Decided December 14, 2004

Judge Dyk with Judges Newman and Rader, Newman dissenting

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

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

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

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

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

Judge Mayer with Judges Rader and Schall

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

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

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

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

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

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

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

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

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

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

 

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

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

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

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

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

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

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

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

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

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

Decided December 14, 2004

Judge Dyk with Judges Newman and Archer

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

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

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

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

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

. 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

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

 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

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

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

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

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

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

 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

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

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

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

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

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

 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Intirtool, Ltd. v. Texar Corporation
Decided May 10, 2004
Judge Linn with Judges Lourie and Schall

*          A claim preamble is not a limitation if the claim body "describes a structurally     complete invention such that deletion of the preamble phrase" has no effect.

Intirtool sold its patented tools to Texar until Texar asked for a price reduction in view of another supplier of similar tools covered by Intirtool's patent.  Seven years later Intirtool sued Texar for infringing Intirtool's patent by Texar's sale of copied product, at the U.S. District Court for the Eastern District of Texas.  Judge Paul Brown found that the claim preamble "for simultaneously punching and connecting overlapping sheet metal" was a claim limitation but was not supported by the specification, and invalidated the patent.  Furthermore, Intirtool was barred from obtaining damages by the equitable doctrine of latches (more than 6 years delay to filing of lawsuit).  Intirtool appealed to the Federal Circuit.

A Federal Circuit panel found that the preamble merely recited an intended purpose or benefit, and reversed the holding of invalidity on written description grounds because "the preamble adds nothing to this highly detailed claim."  The almost 7 years delay between the end of Intirtool's relationship with Texar and commencement of the lawsuit was not latches because Intirtool did not "have actual or constructive knowledge of an act of infringement" and the Federal Circuit reversed this holding as well.

A practitioner should avoid adding unnecessary words to patent claims.  In this case, a defendant convinced a district court that an unnecessary recitation of a benefit within a claim invalidated the claim.

The Arnold Partnership v. Jon Dudas and Nicholas P. Godici
Decided March 24, 2004
Judge Rader with Judges Bryson and Dyk

*          Patent term extension may not be available under 35 USC 156(c) for combination         drug claims to previously approved active ingredients.

Arnold unsuccessfully applied to the PTO for a patent term extension of Arnold's patent, which covered a combination of hydrocodone and ibubrofen.  When the PTO refused, Arnold filed suit in the U.S. District Court for the Eastern District of Virginia.  Judge Leonie Brinkema agreed with the PTO's interpretation that 35 U.S.C. 156(a)(5)(A) allows patent extension only for "the first permitted commercial marketing of use of the product…."  Because both ibuprofen and hydrocodone had received approval for commercial marketing, no patent term extension was possible, even if the combination had not been approved before.  Arnold appealed to the Federal Circuit.

The Federal Circuit carefully reviewed the relevant statutory language and affirmed.  The court admitted that "its reading of (the statute) does not perfectly overlay with FDA's practices and regulations" but that the court "must follow the directions of the law, not its own conceptions of the best way to make the law achieve certain policy objectives."  It may seem unfair to deny patent term extension to combinations of previously approved drugs, but Congress has to change the law to allow term extension for this category of patents.

Jordan Spencer Jacobs, v. Nintendo of America, Inc.
Decided May 28, 2004
Judge Bryson with Judges Michel and Linn

*          A license to a manufacturer for sale of a device provides an implied license to    OEM purchasers of the device.

Jacobs sued various hardware makers at the U.S. District Court for the Middle District of Florida for allegedly infringing Jacobs' patent claims to a video game controller that responds to acceleration movement.  Jacobs also sued Analog on alleged inducement and contributory infringement grounds for making an accelerometer sensor that the other companies built into the game controller.  Jacobs settled its case with Analog via licensing to Analog "the right to make, use, sell …..accelerometers, for use in tilt-sensitive control boxes."  Jacobs then sued Nintendo, Analog's customer.  Judge Gregory Presnell granted summary judgment of non-infringement based on the settlement agreement with Analog.  Jacobs appealed.

The Federal Circuit affirmed because the license agreement "specifically authorized the sale of those accelerometers for infringing uses."  This opinion stressed that the settlement agreement permitted the use of the device, and "a party may not assign a right, receive consideration for it, and then take steps that would render the right commercially useless."

Microchip Technology Incorporated v. U.S. Philips Corporation et al.
Decided May 13, 2004
Judge Dyk with Judges Michel and Lourie

*          "Unless the parties (to a contract) clearly and unmistakably provide otherwise, the question of whether the parties agreed to arbitrate is to be decided by the court."

Philips granted GI a license to Philips' patents, which included a mandatory arbitration clause in the event of a dispute.  GI then "spun off" Microchip from a wholly owned subsidiary.  During patent litigation with GI at the U.S. District Court for the District of Arizona, Microchip relied on its relationship with GI to argue that Microchip had a license to the litigated patents.  While denying that Microchip was a party to the contract, Philips started an arbitration against Microchip in the International Court of Arbitration.  Judge Paul Rosenblatt of the Arizona court granted Microchip a stay of the arbitration until the court could determine the parties to the license agreement and Philips appealed.

The Federal Circuit affirmed the lower court's decision to determine the existence of an arbitration agreement between Philips and Microchip before allowing arbitration.  Citing several Supreme Court cases, the Federal Circuit panel pointed out that "the question of whether a party is bound by an agreement containing an arbitration provision is a 'threshold question' for the court (and not an arbitrator) to decide." 

Contracts often include agreements to submit disputes to arbitration.  However, the sale or transfer of assets, including license rights, from one company to a subsidiary or other party can create ambiguity regarding the enforcement of an arbitration provision.  As a result, litigation at a court may be needed anyway.  To combat this, a license drafter should consider specifying such possible transfers of license rights when writing a mandatory arbitration clause in a contract.

Knoll Pharmaceutical Company, Inc. et al. v. Teva Pharmaceuticals USA, Inc.
Decided May 19, 2004
Judge Newman with Judges Archer and Prost

*          Evidence of unexpected results for an unobviousness determination can be         generated and relied on after grant of a patent.

            Knoll sued Teva at the U.S. District Court for the Northern District of Illinois for alleged patent infringement under 35 USC 271(e)(2) after Teva filed a New Drug Application at the Food and Drug Administration for a drug combination.  Judge John Darrah granted Teva summary judgment of invalidity on obviousness grounds, despite Teva's strong showing of unexpected synergistic results from the combination.  Knoll appealed to the Federal Circuit.

            A Federal Circuit panel reversed because although prior art suggested combining an opioid with an analgesic, Knoll's patent specification refers to unexpected results of combining the specific pharmaceuticals hydrocodone and ibuprofen.  Knoll also relied on unexpected results found by testing after obtaining the patent.  The Federal Circuit explained that "[e]vidence obtained after the patent grant is not excluded from consideration, for understanding of the full range of an invention is not always achieved at the time of filing the patent application."

            It is helpful to assert at least some unexpected results in a patent specification.  Stronger, more persuasive evidence of unexpected results may be generated later, such as during litigation.

In Re American Academy of Science Tech Center
Decided May 13, 2004
Judge Bryson with Judges Rader and Gajarsa

*          "During examination, claims are to be given their broadest reasonable
            interpretation consistent with the specification…"

            American obtained a patent with claims to "general purpose user computers" that are connected to a "data center computer."  American sued Novell for alleged patent infringement, which prompted Novell to request reexamination of American's patent, staying the litigation.  The PTO rejected all claims on prior art grounds in view of the fact that "user computer" broadly encompasses a variety of computers.  American appealed this decision to the Federal Circuit, arguing that this claim term is limited to single person use computers.

            The Federal Circuit, without resort to a dictionary, interpreted the term "user computer" broadly from a description in the specification that "distinguishes a user computer from a data center computer (only) in terms of function."  The court noted that the PTO "is required to use a different (broader) standard for construing claims than that used by …. judges who, post-issuance, operate under the assumption the patent is valid," and affirmed the prior art rejection. 

            The patentee in this case locked itself into an overly broad claim scope from statements in the specification and did not have suitable additional, narrower terms in dependent claims.  Another point is that a defendant in litigation successfully relied on reexamination to invalidate a software patent and remove the lawsuit.  Sending the dispute to the PTO may favor attempts to invalidate a patent on prior art grounds since the PTO, with the Federal Circuit's approval, may construe claims more broadly than a judge.

Sierra Applied Sciences, Inc. v. Advanced Energy Industries, Inc.
Decided April 13, 2004
Judge Michel with Judges Gajarsa and Dyk

*          A promise not to sue must have a breadth equal to earlier threats to remove a
            reasonable apprehension of suit.

            Sierra sued Advanced at the U.S. District Court for the District of Colorado for summary judgment of non-infringement or invalidity of Advanced's patent claim to a power supply.  Judge Lewis Babcock dismissed the suit for lack of a case or controversy.  Sierra appealed to the Federal Circuit.

            This case was complicated by the fact that Sierra had made and used in house, three different devices at different states of completion, and by the fact that Advance promise not to sue Sierra for in-house use of Advance's invention.  The Federal Circuit found the three devices technologically distinct but faulted the lower court for not distinguishing between two of them.  The Federal Circuit argued that a "court must carefully calibrate the analysis to each of the products….(or) risk issuing an advisory opinion on one product…"  Finding that Advanced's promise not to sue for in house use of one device did not extend to infringing acts outside, the Federal Circuit found that Sierra had a reasonable apprehension of suit with respect to that product, and reversed that portion of the decision.

            Patentees can sue others for who use patented inventions in research and development.  Resolution of such cases may require sophisticated technical analysis.  In this case, the Federal Circuit remanded to the district court with respect to one research device for further fact finding to determine whether the device actually carried out an infringing act before it blew up.

Elan Corporation, PLC, v. Andrx Pharmaceuticals, Inc.
Decided May 5, 2004
Judge Lourie with Judges Michel and Dyk

*          "An offer to enter into a license under a patent for future sale of the invention …             when and if it has been developed ….is not an offer to sell."

Elan offered to license its once-daily drug formulation to other companies that would actively participate in planning of clinical studies, with a price contingent on future acts.  One year later, Elan filed a patent application and obtained a patent.  Andrx then filed an abbreviated New Drug Application, prompting Elan to file suit for patent infringement at the U.S. District Court for the Southern District of Florida.  Judge Adalberto Jordan held that Elan's offer to license was a commercial offer of a product that was ready for patenting more than one year prior to filing the patent application, and found the patent invalid under the on-sale bar of 102(b).  Elan appealed and Andrx cross appealed.

The Federal Circuit reversed because Elan's license offer was not a commercial offer, but merely allowed the offeree "the opportunity to become its [Elan's] partner in the clinical testing and eventual marketing of such tablets at some indefinite point in the future."  In particular, the offer letter "lacked any mention of quantities, time of delivery, place of delivery, or product specifications beyond (a) general statement." 

An invention rights holder may license an invention more than one prior to filing a relevant patent application.  This case shows that an offer that includes development terms and costs is not an offer to sell under 102(b) but is instead an offer to license the invention itself, which does not prompt the on sale bar of 102(b).

           
Unova, Inc. v. Acer Incorporated et al.
Decided March 31, 2004
Judge Lourie with Judges Clevenger and Schall

*          Under California law,  "the mutual intention of the parties at the time the contract            is formed governs interpretation."

Unova granted Compaq "and its parents" a license for certain "smart battery" technology under Unova's patents.  Later, HP acquired Compaq and became Compaq's parent.  Unova then sued HP at the U.S. District Court for the Central District of California for infringing its smart battery patents.  Judge Edward Rafeedie granted summary judgement to HP that the earlier settlement agreement covers HP.  Unova appealed to the Federal Circuit.

A Federal Circuit panel pointed out that the settlement agreement "release provision is written in the present tense" and "most naturally does not refer to Compaq's future parents," and reversed. 

The panel explained that contract interpretation in this case may be "confirmed by - the structure of the settlement agreement as a whole" regarding intent of the parties. 

A contract should indicate the intent of the parties, particularly when the contract may affect a third party (such as a parent, subsidiary or purchaser).

Edward H. Phillips v. AWH Corporation et al.
Decided April 8, 2004
Judge Dyk with Judges Newman and Lourie

*          "[A]n adjectival qualification …further narrows the scope of those structures      covered by the claim and makes the term more definite."

 Philips sued AWH at the U.S. District Court for the District of Colorado for alledged infringement of patent claims to "building modules…comprising internal steel baffles…..."  Judge Marcia Krieger construed the term "baffle" as part of a means plus function claim, which limits the claim to structure in the specification.  Because AWH's device used 90 degree angle baffles and the specification only showed oblique angle baffle structures, the court granted summary judgment of non-infringement.  Philips appealed to the Federal Circuit. 

The Federal Circuit found that "baffle" was not in means plus function language but found that the specification narrowly limited the claim to oblique baffles, which provide impact resistance as repeatedly emphasized in the specification and during prosecution.  The court therefore affirmed, based on this alternative narrow interpretation.  Judge Dyk dissented, arguing that the court improperly limited the claims to the preferred embodiment. 

The majority opinion relied on the "context of the entirety of (the) invention" to limit the claims to a definition that fit the emphasized "impact resistance" in the specification.  The accused device in contrast, employs a baffle geometry (at 90 degrees/perpendicular) that was not described in the specification and that did not provide the exhorted advantages.  A practitioner should not define an invention by overly strong laudatory statements directed to a specific function, as a court may adopt such characterization to narrow claim scope.

Crown Operations International, Ltd. and Marshall H. Krone v. Solutia, Inc.
Decided May 13, 2004
Judge Gajarsa with Judges Lourie and Clevenger

*          A patent with claims that require software to understand should include a           description of that software to meet the enablement requirement.

Crown sued Solutia for declaratory judgment of invalidity for two patents that claim multiplayer glass at the U.S. District Court for the Western District of Wisconsin.  Judge John Shabaz denied declaratory judgment relief of invalidity on prior art, lack of enablement and written description grounds and Crown appealed to the Federal Circuit.

The Federal Circuit affirmed in part but found that a genuine issue of material fact exists with respect to the non-enablement holding.  The court found that the patents, which claim glass with films having particular 2% optical reflectance characteristics, apparently do not describe clearly the software or method for determining this reflectance.  The Federal Circuit remanded for additional proceedings on this point.  The court noted that "[a] specification that claims an invention requiring implementation through computer software but fails to set forth the details of computer programming may present issues of whether the experimentation required to write the programming is reasonable or unreasonable."

Many technical procedures involved in working an invention require software.  A practitioner should add algorithms used for necessary but unpublished software to a patent specification or risk subsequent invalidation on enablement grounds.

Housey Pharmaceuticals, Inc. v. Astrazeneca UK Ltd. et al.
Decided May 7, 2004
Judge Clevenger with Judges Mayer and Newman, Newman dissenting

*          Claim terms may be interpreted broadly if the patentee did not "clearly disavow"            the "plain meaning."

Housey sued Astra at the U.S. District Court for the District of Delaware for allegedly infringing claim to methods of screening chemicals that effect (inhibit or activate) particular proteins in cells.  Judge Sue Robinson construed the terms "inhibitor" and "activator" broadly, to include both direct and indirect effects, and ordered a final judgment of invalidity and non-infringement based on the broad definitions.  Both sides appealed various issues to the Federal Circuit.

A Federal Circuit panel majority affirmed, because ample evidence from the specification and prosecution history indicated a broad meaning, which overlaps significant prior art.  Judge Newman, in a long dissent, argued a narrower construction, by focusing on how a skilled artisan might construe the claims and by depending less on "general meaning."

The patentee in this case may have fared better if the patentee had added narrow dependent claims that recite direct binding instead of trying to shoe horn the broad claims into a narrow meaning during litigation.  The filing fee for additional dependent claims is low and such claims can provide significant protection at nominal cost. 
    
Smithkline Beecham Corporation and Beecham Group, P.L.C.
v. Apotex Corp., Apotex, Inc. and Torpharm, Inc.
Decided April 23, 2004
Judge Rader with Judges Bryson and Gajarsa, Gajarsa concurring separately

*          The experimental use exemption to patent infringement is limited to the testing of claimed or inherent features of an invention.

Smithkline sued Apotex at the U.S. District Court for the Northern District of Illinois under 35 USC 271(e)(2) on the basis that Apotex's proposed pharmaceutical would infringe Smithkline's patent, which broadly claims the pharmaceutical compound itself.  Judge Richard Posner held that the patent claim is limited to commercial quantities, since trace or undetectable amounts of the compound must have been produced spontaneously for many years.  The court found no infringement by Apotex's proposed drug, which would not contain commercial quantities of the compound.  The court also held that Smithkline's clinical trials, conducted more than one year prior to its filing date, met the experimental use exemption and did not anticipate the claims.  Smithkline appealed to the Federal Circuit.

A Federal Circuit panel majority construed the claims as lacking a quantity limitation and reversed.  The panel noted that the district court incorrectly had rejected a broad literal scope of claim 1 "because it would produce 'absurd results' and would not serve any policy of patent law."  The panel, however, explained that claim construction "is not a policy-driven inquiry" but instead "is a contextual interpretation of language."  From its broad interpretation, the Federal Circuit deemed Smithkline's clinical trials outside the experimental use exemption for 102 prior art purposes because those trials did not test a claimed feature of the invention.  Gajarsa separately argued that claim 1 was invalid under 35 USC 101 because the claimed product spontaneously forms from another product and "[s]uch spontaneous appearance of a patented product vitiates the public notice function of patents."

The experimental use exemption is limited to public use that occurs prior to reduction to practice and, for example, does not cover clinical studies that measure efficacy and safety of a pharmaceutical.   It is best to file a U.S. patent application within one year of any public use and not rely on this exemption to avoid a statutory bar. 

Golden Blount, Inc. v. Robert H. Peterson Co.
Decided April 19, 2004
Judge Linn with Judges Mayer and Newman, Newman dissenting in part

*          "When the trial court provides only conclusory findings, illuminated by no           subsidiary findings or reasonings" remand is required.

Blout sued Peterson at the U.S. District Court for the Northern District of Texas for allegedly infringing claims to a gas fired log assembly having a "primary burner in a raised level" with respect to a second burner.  Judge Jerry Buchmeyer construed the claims and found infringement based on this construction, but did not provide findings of fact to support the infringement conclusion.  Peterson appealed to the Federal Circuit. 

The Federal Circuit agreed with the district court's claim construction without discussing any dictionary definitions, but had to vacate and remand the infringement holding for lack of factual support.  In particular, the Federal Circuit complained that "[t]here is nothing to explain how the limitations of the claims, as construed, compare to the allegedly infringing device."  Judge Newman dissented on this point because "the question of infringement was essentially decided as a matter of claim construction" which the Federal Circuit is free to decide.  Thus, the Federal Circuit should have reversed or affirmed.

Federal judges sometimes are not comfortable or familiar with patent cases and the rules for deciding these cases.

Monsanto Company v. Homan McFarling
Decided April 9, 2004
Judge Clevenger with Judges Lourie and Plager

*          An excessive damages clause in a contract may be unenforceable under state     law and only permits recovery of actual damages.

This is a second appeal by farmer Homan from a lawsuit by Monsanto at the U.S. District Court for the Eastern District of Missouri.  Monsanto sued Homan for saving and replanting genetically engineered seeds produced from seeds that Homan had purchased from Monsanto.  Monsanto used a license agreement rather than an unconditional sales agreement to control subsequent use its transgenic seed.   Monsanto's "Technology Agreement" with the seed buyer stipulated that "liquidated damages" will be 120 times the contract fee if "the buyer saves, supplies, sells or acquires seed for replant."  Judge Catherine Perry entered summary judgment that Homan breached the agreement and that, under the liquidated damages provision of the agreement, Homan owed Monsanto 780 thousand dollars.  Homan appealed to the Federal Circuit.

The Federal Circuit affirmed most of the district court's rulings but vacated the damages award because "[w]hen a damages clause (in a contract) is a penalty clause, the clause is unenforceable under Missouri law and only actual damages are available."  The Federal Circuit pointed out that variations of this contract principle, which block enforcement of unfair damage provisions in contracts, are found in a number of states.  A license drafter might avoid this problem by employing different formulas to calculate compensation damages for different types of damages.  In this context, both courts pointed to the impropriety of Monsanto using 120 as a multiplier to determine damages for seeds of very different crops when regeneration of cotton and soybean seeds differ more than three-fold.

This case addresses an important biotech issue wherein "licensing restrictions on the use of a good produced by the licensed product are not beyond the scope of the patent at issue."  The Federal Circuit pointed out that "[t]he licensed and patented product (first generation seeds) and the good made by the licensed product (the second generation seeds) are nearly identical copies."  Because of the identity of progeny, Monsanto can enforce its patent against new seed produced from sold seed.  That is, a maker of a self-replicating biotechnology product can control progeny of that product with a patent to the product itself.

Inland Steel Company v. LTV Steel Company and USX Corporation
Decided April 9, 2004
Judge Bryson with Judges Michel and Gajarsa

*          A defendant can invalidate a plaintiff's patent during litigation via ex parte           reexamination at the U.S. PTO to become a "prevailing party" in the litigation.

Inland sued USX at the U.S. District Court for the Northern District of Illinois for alleged patent infringement.  USX requested the PTO to reexamine (ex parte) Inland's patent and Judge George Lindberg dismissed the case "with leave to reinstate" pending the outcome of the reexamination.  After the PTO found the patents invalid, USX moved the district court to reopen the case and to award USX attorney fees and costs.  The court, however, denied the motion for attorneys fees and costs because USX "chose to litigate the issue of patent invalidity (at the PTO), rather than in this court."  USX appealed to the Federal Circuit.

The Federal Circuit reversed and remanded because "the district court did enter judgment in USX's favor on the issue of infringement" and thus was a prevailing party.

A defendant can attack a patent during litigation via patent reexamination at the PTO and possibly become a prevailing party in the litigation if the PTO invalidates the patent.  If invalidation occurs from prior art that the patentee knew about but did not show the PTO during original prosecution, then the defendant may have a powerful argument for an award of attorney's fees, or more.

Norian Corporation v. Stryker Corporation
Decided April 6, 2004
Judge Newman with Judges Friedman and Schall, Schall dissenting in part

*          The claim term "consisting of" means that nothing can be included "beyond what             is claimed" but does not limit aspects unrelated to the invention.

            Norian sued Stryker at the U.S. District Court for the Northern District of California for infringing patent claims to methods and kits that “consist” of certain minerals for preparing bone repair compositions.  Judge William Alsup held summary judgment that the kit claims were not infringed because the accused kit additionally includes a spatula.  Both sides appealed various issues to the Federal Circuit.

            A Federal Circuit panel majority interpreted “consisting” more narrowly, and reversed the summary judgment of non infringement.  The majority decision explained that the "invention is a kit containing specific chemicals, and the claims are explicitly limited in that no other chemical can be included in the composition."  Thus, because the spatula added to the accused kit "is irrelevant to the invention," adding the spatula does not avoid infringement of the "consisting of" claim.  Judge Schall dissented on this point with a more strict view that "consisting of” means “I claim what follows and nothing else" and "such language limits all components." 

Another point was that the Federal Circuit construed the chemical term "phosphoric acid source" more broadly than "its natural meaning" because the meaning "is determined in accordance with its usage in the specification, elaborated if appropriate" by other intrinsic evidence.  In particular, the term was used interchangeably with other terms.  The Federal Circuit's broad interpretation from these facts further shows a movement away from the use of dictionaries for claim interpretation.

            It is often a bad idea to recite "consisting of" in a claim.  The patentee in this case had amended claims from 1) "comprising" to 2) "consisting essentially of" and then to 3) "consisting of" during prosecution.  A practitioner should favor specific claim elements instead of adding the limiting phrase “consisting of” to a claim.

Dr. Harry Gus v. Conair Corporation
Decided April 1, 2004
Judge Bryson with Judges Rader and Dyk

*          "Criticism in patent of prior art structure, which is similar to structure of accused
           device, supports conclusion of non-equivalence."

Gaus sued Conair at the U.S. District Court for the Southern District of New York for allegedly infringing patent claims to hairdryer shock prevention devices that use "a pair of spaced-apart ….probe networks" to detect when a device has fallen into water.  Judge Frank Maas granted Conair summary judgment of no literal infringement and a jury found infringement under the doctrine of equivalents.  Gaus appealed to the Federal Circuit.

The Federal Circuit reversed the doctrine of equivalents judgment because the specification describes the problems of prior art ground fault devices that briefly allow a shock (as used in the accused product) in their operation.  The Federal Circuit pointed out that the "patent excluded structure of the sort found in Conair's hairdryers by these comparative statements."  In other words, structure described in the specification  but not claimed could not be recaptured under the doctrine of equivalents.

It seems that the more detailed a patent application, the smaller the scope of the doctrine of equivalents.  A patent practitioner therefore should consider avoiding extensive criticism of the prior art in a specification to preserve maximum protection under the doctrine of equivalents.

Globetrotter Software, Inc. and Matthew Christiano, v. Elan Computer Group, Inc et al.
Decided March 23, 2004
Judge Linn with Judges Archer and Dyk

*          "A claim interpretation that excludes a preferred embodiment …..is rarely, if ever           correct."

            Greer, a majority shareholder in Elan, sued Globetrotter at the U.S. District Court for the Northern District of California, alleging tortuous interference and unfair competition after Globetrotter warned a would be purchaser of Elan stock that Elan infringed Globetrotter's patents.  Judge Jeremy Fogel granted summary judgment in favor of Globetrotter because Elan lacked objective evidence that Globetrotter's interference was in bad faith.  Greer appealed his loss to the Federal Circuit and Globetrotter cross-appealed infringement of its software patent claims. 

            The Federal Circuit affirmed because "Globetrotter's claim of infringement of the '297 patent was not objectively baseless" as required to prove sham litigation under Prof'l Real Estate Investors (U.S., 1993).   For Globetrotter's cross-appeal, the Federal Circuit revised the district court's construction of the claim term "preventing" as not limited to "actively" preventing a program from running.  The Federal Circuit determined that a dictionary definition of "prevent" was "ambiguous" and did not reveal whether a signal should be active.  The Federal Circuit noted that preferred embodiments in the specification described a passive system, which did not meet the district court's narrow interpretation.  The case was remanded for further proceedings based on the broader claim construction.

            This dispute arose when Globetrotter interfered with stock purchase negotiations by alleging patent infringement.  Companies that undergo asset review during a financing may be particularly sensitive to charges of infringement (which can sink a company's valuation), as seen in this case.  Another point is that the Federal Circuit favored statements made in a patent specification over a dictionary definition of a claim term.  Patent practitioners should be careful to prepare broad disclosures of important claim terms because broadest dictionary definitions may not be available to interpret claims during litigation.

Bristol-Myers Squibb Company et al. v. Pharmachemie B.V.   
Decided March 17, 2004
Judge Bryson with Judges Michel and Newman, Newman dissenting

*          A first restriction requirement does not cover a refiled application for which the PTO asserts a second, different restriction requirement.

Bristol sued Pharmachemie at the U.S. District Court for the District of New Jersey under 35 U.S.C. 271(e)(2) for allegedly infringing a pharmaceutical patent after Pharmachemie filed an Abbreviated New Drug Application with the F.D.A.  Pharmachemie argued patent invalidity on obviousness-type double patenting grounds over an earlier patent having the same priority application as the litigated patent.  Judge Mary Cooper rejected this defense because both patents were divisionals of their common ancestor.  Pharmachemie appealed to the Federal Circuit.

A Federal Circuit panel majority reversed, because the PTO had imposed "a new and different restriction requirement" and "the examiner made clear that the previous restriction requirements did not carry over."  Judge Newman dissented, and would have affirmed because PTO decisions, such as "restriction, its correction and its compliance, cannot now be collaterally attacked as grounds of patent invalidity." 

Perhaps the majority was persuaded to block Bristol's use of a later patent as a divisional because Bristol filed its first application in 1978 and already enjoyed patent protection from the first patent between 1979 and 1996.  The later patent litigated in this case extended patent protection from 1987 through 2003, for a total of 24 years based on a single priority date.

Novartis Pharmaceuticals Corporation et al. v. Eon Labs Manufacturing, Inc.
Decided April 2, 2004
Judge Dyk with Judges Clevenger and Prost, Judge Clevenger dissenting

*          A court should "look to statements made in the specification and prosecution     history to choose between competing dictionary definitions."

Novartis sued Eon at the U.S. District Court for the District of Delaware for indirectly infringing patent claims to a hydrosol form of cyclosporin having particular chemical characteristics.  Novartis argued that Eon's product infringes when it forms a hydrosol in a patient's stomach after ingestion, but Judge Joseph Farnan Jr. interpreted the claims to cover only the medicinal form.  From this interpretation, the court granted Eon summary judgment of non-infringement and Novartis appealed to the Federal Circuit.

The Federal Circuit panel reviewed "hydrosol" as defined in a number of dictionaries, and a majority concluded that statements in the specification and file history indicate a narrower meaning as a medicine (before ingestion).  The majority explained that "the plain meaning" of this term was "ambiguous," which justified searching for a (narrower) description from the intrinsic evidence.  Judge Clevenger dissented because the "full breadth" of the "ordinary meaning" must be followed "unless a clear disavowal of scope" is shown by intrinsic evidence, in accordance with previous decisions.  This split in the court may indicate a possible withdrawal of the Federal Circuit from assuming the broadest dictionary definition for a term until clear evidence is provided to select among alternative definitions. 

This was a close case, probably because the evidence relied on to choose a narrower dictionary definition was not clear.  Judges Dyk and Prost departed from past practice by relying on the absence of intrinsic evidence description of a broader dictionary definition to select a narrower definition.  To guard against this possibility, a patent drafter should a) review the broadest dictionary definition for each important claim term and b) include a broad corresponding description (including examples) for that definition.

Chiron Corporation v. Genentech, Inc.
Decided March 30, 2004
Judge Rader with Judges Archer and Bryson, Bryson concurring separately

*          A patent specification cannot enable technology that arises after the priority date,           and nascent technology "must be enabled with a specific and useful teaching."

Chiron filed four applications covering monoclonal antibodies tor a cancer antigen over an eleven year period.  Chimeric and humanized forms of antibodies were developed by others after the filing date of the first application but before the later applications.  The last (continuation in part) application included a new statement that "the term 'antibody' encompasses" the newly discovered types but lacked any specific new teaching.  Chiron later sued Genentech at the U.S. District Court for the Eastern District of California for infringing the claims of the last patent.  Judge William  Shubb construed the claims as covering Genentech's humanized antibodies but a jury determined that none of the earlier applications satisfied the written description and enablement requirements for the later claims.  Chiron appealed and Genentech conditionally cross appealed claim construction.

The Federal Circuit affirmed because humanizing antibody technology was nascent technology to at least the second filed application yet no application provided an enabling (i.e.. specific and useful) teaching of the technology.  A terse statement in the last application (after the technology was well known) that such technology existed, did not overcome this deficiency.  The majority also found that the earliest patent did not enable the later developed technology.  Judge Bryson separately concurred to argue against this last point because "enablement must be judged in light of the state of the art at the time of the application" (citing In re Hogan, CCPA 1977) but should not necessarily "be construed broadly enough to encompass technology that is not developed until later" (citing Plant Genetic Systems, Fed. Cir. 2003).

A patent applicant can get into trouble by acknowledging nascent (recent, new) technology in a continuation in part application, while relying on an earlier filed application for priority because new technology must be enabled with specific details.  In this situation an applicant might consider filing an extensive disclosure of the new technology as soon as possible after the new development, while maintaining co-pendency of the earlier application.

Summit Technology, Inc. v. Nidek Co., Ltd. Nidek, Inc., and Nidek Technologies, Inc.
Decided March 26, 2004
Judge Linn with Judges Schall and Bryson

*          Expert witness testimony to understand difficult technology and introduced at trial           can lead to a judgment as a matter of law of non-infringement.

Summit sued Nidek at the U.S. District Court for the District of Massachusetts for allegedly infringing claims to an apparatus and system for laser eye surgery via focusing light with "constant energy per unit area."  A jury found the claims literally infringed and not invalid.  However, Judge Edward Harrington granted Nidek judgment as a matter of law of non-infringement based on extrinsic evidence presented at trial.  Summit appealed to the Federal Circuit.

The Federal Circuit reviewed extensive expert trial testimony and found that the accused process uses laser pulses having Gaussian or bell shaped (i.e. not constant) energy distributions.  These distributions were inconsistent with the claim definition and were supported by admissions from both sides' experts as well as the contents of Nidek's submissions to the Food and Drug Administration. 

It seems that expert testimony played an important role in reversing this case because of the difficulty in comparing an accused process with a technically complex claim.  Such claims should be simplified or else supported by a commensurately detailed specification to allow easier identification of infringers.

Gen-Probe Incorporated v. Vysis, Inc.
Decided March 5, 2004
Judge Rader with Judges Archer and Gajarsa

*          "[A] licensee must, at a minimum stop paying royalties" before suing a licensor to            challenge the scope or validity of a licensed patent.

Vysis licensed its blood test patent to Gen-Probe as part of an overall settlement in an unrelated litigation.  Later, Gen-Probe continued royalty payments "under protest," and filed a declaratory judgment suit at the U.S. District Court for the Southern District of California, alleging non infringement and invalidity of the licensed patent.  Judge Marilyn L. Huff denied a motion from Vysis to dismiss for lack of subject matter jurisdiction based on the fact that Gen-Probe could not have reasonably apprehended a suit from its licensor,  Vysis.  After losing a jury trial, Vysis appealed this issue to the Federal Circuit.

The Federal Circuit vacated and ordered dismissal, explaining that despite the parties' litigation history, the "license, unless materially breached, obliterated any reasonable apprehension of a lawsuit based on the prior circumstances."  By entering the license agreement, "Vysis chose to avoid litigation as an avenue of enforcing its rights" and "allowing this action to proceed would effectively defeat those contractual covenants and discourage patentees from granting licenses." 

Sometimes it is difficult to decide whether to litigate a patent or to license the patent.  The Federal Circuit does not favor a licensee doing both.

International Rectifier Corporation v. Ixys Corporation
Decided March 18, 2004
Judge Linn with Judges Newman and Prost

*          A court is not free to attribute a broader meaning to a claim term when a            dictionary definition of the term fails to cover a preferred embodiment         
 

IR won a judgment of patent infringement against IXYS at the U.S. District Court for the Central District of California.  IXYS appealed the infringement finding, arguing that Judge Manuel Real misconstrued certain claim terms.

The CAFC panel pointed out that the district court interpreted the terms  "polygonal" and "annular" too broadly.  The CAFC started with the dictionary definition of each word, and noted that the patentee "chose to use the word…without modification or qualification."  Accordingly, "[t]he district court was not free to attribute new meaning to the term or to excuse the patentee from the consequences of its own word choice."  For a third term "annular," the court pointed out that "the patentee acted as his own lexicographer, and the patentee's definition trumps the ordinary and customary meaning."  However, the district court had interpreted "annular" even broader than the patentee's definition.  Based on the reinterpreted claims, the CAFC vacated the infringement issues and remanded. 

Another interesting issue was whether IXYS's assertion of attorney-client privilege prevented IXYS's estoppel and laches defense.  IR asserted that the withheld facts were necessary to IXYS's defense.  The Federal Circuit vacated this portion of the decision as well because none of the facts relied on for IXYS's defense arose from an opinion or advice of counsel.

Sometimes a chosen claim term has a broader meaning than alternative dictionary definitions would allow.  In this event a patent drafter should define the term more specifically, or preferably make up a new term to describe the technical feature to prevent an undesirable claim interpretation.

International Rectifier Corporation v. Samsung Electronics Co. Ltd. and Samsung Semiconductor, Inc. and IXYS Corporation (a non party appellant)
Decided March 18, 2004
Judge Linn with Judges Newman and Prost

*          "There is no statute in the federal laws concerning patents which gives rise to a   cause of action for conspiracy"

In this second appeal from the Samsung and IR litigation, Samsung and IXYS contested Judge Manuel Real's contempt order that IXYS's importation of devices from Europe and Samsung's extraterritorial conduct invoked liability under a permanent injunction. 

The Federal Circuit vacated the contempt order because neither the permanent injunction or 35 U.S.C. 271(e) applies to conduct outside the United States.  The district court arrived at its contempt decision on the basis that IXYS's importation acts (which were not subject to the injunction) aided and abetted Samsung.  The CAFC, however, declared that this "subversion by agreement theory…has no basis in law" because the patent laws do not cover conspiracy.  Furthermore, no evidence was provided that showed Samsung's control over IXYS's importation or participation in IXYS's activities following importation.  The CAFC explained that knowledge of IXYS's actions alone does not support an allegation of collusion and only "Samsung and/or those persons in active concert or participation with" Samsung are bound by the injunction.

The Federal Circuit pointed out that "courts have held parties in contempt based on the conduct of others, but" only if "the party subject to contempt sanctions had control over those engaged in the conduct."  

In Re Jeffrey M. Sullivan and Daniel Anthony Gately
Decided March 22, 2004
Judge Linn with Judges Archer and Dyk

*          The PTO Board has considerable flexibility to conduct interference proceedings

This is an appeal from an interference case wherein Sullivan, the senior party, relied unsuccessfully on a 135(b) motion (a claim cannot be presented more than one year after the same subject matter publishes in another patent or application) to knock out a competitor's claim.  The PTO Board sua sponte issued an order to show cause why judgment on priority should not be entered against Sullivan, and resolved that issue against Sullivan before reaching the 135(b) issue.  The junior party then prompted a second interference by copying claims from a later Sullivan patent (with no 135(b) issue).  The Board used Sullivan's admission regarding the first patent against him for the second patent.  Sullivan appealed to the CAFC.

The Federal Circuit affirmed, and pointed out that Sullivan's 135(b) argument was moot because the PTO Board's show cause order preceded Sullivan's motion.  Sullivan argued that the Board's actions on the second interference were "void ab initio" because the original declaration of interference was unlawful under 135(b).  The Federal Circuit pointed out, however, that the redeclared interference obviated the 135(b) motion and Sullivan failed to re-argue that the second set of claims copied from Sullivan's later patent were improper under 135(b).

Interference procedure is very complicated, hard to follow and a party sometimes can get lost.  In this case, Sullivan unfortunately "failed to specifically explain how (the amended claim for the second interfernce) is the same or substantially the same subject matter" in his first patent, to support a 135(b) argument against the latter interference.

Q-Pharma, Inc. v. The Andrew Jergens Company
Decided March 8, 2004
Judge Lourie with Judges Archer and Clevenger

*          the key factor in a reasonable pre-filing inquiry is an infringement analysis, which             might consist of a good faith comparison of claims with advertised subject matter

Jergens sold a lotion containing the "natural power" of Coenzyme Q10, prompting.  Q-Pharma to sue for infringing Q-Pharma's patent claim to a method of treating tissue with a lotion having an "effective amount" of Q10.  Q-Pharma did not determine the chemical composition of Jergen's lotion before filing suit but relied on Jergen's advertising, which touted the benefits of Q10 in its lotion.  Jergens refused to supply composition information during discovery but filed a summary judgement motion for non-infringement, stating that its product contained less than 0.5 parts per million Q10 by weight.  Q-Pharma then obtained a voluntary dismissal with prejudice.  Jergen's however, unsuccessfully sought Rule 11 sanctions on grounds that Q-Pharma did not make a sufficient pre-filing inquiry.  Jergen's appealed this and related issues to the CAFC.

The CAFC affirmed because Q-Pharma conducted a claim interpretation analysis that "was reasonably supported by the intrinsic record."  Although not ideal, Q-Pharma's reliance on Jergen's advertising and labeling sufficed for a pre-filing investigation.

Q-Pharma could have conducted a chemical analysis of its competitor's product and could have avoided filing the infringement suit.  However, as a result, Q-Pharma now has Jergen's admission that its Curel(R) Age Defying Therapeutic Moisturizing Lotion with Coenzyme Q10 has (if any) less than 0.5 parts per million Coenzyme Q10 and does not infringe a patent that requires an effective amount of Coenzyme Q10.

Chef America, Inc. v. Lamb-Weston, Inc.
Decided February 20, 1994
Judge Friedman with Judges Rader and Schall

*          "Courts may not redraft claims, whether to make them operable or to sustain their          validity."

Chef sued Lamb at the U.S. District Court for the District of Colorado, for allegedly infringing claims to a process for producing a dough product via heating the dough "in the range of about 400 degrees Fahrenheit to 850 degrees Fahrenheit."  Lamb pointed out that its accused process does not heat dough "to" such a high temperature, which would burn dough into something that "resembles a charcoal briquet."  Chef responded that the claim term "to" should be read as "at" and that the temperature refers to temperature of the oven air.  However, Judge Edward Nottingham granted summary judgment of non-infringement because the accused process does not heat a dough "to" the recited high temperature.  Chef appealed to the Federal Circuit.

The Federal Circuit affirmed because "we construe the claim as written, not as the patentees wish they had written it" and "where as here, claims are susceptible to only one reasonable interpretation and that interpretation results in a nonsensical construction of the claim as a whole, the claim must be invalidated."  In particular, the court refused to interpret "to" as "at" because "we have repeatedly declined to rewrite unambiguous patent claim language" to make a patented process "perform the function the patentees intended."

            English skills are very important to patent prosecution.  Poor attention to detail may result in goofy claims that a court will not correct.

Bancorp Services, LLC v. Hartford Life Insurance Company et al.
Decided March 1, 2004
Judge Bryson with Judges Rader and Prost

*          "close questions of indefiniteness in litigation involving issued patents are             properly resolved in favor of the patentee"

Bancorp sued Hartford at the U.S. District Court for the Eastern District of Missouri for allegedly infringing Bancorp's patent claims to a "computer system for managing a life insurance policy."  Judge Carol Jackson granted summary judgment of invalidity to Hartford because the claims recite the undefined phrase "surrender value protection."  Bancorp appealed to the Federal Circuit, with the argument that this term is analogous to "stable value protection," which is defined in the patent specification.

The Federal Circuit agreed with Bancorp and reversed.  The court pointed out that "[b]y finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of patent validity….and we protect the inventive contribution of patentees, even when the drafting of their patents has been less than ideal."  The Federal Circuit further pointed out that although "the use of both terms in close proximity in the same claim gives rise to an inference that a different meaning should be assigned to each," this principle could be overlooked because "of the difference in context (wherein) the claim drafter intended to emphasize" different features. 

The indefiniteness issue in this case arose from the use of two unfamiliar terms that numerically mean the same value, but that were used in different contexts.  A practitioner should consider defining uncommon claim terms, to avoid protracted litigation over those terms during patent enforcement.

Pfizer Inc., v. Dr. Reddy's Laboratories, LTD. and Dr. Reddy's Laboratories, Inc.
Decided February 27, 2004
Judge Newman with Judges Mayer and Lourie, Judge Mayer dissenting

*          Patent term extension covers all claimed uses of a pharmaceutical, including that             of a registered pharmaceutical's salts and esters.

Pfizer sued Reddy's at the U.S. District Court for the District Court of New Jersey for allegedly infringing the extended patent term of Pfizer's pharmaceutical patent claims, after Reddy's filed a new drug application for marketing the maleate salt of the pharmaceutical.  Reddy's admitted that Pfizer's patent claims cover the maleate salt but argued that Pfizer's registered product is the besylate salt, and that the patent term extension only covers the registered product that prompted the patent term extension.  Judge Katherine Hayden agreed with Reddy's and dismissed the complaint on no infringement grounds.  Pfizer appealed to the Federal Circuit.

A Federal Circuit panel majority reasoned that an extended patent term pertains to the same claim scope as the unextended patent term, and reversed the lower court's non-infringement finding.  The Federal Circuit pointed out that "335 U.S.C. 156(f) defines the drug product as including any salt or ester of the active ingredient."  Judge Mayer in a dissent argued that patent term extension does not pertain to all claimed compounds, and in fact "a patent can be given only one extension regardless of the number of drugs that it may claim were subject of approval."

Provisions of the Hatch-Waxman Act are very important to generic drug makers and have been challenged often in recent years.  In this decision, the Federal Circuit pointed out that Congress foresaw "the potential loophole of a change in the salt of the active ingredient" and specifically accounted for such changes.

University of Rochester v. G.D. Searle & Co., Inc et al.
Decided February 13, 2004
Judge Lourie with Judges Bryson and Dyk

*          A patent fails written description if it claims a function of a substance but does not          allow an artisan to identify a substance capable of carrying out that function.

Rochester sued Searle at the U.S. District Court for the Western District of New York, for allegedly infringing claims to methods that selectively inhibit a chemical reaction in the body that causes inflammation.  The Rochester inventors derived a theory for how multiple reactions cause inflammation, and how to discover compounds that should act as superior analgesics, by targeting one reaction.  Rochester did not discover any compounds, but only the theoretical, functional properties expected for such compounds.  Judge David Larimer held summary judgment of invalidity for lack of written description and lack of enablement because the claimed invention could not be practiced or understood from reading the patent specification.  Rochester appealed to the Court of Appeals for the Federal Circuit ("CAFC").

The CAFC affirmed, because "the inventor cannot lay claim to subject matter unless he can provide a description of the compound sufficient to distinguish infringing compounds from non-infringing compounds, or infringing methods from non-infringing methods."  The court noted that "Rochester did not present any evidence that the ordinary skilled artisan would be able to identify any compound based on its vague functional description as a 'non-steroidal compound that selectively inhibits activity of the PGHS-2 gene product."

This decision is favorable to companies that employ research tools invented by others, who have nice theories for drug discovery, but no drugs.  The University of California and University of Texas, as amici curiae with Rochester argued that the court's decision "will have a significant impact on the continuing viability of technology transfer programs at universities."  However, the CAFC explained that universities do not enjoy a "less stringent application of the patent laws to universities than to other entities."

Sulzer Textil A.G. and Sulzer Textile, Inc. v. Picanol N.V.
Decided February 17, 2004
Judge Linn with Judges Lourie and Gajarsa

*          A trial court must inform a jury of the court's claim construction on all disputed   claims and the jury's obligation to apply those constructions

Sulzer sued Picanol at the U.S. District Court for the Eastern District of Texas for allegedly infringing patent claims to methods of operating air jet textile weaving machines.  Magistrate Judge Harry McKee managed a jury trial and the jury found non-infringement.  Sulzer unsuccessfully moved for a new trial because one of the court's instructions to the jury incorrectly referred to the manufacture and not the operation of the accused device.  Sulzer appealed its loss to the Federal Circuit and Picanol cross appealed  for attorney fees.

The Federal Circuit deemed the erroneous jury instruction harmless error, due to the context of ample correct jury instructions, numerous statements during trial regarding device operation, and the fact that contrary evidence was "largely evidence that Sulzer itself elicited."  This decision reviewed how "the district court must instruct" the jury of disputed claim term meanings and that the jury "cannot be left free to apply its own reading of disputed claim terms."  The CAFC found that the district court properly denied attorney's fees and remanded for further determination of whether Sulzer waived recourse to the doctrine of equivalents.

Successfully persuading a court of desirable claim construction during litigation, (in the CAFC's words), "are legal issues central to most patent cases."  Practitioners and litigators should be very sensitive to statements made during prosecution that later can influence a judge or jury during patent enforcement.

Superguide Corporation, v. Directv Enterprises et al. v. Gemstar Development Corp.
Decided February 12, 2004
Judge Prost with Judges Mayer and Michel, Michel concurring separately

*          A claim term may have a broad ordinary meaning unless a patent specification    and/or file history indicate otherwise

            Superguide sued Directv at the U.S. District Court for the Western District of North Carolina for infringing patent claims that recite systems that obtain and update individual TV program schedules.  Judge Lacy Thornburg granted summary judgment in favor of the defendants and the parties appealed a number of issues to the CAFC.

            The CAFC reversed in part the district court's claim construction, vacated the judgment, and remanded.  A major issue was interpretation of the term "regularly received television signal."  The District Court construed this term as limited to analog signals (and not digital television), because there were no "regular" digital television transmissions on the patent priority date.  The CAFC majority however, construed the term according to its plain meaning and noted the lack of intrinsic evidence that contradicts the inclusion of digital television.  While Judge Michel agreed with remanding the case, Judge Michel disagreed that the term "regularly received television signal" could be interpreted outside of "the standpoint of a person of ordinary skill in the relevant art and at the time of the patent."  Judge Michel complained that the CAFC too easily relies on a term's “plain meaning" and "ordinary meaning… (which) obscures the correct analysis" and that this trend underemphasizes the skilled artisan's understanding of patent claims, while overlooking "what the inventors actually invented."

            The CAFC remanded this case with the warning that "the parties are precluded from raising new construction issues regarding other claim language" because they "are presumed to have had ample notice of how their proposed claim constructions would be read in the context of other claim language."  An appellant should carefully include all possible related claim term arguments when appealing claim construction issue(s).

Liebel-Flarsheim Company and Mallinckrodt Inc. v. Medrad, Inc.
Decided February 11, 2004
Judge Bryson with Judges Lourie and Dyk

*          The doctrine of claim differentiation is strongest "where the limitation that is        sought to be read into an independent claim already appears in a dependent claim"

            Liebel sued Medrad at the U.S. District Court for the Southern District of Ohio for allegedly infringing claims to methods and devices for injecting fluid into a patient (for imaging).  Judge Sandra Beckwith construed the claims as limited to injectors that employ a pressure jacket.  The court granted summary judgment of no infringement because the accused devices and methods lack such jackets.  Both sides appealed various issues to the CAFC.

            The CAFC construed the claims without the jacket limitation and reversed.  The court reviewed the problem of "a fine line between reading a claim in light of the specification, and reading a limitation into the claim from the specification."  The problem arises when a narrow written description supports broader claim language that encompasses other embodiments, such as when an applicant broadens claims during prosecution to reach a competitor's product.  In this case Liebel relied on claim differentiation to support broader claims, by using dependent claims with the added "pressure jacket" limitation.  Such a dependent claim can breath life into an independent claim by showing that the independent claim is not limited to the added element of the dependent claim.

            This case shows the importance of including all possible ideas and future embodiments when preparing a patent application, to support broad claim meanings.  Also, an aggressive prosecutor should consider adding important claim terms to dependent claims, when recognized, to demonstrate that the independent claims are not limited to those claim terms.

Microsoft Corporation v. Multi-tech Systems, Inc. v. Net2phone, Inc.
Decided February 3, 2004
Judge Lourie with Judges Rader and Bryson, Judge Rader dissenting

*          A statement during prosecution emphasizing what an invention "is" may limit       claims of an earlier issued patent with the same specification

Multi-tech sued Microsoft at the U.S. District Court for the District of Minnesota, for allegedly infringing claims from 3 patents covering a communication system that combines voice and data into packets and uses a modem connected to a telephone line.  Judge Ann Montgomery construed the claims as limited to communications "through a standard telephone line" and found the accused internet based systems non-infringing.  Multi-tech appealed to the Court of Appeals for the Federal Circuit ("Federal Circuit").

A Federal Circuit panel majority affirmed, because intrinsic evidence limited the claims to transmission solely through phone lines.  In particular, the 82 page, 57 figure specification refers to "data transmission 'over' or 'through' a telephone line roughly two dozen times" yet "does not even suggest the use of a packet-switched network."  Furthermore, the applicant "took the opportunity to provide a 'summary of the invention'" in response to an office action, by describing a "plain old telephone service" that uses "point to point connection between telephone equipment on each end of the line."  The majority decided that this statement of the invention applies to all patents sharing the same specification, including a patent that issued before the statement was made.

Judge Rader stridently disagreed with this claim interpretation, and argued that there was "no evidence to support the ("Evel Knievel"-like) leap that 'over a telephone line' must mean exclusively over a telephone line."  Further, "the inventions in the various patents are different," so therefore a later statement from one prosecution should not apply to an earlier issued patent.

The majority opinion's use of file history to construe earlier issued claims is very controversial, partly because, (in Judge Rader's words) "the inventions in the various patents are different."  However, the patent specifications were very detailed and the applicant filed terminal disclaimers for all three cases to obtain allowance of very similar claims over a common first issued patent.  Perhaps "the inventions" were not so different from each other and perhaps the stark absence of "packet-switched network" from the huge specification was not merely an oversight as Judge Rader's dissent might lead one to believe.

Nomos Corporation v. Brainlab USA and Brainlab, Inc.
Decided February 4, 2004
Judge Mayer with Judges Gajarsa and Dyk

*          Claim differentiation "is a 'guide, not a rigid rule" and does not broaden a means             plus function claim when only one structure is described in the specification

Nomos sued Brainlab at the U.S. District Court for the District of Delaware for allegedly infringing patent claims to a method of detecting a tumor position in a patient during treatment.  Judge Joseph Farnan, Jr. construed Nomos's claim 1 "means for generating at least one ultrasound image of the lesion" as limited to a single structure in the specification, which was attached to a treatment table.  Because Brainlab's device was hand held and movable, the court granted summary judgment of non-infringement.  Nomos appealed to the Federal Circuit.

The Federal Circuit affirmed.  The patentee's strongest point seemed to be that a dependent claim had the added limitation of attaching the imaging device to a table, and therefore the independent claim must be broader.  The Federal Circuit however explained that the "claim will bear only one interpretation" (because the specification only has one structure), and claim differentiation "does not override the requirements of 112 para 6…" 

If a practitioner has to use a means plus function claim, the function specified in the claim should be supported by as many structures in the specification as possible to avoid the kind of problem illustrated by this case.

Fieldturf, Inc. and Fieldturf Inter., Inc. v. Southwest Recreational Industries, Inc.
Decided February 4, 2004
Judge Mayer with Judges Michel and Schall

*          An "exclusive license agreement" for a patent that does not address litigation      rights may not convey standing needed to bring a patent suit

Fieldturf sued Southwest for antitrust violations, patent infringement and other alleged misdeeds at the U.S. District court for the Eastern District of Kentucky with respect to Southwest's commercialization of AstroTurf(TM).  Judge Joseph Hood granted summary judgment against Fieldturf on all counts and Fieldturf appealed to the Federal Circuit.

The Federal Circuit held that Fieldturf lacks standing to enforce the patent and vacated that portion of the district court's decision.  The Federal Circuit determined that Fieldturf's license agreement with its predecessor in interest failed to satisfy Fieldturf's "burden to provide evidence endowing it with all substantial rights in the patent."  In particular, the license agreement did not address the right to enforce the patent against infringers.  This lack indicated that "all substantial rights" were not transferred, especially since the predecessor in interest obtained the patent rights by an exclusive license that did include other restrictive covenants not mentioned in the last license.

An exclusive license to a patent should include a provision that transfers the right to enforce the patent to the licensee, if that licensee desires the right to litigate on its own.

Glaxo Wellcome, Inc. v. Impax Laboratories, Inc.
Decided January 29, 2004
Judge Rader with Judges Plager and Gajarsa

*          Adding a chemical species to a claim by amendment creates an estoppel that     blocks use of the doctrine of equivalents to other foreseeable chemical species.

Glaxo sued Impax at the U.S. District Court for the Northern District of  California for allegedly infringing claims to a sustained release pharmaceutical composition used in Zyban(TM), which comprises hydroxypropyl methylcellulose.  Judge Marilyn Patel granted Impax summary judgment of non-infringement under the doctrine of equivalents.  Glaxo appealed to the Federal Circuit. 

The Federal Circuit affirmed, because the sustained release compound used in the accused infringing product differs from the claimed compound (by a methyl group), and Glaxo had narrowed its claim by specifying the compound.  The Federal Circuit pointed out that the alleged equivalent was known at the time and was not tangential to the purpose of the amendment.  Accordingly, the amendment estopped application of the doctrine of equivalents to the accused compound.

Unfortunately, Glaxo's patent application did not list alternative chemicals that might have supported a generic compound claim during prosecution.  A patent practitioner should include as many different species as possible when drafting a patent application, to support possible generic claims later.

Smithkline Beecham Corp. ("Glaxo") v. Excel Pharmaceuticals, Inc. and ABC Co.
Decided January 29, 2004
Judge Rader with Judges Plager and Gajarsa

*          File history estoppel does not cover embodiments that are unrecognized in the art          at the time of amendment.

Glaxo sued Excel at the U.S. District Court for the Eastern District of Virginia and at the U.S. District Court for the District of New Jersey for allegedly infringing patent claims to a sustained release pharmaceutical composition comprising a methylcellulose, used in Zyban(TM).  These suits responded to Excel's filing of two Abbreviated New Drug Applications at the U.S. FDA for generic versions that use polyvinyl alcohol in place of the methylcellulose.  Judge Rebecca Smith of the Virginia court held summary judgment of no infringement and Judge William Walls of the New Jersey court dismissed the case sua sponte due to the res judicata effect of the identical Virginia action.  Glaxo appealed to the Federal Circuit.

This case concerns the same patent and issues as the Federal Circuit's Glaxo vs. Impax case decision of the same day.  This case has a different outcome, however, because the accused generic was formulated with a substitute chemical (PVA) that was less familiar to a skilled artisan.  Accordingly, a doctrine of equivalents determination could not be made at the summary judgment stage.  The Federal Circuit held that the "PVA perhaps may qualify as a later-developed technology" because "a portion of the record might suggest that PVA was not a known sustained release agent at the time of the amendment."  Therefore, summary judgment was not appropriate based on the record, and the Federal Circuit vacated the decision for further fact finding.

A patentee can use the doctrine of equivalents for a claim element despite amendment of that element if an accused equivalent was not foreseeable at the time of amendment. 

Liquid Dynamics Corporation v. Vaughan Company, Inc.
Decided January 23, 2004
Judge Gajarsa with Judges Lourie and Dyk, Judge Lourie Dissents

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

Liquid sued Vaughan at the U.S. District Court for the Northern District of Illinois for allegedly infringing claims to a sludge storage tank that mixes via a "substantial helical flow path."  Judge Suzanne Conlon interpreted the term "substantial helical flow path" narrowly because Liquid had added this language during prosecution.  The court found the term ambiguous, but further noted that two of the patent figures illustrate "a perfect helical flow," consistent with a narrow construction, and granted summary judgment of non-infringement.  Both sides appealed various issues to the Federal Circuit.

A Federal Circuit panel majority found the district court's interpretation overly narrow, and vacated the non-infringement decision.  The Federal Circuit pointed out that "[t]he term 'substantial' is a meaningful modifier implying 'approximate,' rather than 'perfect.'"  Furthermore, the panel majority explained that "[t]he district court relied on the written description of Figures 5 and 6 to import the limitation of a perfectly helical flow" and "[w]e have consistently warned against this approach to claim construction."  Judge Lourie dissented, in a contrary opinion that agreed with the district court "interpreting the claim in light of the patent specification, including Figures 5 and 6."

Claim amendments can, where feasible, include a modifier such as "approximately" to avoid a strict interpretation of the added term.  A practitioner also should consider commenting on the broader meaning, to help a judge during patent enforcement avoid reading specific limitations into the term, as Judge Lourie preferred to do in this case.

Richard Ruiz and Foundation Anchoring Systems, Inc. v. A.B. Chance Company
Decided January 29, 2004
Judge Rader with Judges Newman and Michel

*          Implicit motivation to combine prior art may arise from the nature of the problem            to be solved, particularly for "simpler mechanical technologies."

Ruiz and Chance contested various aspects of Chance's patent to screw anchoring systems for shoring up buildings, at the U.S. District Court for the Eastern District of Missouri.  In a previous appeal, the Federal Circuit affirmed infringement but remanded for a decision on invalidity.  Judge Catherine Perry subsequently found Chance's patent claims obvious over two earlier patents.  Motivation to combine the prior patents was found from the nature of the problem, wherein both "reach the same result as the method covered by the patents in issue."  Chance appealed to the Federal Circuit.

The Federal Circuit affirmed, in a decision that reviewed the role of "implied" motivation, which "is particularly relevant with simpler mechanical technologies."  The court explained that 'the nature of a problem to be solved (leads) inventors to look to references relating to possible solutions to that problem" (citing Pro-Mold, Fed. Cir. 1996).

Obviousness contests often are complicated by motivation issues wherein one side attempts to prove obviousness by a showing of motivation to combine two or more references.  This case indicates that mechanical patent claims in particular are more susceptible to "implied motivation" arguments based on the nature of the problem to be solved.  In addressing obviousness, one should first determine whether the technology is a "simpler mechanical" invention, which may have a lower threshold for implied motivation.

PSC Computer Products, Inc. v. Foxconn International, Inc.
and Hon Hai Precision Industry Co., Ltd
Decided January 20, 2004
Judge Gajarsa with Judges Mayer and Clevenger

*          Disclosed but unclaimed subject matter is dedicated to the public and cannot be             recaptured under the doctrine of equivalents

PSC sued Foxconn at the U.S. District Court for the Central District of California for allegedly infringing patent claims to a semiconductor heat sink assembly having a "metal strap."  Judge Dean Pregerson granted Foxconn summary judgment of non-infringement because Foxconn's device uses a plastic strap, not a metal one, and PSC's patent describes but does not claim the use of plastic straps.  PSC appealed to the Federal Circuit.

The Federal Circuit affirmed, with a comment that PSC's patent "written description served notice that plastic had been used as an alternative to metal in the prior art, and that the future use of plastic would therefore not infringe." 

This case teaches that the disclosure rule for embodiments described but not claimed in a patent and that cannot be recovered under the doctrine of equivalents is broad.  The Federal Circuit declared that the main issue in such a determination is whether the "written description (is) sufficiently specific to dedicate (the embodiment) to the public."  The court explained that "if one of ordinary skill in the art can understand the unclaimed disclosed teaching upon reading the written description, the alternative matter disclosed has been dedicated to the public.  This 'disclosure-dedication' rule does not mean that any generic reference in a written specification necessarily dedicates all members of that particular genus to the public.  The disclosure must be of such specificity that one of ordinary skill in the art could identify the subject matter that had been disclosed and not claimed."

A patent practitioner must be careful to assert claims to all possible embodiments when prosecuting a patent application or risk losing those embodiments.  However, as the Federal Circuit pointed out, a patentee can file a continuation or reissue application to correct "such oversights."  Before a patent issues, and within two years of that issuance, a patentee should review the specification and determine whether a continuation application or broadening reissue application, respectively, should be filed.

Golight, Inc. v. Wal-Mart Stores, Inc. and North Arkansas Wholesale Company, Inc. and Innovative International (H.K.) Ltd.
Decided January 20, 2004
Judge Prost with Judges Schall and Archer, Archer dissenting in part

*          A means plus function claim is defined by regular claim interpretation principles before linking the definition to a structure in the specification.

Golight sued Walmart at the U.S. District Court for the District of Colorado for allegedly infringing its patent claims to a remote controlled searchlight with "horizontal means for rotating" the light.  Wal-Mart argued that the written description and prosecution history describe a device that rotates through 360 degrees, but that Wal-Mart's device has a stop to prevent complete rotation.  Judge Zita Weinshank found infringement and Wal-Mart appealed to the Federal Circuit.

A majority of a Federal Circuit panel affirmed.  The majority opinion interpreted one claim as lacking a rotation element based mostly on claim differentiation.  In particular, the claim, which recited "horizontal drive means for rotating" did not specify a rotation limitation, while other claims recited "through at least 360 degrees."  The majority then determined that a corresponding structure for rotation in the specification was not linked to the means plus function claim.   

Judge Archer in a dissent, interpreted the means plus function clause as limiting the claim to a specific rotational structure described in the specification, and would have reversed the infringement holding.

Courts often interpret means plus function claims with difficulty.  The Federal Circuit in this case could not unanimously interpret a claimed function to match a structure in a patent specification.  While means plus function claims may be added to a patent application to impart ambiguity to a claim set, a practitioner should avoid relying solely on such claims for protecting an invention.

The Toro Company, v. Deere & Company
Decided January 20, 2004
Judge Michel with Judges Lourie and Linn

*          To anticipate inherently, a prior art must enable at least one embodiment of the   claimed subject matter.

Toro sued Deere at the U.S. District Court for the District of Minnesota for infringing claims for fracturing soil in turf by pulsed injection of fluid into the ground.  Judge David Doty granted summary judgment of patent "validity" and infringement.  Both sides appealed various issues to the Court of Appeals for the Federal Circuit.

The Federal Circuit found that the district court failed to construe the claims or analyze inherent anticipation properly and vacated the "validity" holding.  A major anticipation issue was whether a patent reference inherently covered a similar method, in view of overlapping numerical ranges.  The Federal Circuit declared that upon remand the district court should "set with clarity the scope of subject matter" that must be anticipated inherently before the prior art analysis.  Another problem was that "Deere failed to make the requisite factual showing" for inherent anticipation and "did not present any direct evidence…such as testing results."

Clear claim limitations must be determined before comparing with a prior art that lacks one or more claim elements, for inherent anticipation.  Testing evidence then should be provided to show that the missing claim element(s) necessarily exist in the cited art.  Another interesting point from this case was that the Federal Circuit cited generic statements in a patent abstract for construing claims broadly.  Although the PTO does not rely on the abstract in this way, a practitioner should remember that broad generic descriptions in the abstract can help a court avoid reading narrow limitations into the claims. 

In Re John P. Curtis, James H. Kemp, and Jan-Joost Pabst.
Decided January 6, 2004
Judge Clevenger with Judges Dyk and Prost

*          A specification that describes a surprising species may lack written description for          a genus of that species.

Curtis filed a reissue patent application with claims to a friction enhancing dental floss coating that comprises microcrystalline wax.  After W.L. Gore requested reexamination of a related patent, the PTO merged the reexamination with the Curtiss reissue and rejected several claims on prior art grounds.  Curtiss countered by arguing an earlier priority date from a prior application, but the PTO Board deemed the earlier application non-enabled.  Curtiss appealed to the Federal Circuit.

The  Federal Circuit affirmed non-enablement of the microcrystalline wax claims because the prior application described results that were "both surprising and unexpected" for the claimed species  Accordingly, the earlier application did not place a skilled artisan "in possession of a genus or combination claimed at a later date."  A contributing factor was Curtiss's (unfortunately conclusory) statements during prosecution that "[t]he only wax that will effectively bind …is microcrystalline wax" and that "only one wax ….is known to be effective to adhere to and to coat PTFE."

Oftentimes a eureka moment of a species discovery portends the existence of a larger genus invention that is apprehended later.  When filing a patent application for a "surprising and unexpected" species, a practitioner should list alternative broader embodiments that may correspond to a more generic invention.  When the broad invention becomes understood, a claim may be asserted by selecting from alternative embodiments already on file.