC asserted that an inventor cannot "claim what was specifically desired but difficult to obtain at the time the application was filed, unless the patent discloses how to make and use it."

            Many broad biotech patent claims have issued that cover molecules and methods that were not enabled at the time of filing.  The CAFC has stated in this decision that the "pioneering status" of an invention might not overcome an enablement deficiency in such instances.

Warner-Lambert Company v. Apotex Corp, Apotex, Inc. and Torpharm, Inc.

Decided January 16, 2003

Judge Lourie with Judges Michel and Plager

*          Submission of an Abbreviated New Drug Application ("ANDA") to the FDA    does not infringe a use claim if the clinical use sought from the FDA differs 

            Warner obtained a New Drug Application from the U.S. Food and Drug Administration to market a drug for treatment of epilepsy.  The patents for the drug and use of the drug in epilepsy expired, but Warner obtained a current patent for use of the drug in "neurodegenerative" disease.  Generic drug maker Apotex filed an ANDA for the different use in epilepsy, which prompted Warner to sue Apotex at the U.S. District Court for the Northern District of Illinois.  Judge Paul Plunkett granted Apotex summary judgment of non-infringement because Warner has no cause of action under the asserted patent, which does not cover epilepsy.  Warner appealed to the CAFC.

            The CAFC reviewed the legislative history of the Hatch-Waxman Act, which created the laws governing how patent rights from drug companies can be enforced against generic copiers, and affirmed.  The CAFC concluded that "it is not an act of infringement to submit an ANDA for approval to market a drug for a use when neither the drug nor that use is covered by an existing patent." 

            Pharmaceutical companies often invoke provisions of 35 U.S.C. 271(e)(2)(A) to attack generic copiers of a drug.  Blocking the sale of a generic drug for even a few months can greatly affect a company's profit.  However, a main point of this case is that a generic drug maker does not have to list with the FDA, a "use" patent subject to 271(e) if that patent only claims methods of use that differ from the use requested from the F.D.A.

In Re. Lance G. Peterson and Ioannis Vasatis
Decided January 8, 2003
Judge Lourie with Judges Bryson and Dyk

·                    A claim to a narrow range within a generally known larger range that is not especially broad may be prima facie obvious

            The PTO rejected Peterson's patent application claims to nickel based alloys of specified percent element compositions on obviousness grounds over prior art composition ranges.  Peterson's claims broadly recited elemental compositions having "about" certain percentages of several elements.  The examiner found a prima facie case of obviousness due to overlapping element ranges of prior art compositions with the claimed composition.  Peterson appealed to the Court of Appeals for the Federal Circuit ("CAFC").

            The CAFC affirmed the PTO's rejection of claims on obviousness grounds.  The CAFC asserted that Peterson's unexpected results did not rebut the prima facie case of obviousness because Peterson's evidence covered a narrower range of percentages than his claimed "about" percentage ranges.  The CAFC noted in this regard that "[e]stablishing that one (or a small number of) species gives unexpected results is inadequate proof (in such instances because …) objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support" (quoting In re Tiffin from CCPA 1971).

            A patent applicant should not rely solely on claims that recite "about" but should include specific overlapping narrower ranges in the specification to support additional claims that may withstand prior art challenges more easily.  

Oakley, Inc. v. Sunglass Hut International et al.
Decided January 9, 2003
Judge Lourie with Judges Newman and Dyk, Dyk concurring separately

*          A claim term such as "vivid colored appearance" is not indefinite if the    specification presents a formula useful to quantitate the term       

            Oakley obtained a preliminary injunction against Sunglass at the U.S. District Court for the Central District of California after Judge Alicemarie Stotler held that Sunglass's sunglasses likely would be found to infringe Oakley's patent claims.  The claims recite a sunglass that makes a "vivid colored appearance" as seen by others.  Sunglass argued invalidity because the unusual claim phrase was indefinite.  Sunglass lost this argument and appealed to the CAFC.

            The CAFC affirmed, because Oakley's "specification presents a formula for calculating the  differential effect for a number of examples" that were close enough to the accused product to arguably cover that product.  Dyk, in a concurring opinion pointed out that the case was "close and difficult" and the claim construction "may or may not be correct" but affirmed the lower court decision because "the claims enjoy a presumption of validity" and "there was expert testimony that the accused lenses had a vivid colored appearance."

            The CAFC responded favorably to expert testimony for at least part of its deliberation in this case.  The combination of a qualitative term in a claim with a quantitative description in a patent specification for interpreting the term may be a useful claim drafting strategy for anticipating litigation.

In re Majestic Distilling Company, Inc.
Decided January 2, 2003
Judge Lourie with Judges Newman and Schall

*          Identical trade marks on related goods for separate trademark holders causes    confusion, as analysed under several DuPont factors

            The PTO refused Majestic's application for the mark "RED BULL" for tequila, in view of a previous "RED BULL" trademark registration to another company for malt liquor.  Majestic appealed to the CAFC.

            The CAFC evaluated the likelihood of consumer confusion over the origin of trademarked goods based on the "Du Pont factors" (CCPA 1973) as commonly used for this analysis, and affirmed.  Likelihood of confusion was found for several reasons, including the fact that "when word marks are identical but neither suggestive nor descriptive of the goods" the similarity of the mark "weighs heavily against the applicant."

Majestic asserted that it used the RED BULL trademark since 1984 but did not try to register the mark until 5 years after the same mark was registered by another company for a similar product.  A company should register its trademark early.

Paradise Creations, Inc. v. UV Sales, Inc
Decided January 3, 2003
Judge Dyk with Judges Lourie and Bryson, Lourie dissenting

*          A company with a lapsed business license lacks standing to sue in a Federal court

Paradise, a Florida corporation, contracted an exclusive patent right after the state of Florida had administratively dissolved the company's corporate status because Paradise neglected to file annual reports.  The dissolution cancelled Paradise's right to conduct business.  Paradise discovered its dissolved status after suing UV Sales at the U.S. District Court for the Southern District of Florida for patent infringement.  UV Sales convinced Judge Kenneth Ryskamp that Paradise was not an active Florida company, prompting the court to grant a dismissal.  Paradise quickly reinstated its Florida corporation status and argued that under Florida's "corporation revival" law such reinstatement "takes effect" retroactively to the dissolution date and that "the corporation resumes carrying on its business as if the (company) dissolution had never occurred."  The district court disagreed and Paradise appealed to the CAFC.

A CAFC majority opinion affirmed, because only a patentee and "successors in title to the patentee (including) [e]xclusive licensees holding all substantial rights to the patent" can sue for patent infringement.  The majority held that Paradise could not execute a contract when administratively dissolved, and Florida's corporation revival law cannot retroactively confer standing in a Federal court.  Judge Lourie opined in a dissent that "Paradise was (only) temporarily impaired as a corporation" and that Florida state law can retroactively create a patent right transfer and the right to sue. 

 

Sometimes a company may forget to file company reports with its state of incorporation, and  may become "administratively dissolved" until (in many cases) the corporation pays a fee to reinstate its status to conduct business.  This case illustrates complications that can arise from this neglect. 

Amgen Inc. v. Hoechst Marion Roussel, Inc. (Now Aventis Pharmaceuticals Inc.) and Transkaryotic Therapies, Inc.
Decided January 6, 2003
Judge Michel with Judges Schall and Clevenger, Clevenger dissenting

*          A composition claim does not require that the patent specification describe       
          technical developments that arise after the patent application was filed

Amgen filed a declaratory judgment action against Hoechst at the U.S. District Court for the District of Massachusetts after Hoechst submitted an Investigational New Drug Application at the Food and Drug Administration.  Amgen eventually asserted claims from five patents to materials and methods of producing EPO, an important blood hormone, against Hoechst.  The suit involved many legal theories, including whether Amgen's broad method and protein claims were invalid on enablement and written description grounds.  Judge William Young held many of the claims valid and infringed.  Both sides appealed to the CAFC.

 
            The CAFC affirmed the district court's claim construction and many of its holdings, but vacated and remanded obviousness and doctrine of equivalents infringement holdings.  Clevenger dissented on the point that the district court should have reviewed enablement and written description of claims more aggressively to address the "central issue" of whether "Amgens disclosure of one means of producing synthetic EPO….entitles it to claim all EPO produced by mammalian cells in culture, or all cultured vertebrate cells that produce EPO."

A major dispute was whether claims that broadly cover virtually all synthetic EPO could survive enablement and written description challenges when the specification provided limited, narrow teachings.  The CAFC acknowledged the district court's comment that "it appeared that Dr. Lin (the inventor) claimed far more than he delivered" and that after "much reflection" the district court found "that Amgen survives [the enablement challenge], albeit barely."  Hoechst apparently tried to avoid Amgen's patent rights by developing new technology for its alleged infringing method and materials that differs from that described in the patents.  The CAFC noted in this context that "where the method is immaterial to the claim, the enablement inquiry simply does not require the specification to describe technological developments concerning the method by which a patented composition is made that may arise after the patent application is filed."

            An interesting aspect of this case was that the district court "found invalidity (of certain Amgen claims) proven, but only by a preponderance.  However, the claims remained valid and were deemed infringed because, unlike examination at the U.S.PTO. "a heavy burden falls on the challenger (Hoechst)" as the question in the litigation was "validity of issued claims, that are presumed valid by statute" not "patentability of the claims."  Patent challenge by opposition, such as in Japan and Europe might yield a different outcome in this circumstance.